MARQUES Class 46 Blog

Polish Sejm wants new logo

tomasz@rychlicki.net (Tomasz Rychlicki) — Mon, 08 Feb 2010 15:22:00 GMT

Chancellery of the Sejm (the lower house of the Polish parliament) announced an open competition for the official logo of the Sejm. The main prize in this competition is 5000 PLN. The winning logo will be used in publications and information materials of the Sejm.

Changes to OHIM's Manual of Trade Mark Practice: usually no similarity between restaurant services and drinks

mark.schweizer@ml-law.ch (Mark Schweizer) — Mon, 08 Feb 2010 10:57:00 GMT

OHIM's Manual of Trade Mark Practice has been amended in January 2010. The changes concern the assessment of similarity of signs and similarity of products.

The knowledge of foreign languages by the relevant public has been "improved", so to speak (i.e. you cannot simply assume that people do not speak foreign languages and do not understand them, depending on the relevant public). The pronounciation (or lack thereof) of symbols has also been "clarified", although clarification may be the wrong word:

In other words, whether or not a given symbol is pronounceable depends of the type of symbol in question, how the symbol is featured, and the manner in which it is combined with other elements of the sign.

To be fair, that's the case law, so what's OHIM to do?

Further, the similarity of restaurant services and drinks was re-stated:

In certain countries producers of certain drinks (such as breweries in Spain and Germany) traditionally have their own restaurants. Whenever this occurs, be it in respect of beer or any other drink, an average degree of similarity is to be found.

In the rest of the cases only a very remote similarity is to found. Apart from being obviously different in nature serve different purposes, they are usually provided by different undertakings, and are not in competition with, nor complementary to each other. Drinks may be consumed at restaurants, but consumers, more than merely purchasing a drink, are asking to be served one. There is a considerable difference between the two situations; a difference that is furthermore reflected in the respective price.

Therefore, notwithstanding the existence of certain links, on balance, it is that there are not enough similarities between drinks, on one hand, and restaurant services, on the other, to give rise confusion unless exceptional circumstances concur, such as when the signs are identical or almost so, and there is at least a certain level of recognition of the trade mark in question among the relevant public.

Genuine use in one Member State: the HPO speaks out

jjip@btinternet.com (Jeremy Phillips) — Sun, 07 Feb 2010 09:03:00 GMT

Dr Ákos Süle (attorney at Law, Bogsch & Partners) informs Class 46 that the Hungarian Patent Office (HPO) published a statement on 5 February 2010 (full English version available here) on the geographical scope of the use requirement of CTMs. The HPO essentially seems to support the standpoint of BOIP regarding the decision in ONEL/OMEL and suggests that use in a single Member State cannot serve as a basis for genuine use of a Community Trade Mark. Part of the statement may be also understood as a polite and diplomatic response to what has been regarded by some as a somewhat intrusive and lecturing statement on the part of OHIM.

Dr Süle comments that it would be reasonable to expect that this HPO statement also indicates a change of practice of the HPO, to require CTM holders to prove that their marks have been used in several Member States. The geographical use requirement of CTMs stands under increasing challenge since the enlargement of the EU from 15 to 25 Members in 2004 (the figure now stands at 27). The statement of the HPO is a very serious step towards change in the current system and one should not be surprised if more national offices adopt the new approach.

The Transformers take over the General Court: ENERCON confusingly similar to TRANSFORMERS ENERGON

prentoulis@gdplaw.gr (Nikos Prentoulis) — Fri, 05 Feb 2010 12:27:00 GMT

In its judgment delivered on February 3, 2010, in case T-472/07, the General Court upheld OHIM’s Opposition Division and Board of Appeal decisions refusing the registration as a CTM of the word ENERCON. The mark was filed in 2003 by Enercon Gmbh, in connection with goods in, inter alia, Classes 16, 18, 24, 25, 28 and 32, but was rejected following an opposition by Hasbro Inc. Hasbro claimed likelihood of confusion with its earlier word CTM “TRANSFORMERS ENERGON” in connection with identical products in the very same classes. The juicy bit of the General Court’s judgment reads:

28 In the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (Case C-334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 41).

……………..

32 In this connection, whilst it is true that the ‘transformers’ element is the first part of the sign and is longer than the ‘energon’ element, the word ‘energon’ cannot be regarded as playing only a marginal part in the overall impression produced by the earlier mark. To the contrary, that element plays a significant part in the overall impression produced by the earlier trade mark and consequently cannot be ignored. As the Board of Appeal pointed out in paragraph 19 of the contested decision, both of the elements of which the earlier mark consists are distinctive in character, neither being more dominant or distinctive than the other in the overall impression created by the earlier mark.

………………..

34 Furthermore, the applicant cannot argue that the word ‘transformers’ is the dominant element of the earlier trade mark because of the font and its larger size compared to that of the ‘energon’ element in the way in which that trade mark is used. It must be pointed out that the consideration of the similarity of the trade marks at issue takes into account those marks as a whole, as they are registered or applied for [something we tend to forget all too often]. A word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. The protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (see, to that effect, Case T-211/03 Faber Chimica v OHIM – Nabersa (Faber) [2005] ECR II-1297, paragraphs 33 and 37; judgment of 13 February 2007 in Case T-353/04 Ontex v OHIM – Curon Medical (CURON), not published in the ECR, paragraph 74; and judgment of 22 May 2008 in Case T-254/06 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the ECR, paragraph 43). It is therefore not appropriate to take into account, for the purposes of the consideration of the similarity between the trade marks at issue, the font and size in which the ‘transformers’ element of the earlier word sign may be presented.

With Greek case law in mind, this Class46 member thinks the outcome of the opposition might have been different in the aforementioned southern part of the Union.

The "ONEL case" - more rumours

birgit_london@yahoo.co.uk (Birgit Clark) — Fri, 05 Feb 2010 12:07:00 GMT

More rumours surrounding the ONEL case (see our earlier posts here and here). World Trademark Review yesterday reported that the "Onel mystery grows as complainant speaks out on controversial ruling" (citing MARQUES statement on the case "... BOIP opposition decision in question contradicts the uniform interpretation of the concept of genuine use in the EU") and today things seem appear to become even more intriguing with rumours circulating that BOIP director may have known undisclosed Onel facts (again reported in World Trademark Review).

What are our readers' views on this case? Is the ONEL case just a test of the CTM laws , as some suspect, or should such rumours prudently be ignored?

Poland: information on licensing for Euro 2012 trade marks

tomasz@rychlicki.net (Tomasz Rychlicki) — Fri, 05 Feb 2010 10:44:00 GMT

Information for entrepreneurs interested in obtaining licenses for the official trade marks and industrial designs related to the Euro 2012 football tournament has been published at the website of PL.2012 - the coordinator and overseer of preparation undertakings for Euro 2012 in Poland. Unfortunately, the post is available only in Polish and there is a problem with dead links to PDF files with the licensing guidance. However, all inquiring persons may find other interesting media quide, prepared in a PDF file that was published by the UEFA.

Worst UDRP decision of 2009?

mark.schweizer@ml-law.ch (Mark Schweizer) — Thu, 04 Feb 2010 21:29:00 GMT

The UDRP Wall of Shame has made it its mission to publicly criticize what they perceive to be the worst decisions by dispute resolution providers under the ICANN's Uniform Dispute Resolution Policy (UDRP). They shortlisted 10 nominees, out of which the attendees of the T.R.A.F.F.I.C. conference in Las Vegas - a conference for people trafficking in domain names - chose the "winner".

They chose WIPO's D2009-0036 - lomalinda.org/net as the worst UDRP decision in 2009. The panelist had transferred the domain name to a local hospital, although it is a geographical name, and, in the respondent's view, no trade mark rights can be established in a geographical name. The panelist argued that in this case, things were different, because the city of Loma Linda derived its name from the hospital, not vice versa:

Depending on the goods and services offered, as a general rule geographic names may not be a proper basis for asserting trademark rights. However, the current situation is highly unusual. The city of Loma Linda was named after the long standing medical and educational institutions which are the predecessors and affiliates of Complainants. Therefore, the Panel finds that for purposes of this proceeding secondary meaning does exist and is a viable basis for asserting protectable common law rights in the LOMA LINDA Mark.

The facts were apparently as follows:

The city that is now called Loma Linda was first called Mound City. Complainants trace their origin to 1905 when the Southern California Conference of Seventh-Day Adventists opened the “Loma Linda Sanitarium”. After 1908, the sanitarium included a post office in its main building, indicating “Loma Linda” as the postal address for the sanitarium’s community.

Loma Linda University began in 1906, originally called the Loma Linda College of Evangelists. The Loma Linda Sanitarium and the college were consolidated in 1910. The Seventh-Day Adventists also opened the Loma Linda Hospital in 1913.
The City of Loma Linda was incorporated in 1970, sixty-five (65) years after the predecessors of Complainants began using the name. In short, the city was named after Complainants.

Now, whether the panelist's reasoning is convincing is a question I leave up to the reader. The more fundamental point is this: in 2009, WIPO and NAF, the dominant dispute resolution service providers under the UDRP, decided roughly 3,700 cases under the UDRP (about 9% less than 2008, btw). Now, when any dispute resolution provider, including a state court, decides this many cases, some errors will be made. You cannot successfully criticize the dispute resolution provider by pointing out a few wrongly decided cases. You need to show a pattern, which UDRP Wall of Shame fails to do.

G-Star successful in Italy as Milan Court upholds protection for 'Elwood' and �Limit Regular� jeans.

evandeneede@trevisancuonzo.com (Edith Van den Eede) — Thu, 04 Feb 2010 14:33:00 GMT

Legal Battles over Jeans Designs.

On 15 January 2010, the IP Chamber of the District Court of Milan issued a key decision, upholding G-Star’s claims for unfair competition in relation to G-Star’s ‘Elwood’ jeans model and finding infringement of registered Community Design of the ‘Limit Regular’ jeans model.

Background
While the case brings to mind the Benetton/G- Star decision (ECJ C-371/06, in a case reference received from the Netherlands) which also related to the stitching and kneepads on the Elwood jeans, in Italy G-Star could not rely on any shape trade marks nor, for that matter, designs, for the Elwood jeans.

G-Star requested that the Court hold the defendants, trading under the Kruder trade mark, liable for unfair competition and for slavish imitation of the famous Elwood jeans as well as for parasitic activity based on the copying of a high number of G-Star items. In addition, G-Star also claimed infringement of its registered and unregistered community designs.

The Italian importer and retailer argued that the Elwood jeans did not have original character and that the addition of the defendants’ trade mark on the copycat jeans was in any event sufficient to avoid consumer confusion. The defendants further challenged the validity of G-Star registered - as well as unregistered - Community Designs.

Decision

The Milan Court held that the ‘Elwood’ model possessed the relevant, individualising characteristics such as the knee pieces, in addition to the stitching, and has original character. The Milan Court therefore made a finding of unfair competition for the slavish imitation of the distinctive shapes of the Elwood jeans but dismissed the claim for parasitic behaviour as well as unregistered designs infringement with reference to the other clothing, which, in the view of the Court lacked original features. In addition, the Court found that there was infringement in relation to the registered Community Design rights for the ‘Limit Regular’ jeans range.

This landmark decision condemns the copying of a fashion product, in particular the Elwood jeans, even though there are no registered trade marks or designs upon which to rely on. It recognizes that an act of unfair competition may result from imitation of an article of clothing, having original characteristics, and that such original characteristics may be found not only in haute couture products, but also in an item which is as simple as a pair of jeans.

In addition, with regard to the assessment of the compensation for damages, this case is of particular significance as, in its ruling, the Court adopted precise criteria for calculating damages, based on the infringer’s profits and G-Star was awarded damages in the region of approximately Euro 120,000. The Court also issued an injunction against further acts of infringement as well as a penalty of Euro 100 for each and every case of further infringement found on the market place and also ordered the publication of order in the mainstream Italian daily newspaper “Il Corriere della Sera” at the expense of the defendants. The defendant was further ordered to pay the costs of the proceedings.

The mother of all UDRP complaints?

mark.schweizer@ml-law.ch (Mark Schweizer) — Wed, 03 Feb 2010 08:11:00 GMT

Inter-Continental Hotels Corporation and Six Continents Hotels, Inc. requested the transfer of no less than 1,542 domain names in a single UDRP complaint brought against respondent Daniel Kirchhof. They alleged infringement of their HOLIDAY INN, HOLIDAY EXPRESS, INTERCONTINTAL, CROWNE PLAZA, STAYBRIDGE SUITES, HOTEL INDIGO, and CANDLEWOOD SUITES brands. The defendant had registered numerous - now that's an understatement - domain names with the pattern "BRAND-PLACE NAME"; e.g. "holiday-inn-london-stansted.com".

The respondent's domain names pointed to the booking engine www.hotelreservation.com, and the respondent collected affiliate fees for referrals. As the panelist noted, "When arriving at the Respondent’s websites, Internet users were likely to believe that they had arrived at the official website for one of the Complainant’s hotels, as that is the clear impression given by the website content. As the websites provide a mechanism for booking at the hotel (albeit through another provider), the Complainant is likely to suffer commercial loss when an Internet user books through the Respondent’s website when compared with a booking directly on one of the Complainant’s websites." Unsurprisingly, the panelist was convinced that Daniel Kirchhoff had both registered and used these domain names in bad faith.

The case is legally interesting because the complaint was brought in the name of two complainants, and the UDRP does not specifically provide for multiple-complainant complaints. The panelist held that a complaint could be brought by multiple complainants if the complainants "have a common legal interest and/or have been the target of common conduct by the Respondent":

The Complainants submit that this is an appropriate case for multiple complainants, because both Parties have a common legal interest and/or have been the target of common conduct by the Respondent. Although they are strictly separate entities, both Complainants are members of the same corporate group (InterContinental Hotels Group, “IHG”) and therefore have a common legal interest.

Further, the large number of disputed domain names are all very similar in structure and format, and the websites to which they resolve appear to be derived from the same template, meaning that each Complainant’s case against the Respondent is almost identical in nature. The Respondent’s conduct in relation to the majority of the disputed domain names has been consistent regardless of the Complainant involved. Additionally, there is only one registrar for all the disputed domain names.

The Panel therefore concludes that the inclusion of multiple complainants in this case is acceptable. There is clearly a common grievance on the part of both Complainants, and despite the extremely large and unprecedented number of disputed domain names, it would be procedurally efficient to deal with all matters in the one proceeding given the almost identical facts among them.

In the end, 1,519 of the concerned domain names were transferred, in 10 cases, the transfer was denied and 13 domain names had been cancelled before the decision.

Poland: GESTROL is not always similar to GESTROLTEX

tomasz@rychlicki.net (Tomasz Rychlicki) — Tue, 02 Feb 2010 11:58:00 GMT

On 4 February 2004, the Polish company Przedsiębiorstwo Farmaceutyczne LEK-AM Sp. z o.o. from Zakroczym filed to the Polish Patent Office (PPO) a trademark application for word sign GESTROL Z-275787 for the goods in class 5, cancer drugs. In a decision of 11 April 2008 the PPO refused to grant the right of protection. The PPO found that GESTROL is similar to the earlier registered trade mark (with priority date of 6 February 2003) - GESTROLTEX R-192945 registered for BIOTON S.A. from Warsaw, for goods in class 5, pharmaceutical preparations. Article 132(2)(ii) 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 of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, served as the basis for the decision to refuse to grant a right of protection.

2. A right of protection for a trademark shall not be granted, if the trademark:
(...)
(ii) is identical or similar to a trademark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark,

LEK-AM filed a request for re-examination of the matter. The company argued that the sign applied for is intended to mark the anticancer drug. The active substance in this preparation is a chemical compound of the generic name (INN) megestrol. Under the decision of the Polish Minister of Health, GESTROL as a medicinal product received authorization for marketing. The Minister of Health has not found confusing similarity between GESTROL and GESTROLTEX. LEK-AM pointed out that both trade marks will be identified in the course of the highly specialized medical personnel. The PPO rejected the request and LEK-AM filed a complaint before the Voivodeship Administrative Court (VAC) in Warsaw.

The Court in a judgment of 12 October 2009, case act signature VI SA/Wa 844/09, ruled that the recipient, to whom the association between the marks GESTROL and GESTROLTEX may arise, is not only a person who is reasonably well informed and reasonably observant and circumspect, but it is also a person with high qualifications. Anticancer drugs are not bought and ordained without the intermediary of a doctor. For this reason, evaluation of other state administrative body, namely the Office for Registration of Medicinal Products, Medical Devices and Biocides and it is the ORMP who sets procedures and requirements for registration of signs for medicinal products, must be considered not only as a medical evaluation of the effects of the medication but also as the situation where the ORMP does not allow for the existence of two medicinal products with the same or similar name, which would prevent the identification of the product and the source of its origin at the medicinal products market. Of course, the court agreed with the PPO's argument that the registration of the name of the medicinal product in the Office for Registration of Medicinal Products, Medical Devices and Biocidal Products at the Ministry of Health does not create an individual right to a specific drug name. Such a right exists from the time the right of protection for trademark is granted the IPL. It was obvious that the trade mark examination/registration proceedings before the PPO are independent of the proceedings before the ORMP, but it must be borne in mind that the earlier findings of one of the official bodies of Polish state cannot be neglected by another official body.

The VAC came to the conclusion that the contested decision of the PPO did not comply with the requirements of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments. According to article 107 §3 of the APC, the reasons for the administrative decision should include in particular: facts that the PPO considered proven, the evidence on which it relied and the reasons why the credibility of other evidence were denied the probative value, and the legal justification for the decision should be explain the legal basis for the decision, quoting the law. The VAC held the Polish Patent Office has not give sufficient reasons for, why it has refused to grant protection for a GESTROL trade mark.

The VAC annulled both contested decisions, and ruled them unenforceable. This judgment is not yet final. The parties may file a cassation complaint to the Supreme Administrative Court.

Du Pareil au m�me fails to ensure trade mark protection against Zara France

jjip@btinternet.com (Jeremy Phillips) — Sun, 31 Jan 2010 23:35:00 GMT

The well-known French company Du Pareil au même (DPAM) failed to ensure protection for its trade mark “86” in a case pending before the French Supreme Court against Zara France. This latter company had been sued by DPAM for having sold tank tops bearing the “86” trade mark.

In a previous phase of the civil proceedings, the Paris Court of Appeal had established that Zara France was not liable of infringement and parasitism, since DPMA’s “86” trade mark had expired because of lack of “serious” use by the owner for more than five years. DPAM challenged this decision before the French Supreme Court, arguing that the sign “86” was actually used on clothes in the relevant period. DPAM conceded that the sign “86” was embellished with different designs, or deconstructed in its representation, or accompanied by designations such as “Baby”, Motocross”, “RW86”, “DP 86”, “Lucky”.

In DPAM’s view such use qualified as a use in a modified form suitable to keep the trade mark alive. The French Supreme Court, however, noted that in its opinion the different versions of the sign “86” operated by DPAM could not qualify as “a modified form of the sign which does not alter its distinctive character”, and that the relevant public – by perceiving such forms only as decorative patterns – would not establish a connection with the registered trade mark. For these reasons the Supreme Court, dismissing DPAM’s petition, established that DPAM’s “86” trade mark should be removed (Arrêt 15 December 2009).

Note kindly supplied by Cristiano Cori (GE). Full text of the decision here.

Apple in trade mark troubles over iPAD name?

mark.schweizer@ml-law.ch (Mark Schweizer) — Sat, 30 Jan 2010 16:11:00 GMT

As the New York Times somewhat breathlessly reports, there are older IPAD trade marks! In class 9!

Yes there are - both the images here show "IPADs". The US trade mark owned by Fujitsu (US 76497338) was filed in 2003. It is registered for "HAND-HELD COMPUTING DEVICE FOR WIRELESS NETWORKING IN A RETAIL ENVIRONMENT" with first use claimed in 2002. The first part of the description certainly also fits Apples iPAD, but "in a retail environment"? Apples iPAD could be used in a retail environment, but certainly is not primarily aimed at that market I don't know enough about US trade mark law to judge whether that will be enough to argue similarity of goods - if any readers have opinions, please post them in the comments.

In Europe, CTM 1843937 is owned by the French (not Swiss, as the NYT reports) company STMicroelectronics for "integrated circuits, monolithic circuits assembly, filters against electromagnetic interferences, protections against electrostatic discharges, line terminations, termination resistors, all these products applied in particular to cellular telephones, computers and computer peripherals". According to STMicroelectronics's website, IPAD stands for "integrated passive and active devices" for signal processing. Applying the ECJ's Canon factors, I would say good luck with claiming that these goods are similar to the tablet computing device sold by Apple under the iPAD brand.

'Genuine use': MARQUES speaks out

jjip@btinternet.com (Jeremy Phillips) — Fri, 29 Jan 2010 14:51:00 GMT

Since not all readers of Class 46 are MARQUES members, they may not yet know of that organisation's clear articulation of its criticism of the recent and controversial decision of the Benelux Office for Intellectual Property in ONEL/OMEL (transcript in English, here; discussed here and here on Class 46) that the use of a Community trade mark in a single EU Member State only was insufficient to constitute 'genuine use' upon which the proprietor of an earlier mark could rely in opposition proceedings.

MARQUES's statement is not yet posted on MARQUES website, but you can read the salient parts of it here.

Italian Data Protection Authority establishes illegality of publication of photographs taken in violation of privacy of actor, George Clooney

evandeneede@trevisancuonzo.com (Edith Van den Eede) — Fri, 29 Jan 2010 11:26:00 GMT

Newsletter No 333 of the Italian Data Protection Authority (“so-called Garante Privacy”) reports that on 22 December 2009 a decision was issued in favour of actor, George Clooney, stating that the actor’s privacy had been violated by the publication of pictures of the actor and his guests in the garden of his villa near Como lake.

The photographs, taken of people in the garden which is well protected by hedges and walls so as to intentionally obstruct visibility, were held to be taken through additional activity by the photographers concerned namely by pushing away part of a hedge. This, for obvious reasons, violated the reasonable expectation of intimacy and privacy, notwithstanding the fame of the people involved.

Other photographs taken from places normally providing some visibility onto the villa from the outside, e.g. the stairway accessing the villa or from a balcony nearby, including pictures of windows of the villa, were considered lawful since they were taken in places visible to the public or at least open to the public or, in any event, in places that, because of their position, can be seen by third parties.

As a result, the Authority established the unlawfulness of the photographs of the guests in the garden, and prohibited the further use or distribution of the same. The newspapers and magazines involved were also ordered to communicate the decision to any third party to whom the rights to the photographs had meanwhile been transferred and to inform the Authority of such communications by 30 January 2010.

Spain - On well-known marks: size does matter.

ignacio.marques@bakernet.com (Ignacio Marques) — Thu, 28 Jan 2010 16:59:00 GMT

So says the Spanish Supreme Court (Judgment no. 761/2009, of December 1), that has just confirmed a prior Judgment from the Barcelona Court of Appeals (IP Section) on the protection of well-known marks.

On the basis on its reputedly well-known mark, and invoking section 6 bis of the Paris Convention, the claimant sought the invalidity of a later Spanish trade mark consisting on the same sign.

While the Court of First Instance awarded the claim, the Court of Appeals found that the evidence on the alleged notoriety filed by the claimant was, to say the least, far of being impressive. It could be established that the reputedly well-known mark generated a total turnover of Euro 28,015 from years 1992 to 1996. Sales where only made to three hospitals, all seated in the province of Barcelona (the challenged mark covered class 5, basically pharmaceutical and medical devices).

To make things ever worse for the claimant, the defendant made its homework and brought to the case:

(i) a survey that revealed that just 2,4% of the inquired doctors acknowledged that they used products branded with the claimant’s mark,

(ii) an affidavit from the Spanish Surgical Association certifying that the claimant’s mark was not well-known and

(iii) certifications of different regional Chambers of Commerce stating the claimant’s mark could not be reputed as well-known.

With all these materials on the Judge's desk, it is difficult not to wonder how the Court of First Instance happened to render the claimant's mark well-known. Luckily enough for the defendant (and for the common sense, too) the decision of the First Instance was overturned by the Appeal Court, whose ruling has been recently confirmed by the Supreme Court.

Don't forget the Business and Consumer Regs

jjip@btinternet.com (Jeremy Phillips) — Thu, 28 Jan 2010 11:05:00 GMT

Speaking at the CLT Annual Intellectual Property conference this morning, Joel Smith (Herbert Smith) drew attention to the Consumer Protection from Unfair Trading Regulations and the Business Protection from Misleading Marketing Regulations of 2008. These UK provisions, which respectively implement Directive 2005/29 on Unfair Commercial Practices and Directive 2006/114 concerning misleading and comparative advertising, constitute the biggest change in consumer protection in the UK in 40 years and cover all forms of marketing and advertising, both on- and offline. Carrying substantial criminal sanctions, they address issues such as comparative advertising -- which generally involves the use of another's trade mark -- and should therefore be borne in mind when constructing an advertising and marketing policy.

New IP laws for Bosnia?

jjip@btinternet.com (Jeremy Phillips) — Wed, 27 Jan 2010 22:14:00 GMT

On 31 December 2009 the Council of Ministers of Bosnia and Herzegovina adopted seven draft laws in the field of intellectual property, proposed by the Institute for Intellectual Property of Bosnia and Herzegovina. These include Draft Laws on Industrial Property, Trade Marks and on the Protection of Geographical Indications and Designations of Origin.

Bosnia currently has only one law on IP rights, the Law on Industrial Property, which entered into force on August 27, 2002. This law covers patents, trade marks, designs and geographical indications and designations of origin. The new proposal aims to make separate laws for each IP area, as part of Bosnia’s accession into the European Union and the harmonization of its legislation with the European Union.

The new draft laws are expected to be submitted to the Parliamentary Assembly of Bosnia and Herzegovina for further consideration in the near future.

Source: IP Newsletter of PETOSEVIC, from whom further information may be obtained here

Onel vs Omel - OHIM strikes back and BOIP publishes English and French translations

g.vanroeyen@banning.nl (Gino Van Roeyen) — Wed, 27 Jan 2010 15:42:00 GMT

OHIM published an official statement on the Onel vs Omel decision on its website today (have a look here): 'A recent ruling by the Benelux Office for Intellectual Property (BOIP) has attracted controversy in IP discussion groups on the web. The Opposition Decision of 15 January 2010 (Leno Merken B.V./Hagelkruis Beheer bv) states that use of a CTM in one EU Member State (in the specific case, the Netherlands) is insufficient to constitute genuine use in the EU. This contradicts the Joint Statement of the Commission and the Council, which establishes that use of a Community trade mark within the meaning of Article 15 of the CTM Regulation in one EU Member State is sufficient to constitute genuine use in the EU.'

Pending any possible appeal of the BOIP Decision, OHIM - applying the principle of the unitary character of the CTM - continues to consider that boundaries of Member States should not play a part in assessing “genuine use” within the EU Single Market, as recently outlined in its contrbution to the European Commission study on the overall functioning of the trade mark system in Europe.'

In the meantime BOIP published non-official translations in English and French of the decision at its website (have a look here).

Time for some shuttle diplomacy?

Onel vs Omel: Not Normal - The BOIP's Decision in English Translation

g.vanroeyen@banning.nl (Gino Van Roeyen) — Mon, 25 Jan 2010 13:49:00 GMT

A bit of 'shock and awe' might run trough the European Trade Mark Communities. The Benelux Office for Intellectual Property (BOIP) rules the waves (see my last Saturdays' post) by explicitly urging owners of CTM's to use their trade marks not only in one country, but throughout the EU. The saying in the Netherlands might be 'één is geen' (which could be freely translated as having one is the same as having none), but the question of course is, is that a valid approach in view of the Joint Statements in which it is held that use of a CTM in only one Member State can be sufficient to keep a CTM 'alive'. See for further first comments and discussion IPKat and Boek9. In the meantime a non-official English translation of the decision can be found here.

Spain � About Trade Mark Law, the Guggenheim museum and �tapas� (not kidding).

ignacio.marques@bakernet.com (Ignacio Marques) — Mon, 25 Jan 2010 09:24:00 GMT

This blogger has read the Spanish newspaper El Economista and found a curious case to report from Spain concerning the famous Guggenheim Museum in Bilbao.

The Spanish Supreme Court (Contentious-administrative Chamber) has recently dismissed the appeal filed by the owner of the “Guggenheim” Spanish trademarks against the registration of the Spanish trade mark for “El huevo frito Indautxu El Huevonheim” for class 43 (bar services, amongst others).

The challenged trade mark deserves some explanation – it reads “El huevo frito” (fried egg) plus “Indautxu” (the name of the district where the Guggenheim Bilbao museum in Bilbao is located – and the applicant is seated there, too) plus “El Huevonheim” ( “The eggnheim”?). So translated the challenged mark would read (in my free adaptation) “The Eggnheim - the fried egg from Indautxu”, being the name of a bar.

A gastronomical note: one of the Spanish culinaire glories are the “tapas”. One of the places to go in the quest for the best “tapas” is the Basque Country (Euskadi - "tapas" are called there "pintxos"), being Bilbao its most populous city and the seat of a remarkable Guggenheim museum. And certainly a good place to go “tapas” (this blogger can tell). Below an example - is this the "Eggnheim" tapa?

Having a branded bar so called in the museum surrounding seemed not to please the management of the world-renown museum. This is probably the application for registration of “El huevo frito Indautxu El Huevonheim” was (unsuccessfully) challenged by the foundation managing the Guggenheim museum not only before the Spanish Trade Marks and Patents Office, but also before the Courts of Justice.

According to the press report, the Supreme Court found that “El huevo frito Indautxu El Huevonheim” mark differed significantly from the prior “Guggenheim” marks. The mere coincidence in the “nheim” suffix in of the terms of the later trade mark (Guggenheim vs Huevonheim) was not enough to generate a “reasonable and objective” risk of confusion.

Your comments are welcome!

jjip@btinternet.com (Jeremy Phillips) — Sun, 24 Jan 2010 21:05:00 GMT

Since the Class 46 European trade mark law weblog moved to its new home on the MARQUES website, it has gone from strength to strength. Readership has increased and many readers have commented on the speed and relevance of its news and analysis. There's only one thing missing: your comments!

You can post your comments by clicking the "Post a comment" link at the bottom of each item on the weblog. The more comments the blog receives, the more its readers are enriched by other readers' ideas and experiences. So don't by shy ...!

Onel vs Omel: not Normal?

g.vanroeyen@banning.nl (Gino Van Roeyen) — Sat, 23 Jan 2010 09:25:00 GMT

Excitement in The Netherlands: in opposition proceedings between Leno Merken B.V. - owner of the CTM 'Onel' - acting against Hagelkruis Beheer B.V. - that had applied for registration of the trade mark 'Omel' in the Benelux - the Benelux Office for Intellectual Property (BOIP) decided on January 15, 2010 that normal use of a CTM in one Member State is not normal use in the EU. BOIP considers that a trade mark right is a monopoly. To justify such monopoly and to fulfill its essential function, the trade mark should be used. A monopoly that goes (much) farther than the territory within which the trade mark is used, is definitely an exception to the principle of free circulation of goods and the rendering of services within the internal market. That is clearly not what the legislator has intended. It appears very unjust that a company that uses its trade mark only in a local market, could prevent the opportunities for other companies for the entire territory of the internal market. It even appears even more unjust if a company that is only active locally (this is the case for the greater part of the Small and Medium Market companies, which form a serious part of the European economy), could be hampered in the development of its activities by and should defend itself against another company that is also only active locally and has no economic activity at all in an area that is not even in the slightest way nearby, so that there can be no likelihood of confusion at the public relevant for both companies relevant public. Therefore the BOIP - which considered that both parties apparently agreed that the trade mark Onel was only used in the Netherlands - comes to the conclusion that there was no normal use of Onel. It took into account too that the services for which the trade mark was registered (class 35, 41 and 45) are according to their nature fit for a broad public in the entire internal market. BOIP comes to the far reaching conclusion that the idea laid down in the Joint Statements that normal use in one country of the EC should be regarded as normal use per se is incorrect. What's that smell? That of an appeal?

Greece - 512.000 packs of counterfeit cigarettes seized at the Piraeus Customs

prentoulis@gdplaw.gr (Nikos Prentoulis) — Fri, 22 Jan 2010 13:51:00 GMT

The Greek newspaper Naftemporiki reports some good results for YPEE (the special unit of the Greek Ministry of Finance, charged with tackling economic crime) and the Piraeus Customs Authorities. According to the relevant news piece, 512.000 packs of counterfeit cigarettes were seized just this Wedensday January 20, following a joint raid by YPEE and Piraeus Customs officials. The shipment had come from Dubai and was declared as "goods for domestic use". Naftemporiki reports that, only a day before the seizure, the shipment's loader had requested form the shipping company to return the shipment back to Dubai, but his e-mail proved too little too late. This is an interesting way to deter smokers! Unfortunately, there are no data on the lucky and effective trade mark owner.

Most embarrassing cease and desist letter ever?

mark.schweizer@ml-law.ch (Mark Schweizer) — Thu, 21 Jan 2010 17:52:00 GMT

The German telecommunications company KOMSA may just have sent out some of the most embarrassing cease and desist letters ever. The employees of KOMSA suddenly saw the distinctive KOMSA logo on various websites. KOMSA's lawyer sent cease and desist letters to some of the site owners.

But the site owners claimed to be completely unaware of the infringement and not even able to see the logo on their site. After an undoubtedly heated exchange of accusations, the mystery was solved: KOMSA used an ad-blocking software that replaced advertising on third party sites with its own logo. So the only people who could see the "unauthorized use" were KOMSA's employees. Ouch.

News article (in German) here.

Audi wins 'Vorsprung durch Technik� appeal

jjip@btinternet.com (Jeremy Phillips) — Thu, 21 Jan 2010 13:36:00 GMT

There was good news today for German automobile manufacturer Audi. In Case C-398/08 P, Audi AG v OHIM, the Court of Justice of the European Union set aside the partial refusal to grant a Community trade mark for the words Vorsprung durch Technik. The application was filed in respect of a variety of goods and services in Classes 9, 12, 14, 16, 18, 25, 28, 35 to 43 and 45. Said the Court today:

"54 As regards the goods and services in question, other than those in Class 12 [ie "vehicles and apparatus for locomotion by land"], the Board of Appeal based its refusal of registration on the fact that the slogan ‘Vorsprung durch Technik’ conveys an objective message to the effect that technological superiority enables the manufacture and supply of better goods and services. According to the Board of Appeal, a combination of words which limits itself to that banal objective message is, in principle, devoid of any inherently distinctive character and cannot therefore be registered unless it is shown that the public has come to perceive it as a trade mark.
55 That analysis shows that Article 7(1)(b) of Regulation No 40/94 was misapplied.

56 ... all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message. It is clear, however, from the case‑law ... that those marks are not, by virtue of that fact alone, devoid of distinctive character.

57 Thus, in so far as those marks are not descriptive for the purposes of Article 7(1)(c) of Regulation No 40/94, they can express an objective message, even a simple one, and still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring little in the way of interpretation by the relevant public, or setting off a cognitive process in the minds of that public.

58 Even if it were to be supposed that the slogan ‘Vorsprung durch Technik’ conveys an objective message to the effect that technological superiority enables the manufacture and supply of better goods and services, that fact would not support the conclusion that the mark applied for is devoid of any inherently distinctive character. However simple such a message may be, it cannot be categorised as ordinary to the point of excluding, from the outset and without any further analysis, the possibility that that mark is capable of indicating to the consumer the commercial origin of the goods or services in question.

59 In that context, it should be pointed out that that message does not follow obviously from the slogan in question. As Audi observed, the combination of words ‘Vorsprung durch Technik’ (meaning, inter alia, advance or advantage through technology) suggests, at first glance, only a causal link and accordingly requires a measure of interpretation on the part of the public. Furthermore, that slogan exhibits a certain originality and resonance which makes it easy to remember. Lastly, inasmuch as it is a widely known slogan which has been used by Audi for many years, it cannot be excluded that the fact that members of the relevant public are used to establishing the link between that slogan and the motor vehicles manufactured by that company also makes it easier for that public to identify the commercial origin of the goods or services covered.

60 It follows from the foregoing considerations that the contested decision must be annulled in so far as, on the basis of Article 7(1)(b) of Regulation No 40/94, the Second Board of Appeal refused in part the application for registration of the mark Vorsprung durch Technik".

Russia: Cybersquatters, beware! Courts may not be stopping at the statutory compensation limit anymore

sasha_yelnik@yahoo.com (Sasha Yelnik) — Thu, 21 Jan 2010 12:52:00 GMT

This blogger is thankful to Adam Smith, a reporter from World Trademark Review, who just drew her attention to the recent judgement by the Moscow Arbitration Court.

In the case, which has already attracted a number of comments, Landmark VIP Services was sued by the business magazine Forbes and its Russian publisher. The latter alleged a trade mark infringement, the result of registration and use of the domain name Forbes.ru by the defendant (the mark being very similar to the claimant's ForbesRussia.ru). This was the first time that the court awarded a compensation higher than the statutory limit of RUB5,000,000. Natalia Gulyaeva, a leading IP lawyer in Russia, suggests that the award of RUB8,000,000 (nearly $300,000) may set a precedent for future cybersquatter disputes.

However, this may not be the end of the story as Landmark VIP Services are expected to appeal against the decision.

Natalia Gulyaeva warns that the number of disputes concerning registration of domain names, conflicting with the IP rights of their holders, is likely to increase this year. This is so due to the possibility of registration of Cyrillic domain names in the .рф (.rf) zone; the procedure which will become available to wider public after 25 march 2010.

The original article can be found here.

Mail.ru can be protected forever!

sasha_yelnik@yahoo.com (Sasha Yelnik) — Thu, 21 Jan 2010 10:24:00 GMT

Mail.ru, one of the three most popular traffic-generator websites in Russia (the other two are Yandex and Google), has received the status of a notorious trade mark on the territory of the Russian Federation. This prestigious award provides the company with a right to perpetual legal protection.

It has been agreed that mail.ru deserves this acknowledgement as its auditorium, visiting the website both for its email and search services, exceeds 50 million users. Furthermore, mail.ru, that had previously been conducting its searches with the use of Yandex technologies, is now operating on its own (with a little help from the Russian Google, whose AdWords appear on the results page).

Note that only 85 companies own notorious trade marks in Russian Federation. Those enjoying the status include Lipton, Nescafe, Intel, Газпром (Gasprom) and others.

The good news can be found here (in Russian).

Medion wins this round in "life" dispute with Nokia

prentoulis@gdplaw.gr (Nikos Prentoulis) — Wed, 20 Jan 2010 14:28:00 GMT

Just out today, the General Court's judgment in case T-460/07 (Nokia v OHIM, Medion) was a bit disappointing for Nokia. As the IPKat already informed us last week,Nokia sought to register "LIFE BLOG" as a CTM in classes 9, 38 and 41.

Medion opposed mainly on the basis of an earlier German trade mark registration for "LIFE" in classes 1,7 to 11, 16, 21, 28, 37, 38, 41 and 42.Nokia failed to convince OHIM's Opposition Division, as well as the Board of Appeal, and the General Court was not too kind either. It upheld the Board of Appeal's decision and rejected Nokia's appeal. The Court held thatonsumers generally attach more importance to the beginning of words since they are more pronounced (para. 60 citing case T-325/04 "Wordlink") and made the following distinction regarding the word "blog" (paras 62 and 63)

“Applied to IT or telecommunications goods or services, ‘blog’ must be considered as having a limited distinctive character since, by reference to that area, that word is usually understood, even by the average German consumer of those goods or services, as referring to an online diary (weblog). In that category, the word ‘life’ has a greater distinctive character than the word ‘blog’. However, as regards all the other goods or services which do not imply an IT or telecommunication element, and in regard to which the word ‘blog’ has no meaning, it must be held that neither of the two elements ‘life’ or ‘blog’ emerges clearly as the element with the most distinctive character. [The juicy part comes next] However, as OHIM has rightly observed, the greater degree of inherent distinctiveness of ‘blog’ will, assuming it is established, be somewhat offset by the fact that ‘life’ is at the beginning of the sign, as the public’s attention is usually concentrated on the beginning of the sign applied for.”

Further the Court held that “according to the case-law, when a composite mark consists of one component juxtaposed to another trade mark, that latter mark, even where it is not the dominant component in the composite mark, may still have an independent distinctive role in the composite mark. In such a case, the composite mark and the other mark can be regarded as similar (Case T-212/07 Harman International Industries v OHIM – Becker (Barbara Becker) [2008] ECR II-0000, paragraph 37; see also Medion, paragraphs 30 and 37). In this case, having regard to all the above considerations, the ‘life’ element retains an independent distinctive role in the mark applied for” (para 73).

Another interesting bit revolves around the Court’s answer to Nokia’s argument of peaceful coexistence on the market of many marks incorporating the term “life” [kind of a “crowded field argument”]. The Court held that although it could not be entirely excluded that such coexistence could reduce the risk of confusion [that sounds like “don’t even think about it”], nevertheless, it should be proven before OHIM that such coexistence is based upon the absence of consumer confusion [yeap, that’s a no – but how could you ever prove that?]

Comments or thoughts anyone?

CHESHIRE CAT a geographic indication?

mark.schweizer@ml-law.ch (Mark Schweizer) — Wed, 20 Jan 2010 13:54:00 GMT

Disney sought to register the trade mark CHESHIRE CAT for a variety of products in Switzerland, among them CDs, DVDs, books, magazines, computers, MP3 players, watches, jewellery, pens, bags, clothing, shoes and games. The Swiss IPO allowed the application for all goods that are carriers of content (books, DVDs etc), but demanded that a limitation "all goods originating from England" be added to the list of products for the other goods (that's the weird Swiss way of dealing with geographic indications in trade marks). CHESHIRE CAT would be understood by the relevant Swiss public as an indication that the goods so labelled originate from Cheshire, England.

The Federal Administrative Court reversed. Cheshire was hardly known as a place name among the Swiss public, it was a small shire visited by few (Swiss) tourists (the Court notes that because of the climate, north-western England is not a preferred destination of Swiss tourists...). Cheshire has no special reputation for manufacturing computers, watches, clothing etc. The term CHESHIRE would not be recognized by the Swiss public as a geographic indication (neither, so the Court, as a figure from Lewis Carrol's "Alice in Wonderland", as it was only mentioned seven times in the book).

Decision of 11 January 2010 (in German).

You can't dilute Vodka with Vodkat

jjip@btinternet.com (Jeremy Phillips) — Wed, 20 Jan 2010 13:40:00 GMT

In the Chancery Division of the High Court, England and Wales, Mr Justice Arnold ruled yesterday that the manufacturer of a leading brand of vodka was entitled to object to the sale of a non-vodka product under the name "vodkat". Holding in favour of Diageo, who sell vodka under the SMIRNOFF brand, the judge explained that this was what is known as "extended passing off" -- a form of relief that protects manufacturers who enjoy the benefit of the shared goodwill in even a generic term. This form of protection has been successfully invoked in the past to protect manufacturers against the wrongful use of the term "advocaat".

You can read the decision in full here.

Finland: UNION reincarnated

mikael.kolehmainen@benjon.fi (Mikael Kolehmainen) — Wed, 20 Jan 2010 09:50:00 GMT

The famous logo of a gas station chain that remained in operation between the years 1952 and 1991 has been, as the Finnish saying goes, "removed from naphthalene" and appears now as the new logo of a Helsinki-based design company.

More on the subject of reincarnation here.

Polish court rules on trade mark use

tomasz@rychlicki.net (Tomasz Rychlicki) — Tue, 19 Jan 2010 13:18:00 GMT

EMO-FARM Spółka z o.o., the owner of the "A sio !" R-173579 trade mark, filed the opposition to a final decision of the Polish Patent Office on the grant of a right of protection to SI R-184885 trade mark applied for by Przedsiębiorstwo Farmaceutyczne ZIOŁOLEK sp. z o.o. The dispute between these two companies concerned inter alia the issue of trade mark use.The Voivodeship Administrative Court (VAC) in a judgment of 9 October 2009, case act signature VI SA/Wa 1033/09 provided the interpretation of adequate provisions of the Polish Act of 30 June 2000 on Industrial Property Law – IPL.

The Court ruled that, under the conditions set in the IPL, the trade mark use occurs when it is real, which means that the sign is used for goods and it is used in business transactions in a manner that enables the creation and persistence of the association between the sign and the product, it is unambiguous, which means as the trade mark use, at least in its primary function, i.e., to distinguish goods of the entitled person on the basis of their origin and it is used according to specialization. These abovementioned conditions must be met together, irrespectively of the form of the trade mark use. Their sum is beyond the pale of article 154 of the IPL which contains only a list of examples of trade mark use:

The use of a trademark shall, in particular, consist of:
(i) affixing the trademark to the goods covered by the right of protection or to the packaging thereof, offering and putting the goods on the market, importing or exporting thereof, or their storing for the purpose of offering and putting on the market, as well as offering or providing services under that trademark,
(ii) using the trademark on business documents handled in putting the goods on the market or in rendering services,
(iii) using the trademark in advertising.

Does the ICC Code on Advertising and Marketing lack a sense of humour?

mark.schweizer@ml-law.ch (Mark Schweizer) — Tue, 19 Jan 2010 09:36:00 GMT

Mars, owner of the Snickers brand, is running an advertising campaign based on the über-macho Mr. T from the A-Team TV series. The campaign is based on a tongue-in-cheek challenge to the male consumers' manhood. The international website for the campaign can be found here http://www.getsomenuts.tv/ . Whether this site is in all details identical with the Swiss site judged below is not entirely clear because the Swiss site is not accessible anymore, for reasons that will become apparent.

The Swiss self governing body of the advertising industry, the Lauterkeitskommission, has ruled in a decision published this January that the campaign violates the International Chamber of Commerce's Code on Advertising and Marketing Communication Practice (ICC Code). Art. 18 of the ICC Code reads, under the heading "social values":

Marketing communication should not suggest that possession or use of the promoted product will give a child or young person physical, psychological or social advantages over other children or young people, or that not possessing the product will have the opposite effect.

The Lauterkeitskommission held that the Snickers campaign was directed at kids and young persons - so much is pretty clear. It then held that the campaign suggested that possession of the goods - we are talking about a chocolate bar here - made the owner more manly and stronger. This was a violation of the above cited provision of the ICC Code and made the campaign unfair under the practice of the Lauterkeitskommission.

Given the very tongue-in-cheek nature of the campaign, this blogger wonders whether the campaign should not have been judged with "humour mode enabled". He also wonders whether not just about any advertising is aimed at creating the impression that one gets a physical, psychological or social advantage from possession of the goods. Isn't that at the heart of any image advertising that goes beyond merely listing the product characteristics?

The decision (in German) can be found here; caution, 22 MB PDF file.

Greece - The industry organizes seminar on counterfeiting in Thessaloniki

prentoulis@gdplaw.gr (Nikos Prentoulis) — Mon, 18 Jan 2010 14:18:00 GMT

It is always nice to see industry associations addressing counterfeiting issues. This Thursday January 21, 2010, in Thessaloniki, the Federation of Federation of Industries of Northern Greece (FING), together with the Greek Industrial Property Organization (OBI) (namely the Greek Patent Office) host an interesting (and free) seminar on how to tackle counterfeiting. According to a statement of FING’s president, Mr Nikolaos Pentzos, in the Greek daily newspaper Eleftherotypia, the rise of counterfeiting activity that is hitting customs authorities the last two years is alarming. Counterfeiting, says Mr Pentzos mainly involves pharmaceutical products, food and beverage, apparel, cigarettes, software, toys and electronic equipment.

The seminar will not be restricted to patent infringement, but will also address copyright and trade mark infringement issues. As far as trade marks are concerned, this Class46 member is happy to see, among the distinguished speakers of the seminar, Ms Georgopoulou, lawyer at the General Secretariat of Commerce (which includes the Greek Trade Mark Office), because IP politics and public awareness in Greece usually stop at the word copyright.

BGH rules in the Opel/Autec toy car case

birgit_london@yahoo.co.uk (Birgit Clark) — Sun, 17 Jan 2010 20:14:00 GMT

The German Federal Supreme Court (BGH) has now handed down its decision in the Opel replica car decision (case reference I ZR 88/08 – Opel-Blitz II of 14 January 2010). The court of first instance, the Regional Court Nürnberg-Fürth, had referred this matter to the ECJ for a preliminary ruling which led to the ECJ's decision in Adam Opel/Autec (C-48/05).

While the full decision is not yet available, the BGH has published a press release concerning this case (press release No. 9/10 of 15 January 2010). As final court of appeal, the BGH has now decided that a car manufacturer cannot rely on its trade marks rights in order to prevent the distribution of toy model cars that are scale models of the original cars bearing the original car manufacturer's trade mark on the relevant space. The BHG found that such use did not affect the main function of the mark, which is indicating the trade origin of the goods (here: toy cars), nor did this use affect any other functions of the trade mark because the relevant consumer would merely regard the logo device affixed on the defendant's model car as an exact copy of the mark that the original car had affixed on exactly the same space. Consequently, the mark would only be seen as a reproduction of a detail of the original car. The court stressed that the relevant consumers would not regard it as a reference to the trade origin of the toy car.

For the BGH's press release please click here (in German). To read a more detailed summary of this decision on the IPKat blog, please click here.

Czechs keep cheese GI, to disappointment of Slovakia

jjip@btinternet.com (Jeremy Phillips) — Fri, 15 Jan 2010 10:58:00 GMT

Commission Regulation 24/2010 of 13 January 2010 entering a name in the register of protected designations of origin and protected geographical indications [Jihočeská Niva (PGI)] was published yesterday on the website of the Official Journal of the European Union. The appellation Jihočeská Niva applies to a blue cheese which has been in dispute between the Czech Republic (which the Commission has ruled to be the rightful custodian of the name) and neighbouring Slovakia.

OHIM contribution to Commission study on European trade mark system now available

birgit_london@yahoo.co.uk (Birgit Clark) — Thu, 14 Jan 2010 20:54:00 GMT

On its website the OHIM has now published its

"... contribution to the European Commission's study on the overall functioning of the trade mark system in Europe is now available on the website. The OHIM paper proposes a number of changes in the basic regulations covering the Community trade mark, in order to take account of the growth in online services and the realities of doing business in the 21st Century.

There are also proposals designed to improve the governance of OHIM, and deal with future fee adjustments and the office's substantial accumulated surplus. In addition, the paper discusses the issues of "genuine use" of trade marks, and coexistence and cooperation with national trade mark offices."

The European Commission study into the working of the European trade mark system follows a request by the Council of Ministers in 2007. The Max Planck Institute in Munich, Germany, was contracted to carry out the study in October last year 2009.

To read the OHIM contributions, please click here (38 pages, PDF). Well worth a read!

Switzerland: registration in bad faith no argument in opposition proceedings

mark.schweizer@ml-law.ch (Mark Schweizer) — Thu, 14 Jan 2010 20:20:00 GMT

Swiss watch manufacturer Golay Spierer SA sought to register its name Golay Spierer as a trade mark. It faced an opposition based on an older trade mark GOLAY. Golay Spierer argued that this was a "defensive" mark, registered without intent to use merely to block its registration of Golay Spierer.

The Federal Administrative Court ruled that this argument cannot be heard in opposition proceedings. Abuse of right was an absolute ground for refusal. The argument was to be heard only before a civil court, in civil proceedings on the merits.

The opposition was subsequently admitted and the trade mark Golay Spierer revoked.

Decision of 6 December 2009 (in French).

Ouzaki's not ouzo -- and it's not Greek either

jjip@btinternet.com (Jeremy Phillips) — Thu, 14 Jan 2010 08:45:00 GMT

Last month Bulgaria’s Commission for Unfair Competition fined Sofia-based alcohol producer Sis Industries the sume of € 613,079 for producing and advertising a drink by the name of Ouzaki Zorbas. This name was found to be confusingly similar to Greece’s most popular drink, ouzo. The company that developed the advertising strategy was fined €30,873. According to the Commission, the elements of Greek culture portrayed in the advertisements and on the drink’s label could easily mislead consumers into believing that the drink was a variation of ouzo.

Source: IP News Eastern Europe (PETOŠEVIĆ), here.

The Polish TIFFANY's trade marks saga continues

tomasz@rychlicki.net (Tomasz Rychlicki) — Wed, 13 Jan 2010 10:13:00 GMT

Some time ago, this Class 46 team member reported in a post entitled "Poland: Tiffany fought with Tiffany" that two American companies were disputing trade marks with a TIFFANY element before the Voivodeship Administrative Court (VAC). The New York company argued inter alia that use of TIFFANY for goods such as footwear is a parasitic activity that uses another's trade mark reputation and brings undue financial benefit to the holder of national registrations. The company also stressed that its trade mark is subject to protection under article 8 of the Paris Convention.

The VAC in a judgment of 24 July 2008, case act signature VI SA/Wa 238/08, dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeals against the Polish Patent Office (PPO) decision of 19 March 2007, case act signatures Sp. 68/04 and Sp. 69/04, regarding the cancellation of the right of protection for word-figurative trade marks: TIFFANY R-128063 and "Tiffany & Broadway Inc." R-128064 which were registered in class 25 for shoes. The VAC ruled that the application for the protection of the TIFFANY mark for goods in class 25 was contrary to the principles of social coexistence because it caused the risk of weakening the reputation of the trade mark. Given the fact that the shoes are cheap and readily available, there is a risk of dilution of the reputation of TIFFANY trade mark and it may lead to lose its attractiveness among the exclusive clientele of goods bearing this mark.

The company filed a cassation complaint to the Supreme Administrative Court (SAC). The Supreme Administrative Court in a judgment of 8 July 2009, case act signature II GSK 1110/08 ruled that the reputation of a trade mark is associated with its highly distinctive character. One could say that a reputed trade mark isone that has a high ability to automatically trigger associations with the product for which it was registered. It is obvious that this ability will be weaker, according to the number of cases of using the same or similar trade mark as a designation of other goods that are originating from other entrepreneurs. With regard to the plea of weakening (the dilution) of the reputation of the Tiffany trade mark, i.e. weakening its individuality, based on the ability to cause the automatic association with the goods marked by this sign, such effects are also caused by unquestioned by the Court numerous registrations of identical or similar trade marks for other entrepreneurs for various other goods, as well as the use of this sign the name of very different businesses.

The SAC in a judgment of 8 July 2009, case act signature II GSK 1111/08 ruled that the old Polish Trade Mark Act – TMA - (in Polish Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15,with later amendments, do not explicitly provide for any special protection for unregistered reputed trade marks. However, the doctrine and the Polish case-law have already accepted the concept, that such protection could be provided under article 8(1) of the TMA,

A trade mark shall not be registrable if: 1) it is contrary to law or to the principles of social coexistence;

in particular looking at the circumstance of "a trade mark conflicting with the principles of social coexistence", from the subjective perspective – it was commented that, the “contradiction/variance with the principles of social coexistence” may concerning the conduct/behavior of the applicant. On the basis of such conclusions, the registration of a sign for the goods of another kind, if the registration was intended to use the reputation of another's trade mark or it was a threat of such reputation, was excluded. A trade mark application that was filed contrary to the principles of social coexistence, was an application made in bad faith. The absolute grounds/obstacles that are provided against the registration of the mark as defined in article 8(1) of the TMA do not directly refer to the relationship between the sign that was applied for and any other competing trade mark, however, in accordance with the accepted interpretation of that provision, in case of the infringement of the rules of social coexistence, the obstacle could be the inappropriate behavior on the applicant (its actions done in bad faith). The assessment of applicant’s actions, who was motivated by the desire to use another's trade mark reputation, should therefore be also varied according to circumstances of its motivation and, not only related to the trade mark itself.

The application for the right of protection for a trade mark that was made with the intent to use another trade mark’s reputation should be judged as an application that was made with the breach of the rules of social coexistence (application made in bad faith), regardless of whether it concerns a reputed registered trade mark or unregistered reputed trade mark. The Polish case-law, for instance the Supreme Administrative Court in its recent judgment of 9 May 2008, case act signature II GSK 506/07, that was previously reported by Class46 in the post entitled "Poland: proving the fame of a trade mark", already established the rule that in a case of famous trade mark and its reputation, besides its recognition, it must be also characterized by the following characteristics:

market share/participation (both quantity and value of sold goods),
range and long-lasting of an advertisment of the product bearing a trade mark,
territorial and temporal range of use,
licences granted for trade mark use, quality of goods bearing a trade mark,
value of a given sign in assessment of an independent financial institution,
size and extent of expenditures spent on promotion of a mark,
the relationship on prices of substitute goods,
if (and to what extent) the mark is used by third party.

The SAC also noted that the Community case-law provides several fundamental conditions for the recognition of a trade mark as a reputed one. These are:

knowledge of the trade mark by a significant group of customers,
the contribution of the trade mark in the market,
intensity and geographic scope of the use,
intensity matching of goods with the trade mark,
the size of expenditures on advertising and promotion of the trade mark.

The SAC cited inter alia the judgment of the Court of Justice of the UE of 14 September 1999 in case C-375/97, General Motors and the judgment of the Court of First Instance of 13 December 2004 in case T-8/03, El Corte Ingles and the CFI’s judgment of 25 May 2005 in case T-67/04, Spa Finders.

It is also clear that the reputation of a trade mark must be assessed and established in the country in which the protection is sought. If one would like to qualify a given trade mark as a reputed one in the Republic of Poland, then the argument of the international reputation of a trade mark is not sufficient. The basic circumstance for the recognition of the reputation of a sign in a specific country is to show by a person who is invoking this argument, the market share in terms of both quantity and value of goods sold.

The SAC held that provisions of the First Directive 89/104/EEC of 21 December 1988 do not preclude the possibility of granting the protection to unregistered reputed trade marks under the national law. Just to keep it in order, it is worth adding, that 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, provides in article 132(2)(iii)

2) A right of protection for a trade mark shall not be granted, if the trademark: (iii) is identical or similar to a renown trademark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark. The above provision shall apply to well-known trademarks accordingly.

for the protection of registered trademarks to the extent of the wording of article 4(4)(a) of the Directive. The trade mark application that was made in bad faith shall be rejected based on the absolute ground for refusal of protection based on provisions of article 131(2)(i) of the IPL.

2. A right of protection shall not be granted for a sign, if: (i) it has been applied for protection with the Patent Office in bad faith,

The SAC ruled that the provisions of article 4(4)(a) of the Directive cannot be interpreted as the maximum limitation for the protection of famous marks in the national law and it would be difficult to follow the arguments that the First Directive 89/104 is an example of the so-called "complete harmonization" citing the judgment of the Court of Justice of the European Union of 9 January 2003 in case C-292/00, Davidoff & Cie S. A.

According to the SAC, the court of first instance (VAC) wrongly assumed the bad faith of the applicant and it did not consider the fact that the applicant has conducted its business in Poland since 1990 with the use of the mark, and after about five years of its activity, the company applied for the registration of the mark. These circumstances certainly were not irrelevant in assessing the intention and purpose of the applicant, so the VAC should address them in the grounds of the appeal.

When deciding on the interpretation of article 8(1) of the TMA, which allows for the protection of not registered reputed trade marks in Poland, it should be also noted, that such protection have a special character because it applies to unregistered marks, and it is an exception to the principle of protecting industrial property rights by the registration process. This requires taking much care, so that without proper justification, would not depreciate the importance of registering trade mark and it would not reduce the registration to a purely formal procedure that has no importance.

Thus the SAC annulled both judgments of the Voivodeship Administrative Court, remitted the case to the VAC for reconsideration in accordance with the conclusions reached and ordered the Polish Patent Office to pay Tiffany & Broadway Inc. Div. of Texpol Corporation 1200 PLN as reimbursement of costs of the cassation compliant.

Cheese and nuts get PDO protection

jjip@btinternet.com (Jeremy Phillips) — Wed, 13 Jan 2010 06:36:00 GMT

There are two new provisions granting GI protection to protected designations of origin in Europe:

* Commission Regulation 20/2010 of 12 January 2010 entering a name in the register of protected designations of origin and protected geographical indications [Arzùa-Ulloa (PDO)]. Arzùa-Ulloa is a Spanish cheese.

* Commission Regulation 21/2010 of 12 January 2010 entering a name in the register of protected designations of origin and protected geographical indications [Pistacchio Verde di Bronte (PDO)]. Pistacchio Verde di Bronte (pistacchio nuts from Bronte, Sicily) are either consumed whole or used as a paste when making torroni, cassate and gelato.

Serbia gets a new trade mark law

jjip@btinternet.com (Jeremy Phillips) — Tue, 12 Jan 2010 14:16:00 GMT

According to issue No. 104 of the Official Gazette, four intellectual property laws have were passed in Serbia which entered into force on December 24, 2009. These laws included new Trade Marks Law and a new Designs Law. Source: IP News Eastern Europe, issued by PETOŠEVIĆ.

Trade marks of Russian beer can now be used by a Kazakh brewery

sasha_yelnik@yahoo.com (Sasha Yelnik) — Mon, 11 Jan 2010 16:25:00 GMT

Russia’s biggest beer maker Baltika has licensed the right to use its trade marks “Baltika” and “Nevskoe” to Derbes, a Kazakh brewer. The license was granted until 2029 for a fixed fee of €90 million. Furthermore, Derbes must make quarterly royalty payments of 4.5% of their net profits from any production and sales of beer under the above trade marks.

Carlsberg, the owning company of Baltika and Derbes, is considering a reorganisation in order to unite the two. Such a move would concentrate on the creation of a subsidiary of the Russian company, namely a limited liability Baltika-Almati (LLP).

The original article can be found here. (In Russian)