In Judgment T-378/09, the General Court confirmed the decision of the First Board of Appeal which rejected the opposition brought by Spar Handelsgesellschaft mbH against the applied for Community trademark SPA GROUP on the basis of earlier German rights, such as the following (and the other same mark in black and white)

As regards the comparison between the signs, they present visual, aural and conceptual differences. SPA will be associated to the well-being water treatment and GROUP is basic business English which will be understood by the German public. SPAR means ‘to save’(money). Even though the opponent presented examples of common neologisms made of English and German words like ‘gedowanloadet’, ‘upgegraded’ and ‘Justizdepartment’, it is not conclusive proof to the contrary that most of the public, upon seeing SPA GROUP will pronounce ‘spa’ as the English pronunciation and not like ‘SPAR’ in the German pronunciation (with a whistling ‘s’ as in ‘chpar’).

Likelihood of confusion can thus be excluded given the differences between the signs, the weak distinctive character of the earlier rights for some of the goods in Class 16 and services because of its meaning ‘to save’ related to the saving characteristics and taking into account the higher degree of attention for the relevant professional consumer for services in Class 35.

The evidence presented by the opponent regarding the reputation was rejected by the Board according to its discretionary power because the Survey study had been conducted in 2005, before the date of opposition and there was no valid reason for not having submitted it earlier in the procedure. Further, it only showed reputation in relation with foodstuff which did not belong to the opposed goods and services.

There is no evidence of indirect risk of confusion because no proof was provided of serious use of a family of trademarks such as EUROSPAR and SPAR express and the contested CTM is not similar enough as to be perceived like a declined mark. Finally, the claim regarding the risk of confusion with the company name Spar Handelsgesellschaft mbH was rejected because it was not a ground of opposition raised before the Office.

The average consumer might not know it but trademark lawyers have to review their beer classics outside of the pub (should it become a prerequisite for the TM bar exam?) since they are increasingly facing EU trademarks battles more or less confusing . As it turns out, Bavaria beer is actually Dutch while Budweiser is not just the most famous American lager, it has been the "The Beer of Kings” and brewed in České Budějovice, Czech Republic since the 13^th century.

The General Court in Case T-205/10 had yet to deal with a battle of Hispanic trademarks beer between Cerveceria Modelo (Mexico) and Plataforma Continental (Spain). The judges rejected the appeal upholding the finding by OHIM of likelihood of confusion between the following marks for identical goods in Class 32:

          LA VICTORIA DE MÉXICO

Earlier CTM                         Contested CTM

The relevant public is the average EU consumer. As the Office pointed out, even if in the sector of alcoholic drinks, the consumer is used to trademarks with various figurative and denominative elements, he will not pay more attention to the various elements (in particular after more than one pint..).

On the overall impression of the trademarks, the Office rightly found that VICTORIA is the dominant element in the earlier mark and that the other words ‘cerveza’, ‘pilsener’, ‘Málaga’ or ‘1928’ are of secondary importance size-wise and also because of their descriptive character of the product, place of geographic origin and year of marketing. Thus, from a visual and aural point of view, the signs are similar in coinciding in their dominant element.

From a conceptual point of view, the consumer who speaks English or Romance languages (i.e.: the French, Italian, Portuguese, Romanian and Spanish) will probably understand ‘victoria’ as referring to ‘victory’; however for the rest of the EU consumers, it might be perceived as a woman’s name . The conceptual meaning of ‘the biggest victory of Mexico’ of independence over the Spanish Kingdom was not demonstrated. For most EU consumers, Mexico clearly indicates the place of origin because it corresponds or is similar to the country’s name (¡no chingues! As the locals would say) and will be understood as a qualifier of the victory or the woman’s name. Overall, the dominant element being clearly VICTORIA , the marks will be seen as conceptually similar.

For a famous Mexico Victory click aquí and for musical La Victoria de Mexico click allá.

In Judgment T-593/10, the General Court had to examine if there was a likelihood of confusion between the two following marks for identical goods in Class 25:

   v    

Contested CTM                                  Earlier CTM

The GC rejected the appeal and agreed with the OHIM that the signs were visually different so as to exclude any risk of confusion for the average EU consumer. In the earlier mark, there is clearly the letter B and the drawing of a boomerang (since the curved part of is wider than the two straight branches) represented below whereas in applied for mark, the figurative element above could be conceived as a ‘B’ or as the number ‘8’ and it not very probable that the drawing under be perceived as a boomerang. The colours vary greatly as well as the orientation of the ‘boomerang’- like figurative element.

For the consumer who reads the letter B in the contested CTM, the marks will bear some aural and conceptual similarity but for those who read a 8, the marks will be different.

The court rejected the argument brought by the Opponent El Corte Ingles that because the CTM application was denominated as ‘B’ before OHIM, the consumer would perceive it as such. The GC, invoking the well-know case law that for Class 25 goods such as ‘clothing’ the visual aspect bears more importance concluded that the consumer will not confuse the marks in conflict.

"New Season Combers/Comber Earlies are famed for being the earliest local potato to be harvested and for their unique characteristics.  We are justifiably proud of the quality of our locally produced food and it is encouraging to have our products recognised internationally. PGI registration is good news for the local economy and will help local growers to market New Season Combers domestically and further afield and protect against imitation. It will also build consumer confidence in this product by providing reassurance of its provenance". 

"Oseltamivir. Esomeprazole. Trastuzumab. Where do drugs get those odd-sounding generic names? The answers are in the current issue of Chemical & Engineering News (C&EN), the weekly newsmagazine of the American Chemical Society, the world's largest scientific society, which explains the logic behind the tongue-twisters. C&EN Associate Editor Carmen Drahl explains that until 1961 there was no standard for assigning drugs generic names, which are different from brand names like Tamiflu (oseltamivir), Nexium (esomeprazole) and Herceptin (trastuzumab). That's when three medical organizations created the U.S. Adopted Names (USAN) Council to assign simplified alternatives to the unwieldy proper names the International Union of Pure & Applied Chemistry gives to molecules. For instance, under USAN's guidance, "cis-8-methyl-N-vanillyl-6-nonenamide" becomes "zucapsaicin." The council recommends generic names to an international agency of the World Health Organization. 

The tongue-twisting words the USAN Council creates are products of "stems" that describe a drug's characteristics, which Drahl likens to the Latin and Greek roots of many English words. Drahl writes that these stems describe everything from a drugs' function to its shape. For instance, the "-prazole" ending of Nexium's generic name, esomeprazole, reveals that it is a type of antiulcer medication. Similar drugs will have the same stems in their names, allowing those familiar with the stems to crack the code. The USAN Council is careful to avoid words that are difficult to pronounce in foreign languages or that may have other meanings abroad. Sometimes, Drahl notes, a generic name will also include hints about its developer that a drug company has suggested to the council, as in carfilzomib, which recognizes molecular biologist Philip Whitcome and his wife Carla". 

In Case T-304/09, the battle for who if anybody, can own rights over Basmati for Class 30 ‘long rice’ in Europe, raged in the General Court between Indian and Thai competitors.

Siam Grains Co. Ltd (from Bangkok) filed an application for figurative sign represented here right.

United Riceland Private Ltd (now Tilda Riceland Private Ltd) from Gurgaon filed an opposition based on the earlier non-registered trade mark or the earlier sign BASMATI, used in the course of trade in relation to rice. It claimed that under Article 8(4) of Regulation No207/2009 it was entitled under the applicable law in the United Kingdom to prevent by means of an action for passing off use of the trade mark applied for.

The Office rejected the opposition and the Board of Appeal in essence held that that the term ‘basmati’ was not a trade mark or sign covered by proprietary rights, but simply the common designation of a variety of rice so the term ‘basmati’ is generic and that the Opponent had not shown that it was the proprietor of the right relied on.

In its appeal, the opponent presented the following claims (i) on the basis of a purely literal reading of Article 8(4) CTMR, the Board wrongly attempted to impose a ‘Community concept of “proprietorship” ‘of the earlier mark or sign relied on; (ii) the Board erred in making a distinction between the ‘extended’ form of passing off in the United Kingdom, upon which the opposition was based, and Article 8(4) of CTMR, which – according to the Board of Appeal – must refer to an exclusive right held by a single trader; (iii) the Board of Appeal erred in requiring that the opponent show ownership of the earlier sign in addition to showing ownership of an intangible right; and (iv) the Board of Appeal erred in finding that the term ‘basmati’ is generic.

The GC reminded that the opponent must establish, in accordance with the legal rules governing actions for passing off, as laid down by the laws of the United Kingdom, that three conditions are satisfied: the goodwill acquired (that is to say, the attractive force which brings in custom), misrepresentation and damage caused to that goodwill. The Court found that in the contested decision, the Board adopted a seemingly restrictive approach by defining the status of proprietorship of an earlier right independently- without taking into account the ability of the opponent to prevent the use of a trademark.

As regards the assertion made by the Board of Appeal to the effect that the term ‘basmati’ is generic, it follows from national case-law that a sign used to designate goods or services may have acquired a reputation on the market for the purposes of the law applicable to an action for passing off, even though it originally had a descriptive character or is devoid of distinctive character. That ‘extended’ form of the action for passing off, recognised by national case-law, accordingly enables several traders to have rights over a sign which has acquired a reputation on the market. The fact relied on by the Board of Appeal – assuming it to be proved – is not therefore capable, in the light of the national law applicable, of casting doubt on the fact that the opponent may have acquired rights over the sign relied upon.

It follows from all the foregoing that the Board of Appeal erred in rejecting the opposition on the ground that the applicant had not proved that it was proprietor of the sign in question, without analysing specifically whether the applicant had acquired rights over that sign in accordance with the law of the United Kingdom.

The Greek Communication Review Board (CRB) has entered the territory of trade dress infringement via review of advertising material.  In its decision No. 4911/2011, just before the advent of the new year, it held that the appearance in advertising material/communications of various types of the butter product ‘HORIO SOFT (unsalted, salted and light) created a likelihood of confusion and took unfair advantage of the repute of the LURPAK butter trade dress for the respective product types. In particular, the CRB held that HORIO’s main trade dress elements, namely (i) the shape, (ii) a ‘wave’ device on the upper and side part of the product and (iii) the colors red, blue, ciel for each type of product respectively, were similar to those of the LURPAK butter and could create consumer confusion (unfortiunately pics of HORIO disputed products aare not available). Moreover, the said similarities entailed misappropriation of LURPAK’s reputation. It is interesting to note that CRB’s know-how on ad strategy allowed it to  disregarded the differences on the products’ word elements (something that courts are not always willing to do) to arrive at its ruling.  What the decision also confirms is that approximation of distinctive elements of a product's line always creates passing off suspicions (though this blogger is not sure whether the LURPAK butter's shape is distinctive).

The CRB’s willingness to rule on the case is quite useful for brand owners as it allows them to make use of the CRB’s ultra-speedy process to tackle trade dress infringement. Though not formally enforceable and unable to substitute the value of a court judgment, the CRB’s decision is respected and complied with by the advertising industry. Accordingly, for trade dress infringement, the CRB can provide an efficient alternative dispute resolution forum or, even, form part o of a wider litigation strategy, encompassing both ‘classic’ legal action and informal dispute settlement procedures.  

In Case T-513/10, the General Court confirmed that the word mark ATRIUM cannot be registered on the grounds that it is descriptive for goods in Classes 19 and 27. The Latin word atrium referred to the open central court, from which the enclosed rooms led off, in the type of large ancient Roman house and today in modern architecture refers to ‘a large open space, often several stories high and having a glazed roof and/or large windows, often situated within a larger multistory building and often located immediately beyond the main entrance doors’.

Therefore, the word Atrium informs directly the public of the goods protected by the mark such as‘construction materials’ or ‘floor coverings’ can be used for building or installing an atrium. There is a sufficiently direct link between the applied for mark and the destination of the goods, thus the Board of Appeal rightly held that it has a descriptive character in the meaning of Article 7 (1) (b) CTMR.

In Judgment T-249/10, the General Court examined an appeal in a case between CTM applicant Kitzinger & Co. and opponent Mitteldeutscher Rundfunk for the following signs and identical or similar goods in Class 16:

                               KIKA

Contested CTM     V.      Earlier German TM     CTM

The Opposition Division had found a risk of confusion based on earlier German figurative mark. The Board of appeal confirmed the ruling based rather on the earlier word mark. The Court upheld the finding of likelihood of confusion on the grounds of earlier word CTM ‘KIKA’ because the marks have a medium visual similarity, high aural similarity and there is no conceptual meaning to influence the comparison.

On July 19, 2011 (the decision was not published until December 30, 2011) the Presiding Judge of the District Court Middelburg (H.A. Witsiers) passed judgment in a trade name / trade mark dispute between the Dutch National Circus Herman Renz B.V. (hereinafter ‘Circus Herman Renz’) and Circus Renz International/Circus Franz Renz (hereinafter ‘Circus Franz Renz’). Both parties claimed to have the oldest right to the name ‘Renz’ and that they therefore could present themselves as ‘Renz’ or ‘Circus Renz’.

First a historical note. Circus Herman Renz roots go back to 1911 when Arnoldus van der Vegt decided to start a circus. In 1923 ‘Pappa Renz’ had to fight for his right to use the name ‘Renz’, because the name was also famous and used by other circus, especially in Germany and Austria. In a court case ‘Pappa Renz’ convinced the judges that he was entitled to use ‘Renz’ (written as ‘R.E.N.Z.’), because that was only an abbreviation of ‘Ras Echte Nederlandse Zwervers’ (‘True Born Dutch Vagabonds’). And he won! On its website Circus Renz comments on this case as follows (translated freely): ‘The judges found this hilariously and grandpa Van der Vegt won his case. Thereafter the name Renz would never disappear from the Netherlands’.

Circus Herman Renz ‘registered’ the trade name ‘Nederlands Nationaal Circus Herman Renz’ in the register of the Chamber of Commerce in 1973. On September 27, 1996 Circus Herman Renz also registered this trade name as a Benelux trademark. Defendant Circus Franz Renz registered the trade names ‘Circus Renz International’ and ‘Circus Franz Renz’ in the register of the Chamber of Commerce on February 11, 2011. In order to prove their case, both parties go back in time until 1911/1923 and even1842. However, the Presiding Judge decides that these summary proceedings are not fit for such a thorough investigation. According to the Presiding Judge, with the 1973 entry in the register of the Chamber of Commerce it has – in summary proceedings – sufficiently been proven that Circus Herman Renz is entitled to use its trade nameThe Presiding Judge considers that since the business of the parties is the same and both circus at times operate simultaneously in The Netherlands, there is a likelihood of confusion since the names of the circus are identical or very similar.

(co-written by Neeltje van der Veeken, Banning Advocaten)

Spain leaves the community search system

On its website OHIM informs its users that the Spain, or rather the Spanish Oficina Española de Marcas y Patentes has opted out of the community search system.  This decision takes effect as of 1 January 2012, taking the number of National Offices participating in the community search system to ten countries: Czech Republic, Denmark, Greece, Lithuania, Hungary, Austria, Poland, Romania, Slovakia and Finland.  Applications with national search requests and a reception date in 2012 with will not be sent to the Spanish Office and the applicable fee will be lowered to €120 from 1 January 2012 onwards.

Three new members of EuroClass

While the community search system is shrinking, EuroClass is expanding further.  OHIM reports today that three further countries have joined joined the EuroClass classification project. Cyprus and France joined the project on 1 January, followed a few days later by Austria, bringing the total number of participating offices to 23.  More information about EuroClass can be found here.

(i)   What is the political context of the initiative? 

(ii)  How does it relate to past and possible future initiatives, and to other EU policies?

(iii) What ex-post analysis of the existing policy has been carried out and what results are relevant for this

initiative?

(i),(ii) In its 2008 "Small Business Act" the Commission committed itself to make the Community Trade Mark 

(CTM) system more accessible to SMEs. Furthermore, the 2008 Communication on an Industrial Property Rights Strategy for Europe stressed the Commission's commitment to effective and efficient trade mark protection and to a high quality trade mark system. It concluded that it was time for an overall evaluation which could form the basis for future review of the trade mark system in Europe and the further improvement of cooperation between the Office for Harmonization in the Internal Market (OHIM) and National Trade Mark Offices. On the basis of the interim results of the related Commission study, the Competiveness Council adopted on 25 May 2010 conclusions on the future revision of the Trade Mark system in the EU. The Council called on the Commission to present proposals for the revision of, respectively, the CTM Regulation and the Directive approximating the laws of Member States relating to trade marks and flagged up those issues which it would like to see addressed therein. In 2010, in the Communication on Europe 2020 strategy under the Flagship Initiative: “Innovation Union”, the Commission committed to modernise the framework of trade marks in order to improve framework conditions for business to innovate. Finally, in its new IPR strategy for Europe (COM(2011) 287 final), the Commission announced a review of the trade mark system in Europe with a view to modernise the system both at EU and national levels by making it more effective, efficient and consistent as a whole.

(iii) DG MARKT carried out an extensive evaluation of the overall functioning of the trade mark system in Europe. For this purpose, a comprehensive study was commissioned in November 2009 to an external contractor and completed in early 2011. The aim of the study was to identify potential areas for improvement, streamlining and future development of the trade mark system as a whole including both at Community and at national level. The study also established the potential for enlarging the scope of cooperation between the Office for Harmonization in the Internal Market (OHIM) and National Trade Mark Offices. The final results of the study serve as basis for the proposal for revision of the CTM Regulation and the TM Directive.

The consultation and evaluation process has revealed that the current system functions well overall but contains 

a number of deficiencies and limitations. The present level of harmonisation between national trade mark laws, 

as well as with the CTM system,  is not considered to be  sufficient.  Main problems  are due to the optional 

provisions in the Trade Mark Directive and  to  the fact that the Directive does not cover procedural aspects. 

Users are overwhelmingly in favour of  further harmonisation and of  an alignment of the CTM and national 

systems as many of these shortcomings indeed relate to and/or are caused by the differences in regimes in the 

EU.  Furthermore,  beyond the limits of harmonisation by legislation, there has been little progress also in 

harmonisation by non-legislative means, aimed at enhancing convergence in practices, tools and decision 

making at IP offices in the EU. Consequently, the existing differences resulting from the legislative framework 

are further accentuated in practice. However, any administrative cooperation between OHIM and IP offices of 

Member States which is prerequisite for the functioning of the whole system is seriously obstructed by a lacking 

appropriate legal framework and missing incentives for cooperation, in particular as regards financial means.

The current situation does not only negatively affect trade mark users, in terms of effectiveness and efficiency of 

available services, but also the IP offices themselves

Some light entertainment for your Monday lunchtime. 

On its website German paper "Handelsblatt" promises to tell us about the "craziest trade mark tricks".   Perhaps not quite the craziest tricks but Handelsblatt has collected a nice series of images relating to famous trade marks and famous trade mark disputes (bunnies...) - it does help if you can read German.

As our readers will be aware, on 1 January 2012 the 10th edition of NICE Classification system came into force. 

On its website the UK IPO has published a helpful document with a summary of all changes to the classification system including explanatory notes and a list of approved goods/services.  This document can be downloaded from the UK IPO's website by clicking here, (PDF).  More information can be found on the UK IPO's website here, including information regarding who to contact at the UK IPO in case of questions.

News from Turkey -- kindly supplied by Selma Ünlü (Senior partner, NSN Law Firm, Istanbul) -- is that not only the classical national television broadcasting methods, but also the internet and satellite broadcasts outside the country meet the use criteria under the law