MARQUES Class 46 Blog

General Court: KEEN v KIN (figurative)

lagarde.laetitia@gmail.com (Laetitia Lagarde) — Wed, 16 May 2012 09:38:00 GMT

In Case T-280/11, the General Court rejected the appeal presented by Rita Ewald against the decision of the OHIM which found likelihood of confusion between the following rights:

KEEN

Contested CTM Earlier CTM

The relevant public is composed both of the average consumer for goods and services in Classes 3 and 35 and of the retail professionals regarding some services in Class 35.

The goods and services were found either identical or similar by the OHIM, such as “soaps, shampoo, hair dyes, which was not contested by the parties ”.

The signs are very similar from a phonetic point of view, in particular for the Danish consumer which counterbalances the visual differences. Even though for the Dutch and English-speaking consumer, conceptual differences exist, a likelihood of confusion cannot be excluded for the rest of the EU consumer.

Poland: unnamed torts and domain names

class46@marques.org (Tomasz Rychlicki) — Tue, 15 May 2012 13:43:00 GMT

MEDianus sp. z o.o. and Medianus Agencja Reklamowa sp. z o.o. are seated in the same city, at a location nearby. The first one uses medianus.net domain name and the second medianus.pl. The first company was entered in the Register of Business Entities in the National Court Register (KRS) as MEDianus in June 2003 r. The second one was entered in 2009. MEDianus sp. z o.o. filed a complaint, to prohibit the other company to use the name "medianus" in the company name and as a domain name, based on the provisions of the Polish Act on combating unfair competition. MEDianus sp. z o.o. argued the the use of the same company name caused many confusions with delivery of post or invoices.

The District Court dismissed all claims. However, the Appellate Court in Kraków agreed with MEDianus sp. z o.o. appeal and ordered Medianus Agencja Reklamowa to change its company name and website and to publish an apology in two national newspapers.

The Polish Supreme Court in its judgment of 9 December 2011 case file III CSK 120/11 dismissed the complaint filed by Medianus Agencja Reklamowa. The Court held that in order to apply the provisions of Article 5 of the Polish Act on combating unfair competition, both companies have to be in competitive relationship. This situation happens when there is a risk of confusion with regard to the identity of entrepreneurs. The Court also confirmed that the so-called cybersquatting is an unnamed delict (tort) under the Polish law.

General Court: KARRA v KARA

lagarde.laetitia@gmail.com (Laetitia Lagarde) — Fri, 11 May 2012 15:50:00 GMT

In Case T-270/10, the CTM applicant Dima (Turkey) had registered the following CTM for classes 18, 20, 24, 25 and 35: KARRA

Concerial Kara srl (Italy) had brought an opposition on the grounds of Article 8 (1) (b), (4) and (5) CTMR on the basis of earlier CTM and Italian rights as follows:

- for classes 18, 25 and 40

- trade name Kara

The Opposition Division and the BoA had found that, upon a request for proof of use, the documents produced showed genuine use of the earlier marks only for Class 18 “Leather and leather imitations” and “leather services” in Class 40 and there was likelihood of confusion in respect of the similar goods in the above mentioned classes due to the similarity of the signs.

The Court confirmed that the website of the applicant states that it produces and sells the raw material made out of leather to its clients. The latter then transform the material into the finished products on which they fix their own trademark which are then sold to the final consumer. Therefore, the GC confirmed that the possible future uses of the applicant’s trademark did not constitute genuine use for other goods; nor does the simple advertising of a trademark-which is sufficient in the meaning of Italian case-law-due to the autonomous Community regime.

Thus the Court confirmed the opposition was only partly grounded for the similar goods whereas the rest of the contested ‘finished’ goods had a different destination and use. As for the ground based on Article 8 (4), it is not sufficient to invoke it but the cumulative conditions must be demonstrated, which was not the present case. Finally, bad faith is a particularly relevant criteria in a procedure for invalidity, however it does not have to be take into account in an opposition procedure on the grounds of Article 8 (1) (b) ( in the sense of Case C-529/07, Chocoladefabriken Lindt).

Yoshida kitchen knives trademarks sliced in General Court

lagarde.laetitia@gmail.com (Laetitia Lagarde) — Thu, 10 May 2012 17:31:00 GMT

In Cases T-331/10 and T-416/10, Yoshida Metal Industry registered the following figurative CTMs representing a surface with black dots for Classes 8 and 21, in particular ‘cutlery, knives’:

The interveners – Pi-Design AG, Bodum France and Bodum Logistics A/S – lodged an application for a declaration of invalidity on the ground that it was registered contrary to Article 7(1)(e)(ii) of Regulation No207/2009, because in fact it consisted of a shape necessary to obtain a technical result.

According to the interveners, the contested mark represents an array of dots appearing on the handles of knives, these dots constitute slightly recessed dents which serve to prevent the knife handle from slipping. In support of their arguments, the interveners referred to two patents held by the applicant (US 6195899 and EP 1116507B1).

The First Board of Appeal of OHIM upheld the appeals, reaching the same conclusion as the arguments presented by the interveners. The BoA added that the fact that the same result could be obtained by other shapes did not exclude the applicability of the ground for refusal set out in Article 7(1)(e)(ii) of CTMR.

The GC found that the dispute between the parties thus raised three issues:

1) The first issue concerns whether Article 7(1)(e)(ii) CTMR can apply to two-dimensional signs;

2) The second issue concerns whether the BoA was entitled to analyse the sign applied for as seeking, in fact, to protect a three-dimensional shape, in taking the view, by reference to the goods actually marketed by the applicant, that the dots of the pattern corresponded to dents;

3) The third issue, in the event of an affirmative reply to the two previous questions, concerns whether the contested trade mark consists exclusively of the shape of goods which is necessary to obtain a technical result.

Firstly, the Court found that with regard to the wording of Article 7(1)(e)(ii) of CTMR which does not define the signs which must be considered as shapes, and to the public-policy interest which it pursues, it must be concluded that it applies to any sign, whether two- or three-dimensional, where all the essential characteristics of the sign perform a technical function.

Secondly, as regards the character of the contested mark: the BoA took the view that all of the black dots of the contested mark actually represented dents and constituted a non-skid structure applied to the handle of a knife.

In this respect, the Court found that the concave character of the black dots does not form part of the contested mark as filed and registered. There is nothing in the graphic representation of the contested mark to suggest that the black dots in question represent dents rather than a figurative pattern. Likewise, the registration of the contested CTM was not accompanied by any description to that effect. Therefore, in concluding that the dots were concave in character, the Board of Appeal did not refer to the sign as filed, but to representations of the goods actually marketed by the applicant.

Further, the examination of an application for a declaration of invalidity based on Article 7 CTMR must also relate to the situation obtaining at the time of filing, which rules out consideration of the actual use made of the trade mark following its registration.

It follows that the Board of Appeal’s finding that ‘there is nothing in the applicable regulations that prevents the Office from carrying out this sort of “reverse engineering”, i.e. finding out what the trade mark really represents’, on the basis of elements other than the relevant registration application, is contrary to the applicable legislation.

Consequently, the Board of Appeal erred in departing from the graphic representation of the contested trade mark when it referred to representations of the goods actually marketed by the applicant in order to conclude that the black dots appearing in that trade mark were concave in character.

In view of this error of law, the contested decision must be annulled, without it being necessary to examine the third issue.

Germany: Decorative use of a trade mark

robert.boerner@murgitroyd.com (Robert B�rner) — Thu, 10 May 2012 10:25:00 GMT

This Class 46 member assumes that most readers of this blog have at least heard of the trade mark "VERSACE", as it is considered to be a (rather) well known trademark. However, would you link the below trade marks to VERSACE as well?

Or would you rather take these signs as being mere depictions of the famous Meduse of Phidias ?

Well, do not be disappointed if you did not recognize the signs as VERSACE's trade marks as apparently only 5% of the German consumers do so.

But lets start from the beginning. VERSACE filed a lawsuit against a producer of mosaics made of marble based on the above trade marks, which also cover "building materials, not of metal; furniture". The products in question were amongst others the mosaics shown below.

The defendant argued that the use of the image was merely decorative as it depicted the above shown Meduse of Phidial (by the way, a Roman copy of the 5th-century BC Greek original, i.e. the "Rondanini Medusa" may be seen in the Munich based Glyptothek). So the consumers would not perceive the images as a trade mark. Further he argued that the use of a work of art which fell in the public domain after having been protected by copyright may not constitute a use as a trade mark. The same should of course apply to works of art being so old that they never were protected by copyright, as in the present case presumably no copyright existed in the 5th century BC.

The plaintiff argued that not only the trade mark "VERSACE" but also the above device trade marks are well known and that therefore the consumers will recognize the images as VERSACE treade marks and would thus assume that the origin of the mosaics lies with VERSACE.

The lower instances (LG Frankfurt/Main, decision of 28.02.2008 - 3/10 O 113/07 and OLG Frankfurt/Main, decision of 01.10.2009 - 6 U 88/08) agreed with the plaintiff. Further the Higher Regional Court (OLG Frankfurt/Main) did deny a leave to appeal to the Federal Court of Justice (Bundesgerichtshof). However, the defendent filed an appeal against the denial of leave to appeal and the Federal Court of Justice decided to accept the case.

The responsible senate of the Federal Court of Justice stated that contrary to the opinion of the defendent a use of a work of art being part of the public domain may very well constitute a use as a trade mark. The question, whether such work of art may be protected as a trade mark at all, which is lively debated in literature, was, however, left unanswered as the Court had to respect the fact that the signs had been registered as Community trade marks in the first place.

With respect to the question, whether the head of the Meduse merely has a decorative effect in the products of the defendant or whether it constitutes a use as a trade mark, the senate pointed out that according to investigations of the Higher Regional Court only 5 % of the relevant public, i.e. average consumers in Germany recognize the images as trade marks of the plaintiff. Thus the Higher Regional Court based its assumption, according to which the head of the Meduse would be perceived as a trade mark (indication of origin) and not as a decorative element, only on a very small part of the consumers and not on the avarage consumer in general. As a consequence the senate came to the decision that the use of the head of the Meduse in the products of the defendent does not constitute a use as a trade mark and dismissed the case.

Case reference: Bundesgerichtshof I ZR 175/09, dating November 24, 2011. The decision can be retrieved from the court’s website by following the above link.

General Court: battle of the G's

lagarde.laetitia@gmail.com (Laetitia Lagarde) — Wed, 09 May 2012 18:14:00 GMT

In Case T-101/11, the General Court was requested to review whether there was a likelihood of confusion (LOC) between the figurative mark of CTM applicant, Mizyno KK (Japan) and the opponent’s mark Golfino AG (Germany) for identical goods in Class 25, namely ‘footwear, including sports shoes, casual shoes’.

Contested CTM Earlier CTM

The Board of Appeal found that there was LOC for the average consumer because the signs coincide visually and conceptually in the dominant elements: 1) the letter “G” and 2) the cross symbol represented above right for the earlier mark as a “+” sign and in the earlier mark below left as a “X” sign.

The Court upheld this conclusion reminding the applicant that a single letter can be of distinctive character- in particular the letter “ G”, as previously held by the CJEU here- and rejected its argument that the signs cannot be compared from a conceptual point of view because the contested CTM would be fanciful (does it remind anyone of a mix of these symbols ?).

The Court further concurred with the BoA that the earlier sign has a clear conceptual meaning of “G” and the “+” symbol refers to the idea of ‘strengthening’. Whereas the Court did not uphold the BoA’s finding that the in the contested CTM, the diagonal bottom symbol would surely be interpreted as a “+”, but it did conclude that these extra symbols are only slight variations of the earlier sign.

The fact that the opponent commercializes golf articles and the G would be clearly understood as the first letter of its goods, was rejected as irrelevant by the GC since the list of goods does not make any reference to golf.

Finally, the alleged lack of fancifulness of the earlier CTM is not a decisive criteria in the LOC analysis, its distinctive character had been correctly examined by the BoA which found it was average. The Court therefore rejected the application for annulment and confirmed the contested decision.

Meet the Spanish CTM judges!

jjip@btinternet.com (Jeremy Phillips) — Wed, 09 May 2012 03:19:00 GMT

Here's news of a forthcoming event that you might not have spotted on the MARQUES website. Apart from a great chance to listen to some leading members of the European IP judiciary and discuss the law and practice with them, it's also a wonderful opportunity to practise your Spanish!

Meeting with the Spanish CTM Judges

Friday, June 15, 2012
ESADE Facultad de Derecho, Av Pedralbes 60-62, Barcelona, Spain

Registration Fees:

MARQUES Members/ESADE alumini:

EURO 250,--

Non-MARQUES Members/ESADE alumini:

EURO 300,--

Please note this seminar will be conducted in Spanish

You can read the programme in full here -- and register online here

Poland: trade mark files and public information

class46@marques.org (Tomasz Rychlicki) — Mon, 07 May 2012 13:32:00 GMT

On 22 November 2010, Bogusław Kler, a Polish patent and trade mark attorney, requested the President of the Polish Patent Office to disclose public information concerning the word trade mark PRINCE POLO R-148617, in order to know, whether during the examination, the trade mark POLO R-69429, or other marks containing this word were taken into account, and in particular, if the expert who was proceeding and examining the trade mark application, noted and listed any signs with the word "polo" in the examination card of the trade mark PRINCE POLO R-148617. In addition, Mr Kler requested for information on whether in a possible conflict between "Prince Polo" and the earlier "POLO" signs, the examiner considered any settlement actions of the owners of such trade marks, indicating that he is not requesting the full texts of documents, but seeking to confirm whether such documents if any, were submitted to the trade mark file and they were used in the assessment for the trade mark PRINCE POLO.

The President of the PPO expressed the opinion that the examination card of the trade mark PRINCE POLO R-148617 is not deemed as public information, because it is not directed the parties of the proceedings, and therefore it cannot be disclosed. With regard to information on materials concerning possible settlement between the trademark owners, the President explained that such information can be obtained by directly asking the entitled entities. At the same time, the President pointed out that decisions on the granting of exclusive rights belong to independent experts, and the requested filed by Mr Kler can be read as an unfounded and unjustifiable attempt to control of examinations conducted by experts and the procedures for the granting of exclusive rights. The President argued that such control process of the legality of decisions undertaken by the Polish Patent Office falls within the competence of administrative courts. The method of preparing and filing of the examination card of a trade mark is not regulated in any legislation being in force. Information to be included in it depends on the expert. The examination card is somehow a reflection of thinking of a person who was handling a given case.

Bogusław Kler filed a complaint for failure to act. Mr Kler argued that the President of the PPO did not consider his request or did not issue a refusal decision.

The Voivodeship Administrative Court in its judgment of 13 May 2011 case file II SAB/Wa 88/11 dismissed the complaint. The VAC held that information requested by Mr Kler is not public, in particular, these are not public data. The Court held that the examination card is not an official document since it does not contain a declaration of will/intent or knowledge of a public official. Based on the card, it is not possible to unambiguously determine conditions, that were followed by the authority granting the right of protection for a trade mark. The card is a working internal document of the PPO, which provides information of operational activities aimed at a comprehensive assessment and examination of the validity and legitimacy for granting the protection of the sign applied for. Mr Kler filed a cassation complaint.

The Supreme Administrative Court in its judgment of 1 December 2011 case file I OSK 1550/11 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that according the Constitution of the Republic of Poland, a citizen should have the right to obtain information on the activities of organs of public authority as well as persons discharging public functions. Such right should also include receipt of information on the activities of self-governing economic or professional organs and other persons or organizational units relating to the field in which they perform the duties of public authorities and manage communal assets or property of the State Treasury. Limitations upon the right of information may be imposed by the Act solely to protect freedoms and rights of other persons and economic subjects, public order, security or important economic interests of the State. The principle of the "right to information" provided in the Constitution sets basic rules of interpretation of this right. It is a constitutional right, therefore, the law defining the procedures for access to information should be interpreted broadly, and any exceptions to this right should be construed and interpreted narrowly. This implies the use in relation to these acts of interpretation, which favor expanding rather than narrowing the obligation to disclose information. The enumeration what is deemed as public information is provided in the Polish Act on Access to Public Information, however this enumeration includes exemplary situations, and it does not cover all cases in which information is disclosed. The Court noted that public information is each information or data that was created or referred to the widely defined public authorities, or was created or referred to other entities performing public functions in the execution of tasks of public authority. The Supreme Administrative Court shared the view that all files of entire administrative proceedings conducted by a public authority, constitutes public information - including both documents created and held by the authority in connection with a particular case. Therefore, the Court held that, in principle, all that is in the file of the proceedings, regardless of whether it will be a public document or private, should be disclosed. It does not matter whether the document in the file is an "internal" or "working". Even giving up the assumption that the whole proceedings constitute public information, it cannot be excluded that given documents from these files have such nature. In each case, every request for disclosure of public information requires a detailed analysis. Only as a result of such analysis, the authority should decide whether the requested information is public, followed by what standards govern the procedure of its disclosure.

OHIM corrects "Corrections" practice

jjip@btinternet.com (Jeremy Phillips) — Fri, 04 May 2012 16:42:00 GMT

With effect from 1 May 2012, the following amendment has been made to the OHIM Manual of Trade Mark Practice:

Part A. General Provisions

Page 35: The current practice reflected in the manual (Part A. General Provisions, paragraph 6.3) states that “corrections can be made for at least within a period of one year from the entry in the Register”. However, since the regulations do not provide for any time limits, corrections should be made as soon as the mistake has been detected, including, when necessary, years after the original entry was made in the register.

Source: OHIM Alert, 3 May 2012

Drafting coexistence agreements: update on possible courses

jjip@btinternet.com (Jeremy Phillips) — Fri, 04 May 2012 15:58:00 GMT

A month ago Class 46 posted this item, following an inquiry from a member of the MARQUES LinkedIn Group, about the availability of some sort of course or seminar on how to draft trade mark coexistence agreements. Although we suggested a cut-off date of 22 April for expressions of interest from MARQUES members and its friends who read our blogs and othe social media, we are still receiving emails from people who'd like to attend such a course or at least want to know the details of when and where one might occur. Accordingly, I'm keeping the list open till Monday 13 May. If you'd like to be added to our list, just email social.media@marques.org and let us know.

Scams and payment demands: a new MARQUES initiative

jjip@btinternet.com (Jeremy Phillips) — Fri, 04 May 2012 05:36:00 GMT

Readers of the MARQUES Class 46 weblog will know how strongly the blog team feels about those parasitic businesses that cause trade mark owners untold harm, frustration and vexation by sending them official-looking renewal forms, demands for payment and entries in apparently important but actually worthless directories. Indeed, last year Class 46 published its own little ‘directory’ of information given by various intellectual property offices with regard to these scams: you can check it out here.

It is sad to note that, in many countries, these business practices are either completely legal or not clearly illegal. Even where they are illegal, it is rare to find anyone who is prepared to take the responsibility for dealing with them. Trade mark owners, practitioners, the police, trading standards bodies -- all potentially have a role to play, but when the law is unclear, the outcome of action is uncertain and resources are scarce, it's not surprising that so little has been done so far.

Now here's some good news. MARQUES has decided that the time has come to take the initiative. In particular

MARQUES is willing to make space available on its website for up-to-date information about these rogue businesses, for the benefit of all;
MARQUES invites comments, suggestions and proposals from trade mark practitioners, businesses, enforcement officers and indeed anyone else as to how this serious problem may be tackled;
MARQUES declares its willingness to work together with its sister organisations at international and national level in combating the menace.

There are things that can be done. Raising the awareness of current and future victims is good, but we can do more. MARQUES asks whether an international treaty, requiring member countries to take action against these practices, together with a draft model law that countries can adopt or adapt to suit their needs, might be worthy of consideration. Your opinion on issues such as this is very much welcome.

If you want to contact MARQUES, whether to share fresh information about new demands for payments and offers of worthless services, suggestions for how to combat them or merely to let us know that we have your support, please email info@marques.org with the subject line "Fight against scams".

Pie Optik: the Advocate General speaks

jjip@btinternet.com (Jeremy Phillips) — Thu, 03 May 2012 22:41:00 GMT

The Advocate General’s Opinion in Case C-376/11 Pie Optiek v Bureau Gevers was published online earlier today on the Court of Justice of the European Union (CJEU) website. No English version is yet available, but a Curia press release summarises the effect of the Opinion quite neatly. In short, the case turns on whether a non-EU based trade mark owner could circumvent the protection accorded to EU trade mark owners during the 'sunrise' period for making applications for .eu top level domain names. The non-EU company in this case sought to designate the intellectual property firm which acted for it as the 'licensee' of its trade mark, LENSWORLD, but an EU business which used the same trade mark objected. This is not so much a licence, said the Advocate General, as a contract for the provision of services. The CJEU's ruling can be expected in the autumn, if not earlier.

How does OHIM process information? A scholarly study

jjip@btinternet.com (Jeremy Phillips) — Tue, 01 May 2012 18:26:00 GMT

"A middle-ground theory of the politics of informing EU agencies? Applying the information-processing approach to OHIM and beyond" is the title of a piece of scholarly research by Renke Deckarm. Renke, who first studied political science and economics in Mannheim, Germany, and then went on to take internships with the European Commission inter alia, went back to academia and is currently finishing his master’s degree in Analysing Europe in Maastricht, the Netherlands. He is co-founder of www.laelaps.eu, a recently established website on EU affairs.

This paper applies the information-processing approach of Professor Tannelie Blom to the Office for Harmonisation in the Internal Market (OHIM). The information-processing approach is a theory in the making, understanding organisations in the light of the way they handle information. This paper develops the “constitutive politics” part by explaining the way OHIM was established and trying to generalise the results to other EU agencies.

Class 46 thanks Renke for sharing his research with the MARQUES membership through this weblog. It is fascinating to see, in this 28-page study, how an organisation which is so familiar to us in so many ways is viewed by someone whose interest and expertise is drawn solely from disciplines that are quite remote from trade marks and designs.

Poland: torts and trade marks

class46@marques.org (Tomasz Rychlicki) — Mon, 30 Apr 2012 11:53:00 GMT

The Polish Patent Office partially refused to grant the right of protection for the word-figurative trade mark moja historia Z-338905. This sign was applied for by PHOENIX PRESS Sp. z o.o. Sp.k. from Wrocław for goods and services in Classes 09, 16, 35, 39, 41 and 42. The PPO based its refusal on Classes 09, 16 and 41 in respect of the earlier registration of the word-figurative trade mark Moja historia R-187793 owned by WYDAWNICTWO ERA Sp. z o.o. from Straszyn. PHOENIX agreed that both companies were publishers, but maintained that the signs were meant for different goods and were directed to other recipients. Phoenix was a press publisher whose clients were adult women while WYDAWNICTWO ERA published school history textbooks (mainly the history of Poland), their customers being students in primary schools.

The PPO decided that there existed similarity of signs and goods and services which might lead to consumer confiusion. PHOENIX filed a complaint against this decision. The Company argued inter alia that the PPO could grant the right of protection and it would not deprive WYDAWNICTWO ERA of protection provided for instance in the Polish Act on Combating of unfair competition, if PHOENIX's trade mark were actually to threaten the existence and functions of the trade mark owned by ERA.

The Voivodeship Administrative Court in Warsaw in its judgment of 8 June 2011 case file VI SA/Wa 611/11 dismissed the complaint. The Court ruled that regulations on combating unfair competition are provided in a separate Act, and it is justified by both the construction of the Polish legal system and due to the method of regulation. The law on combating unfair competition does not create absolute rights, but only the system of legal claims that provides protection in the event of unwanted and objectionable market behavior and actions (unfair competition delicts or torts), which is a different approach than those adopted in the Polish Industrial Property Law, which are based on the granting of absolute rights (monopolies) by an administrative decision.

Portugal: genuine use in trade marks covering TV programs

pedro.malaquias@plmj.pt (Pedro Malaquias) — Sat, 28 Apr 2012 19:51:00 GMT

Yesterday, 27 April 2012, it was published, on the Portuguese Bulletin of Industrial Property, an interesting decision of the Lisbon commercial court which overturned an INPI decision that had rejected the cancellation of the Portuguese Trade Mark no. 366654 “OLÁ PORTUGAL”.

TVI, a private television channel, was the owner of the Portuguese Trade Mark no. 366654 “OLÁ PORTUGAL”, which covered “Television Programs” in the Class 38 of the International Nice Classification. TVI had broadcasted the program “OLÁ PORTUGAL” (unfortunately, this author recalls the show generic jingle) between 9 September 2002 and 30 July 2004.

SIC, a competitor private television channel and the party that requested the cancellation of the trade mark, claimed that this trade mark had not been put to genuine use since that date and, consequently, in the last five years. TVI claimed that it had used the trade mark between 22 June and 11 September 2009, since, in one of its programs (“VOCÊ NA TV”), had included a specific moment identified as “OLÁ PORTUGAL”.

Following SIC arguments, the court considered that the insertion of a specific moment on a television program did not constitute a genuine use of the trade mark for “Television Programs”. In order to reach that conclusion, the court resorted to the definition on Directive 2010/13/EU, of the European Parliament and of the Council, of 10 march 2010, and stated that a TV program was every individual item within a schedule or a catalogue with an informative or entertainment content which is intended to be broadcast on television. With this definition in mind, the court stated that the insertion of a certain item in a program television could not be accounted as genuine use of a trade mark covering “Television Programs”, since that specific moment lacked autonomy in relation to the television schedule and that autonomy is an essential requirement of what is to be understand as a television program.

Consequently, the court accepted the appeal, overturned the INPI decision and declared the cancellation of the Portuguese Trade Mark no. 366654 “OLÁ PORTUGAL”.

General Court: ECOPERFECT

lagarde.laetitia@gmail.com (Laetitia Lagarde) — Thu, 26 Apr 2012 18:14:00 GMT

In Case T-328/11, the General Court upheld the findings of the OHIM which rejected Community trademark application ‘ECOPERFECT’ for goods in class 21 because the expression will be understood by the relevant public as meaning “ecologically perfect” and thus being descriptive of characteristics of the goods (article 7 (1) (c) CTMR).

Consumers and producers are gradually becoming more aware of using and commercializing goods which protect the environment and will understand, without too much reflection, that the applied for CTM refers to a material or manufacturing process which is ‘environment friendly’. In particular, goods such as ‘ Household or kitchen utensils and containers, brushes, brooms, …’ are regularly purchased household goods used for cleaning and rubbish which confronts the consumer with ‘non –polluting’ and eco-friendly concepts.

Therefore the expression ECOPERFECT also lacks distinctive character (Article 7 (1) (b) CTMR) because it will be perceived by the public as a “simple objective message” and not an indication of origin of the goods.

Misleading business names: UK government gives advice

jjip@btinternet.com (Jeremy Phillips) — Wed, 25 Apr 2012 18:16:00 GMT

The Office of Fair Trading (OFT), a government department in the UK, has issued a document, "Misleading or Otherwise Undesirable Names", under its powers under the Consumer Credit Act 1974. This 23-page document deals with all forms of unsuitability of business names. It does not specifically address issues of trade mark law and makes this clear:

4.15 The OFT has no power to protect 'title' to a name on behalf of a business. The protection of its trade marks or goodwill is of itself a matter for individual businesses to address. We will only challenge the use of the same name in the licences of totally separate entities, where there is no arrangement between them, and/or when we have reason to believe consumers will be, or are likely to be, misled as to the person with whom they are dealing.

However, the OFT recognises that there are times when choice of a name can have substantial repercussions for an IP owner and for the consumer, as when a business wants to trade under a brand which it does not own but with which it may be associated -- for example where it is a franchisee or licensee if a well-known brand. On issues such as this the OFT says

4.19 We have considered our policy on this issue and taken the view that associated businesses may use a common trading name provided that this is reflective of the true nature of their commercial relationship (rather than one business 'passing itself off' as having an association with another business/brand where no such association exists or otherwise misrepresenting the nature of its relationship with another business).

Given that a business name that is misleading or deceptive may not be entitled to protection as a registered trade mark to the extent that this is the case, the OFT guidelines may be of assistance to trade mark examiners and others.

Poland: serious reasons for non-use

class46@marques.org (Tomasz Rychlicki) — Tue, 24 Apr 2012 08:56:00 GMT

VINEX PRESLAV from Bulgaria asked the Polish Patent Office to decide on the lapse of the right of protection for the trade mark MADARA R-97447, owned by Dimyat Polska Sp. z o.o. Earlier, VINEX PRESLAV applied to the PPO to recognise in Poland its international trade mark MADARA IR-0929344. In the preliminary refusal sent to WIPO, the PPO stated that the trade mark MADARA R-97447 is an obstacle to recognition of the protection of the trade mark MADARA IR-0929344 in Poland. VINEX argued that the disputed sign had never been used in Poland in relation to the goods covered by the registration, beverages, wine, spirits, brandies and cognacs (Class 33). Dimyat claimed that it acquired the right of protection in 1998 but, because of "unexplained delay", the entry in the register of trade marks was made in 2002. The company had to find a licensee, and the PPO by its decision of March 2005, made an entry of the licensee into the register. However, under the decision of April 2006, the licensee was removed from the register. The "confusion" around the entry of a licensee undermined Dimyat's belief and faith as to whether the company will be able to exercise that right at all. The PPO decided on the lapse of the right of protection.

Dimyat Polska filed a complaint against this decision and argued that there existed serious reasons for non-use. Dimyat became a legal successor of the trade mark MADARA R-97447. However, this right was obtained after several years of court battles which ended in 2002, and the PPO was aware of this legal disputes. Dimyat claimed that the objective circumstances relating to the acquisition of the trade mark (the acquisition of a company in liquidation), objective circumstances preventing the transfer of its right of protection (the court proceedings in order to recognize the acquisition of a trade agreement to be effective), the objective circumstances relating to the licence (all the PPO actions that were associated with the deletion of the license agreement and the appeals) significantly prevented Dimyat from the use of the disputed trade mark.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 October 2011 case file VI SA/Wa 1203/11 reversed the contested decision, ruled it unenforceable, and returned the case to the PPO for reconsideration. The Court held that it is the responsibility of the PPO, to examine the request for the lapse of a trade mark in the light of the existence of valid and serious reasons of non-use, if such an argument is raised by the owner. The Court noted that the Polish Industrial Property Law uses the term "serious reasons" but does not provide explanation of its characteristics, or even a list of examples. The case-law established that these circumstances are all the events and situations, which exclude allegations of blameworthy conduct of the holder of the trade mark registration. These events include primarily those that bear the characteristics of force majeure or other external circumstances impossible to foresee and to prevent them, as well as factual and legal obstacles that are independent from the will of the owner.

MARQUES, other bodies, object to "plain packaging" proposals

jjip@btinternet.com (Jeremy Phillips) — Mon, 23 Apr 2012 16:08:00 GMT

Today MARQUES issued a joint press release, together with the Association des Praticiens du Droit des Marques et des Modèles (APRAM), the Benelux Association of trade mark and design law (BMM), the European Communities Trade Mark Association (ECTA), the Deutsche Vereinigung für gewerblichen Rechtschutz und Urheberrecht (GRUR) and the Union of European Practitioners in Intellectual Property (UNION). The text of the press release reads as follows:

OBJECTION TO THE ADOPTION OF RESTRICTIVE LEGISLATION OR POLICY OPTIONS FREQUENTLY REFERRED TO AS “GENERIC” OR “PLAIN PACKAGING”.

The signatories of this statement are dedicated to the protection and development of intellectual property rights in general and trade marks in particular. Based upon the expertise and experience of their members – including professional representatives and other practitioners, in-house counsel, IP owners representing all industry lines, IP judges and law professors – they take an active, ongoing interest in legislative projects and regularly submit their comments and proposals, both on the EU and Member State level.

>The signatories are all united by the principle of advancing the cause of IP laws to ensure that IP rights - and particularly, though not exclusively, trade marks and trade dress - are well protected against any abuse and misappropriation. At the same time they appreciate that the interests of right holders need to be reconciled with the public interest in a balanced and well-functioning IP system, in order to protect the consumers from deception and confusion. IP rights are a cornerstone of the European economic system and the Internal Market. They provide significant value to their owners and wider wholesale and retail circles. They are likewise essential to safeguard the public faith and the interests of consumers.

Specifically trade marks and trade dress are relied upon by consumers as signposts of genuine goods and services. This is true for both word marks and figurative marks (graphical devices), and for signs resulting from the combination of the two, as well as so called “non-traditional” trade marks such as packaging shapes and colours per se. Trade marks also indicate the source of goods and services to assure consumers on the quality of the products that they purchase or that they would consider purchasing. This fundamental function cannot be fulfilled if trade marks are not noticeable, or unavailable, to consumers when selecting a product. The inability to recognize a brand or trade mark on a product would lead to consumer confusion, and therefore diminish the goodwill acquired in that brand through considerable investment and effort over a significant period of time. In fact the inability to call for or recognize a brand also takes away a consumer’s freedom of choice.

The IP business and professional communities have very strong concerns that any legislation that precluded – whether fully or in part – brand owners from the ability of making legitimate use of their trade marks, would amount to an indirect legislative expropriation of private intellectual property and, as a consequence, lead to the extinction of their property rights. Any such legislation would adversely affect the markets, with harmful impacts on the economy as a whole as would be derived from escalating counterfeiting and piracy throughout the EU and worldwide. Where there is a need to achieve important public objectives, any developing legislation and/or policy options should not deviate from maintaining an appropriate balance with legitimate intellectual property and other proprietary rights. Consequently, the signatories of this letter object to the adoption of restrictive legislation or policy options, frequently referred to as “generic” or “plain packaging.

Russian anti-monopoly authority rules trade mark assignment unfair

jjip@btinternet.com (Jeremy Phillips) — Mon, 23 Apr 2012 01:43:00 GMT

"Natur Product International Fined for Illegal Acquisition and Use of the Word Trademark AntiGrippin" is the stern title of a brief item in the current issue of the ARUC newsletter. ARUC is the Association for Resistance to Unfair Competition, the Ukrainian branch of the Swiss-based LIDC (International League of Competition Law).

According to this item:

On March 6, 2012 the Federal Antimonopoly Service (FAS of Russia) imposed on Natur Product International CJSC an administrative fine in amount of 300 thousand roubles for unfair competition. Earlier, the Commission of FAS of Russia decided to declare actions of Natur Product International CJSC regarding acquisition and use of exclusive rights to the word trade mark Anti-Grippin with certificate No. 406816 and combined trade marks with certificates No. 375093 and No. 375094 as unfair competition pursuant to part 2 article 14 of the Federal law “On Competition Protection”. Sign AntiGrippin was previously used by other economic entities. Natur Product International CJSC registered this previously used sign in the Rospatent and then accused economic entities that previously used this sign of violation of exclusive rights.

Brand Protection in China: a special MARQUES event

jjip@btinternet.com (Jeremy Phillips) — Fri, 20 Apr 2012 17:01:00 GMT

Class 46 is delighted to remind its readers of a special event which is coming up soon:

Brand Protection in China and Europe in the 21st Century When West meets East to Join Forces in Brand Protection
Friday, June 15, 2012 Swissotel GRAND, 1 Yu Yuan Road, Shanghai 200040, China

The MARQUES China Team would like to welcome you to a one-day seminar, "Brand Protection in China and Europe in the 21st Century - When West meets East to Join Forces in Brand Protection". Speakers include Chinese officials, Chinese IP judge, international brand owners, major industry players in China and legal professionals who will present their thoughts on brand protection in this day and age. Join us for this special seminar organized by the MARQUES China team to learn about the latest legal and social developments in China relevant to brand owners, the first-hand experience of the industry players, and how you can take advantage of it all. This seminar will be conducted in English

Click below to do the following
View the Programme View the Registration Fees Register Online

Cluttering of the register: a new research report

jjip@btinternet.com (Jeremy Phillips) — Fri, 20 Apr 2012 16:47:00 GMT

There has been a good deal of discussion of the issue of "cluttering" of the trade mark register, but not much solid research. However, today the UK IPO's Economics, Research and Evidence team has just published a 60-age document, Trade Mark Cluttering: An Exploratory Report which you can download here. As the IPO explains

'This report explores the problem of "cluttering" of trade mark registers. The report consists of two parts: the first presents a conceptual discussion of "cluttering" of trade mark registers. The second part provides an exploratory empirical analysis of trade mark applications at the UK Intellectual Property Office (IPO) and the European trade mark office (OHIM). This part contains results of a descriptive and an econometric analysis. According to our definition, cluttering arises where firms hold trade marks that are overly broad or unused raising search costs for later applicants. The report distinguishes between three mechanisms that can lead to cluttering. It also considers a series of mechanisms that work against cluttering. This discussion is based on a review of the previous literature'.

Outlook improving, say latest brand surveys

jjip@btinternet.com (Jeremy Phillips) — Thu, 19 Apr 2012 15:41:00 GMT

Issue 37 of World Trademark Review has just been published. This issue, the publisher's "INTA Special", contains the results of the BrandFinance Global 500 and the Global Trademark Benchmarking studies. Both sets of results are somewhat upbeat and suggest that a rebound may be underway after years of recession. Brand values are reported to be rising and trade mark teams are again beginning to claw back resources.

This issue also contains a review of some of the most notable rulings of 2011 and examines the protection of mascots.

Wintersteiger: CJEU rules on international keyword jurisdiction dispute

jjip@btinternet.com (Jeremy Phillips) — Thu, 19 Apr 2012 11:00:00 GMT

This morning, in Case C‑523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH, on a reference from Austria, the Court of Justice of the European Union ruled on where a trade mark infringement action might be brought in Austria by an Austrian company, which held trade marks both in Austria and Germany, against a German company which had reserved one of its trade marks as a search term for the search engine's ".de" service, considering both countries spoke the same language and that search results from ".de" would be received by Austrian internet users who used that trade mark as a search term. The Court ruled as follows:

"Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as meaning that an action relating to infringement of a trade mark registered in a Member State because of the use, by an advertiser, of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another Member State may be brought before either the courts of the Member State in which the trade mark is registered or the courts of the Member State of the place of establishment of the advertiser".

Linked letters in Poland: Chanel, EC and CC

class46@marques.org (Tomasz Rychlicki) — Thu, 19 Apr 2012 09:01:00 GMT

On November 2006, the Polish Patent Office granted the right of protection for the word-figurative trade mark EC R-190902 to PPH EVELINE COSMETICS Piotr Kasprzycki, for goods in Class 03 such as skin care and beauty products for women, men, children and teens, perfumes, washing, cleaning, scouring and bleaching preparations, tissues, cotton wool, cotton buds and sticks for cosmetic purposes, and in other goods in classes 05, 16, 21, 42 and 44.

Chanel SARL opposed and argued that the trade mark EC R-190902 was confusingly similar to many of Chanel’s trade marks, such as CHANEL R-33924 that was registered with the earlier priority of 2 September 1947 for goods in Class 03 such as soaps and toilet preparations, or the figurative trade mark R-57346 that was registered with the priority of 24 March 1979 for goods in Class 03. Chanel also claimed that the EC mark should not be granted because it brought unfair advantage to EVELINE COSMETICS.

The Adjudicative Board of the Polish Patent Office in its decision of 15 March 2012 case no. Sp. 587/09 invalidated the right of protection. The decision is not final yet. EVELINE COSMETICS may file a complaint to the Voivodeship Administrative Court in Warsaw.

New practitioners' manual on EU prosecution and litigation

jjip@btinternet.com (Jeremy Phillips) — Wed, 18 Apr 2012 10:10:00 GMT

Practitioner's Manual for Trademark Prosecution and Litigation in the EU, masterminded by Dr Felix Hauck, has just been published by Sweet & Maxwell. You can check out the book's details here. Dr Hauck -- a partner in the German legal practice of von Kreisler Selting Werner (Cologne) -- has assembled a team of experts from 13 of the leading trade mark jurisdictions in the European Union, each of whom addresses a number of commonly-raised areas of importance in accordance with a common scheme of paragraph numbering which makes it easy to compare the law of one country with another.

The book itself is in English; it's a paperback and is easy to read. It is not a replacement for any of the big, encyclopaedic reference works on trade mark law and practice in Europe but may be viewed as a good way of getting the "look and feel" of the law and practice in the chosen jurisdictions. The text is current to July 2011 -- but further editions are promised.

Class 46 is delighted to see that it is represented within Dr Hauck's team, since our very own Edith Van den Eede (Societa Italiana Brevetti) is one of the Italian correspondents.

UK notification, mark merger amendments to take effect from October

jjip@btinternet.com (Jeremy Phillips) — Wed, 18 Apr 2012 09:51:00 GMT

There is some new secondary trade mark legislation in the United Kingdom. The Trade Marks and Trade Marks (Fees) (Amendment) Rules 2012, 2012 No.1003, were laid before Parliament earlier this month and take effect from 1 October 2012.

According to the Explanatory Note that accompanies the Rules,

"These Rules amend the Trade Mark Rules 2008.

Rule 2 amends Rule 14 to remove the ability of the proprietor of a Community trade mark or international trade mark entitled to protection in the European Union under the Madrid Protocol to request to be notified of the results of searches under article 4 of the Trade Marks (Relative Grounds) Order 2007

Rule 2 also amends article 27 of the 2008 Rules to remove the procedure for the merger of trade mark applications before any trade marks have been registered pursuant to those applications. It also provides that an application for merger of trade marks can only be made in respect of trade marks that have the same renewal date.

The amendments made by Rule 2 also prohibit an application for merger of trade marks which are the subject of proceedings for revocation or invalidation or which are the subject of an international registration pursuant to the Madrid Protocol.

Rule 3 contains an amendment to the Trade Marks (Fees) Rules 2008 in consequence of the amendments to Rule 14 of the Trade Marks Rules 2008. Rule 4 contains transitional provisions".

Greece - The new TM law finally adopted and set to fully enter into force on October 2012

prentoulis@prentoulis.gr (Nikos Prentoulis) — Tue, 17 Apr 2012 11:36:00 GMT

This time it's for real, the long awaited new Greek TM law was adopted -but not wholly enacted - on 11 April 2012. The law shall fully enter into force on October 2012, six months after its adoption, so that the Greek TM Office, and all of us, have the time to prepare technically (and mentally). It is a new law indeed, radically changing TM registration procedure and aligning Greek legislation with the IP Enforcement Directive 2004/48 ( the part of the law transposing the directive has already been enacted, although, in practice Greek courts had already applying the Directive's provisions).

The main features of the new law include:

E-filing is introduced
The TM registration is generally designed to be a 'me-too' CTM system
Application examination will rest at the hands of Examiners and the Trademarks Administrative Committee (now competetent to hear TM applications) will intervene only as an appealte body
Still, Examiners will also be competent to decline registration for relative grounds of refusal
Proof of use request, as a defense in opposition proceedings is introduced, thus enabling more efficient dispute resolution. Under the old regime, the defendant in opposition proceedings was obliged to file a cancellation action on the basis of non use to be heard concurrently with the opposition
TM Licensing procedure is simplified (the new rules are already in place)
The opposition deadline is reduced to 3 months from 4 ½
TM Cancellation is divided into two broad categories, declaration of invalidity and revocation, on the footsteps of the CTM Regulation
The provisions of the Enforcement Directive are transposed into the new law
A method of calculating damages on the basis of hypothetical royalties is introduced
Criminal sanctions for infringement of famous TMs are introduced
Existing criminal protection gets stricter
Rules on international TM applications/registrations designating Greece are codified and consolidated into the new law.

General Court: Mercator Studios v Mercator

lagarde.laetitia@gmail.com (Laetitia Lagarde) — Tue, 17 Apr 2012 10:38:00 GMT

The General Court contines to pay its tribute to great scientists of the 16th century (for Galileo related trademarks cases, see here). In case T-417/09, Mercator Multihull, Inc. filed a CTM application for the word sign MERCATOR STUDIOS.

Poslovni Sistem Mercator d.d. filed a notice of opposition on the grounds of Article 8 (1) (b) and 8(5) CTMR on the basis of the following earlier Slovenian rights and international rights with effects in Austria and Italy

The Opposition Division (OD) rejected the opposition holding that despite the similarity of the signs at issue, one of the conditions for applying Article 8(1)(b), namely the identity or similarity of the goods or services, was not met. The First Board of Appeal (BoA) confirmed that the services in question are aimed only at professionals, and held that the service of ‘computer programming’ was different from the services covered by the mark applied for. According to the BoA, the service of ‘computer programming’ is the “process of … writing, testing, debugging/troubleshooting, and maintaining the source code of computer programs”, whereas the services covered by the mark applied for did not involve the process of writing computer programs but dealt with the technical development of vehicles in the field of transportation.

It is true, as the OD itself acknowledges without being contradicted by the Board of Appeal, that computer programming may be used as a tool for the purposes of research, design and development of means of transport. However, that fact is not in itself sufficient to conclude that the services in question are similar. Since computer programming relates to all areas of life and business activity, it is very common for numerous services to involve the use of computers which must be programmed.

As for Article 8 (5) CTMR, there is no sufficient evidence to conclude that the mark applied for will enable its proprietor to take unfair advantage of the distinctive character or the repute of the earlier marks, nor freeloading and exploitation of the famous mark Mercator. It is clear from all the evidence filed that Mercator is a household name in Slovenia and that everyone associates it with the famous Mercator consumer goods retail stores and that there are large advertising and charity campaigns, together with the appearance of Mercator in the Slovenian media. However, in the present case, the applicant has not filed any evidence to establish that the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks.

Germany: METRO / ROLLER's Metro (scope of protection of a company name in the sector of whole sale services)

robert.boerner@murgitroyd.com (Robert B�rner) — Tue, 17 Apr 2012 10:11:00 GMT

When talking about trade marks sometimes people tend to forget that unregistered signs, like e.g. company names, may also play an important role. In a recent decision the German Federal Court of Justice (Bundesgerichtshof/BGH) had to decide on the scope of protection conferred by a respective company name, i.e. the sign "METRO". In fact the "METRO"-group is one of the largest retailers in the world, operating amongst others cash and carry wholesale markets for professionals under the name "METRO".

The defendant produces and sells cleaning devices for tubing, which are labeled "ROLLER's Metro 22", "ROLLER's Metro 32" and "ROLLER's Mini-Metro A". The end user of these goods are specialized firms in the sanitary, heating and ventilating/air conditioning field and the goods are sold through specialised trade.

The lower instance court decided that:

the scope of protection conferred by a company name also includes a use of the name as a trade mark in order to label specific goods,
there is no pronounced proximity of the sectors, in which the parties are active, i.e. cash & carry wholesale on the one hand and specialised trade on the other hand,
although the sign "METRO" is of rather high distinctiveness, only a slightly increased distinctiveness may be attributed in connection with the highly specialized goods sold by the defendant and
the signs are sufficiently different as the term "Metro" does not have an independent distinctive role in the combined sign "ROLLER's Metro" and the relevant consumers have no reason to assume that the term "Metro" may be an indication of another company.

Thus the respective claim of the plaintiff was denied.

The opinion of the BGH with respect to some of these points is, however, different. When assessing the proximity of business sectors in the field of cash and carry wholesale markets the BGH confirms its position already taken in the "Metrobus" decision (BGH, I ZR 167/06, decision of February 05, 2009). Accordingly, the proximity of business sectors is not limited to the services of running department stores or wholesale markets in this case but includes ALL goods and services which are usually offered in whole sale markets. Since the cash and carry markets of the plaintiff offer an exhaustive variety of goods, including tools and cleaning devices for professionals, they are directed at the same consumers as the specialised trade markets of the defendant. Thus the BGH concludes that there is a pronounced proximity of the business sectors of the parties in the present case.

Further, according to the "Metrobus" decision an increased distinctiveness has to be attributed to all goods and services, for which a proximity of business sectors exists in relation to the usual range of goods of cash and carry markets. Thus a strongly increased distinctiveness of the sign "Metro" for the goods of the defendant has to be assumed.

Finally the BGH comes to the conclusion that the term "Metro" does have an independent distinctive character in the combined signs of the defendant. Thus the lower instance court was wrong in assuming no similarity of signs in the present case.

There are (at least) two points which are rather interesting in the present decision:

a) The BGH does not render a final decision but remits the case back to the lower instance. In this context the BGH points out that a use of a company name for labeling goods will not establish a risk of confusion if according to specific circumstances it may be excluded that the consumers will take the respective name as an indication for the origin of the labeled goods. In the present case the use of the possessive "S" after the first term "ROLLLER" may lead to the conclusion that the consumers will not assume that the second term "Metro" is meant as a designation of another company. The lower instance court will have to decide whether this argument still holds true in view of the pronounced proximity of business sectors and strongly increased distinctiveness of the sign "METRO" for the goods in question.

b) Even more interesting is the fact that the BGH confirms its position taken in the "Metrobus" decision. The respective assumption according to which, in the field of retail or wholesale services, not only these services have to be taken into account when assessing a proximity of business fields but also ALL goods and services usually provided in the respective markets had lead to some discussions. This is amongst other reasons due to the fact that this position may be taken as an indication that the BGH may also approve a similarity between retail / wholesale services and respective goods when assessing a risk of confusion between trade marks. While this question has been lively debated in Germany in view of e.g. the "O-Store" decision of the EuG, no jurisdiction of the BGH is available so far. Some authors are of the opinion that in general such a similarity may not be assumed as retailers usually do not use their company name used for the retail services as a sign for the respective goods. It remains to be seen, how (and when) the BGH will decide when directly confronted with this question...

Case reference: Bundesgerichtshof I ZR 55/10 of March 22, 2012 . The decision can be retrieved from the court’s website by following the above links.

New book on UK trade mark law

jjip@btinternet.com (Jeremy Phillips) — Mon, 16 Apr 2012 17:45:00 GMT

The third edition of Trade Marks: Law and Practice by Alison Firth, Gary Lea and Peter Cornford has now been published. According to the publishers (Jordan):

"The text incorporates and analyses the ongoing amendments to the Trade Marks Act 1994, amendments to the Trade Marks Rules 2008 and the expansion of the system of international registration of trade marks under the Madrid Protocol and the International Trademark Treaty. The appendices include helpful consolidated versions of the Act and the Rules.

The work offers a coherent and logical analysis of the legal framework in which trade marks operate and is expertly distilled for ease and speed of reference. It considers the commercial functions of trade marks and how to use them; how to protect trade marks and the process of registration, licensing and assignment.

The new edition ... has been thoroughly updated to take account of major developments in this field, including Trade Marks Rules 2008 and case-law from UK courts, the Office of Harmonization for the Internal Market (OHIM) and the European Court of Justice".

This is not an encyclopaedic reference work but, rather, a relatively short, reader-friendly and clear account of the relevant law. There are around 350 pages of proper text, followed by 130 or so pages of appended statutes, rules and directives.

More information can be obtained from the book's website here.

Coty, Volkswagen rulings in current ETMR

jjip@btinternet.com (Jeremy Phillips) — Mon, 16 Apr 2012 17:31:00 GMT

The May 2012 issue of the European Trade Mark Reports (ETMR), published monthly by Sweet & Maxwell, contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices. This issue includes reports on a number of cases from national courts. These include:

* Volkswagen trade mark, in which the First Division of the German Bundesgerichtshof considered whether the use of Volkswagen trade marks in an advertising brochure for cars and accessories damaged the advertising function of those marks;

* Coty Germany GmbH v eBay International AG (No.1), in which a Stuttgart court makes cease-and-desist and information disclosure orders against an online host which is found to have taken an active part in the activities of the primary infringers;

* Coty Germany GmbH v eBay International AG (No.2) , in which a Berlin court grants an application for an order disclosing the identity of a pseudonymous online trader alleged to be infringing trade marks;

* Wella Corp v Alberto-Culver Corp, where the court had to consider whether a finding by a UK IPO hearing officer that an opponent's registered trade mark was not distinctive was a finding that it was invalid.

UKIPO: TPN 2/2012: "Survey Evidence and Expert Witness Evidence"

birgitclark@hotmail.co.uk (Birgit Clark) — Mon, 16 Apr 2012 16:21:00 GMT

The United Kingdom Intellectual Property Office (UKIPO) last week issued a new Tribunal Practice Notice (TPN) relating to the submission of survey and expert witness evidence in UKIPO trade mark proceedings:

"This practice notice gives notice that survey evidence and expert witness evidence can only be adduced into trade mark proceedings before the Intellectual Property Office with the permission of the hearing officer. It sets out the criteria which will need to be satisfied for such evidence to be adduced and the nature of that evidence."

The new TPN 2/2012: "Survey Evidence and Expert Witness Evidence" will come into effect on 16 July 2012 and can be retrieved by clicking here

Poland: succession of proceedings

class46@marques.org (Tomasz Rychlicki) — Mon, 16 Apr 2012 08:44:00 GMT

On May 2007, the Polish Patent Office (PPO) granted the right of protection for the word trade mark Vondutch R-190394, which "SEREN TEKSTIL" Sp. z o.o. sought for goods in Classes 25 and 35. The Irish company V D Europe from Dublin opposed, arguing that it was the owner of the CTM VON DUTCH no. 000336495, registered with the earlier priority of 8 August 1996 for good in Class 25. On 20 January 2010, the patent attorney representing V D Europe informed the PPO that Royer Brands International Sàrl was the new owner of the CTM VON DUTCH. The representative provided proper evidence of total transfer of ownership and of the Power of Attorney (POA) from the new owner.

The Adjudicative Board of the Polish Patent Office in its decision of 3 February 2010 case no. Sp. 499/08 dismissed the opposition, and decided that Royer Brands International had no right to conduct proceedings that were started by another company. The PPO ruled that Royer Brands International is not related structurally, financially, or linked in any legal way with V D EUrope. The PPO decided that the request was unfounded, because the owner sold its rights to a trade mark. Royer Brands International filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 23 November 2011 case file VI SA/Wa 1530/11 reversed the contested decision, ruled it unenforceable, and returned the case to the PPO for reconsideration. The Court found that Royer Brands International had confirmed all the declarations of will and actions that were taken during the opposition proceedings by every person acting on the basis of previously submitted POA. In the opinion of the Court, the wording of the Polish Industrial Property Law was decisive in the present case. A trade mark may be assigned or be subject to succession. It may also be assigned in respect of certain goods for which it has been granted, if the goods for which the trade mark remains registered on behalf of the vendor are not of the same kind. Once assigned, the right in question should be dealt with as independent of the right enjoyed by the vendor. This provision introduces a general principle of transferability of the trade mark. The disposal of rights of protection may be primarily based on a contract of sale, exchange, or a contract of donation. However, it should be also stressed that the agreement transferring the right of protection shall be in writing, in order to be valid. Also, the relevant provisions of the Administrative Proceedings Code were applicable in this case. In matters concerning transferable or hereditable rights, in case of a transfer of the right or death of the party during the pendency of the proceedings the legal successors of the party shall join the proceedings in lieu of the party.

In the opinion of the Court, Royer Brands International, under the law being in force in the Republic of Poland, had not only become the legal successor to the CTM VON DUTCH, which was the result of the valid contract of transfer of the Community trade mark, which was accepted and confirmed by OHIM in 2009, but was also the legal successor in the opposition proceedings. This means that the PPO breached the provisions of substantive law (regulations included in Article 162 of the IPL) through their incorrect interpretation, and consequently its improper application in the case. Furthermore, the Court ordered the PPO a careful analysis of the substantive merits of the opposition, including the similarity of the signs.

Meeting with the Spanish CTM Judges
Friday, June 15, 2012 ESADE Facultad de Derecho, Av Pedralbes 60-62, Barcelona, Spain

Registration Fees:
MARQUES Members/ESADE alumini:	EURO 250,--
Non-MARQUES Members/ESADE alumini:	EURO 300,--