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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
FRIDAY, 22 MARCH 2019
Questionnaire on detention of counterfeit packaging

MARQUES members are invited to respond to the “Questionnaire on detentions of counterfeit packaging 2018” carried out by EUIPO on behalf of the Customs Cooperation Working Party.

The questionnaire is available until 1 April.

EUIPO has noted that a number of previously completed questionnaires were not properly submitted.

It is essential to click the “Submit” button once you have finished completing the questionnaire (see picture right).

If you wish to pause and complete the questionnaire later, you can click on the “Resume later” button, and follow the instructions that appear.

If you have previously completed the questionnaire, but are not sure if it was correctly submitted, EUIPO invites you to complete it again.

Posted by: Blog Administrator @ 08.43
Tags: fake packaging, Customs,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4726

WEDNESDAY, 20 MARCH 2019
Hey pal (Kornuit), be resolute (Kordaat), and have a beer!

Koninklijke Grolsch N.V. (Royal Grolsch N.V., since October 2016, part of the Asahi Group) is a respected Dutch brewery, which has its roots in Groenlo, a city in the so called Achterhoek (the very eastern part of the Netherlands). Grolsch produces a variety of beers under the brand ‘Grolsch’. Grolsch made its claim to fame not only with the premium lager it produces, but also amongst others with the typical nipple top bottles it used and uses for its lager and the use of slogans like ‘Vakmanschap is meesterschap’ (literally translated: ‘Craftsmanship is Mastery’, used in commercials with a Vivaldi kind of tune, look, listen and whistle here - link: https://www.youtube.com/watch?v=e1DV2NBAInM), ‘Bierkenners vragen: Grolsch’ (‘Beer connoisseurs request: Grolsch’) and  ‘Op een dag drink je geen bier meer, maar drink je Grolsch’ (‘Some day you don’t drink beer, but you drink Grolsch’).

In 2013 Grolsch introduced a new lager: ‘Kornuit’. The marketing meme ‘Verrassend fris pils’ (‘Remarkably refreshing lager’) has become the driver for ‘Kornuit’, aimed at a younger audience, apparently (but this is unconfirmed) hipsters with or without beards. Grolsch has registered ‘Kornuit’ in the Benelux as a word mark in 2013/2014 as well as in a figurative mark in 2018 (as depicted at the left top of this post).

At the end of October 2018 the German supermarket chain Lidl - which currently operates through a subsidiary in the Netherlands 418 supermarkets - introduced a new lager in the Netherlands under the name ‘Kordaat’ for which it registered the image depicted above as a trade mark in the Benelux on 30 October 2018). The ‘Kordaat’ lager is only available in the Dutch supermarkets of Lidl, which does not sell ‘Kornuit’. The ‘Kordaat’ trade mark is used on the lager bottles, the crates and packaging of 12-packs. It is furthermore used in advertising materials and television commercials. And also in the domain ‘kordaatbier.nl’ (used to operate the website www.kordaatbier.nl).

After a c&d did not work, Grolsch started interlocutory proceedings for trade mark infringement against Lidl before the Presiding Judge of the District Court of Rotterdam (A.F.L. Geerdes), who denied Grolsch’ claims with a decision of 28 February 2019. In a decision which reads like a classic trade mark law text book the Presiding Judge finds that Lidl does and did not infringe the ‘Kornuit’ trade marks. The Presiding Judge does not judge the ‘Kornuit’ and ‘Kordaat’ trade marks by their cover, but finds and follows the applicable rules, little by little, applying the rules to the facts, making references to relevant case law and justifying its outcome.

Grolsch defends that there is an auditive as a well as a visual similarity between ‘Kornuit’ and ‘Kordaat’, because both trade marks start with ‘kor’, end with a ‘t’, consist of two syllables and the different letters consist of a consonant followed by two vowels. Lidl defends, referring to CJEU 12 January 2006, case C-361/04 P (Picasso/Picaro) and EGC 26 April 2018, case T-554/14 (Messi/Massi) that the conceptual difference between ‘Kordaat’ en ‘Kornuit’ outweighs the possible auditive and visual similarities. ‘Kornuit’ refers to ‘friend’ or ‘pal’, whilst ‘kordaat’ refers to ‘resolute’, according to Lidl.

Picasso/Picaro is relevant, because in that case the CJEU decided that if at least one of the two involved trade marks/signs has a clear and fixed meaning for the relevant public, which can thus immediately be understood by that public, conceptual differences may outweigh the visual and auditive similarities. The Presiding Judge however finds that a conclusion cannot be drawn with regard to the conceptual difference, nothwithstanding that Lidl did not file evidence (for example with a market survey) for its denial that the very large majority of the public at large knows the meaning of both words, referring to a 2013 investigation by the ‘Centrum voor Leesonderzoek’ (Center for Readingresearch. According to this investigation apparently 95% of the Dutch recognize the word ‘kornuit’, and 96% the word ‘kordaat’. This was disputed by Grolsch. That the words are recognized as Dutch words, doesn’t mean that the public knows what the words mean. According to Grolsch the word ‘kornuit’ is not used (anymore) in daily language. The majority of the Dutch consumers does not know its meaning. Apparently ‘kornuit’ is recorded as one the thousand forgotten words in Van Dale’s (the most reknowned dictionary series in the Netherlands) ‘vergeetwoordenboek’ (dictionary of forgotten words), whilst if one googles ‘kornuit’ practically no search results appear in which ‘kornuit’ is used in a descriptive way. Also the word ‘kordaat’ is according to Grolsch not a word used a lot in in daily language. The Presiding Judge therefore follows Grolsch with regard to this issue, so that Lidl cannot rely on the conceptual ‘weigh out’ ruling as laid down in Picasso/Picaro.

Leaving the conceptual discussion aside the Presiding Judge moves over to the auditive and the visual similarity. The Presiding Judge agrees with Lidl that, although there is a certain degree of similarity, the auditive similarities between ‘Kordaat’ and ‘Kornuit’ are small, because the sounds of the syllables which are emphasized (‘aat’ and ‘uit’) are dominant.

With regard to the visual similarity there is first of all a discussion between the parties to be decided as to which trade marks should be compared. Only the figurative trade marks for ‘Kornuit’ and ‘Kordaat’ as Lidl defends, because in general both Lidl and Grolsch use Kordaat respectively Kornuit in connection with the design of the product (which leads Lidl to the conclusion that there isn’t a visual similarity at all)? Or should - as Grolsch defends - not only the figurative trade marks be compared on a visual level, but also the word ‘kordaat’ with the registered word and figurative mark ‘Kornuit’?

Grolsch filed evidence that Lidl also used the word ‘kordaat’ (as such). Because of this evidence the Presiding Judge follows Grolsch and finds with regard to the comparison as follows. According to the Presiding Judge there is only a slight degree of similarity between the words (marks) ‘kornuit’ and ‘kordaat’ (the first three letters and the last letter are identical, the total amount of letters is identical), but on the other hand the shape of the letter combinations ‘nui’ and ‘daa’ differ in such a way (contrary to for example the shapes of the letter combinations ‘vv’ and the letter ‘w’) that the visual similarity is weakened, and, globally appreciated, low. The Presiding Judge comes to the same finding with regard to the visual similarity between the word mark Kornuit and the figurative mark Kordaat. And with regard to the visual similarity of the figurative mark Kornuit and the word Kordaat the Presiding Judge concludes that this similarity is even lesser then the visual similarity between the words KORDAAT en KORNUIT written in capital letters, because the figurative Kornuit trade mark contains a small letter i, which has a dot on top, contrary to the capital I.

With regard to the figurative trade marks Kornuit and Kordaat the Presiding Judge finds - summing up all the differences - that these marks - appreciated globally - are not similar.

Thus the Presiding Judge concludes that there is only a low degree of similarity on a visual and auditive level and accordingly establishes that a risk of confusion does not exist. According to the Presiding Judge the relevant public shall neither confuse the word and figurative trade mark Kordaat with the word and figurative trademark Kornuit, nor make a mistake as to the origin of the producs and think that Kordaat lager and Kornuit lager are from the same undertaking or economically connected undertakings. The fact that the products are identical and that Kornuit is distinctive do not make a difference according to the Presiding Judge. Therefore for the Presiding Judge there is not a risk of confusion based trade mark infringement (article 2.20 par 1 under b BCIP).

Neither does the Presiding Judge find a dilution based infringement (article 2.20 par 1 under c BCIP). According to the Presiding Judge Grolsch should have substantiated more why the degree of similarity between the signs used by Lidl for its Kordaat lager and the word and figurative trade mark Kornuit is such that Kordaat brings to mind Kornuit at the average consumer. The Presiding Judge takes into consideration that media reports in which a link is made between Kordaat and Kornuit are insufficient, because what counts and is relevant is the opinion of the ‘Gut Springenheide’ consumer. Also social media messages are insufficient, because it is unclear who posted these, while they can be posted after the media reported about the matter. In the interlocutory proceedings therefore the Presiding Judge was not able to establish that notwithstanding the small degree of similarity the relevant public makes a link as required. And accordingly the Presiding Judge leaves aside the due cause and dilution (unfair advantage and detriment) questions.

Last but not least the Presiding also finds that Lidl did not infringe the invoked Kornuit trade marks on the basis of article 2.20 par 1 under d BCIP, with which Grolsch attacked the use of Kordaat in the domain ‘kordaatbier.nl’. According to the Presiding Judge the use of a sign in a domain is to regarded as use for goods if the domain is connected to a website which is used in connection with the sale of goods (which Lidl does).

And so Grolsch’ claims were all denied. Grolsch can appeal the decision within four weeks after the date of the decision and/or start proceedings on the merits. In quite a few public comments the most used one why Grolsch should have won these proceedings, was that courts should focus on the identity of the first letters of the trademarks (signs) to be compared, but this case clearly shows that trade mark law is not algebra and that sacred formulas do not (always) exist. If Grolsch appeals the case will be dealt with by the Court of Appeal of The Hague. Cheers!

Posted by: Gino Van Roeyen @ 14.46
Tags: kornuit, kordaat, benelux, trademarks,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4725

TUESDAY, 19 MARCH 2019
Trade in counterfeit and pirated goods is growing – new EUIPO/OECD report

The EUIPO and OECD have published a new report, ‘Trends in Trade in Counterfeit and Pirated Goods’. It updates analysis published in 2016.

The latest report estimates the value of the international trade in counterfeit and pirated goods to be up to €460 billion. This compares with an estimate of €338 billion in the 2016 report.

In the EU, 6.8% of all imports from third countries are now estimated to be counterfeit and pirated goods, up from 5% in the 2016 report.

The full report, executive summary and infographics are available on EUIPO’s website in various languages. The main findings include:

  • In 2016, the volume of international trade in counterfeited and pirated products could amount to as much as USD 509 billion (EUR 460 billion). This represents up to 3.3% of world trade.
  • The previous OECD EUIPO study, which relied on the same methodology, estimated that up to 2.5% of world trade was in counterfeit and pirated goods in 2013, equivalent to up to USD 461 billion (EUR 338 billion).
  • In 2016, imports of counterfeit and pirated products into the EU amounted to as much as EUR 121 billion (USD 134 billion), which represents up to 6.8% of EU imports, against 5% of EU imports in 2013.
  • Companies and businesses most affected by counterfeiting and piracy continue to be primarily based in OECD countries such as the United States, France, Italy, Switzerland, Germany, Japan, Korea and the United Kingdom.
  • However, a growing number of companies registered in high income non-member economies, such as Singapore and Hong Kong are becoming targets.
  • Customs seizures detailed in the report indicate the main countries and regions from which counterfeit and pirate goods include China, Hong Kong, the UAE, Turkey, Singapore, Thailand, India and Malaysia.

The report uses data from nearly half a million customs seizures from international enforcement agencies including the World Customs Organization, the European Commission’s Directorate-General for Taxation and Customs Union and the United States Department of Homeland Security. The datasets are composed of information collected and processed by customs officers.

Posted by: Blog Administrator @ 10.21
Tags: EUIPO. OECD, counterfeiting, piracy,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4723

MONDAY, 18 MARCH 2019
Preliminary injunctions around the world – your questions answered!

Last year the MARQUES Dispute Resolution Team posted the results of a questionnaire with information on preliminary injunctions in 18 key jurisdictions.

For each jurisdiction, answers are provided to questions such as: What types of injunctions are available? Are any available on an ex parte basis? Which factors will courts take into account in deciding whether to grant a preliminary injunction? Can damages/an account of profits be awarded in addition to an injunction? What is the procedure and timescale for seeking a preliminary injunction? Is there a right of appeal? And are costs recoverable?

The jurisdictions covered are Brazil, China-Hong Kong, Croatia, Denmark, France, Germany, Greece, Mexico, the Netherlands, Norway, Poland, Portugal, Spain, Sweden, Switzerland, Turkey, the UK and the US.

Patricia McGovern of DFMG Solicitors in Ireland is a member of the Dispute Resolution Team. She answered some questions about the publication.

How did the project come about?

It was one of our first projects when the Dispute Resolution Team was formed. A lot of us on the Team had experience in seeking interlocutory relief in different countries or being involved in multi-jurisdiction litigation, and we thought this was an area where useful information could be provided.

We realised that everything is slightly different in each country, and in some cases radically different. So we thought it would be useful to both corporate and expert members to provide a quick reference that people could look at. It is not a substitute for local advice but an initial go-to when the problem arises so you can interact better with local counsel.

It is something we all get from time to time: a client says their trade mark is being infringed and asks whether they can get an injunction in certain countries, and whether it is better to go for one country first. This questionnaire gives you a quick indication before seeking local advice on your strategy.

How did you choose the countries?

It was partly pragmatic: we looked at the countries represented by the members of the Team. But we extended it to look at countries where we often encounter issues, and major markets such as the US and China.

We may consider adding more countries in the future. And, if things change in the existing countries, we can easily update it.

What surprised you about the responses?

It is fascinating to see all the differences that exist in the world. On particular questions, things you take for granted in one country aren’t available elsewhere. For example, in Ireland we give the court an undertaking as to damages; in other words the plaintiff may have to pay damages to the defendant if it is subsequently decided at the full hearing that a preliminary injunction was granted without grounds. Not all jurisdictions have that. There are also a variety of rules on whether costs are recoverable and the extent of costs recoverable.

Another difference is that countries such as Germany have the concept of a protective writ to assist you in defending against a potential ex parte injunction. And the Dutch courts are prepared to grant extraterritorial injunctions. In China, in general there are very limited circumstances in which you can get an injunction.

Even within Europe, we have very significant differences between the civil law jurisdictions on the continent and the common law jurisdictions of the UK and Ireland, which are important to consider.

How did you decide the questions?

We spent some time on the questionnaire, reviewing it and populating it. That led to us amending certain questions and rephrasing some of them and then circulating the questionnaire further.

If anyone out there thinks it would be of benefit to add any more countries, they can contact us and we can consider adding more countries to the spreadsheet. It might be interesting to include India, Russia, Australia, some of the Middle East countries or any countries where clients feel there is most need to get an injunction. The invitation is open to anyone who encounters these issues.

We would also welcome feedback on this format: is there a question we didn’t include? We can always go back to the contributors and get more information if necessary.

Are there plans for any similar projects?

The Team has a lot of other projects in the pipeline, including a session for the Annual Conference in Dublin. We’re looking in general at dispute resolution issues in a broad sense, and anyone who would like to know more can contact any of the Team members – we represent quite a few jurisdictions between us.

The Preliminary Injunctions guide was distributed to 2018 Annual Conference delegates on a USB stick, and MARQUES members can also download it from the Dispute Resolution Team page on the MARQUES website.

For full access to all the MARQUES Team resources, become a member. Members also benefit from a discount on registration for the Annual Conference, taking place in Dublin in September 2019.

Posted by: Blog Administrator @ 18.07
Tags: Preliminary injunctions, Dispute Resolution Team, ,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4722

THURSDAY, 14 MARCH 2019
Proper reasons for non-use in Turkey

Mutlu Yıldırım Köse provides a guest post for Class 46 on a recent Court of Appeal ruling in Turkey

The Court of Appeal (COA) has approved a decision of a first instance court which ruled that the regulatory restriction on the sale of cocktail beverages containing distilled alcohols constitutes a proper reason for non-use of a trade mark in Turkey.

Bacardi & Company Limited filed a trade mark infringement and unfair competition action against a Turkish company using the FREEZER mark on Bacardi BREEZER lookalikes.

Founded 157 years ago, family-owned Bacardi sells its products in more than 150 countries. Protecting the reputation of its brands and the quality of the products consumers expect from Bacardi is critical to the long-term sustainability of the business.

The defendant company filed a counter non-use action and argued that Bacardi’s BREEZER trade marks have never been used in Turkey and requested revocation of the trade marks.

Indeed, the Bacardi BREEZER mark has not been used in Turkey since its registration date of 2001. But the reason behind the non-use of Bacardi BREEZER marks in Turkey was regulatory restrictions. Turkish regulations never let cocktail beverages containing distilled alcohols be sold to consumers.

According to the Turkish Trade Mark Law, a trade mark registration can be revoked if the trade mark in question has not been put to genuine use in Turkey for a continuous period of five years in connection with the goods or services in respect of which it is registered, unless the owner of the trade mark proves that there is a proper reason that justifies this non-use. The Law does not define “proper reason” for non-use.

In the cancellation action, Bacardi argued existence of proper reasons for non-use and stated that Bacardi cannot use BREEZER trade marks in Turkey since Turkish regulations do not allow the sale of cocktail beverages containing distilled alcohols.

The first instance court accepted that such regulatory restrictions were a proper reason for non-use and dismissed the request to revoke the BREEZER marks for “sparkling beverages containing rum”. The First Instance Court’s decision was approved by the COA and finalized in December 2018.

In parallel, the trade mark infringement and unfair competition claims against the KIRBIYIK FREEZER branded products were also accepted.

In Turkey, decisions in which the court accepts that the trade mark owner had proper reasons for non-use are very rare. Therefore, the decision is an important example demonstrating that regulatory restrictions can constitute a proper reason for non-use.

Mutlu Yıldırım Köse is a partner of Gün+Partners and a member of the MARQUES Copyright Team

Posted by: Blog Administrator @ 11.02
Tags: non-use, Bacardi BREEZER, ,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4721

WEDNESDAY, 13 MARCH 2019
Seminar on the Madrid System, Geneva, 24 and 25 April

WIPO is hosting a Seminar on the Practical Aspects of the Madrid System in Geneva on 24 to 25 April 2019 and registration is now open.

According to WIPO's website:

As before, this highly popular and hands-on masterclass focuses on a wide range of Madrid System processes and procedures, such as filing an international application and managing registrations. It also serves as a useful platform for participants to exchange knowledge and ideas, and provides a forum for feedback that will help us continuously improve and enhance the System for our fast-expanding user base.

WIPO speakers will give presentations on WIPO’s role in the Madrid System, cover some of the System’s recent developments, and introduce a range of new and improved online services. We will also explore the role of the Designated Contracting Party in some depth.

Moreover, our special guest speaker will be Mr. Gavin Stenton, Partner at Penningtons Manches LLP in the United Kingdom. Mr. Stenton will share his experiences in responding to refusals, and discuss issues relating to the United Kingdom.

The provisional programme is available here (PDF).

Registration can be made until 18 April 2019 and the fee is CHF600 (including materials, lunches, morning and afternoon tea).

Posted by: Blog Administrator @ 11.43
Tags: Madrid System, WIPO,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4720

MONDAY, 11 MARCH 2019
Turkey’s Ministry of Trade to inspect products bearing GIs

Özlem Fütman of the MARQUES GI Team provides a guest post on new plans for the inspection of geographical indications in Turkey

The Turkish Patent and Trademark Office (TURKPATENT) and Republic of Turkey Ministry of Trade have signed a cooperation protocol aimed at conducting work in regard to protection and inspection of geographical indications (GIs) and traditional product names.

The Head of TURKPATENT stated that the Ministry of Trade will inspect products bearing a GI consumed by citizens, saying: "This will further strengthen the system."

In a speech delivered at the signing ceremony of the protocol, the Head of TURKPATENT indicated that they have recently been performing significant work concerning registration of GIs regarding local products in Turkey, that approximately 200 new GIs were registered within the last year, and that they have also been working on ways to earn more money out of GIs and how to enter the international market.

Without a shadow of a doubt, inspection of GIs is as important as their registration, and constitutes the other pillar of the system. Indeed, the holder of a GI registration also needs to establish the necessary mechanisms of inspection. In this context, it is understood that Turkey’s Ministry of Trade is going to inspect whether the products with a GI consumed by citizens comply with the requirements.

The purpose of this protocol is to ensure coordination between authorities concerning protection of GIs and traditional product names, as well as protection of consumers.

As part of the protocol, TURKPATENT will notify the Ministry of Trade of complaints received by it in relation to any misleading information through use of GIs and traditional product names. Afterwards, the Ministry of Trade will examine the matter through its Advertisement Board, and impose penalty sanctions if it concludes that there is an unfair and wrongful use in question.

Özlem Fütman is a lawyer with OFO Ventura in Turkey and a member of the MARQUES GI Team

Posted by: Blog Administrator @ 15.03
Tags: GI, Turkey, TURKPATENT,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4718

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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