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® Official Journal of the International Trademark Association ANNUAL REVIEW The Fourteenth Annual International Review of Trademark Jurisprudence Vol. 97 March-April, 2007 No. 2 Vol. 97, No. 2 ® THE TRADEMARK REPORTER Pages 311 to 679 March-April, 2007 INTERNATIONAL TRADEMARK ASSOCIATION Representing the Trademark Community since 1878 655 Third Avenue, New York, NY 10017-5617 Telephone: +1 (212) 768-9887 email: [email protected] Facsimile: +1 (212) 768-7796 OFFICERS OF THE ASSOCIATION DEE ANN WELDON-WILSON .................................................................................................... President RHONDA STEELE ............................................................................................................. President Elect RICHARD HEATH .............................................................................................................. Vice President HEATHER C. STEINMEYER ............................................................................................... Vice President GERHARD R. BAUER.................................................................................................................Treasurer GREGG MARAZZO ..................................................................................................................... Secretary DAVID H. BERNSTEIN .................................................................................................................Counsel ALAN C. DREWSEN.....................................................................................................Executive Director EDITORIAL BOARD ROBERT M. KUNSTADT, Editor-in-Chief CLIFFORD W. BROWNING, United States Articles Editor SHERRI FELT DRATFIELD, United States Articles Editor JONATHAN MOSKIN, United States Articles Editor LANNING G. BRYER, International Articles Editor DANIEL C. GLAZER, International Articles Editor PIER LUIGI RONCAGLIA, International Articles Editor LISA BUTKIEWICZ, Managing Editor JOHN MORALES, Associate Editor BENJAMIN Y. AGRESS CAMILO ALVAREZ RAYMOND G. AREAUX WILLIAM G. BARBER MARTIN J. BERAN DANIEL R. BERESKIN ALAIN BERTHET IAN BUCHAN MICHAEL CANTWELL PATRICK CONCANNON JOHN M. CONE RUTH CORBIN BARTH DE ROSA MICHAEL DENNISTON JENIFER DEWOLF PAINE JOAN L. DILLON JON A. DORF JESSICA ELLIOTT CATE ELSTEN THEOPHILUS I. EMUWA DANA A. FERESTIEN GERALD L. FORD MAGDALENA FREDLUND EILEEN KING GILLIS CHRISTOPHER GLANCY ELENA GRIMME MASCHA GRUNDMANN JEFFERY HANDELMAN FRED W. HATHAWAY JOSE HINOJOSA GEORGE HOVANEC CHRISTY L.E. HUBBARD JAMES HUMANN CHRISTINA KIM EDWARD G. LANCE IV CHRISTOPHER LARKIN BINGHAM B. LEVERICH KWAN-TAO LI MARIE LUSSIER DOUGLAS MASTERS JONATHAN D. MATKOWSKY JOHN GARY MAYNARD J. THOMAS MCCARTHY KATHLEEN E. MCCARTHY DAVID MCDONALD ANTONY J. MCSHANE NEIL MELLISHIP WILLIAM MERONE CHRISTOPHER MICHELETTI LAURA MICHELSEN CAMILLE MILLER HELEN MINSKER GLENN MITCHELL AMARJIT SINGH MONGA KAREN A. MONROE HUGO MONTALVO MARIA K. NELSON AMANDA NYE ELISABETH OHM SALVATORE ORLANDO JOHN PEACOCK DEBORAH PECKHAM JOHN PEGRAM E. LYNN PERRY MANUEL POBLADOR FIDEL PORCUNA DE LA ROSA ANTHONY M. PRENOL GRIFFITH PRICE EDUARDO RAMIREZ MARY REDING H. JONATHAN REDWAY ANDREA RUSH DARREN W. SAUNDERS KURT SAUNDERS DANIEL SCHLOSS ERIC P. SCHROEDER CATHY SHORE-SIROTIN ALEX SIMONSON RANDY S. SPRINGER LESLIE TILLY JAMES L. VANA EDWARD VASSALLO J. THOMAS WARLICK ROBERT WASNOFSKI CONRAD WEINMANN JORDAN S. WEINSTEIN JOSEPH J. WEISSMAN JOHN WELCH SUSAN NEUBERGER WELLER THOMAS WETTERMANN PETER WILD KENNETH WILTON CAROL WITSCHEL DOUGLAS R. WOLF JUAN IGNACIO ZAPATA Advisory Board—Former Editors MILES J. ALEXANDER WILLIAM M. BORCHARD SANDRA EDELMAN ANTHONY L. FLETCHER ARTHUR J. GREENBAUM WERNER JANSSEN, JR. CHARLOTTE JONES THEODORE C. MAX VINCENT N. PALLADINO JOHN B. PEGRAM ALLAN S. PILSON ROBERT L. RASKOPF PASQUALE A. RAZZANO SUSAN REISS HOWARD J. SHIRE JERRE B. SWANN STEVEN M. WEINBERG ALLAN ZELNICK The views expressed in The Trademark Reporter7 are those of the individual authors. The Trademark Reporter7 (ISSN 0041-056X) is published bimonthly by the International Trademark Association, 655 Third Avenue, New York, NY 10017-5617 USA. Periodicals postage paid at New York, NY POSTMASTER: Send address change to The Trademark Reporter7, 655 Third Avenue, New York, NY 10017-5617 USA. Annual subscription rate for members is $90 (single copy $20), which is included in their annual dues. Subscriptions to nonmembers available, in the interests of education, only to schools, public libraries and government agencies at a cost of $60 (single copy $20) per year. Rates for membership on request. Material may not be reproduced without permission. Claims for missing numbers must be made within the month following the regular month of publication. The publishers expect to supply missing numbers free only when losses have been sustained in transit and when the reserve stock will permit. Reprints of most leading articles and other material available for nominal charge on inquiry to INTA. ® (USPS 636-080) Copyright 2007, by the International Trademark Association All Rights Reserved Vol. 97 March-April, 2007 No. 2 TABLE OF CONTENTS ARTICLES AND REPORTS ANNUAL REVIEW The Fourteenth Annual International Review of Trademark Jurisprudence Editor’s Note ...................................................................................311 Part I. Acquisition of Rights and Registrability .............................. * A. Acquisition of Rights ................................................................... * 1. Bases for Acquisition............................................................. * a. Functionality ................................................................... * b. Quality and Quantity of Use.......................................366 c. Appropriation of a Trademark........................................ * 2. Assignments ..............................................................367, 462 3. Licenses......................................................................592, 609 4. Protection for a Non-Renewed Trademark .......................... * 5. Bankruptcy ............................................................................ * B. Registrability............................................................................... * 1. Generic Names ..................................334, 398, 406, 416, 479 2. Merely Descriptive Terms.................418, 462, 526, 589, 599 3. Not Merely Descriptive Terms ................316, 360, 368, 399, 501, 592, 611 * The headings followed by an asterisk denote that there were no cases reported in this subject/topic. This issue of THE TRADEMARK REPORTER® (TMR) should be cited as 97 TMR ___ (2007). (continued on next page) 4. 5. 6. 7. Geographical Names .........................324, 451, 479, 494, 611 Personal Names.................................................419, 480, 634 Letters and Numbers ............................................................ * Device and Design Marks ..................................................... * a. Two-Dimensional Marks.....................................502, 636 b. Three-Dimensional Marks .................335, 420, 435, 543, 603, 621, 665 8. Likelihood of Confusion ....................................................502 a. Similarity of Marks ............316, 361, 369, 401, 407, 423, 437, 458, 462, 480, 504, 520, 537, 545, 561, 593, 598, 604, 614, 667 b. Similarity of Goods/Services ...............................440, 595 c. Conflict Between Trademarks and Corporate Names ..........................................................................483 9. No Likelihood of Confusion.......................................506, 600 a. No Similarity of Marks ..............427, 441, 450, 458, 463, 480, 507, 524, 562, 589, 596, 610, 615 b. No Similarity of Goods/Services ..................................... * 10. Deceptive Marks........................................................467, 484 11. Other Objectionable Features .............................................. * a. Copyright Protection ...................................................485 b. Official Names ................................................................. * c. Violation of Public Order ................................................ * d. Scandalous Mark.................................................446, 637 e. Bad Faith .............................................................539, 606 12. Famous Marks...........................318, 370, 402, 463, 510, 564 13. First to Apply Versus First to Use ...................325, 373, 540 14. House Marks......................................................................568 15. Foreign Registrations............................................................ * 16. Trade Dress ........................................................................... * 17. Disclaimers ........................................................................639 18. Joint Ownership .................................................................... * 19. Slogans...............................................................459, 546, 597 20. Color...........................................................319, 328, 409, 527 21. Trade Names ......................................................................... * 22. Distinctiveness .................................336, 374, 432, 468, 482, 495, 525, 583, 589 23. Official and Certified Marks.....................................375, 409 24. Service Marks ........................................................................ * 25. Sound Marks ......................................................................... * 26. Detriment/Unfair Advantage ............................................... * (continued on next page) 27. Scent Marks........................................................................... * 28. Taste Marks........................................................................... * 29. Family of Marks ................................................................320 Part II. Procedural Matters..........................................................336 A. Formalities for Acceptable Filings .........................................320 B. Identification of Goods or Services............................................. * C. Disclaimers and Consents ......................................................464 D. Appellate Procedure................................................................472 1. Jurisdiction/Authority.......................................................337 2. Who May Appeal?.................................................................. * 3. Improper Pleadings...................................................337, 569 E. Forum Conflicts........................................................................... * F. International Issues.................................................................... * G. Evidence...........................................................................377, 449 Part III. Post-Registration Issues...................................................... * A. Infringement and Defenses ........................................................ * 1. Famous Marks..........................349, 380, 410, 433, 485, 513, 529, 547, 590, 618, 622 2. Likelihood of Confusion ............................338, 348, 570, 641 a. Similarity of Goods/Services ...................... 558, 572, 612 b. Similarity of Marks ....................338, 350, 452, 482, 516, 549, 572, 600, 609, 612, 613, 668 3. Prior User ..................................412, 537, 551, 570, 619, 627 4. Disclaimers ........................................................................453 5. Fair Use ................................................................................. * 6. International Conventions................................................597 7. Symbols.................................................................................. * 8. Infringement of Unregistered Trademarks ......................... * 9. Standing................................................................................. * 10. Non-use of Trademark ......350, 459, 498, 541, 571, 585, 642 11. No Likelihood of Confusion................................................... * (continued on next page) a. No Similarity of Marks ......................339, 352, 450, 453, 576, 607, 612, 628 b. No Similarity of Goods/Services .................................384 12. Distinctiveness ..........................................340, 413, 586, 591 13. File Wrapper.......................................................................... * 14. Parody ................................................................................488 15. Deceptive Use ............................................................341, 465 16. Absence of Willful Intent ..................................................615 17. Descriptive Use .................................................342, 552, 610 18. Equitable Defenses....................................................454, 617 19. Family of Marks ................................................................356 20. Guarantee .............................................................................. * 21. Staying of Court Action......................................................... * 22. Trade Dress ...............................................................413, 455 23. Abuse of Process .................................................................... * 24. Personal Names.........................................................488, 645 25. Geographical Indications ..................................528, 576, 646 26. Bad Faith ...........................................................................577 27. Exhaustion of Trademark Rights .............................456, 499 B. Unfair Competition .................................................331, 342, 670 1. Passing Off.........................................................343, 385, 414 2. Character Marks ................................................................... * 3. Statutory Issues .................................................................... * 4. Advertising ................................................................474, 647 5. Compensation ....................................................................614 6. Configuration of Goods ......................................................... * 7. Color...................................................................................558 8. Slavish Imitation.......................................................415, 601 C. Injunctions and Damages ......................321, 356, 365, 386, 475, 500, 553, 559, 630, 649 D. Seizures ....................................................................................... * 1. Civil Actions ......................................................................632 2. Criminal Actions ................................................................... * E. Valuation and Tax Treatment.................................................... * F. Loss of Trademark Rights ..............................................344, 632 1. Forfeiture............................................................................... * (continued on next page) 2. 3. 4. 5. 6. 7. Lapsing of Registration......................................................... * Nullity ........................................................................322, 435 Attachment of Trademark .................................................... * Cancellation.......................................388, 404, 489, 534, 633 Dilution ......................................................................390, 651 Recovery of Trademark .....................................................323 G. Post-Registration Evidence of Use and Renewals ....392, 572, 612 1. Changes to Mark.................................................................... 532 H. Amendments................................................................................ * 1. Amendments to Marks......................................................333 2. Amendments to Registrations .............................................. * I. Trademark Agent in a Litigation ............................................... * J. Gray Marketing.......................................................456, 477, 653 K. Counterfeiting Issues..............................................357, 490, 556 L. Opposition/Cancellation Procedure................344, 461, 578, 660 M. Licensing Issues ......................................................................358 N. Counsel, Conflicts........................................................................ * Part IV. Personality Rights............................................................492 Part V. Internet Issues...................................................................493 A. Domain Names ................346, 358, 397, 405, 457, 466, 517, 662 Table of Marks ................................................................................673 COUNTRY INDEX Argentina ........................... 316 Australia ............................ 324 Austria ............................... 334 Benelux .............................. 348 Brazil.................................. 360 Canada ............................... 366 Chile ................................... 398 China, People’s Republic ... 406 Colombia ............................ 416 Community Trade Mark ... 435 Czech Republic................... 450 Denmark ............................ 451 Dominican Republic .......... 458 Ecuador .............................. 459 El Salvador ........................ 462 Estonia ............................... 465 European Court of Justice 467 Finland............................... 479 France ................................ 483 Germany ............................ 494 Greece................................. 501 Hong Kong ......................... 520 Iceland................................ 526 Indonesia............................ 529 Iran..................................... 537 Ireland ................................537 Israel...................................543 Italy ....................................547 Japan ..................................558 Jordan.................................561 Lithuania............................572 Malaysia .............................578 New Zealand ......................583 Norway ...............................589 Panama...............................592 Paraguay ............................598 Portugal ..............................599 Republic of South Africa ....603 Russian Federation............604 Singapore............................606 South Korea........................609 Sweden ...............................610 Switzerland ........................611 Syria ...................................613 Taiwan ................................614 Thailand .............................618 Turkey ................................621 United Kingdom.................634 Uruguay..............................665 Vietnam ..............................667 ® ANNUAL REVIEW THE FOURTEENTH ANNUAL INTERNATIONAL REVIEW OF TRADEMARK JURISPRUDENCE Editor’s Note The TMR welcomes you to the Fourteenth Annual International Review of Trademark Jurisprudence. This edition of the Review was prepared by a Task Force of the TMR under the editorial direction of Rosemarie Christofolo, Matthew Harris, Christy Hubbard, Paul Tackaberry, and Peter Wild. They were assisted by Joel L. Bromberg, Lead Editor; John Morales, TMR Associate Editor; and Lisa Butkiewicz, TMR Managing Editor. As was the case last year, the Review is organized in alphabetical order by country, with each country divided by subject and topic. To ensure continuity, if a particular subject or topic is not covered in this edition, it will be so noted in the Table of Contents by an asterisk (*). The Editorial Board wishes to thank not only those who have contributed, but also those who continue to monitor developments in their jurisdictions. Vol. 97 TMR 311 312 Vol. 97 TMR Contributors are listed below. As a result of an increase in multiple-jurisdiction coverage, all jurisdictions covered are listed for each contributor. Jurisdiction Name Firm Address Africa (majority of the continent) and Channel Islands (Guernsey and Jersey) Wayne Meiring Spoor and Fisher Jersey St. Helier, Jersey Andorra Manuel Pujadas Asturgo, Mateu & Associates Andorra La Vella, Principality of Andorra Anguilla Kenneth Porter Keithley Lake & Associates Anguilla, British West Indies Argentina Iris V. Quadrio Marval, O’Farrell & Mairal Buenos Aires, Argentina Australia and Papua New Guinea Trevor K. Stevens Davies Collison Cave Sydney, Australia Austria Peter Israiloff Barger, Piso & Partner Vienna, Austria Benelux Peter Ch. Hendriks Merkenbureau Hendriks & Co. B.V. Bussum, Netherlands Bermuda Donna M. Pilgrim Conyers, Dill & Pearman Hamilton, Bermuda Brazil Valdir Rocha Patrícia Gouvêa Veirano Advogados Associados Rio de Janeiro, Brazil Canada Paul Tackaberry Ridout & Maybee LLP Toronto, Canada Chile Rodrigo Velasco Alessandri & Compañia Santiago, Chile China, People’s Republic of Hailing Zhang China Patent Agent (HK) Ltd. Wanchai, Hong Kong Colombia Gonzalo Guzmán Cavelier Abogados Bogotá, Colombia Community Trademark Eleni Lappa Dr. Helen G. Papaconstantinou & Associates Athens, Greece Costa Rica Denise Garnier González-Uribe San Jose, Costa Rica Cuba J. Sanchelima Sanchelima & Associates, P.A. Miami, Florida Czech Republic Thomas E. Mudd Zeiner & Zeiner Prague, Czech Republic Vol. 97 TMR 313 Jurisdiction Name Firm Address Denmark Peter Gustav Olson Plesner Svane Grønborg Copenhagen, Denmark Dominican Republic Orlando Jorge Mera Patricia Villegas Jorge Mera & Villegas Santo Domingo, Dominican Republic Ecuador María Cecilia Romoleroux Corral & Rosales Quito, Ecuador Egypt Nazeeh A. Sadek Elias A. Sadek Elias Law Office Cairo, Egypt El Salvador Edy Guadalupe Portal de Velasco Portal & Asociados San Salvador, El Salvador Estonia Jüri Käosaar Kaie Puur Käosaar & Co. Tartu, Estonia European Court of Justice Adam N. Cooke Wragge & Co. LLP London, England Finland Seija M. Saaristo Benjon Oy Helsinki, Finland France and French Territories (DOM and TOM) Marc-Roger Hirsch Cabinet Hirsch Paris, France Germany Kay-Uwe Jonas Linklaters Oppenhoff & Rädler Lichtenstein, Körner & Partners Cologne, Germany Carmen Lichtenstein Stuttgart, Germany Ghana Nii Arday Wontumi AELEX Accra, Ghana Greece Helen G. Papaconstantinou Maria Athanasiadou Eleni Lappa Dr. Helen G. Papaconstantinou & Associates Athens, Greece Guatemala Analucía Carrillo Carrillo y Asociados Guatemala City, Guatemala Gulf States (Kuwait, Saudi Arabia, United Arab Emirates, and Yemen), Bahrain, Oman, and Qatar Farrukh Irfan Khan United Trademark & Patent Services Lahore, Pakistan Honduras Ricardo Anibal Mejia Bufete Mejia & Asociados San Pedro Sula, Honduras Hong Kong, Cambodia, Laos, and Macao Barry Joseph Yen So Keung Yip & Sin Central Hong Kong 314 Vol. 97 TMR Jurisdiction Name Firm Address Iceland Skúli Th. Fjeldsted Fjeldsted, Blöndal & Fjeldsted Reykjavik, Iceland India Pravin Anand Anand & Anand New Delhi, India Indonesia Erna L. Kusoy Hadiputranto, Hadinoto & Partners Jakarta, Indonesia Iran Alireza Laghaee Dr. Ali Laghaee & Associates Inc. Tehran, Iran Ireland Brenda O’Regan F.R. Kelly & Co. Dublin, Ireland Israel Shlomo Cohen Dr. Shlomo Cohen & Co. Tel-Aviv, Israel Italy and San Marino Pier Luigi Roncaglia Gabriele Lazzeretti Società Italiana Brevetti Florence, Italy Jamaica Anne-Marie C. White Feanny Livingston, Alexander & Levy Kingston, Jamaica Japan Kazuko Matsuo Nakamura & Partners Tokyo, Japan Jordan Mazen K. Dajani Ghaida’ M. Ala’ Eddein Saba & Co. Amman, Jordan Latvia and Lithuania Marius Jakulis Jason AAA Baltic Service Company Vilnius, Lithuania Malaysia Jin Nee Wong Wong Jin Nee & Teo Kuala Lampur, Malaysia Mexico Antonio Belaunzaran Luis C. Schmidt Olivares & Cia. Mexico City, Mexico New Zealand John B. Hackett Gabrielle Wilson A J Park Auckland, New Zealand Nicaragua Guy Jose BendanaGuerrero Guy Jose BendanaGuerrero Managua, Nicaragua Nigeria Theophilus I. Emuwa AELEX Lagos, Nigeria Norway Egil Lassen AdvokatCollegiet AS Bergen, Norway Pakistan and Bangladesh Hasan Irfan Khan United Trademark & Patent Services Lahore, Pakistan Panama Nadia Pedreschi de Halman Pedreschi & Pedreschi Panama City, Panama Paraguay Gladys E. Bareiro de Modica Bareiro Modica & Asociados Asunción, Paraguay Peru José Barreda Micaela Mujica Barreda Moller Lima, Peru Vol. 97 TMR 315 Jurisdiction Name Firm Address Philippines Rogelio Nicandro Romulo, Mabanta, Buenaventura, Sayoc & De Los Angeles Manila, Philippines Portugal Rosário Cruz Garcia Garrigues, Cunha Ferreira, Lda. Lisbon, Portugal Nuno Cruz J. Pereira da Cruz, S.A. Puerto Rico Federico CalafLegrand Reichard & Calaf, P.S.C. San Juan, Puerto Rico Republic of South Africa, Botswana, Lesotho, Namibia, Swaziland, and Zambia Charles E. Webster Spoor and Fisher Pretoria, Republic of South Africa Russian Federation Eugene A. Arievich Baker & McKenzie Moscow, Russia CIS Singapore Sheena Jacob Alban Tay Mahtani & de Silva Singapore South Korea Junghoon Kenneth Oh Bae, Kim & Lee IP Group Seoul, South Korea Spain Pablo GonzálezBueno González-Bueno & Asociados Madrid, Spain St. Kitts-Nevis Lindsay F.P. Grant Veira, Grant & Associates Basseterre, St. Kitts Sweden Bengt Nihlmark Bengt Nihlmark AB Stockholm, Sweden Switzerland Peter E. Wild Wild Schnyder AG Zurich, Switzerland Syria Ibrahim A. Tarazi Saba & Co. Damascus, Syria Taiwan Kwan-Tao Li C.V. Chen Lee and Li Taipei, Taiwan Thailand Parichart Jaravigit Edward J. Kelly Tilleke & Gibbins International Ltd. Bangkok, Thailand Turkey M.N. Aydin Deriş Deriş Patents & Trademarks Agency Istanbul, Turkey United Kingdom Matthew Harris Norton Rose London, England Uruguay Juan A. Pittaluga Pittaluga & Associates Montevideo, Uruguay Venezuela Rafael A. Márquez Losada Márquez & Márquez Abogados Caracas, Venezuela Vietnam Nguyen Tran Bat Investconsult Group Hanoi, Vietnam 316 Vol. 97 TMR ARGENTINA I.B.3. Not Merely Descriptive Terms Laboratorios Bagó S.A. (Bagó) filed a trademark application for GASPRIDE, to cover all products in International Class 5. Sanofi Synthelabo (Sanofi) opposed the application on the basis that Bagó intended to monopolize the word PRIDE, recognized by the World Health Organization as an International Nonproprietary Name (INN). Bagó filed a court action seeking the withdrawal of Sanofi’s opposition. The Court of First Instance admitted Bagó’s complaint, finding that the word PRIDE did not constitute an INN in the Spanish language. The court considered, however, that PRIDE was a common element in trademarks used to identify Class 5 products including the pharmaceutical substance sulpiride. The Federal Court of Appeals upheld the lower court’s decision on the grounds that the word PRIDE was descriptive of the products it designated but that adding the word GAS turned it into a fanciful term that, although suggestive, was capable of registration.1 The appellate court added that although the suffix -PRIDE was in common use in marks in Class 5, by the addition of the prefix GAS- the applied-for mark acquired sufficient distinctive capacity. It noted further that both prior court decisions and legal commentators’ opinions had defined INNs as being similar to generic names. Although the core of the decision was the distinction between descriptive and suggestive terms, this case is significant because it includes an analysis of the subject of International Nonproprietary Names. I.B.8.a. Similarity of Marks César Armando Salvatori (Salvatori) filed a trademark application for registration of PUP’S SHOES, to cover all goods in International Class 25. Wolverine World Wide Inc. (Wolverine) opposed the application based on the likelihood of confusion with its trademark HUSH PUPPIES, registered in the same class. Salvatori filed a court action seeking the withdrawal of Wolverine’s opposition. The Court of First Instance dismissed Salvatori’s complaint, ruling that the marks PUP’S SHOES and HUSH PUPPIES were confusingly similar. Salvatori appealed the decision. He argued that (1) the comparison between the trademarks in question should not have 1. Laboratorios Bagó S.A. v. Sanofi Synthelabo, Case No. 1.817/2001, Federal Court of Appeals, Division II, decided August 23, 2005 (unpublished). Vol. 97 TMR 317 been strict, as the notoriety of the HUSH PUPPIES mark constituted a distinctive factor that avoided the risk of confusion; and (2) consumers could not be led to error or confusion, as both the places where the two types of shoes were sold and the prices of the shoes were different. The Federal Court of Appeals upheld the lower court’s decision based on the phonetic similarities between the trademarks.2 The appellate court analyzed the concept of risk of association, developed mainly in European judicial doctrine and not expressly recognized in Argentine legislation. It held that the risk of association doctrine can be applied when the trademarks in question have a certain degree of similarity and, thus, create confusion among consumers as to the origin of the goods. The court concluded that the phonetic similarities between the applied-for mark PUP’S SHOES and the opposing mark HUSH PUPPIES, and the fact that the former was to cover the same goods as those sold under the latter, could lead consumers to believe that the origin of all the goods was the same. This was the first case where the concept of risk of association was analyzed and applied by the court in making its decision. Libbs Farmaceutica Ltda. (Libbs) filed a trademark application for VEROTINA, to cover a pharmaceutical product in International Class 5. Laboratorios Roux Ocefa SA (Roux Ocefa) opposed the application based on the likelihood of confusion of the applied-for mark with its trademarks VERAMINA OCEFA and VERAMINA, both registered for goods in the same class. In response, Libbs filed a court action seeking the withdrawal of the opposition and the cancellation of the opponent’s trademark registration for VERAMINA OCEFA on grounds of non-use. Libbs argued that because trademarks have to be used exactly as filed and registered, Roux Ocefa’s use of the word VERAMINA in isolation instead of in combination with other word elements, as in VERAMINA OCEFA, was not sufficient to defend against the cancellation of the VERAMINA OCEFA registration for non-use. The Court of First Instance dismissed Libbs’ complaint, finding that the applied-for mark was confusingly similar to the opponent’s trademarks. In addition, the court dismissed the cancellation action. Libbs appealed. The Federal Court of Appeals upheld the decision at first instance.3 It ruled that the opponent’s use of the VERAMINA trademarks for an antibiotic, and the fact that the word element OCEFA in the trademark VERAMINA OCEFA was part of the 2. César Armando Salvatori v. Wolverine World Wide Inc., Case No. 174/02, Federal Court of Appeals, Division I, decided December 15, 2005 (unpublished). 3. Libbs Farmaceutica Ltda. v. Roux Ocefa SA, Case No. 7.720/01, Federal Court of Appeals, Division III, decided April 25, 2006 (unpublished). 318 Vol. 97 TMR opponent’s trade name Roux Ocefa, were enough to repel the cancellation action, since the addition of OCEFA constituted a “slight” modification in the use of a trademark, in accordance with Article 5.C(2) of the Paris Convention.4 The Court of Appeals’ decision was not unanimous, as one of the judges considered that the marks at issue were not confusingly similar. However, the majority concluded that the similarities existing between the marks could lead consumers to confusion. This decision establishes flexible parameters regarding the kind of trademark use that may be considered sufficient to defeat an action for cancellation for non-use. I.B.12. Famous Marks Sutter Finanziaria S.p.A. (Sutter) filed applications for registration of the trademarks SUTTER CLEAN, SUTTER DEO, SUTTER FLASH, SUTTER FLOOR, SUTTER HAND, SUTTER HYGENE, SUTTER MATIC, and SUTTER SAMIC, covering only “cleaning products for professional use” in International Class 3. Suter S.A. (Suter), a well-known wine producer in Argentina, opposed the applications based on the likelihood of confusion with its trademarks SUTER, registered in many classes and specifically registered in Class 3 for defensive purposes. Sutter filed a court action seeking the withdrawal of Suter’s oppositions. It argued that its SUTTER trademarks were famous and well known in Europe, and that it had been using them in Argentina since October 1996 with no objection. The Court of First Instance dismissed Sutter’s complaint. It found that the appliedfor marks were confusingly similar to the opponent’s trademarks. In upholding the decision at first instance, the Federal Court of Appeals reasoned as follows: 1. Trademark trials must not be decided on the basis of theoretical or abstract comparisons; instead, the court must apply a realistic criterion, taking into account the parties’ interests and the particular circumstances of the case. 2. The principle of specialty could not be applied to wellknown and famous marks, even though the trademarks in question were used to distinguish different goods or services. 3. Well-known and famous marks must be protected from the loss of their distinctive capacity caused by dilution. 4. Article 5.C(2) provides: “Use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered . . . shall not entail invalidation of the registration [or] diminish the protection granted to the mark.” Vol. 97 TMR 319 4. As dilution causes great damage to well-known and famous marks, the arguments presented by Sutter (different channels of commercialization, different products, different consumers) were not sufficient for the court to authorize the registration of an identical or confusingly similar trademark, even in a different class. 5. The existence of a large number of families whose last name is Suter was not a relevant argument on which to decide the case, as the only consideration was that the name was registered as a trademark before the Trademark Office.5 This decision is in line with the latest rulings of the Federal Court of Appeals, which grant famous and well-known trademarks protection against dilution. I.B.20. Color Kraft Jacobs Suchard (Kraft), owner of several registrations for the trademark MILKA & Design, covering goods in International Class 30, filed a complaint against Chocolates Bariloche SA (Chocolates Bariloche) requesting that it cease the use of a lilac packaging for one of its products in the same class. Kraft argued that Chocolates Bariloche was selling a mini cake (known in Argentina as alfajor) using a lilac packaging whose color was confusingly similar to that in some of Kraft’s various registrations. It contended that such use infringed its trademark rights. The Court of First Instance rejected the claim, and Kraft appealed. The Federal Court of Appeals affirmed the lower court’s decision. It held that Kraft was not entitled to exclusive use of the lilac color to distinguish its products. The appellate court also held that the fact that they shared the lilac color did not imply that the products covered by the marks at issue were confusingly similar, since words and designs included in the marks made them sufficiently different. Consumers, the court noted, identify products not by the color of their packaging but by their trademarks.6 This decision is significant because the Federal Court of Appeals expressly ruled that trademarks claiming only one color— whether said color is arbitrary or not—are not registrable under Argentine law. 5. Sutter Finanziaria S.p.A. v. Suter S.A., Case No. 6.076/97, Federal Court of Appeals, Division II, decided July 28, 2005 (unpublished). 6. Kraft Jacobs Suchard v. Chocolates Bariloche SA, Case No. 2.986/98, Federal Court of Appeals, Division III, decided February 2, 2006 (unpublished). 320 Vol. 97 TMR I.B.29. Family of Marks Sojar S.A. (Sojar) filed trademark applications for MC VEGGIE, covering all goods in International Classes 29, 30, and 31. McDonald’s Corporation (McDonald’s) opposed the applications on the basis of several trademarks containing the prefix MC-, registered in the same classes. Sojar filed a court action seeking the withdrawal of McDonald’s opposition. The Court of First Instance admitted Sojar’s complaint and declared McDonald’s oppositions unfounded. The Federal Court of Appeals reversed the lower court’s decision.7 It held that McDonald’s use of the term MC jointly with different combinations of food-descriptive terms constituted a family of marks that deserved protection, even though such protection was not expressly established in the Argentine Trademark Law. Moreover, the appellate court noted, Sojar’s use of a trademark with the prefix MC- combined with a food term (VEGGIE) could be misleading, as consumers might think that the products to be covered were related to McDonald’s, its famous trademark MCDONALD’S, and its family of marks. This decision is particularly interesting, as families of marks are not protected as such under Argentine law and very few decisions in the past had recognized such protection. II.A. Formalities for Acceptable Filings Servired Y.P.F. S.A. (Servired) filed an application for registration of the trademark S.C. SERVICOMPRAS 24. Luis Fernando Laprida (Laprida) opposed the application on the basis of his trademarks T.S.C. THE SALES CHANNEL, registered in International Classes 9, 16, 35, 38, 41, and 42. Servired filed a court action seeking the withdrawal of Laprida’s opposition. The Court of First Instance admitted Servired’s complaint, holding that the applied-for mark S.C. SERVICOMPRAS 24 was not confusingly similar to the opponent’s mark T.S.C. THE SALES CHANNEL. Laprida appealed. The Federal Court of Appeals dismissed the appeal on the grounds that Laprida did not file proper arguments against the first instance court’s decision and that he repeated the arguments already presented in previous briefs.8 Therefore, the appealed decision became final and conclusive. In its decision, the appellate court examined the effect of an informal objection (llamado de atención in Spanish), which is an 7. Sojar S.A. v. McDonald’s Corporation, Case No. 4.418/99, Federal Court of Appeals, Division I, decided October 4, 2005 (unpublished). 8. Servired Y.P.F. S.A. v. Luis Fernando Laprida, Case No. 2.470/97, Federal Court of Appeals, Division I, decided July 7, 2005 (unpublished). Vol. 97 TMR 321 opposition filed after the expiration of the legal term in which to oppose. Laprida argued that the Trademark Office’s notification to Servired of his informal objection implied the acknowledgment that the trademarks in question were confusingly similar. The Federal Court of Appeals ruled that any opposition filed after the expiration of the term in which to oppose had no legal effect, and that therefore Laprida’s informal objection had no formal consequences. This is the first decision expressly holding that an informal objection has no legal effect. III.C. Injunctions and Damages Elida Beatriz Prada (Prada) owned registrations for the trademark PUNCH, covering all goods in International Classes 1 and 5. Agar Cross SA (Agar Cross) started selling products identified with Prada’s trademark without authorization. Prada filed a court action seeking the cessation of use of the PUNCH mark plus damages. After being served notice of the complaint, Agar Cross accepted Prada’s claim. The Court of First Instance ordered Agar Cross to cease its use of the PUNCH mark and awarded damages to Prada. Prada appealed the damages award, which it considered insufficient.9 The Federal Court of Appeals affirmed the Court of First Instance’s holding regarding cessation of use, but increased the damages granted.10 It held that the fact that the products had been manufactured abroad was no excuse to allow their sale in Argentina if the owner of the local trademark was different from the holder of an identical foreign-registered trademark. The appellate court reviewed three of the basic rules applied in trademark infringement cases: (1) an award of civil compensation for damages does not require a finding of bad faith; (2) when the infringement is proved, the damages should be established; and (3) punitive damages are not available under Argentine legislation. The court also pointed out that the difficulty in determining the damages to be awarded did not constitute an obstacle to awarding them. When considering whether to increase the amount awarded as damages, the appellate court had recourse to the evidence related to the defendant’s infringement. It determined that such infringement must have prevented clients from requesting the plaintiff’s services. In addition, the court took into consideration the fact that Agar Cross’s activities were significant. 9. No information as to the amount awarded as damages was included in the decision. 10. Elida Beatriz Prada et al. v. Agar Cross SA, Case No. 15.792/92, Federal Court of Appeals, Division I, decided February 9, 2006 (available at www.eldial.com). 322 Vol. 97 TMR Contrary to previous court decisions on the issue, in this case the Federal Court of Appeals ruled that damages should be awarded when infringement is proven and the sales of counterfeit products are significant. III.F.3. Nullity In 1998, Biotenk S.A. (Biotenk) launched a pharmaceutical product to treat urinary diseases, under the mark FLOXAMICIN BIOTENK. In September 2000, Biotenk filed a trademark application for said mark, to cover goods in International Class 5. Laboratorios Bagó S.A. (Bagó) opposed the application based on the likelihood of confusion of the applied-for mark with its priorregistered trademark FLOXAMICIN, for a chemotherapic antibiotic in Class 5. Bagó filed a court action seeking that Biotenk cease its use of the trademark FLOXAMICIN BIOTENK and requesting damages. Biotenk counterclaimed for the nullity of the opposing FLOXAMICIN registration, arguing that it had been obtained in contravention of the provisions of the Argentine Trademark Law. Bagó had first obtained a registration for FLOXAMICIN on July 30, 1993. However, it had never used the trademark. On July 8, 1998, Bagó had applied for registration of the same mark, changing only the style of lettering by using plain block letters. Under Argentine trademark law, trademarks are granted for ten years, but those not used within five years as of registration become exposed to cancellation on grounds of non-use. The Court of First Instance rejected the nullity claim, declared the marks at issue confusingly similar, and ordered Biotenk to cease using the mark FLOXAMICIN BIOTENK. However, the court denied Bagó’s request for damages. Both Bagó and Biotenk appealed the decision. Bagó restricted its appeal to the fact that the court had not awarded damages. Biotenk argued that the court had not considered that Bagó had never used its trademark, that the marks FLOXAMICIN BIOTENK and FLOXAMICIN were not confusingly similar, and that they were used to treat different diseases. The Federal Court of Appeals reversed the lower court’s decision. It dismissed the cessation of use claim against Biotenk and declared the nullity of Bagó’s second registration.11 The appellate court considered the fact that Bagó’s trademark had never been used, as evidenced by the fact that the product identified by the FLOXAMICIN mark had been neither manufactured nor placed in the market. In the absence of any use of the mark by Bagó, the new registration for practically the same 11. Laboratorios Bagó S.A. v. Biotenk S.A., Case No. 6.463/01, Federal Court of Appeals, Division II, decided July 7, 2006 (unpublished). Vol. 97 TMR 323 mark had the purpose only of securing a registration once the first, non-used, FLOXAMICIN mark had become vulnerable to cancellation for non-use. In addition, there was no evidence of actual intent to use the mark. Holding that, under Argentine trademark law, “trademarks are registered to be used,” the Federal Court of Appeals declared the nullity of Bagó’s second registration for FLOXAMICIN based on the fact that Bagó had registered its trademark without having the actual purpose of using or manufacturing any product under the mark. This decision is significant, as it confirms that trademark registrations for merely speculative interests will be declared null and void. III.F.7. Recovery of Trademark Grupo Anderson’s S.A. de C.V. (Anderson), a Mexican firm that owns more than 50 restaurants around the world, identified with various marks, filed an application to register the trademark SEÑOR FROG’S, for all services in Old International Class 42. Leandro José Ricco (Ricco) opposed the application on the basis of his trademark registration for SEÑOR FROG’S & Design, covering all services in the same class. Anderson filed a court action seeking (1) the withdrawal of Ricco’s opposition; and (2) its recovery of the trademark registration for SEÑOR FROG’S & Design, or, as an alternate petition, that Ricco’s registration be declared null and void. The Court of First Instance declared Ricco’s trademark null and void and, consequently, rejected the opposition. However, the court also rejected Anderson’s petition for recovery of the trademark registration for SEÑOR FROG’S & Design, arguing that it could not be admitted in a case, such as this, in which a mark had been pirated. Plaintiff and defendant both appealed the decision, but Ricco failed to provide in his filing the proper legal basis for his appeal. Anderson argued that the lower court should have ordered the recovery of the trademark registration for SEÑOR FROG’S & Design, so that Anderson could immediately become the owner of the SEÑOR FROG’S trademarks and, thus, enjoy priority rights over third parties that already owned confusingly similar registrations. Nullification of Ricco’s trademark was not enough, Anderson maintained, to guarantee the adequate protection of its trademark rights. The Federal Court of Appeals affirmed the judgment of the Court of First Instance. The decision was not unanimous, as one of the judges maintained that Anderson could recover the trademark registration for SEÑOR FROG’S & Design; however, the majority 324 Vol. 97 TMR held that Anderson had no right to file a claim for recovery of the registration. Noting that the recovery action was conceived to recover something that belonged to the claimant, the appellate court held that in this case there were no arguments in support of Anderson’s petition, as Anderson had no prior rights in the trademark SEÑOR FROG’S & Design in Argentina. In this connection, the court took into consideration the fact that Anderson’s trademark SEÑOR FROG’S was not well known in Argentina, where it had never been registered by the plaintiff. The Federal Court of Appeals ruled that whoever brings an action for recovery of a trademark has to prove prior use of the trademark whose recovery is sought or registration of an identical trademark in the country.12 AUSTRALIA I.B.4. Geographical Names The Australian Federal Court’s decisions in Colorado Group Ltd et al. v. Strandbags Group Pty Ltd and Strandbags Group Pty Ltd v Colorado Group Ltd et al.13 apply a test for assessing the inherent adaptability of a geographical name that is more generous than the test currently applied by the Australian Trade Marks Office. Strandbags Group Pty Ltd (Strandbags) claimed that Colorado Group Ltd’s (Colorado’s) registration for the trade mark COLORADO should be revoked on the basis that the trade mark was not capable of distinguishing Colorado’s backpacks. Justice Finkelstein recognised that “a designation that is merely descriptive of the character of the goods or of their geographic origin or location cannot be inherently distinctive.”14 To determine whether the word COLORADO was descriptive, and therefore not inherently distinctive, the judge posed the following questions: 1. Is the mark the name of the place from which the goods come? 2. Is the geographic term likely to denote to a reasonable purchaser that the goods come from the place or region named? 12. Grupo Anderson’s SA de CV v. Leonardo José Ricco, Case No. 5.215/00, Federal Court of Appeals, Division III, decided March 2, 2006 (published in El Derecho, No. 11.577, August 23, 2006). 13. (2006) 67 IPR 628 (F.C.A., February 28, 2006) (Finkelstein, J.). See also I.B.13. First to Apply Versus First to Use. 14. Id. at 639. Vol. 97 TMR 325 3. Is the place or region noted for the particular goods in question?15 In applying these tests, Justice Finkelstein determined that the word COLORADO was not descriptive when applied to backpacks. The evidence that the word COLORADO “conjures up notions of trekking, ruggedness, fashion, Rocky Mountains and so on” did not support a finding that the word was descriptive, because “for the most part those ideas are concerned with the image of the brand and are not descriptive of the goods themselves.”16 While the judge recognised that the word might suggest that the goods were of durable quality and for use in rugged situations, he found such suggestion to be indirect only. As such, the word COLORADO was found to be capable of distinguishing backpacks. In deciding whether a geographical name is inherently adaptable to distinguish the goods or services to be covered, the Australian Trade Marks Office applies a stricter test than that applied by Justice Finkelstein. The examiner’s manual states that geographic place names with no inherent adaptability to distinguish include “geographical names with some obvious or potential connection with the goods or services.”17 In applying this guideline, trade mark examiners routinely object to registration of geographical names because such names could be required for use by other traders to describe goods emanating from the geographic location. On this basis the Trade Marks Office would have objected to registration of the word COLORADO, as it is likely that other traders might wish to manufacture the same or similar goods in the state of Colorado and to market goods as emanating from that area. This decision will therefore be helpful to applicants seeking registration for geographical names as trade marks. I.B.13. First to Apply Versus First to Use The decisions in Colorado Group Ltd et al. v. Strandbags Group Pty Ltd and Strandbags Group Pty Ltd v. Colorado Group Ltd et al.18 provide a useful review of the requirements for establishing proprietorship in a trade mark under Australian law. Before the Federal Court of Australia, Colorado Group Ltd (Colorado) claimed infringement of its registered trade mark COLORADO, passing off, and misleading and deceptive conduct by Strandbags Group Pty Ltd (Strandbags). Strandbags cross-claimed 15. Id. 16. Id. at 640. 17. TMO Manual of Practice and Procedure, Part 21, “Trade Marks Capable of Distinguishing,” at 34 (Australian Trade Marks Office, November 2003) (emphasis added). 18. (2006) 67 IPR 628, 635 (F.C.A., February 28, 2006) (Finkelstein, J.). See also I.B.4. Geographical Names. 326 Vol. 97 TMR for revocation of Colorado’s registered trade mark COLORADO. The basis for revocation was that the registration could have been successfully opposed prior to registration of the trade mark. One ground of opposition on which Strandbags claimed it could have successfully opposed the application was that Colorado was not the proprietor of the trade mark COLORADO. Colorado’s registered trade mark COLORADO covered a range of goods in International Classes 3, 9, 14, 18 (including bags, wallets, purses, backpacks, and belts), 25, and 26 as well as services in Class 35. Colorado had sold backpacks in Australia under the trade mark COLORADO since 1982. The backpacks were sold primarily for use by school children as a “back to school” product. It was not clear from the evidence whether the backpacks initially sold by Colorado were labelled simply with the word COLORADO or whether the word COLORADO was combined with a mountain motif design. In 1987, Colorado expanded its product range to include shoes labelled with the word COLORADO, both by itself and with the mountain motif design. Since 1991, Strandbags’ predecessor in business had sold a range of handbags embossed with a combination trade mark that consisted of the word COLORADO and a device showing the head of an American Indian. The range of products sold by Strandbags under the combination trade mark was expanded in 1992 to include suitcases, wallets, key cases, and coin purses and between 1995 and 1998 to include backpacks, briefcases, and associated products. In 2002, Strandbags commenced use of the word COLORADO alone as a trade mark for its handbag and bag range. In considering whether Strandbags would have successfully opposed Colorado’s registration for COLORADO on the basis that Colorado was not the proprietor of the trade mark, Justice Finkelstein noted: [A] person may be the proprietor of a mark in one of two ways. First, in respect of a mark which has never been used the proprietor is the person who is (or claims through) the author of the mark (which could include the copyist of a foreign mark) and intends to use it. Second, a person may be the proprietor of a mark if he has used it, provided no-one else has used the mark before him.19 However, the judge qualified this general rule in the following terms: To make out proprietorship it is also necessary to show that the mark does in fact distinguish the applicant’s goods from the goods of others.20 19. Id. at 635 (citations omitted). 20. Id. Vol. 97 TMR 327 Whether Colorado was the proprietor of the COLORADO trade mark at the time of filing of the application for registration of the trade mark (February 16, 2001) was assessed by way of the following questions: 1. Was Colorado or its predecessor the first user of the COLORADO mark on a backpack, that being the article in respect of which first use was claimed? 2. If the word COLORADO was applied to backpacks not alone but in combination with the “simple mountain motif,” could Colorado (or its predecessor) nevertheless claim to be the first user of the COLORADO mark? 3. If Colorado (or its predecessor) was the first user of the COLORADO mark on backpacks, was a bag, wallet, purse, or belt the same kind of article?21 Justice Finkelstein found that Colorado was the first user of the COLORADO trade mark on backpacks. He noted, however, that the proprietor of a combination trade mark is not automatically the proprietor of each component of a combination trade mark. Where the component “creates an impression which is totally separate from the others . . .[,] that is[,] it performs the trade mark function of identifying the source of the goods and services to customers,” that component alone is capable of functioning as a trade mark.22 In this case, the judge found that the word COLORADO functioned as a trade mark separate from the mountain motif design.23 While he recognised that proprietorship by virtue of first use of a trade mark extends not only to the goods on which a trade mark is first used but also to goods that are “of the same kind,”24 Justice Finkelstein held that Colorado’s use of COLORADO on backpacks would not support a claim to proprietorship in relation to bags, wallets, purses and belts, as such goods were not “of the same kind” as backpacks. In deciding this he noted that there were numerous different kinds of bags with different functions. Backpacks used by school children to carry school supplies did not have the same function as handbags, which were considered to be fashion articles, or as wallets, purses and belts, and therefore were not “of the same kind.” Justice Finkelstein further considered whether Colorado was entitled to claim proprietorship of the trade mark COLORADO in relation to wallets and purses. He held that Colorado was not the owner of the mark in relation to such goods, as Strandbags’ 21. Id. at 636. 22. Id. at 637. 23. Id. at 638. 24. Id. at 636. 328 Vol. 97 TMR predecessor was found to be the owner of the mark for wallets and purses, as well as handbags, based on its first use of the mark. The judge commented that, even had he decided that Strandbags’ predecessor was not the first user of the COLORADO trade mark on wallets and purses, he would still have found that Strandbags was the owner of the mark in relation to those goods. This was because, as he had concluded, wallets and purses were goods “of the same kind” as the handbags for which Strandbags had an unambiguous claim for proprietorship, since “both are intended as fashion items and are used to carry small, everyday items such as money, credit cards, keys and like objects.” Whilst handbags might be larger than both wallets and purses, it was “often very difficult to tell the difference between what is a purse and what is a handbag.”25 The decision is a useful reminder that proprietorship extends not only to goods on which a trade mark is first used but also to goods that are “of the same kind” as those goods. Also, it is important to remember that proprietorship can arise in separate elements of one trade mark, provided those separate elements function independently from each other as a trade mark. I.B.20. Color Cadbury Schweppes Pty Ltd (Cadbury) applied to register the colour purple as a trade mark in respect of chocolate. The trade mark was defined as the colour purple, as depicted in the representations attached to the application form, used as the substantial colour of packaging in relation to the nominated goods. During examination, Cadbury sought to make various amendments to the trade mark. In relation to those amendments, the Registrar concluded that any uncertainty regarding the definition of the trade mark could be resolved by allowing Cadbury to amend the application to the single colour purple, in respect of which registration was initially sought. Following acceptance of the trade mark, Darrell Lea Chocolate Shops Pty Ltd (the “Opponent”) opposed registration of the mark. The matter proceeded to a hearing before the delegate of the Registrar of Trade Marks.26 The Opponent contended that the use of purple in relation to chocolate was descriptive and denoted something special, rich, or classy about the products. On that basis, the Opponent argued that the colour should be freely available for use by all trade 25. Colorado Group Ltd v. Strandbags Group Pty Ltd (No. 2), (2006) 69 IPR 281, 288 (F.C.A., July 7, 2006) (Finkelstein, J.). 26. Darrell Lea Chocolate Shops Pty Ltd v. Cadbury Schweppes Pty Ltd, (2006) 69 IPR 386 (April 27, 2006). See also III.B. Unfair Competition. Vol. 97 TMR 329 competitors. In essence, the Opponent claimed that the colour purple was generic in relation to chocolate. While the parties agreed that the colour purple lacked any inherent capacity to distinguish the goods, Cadbury had used purple in Australia as the predominant colour on its block plain milk chocolate and boxed milk chocolates since at least 1929. In 1994, it commenced a rebranding and relaunch program in which the colour purple was emphasized. A further development, sometime in 1999, was Cadbury’s “wall of purple,” whereby the colour purple was given further prominence in the packaging of the company’s products in Australia. As a result of these activities, the Registrar’s delegate was satisfied that, at the date of filing of the trade mark application (i.e., November 25, 1998), most Australians who buy chocolate would have instantly recognised the colour purple as indicating Cadbury’s block milk chocolate and boxed trays of milk chocolates without reference to any other trade mark that might have appeared on the packaging. This assessment led the delegate to conclude that the trade mark as applied for was capable of distinguishing Cadbury’s moulded block milk chocolate and boxed trays of milk chocolates. The delegate’s determination of distinctiveness applied only to a limited range of chocolate products and not to the much broader range of chocolate specified in the application. On that basis, the trade mark could proceed to registration only if Cadbury agreed to restrict the goods covered by its application to block chocolate and boxed chocolates. The Registrar’s delegate made it clear in his decision that unless Cadbury amended its trade mark application accordingly, the application would be refused in its entirety. The full court of the Federal Court of Australia (the “Full Court”) declined to register two trade marks for the colour green sought to be registered by BP plc (BP).27 The first application consisted of a square swatch of green with a description indicating that the mark was for the colour green as shown on the swatch. The second application was for the picture of a service station showing the colour green applied to the exterior surfaces of the premises, with a description confirming the same. Woolworths Limited (Woolworths) challenged whether BP had used its marks such that they had acquired distinctive character before the date of filing of the trade mark applications. In determining whether the two marks had acquired a distinctive character before their date of filing, the Full Court approached the matter by asking two separate questions. The first was whether the use of the colour (the subject of the trade mark application) in 27. Woolworths Ltd v. BP plc (No. 2), (2006) 70 IPR 25 (F.C.A., September 4, 2006) (Heerey, Allsop & Young, JJ.). See also III.H.1. Amendments to Marks. 330 Vol. 97 TMR the manner described in each application constituted use of the mark as a trade mark, which underpins the operation of the Trade Marks Act 1995. The second was whether the colour used in relation to the goods and services specified in the applications did in fact distinguish the applicant’s goods and services at the dates of filing of the respective applications. In considering these issues, the judges held that, in assessing the evidence, only that use which conformed with the applications before the filing date was relevant. It was also necessary to consider whether the use was sufficient to distinguish the goods and services as being those of BP. If the evidence did not show this, the applications had to be rejected. The judges were critical of the decision of Justice Finkelstein at first instance in the Federal Court in directing his attention to the get-up applied to service stations by BP rather than, by reference, to the use of the marks in question. The judges of the Full Court took the view that much of the use relied on in the evidence did not correspond with the trade mark as described in the trade mark applications. The Full Court found that the changes introduced by BP in 1989 resulted in the colour green’s predominating in the colour scheme of the service station. However, the colour green was at all times used with the colour yellow as its subsidiary, but everpresent companion. BP’s advertising (which stressed the colour green) was found to be inadequate to establish the requisite degree of distinctiveness, for similar reasons. Taking into account all the evidence, the Full Court was unable to conclude that the trade mark use of the colour green at the relevant dates was as anything other than as a dominant colour, with yellow as the subsidiary colour. BP’s evidence in the trial before Justice Finkelstein also included an extensive survey in which the public was canvassed for its views on a picture comprising a generic service station with predominantly green features. The Full Court confirmed that the survey was professionally and competently conducted. In particular, the results of the survey showed that some 85 percent of people associated the colour green as applied to a picture of a service station with the BP brand. Although this very high association between the colour green and BP’s service stations was obvious, the judges held that this result did not lead to a conclusion that green alone, or green used predominantly, actually distinguished BP’s goods and services. The survey was found to show only that consumers would associate the colour green with BP, and nothing more. The reliability of the survey evidence was, in the view of the judges, also questionable, on the basis that the survey evidence needed to show use of the trade mark applications before the filing Vol. 97 TMR 331 date. The survey evidence was further challenged on the basis that the survey was designed to assess whether green alone operated to distinguish the goods and services of the applications. In allowing Woolworths’ appeal, the Full Court held that BP had failed to establish that the trade marks were capable of distinguishing BP’s goods and services. BP subsequently lodged an application with the High Court of Australia seeking special leave to appeal against the decision of the Full Court. III.B. Unfair Competition Cadbury Schweppes Pty Ltd (Cadbury) brought proceedings in the Federal Court28 against Darrell Lea Chocolate Shops Pty Ltd (Darrell Lea), alleging contravention of the Trade Practices Act 1974 (Cth) and passing off by reason of Darrell Lea’s use in its chocolate confectionery business of a shade of purple in which Cadbury claimed it had a “substantial, exclusive and valuable reputation and goodwill.”29 The case proceeded to trial during March-April 2006 before Justice Heerey. Between 2000 and 2004, Darrell Lea had used purple in a shade similar to that used by Cadbury, in various product categories, including self-consumption chocolate, gift lines, and Christmas products, and on specific products, including chocolate boxes, sticky labels, cartons of chocolate, bonbons, and point-ofsale material. Whilst the Trade Practices Act provides wider protection than just against passing off, there is considerable overlap between the actions, and no distinction was made between the causes of action in this case.30 The questions on which the court made its determination, therefore, were: 1. Does Cadbury have a reputation in a particular shade of purple that is being used by Darrell Lea? 2. Has Darrell Lea, by its use of a purple colouring in connection with the marketing of its chocolate products, represented to consumers that: (a) Its products were offered for sale with the license, sponsorship, and approval of Cadbury or enjoyed a connection or affiliation with Cadbury? 28. Cadbury Schweppes Pty Ltd v. Darrell Lea Chocolate Shops Pty Ltd (No. 4), 69 IPR 23 (F.C.A., April 27, 2006) (Heerey, J.). See also I.B.20. Color. 29. Id. at 24. 30. Id. at 43. 332 Vol. 97 TMR (b) It had entered into an association or arrangement with Cadbury or obtained the endorsement of Cadbury?31 Cadbury was required to establish that the shade of its purple colour mark, in isolation, distinguished its goods from those of its competitors. The court found that consumers were aware that Cadbury used purple, but not that they were aware it was Cadbury if purple was used in isolation. In this connection, Darrell Lea demonstrated that a number of other manufacturers had used purple on chocolate products. Approximately 30 examples were cited.32 Also, on December 9, 2005, Cadbury had entered into an agreement with Nestlé in which Cadbury agreed not to object to Nestlé’s use of Violet Crumble, Wonka, and other Nestlé products packaged in purple.33 The evidence established that when the colour purple was used by Cadbury it was always with the name Cadbury, and that consumers perceived that the name Cadbury and the colour purple were inextricably intertwined, with each one reinforcing the other and creating a total impact more than the sum of the parts. In assessing the survey evidence relied upon by Cadbury, Justice Heerey raised several criticisms. Whilst satisfied that the survey was professionally conducted, the judge noted that (1) the survey was confined to the Melbourne metropolitan area; (2) it appeared to have an overweighting of female participants; (3) no children under 18 were involved; and (4) the test itself was conducted in a rather clinical environment, unlike the setting in which actual consumer purchasing decisions are made.34 For these reasons the survey results did not assist Cadbury’s claims. In his conclusion, Justice Heerey found that Cadbury and Darrell Lea were competitors in the retail chocolate market, but that each had distinctive product lines that were sold from different types of premises under distinctive trade names. They had distinct identities in the marketplace. Cadbury did not own the colour purple and did not have an exclusive reputation in purple in connection with chocolate. Darrell Lea was entitled to use purple, or any other colour, as long as it did not convey to the reasonable consumer the idea that it or its products had some connection with Cadbury. The judge was not satisfied that any such misleading of consumers had occurred or was likely to occur. Consequently, the claims made by Cadbury were dismissed. 31. Id. at 25. 32. Id. at 32-33. 33. Id. at 33. 34. Id. at 37. Vol. 97 TMR 333 III.H.1. Amendments to Marks In Woolworths Ltd v. BP plc (No. 2),35 the full court of the Federal Court of Australia (the “Full Court”) refused two trade marks applied for by BP plc (BP) to register the colour green for “fuel (including petrol)” falling within International Class 4 and a range of services offered by service stations falling within Classes 37 and 42. The first application as filed was endorsed in the following terms: The trade mark is limited to the colour green as shown in the representation attached to the application form. During examination, this description of the trade mark was amended to read as follows: The trade mark consists of the colour green as shown in the representation on the application as applied to a significant proportion of the exterior surface of the buildings, canopies, pole signs and other component parts of service stations used for the sale of the goods and the supply of the services covered by the registration. [Emphasis added.] Subsequently this description was further amended to read: The trade mark consists of the colour GREEN as shown in the representation on the application applied as the predominant colour to the fascias of buildings, petrol pumps, signage boards—including poster boards, pole signs and price boards— and spreaders, all used in service station complexes for sale of the goods and supply of the services covered by the registration. [Emphasis added.] The second BP application, relating only to services within Class 42, was similarly amended. The trade mark consisted of a sketch of a service station with a convenience store and car wash in the background. BP’s two applications were successfully opposed before the Registrar of Trade Marks by Woolworths Limited (Woolworths) on the basis that the marks lacked the capacity to distinguish. BP appealed the Registrar’s decision. In the initial appeal proceedings before the Federal Court, Woolworths unsuccessfully contended that the amendments to the trade marks were not permissible under the relevant section of the Trade Marks Act of 1995 (the “Act”). Pursuant to orders made by the Federal Court, both of BP’s trade mark applications proceeded to registration. Woolworths appealed. 35. (2006) 70 IPR 25 (F.C.A., September 4, 2006) (Heerey, Allsop & Young, JJ.). See also I.B.20. Color. 334 Vol. 97 TMR Before the Full Court, Woolworths argued that the amendments to the definitions of the trade marks substantially affected the identity of the marks and broadened the ambit of the registrations, contrary to the relevant section of the Act. In considering whether the amendments to the descriptions of BP’s first trade mark substantially affected the identity of the mark, the Full Court found that the first amendment changed the identity of the mark from the colour green as applied to the goods and services of the application to the colour green as applied to a significant proportion of the exterior surfaces of a service station. Moreover, the second amendment introduced the notion of the colour green as being the predominant colour of the trade mark applied to service stations and other equipment used in service stations. Both amendments were held to be in contravention of the Act. In assessing whether the amendments expanded the scope of the application, the Full Court held that the first amendment narrowed the scope of the application from the colour green to the colour green as applied to a significant proportion of the exterior surfaces of a service station. However, the second amendment was held to expand the scope of the registration, as the colour green would no longer be applied as the only colour on the surfaces of a service station, but rather as the predominant colour, implying that one or more other colours would also be applied. In relation to the second BP trade mark, the Full Court found that the first amendment did not offend the relevant section of the Act, on the basis that the diagram already showed the colour green only on a significant proportion of the representation of the service station. However, the second amendment to the endorsement was held to be in contravention of the Act, as it provided that the colour green could be applied along with other colours provided green was the predominant colour. The Full Court therefore concluded that the amendments to the trade marks that BP sought to make were not allowable. AUSTRIA I.B.1. Generic Names The marks ENAPRIL CO 1A PHARMA and CO-ENAPRIL 1A PHARMA, for pharmaceuticals, were denied registration by the Appeal Division of the Austrian Patent Office. The appellate tribunal held that Enapril had been recognized by the World Health Organization as an International Nonproprietary Name and was therefore unregistrable. CO merely indicated that other Vol. 97 TMR 335 substances besides Enapril were included, and 1A PHARMA was perceived only as an advertisement.36 I.B.7.b. Three-Dimensional Marks A three-dimensional international trademark for confectionery, etc., characterized by shape (basically oval) and color (light brown), was denied protection in Austria for lack of distinctiveness. The Austrian Patent Office’s Appeal Division noted that, particularly with respect to sweets, such as candies or confectionery, the trades involved had been used to round or rounded shapes for a long time, as that form was the most practical one for consumption of the products (e.g., by licking). The claimed color “light brown (caramel)” was even less capable of establishing distinctiveness, as light-brown colors are common food colorings for sweets and in most cases prompt conclusions regarding certain ingredients, such as a high percentage of milk (or substances made from milk).37 A three-dimensional international trademark, consisting of a tubular container with printed colored lenses that was used for storing chocolate dragees (the lenses were shaped like the dragees marketed under the well-known name SMARTIES), was granted protection in Austria by the Administrative Court.38 Afterward, a cancellation proceeding concerning the trademark, which had been suspended until the court’s decision was handed down, was finally completed. The request for a declaration of invalidity of the trademark for Austria was denied by the Nullity Division of the Austrian Patent Office and then by the Supreme Patent and Trademark Board. It was held that the characteristic imprint allegorizing colored dragees and creating an illusion of hovering transcended a mere illustration of the goods and would therefore be remembered by the public. The particular arrangement of the dragees was not an accurate reproduction of the product. Rather, it stimulated the fantasy of the beholder and, in combination with the container, created a distinctive impression.39 36. Austrian Patent Office (Appeal Division), December 27, 2004, Bm 19/2003 and 20/2003—Pbl 2005, 119. 37. Austrian Patent Office (Appeal Division), May 4, 2004, Bm 7/2003 (IR 1062/99)— Pbl 2006, 5. 38. See 95 TMR 286 (2005). 39. Supreme Patent and Trademark Board, October 12, 2005, Om 7/05 (Nm 153/1995)—Pbl 2006, 12. 336 Vol. 97 TMR I.B.22. Distinctiveness The mark SIE & WIR (“YOU & WE”), to cover various insurance services, was denied registration on the ground that, by virtue of its meaning, it would be perceived mainly as an advertising slogan and not as a trademark. A mark that serves purposes other than a trademark can be distinctive only if it can be easily recognized as a reference to the commercial origin of the goods or services in question, so that the relevant trades are able to distinguish the trademark owner’s goods or services from those of other vendors without any risk of confusion.40 The word mark STUDIENKREIS (“STUDY CIRCLE”), covering, among other things, electronic devices, teaching material, and courses, was denied registration. Taking into account the usage of the trades concerned, the Appeal Division of the Austrian Patent Office held that the meaning of the word Studienkreis was instantly comprehensible. Consequently, the term STUDIENKREIS on its own—that is, without additional elements specifying its origin (i.e., its ownership or place of establishment)—would be perceived by the relevant trades merely as a hint at a certain organizational structure and not as a trademark. The public interest in using the term unimpededly for commercial purposes also had to be taken into consideration. Accordingly, the Appeal Division acknowledged the need to keep the term STUDIENKREIS free for use by the trades concerned, specifically for the claimed goods and services.41 II. Procedural Matters During proceedings in which the owner of the trademark IMMOMAXX was seeking an interim injunction against several respondents prohibiting them from using the mark for real estate services, one of the respondents, a stock corporation, was cancelled from the register of companies. With respect to this party the interim injunction was annulled by the Supreme Court, which held that a request for injunctive relief or a security pledge may be granted only if a danger of recurrence still exists at the time the proceedings are closed.42 Generally, the danger of recurrence ceases once an enterprise is sold or closed. If a stock corporation, as a respondent, is cancelled during the proceedings, the proceedings may be 40. Austrian Patent Office (Appeal Division), December 19, 2003, Bm 27/03—Pbl 2005, 44. 41. Austrian Patent Office (Appeal Division), February 24, 2004, Bm 49/2003—Pbl 2005, 52. 42. Supreme Court, March 14, 2005, 4 Ob 281/04h—ÖBl 2005, 176. Vol. 97 TMR 337 continued upon the request of the claimant; however, if the claimant is not interested in continuing the proceedings against the cancelled corporation, the action has to be rejected and the existing proceedings have to be declared invalid. II.D.1. Jurisdiction/Authority The owner of a three-dimensional Community trade mark (CTM) consisting of a chocolate Easter bunny wrapped in gold paper filed a cease and desist action, along with a request for grant of an interim injunction, against the producer of a slavish imitation of the product. In provisional proceedings, the claimant succeeded at all three instances: the Commercial Court of Vienna (the court of first instance for proceedings regarding CTMs); the Upper District Court of Vienna; and, in the third and final instance, the Supreme Court. The peculiarity of this case lies in the following circumstances, as pointed out by the Supreme Court. In infringement proceedings concerning domestic trademarks, decisions of the Patent Office in trademark application procedures are not binding on the courts; instead, the courts have to examine the existence of the trademark right independently, as a preliminary question. In infringement proceedings involving a CTM, however, the scope of examination of the legal validity of the mark is limited. As long as the defendant does not contest the CTM by filing a counterclaim demanding a declaration of invalidity or nullity, the courts have to assume that the mark is valid. Merely objecting based on lapse or invalidity of the CTM is allowable only if the defendant claims that the mark could be declared lapsed because of non-use or invalid on the basis of a senior trademark right of the defendant. As the filing of a counterclaim is not possible in provisional proceedings, the defendant may contest the validity of the CTM only by arguing non-use or by claiming a senior right; the Community trade mark court may not examine ex officio the validity of a CTM.43 II.D.3. Improper Pleadings In a cancellation action, the respondent did not file a refutation within the given term, and therefore the trademark was cancelled by the Nullity Division of the Austrian Patent Office without further proceedings. The appeal against the decision was not awarded. The Supreme Patent and Trademark Board ruled that in appeal proceedings the tribunal may review only the rightfulness of the decision at first instance; it may not undertake a substantive examination. In this case, the Nullity Division could 43. Supreme Court, November 30, 2004, 4 Ob 239/04g—ÖBl 2005, 125 = GRUR Int. 2005, 945. 338 Vol. 97 TMR not even have undertaken a substantive examination, as the respondent did not file a refutation.44 III.A.2. Likelihood of Confusion The owner of the senior international trademark NESPRESSO was successful in its action for cancellation of the registration for the junior Austrian trademark WELLNESSPRESSO. Both marks had been registered for coffee in International Class 30. The Nullity Division took it for granted that the senior mark had already acquired distinctiveness at the time the application for registration of the junior mark was filed. The trademarks were deemed similar, as the junior mark differed only by the addition of the word WELL as a prefix and therefore was perceived as a spinoff. Based on the identity of the registered goods, the similarity of the marks, and the high degree of distinctiveness of the senior trademark NESPRESSO, the Nullity Division ordered the cancellation of the junior trademark WELLNESSPRESSO.45 III.A.2.b. Similarity of Marks Based on likelihood of confusion with the senior trademark BABIX, the junior trademark BASIX PLUS, likewise registered for pharmaceuticals, was cancelled by the Supreme Patent and Trademark Board. The Board held that the word PLUS was only a conventional appendix and that the word elements BASIX and BABIX were similar both visually and aurally. The difference between the latter—the letter S instead of the letter B in the middle of the word—was not judged to be significant, as the decisive factors— beginning, ending, and word length—were the same.46 Upon request of the owner of the senior trademark NEURONTIN, for pharmaceuticals, the junior trademark NEUROCIN, also for pharmaceuticals, was cancelled by the Nullity Division of the Austrian Patent Office. The appeal against this decision was not awarded. The Supreme Patent and Trademark Board affirmed that there was a likelihood of confusion of the marks based on their identical first syllable NEURO and the 44. Supreme Patent and Trademark Board, October 12, 2005, Om 4/05 (Nm 59/2003)— Pbl 2006, 19. 45. Austrian Patent Office (Nullity Division), October 21, 2004, Nm 198/2003—Pbl 2006, 26. 46. Supreme Patent and Trademark Board, June 23, 2004, Om 6/04 (Nm 177/2000)— Pbl 2005, 42. Vol. 97 TMR 339 fact that the difference in the other consonants—NT and C, respectively—was secondary to the following vowel I.47 Based on the seniority of the word mark ALLERGAN, registered for, among other things, pharmaceuticals (Class 5), the junior word mark ALLERGIN was cancelled for pharmaceuticals. Concurring with the Nullity Division, the Supreme Patent and Trademark Board ruled that the difference in the next-to-last letter affected only the sound, not the visual impression, of the mark. In addition, the prevailing jurisprudence emphasized that suffixes such as -AN or -IN were very common in names of pharmaceuticals, and therefore were not perceived by the public as distinctive.48 The owner of the senior trademark ZORR, for tobaccos and gas lighters, filed a cease and desist action, as well as a request for grant of an interim injunction for protection of that claim, against the distributor of gas lighters using the junior trademark ZORRO (which included the image of a cavalier wearing a cloak and sword). Despite the plaintiff’s alleged publicity of the ZORR trademark, the courts of first and second instance denied a priori any likelihood of confusion, ruling that the fictional hero Zorro and his attributes were so popular that the distinctive meaning of the ZORRO trademark ruled out any confusion. The first and second instance decisions were overruled by the Austrian Supreme Court. It held that the literal sense of the mark at issue is but one of the elements that must be considered when judging likelihood of confusion. Above all, the distinctiveness of the trademark against which a claim of infringement has been lodged must be taken into account. Even if the complaining mark is a well-known term, the more distinctive that mark is, the more likely the risk of confusion will be. As an examination of the distinctiveness of the ZORR trademark on the basis of the mark’s publicity had not been made, the Supreme Court remanded the case to the court of first instance for further examination.49 III.A.11.a. No Similarity of Marks The famous haute couture enterprise Cerutti is the owner of numerous International Registrations for its trademarks. The marks, which are also protected in Austria, are registered for 47. Supreme Patent and Trademark Board, February 9, 2005, Om 18/04 (Nm 17/2001)—Pbl 2005, 124. 48. Supreme Patent and Trademark Board, February 9, 2005, Om 16/04 (Nm 92/2001)—Pbl 2006, 15. 49. Supreme Court, April 26, 2005, 4 Ob 25/05p—ÖBl 2005, 270. 340 Vol. 97 TMR jewelry, goods made of leather, and clothes; most of them include, among other things, a capital C containing two letters R in mirror image. Cerutti filed a cancellation action against a junior Austrian word and device mark, registered for leather goods and clothes, that consisted predominantly of a logo looking like the mirrorimaged letters R and that included the words Kaiser (“emperor”) and Ritter (“knight”). The Nullity Division of the Austrian Patent Office affirmed that there was a likelihood of confusion, holding that the mirror-imaged letters R were distinctive for the Cerutti trademarks. The owner of the junior trademark appealed the decision. The Supreme Patent and Trademark Board held that, visually, the junior trademark differed greatly from the senior trademarks. It noted in particular that the words Kaiser and Ritter were set in a different typeface. Likewise, the Board found no similarity between the marks in sound or meaning. Accordingly, the Supreme Patent and Trademark Board ruled that there was no likelihood of confusion because, when considered as a whole, the opposing marks were sufficiently different, even if one assumed that the junior trademark incorporated the design idea of the two mirrored letters.50 III.A.12. Distinctiveness A consulting company using the trade name GFB & Partner brought an action to prevent the use of the letter combination GfB by a younger consulting firm. The plaintiff finally was successful at the third instance. In accordance with the European Trademarks Directive,51 the Supreme Court departed from its previous holding and ruled that combinations of letters can have distinctiveness and therefore are not subject to a general abstract requirement that they be kept free for use by the trades concerned. Rather, they have to be examined individually, to determine whether they have acquired distinctiveness with respect to particular goods and services. In the case at hand, the distinctiveness of the combination of letters GFB was acknowledged and the mark Gfb was deemed to be confusingly similar.52 A manufacturer of glasses had been distributing a high-priced set of wine glasses under the unregistered label VINUM since 50. Supreme Patent and Trademark Board, January 12, 2005, Om 14/04 (Nm 117/2002)—Pbl 2005, 80. 51. First Council Directive 89/104/EEC of December 21, 1988, to approximate the laws of Member States relating to trade marks. 52. Supreme Court, April 5, 2005, 4 Ob 278/04t—ÖBl 2005, 267. Vol. 97 TMR 341 1986. Based on a 2001 market survey of dealers in “up-market vitrics” and “upscale gastronomy,” respectively, the term clearly had acquired distinctiveness for the benefit of the manufacturer. In 1999, a competitor introduced a set of wine glasses in a comparable price range under the label VINUM. Another market survey, undertaken among the total Austrian population older than 14 years of age, resulted in a recognition level for the term VINUM of only a few percentage points; however, the term was commonly associated with the manufacturer of the older set. The senior manufacturer brought suit against the competitor for infringement of its mark. The question in this case was how to determine the relevant trades. In a landmark decision, the Austrian Supreme Court held that, in determining the acquired distinctiveness of a mark used in connection with goods of high quality and high price—as opposed to goods for everyday use and mass consumption—usually not all dealers and consumers were relevant, but only those who were potential purchasers of competing products of comparable price and quality. Therefore, a small number of people could establish the relevant sectors concerned for high-priced products. Accordingly, the senior manufacturer prevailed.53 III.A.15. Deceptive Use The defendant, a firm that bottled gaseous carbonic acid used, among other things, bottles of an established company without removing the company’s trademarks (SODA-CLUB, SODA STREAM, etc.). In provisional proceedings for trademark infringement, the defendant was ordered at all three instances to refrain from this practice. The filling by the defendant of its goods into a package branded with the trademark of a third party established use of the mark; the right of the trademark owner was not depleted simply because an altered product, rather than the original product, was distributed. In its decision, the Supreme Court emphasized that attaching a mark to a package of goods constitutes use of the mark, even if this form of use is not specifically mentioned in the Austrian Trademark Act. The Act’s list of possible types of use of a mark was provided only for the purpose of example and was not intended to be inclusive.54 During cancellation proceedings based on non-use of various SACHER trademarks, the plaintiff claimed, among other things, that the marks were deceptive for all goods not made of dough of the world-famous pastry Sachertorte (“Sacher cake”). The Supreme 53. Supreme Court, October 19, 2005, 4 Ob 190/04a—ÖBl 2005, 119. 54. Supreme Court, September 28, 2004, 4Ob 167/04v—ÖBl 2005, 76. 342 Vol. 97 TMR Patent and Trademark Board, however, denied that a likelihood of consumer confusion existed. The Board held that even if the SACHER mark were perceived as a synonym for a particular type of cake, that would not lead one to the conclude that use of the same trademark in connection with other bakery and confectionary goods inevitably indicated that those goods were made from the same dough as a Sacher cake. Insofar as the mark was used for the branding of goods other than cakes, it would be perceived as an indication of origin and not as a hint at the composition of the product.55 III.A.17. Descriptive Use Upon request of a third party, the trademark AQUA PANNONIA, for nonalcoholic beverages, was cancelled on grounds of descriptiveness. AQUA is the widely known Latin word for water, and PANNONIA was the name of a Roman province (the term is still used as a synonym for the Austrian federal state of Burgenland). Therefore, the expression AQUA PANNONIA would be comprehended easily and directly as referring to water (and other nonalcoholic beverages) from the Pannonian region.56 III.B. Unfair Competition The owner of the trademark AUSTRICA & Device, for medical services, took action against the domain name www.austrica.at, of senior priority and in use for a longer time. The trademark owner claimed that he had created the logo used by the owner of the domain name, which included the word AUSTRICA, prior to the assignment of the domain name—that is, that he had a claim to injunctive relief under the Copyright Act. During provisional proceedings, the request for injunctive relief was rejected by the courts of first and second instance as well as by the Austrian Supreme Court. The Supreme Court held that the use of only one component of a graphic design, particularly, as in this case, the word AUSTRICA, could not constitute an infringement of the copyright of the design as a whole. Therefore, the question of whether the logo as such could be regarded as a design was not relevant.57 55. Supreme Patent and Trademark Board, April 13, 2005, Om 15/04 (Nm 116118/1999)—Pbl 2005, 83. 56. Supreme Patent- and Trademark Board, January 12, 2005, Om 13/04 (Nm 100/2001)—Pbl 2005, 64. 57. Supreme Court, February 8, 2005, 4 Ob 280/04m—ÖBl 2005, 266. Vol. 97 TMR 343 III.B.1. Passing Off The Alpenländischer Kreditorenschutzverband (“Vendors Association for the Alpine Region,” abbreviated AKV) is a longstanding and well-known Austrian vendors association. AKV filed a cease and desist action and a request for an interim injunction against the owner of a word and device mark whose most significant feature was the abbreviation AKV, the mark’s other components (logo, firm’s name, color) being of secondary importance. The mark was registered for financial services, money transactions, insurance, and real estate services (International Class 36) and was used particularly in connection with the procurement of various loans. In provisional proceedings, the claimant was successful only at the third and final instance. The Supreme Court ruled that the protection of a keyword as a corporate mark under the competition law extended to abbreviations of an association’s name. It assumed that the business of a vendors association and that of an investment consultant or investment broker were not sufficiently different to preclude the possibility that the trades concerned could be misled to believe that the parties were connected either organizationally or economically. As the degree of similarity of the respective services was compensated for by a higher degree of similarity of the marks, the Supreme Court acknowledged that there was a risk of confusion in a broader sense, and consequently it granted the interim injunction.58 The managers of Sport Vital Hotel Therme Loipersdorf, a hotel in Austria’s thermal spring region, finally were successful in an action to prevent the use of the name Thermensuitenhotel Vital Resort Loipersdorf by a competing younger establishment from the same region. The interim injunction ordering the defendant to cease and desist from the use of such name was issued by the Supreme Court only in the second course of law. Of critical importance in this case was whether the word “Vital” in the name of the older establishment had acquired distinctiveness, because the claimants’ hotel was known as “Vital Hotel” only among customers, contractors, and locals in the region. Previously, the Court had held that for a mark to be protected under the competition law, it was sufficient that the mark be perceived, at least by a significant portion of the target group, as hinting at a specific enterprise. In contrast to the Trademark Act, which demands that a well-known mark be known to a “significant portion of the public,” the competition law does not require that the mark exhibit “outstanding” distinctiveness. 58. Supreme Court, September 28, 2004, 4 Ob 169/04p—ÖBl 2005, 116. 344 Vol. 97 TMR As the word “Vital” in the older establishment’s name was found to have acquired distinctiveness, at least in the thermal spring region, the Supreme Court acknowledged the existence of risk of confusion and granted the requested injunction.59 III.F. Loss of Trademark Rights The manufacturer of games (including games stored on data carrier) and toys (International Classes 9, 16, and 28), particularly playing card games, that are distributed under the trademark MEMORY, which is well known throughout Europe, filed a cease and desist action against the owner of a domain name that was offering virtual playing card games for free on its website under the label “Memory.” The defendant argued that online games were not protected by the trademark MEMORY because they were part of the service “entertainment” (Class 41). It contended, moreover, that the mark had evolved into a generic term. The domain name owner was defeated in provisional proceedings at all three instances. Besides acknowledging the similarity or identity of the covered goods and services, the Supreme Court held that the defendant did not prove that the trademark had evolved into a generic term. With regard to the loss of rights in a trademark as a result of such evolution, the Supreme Court, in a groundbreaking decision, remarked that since, for the most part, precious and famous marks are in danger of evolving into generic terms, whether a mark has undergone that change must be determined using a strict standard. Therefore, the Supreme Court held, maintenance of a trademark right does not require that alternative terms to the trademark that are in use in common speech be equivalent in every respect, particularly as regards to their circulation.60 III.L. Opposition/Cancellation Procedure In 1998, a cancellation action, based on non-use, against the trademark SENZA PIOMBO, covering Italian clothes, was dismissed, as use within the five-year term before the filing of the cancellation action—specifically, until early 1996—was verified. In 2002, a new cancellation action, also based on non-use, was granted by the Nullity Division of the Austrian Patent Office, with the cancellation effective from 1997. The owner of the trademark did not appeal the cancellation as such but claimed that the cancellation should be effective as of 1998, the time of the first cancellation action. 59. Supreme Court, April 26, 2005, 4 Ob 12/05s—ÖBl 2005, 269. 60. Supreme Court, July 6, 2004, 4 Ob 128/04h—ÖBl 2005, 121. Vol. 97 TMR 345 The appeal was dismissed by the Supreme Patent and Trademark Board. The observation period of the earlier cancellation action was not relevant in deciding this case, because, according to the results of the closed earlier proceeding, the trademark had been in use through the end of 1995 and ultimately in 1996, but not in 1997.61 The owner of the international trademarks SWISS MARKET INDEX (SMI) and SMI, for banking and stock exchange services (International Classes 35, 38, and 41), filed a cancellation action against the junior Austrian trademark SMI, covering computers and software (Classes 9 and 42), based on the fame of the senior trademarks. The suit was dismissed by the Nullity Division on grounds of lack of similarity of goods and services. Meanwhile, the parties had reached an agreement in which the owner of the junior trademark agreed to a limitation of the list of goods and services, not only for the Austrian trademark but also for a corresponding international trademark. However, while the Austrian trademark was so limited by the liable party, the corresponding international trademark was not. The owner of the senior trademark appealed before the Supreme Patent and Trademark Board, requesting nullification of the first instance decision. The Board ruled that the Nullity Division failed to investigate the claimed class-overlapping protection based on the fame of the older trademarks. The defendant’s objection, that the applicant had no reason to appeal because an agreement had been reached, was dismissed, as the liable party failed to fulfill the agreement.62 The Nullity Division of the Austrian Patent Office deemed that the junior trademark STOLNAYA was confusingly similar to the senior trademark STOLICHNAYA & Device and ordered its cancellation from the trademark register. (Both marks were registered for vodka.) It held that the junior mark differed from the senior mark only by the omission of the syllable ICH and that both words were fancy names. (This assumption was incorrect, however, as both terms do have a distinctive meaning in the Russian language.) After filing an appeal against the decision, the owner of the STOLNAYA mark cancelled its trademark voluntarily and requested termination of the proceedings in order to obtain a cancellation ex nunc, as opposed to a cancellation ex tunc by virtue of the Nullity Division’s order. This action was successfully parried 61. Supreme Patent and Trademark Board, September 29, 2004, Om 7/04 (Nm 122/2002)—Pbl 2005, 59. 62. Supreme Patent and Trademark Board, January 12, 2005, Om 11/04 (Nm 20/2001)—Pbl 2005, 71. 346 Vol. 97 TMR by the owner of the trademark STOLICHNAYA, which claimed that it had a legitimate interest in the continuation of the proceedings as a result of pending proceedings in other countries. The Supreme Patent and Trademark Board rejected the appellant’s request and continued the appeal proceedings, ultimately upholding the decision of the Nullity Division and ordering cancellation of the trademark ex tunc.63 A trademark was cancelled by the Nullity Division upon request of a third party. When the decision was appealed by the trademark owner, the third party withdrew its cancellation action before the oral proceeding and waived all claims. The withdrawal was accepted by the Supreme Patent and Trademark Board, which applied the corresponding civil law provisions (i.e., the decision of the Nullity Division was declared invalid).64 A claimant filed a cancellation action against a trademark after the owner did not keep its promise to cancel the mark voluntarily. After the filing of the action but before the service of the papers, the owner filed a request for voluntary cancellation of its trademark. Thereupon, the Nullity Division closed the proceedings; however, it refunded only half of the proceeding costs. The claimant successfully appealed to the Supreme Patent and Trademark Board, which ordered complete remuneration of the costs. As the nullity proceedings were initiated by the filing of the cancellation action, the trademark was cancelled voluntarily only after the action was filed, and the trademark owner gave reasons for filing the action.65 V.A. Domain Names An IT enterprise using the trade name OMEGA restrained a competitor from using the component “omega” as a second-level domain (www.omega.at) and demanded the assignment to it of the domain name. In a groundbreaking decision, the Supreme Court denied the plaintiff’s demand for assignment. The Supreme Court determined that there was no provision governing domain name transfers in either Austrian trademark law or competition law. Therefore, it ruled, an owner that is impaired in its trademark right by a domain name of a third party does not have grounds for 63. Supreme Patent and Trademark Board, January 12, 2005, Om 17/04 (Nm 182/2001)—Pbl 2005, 57. 64. Supreme Patent and Trademark Board, April 13, 2005, Om 1/05 (Nm 124/2000)— Pbl 2005, 75. 65. Supreme Patent and Trademark Board, April 13, 2005, Om 3/05 (Nm 4/2004)—Pbl 2005, 109. Vol. 97 TMR 347 demanding the assignment to it of the domain name, even if the domain name contains a primary component of the owner’s mark. The Supreme Court left open, however, the question of whether such grounds for assignment may exist under certain circumstances.66 The rightful manufacturer of accurate replicas of interiors built between 1903 and 1932 by the Wiener Werkstätten (“Vienna Workshops”) succeeded in four consecutive proceedings against competitors. As a result, the competitors were prohibited from advertising their enterprises and distributing their products under the slogan “Wiener Werkstätten.” To avoid this prohibition, one of the Austrian defendants assigned its senior trademark WIENER WERKSTÄTTE, as well as its domain names wiener-werkstaetten.at and wienerwerkstaetten.co.at, to a German enterprise. Based on its senior rights, the new owner filed a cease and desist action against the junior domain name wiener-werkstaette.at (owned by the rightful manufacturer of the replicas). The new owner was denied an injunction. The Supreme Court ruled that the manufacturer was using the slogan “Wiener Werkstätte” as an accurate descriptive term. An exclusive right could be assumed only if the German enterprise were able to prove that the mark had acquired distinctiveness. Furthermore, the owner of a registered trademark is not entitled to prevent third parties from using indications regarding nature, composition, amount, purpose, value, geographical origin, or time of manufacture or other particulars of the goods concerned, as long as the information is provided in accordance with the proper customs of the trade. In this case, the manufacturer did not act dishonestly in any way, as it neither exploited nor damaged the adversary’s reputation and was not guilty of any exploitation of attention or of dilution.67 An enterprise that canned beverages (energy drinks, beers, etc.) under the trade name POWERFOODS filed a cease and desist action and a request for grant of an interim injunction against the use of the junior domain name www.powerfood.at by a distributor of food supplements. The courts of first and second instance denied the distinctiveness of the POWERFOODS trade name. The Supreme Court held that POWERFOODS was a new linguistic creation and that, despite its recognizable meaning, it was not merely descriptive of the business of the plaintiff. Both parties were distributing foods in the broadest sense of the term, 66. Supreme Court, February 8, 2005, 4 Ob 226/04w—ÖBl 2005, 178. 67. Supreme Court, February 8, 2005, 4 Ob 243/04w—ÖBl 2006, 31. 348 Vol. 97 TMR and the second-level domain “powerfood” (without the last letter “s”) was almost identical with the plaintiff’s trade name, whose distinctiveness the Court acknowledged. Accordingly, the Supreme Court granted the interim injunction.68 BENELUX III.A.2. Likelihood of Confusion The history of this case is a caution to the owners of new trademarks—and their trademark attorneys—not to think too lightly of previous registrations. In 2001, the foundation Stichting Vill’ABB, a children’s daycare organization, registered the trademark FAMILIA in respect of, inter alia, services in International Class 41. The foundation went bankrupt in April 2004. By the end of that year, ANWB B.V. (the Netherlands Automobile Association, which also has become a publishing house) started its use of FAMILIA as a family magazine, aimed at parents with children aged four to twelve. By mid-2005, Joseph A. M. Hendriks, the former director of the bankrupt foundation, objected to that use; later that year, Mr. Hendriks purchased the trademark registration for FAMILIA from the official receiver of the foundation. When ANWB refused to pay the amounts that he demanded for the continued use of the brand and refused to cease its use, Mr. Hendriks brought an action before the District Court of The Hague for trademark infringement. The Deed of Assignment between the foundation and Mr. Hendriks mentioned, among other things, that 50 percent of the amount to be obtained from ANWB within the framework of an agreement between the two parties, up to a maximum of €500,000, would be for the benefit of the foundation. This arrangement was not considered unethical. The Court also held that children’s daycare services were sufficiently similar to family magazines; therefore, it enjoined the defendant’s further use of the FAMILIA brand.69 This case contains another interesting element. The plaintiff’s mark was originally registered in the name of Stichting Vill’ABB. However, the official full name of the foundation was “Stichting Algemeen Beheer en Bestuur Kinderopvang, by abbreviation: Stichting Vill’ABB.” Under prevailing case law, a registration in the wrong name is considered invalid, and the Trademarks Registry refuses to correct anything else in the registrant’s name other than a clear typographical error. The defendant claimed that 68. Supreme Court, March 14, 2005, 4 Ob 277/04w—ÖBl 2005, 263. 69. Joseph A.M. Hendriks v. ANWB B.V., Case No. 254838/KG ZA 05-1509 (President, District Court of The Hague, January 31, 2006). Vol. 97 TMR 349 the registration for FAMILIA was invalid because the mark was registered in the wrong name. This argument was not accepted by the Court, as the abbreviated name Stichting Vill’ABB was also part of the official name of the foundation. III.A.1. Famous Marks The plaintiffs in this case organize an annual open-air dance festival in Spaarnwoude, near Amsterdam, that has become well known and has been well advertised over the years under the trademark DANCE VALLEY. The defendants organize a dance festival in the area of The Hague named INDIAN VALLEY, advertising it as “the Indian equivalent of the large Dance Valley [festival] in Spaarnwoude.” The Court reasoned that because the DANCE VALLEY mark had become well known, the defendants’ use of the INDIAN VALLEY mark infringed the plaintiffs’ trademark rights. Accordingly, it ordered the cessation of such use.70 Two decisions involving the famous ADIDAS stripes showed how almost identical fact patterns can lead to completely different outcomes. In the first case, tried before the President of the District Court of Amsterdam, the defendant, M.J.R. Retail N.V., sold articles of clothing featuring two identical stripes in a color that contrasted with the background.71 As is the case with Adidas’s clothing, the stripes were placed at the sides of the garments (i.e., along trouser legs and sleeves). Adidas filed as evidence a survey showing that 78 percent of the respondents who were shown pictures of M.J.R.’s clothing associated those items with Adidas’s products. Although the report was criticized by a professor of perception psychology and the defendant claimed that its stripes served only decorative purposes, the Court concluded that the defendant had infringed the plaintiff’s famous mark. Accordingly, it enjoined the defendant’s further use of the two-stripe design. In the second case, before the District Court of The Hague, the defendant was no less than another giant player in the sports clothes world, Nike.72 Nike showed that the two-stripe decoration had been used by third parties since 1900. The fact that Adidas’s three-stripe design had become a famous mark over the course of time did not, the Court held, prohibit others from using a two70. Dance Valley B.V. et al. v. Stichting Interculturele Ontmoetingsmanifestatie Milan et al., Case No. KG 05/953 (President, District Court of The Hague, July 29, 2005). 71. Adidas-Salomon AG v. M.J.R. Retail N.V., aka Scapa Sports, et al., Case No. 338718/KG 06-591 P (President, District Court of Amsterdam, June 8, 2006). 72. Adidas-Salomon AG v. Nike Europe Holding B.V. et al., Case No. 223817/HA ZA 042078 (District Court of The Hague, July 5, 2006). 350 Vol. 97 TMR stripe decoration. What did not help Adidas in this case is that Nike had also used its famous “swoosh” logo; that, reasoned the Court, would have immediately informed the consumer of the different origin of the products if any doubt had arisen in the first place. The expected result of these contradictory rulings is that socalled forum shopping will occur—that is, some litigants will attempt to get their case heard in the court thought most likely to provide a favorable judgment for them. As a result of this particular dispute, Adidas will try to have similar future matters tried by the Amsterdam court, while others will bring suit before the court in The Hague.73 III.A.2.b. Similarity of Marks The defendant, Reynolds Metals Company, held a Benelux trademark registration for TUB-ITS, covering household and kitchen containers in International Class 21. The plaintiff, Cofresco Frischhalterprodukte GmbH, argued that Reynolds’s mark infringed its well-known trademark TOPPITS, which had become a household name for all kinds of fresh-keeping and foodpackaging products, such as plastic foils, bags, and containers, and was registered in respect of, inter alia, goods in Classes 16 and 21. Reynolds’s mark was intended for use on small containers for keeping food fresh. These, the Court reasoned, were similar to Cofresco’s plastic fresh-keeping products. Accordingly, the Court held that the marks were confusingly similar. Reynolds cancelled its registration during trial and stated its intention not to use its mark, but it denied that it had infringed the TOPPITS mark. The Court therefore issued an injunction enjoining the further use by Reynolds of the TUB-ITS mark and ruled the registration void.74 III.A.10. Non-use of Trademark A new television station in The Netherlands adopted the name TIEN (“TEN”). TV 10 B.V., the owner of the trademark TV 10, sued for infringement of its trade name and trademark rights. Although originally intended for that purpose, TV 10 was never used as a name for a television station. It was used only as a trading style for a company that rented airtime. During the trial at the first instance, the defendant, Talpa TV B.V., claimed as a defense the invalidity of the plaintiff’s trademark registrations for TV 10. This claim could not be dealt 73. See also the commentary published in INTA Bulletin Vol. 61, No. 20, November 1, 2006. 74. Cofresco Frischhalterprodukte GmbH & Co. KG v. Reynolds Metals Co., Case No. 253403/HA ZA 05-3481 (District Court of The Hague, July 19, 2006). Vol. 97 TMR 351 with in summary proceedings, and had to be judged by the full court. Because the trademark had been out of regular use for longer than five years, the Court of Appeal of Amsterdam ruled that the registrations had become invalid and TV 10 could no longer rely on them. TV 10 claimed that it had “healed” its registrations by issuing a press announcement—only days after Talpa’s name TIEN had been made public—that it intended to open a television station under its name. This was denied by the Court, which held that the plaintiff had already been made aware of the defendant’s name at that time and could not show any relevant preparatory measures to open a television station by the name TV 10. In the end, that ruling did not help the defendant, as the Court of Appeal held that the use of the trading style TV 10, which was known to the relevant professional public, sufficed to enjoin the use of the trademark TIEN.75 Talpa now filed for summary proceedings. Before the President of the District Court of Amsterdam, it was successful in its claim that the earlier judgment against it did not bar it from using the cipher 10—always in conjunction with the TALPA trademark—for its television services as a suggested channel number. TV 10 was enjoined from taking enforcement measures against Talpa.76 As is proper in a sequel, all’s well that ends well. TV 10 filed for appeal; before that request was dealt with, however, the parties came to an agreement and TV 10 sold its name to Talpa. Dell Inc. is the owner of the famous trademark DELL (see below). In February 2000, Stephanus G. M. Tychon, the defendant in this case, obtained a Benelux registration for a trademark consisting of an E-logo (below, illustration at left). One month later, Dell applied for a Community trade mark (CTM) registration for its E-logo (below, illustration at right). 75. TV 10 B.V. v. Talpa TV B.V. et al., Case No. 1212/05 SKG (Court of Appeal of Amsterdam, October 27, 2005). 76. Case No. 343141/KG 06-944 SR (President, District Court of Amsterdam, May 31, 2006). 352 Vol. 97 TMR Mr. Tychon successfully opposed Dell’s CTM application on the basis of his Benelux registration. Dell appealed from that decision before the OHIM Board of Appeal. That appeal is still pending. In the case at issue, Dell filed, among other things, for cancellation of Mr. Tychon’s Benelux registration based on non-use of his E-logo mark during the five-year period following registration. Mr. Tychon failed to prove use of the mark but claimed that he had had no resources to build up sufficient use owing to his action against Dell. This argument failed, and the District Court of The Hague ruled Mr. Tychon’s registration lapsed and ordered its cancellation.77 III.A.11.a. No Similarity of Marks The President of the District Court of Utrecht had to consider whether the trademark RED ENERGY (see below), for an energy candy product, infringed the plaintiff’s rights in the trademark RED BULL, for an energy drink.78 The matter had its origin in Austria. There, Red Bull GmbH succeeded in enjoining the use by the Austrian Procter & Gamble Company of the RED ENERGY mark based on its local Austrian registration for the word RED. However, the Austrian court held that the marks RED BULL and RED ENERGY were dissimilar. The matter was brought before the President of the District Court of Utrecht by Red Bull, which also claimed rights from the Benelux part of an International (Madrid Agreement) Registration. Procter & Gamble claimed, inter alia, that as the matter had already been tried in Austria, under European Community rules the case was barred by res judicata and 77. Dell Inc. et al. v. Stephanus G.M. Tychon, Case No. 237866/HA ZA 05-658 (District Court of The Hague, April 19, 2006). 78. Red Bull GmbH v. Procter & Gamble Nederland B.V., Case No. 2098767 / KG ZA 06-259 (President, District Court of Utrecht, May 2, 2006), aff’d, Case No. 974/06 SKG (Court of Appeal of Amsterdam, November 16, 2006). Vol. 97 TMR 353 therefore could not again be tried in The Netherlands, and that as a consequence Red Bull’s action should be considered abuse of process.79 This, the Court reasoned, was not the case, as the defendant was a different legal entity—even though it belonged to the same group of companies as the Austrian defendant—and the grounds of the case were different: a CTM registration in the Austrian case and an International Registration covering Benelux in the case at issue. In the end, this did not help Red Bull, as the Court held that the RED ENERGY mark did not infringe the RED BULL mark. This case gives rise to the question whether it is wise to abandon a national registration whose seniority rights have been incorporated in the corresponding CTM registration. It suggests one reason why the owner might want to keep the original registrations in force: to enable the owner to have the similarity issue tried by another court if it fails in a claim based on the CTM registration. In the Pepsico case, however, such a strategy was held to be abuse of process.80 For many years, what is now styled WE Netherlands B.V. has run a chain of clothes shops for men and women, at first under the names HIJ (“HE”) and ZIJ (“SHE”) and then, after a restyling in 1999, as WE. In the past, the firm has been successful in persuading courts to enjoin many companies from using personal pronouns in respect of clothing and clothes shops. Hachette Filipacchi Presse S.A., the plaintiff in this case, is the owner of the trademark ELLE (“SHE”) (see below), which has become well known through its use as the name of a fashion magazine. Hachette intended to open clothes shops in The Netherlands, styled ELLE. It requested a statement from the District Court of Utrecht that such use would not contravene WE’s trademark and trade name rights; at the same time, Hachette asked the Court to cancel WE’s many related trademark registrations, such as ELLE & LUI (“SHE AND HE”), YOU & ME, HE, and HIS, for lack of use.81 79. Article 27(2) of Council Regulation (EC) No. 44/2001 provides that a case cannot be tried twice by different courts. 80. See infra page 355. 81. Hachette Filipacchi Presse S.A. v. WE Netherlands B.V., Case No. 160998/HA ZA 03-923 (District Court of Utrecht, May 24, 2006). 354 Vol. 97 TMR In reconvention, WE requested the Court to enjoin Hachette from using the trade name ELLE for clothes shops, arguing that such use would dilute its rights in the name WE. WE claimed that although the marks HIJ and ZIJ were no longer used, they still were well known to the public and therefore should still enjoy protection. The Court found that ELLE was already widely known to the public as a trademark for magazines and that the use of ELLE as a trading style would not make much difference because the public would not make a distinction between the trademark and the trade name, especially since the format of the mark would remain the same. Hachette had conducted a survey that showed that only 1 percent of the queried public would make a connection between the marks ELLE and ZIJ. This, the Court held, was insufficient to allow it to conclude that a risk of confusion existed. With regard to the request for cancellation, the Court considered that as there was no risk of confusion between the marks ELLE and ZIJ, Hachette no longer had an interest in obtaining cancellation of the corresponding registrations. However, such interest did, as a matter of course, exist in respect of the trademark registrations for ELLE and ELLE & LUI, which the Court subsequently ruled invalid. The Court seems to have rejected the applicability of Article 13.C of the Benelux Trademarks Law,82 which provides that the exclusive right to a mark reading in one of the languages of the Benelux countries extends as of law to its translation in any other of those languages. Under that rule, the marks should have been considered identical. The President of the District Court of The Hague ruled that the use by Coca-Cola Company of the trademark ÍPSEI for a soft drink did not infringe Pepsico’s rights in the trademark PEPSI.83 Interestingly, both parties had filed survey evidence, but the surveys showed completely contradictory results. The one submitted by Pepsico showed that 73 percent of the respondents thought of the word “Pepsi” or “Pepsi-Cola” when confronted with a card that had the word IPSEI printed on it (see below) and when presented with the following question: “This is the name of a soft drink. Could you tell me what you think of when you see this name?” 82. Amended into Article 2.20.4 of the Benelux Treaty for Intellectual Property (Trademarks and Designs), with effect from September 1, 2006. 83. Pepsico, Inc. et al. v. Coca-Cola Co. et al., Case No. 252225/KG 05/1311 (President, District Court of The Hague, December 6, 2005). Vol. 97 TMR 355 Coca-Cola’s survey was built up differently. People were shown a bottle of the ÍPSEI product (see below) and were told, “This conversation is about a non-alcoholic beverage. Will you please look at this picture. What do you think of when you see this picture?” Only 2 percent of the respondents in this survey mentioned the word PEPSI or PEPSI-COLA. The Court considered that in this case the registered trademark PEPSI had to be compared with the actual use of the ÍPSEI product. Pepsico’s survey, however, was based on a word in capital letters that resembled the format of the PEPSI brand. People would, Coca-Cola claimed, believe it to be a word game, of the sort that is frequently aired on television, and would interpret the question put before them as, “How many words can I form from IPSEI, and it [the answer] must be a soft drink.” It was no wonder, then, Coca-Cola argued, that most would come up with PEPSI. Criticism was also leveled at Coca-Cola’s survey, which, the Court asserted, should have included only the word ípsei in the special script as used on the product and not also the bottle, as that diverted attention from the word element. In the final analysis, however, the surveys helped neither party, as the Court held that the trademarks were sufficiently dissimilar and denied Pepsico its claims. Pepsico subsequently filed for summary proceedings before the President of the District Court of Utrecht. In Red Bull GmbH v. Procter & Gamble Nederland B.V., the plaintiff had relied solely upon its CTM registrations.84 Pepsico based its claim on its Benelux registration for the word mark PEPSI. This, the Court held, constituted abuse of process, as the matter was res judicata.85 84. See supra page 353. 85. Case No. 207939 / KG ZA 06-129 (President, District Court of Utrecht, March 16, 2006), aff’d, Case No. 745/06 SKG (Court of Appeal of Amsterdam, September 14, 2006). 356 Vol. 97 TMR III.A.19. Family of Marks In Baron Philippe de Rothschild v. Carrefour Belgium, N.V., the Belgian Supreme Court partially overturned an earlier ruling of the Court of Appeal of Brussels.86 The Court of Appeal had held that the plaintiff could not successfully oppose the use by the defendant of the trademarks DOMAINE DU MOUTON and ENCLAVE DU MOUTON for wines on the basis of its registration and use of (CHÂTEAU) MOUTON ROTHSCHILD, MOUTON CADET, and other marks, as the plaintiff had not used or registered the word MOUTON per se. This holding was reversed by the Supreme Court, which confirmed that a distinctive element of a composite trademark could be used in deciding an infringement case.87 III.C. Injunctions and Damages Given the enormous popularity of the world soccer championships, many companies try to cash in on the event. This was notably so in The Netherlands in connection with the 2006 World Cup match against Germany. The Dutch and the Germans have a special love-hate relationship when it comes to soccer, so a match between the two countries always draws much attention. In January 2006, a Belgian individual, Nicholas J. C. Tierie, registered the trademark NEDERHOSE in Benelux in respect of articles of clothing. He also developed orange-colored trousers simulating a pair of German Lederhose (leather pants). This product made a clever connection between the two countries, as color orange is closely identified with The Netherlands and is used in abundance during national sporting events. In February 2006, Mr. Tierie offered his product for sale to, among others, Grolsch, a Netherlands brewery, pointing out his registration. Grolsch stated that it was not interested. By the end of February 2006, Grolsch registered HOLLANDHOSE as a trademark for, inter alia, articles of clothing. In mid-March, Grolsch sent out flyers promoting an orange-colored Lederhose branded NEDERHOSE. Mr. Tierie brought suit for trademark infringement, with a demand for damages. Before the President of the District Court of Almelo, Grolsch claimed that its use of the NEDERHOSE brand was a simple mistake and that it had since changed its brand to HOLLANDHOSE. The Court, however, ordered Grolsch to send a correction letter to the almost 6,000 recipients of the flyer that 86. Case No. JB019D3 1/1996-AR-88 (Court of Appeal of Brussels, September 13, 2001). 87. Baron Philippe de Rothschild et al. v. Carrefour Belgium, N.V. et al., Case No. C030249F (Supreme Court of Belgium, June 6, 2005). Vol. 97 TMR 357 carried the infringing brand and to pay damages.88 The similarity between the two brands was not at issue in this case. One of the rather many new political parties founded in 2006 in The Netherlands stirred up some heated debate, as it promoted legalization of pedophile relationships. The full name of the party—Naastenliefde, Vrijheid en Diversiteit (“Neighborly Love, Freedom and Diversity”)—was logically abbreviated as NVD. This abbreviation was the subject of an attack by Nachtveiligheidsdienst Bewaking Haarlem B.V., the owner of the trademark NVD, a nationally known name used for night guard and security services.89 After the political party introduced its name, the plaintiff received many, generally indignant, emails, and a number of its employees even refused to wear the company uniform, which carried the NVD company logo. The defendant did not show up in court. The District Court of The Hague enjoined the political party from using its abbreviated name and ordered it to close its website. The main reason for the Court’s granting the plaintiff’s request was the potential damage that the party’s abbreviated name could have caused to the reputation of the plaintiff’s mark.90 III.K. Counterfeiting Issues The Supreme Court of The Netherlands upheld an earlier ruling by the Bois-le-Duc Court of Appeal that the scent of Kecofa’s FEMALE TREASURE perfume infringed Lancôme’s copyright in the scent of its TRÉSOR perfume.91 This case, which has become a landmark, goes as far back as 1994, when Lancôme sued Kecofa for trademark infringement before the District Court of Amsterdam. At that time, the Court rejected Lancôme’s claim based on lack of similarity between the marks. This ruling was upheld by the Amsterdam Court of Appeal in 1997. In 2000, Lancôme filed yet another claim against Kecofa before the Maastricht District Court, for both trademark and copyright infringement. Lancôme now also claimed that it had copyright in the composition of its TRÉSOR perfume and that Kecofa’s FEMALE TREASURE perfume was an imitation thereof. As the similarity between the marks had already been tested, the 88. Nicolaas J.C. Tierie v. Koninklijke Grolsch N.V. et al., Case No. 78593/KG ZA 06112 (President, District Court of Almelo, June 1, 2006). 89. Nachtveiligheidsdienst Bewaking Haarlem B.V. v. Naastenliefde, Vrijheid en Diversiteit, Case No. KG 06-0690 (District Court of The Hague, June 9, 2006). 90. The party’s abbreviated name was subsequently changed to PNVD. The party did not meet the minimum requirements for participation in the November 2006 elections. 91. Kecofa B.V. v. Lancôme Parfums et Beauté et Cie S.N.C., Case No. C04/327HR (Supreme Court of The Netherlands, June 16, 2006). 358 Vol. 97 TMR Maastricht court denied Lancôme’s claims on this point, but the Court of Appeal of Bois-le-Duc upheld the copyright claim based on Lancôme’s report that 24 of the 26 olfactory components present in Kecofa’s perfume were identical to those of Lancôme’s and one of the two other components was a cheap substitute.92 The chance that this was accidental, the Court of Appeal considered, was as high as winning the lottery every day during an entire century. Additionally, out of a group of test persons, three-quarters were unable to distinguish the perfumes from each other. Where earlier the European Court of Justice had denied trademark protection to scents,93 the finding of the Court of Appeal must have been a welcome solution for Lancôme. It may also be a welcome relief for all those perfume manufacturers that see their fragrance copied and in cases when action on the basis of trademark rights is not possible. But it remains to be seen what the ruling will bring in practice. III.M. Licensing Issues The Court of Appeal of The Hague confirmed an earlier ruling by the District Court that use of the MARIENBURG RUM brand by the licensee after the license agreement had ended infringed the rights of the trademark owner.94 The plaintiff in this case, Suriname Alcoholic Beverages N.V. (SAB), had licensed its mark to the defendant. Under the license, SAB delivered its rum in bulk to the defendant, which repackaged it in small bottles. SAB cancelled the license agreement. At the time that the agreement ended, in 2000, the licensee still had a stock of the product, which it continued to sell under the MARIENBURG RUM brand and SAB bottle cap logo. When sales still continued in 2004, SAB sought an injunction. The licensee’s use of the brand and logo after the agreement had ended was held to infringe the rights of the trademark owner. V.A. Domain Names Use of one’s other brand in a domain name or as a metatag is not always enjoined, as was shown in Sara Lee/DE N.V. v. Fountain Zuid-West Nederland B.V.95 Sara Lee/DE is the market leader in Benelux with its coffee brand DOUWE EGBERTS. The defendant had purchased sponsored links in a number of search engines for the search string DOUWE EGBERTS, and had also 92. See 96 TMR 296 (2006). 93. Sieckmann v. Deutsches Patent- und Markenamt (ECJ, December 12, 2002). 94. Suriname Alcoholic Beverages N.V. v. Bharat B.P.L. & Son V.o.f. et al., Case No. 04/933 (Court of Appeal of The Hague, January 26, 2006). 95. Case No. KG 242/2005 (President, District Court of Middelburg, January 18, 2006). Vol. 97 TMR 359 used that as a hidden metatag in the source code of its web pages, where it offered coffee products for sale, not only the genuine DOUWE EGBERTS brand but also other brands. The defendant is also an official wholesale reseller of the plaintiff’s products. The Court rejected the plaintiff’s claim and refused to enjoin the defendant from these types of use. Also refused was the additional demand by the plaintiff that the defendant’s use of sponsored hyperlinks should lead only to web pages that showed DOUWE EGBERTS products exclusively. For many tourists visiting Amsterdam, The Bulldog “coffeeshop” (a place where no coffee but mainly cannabis products can be purchased and consumed) is probably one of those places to walk by if not walk into. Located in a former police station in the heart of the city, it was the first large “coffeeshop” in The Netherlands. Its logo (see below) has been registered in respect of a variety of goods and services. In UDRP domain proceedings before the WIPO Arbitration and Mediation Center, Mr. De Vries, the owner of the BULLDOG logo, successfully proceeded against Mr. Van der Zwan, who had obtained and used the domain names www.bulldog.com and www.buldog.com for a pornographic referral site.96 The domain names were subsequently transferred to Mr. De Vries. Before the District Court of The Hague, Mr. Van der Zwan requested that the Court declare that his domain names did not infringe the rights of Mr. De Vries. The latter claimed, inter alia, that Mr. Van der Zwan had no interest in the same, as he had also failed to demand nullification of the UDRP arbitration judgment. The Court explained that the UDRP ruling could not be considered as an arbitration judgment as it lacked, among other things, enforcement mechanisms, since the UDRP provides only for transfer or cancellation of a domain name. As a result, the failure to file an appeal in the UDRP matter or to demand nullification of the UDRP judgment did not deprive Mr. Van der 96. WIPO Case No. D2004-0174, available at www.wipo.int. 360 Vol. 97 TMR Zwan of his right to bring the matter before the Court to its full extent. Mr. Van der Zwan’s claim was subsequently accepted.97 Curiously enough, Mr. Van der Zwan had not claimed a retransfer of the domain names, so in the end this case was for him probably a Pyrrhic victory. To date, the domain names remain in the name of the defendant, Mr. De Vries. BRAZIL I.B.3. Not Merely Descriptive Terms On April 25, 2000, the Brazilian Patent and Trademark Office (PTO) rejected the trademark application for WELLMARK, in old Brazilian Class 1.50 (corresponding to International Classes 1 and 5), in the name of Wellmark International.98 Wellmark, a company based in California, U.S.A., is engaged in the chemical business, specifically in the development of pest management products and technology. The PTO found that WELLMARK was an expression of a generic or descriptive nature and hence should not be allowed to be registered as a trademark under Article 124.VI of the Brazilian Industrial Property Law.99 Although Wellmark filed an administrative appeal, the rejection was sustained. Wellmark then brought a lawsuit before the 35th Federal Court of Rio de Janeiro seeking the nullification of the PTO’s decision on the following grounds: 1. A generic trademark should describe the products or services for which protection is claimed. Such generic nature was not found in this case, as the expression WELLMARK did not correspond to any characteristic inherent in insecticides and pest control products for agricultural, domestic, or public health use, or in products for veterinary use. 2. Boa marca, the Portuguese translation of the expression WELLMARK that the PTO asserted was sufficient to support a finding of genericness or descriptiveness, was incorrect, since the literal translation of WELLMARK— 97. Olof E.W.M. van der Zwan v. Hendrikus J.M. de Vries et al., Case No. 225614/HA ZA 04-2493 (District Court of The Hague, May 24, 2006). 98. Application No. 820.600.547, published in Official Bulletin No. 1529, January 27, 1998. 99. Law No. 9,279/96, May 14, 1996. Article 124.VI provides: “The following shall not be registrable as marks: . . . signs of generic, necessary, common, ordinary or simply descriptive nature when related to the product or service to be distinguished, or those commonly used to designate a characteristic of a product of service regarding its nature, nationality, weight, value, quality and time of production or providing of a service, except where presented in a sufficiently distinctive form.” Vol. 97 TMR 361 bem marca—not only has no particular meaning in Portuguese but in fact does not exist. Therefore, WELLMARK is obviously a coined word. 3. WELLMARK was not a mark of a suggestive and/or laudatory nature and was not subject to the prohibitions of Article 124.VI of the Industrial Property Law.100 In its filed defense, the PTO recognized its mistake in denying trademark registration to WELLMARK. As a consequence, the Court granted an injunction ordering the PTO to reinstate Wellmark’s application and forbidding it from granting registrations for any conflicting trademarks in old Brazilian Class 1.50 until a final decision had been rendered on the merits of the lawsuit. On July 27, 2005, the Court handed down a final decision on the merits, confirming the effects of the injunction previously granted and declaring the nullity of the Brazilian PTO’s decision rejecting Wellmark’s application. The Court found that the WELLMARK mark was not generic or descriptive in view of the products claimed. I.B.8.a. Similarity of Marks The PTO published for opposition purposes the trademark application for MELLO YELLO (see below), in old Brazilian Class 25.10/.20/.30 (which covers “clothes and clothing accessories for common use, for use in sports, and for professional use”), in the name of Wanderley De Vinicius Thomeme, a Brazilian individual.101 The Coca-Cola Company filed an opposition based on its trademark registration for MELLO YELLO, in old Brazilian Class 35.10/.20, covering “sparkling and non carbonated mineral water and other nonalcoholic beverages, syrups and substances for the preparation of beverages in general.”102 It argued that the appliedfor mark was not registrable, in accordance with Article 126 of the Brazilian Industrial Property Law and Article 6bis of the Paris Convention, which protect well-known marks, and Article 2.V of 100. Civil Lawsuit No. 2004.5101520343-0, filed July 16, 2004. 101. Application No. 816165270, published in Official Bulletin No. 1441, August 4, 1998. 102. Registration No. 006953620, filed September 21, 1978. 362 Vol. 97 TMR the Brazilian Industrial Property Law and Article 10bis of the Paris Convention, which restrain unfair competition. In its rebuttal to the opposition, the applicant asserted that the opponent had not shown evidence of the fame of its trademark. The applicant also argued that the opponent’s mark was registered in a different class and provided a list of other trademark applications and registrations filed with the PTO for marks formed by the word MELLO and other trademark registrations for YELLO. Coca-Cola’s reply to the applicant’s rebuttal stated that the company’s trademark was already registered in more than 90 countries, and that in the list provided by the applicant, none of the trademarks was formed by the words MELLO and YELLO used together. The PTO ruled in favor of the opponent and rejected the trademark application for MELLO YELLO, citing Article 2.V of the Brazilian Industrial Property Law, which provides protection against unfair competition.103 As the applicant did not file an appeal against this decision, the PTO published the abandonment of the application.104 An application for the trademark KUAT, in old Brazilian Class 32.10/20, in the name of Juliana Panificação Ltda., was published by the PTO for opposition purposes.105 The Coca-Cola Company filed an opposition, arguing that the mark was not registrable because of the likelihood of confusion with its registered trademark KUAT, in old Brazilian Class 35/10.20.30.106 Coca-Cola’s opposition, which was brought on grounds of unfair competition, was based on Article 124.XXIII of the Brazilian Industrial Property Law, which provides that marks that totally or partially imitate marks of which the applicant evidently could not fail to be aware on account of its activity are not registrable. The opponent also claimed the special protection accorded well-known trademarks by the Brazilian Industrial Property Law. The PTO rejected the application based on likelihood of confusion of the applied-for mark with Coca-Cola’s trademark.107 As the applicant did not appeal the decision, the PTO published the abandonment of the application.108 103. Official Bulletin No. 1788, April 12, 2005. 104. Official Bulletin No. 1837, March 21, 2006. 105. Application No. 820231150, published in Official Bulletin No. 1414, January 27, 1998. 106. Registration No. 819880248, filed September 4, 1997. 107. Official Bulletin No. 1808, August 30, 2005. 108. Official Bulletin No. 1837, March 21, 2006. Vol. 97 TMR 363 The PTO published for opposition purposes an application, in the name of MV Augusta Motor S.p.A., for the trademark RAPTOR, to cover “clothes, shoes and hats” in International Class 25 (see below, illustration at left).109 NBA Properties, Inc., owner of the trademark TORONTO RAPTORS (see below, illustration at right), registered in several classes, including Class 25, filed an opposition against Augusta Motor’s application. The opponent called the examiner’s attention to the fact that the applied-for mark was not registrable, as it was extremely similar to NBA’s TORONTO RAPTORS mark and would, therefore, probably induce consumers to believe that the goods identified by the marks were somehow related. Additionally, NBA argued, the RAPTOR mark was nothing more than a partial reproduction of the TORONTO RAPTORS trademark. The PTO rejected the application based on Article 124.XIX of the Brazilian Industrial Property Law.110 It is important to note that, in its rejection decision, the PTO cited, as inhibiting registration of the RAPTOR mark, NBA’s trademark registrations for TORONTO RAPTORS.111 The company Farmoquímica S/A filed a lawsuit112 in the State Court of the State of Rio de Janeiro against the firm AB Farmo Química Ltda. on the following grounds: 1. Farmoquímica had owned, since 1980, a trademark registration for FARMOQUÍMICA in Class 5, which covers medications in general;113 109. Official Bulletin No. 1546, August 22, 2000. 110. Official Bulletin No. 1833, January 21, 2006. Article 124.XIX provides: “The following shall not be registrable as marks: . . . reproductions or imitations, in whole or in part, even with additions, of a mark registered by another party, to distinguish of certify a product or service which is identical similar or related which are likely to cause confusion or association another person’s mark.” 111. (a) Registration No. 817.913.955 for the trademark TORONTO RAPTORS & Design, in old Brazilian Class 25.10/30, filed July 11, 1994 (Priority No. CA 0000751737– April 8, 1994); (b) Registration No. 817.795.600 for the trademark TORONTO RAPTORS, in old Brazilian Class 25.10/20, filed May 2, 1994 (Priority No. CA 0000747144–February 10, 1994; and (c) Registration No. 819.851.620 for the trademark TORONTO RAPTORS & Design, in old Brazilian Class 25.60, filed March 17, 1997. 112. Civil Lawsuit No. 2005.001.106304-8, filed August 31, 2005. 113. Registration No. 800.213.378, filed August 5, 1980. 364 Vol. 97 TMR 2. The term FARMOQUÍMICA was the most important element in the plaintiff’s commercial name, which had been registered since 1932; and 3. The defendant was infringing the plaintiff’s trademark registration and commercial name rights by using the term FARMOQUÍMICA as part of its applied-for mark AB FARMO QUÍMICA.114 Farmo Química filed a plea for change of venue, on the ground that under the Brazilian Civil Procedure Code, as a general rule, lawsuits should be filed in the jurisdiction of the defendant’s domicile.115 (Farmo Química is headquartered in Anápolis, in the State of Goiás.) In its rebuttal to the plea for change of venue, Farmoquímica argued that the lawsuit was duly filed in the State Court of Rio de Janeiro and, further, that the Civil Procedure Code contains an exception to the general rule for lawsuits grounded on crimes, providing that in said cases plaintiffs may file suit in the jurisdiction of either their domicile or the locale where the crime occurred.116 The first instance judge, agreeing with the defendant’s argument, declared that the Court of the State of Rio de Janeiro had no jurisdiction to decide the case and ordered that the case records be remitted to the Court of Anápolis, in the State of Goiás.117 Farmoquímica appealed against the decision before the Rio de Janeiro State Court of Appeals.118 It called the appellate court’s attention to the express exception in the legislation concerning the jurisdiction for civil lawsuits connected to crimes, and the fact that the lawsuit in question was based on crimes against industrial property (e.g., trademark infringement and unfair competition). Farmo Química, in reply, reiterated the arguments it had presented in the plea for change of venue. The Rio de Janeiro State Court of Appeals affirmed the first instance court’s decision, on the ground that the place where the crime against industrial property was committed could not be identified since Brazilian trademarks are granted protection on a national level.119 The appellate court did not analyze 114. Application No. 823.888.550, filed May 2, 2001. 115. Civil Lawsuit No. 2005.001.106304-8/A, filed October 11, 2005. 116. Brazilian Civil Procedure Code Art. 100. 117. Decision rendered November 16, 2005, and published in Official Bulletin No. 217, November 24, 2005. 118. Appeal No. 2005.002.27832, filed December 6, 2005. 119. Decision rendered February 15, 2006, and published in Official Bulletin No. 34, February 20, 2006. Vol. 97 TMR 365 Farmoquímica’s argument regarding the exception in the Brazilian Civil Procedure Code. Farmoquímica therefore presented an appeal for clarification, requesting that the Rio de Janeiro State Court of Appeals render a decision on its argument.120 The appellate court handed down a decision correcting its prior judgment and declaring that the State Court of Rio de Janeiro has jurisdiction to decide cases filed where the plaintiff is headquartered when the lawsuit is grounded on industrial property crimes.121 III.C. Injunctions and Damages Fila do Brasil Ltda. and Fila Sport S.p.A. filed a request for injunctive relief122 and a civil damages lawsuit123 against Carrefour Comércio e Indústria S/A in 1997. In the injunction action, the plaintiffs requested the seizure of the counterfeit FILA shoes (250 pairs of sneakers) being sold at the defendant’s hypermarket (mega-supermarket) in the city of Canoas. In the main lawsuit, the plaintiffs claimed for an indemnity for the loss of profits, consequential damages, and the royalties that the defendant would have paid if it had had a license from the plaintiffs. The lower court granted the injunction. In the suit for damages, it ordered the defendant to abstain from commercializing the sneakers; indemnify the plaintiff in the amount of 15 percent of the franchising fee that a local franchisee had paid to the plaintiffs for the manufacture of FILA shoes; and pay damages, the amount to be calculated in the award assessment proceeding.124 The defendant appealed, seeking to have the decision reversed or the award reduced. The plaintiffs filed counterarguments, seeking to have the decision upheld. The Second Instance Court of the State of Rio Grande do Sul rejected the appeal.125 This decision was eventually the subject of several more appeals, including a motion to clarify the judgment, interlocutory appeals, and appeals to the Brazilian Superior Court of Justice. All of these were denied. While no final decision was rendered regarding the assessment of damages, the plaintiffs filed a writ of execution (WE) to collect the 15 percent of the franchising fee, which amount 120. Appeal No. 2005.002.27832, Request for Clarification filed March 2, 2006. 121. Appeal No. 2005.002.27832, decision rendered March 29, 2006, and published in Official Bulletin No. 66, April 10, 2006. 122. Injunction No. 8197019600-13995, filed April 17, 1997. 123. Civil Lawsuit No. 819702668-14127, filed May 16, 1997. 124. Injunction No. 8197019600-13995 and Civil Lawsuit No. 819702668-14127, decision rendered June 2, 1998, and published in Official Bulletin No. 29/1998, June 8, 1998. 125. Appeal No. 598294684, decision rendered May 26, 1999, and published in Official Bulletin No. 131/1999, August 16, 1999. 366 Vol. 97 TMR was undisputed. Although Carrefour had initially filed a motion against the WE, after the motion was summarily denied by the judge, the defendant paid the full amount requested in the WE and the executive proceeding was terminated.126 With regard to the amount of the award that was still in dispute (i.e., damages), on October 1, 2001, the plaintiffs filed for an award assessment proceeding to quantify the consequential damages. On March 24, 2006, the award assessment proceeding was decided by the lower court, which ordered Carrefour to pay of R$104,741.25 (approximately US$45,000), this sum to be updated as of November 2003.127 Both parties appealed. The plaintiffs requested the Second Instance Court of the State of Rio Grande do Sul to raise the amount of the award. The defendant claimed only that the amount awarded as attorney’s fees (10 percent of the total award) should be lowered. Both appeals were denied by the State Court of Appeals (the decision is still subject to appeal).128 In the meanwhile, and since the defendant did not appeal against the amount owed to them, the plaintiffs filed a WE against the defendant. This was partially accepted by the first instance court. The court determined the defendant’s payment at R$122,178.30 (approximately US$57,000), this sum to be updated as of July 2006. Since the defendant deposited the full amount owed, the judge terminated the WE129 and the deposit was withdrawn by the plaintiffs. CANADA I.A.1.b. Quantity and Quality of Use In Loblaws Inc. v. No Frills Auto & Truck Rental Ltd.,130 major national grocer and household goods retailer Loblaws was appealing the Registrar of Trade-marks’ (Registrar’s) rejection of its opposition to No Frills’ application to register the trademark NO FRILLS based on use since September 1992 for car and truck rental, leasing, and sales. The Registrar found that No Frills (1) had commenced use of the NO FRILLS mark shortly after July 22, 126. The decision authorizing the withdrawal of the court deposit was published in Official Gazette No. 3.436, September 14, 2006. 127. Civil Lawsuit No. 008/1.05.0010544-6, decision rendered March 24, 2006, and published in Official Gazette No. 3.322, March 3, 2006. 128. Appeal No. 70015806847, decision rendered August 31, 2006, and published in Official Gazette No. 3.446, September 29, 2006. 129. Civil Lawsuit No. 008/1.05.0010544-6, decision rendered September 27, 2006, and published in Official Gazette No. 3.448, October 3, 2006. 130. [2006] 49 C.P.R. (4th) 179 (F.C.). Vol. 97 TMR 367 1992 and (2) evidenced advertising and business activities from 1992, despite its not having provided any sales figures. On appeal, Loblaws filed new evidence to the effect that No Frills had changed its name from an existing Alberta company on July 21, 1992, and then was struck from the Alberta corporate register on March 1, 2000, for failure to file an annual return. Meanwhile, another business, which was incorporated in British Columbia in 1996, purported to use No Frills’ mark. When an applicant seeks to register a mark on the basis of prior use, such use must be continuous and in the normal course of trade. Further, an application will be refused for noncompliance with Section 30(b)131 of the Canadian Trade-marks Act132 where the evidence is inconsistent with the prior use claimed. The Federal Court held that Loblaws’ new evidence put into question No Frills’ claim that it had continuously used its mark since September 1992. No Frills’ evidence of use was found to be lacking in other respects: (1) there was no evidence that the mark was used between 1996 and the date the affidavit was sworn; (2) No Frills did not trace the changes in its corporate entity, other than to say that it had changed its name from that of an existing Alberta company; and (3) there was no evidence of continuous use of the mark after the original applicant was struck from the Alberta registry. The Federal Court was not satisfied that No Frills had continuously used the mark since September 1992. Consequently, No Frills’ application was refused. I.A.2. Assignments Wing Wah Food Manufactory Products Inc. v. China Brands Food Products Inc.133 demonstrates the breadth of the Registrar’s discretion to determine that a mark has been transferred despite the absence of documentation evidencing same. After Wing Wah opposed China Brands’ 1998 application to register the trademark PEONY BRAND based on use on food color solutions since 1979, China Brands amended its application to state that such use had been by it or by the partnership that was its predecessor in title. China Brands was incorporated in 1986 to carry on the business of said predecessor when the retirement of one of the predecessor’s partners caused it to dissolve. Wing Wah 131. Section 30(b) provides: “An applicant for the registration of a trade-mark shall file with the Registrar an application containing . . .[,] in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of wares or services described in the application.” 132. R.S.C. 1985 c. T-13. Unless stated otherwise, all references to sections are to the Trade-marks Act. 133. [2005] 46 C.P.R. (4th) 39 (F.C.). 368 Vol. 97 TMR tendered evidence that the remaining partner acquired the predecessor’s business, and China Brands produced no evidence of a transfer to it of the PEONY BRAND application by the predecessor partnership. The Registrar nevertheless rejected Wing Wah’s opposition, finding that a transfer of China Brands’ predecessor’s business (including the PEONY BRAND application) had taken place.134 Wing Wah appealed. In rejecting the appeal, the Federal Court noted that Section 48(1)135 does not require that a transfer be in writing. In addition, because Section 56(5)136 allows, but does not oblige, a party to adduce additional evidence on appeal, the court refused to draw an adverse inference from China Brands’ failure to file supplemental evidence showing its acquisition of the PEONY BRAND application from its predecessor. It was, the Federal Court ruled, reasonably open to the Registrar to find that such a transfer had taken place upon China Brands’ incorporation in 1986. I.B.3. Not Merely Descriptive Terms Shell Canada Ltd. v. P.T. Sari Incofood Corp.137 underscores the importance of considering the material dates for determining registrability and distinctiveness when fashioning one’s evidence. Relying primarily on an allegation of descriptiveness, Sari opposed Shell’s proposed use application to register the trademark JAVACAFE for an array of food products, including coffee. The Registrar rejected Sari’s argument that a significant portion of the Canadian public associated the island of Java with coffee products.138 In refusing to characterize this decision as unreasonable, the Federal Court completely ignored the additional evidence Sari submitted on appeal, namely, (1) third-party registrations and applications for marks including JAVA, (2) discussions of “Java” and “café” in dictionaries and encyclopedias, and (3) references to country names on third-party coffee packaging. Such evidence was said to be “of no significance” to the issue of registrability because it related to events after the date Shell filed its JAVACAFE application. Because the Registrar’s decision would not have been 134. Noted at [2004] 42 C.P.R. (4th) ix (Registrar). 135. Section 48(1) provides: “A trade-mark, whether registered or unregistered, is transferable, and deemed always to have been transferable, either in connection with or separately from the goodwill of the business and in respect of either all or some of the wares or services in association with which it has been used.” 136. Section 56(5) provides: “On an appeal under [S]ection [56](1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.” 137. [2005] 41 C.P.R. (4th) 250 (F.C.). 138. [2003] 32 C.P.R. (4th) 180 (Registrar). Vol. 97 TMR 369 affected by Sari’s supplemental evidence, Sari was merely asking the Federal Court to substitute its judgment for that of the Registrar, which was not the role of an appeal court. I.B.8.a. Similarity of Marks In H-D Michigan Inc. v. MPH Group Inc.,139 the Federal Court disagreed with the Registrar140 and found a likelihood of confusion between H-D’s “well-known” HARLEY and HARLEY-DAVIDSON marks (registered for motorcycles, articles of clothing, and restaurant and bar services) and MPH’s HARLEYWOOD mark, which MPH proposed to use for nightclub services. (Because H-D’s HARLEY registration for restaurant and bar services was summarily cancelled pursuant to Section 45 (non-use for the previous three years) after issuance of the Registrar’s decision, the Federal Court did not consider that registration in MPH’s appeal). In response to the Registrar’s finding that H-D’s initial evidence failed to show “proper evidence” of the use of its marks for clothing and restaurant services, H-D filed additional evidence regarding the operation of Kane's Harley-Diner and Jim's Harley-Diner, in Calgary, Alberta, and Delta, British Columbia, respectively. Because such new evidence related to activities conducted after MPH’s filing date (1997)—the relevant date for assessing nonentitlement—and H-D’s opposition date (1999)—the relevant date for assessing distinctiveness—its relevance was confined to the issue of registrability due to confusion with H-D’s registrations. The Federal Court relied on the famous mark line of cases141 in concluding that MPH’s HARLEYWOOD nightclubs would likely be confused with H-D’s HARLEY- and/or HARLEY DAVIDSONbranded motorcycles, clothing and restaurants/bars. The Court found that: (1) H-D’s marks were inherently distinctive, were not in common use, had “a significant amount of acquired distinctiveness,” and were “well known because of their extensive and lengthy use in the market place”; (2) the parties’ goods and services were similar and the nature of their trade would be the same; (3) the degree of resemblance between the parties’ marks was noticeable, considering they started with HARLEY, and considering MPH had taken H-D’s HARLEY mark in its entirety; (4) since before MPH filed its application, H-D had used HARLEYWOOD to identify a section of “the well-known Harley Davidson Café in New York City[,] . . . where people can see and have their picture[s] taken on a Harley Davidson motorcycle.” In 139. [2006] 49 C.P.R. (4th) 435 (F.C.). 140. [2004] 40 C.P.R. (4th) 245 (Registrar). 141. United Artists Corp. v. Pink Panther Beauty Corp., [1998] 80 C.P.R. (3d) 247 (F.C.A.); Cartier, Inc. v. Cartier Optical Ltd., [1988] 20 C.P.R. (3d) 68 (F.C.T.D.); Miss Universe, Inc. v. Bohna, [1994] 58 C.P.R. (3d) 381 (F.C.A.). 370 Vol. 97 TMR the Federal Court’s view, the Registrar was wrong to reject this latter evidence merely because it was not specifically raised in the Statement of Opposition. I.B.12. Famous Marks In the much-anticipated decision in Mattel, Inc. v. 3894207 Canada Inc.142—heard in tandem with Veuve Clicquot Ponsardin Maison Fondée en 1772 v. Boutiques Cliquot Ltée.143—Canada’s court of final appeal affirmed the lower courts’ rejection of the opposition by Mattel (owner of BARBIE for dolls and other toys) to the registration of BARBIE’S & Design for restaurant services. The Federal Court of Appeal144 had endorsed the Federal Court’s finding145 that while Mattel’s mark enjoyed a very extensive worldwide reputation in association with dolls, the mark’s notoriety was only one factor to be considered. In the Court of Appeal’s view, if fame could prevent all other uses of a mark, the fundamental concept of granting a trademark in association with certain goods would be rendered meaningless. The Court of Appeal had said that dolls and restaurants “could not [be] more different.” In Mattel’s survey evidence tended on appeal, the respondents first were shown, without any context, the restaurant’s BARBIE'S logo. Subsequently, it was removed from their sight and they were then asked a series of questions, some of them suggestive. Most important was the following question, which the Federal Court of Appeal viewed as irrelevant: “Do you believe that the company that makes BARBIE dolls might have anything to do with the restaurant identified with this sign or logo?” The Supreme Court rejected this evidence because the use of the word “might” in the survey question was directed to a mere possibility, rather than a probability, of confusion. While it would be relevant if even a limited percentage of the population surveyed were confused, “evidence that a lot of people might or could possibly make the mistaken inference” was not. The Supreme Court concluded that it was open to the Registrar to conclude that prospective consumers would likely not infer that whoever owned the BARBIE doll mark was associated in some way with BARBIE’S restaurants (but the Registrar concluded otherwise). The Court noted that trademark law “is 142. [2006] 49 C.P.R. (4th) 321 (S.C.C.). For a more in-depth analysis of this decision, see Paul D. Blanchard, Lisa R. Vatch, & and Andrea P. Flewelling, The BARBIE Case: The Supreme Court of Canada Restates the Test for Trade-mark Confusion, 96 TMR 1034 (2006); Sophie Picard & Christopher K. Assié, The BARBIE Case: Fame Is Not Everything, 96 TMR 1055 (2006). 143. [2006] 49 C.P.R. (4th) 401 (S.C.C.). See III.A.1. Famous Marks. 144. [2005] 38 C.P.R. (4th) 214 (F.C.A.), summarized at 96 TMR 312 (2006). 145. [2004] 30 C.P.R. (4th) 456 (F.C.), aff’g [2002] 23 C.P.R. (4th) 395 (Registrar). Vol. 97 TMR 371 sometimes said to hold the balance between free competition and fair competition. . . . Fairness, of course, requires consideration of the interest of the public and other merchants and the benefits of open competition as well as the interest of the trade-mark owner in protecting its investment in the mark. Care must be taken not to create a zone of exclusivity and protection that overshoots the purpose of trade-mark law.” That Parliament had recognized that some trademarks are so well known that use in connection with any goods or services would generate confusion was not to say that BARBIE had that transcendence. Famous marks were said to be “clearly product specific. . . . The Registrar's conclusion that BARBIE's fame is limited to dolls and dolls' accessories does not at all mean that BARBIE's aura cannot transcend those products, but whether it is likely to do so or not in the context of opposition proceedings in relation to restaurant, catering and banquet services is a question of fact that depends on ‘all the surrounding circumstances’. . . .” There should be a finding of confusion if it is likely in all the surrounding circumstances that the prospective purchaser will be led to the mistaken inference that the wares or services associated with the parties’ marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class,146 which was not to say the nature of the wares or services was irrelevant. In other words, the general class of wares and services is relevant but not controlling. It was also relevant that Mattel’s mark was symbolic of goods while 3894207’s mark identified services. Moreover, an adverse inference was to be drawn from the lack of evidence of actual confusion in circumstances where it would readily be available if the allegation of likely confusion was justified. Confusion is to be assessed from the perspective of the ordinary hurried purchaser, to which courts “owe[d] a certain amount of credit.” The Supreme Court accepted Mattel’s argument that, following introduction of the 1953 amendments, famous brands received a significantly broader ambit of protection. In Pink Panther,147 the Federal Court of Appeal had said that absent a connection or similarity in the products or services “it is very difficult to justify the extension of property rights into areas of commerce that do not remotely affect the trade-mark holder. Only in exceptional circumstances, if ever, should this be the case.” The Supreme Court said such a test “put the bar too high and [might] be seen as an attempt to impose rigidity where none exists.” It was said that fame is capable of carrying a famous mark across product lines where lesser marks would be circumscribed to their 146. Italicized words from Section 6(2), introduced into the Trade-marks Act in 1953. 147. See I.B.8.a. Similarity of Marks. 372 Vol. 97 TMR traditional goods or services. The totality of the circumstances will dictate how each consideration should be treated. The Pink Panther court “misspoke” to the extent it suggested that, for confusion to occur there must be some resemblance or linkage to the wares in question, that is, to the wares for which registration of a mark was sought. “On the contrary, not only need there be no ‘resemblance’ to the specific wares or services, but the wares or services marketed by the opponent under its mark and the wares or services marketed by the applicant under its appliedfor mark need not even be of the same general class.” It may be that the nature of goods or services should have less weight because the famous mark more likely will lead to the inference that the source of the two is the same, but fame itself could and did create a connection in the mind of the ordinary consumer who first sees a famous mark in a new context. The key factor in Pink Panther was the gaping divergence in the nature of the goods and trade, and the jurisprudence was clear that different factors may be given different weight in different situations. A divergence in goods or services does not deliver the knockout blow, but nor does the fame of the mark. In assessing the factors in Section 6(5), the Supreme Court noted that the issue was not the scope of 3894207’s existing business but the scope of protection it sought by its trademark application. True, Mattel’s mark had deeper roots, and had been much more highly publicized over a much larger geographic area. However, there was no evidence that adult consumers would consider a doll manufacturer to be a source of good food; indeed, BARIBIE might be taken as a warning of blandness.148 The Court accepted that expansion of the BARBIE mark was more than just speculation (considering the broad range of licenses Mattel had granted for other fields of use), but if the mark was not famous for anything but dolls (as found by the lower courts) and absent evidence that BARBIE's licensees were in the marketplace using the BARBIE mark for “restaurant services, take-out services, catering and banquet services,” it was difficult for the Court to see the basis on which the mistaken inference was likely to be drawn. Quite apart from the “great difference” between dolls and restaurants, they occupied different channels of trade. In response to Mattel’s assertion that 3894207 “was a deliberate free rider who had no reasonable explanation for adopting its” mark, the Supreme Court pointed out that the mens rea of 3894207 was of little relevance to the issue of confusion. 148. The Macquarie Dictionary defined “Barbie doll” as “a female who is superficially attractive in a conventional way, especially with blue eyes and blonde hair, but who lacks personality.” Vol. 97 TMR 373 I.B.13. First to Apply Versus First to Use Loblaws Inc. v. TeleCombo Inc.149 illustrates how a statement made in previous correspondence with the Registrar can cause problems in a future opposition. Loblaws—a major Canadian grocer and retailer of household and personal goods and owner of numerous trademark registrations for PRESIDENT’S CHOICE for use in association with an “extensive and continuously expanding array” of goods and services—opposed TeleCombo’s application for the trademark RESIDENT’S CHOICE based on use since 1997 in association with inter alia restaurant services: retail grocery stores, retail gasoline services; retail pharmacies; retail video rentals and movie theatre tickets.150 Loblaws’ opposition was based in part on an allegation that TeleCombo had not complied with Section 30(b) because in a June 30, 1998, letter to the Registrar, TeleCombo suggested it would be launching its product line in 1998.151 The Registrar had ruled that Loblaws had not properly introduced this letter as evidence. It had also declined to take notice of the letter as part of the contents of the registration owner’s file. Had the letter been admissible, the Registrar had said it would have satisfied the evidentiary burden on Loblaws to demonstrate that TeleCombo had not used the mark in question at the material time insofar as some of the goods and services in the application were concerned. The Federal Court allowed the appeal on the basis that TeleCombo failed to demonstrate that it complied with the requirements of Section 30(b). While the legal burden was on TeleCombo to show such compliance, there was an initial evidential burden on Loblaws to establish the facts on which it relied to support its noncompliance argument. That knowledge as to use may be largely within the possession of an applicant served to lessen the evidentiary burden on the opponent. It did not, however, eliminate that burden altogether. Nevertheless, the evidentiary burden on the opponent was described as “light” in that it did “not take much evidence to put the question of use into issue, shifting the burden to the party seeking registration to 149. 2006 F.C. 634 (F.C.). 150. The statement of services also included: market research and billing services, the offering of vouchers, membership cards; providing rebates at participating establishments through the use of a membership card covering the services of a retail department store; hotel and travel agencies namely hotel and travel rebates at participating establishments; motor vehicle rental services; reselling of licensed local and long distance telephony; reselling of cellular and personal communications services; reselling of home and car insurance; reselling of licensed television broadcast services. 151. In its letter, TeleCombo stated in part: “We would greatly appreciate it if you would consider handling our files with your expedited procedure. The reason we require some acceleration in the process is that we have been planning since January 1998 to launch our service package to apartment and condominium residents in the Greater Toronto Area in July 1998. . . .” 374 Vol. 97 TMR demonstrate, on a balance of probabilities, that there has been compliance with the requirements of subsection 30(b).” According to the Federal Court, TeleCombo’s letter strongly suggested that RESIDENT'S CHOICE was not in fact in use at the time that the application for registration was filed in March of 1997, which statements were “at the very least . . . more than sufficient to shift the burden onto TeleCombo to demonstrate, on a balance of probabilities, that there had been compliance” with Section 30(b). Because TeleCombo had filed no evidence whatsoever, Loblaws’ appeal was allowed and its opposition was allowed. I.B.22. Distinctiveness The extent of third-party use required to negate a mark’s distinctiveness was considered in Bojangles’ International, LLC v. Bojangles Café Ltd.152 International appealed the Registrar’s rejection153 of its opposition to Café’s application to register BOJANGLES CAFÉ for food products and restaurant services, and catering-related goods, particularly the Registrar’s application of the evidentiary standard that to negate the distinctiveness of Café’s mark, International had to show that its mark had become well known in at least one area of Canada or widely known (as opposed to known to some extent) in Canada. International operated several hundred BOJANGLES-branded restaurants in the United States and elsewhere, but not in Canada. Since 1978, International’s sales totaled 3 billion, the bulk of which emanated from its operations in North and South Carolina. Commencing in 1996, Café operated two cafés in Vancouver under the banner BOJANGLES CAFÉ, with sales exceeding 4 million by 2000. In rejecting International’s appeal, the Federal Court applied the following principles: (1) a mark should be known in Canada to some extent at least to negate another mark's distinctiveness; (2) alternatively, a mark could negate another mark's distinctiveness if it was well known in a specific area of Canada; (3) a foreign trademark owner cannot simply assert that its mark was known in Canada—rather, it should present clear evidence to that effect; and (4) a mark’s reputation can be proven by any means, with the decision-maker weighing the evidence on a case-by-case basis. The Registrar applied the incorrect evidentiary standard when it determined that International’s “mark must be well known in at least one part of Canada or widely known.” To assess whether International’s mark was known to some extent in Canada—that is, whether the reputation of its mark was substantial, significant or sufficient enough to negate the distinctiveness of Café’s mark— 152. [2006] 48 C.P.R. (4th) 427 (F.C.), appeal to the Federal Court of Appeal filed (Court File No. A-289-6, June 30, 2006). 153. [2004] 40 C.P.R. (4th) 553 (Registrar). Vol. 97 TMR 375 the Court considered International’s new evidence of its advertisements in Canadian media, franchising inquiries, website visits by Canadians, and sales to Canadian tourists. It found that this evidence was “not very persuasive,” and applied a reasonableness simpliciter (as opposed to correctness) standard. Finding that the evidence presented before the Registrar was insufficient to establish that International’s mark enjoyed “at least some goodwill in Canada” and that its mark “was known in Canada at all material times,” it ruled that International failed to establish that its reputation negated the inherent distinctiveness of Café’s mark. Thus, the Court upheld the Registrar’s decision. I.B.23. Official and Certified Marks Canada Post Corp. v. United States Postal Service154 involved an application brought by Canada Post to judicially review decisions of the Registrar to give public notice of the adoption and use of 13 official marks by US Postal (including UNITED STATES POSTAL SERVICE, EXPRESS MAIL, FIRST-CLASS MAIL) pursuant to Section 9(1)(n)(iii).155 As a result of the Registrar’s decision, Canada Post was prevented from using any of these marks, or any marks closely resembling them, in association with its postal goods and services, unless Canada Post had already been using the marks prior to the dates on which the Registrar gave public notice of their adoption and use by US Postal. Since 1999, US Postal had been: (1) advertising its services in Canada; (2) sending employees to Canada on a regular basis to promote and sell US Postal’s services to customers in Canada who had highvolume mailings to the United States; (3) providing consulting services to businesses in Canada; and (4) assisting with the preparation and delivery of mail to the United States. Once it was ready for delivery, such mail was transferred to the closest US Postal unit in the United States by trucks contracted to US Postal for this purpose. The mail was then put into the US Postal mail system to be delivered to its final destinations in the United States. The Federal Court noted that Section 9(1)(n)(iii) should not be given an expansive meaning because it grants extensive protection to the holders of official marks, including substantial advantages 154. [2005] 47 C.P.R. (4th) 177 (F.C.), appeal to the Federal Court of Appeal filed (Court File No. A-633-05, December 22, 2005). 155. Section 9(1)(n)(iii) provides: “No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, . . . any badge, crest, emblem or mark . . . adopted and used by any public authority, in Canada as an official mark for wares or services, in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use.” 376 Vol. 97 TMR over the rights accorded to owners of ordinary trademarks (e.g., official marks (1) need not serve to distinguish goods or services; (2) may be merely descriptive; (3) may be confusing with the mark of another; and (4) are difficult to cancel.) The Federal Court accepted Canada Post’s assertion that US Postal was not entitled to an official mark as it was not a public authority in Canada. However, interpretation of Section 9(1)(n)(iii) was complicated by the fact that the English and French language versions of the legislation were not identical. Whereas the English version stated that a proper official mark must have been “adopted and used by any public authority, in Canada as an official mark for wares or services,” the French version156 contained no corresponding comma after “public authority.” Due to the comma in the English version, it was unclear whether “in Canada” modified “adopted and used” or “by any public authority.” According to a recent decision of the Supreme Court of Canada,157 when two versions of bilingual legislation do not say the same thing, the narrower meaning ought to be adopted, unless that meaning would be otherwise unacceptable. Because the English version of Section 9(1)(n)(iii) was capable of sustaining two different meanings, whereas the French version was only capable of one meaning, the Court found that the words “in Canada”/“au Canada” modified the phrase “by any public authority”/“par une autorité publique.” As a consequence, in order to be entitled to an official mark, the public authority in question must be a public authority in Canada. This conclusion was buttressed by a review of the legislative history of Section 9(1)(n)(iii) and its predecessor provisions in the Unfair Competition Act,158 the English version of which did not contain a comma—the subsequent insertion of which appeared not to have been a conscious legislative choice, but rather an administrative act by the Statute Revision Commission. In 2002, the Federal Court of Appeal159 enunciated a two-part test for determining whether a party is a “public authority”: (1) the entity is subject to governmental control; and (2) the organization's activities benefit the public. The Court concluded that such 156. The French version of Section 9(1)(n)(iii) provides: “Nul ne peut adopter à l’égard d’une entreprise, comme marque de commerce ou autrement, une marque composée de ce qui suit, ou dont la ressemblance est telle qu’on pourrait vraisemblablement la confondre avec ce qui suit . . . tout insigne, écusson, marque ou emblème . . . adopté et employé par une autorité publique au Canada comme marque officielle pour des marchandises ou services, à l’égard duquel le registraire, sur la demande de Sa Majesté ou de l’université ou autorité publique, selon le cas, a donné un avis public d’adoption et employ.” 157. Medovarski v. Canada (Minister of Citizenship & Immigration), [2005] S.C.J. No. 31 (QL), 2005 S.C.C. 51, 258 D.L.R. (4th) 193 (S.C.C.). 158. S.C. 1932 c. 38. 159. Ontario Ass’n of Architects v. Association of Architectural Technologists of Ontario, [2002] 19 C.P.R. (4th) 417 (F.C.A.), leave to appeal to the Supreme Court of Canada refused, [2003] 23 C.P.R. (4th) vii (S.C.C.). Vol. 97 TMR 377 “government control” had to be exercised by a Canadian government. Given that the extensive benefits afforded to the holders of official marks exist only within the geographic confines of Canada, “it follow[ed] that any injury that will be suffered by trade-mark owners and the public will be suffered by Canadian trade-mark owners and the Canadian public. In this context, surely the ultimate accountability to the electorate contemplated . . . must be to a Canadian electorate.” Since there was no evidence that any level of government in Canada exercised any measure of power or control over any aspect of US Postal’s operations, the Court was satisfied that it was not a public authority. As a result, US Postal was not entitled to invoke the benefit of Section 9(1)(n)(iii). II.G. Evidence The Registrar rarely conducts a thorough, substantive analysis of the admisibility of evidence in opposition cases. Accordingly, the guidance offered in Saputo Groupe Boulangerie v. National Importers Inc.160—in which the Federal Court considered a variety of evidenctiary issues—is a welcome addition to a scant body of law. The Registrar had rejected Saputo’s opposition to National’s application to register CARAMELLA for a spread used in cooking and baking. In support of its appeal of the Registrar’s finding of no likelihood of confusion with Saputo’s registration for AH CARAMEL! snacks and desserts, Saputo tendered the following fresh evidence before the Federal Court: 1. A verbal description of the licensing arrangement between Saputo and J.M. Smuckers (but not the actual licensing document) together with a sample of the product label bearing the licensed mark (which identified the mark's owner by name and stated such mark was “used under license”). The Court concluded that this was sufficient to establish the existence of the license, (as opposed to its content), bearing in mind the presumption in Section 50(2),161 and considering that National neither denied the existence of the license nor presented evidence to the contrary. 2. Saputo’s licensee’s financial statements regarding the AH CARAMEL! Spread, to demonstrate that the likelihood of confusion was greater at the time of the appeal than at 160. [2005] 44 C.P.R. (4th) 241 (F.C.). 161. Section 50(2) provides: “For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trade-mark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trade-mark and the character or quality of the wares or services is under the control of the owner.” (Emphasis added.) 378 Vol. 97 TMR the time of the Registrar’s decision. The statements were rejected on the basis that the presumptions in Section 50(2) were confined to the existence of a license and quality control by the mark’s owner, and did not extend to the extent of use of the mark by the licensee. In any event, the Federal Court deemed this evidence unnecessary: if the licensing contract existed and the product has been marketed for more than four years, there was a strong possibility that the business was profitable. 3. Lay opinions regarding the strength of Saputo’s mark, as attested to by Saputo’s vice-president of marketing. The Court noted that lay witnesses could present their relevant observations in the form of opinions where (a) they were in a better position than the Court to form the conclusion; (b) the conclusion was one that persons of ordinary experience were able to make; (c) the witness, although not expert, had the experimental capacity to make the conclusion; and (d) the opinions being expressed were merely a compendious mode of stating facts that were too subtle or complicated to be narrated. The Court rejected the opinions of Saputo’s lay witness because they did not comply with factors (b) and (d). 4. Report of a polling specialist/statistical analyst retained by Saputo, which aimed to show “the notoriety, consumption and equity” of the major Saputo marks. While this report was not excluded, the Court expressed serious doubts as to its probative value. 5. Saputo’s marketing consultant’s conclusions regarding AH CARAMEL! brand strategy, notoriety and likelihood of confusion with National’s mark. The Court ruled against the admissibility of this evidence, largely on the basis of the lay opinion principles set forth in paragraph 3 above, which applied because the Court had not recognized this consultant as an expert. The problems associated with filing attorneys’ affidavits were highlighted in Cross-Canada Auto Body Supply (Windsor) Ltd. v. Hyundai Auto Canada.162 In support of its application to cancel several trademark registrations owned by Hyundai, Cross-Canada tendered an affidavit sworn by an articling student employed by the law firm representing Cross-Canada, which affidavit (1) contained a “significant amount of substantive information with respect to matters at issue”; (2) described searches he conducted in the Canadian Trade-Mark Office with respect to the ownership of 162. [2006] 53 C.P.R. (4th) 286 (F.C.A.) Vol. 97 TMR 379 the Hyundai registrations; (3) described the assignment of various Hyundai marks; (4) questioned the validity of an affidavit filed by Hyundai; (5) detailed his electronic research efforts and results; (6) alleged a notable lack of information, articles, or public announcements available online with respect to the ownership of the Hyundai marks; (7) detailed his visit to a Hyundai dealership, stating that “[a]ll advertising, promotional material and product at the dealership emphasized the Korean source of the products and Hyundai Motor Company of Korea”; and (8) concluded that, “[a]s a member of the consuming public,[it] would have difficulty distinguishing between Hyundai Auto Canada Inc. and Hyundai Auto Canada.” Hyundai moved to have Cross-Canada’s attorneys removed from the record, relying upon Rule 82 of the Federal Court Rules.163 It argued that because Cross-Canada’s affidavit set out all the key issues in dispute, the same directing mind would be behind the pleadings and the evidence. The Federal Court164 said it was “always problematic if a solicitor depose[d] an Affidavit.” While acknowledging that the practice of law could not be carried on without attorneys using the affidavits of their colleagues, the Court was of the view that such use should be restricted to noncontroversial or non-central matters. Considering that CrossCanada’s entire body of evidence regarding a highly contested issue would be based on affidavits of members of its law firm, there was “a risk and a possible perception that counsel could be inappropriately influenced by that relationship to the detriment of counsel's duties to the court and the client.” On the other hand, to remove Cross-Canada’s entire law firm from the record was deemed to be unnecessarily drastic. Instead, Cross-Canada was ordered to retain independent counsel to prepare written submissions and make oral arguments on the cancellation application. On appeal, the Federal Court of Appeal affirmed this decision. It was “not good practice for a law firm to cause its employees to act as investigators for the purpose of having them later give opinion evidence on the most crucial issues in the case,” especially considering that “there was no evidence from any non-employee of the firm on the crucial issues. Opinion evidence is meant to be objective. The goal of objectivity is not furthered by having employees of the law firms give crucial opinion evidence. Such employees may be motivated by loyalty to their employer or fear of reprisal or lack of advancement in giving such opinions.” The Court of Appeal deemed it “improper” for an attorney to compromise his or her independence by acting in a proceeding in 163. Rule 82 provides: “Except with leave of the Court, a solicitor shall not both depose to an affidavit and present argument to the Court based on that affidavit.” 164. [2005] 43 C.P.R. (4th) 21 (F.C.). 380 Vol. 97 TMR which a member of his or her firm ha[d] given affidavit evidence on a point of substance. That principle, said the Court of Appeal, “is well grounded in the various codes of conduct governing the lawyers of this country, as well as logic.” III.A.1. Famous Marks In Veuve Clicquot v. Les Boutiques Cliquot165—decided together with Mattel166—the Supreme Court of Canada affirmed the Federal Court of Appeal’s167 endorsement of the Trial Division’s168 dismissal of Veuve’s action for trademark infringement, passing off and depreciation of goodwill,169 primarily on the basis that the parties’ goods/services were “as different as chalk and cheese.” For over 100 years, Veuve had used VEUVE CLICQUOT in association with champagne. Boutique operated a women’s apparel store in association with LES BOUTIQUE CLIQUOT. The Federal Court of Appeal found that the Trial Judge had not unduly emphasized (1) the differences between the parties’ goods and services, (2) the promotional nature of Veuve’s distribution of clothing or (3) the speculative nature of Veuve’s plans to expand into clothing. The following conclusions and comments of the Supreme Court should be considered in conjunction with the court’s concurrently-issued reasons in Mattel: 1. Undoubtedly, fame is a circumstance of great importance because of the hold of famous marks on the public mind. However, famous marks do not come in one size. No doubt some famous brands possess protean power (WALT DISNEY may indeed have largely transcended product line differences), but other famous marks are clearly product specific. While “a relatively strong mark can leap vast product line differences at a single bound,” the “product line” will generally represent a significant obstacle for even a famous mark to leap over. 2. That VEUVE CLICQUOT is a “famous” mark was of importance because fame pre-supposes that the mark transcends, at least to some extent, the goods with which 165. [2006] 49 C.P.R. (4th) 401 (S.C.C.). For a more in-depth discussion of confusion and fame issues, see also Jacques A. Léger, Q.C. & Barry Gamache, Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: The Protection of Famous Trade-marks in Canada, 96 TMR 981 (2006); Alexandre Ajami, Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée: Celebrity Is Not Everything, 96 TMR 1001 (2006). 166. See I.B.12. Famous Marks. 167. [2004] 35 C.P.R. (4th) 1 (F.C.A.), summarized at 95 TMR 319 (2005). 168. [2003] 28 C.P.R. (4th) 520 (F.C.T.D.), summarized at 94 TMR 324 (2004). 169. For a discussion of dilution/depreciation of goodwill issues, see III.F.6. Dilution. See also Kevin Sartorio & R. Scott Jolliffe, The Rebirth of Section 22 of Canada’s Trade-marks Act as an Anti-Dilution Remedy, 96 TMR 1020 (2006). Vol. 97 TMR 3. 4. 381 it is normally associated. The evidence was clear that VEUVE CLICQUOT carried an aura of luxury that could extend outside the wine and champagne business, and evoke a broad association with luxury goods. Whether that was the case in a particular infringement case was a matter not of assertion, but of evidence. While the halo effect or aura of VEUVE CLICQUOT was not necessarily restricted to champagne and related promotional items, and could expand more broadly into the luxury goods market, no witness suggested that the mark would be associated by ordinary consumers with mid-priced women’s clothing. When the Pink Panther170 court said that “[o]nly in exceptional circumstances, if ever” should property rights be extended into areas of commerce that do not remotely affect the trademark holder (i.e., absent a connection or similarity in the parties’ products/services), it “put[] the bar too high and may [have been] seen as an attempt to impose rigidity where none exist[ed]. . . . [F]ame is capable of carrying the mark across product lines where lesser marks would be circumscribed to their traditional wares or services. . . .” The totality of the circumstances will dictate how each consideration should be treated. The Pink Panther court misspoke to the extent it stated, in obiter: (1) for confusion to occur, there must be “some resemblance or linkage to the wares in question”—not only need there be no resemblance to the specific goods or services, but the parties’ goods/services need not even be of the same general class; (2) the difference in goods/services will always be a dominant consideration. However, given the role and function of trademarks, it will generally be an important consideration. It may be that the nature of goods/services “should have less weight because the famous mark more likely will lead to the inference that the source of the two is the same and “fame itself can and does create a connection in the mind of the ordinary consumer who first sees a famous mark in a new context.” The Trial Judge was justified in concluding that the key factor was the significant difference between the parties’ goods and services, which were “so different that there [was] no risk of confusion in consumers’ minds.” This was an emphasis the Trial Judge was entitled to place in this particular case. 170. See I.B.8.a. Similarity of Marks. 382 Vol. 97 TMR 5. Evidence of actual confusion, though not necessary, would have been helpful . . . but it was not forthcoming. An adverse inference may be drawn when concurrent use on the evidence is extensive, yet no evidence of confusion had been given by the opponent. To be sure, Clicquot and Mattel represent a welcome addition to Canada’s jurisprudence regarding the breadth of protection to be afforded famous and well-known trademarks, particularly for famous mark owners. That being said, the extent to which the Supreme Court has modified the pre-existing law is far from clear. It may be said that Pink Panther has been “tamed,” at least to the extent it stood for the principle that a goods/services disparity represents a practically insurmountable obstacle to a confusion allegation (a not uncommon perception pre-Clicquot/Mattel).171 Less obvious is whether the establishment of some form of goods/services connection will continue to play a central role in the confusion analysis, practically speaking. On the one hand, the Supreme Court has decreed that no single factor (including resemblance between the parties’ goods or services) is a prerequisite to a finding of confusion.172 On the other hand, various comments of the Court—including the following— suggest that only a limited number of marks (WALT DISNEY and VIRGIN were offered as examples) possess the quantity and quality of fame required to transcend all product lines (thereby only rarely rendering goods/services’ resemblance wholly irrelevant): (1) “The fact of being well known does not by itself provide absolute protection for a trade mark;”173 (2) “ the ordinary somewhat-hurried consumer may be misled into drawing the mistaken inference ‘whether or not the wares or services are of the same general class’, but it is still a question for the court as to whether in all the circumstances such consumers are likely to do so in a particular case;”174 (3) the purpose and the value of a mark is the mental link that is created over time in the minds of prospective buyers between a mark and the goods or services of a particular source175 [emphasis in original]; (4) a mistaken inference 171. However, even this statement must be qualified. The Supreme Court itself seemed to minimize the extent to which Pink Panther misstated the law. In Mattel (at ¶ 22), Justice Binnie said: “I agree with [Mattel] and the [INTA (who was granted intervener status in Clicquot)] that the issue in s. 6 is consumer confusion (or, in other words, the likelihood of a mistaken inference), but I do not agree that in their dispositive passages (as opposed to stray dicta) Pink Panther or Lexus departed from the totality of the circumstances test.” 172. According to Léger and Gamache (who appeared for Veuve at trial and both levels of appeal), the Supreme Court “set aside the search for a ‘connection’ between areas of trade when applying the likelihood of confusion test.” 96 TMR at 994. 173. Clicquot at ¶ 11. 174. Clicquot at ¶ 33 (emphasis in original). 175. Clicquot at ¶ 36. Vol. 97 TMR 383 as to source (i.e., Section 6(2) confusion) can only be drawn if a link or association is likely to arise in the consumer's mind between the source of the well-known BARBIE products and the source of the less well-known restaurants;176 and (5) the Trial Judge’s finding that “a consumer who saw the word “Cliquot” used in [Boutiques’] stores would not make any link or connection to . . . [Veuve’s mark] . . . is the critical finding which [Veuve] must overcome if its appeal is to succeed. Without such a link, connection or mental association in the consumer's mind between [Boutiques’] display and the VEUVE CLICQUOT mark, there can be no [Section 22177] depreciation of the latter.”178 Query whether, as a practical matter, the linkages, connections or mental associations (to show either confusion or a Section 22 violation, the latter threshold being lower, yet out of Veuve’s reach) must always be founded on some form of connection in consumers’ minds between the parties’ goods/services. In their commentary on the Clicquot decision, Veuve’s counsel suggests that the Supreme Court’s “new test” calls for “evidence concerning a famous trade-mark’s specific aura—and its association to the newcomer’s field of trade.”179 But query whether a famous mark’s aura can be extricated from the goods/services in association with the brand has become known. Is there a meaningful distinction between an association between that aura and the junior user’s “field of trade” (on the one hand) and a link between the parties’ goods/services (on the other hand)? Where virtually identical marks are in issue (as in Clicquot180), it seems any determination of whether “[the famous brand] would be associated by ordinary consumers with [the junior user’s goods/services]” will necessarily entail an examination of the similarities/differences between the parties’ goods/services. On this basis, it may be argued that the Supreme Court’s attempt to fashion a confusion analysis model applicable to all types of famous marks amounts to little more than a restatement of the basic principles upon which Canadian trademark law operated long before Pink Panther.181 176. Mattel at ¶ 6. 177. See III.F.6. Dilution for a discussion of Section 22. 178. Clicquot at ¶ 49. 179. Léger and Gamache opine that “the Supreme Court seems to have crafted a new test, at least when dealing with famous trade-marks, namely whether a famous mark would be associated by ordinary consumers to the newcomer’s area of trade,” 96 TMR at 994, and that, “[i]f it is clear that there is no longer a requirement to look for a “connection” between areas of trade in the protection of famous trade-marks, owners of famous trade-marks—and attorneys representing them—should be mindful that evidence concerning a famous trademark’s specific aura—and its association to the newcomer’s field of trade—should now be contemplated in order to meet what seems to be the new criteria set out by the Supreme Court in Veuve Clicquot Ponsardin.” Id. at 996-97. 180. Clicquot at ¶.49. 181. See I.B.8.a. Similarity of Marks. 384 Vol. 97 TMR III.A.11.b. No Similarity of Goods/Services The Federal Court of Appeal’s decisions in Alticor Inc. and Quixtar Canada Corporation v. Nutravite Pharmaceuticals Inc.182 and Tradition Fine Foods Ltd. v. Oshawa Group Ltd.183 underscore the high degree of deference paid to a trial judge’s assessment of the likelihood of confusion. The Court of Appeal was blunt in Alticor: “We do not normally examine reasons microscopically,” while in Tradition, it chose to quote its own 2005 decision in ITV:184 Where a judge is called upon to apply the multifaceted statutory test [for confusion] . . ., where the weight to be assigned to each factor varies with the circumstances, an error in the assessment of a particular factor does not amount to a palpable and overriding error, unless it is such that it is determinative of the result. To hold otherwise is to make each factor critical to the analysis, a conclusion which is clearly not supported by the jurisprudence. In Alticor, the Court of Appeal affirmed the Federal Court’s finding185 of no likelihood of confusion between NUTRILITE (which Alticor had used for over 50 years in association with nutritional supplements sold via a multilevel marketing network of independent business operators) and NUTRAVITE (which Nutravite had used since 1992 in association with nutritional supplements sold at retail, and which it registered in 1952). It was the Court of Appeal’s view that the Trial Judge: (1) “clearly understood that it is not any member of the public who must be confused about the source of the competing products, but typical dealers or potential or actual users of the type of goods in question,” not disinterested passersby; (2) rightly indicated that a Judge must put himself or herself in the ‘position of an average consumer who has some recollection of the [. . .] mark . . . when encountering the [offending] product, in order to see if they would infer that the . . . product is somehow associated with the other wares’,” essentially a question of fact to which considerable deference must be accorded; (3) “evinced an understanding of the correct legal test and applied it rationally” to the facts as found; (4) while tending to emphasize the confusion in relation to the products, in fact applied the proper test of confusion as to source; 182. [2005] 42 C.P.R. (4th) 107 (F.C.A.), aff’g [2004] 31 C.P.R. (4th) 12 (F.C.), summarized at 95 TMR 318 (2005). 183. [2005] 44 C.P.R. (4th) 81 (F.C.A.), aff’g [2004] 33 C.P.R. (4th) 289 (F.C.), summarized at 96 TMR 324 (2006), leave to appeal to the Supreme Court of Canada refused (Court File No. 31261, March 23, 2006). 184. ITV Technologies, Inc. v. WIC Television Ltd., [2005] 38 C.P.R. (4th) 481 (F.C.A.), summarized at 96 TMR 323 (2006). 185. [2004] 31 C.P.R. (4th) 12 (F.C.T.D.), summarized at 95 TMR 318 (2005). Vol. 97 TMR 385 and (5) considered the Registrar’s finding of confusion in an earlier opposition involving the same parties and marks, and the weight it should have received. In the words of the Court of Appeal: “The legal system is not a stranger to different outcomes arising out of the same factual situation where different issues are at stake and different evidence is introduced.” In Tradition, at issue was Oshawa’s right to use TRADITION MARKET FRESH FOODS and LES MARCHÉS TRADITION for retail stores dealing in food products, including baked goods, which Tradition was alleging infringed its TRADITION registrations covering frozen and unbaked baked goods. The Federal Court had rejected Tradition’s accusations, noting that (1) Oshawa’s grocery stores sold a “vast array” of food products; (2) Oshawa did not use its marks specifically in relation to bakery products; and (3) While in-store bakeries were an important part of Oshawa’s stores, that in itself was “certainly not enough to show infringement.” The Federal Court of Appeal endorsed the Trial Judge’s rejection of Tradition’s Section 19 infringement claim on the basis that Oshawa was not using the identical mark as that covered by Tradition’s registration. The Trial Judge considered the hypothetical situation in which Tradition’s products would be sold in Oshawa’s stores and rejected the argument because of the nature of Tradition’s business (i.e., it was highly unlikely that Tradition’s goods would be sold in Oshawa’s stores). The appeal court also rejected Tradition’s argument that the Trial Judge erred in: (1) minimizing the weight of Tradition’s expert’s evidence given that Oshawa did not produce a survey or an expert of its own; and (2) substituting his opinion of the efficacy of control conditions for those of the expert who conducted the survey. “A judge is not bound by expert evidence and legally has the power to make the final determination. He is not substituting his views for those of the expert, but rather appreciating the evidence submitted by the expert.” The Trial Judge was also correct in stating that the existence of misdirected phone calls may be relevant within the overall test for likelihood of confusion, but it did not amount to evidence of actual confusion. The Court of Appeal agreed that the hypothetical possibility that some confusion could arise if TRADITION products were sold in Oshawa’s stores was not enough to justify a finding of likelihood of confusion, given the nature of Tradition’s business. III.B.1. Passing Off Summary judgment in not appropriate when the meaning of Chinese characters and their status as generic terms are: (1) the principal issue; and (2) the subject of conflicting expert evidence: 386 Vol. 97 TMR Yee Hong Centre for Geriatric Care v. Grace Christian Chapel.186 Yee Hong owned registrations for the use of YEE HONG and the design shown at right below, which featured the Chinese characters for “yee” and “hong” (shown enlarged at left below) in association with inter alia nursing home services: Grace, a non-profit society that managed nursing homes, advertised its nursing homes in a Chinese newspaper using the same Chinese characters. When Yee Hong applied for summary judgment of its infringement and passing off actions, Chapel argued that the characters were generic with reference to rest homes and nursing homes in that they communicated the idea of rest home services without using the character for “old,” which carried a negative connotation. The parties tendered conflicting evidence with respect to the meaning of the characters and the manner in which they would be sounded. The Court noted that the status of the words “yee hong” was a critical question touching upon the issues of both distinctiveness and confusion. The resolution of these questions in Yee Hong’s favor was said to be “essential” for its passing-off action to succeed. This conflicting evidence should be resolved only upon the submission of a full evidentiary record at trial (i.e. not on a summary judgment application). III.C. Injunctions and Damages The calculation of damages in a passing-off action where no actual monetary loss had been proven was considered in Edward Chapman Ladies' Shop Ltd. v. Edward Chapman Ltd.187 The defendant, who had a reputation in the men’s clothing business, was using the plaintiff’s reputable name for women’s wear in association with its own new competing women’s wear line. The defendant argued that damages should be nominal because no actual monetary loss had been proven. The plaintiff contended that damages should be assessed in the $10,000 to$50,000 range. In such cases, damages should be a sum that the Court considers 186. [2006] 50 C.P.R. (4th) 165 (F.C.). 187. [2006] 49 C.P.R. (4th) 39 (B.C.S.C.). Vol. 97 TMR 387 “proper and reasonable” in light of the particular circumstances of the case. In assessing damages at $20,000, the Court considered the following factors: (1) defendant began passing off in 2002 and continued until trial 4 years later; (2) the defendant deliberately decided to transition to the plaintiff’s mark, primarily to make use of the established goodwill in order to attract new customers; (3) several knowledgeable people were confused, and if the expert customer was deceived, the probability that the ordinary member of the public would be deceived was that much stronger; (4) the plaintiff's women's wear business was well known to the public; and (5) by adopting the offending mark, the defendant blurred and confused the distinction between its goods and those of the plaintiff. In BMW Canada Inc. v. Nissan Canada Inc. 188 BMW endeavored to enforce its M series of marks in a trademark infringement and depreciation-of-goodwill action against Nissan. BMW aimed to stop Nissan’s campaign featuring advertisements such as “the M is coming,” a giant “M” and small Nissan logo, which BMW argued would create the impression in the minds of car aficionados and purchasers of luxury cars that there was some connection between Nissan's luxury cars and BMW's M sub-brand, thereby deteriorating the cachet of the M sub-brand. BMW was of the view that: (1) the cachet of the “M” sub-brand would suffer if it became associated with the allegedly inferior and more modestly priced Infiniti cars; (2) such deterioration could not be measured because BMW’s cachet had not been measured prior to Nissan launching its campaign; (3) any present measurement would reflect deterioration that had already occurred; (4) any attempt to establish an initial baseline measure of the cachet now by surveying only persons unaware of the Nissan campaign would result in an unrepresentative (and therefore unreliable) sample; and (5) BMW would lose control of its mark unless an interlocutory injunction were granted. The Federal Court dismissed BMW’s application for an interlocutory injunction (temporary restraining order) because BMW could not demonstrate it would suffer irreparable harm if Nissan’s campaign were not halted. BMW’s arguments were described as “not terribly persuasive” and its evidence was “not even speculative.” BMW produced no evidence of damage to its cachet (or brand equity). There had been no decrease in sales of BMW’s M cars, and it produced no survey evidence regarding its cachet, (either before or after the commencement of Nissan's campaign) notwithstanding that one of its witnesses testified that 188. [2005] 46 C.P.R. (4th) 62 (F.C.). 388 Vol. 97 TMR BMW conducted sales surveys all the time. BMW's own marketing expert even admitted that loss of brand equity could be reversed by new marketing campaigns. While BMW firmly believed that impairment of its brand equity was occurring, it could offer no actual proof or indicator. Rather, it was asking the Court to infer such harm, which it was not prepared to do. III.F.5. Cancellation When a junior user depicts an inherently non-distinctive mark in the same style of lettering as does the senior user, an otherwise unobjectionable use may result in confusion: Vibe Ventures LLC v. 3681441 Canada Inc.189 In its application to cancel 3681441’s registration (issued in 2001 based on a 1998 application) for VIBE DESIGN (depicted below) in association with men's, women's and children's clothing, Vibe alleged that: (1) 3681441’s VIBE DESIGN mark was not registrable on the ground that it was confusing with Vibe’s registration (issued in 2000, based on a 1996 application) for the VIBE word mark in association with a general interest magazine relating to music, fashion, urban culture and entertainment; and (2) 3681441 was not entitled to register the VIBE DESIGN considering Vibe’s previous use of the identical design mark190 (and VIBE word mark) in association with magazines: The Court made the following findings of fact: (1) Using the VIBE script (shown above) since its 1992 launch by well-known music icon Quincy Jones, Vibe’s general interest magazine relating to music, fashion, urban culture and entertainment had annual Canadian newsstand circulation of approximately 60,000 copies; (2) While Vibe did not sell its own line of clothing, fashion accounted for some 30% to 40% of advertisements in Vibe’s magazine, the majority of which was for ready-to-wear clothing, including jeans, placed by various well-known names such as PERRY ELLIS, CALVIN KLEIN, LOUIS VUITTON, LEVI'S, and BABY PHAT; (3) The VIBE script (above) had been used on: (a) various promotional and merchandising articles such as T-shirts, 189. [2005] 45 C.P.R. (4th) 17 (F.C.). 190. Some three weeks after this decision was rendered, Vibe filed Application No. 1284250 to register the VIBE DESIGN mark for magazines. Vibe has also opposed 3681441’s Application No. 1220040 for registration of the VIBE word mark in association with clothing, in which 3681441claims use since 1997. Vol. 97 TMR 389 caps, sweatshirts and messenger bags, which had been offered to subscribers by way of inserts in the Vibe magazine; (b) Vibe’s website; and (c) Vibe-sponsored television shows, called “Vibe” (available in Canada on across-the-border stations as well as on a local Toronto station), “Weekend Vibe” (available on cable television) and the annual “Vibe music Awards”; (4) 3681441’s secretary/director—a Vibe magazine subscriber—denied Vibe magazine was a source of inspiration for the VIBE DESIGN, though 3681441’s predecessor had placed three advertisements in 1997 issues of Vibe magazine; (5) Vibe magazine was the “voice and soul of urban music culture,” a “lifestyle resulting from urban music incorporating fashion, language, ideology, dance and the arts.” The Court dismissed Vibe’s assertion that 3681441’s mark was not registrable, noting that when 3681441 filed its application in 1996, Vibe’s word mark registration had not yet issued.191 Having concluded that there was “nothing inherently distinctive in the word “vibe”—which “was not so unique as to lend itself exclusively to a particular culture, a particular age group, particular wares such as magazines, clothing or automobiles, or services”—the Court sided with 3681441 on the issue of its entitlement to register VIBE DESIGN in the face of Vibe’s prior use of the VIBE word mark. However, the likely marketplace confusion arising out of the prior use of Vibe’s graphical rendering of VIBE did disentitle 3681441 to register that mark for articles of clothing, especially considering: (1) both parties’ products were “aimed at the same youthful clientele”; (2) while not famous, Vibe’s script was “known to a significant number of young consumers”; and (3) 3681441’s design was identical to that of Vibe. In ordering the cancellation of 3681441’s registration, the Court declared that “one cannot use an identical script when targeting a specific clientele, even though one party's wares are sold at newsstands and the other's in stores.” Whether a mark has become non-distinctiveness as a result of a third party’s use of a confusingly similar mark is a question of fact, to be determined on a case-by-case basis: Auld Phillips Ltd. v. Suzanne’s Inc.192 The Federal Court of Appeal affirmed the Federal Court’s finding that the widespread use of the SUZANNE’S mark by junior user Auld resulted in a loss of distinctiveness of the same mark, which Suzanne’s (senior user) had registered for retail 191. As an aside, under current Canadian practice—in place since the decision in Effigi Inc. v. Attorney General of Canada [[2005] 41 C.P.R. (4th) 1 (F.C.A.), aff’g [2004] 35 C.P.R. (4th) 307 (F.C.), summarized at 96 TMR 312-14 (2006)]―had the Registrar considered 3681441’s apparel mark to be confusingly similar to Vibe’s word mark (the subject of a previously filed application), 3681441’s application would not have been allowed to proceed to publication. 192. [2005] 46 C.P.R. (4th) 81 (F.C.A.), aff’g [2005] 39 C.P.R. (4th) 45 (F.C.), summarized at 96 TMR 327 (2006). 390 Vol. 97 TMR clothing store services based on use since 1984. Auld’s first SUZANNE’S clothing store opened after 1984, and by the mid1990's, Auld was using the name extensively on ladies' apparel stores in southwestern British Columbia. By 1999, the stores were widespread in smaller urban centers in the province. When Suzanne’s applied to register the mark, five stores had been opened in Alberta, with another opening its doors before these proceedings were commenced. Until it received Suzanne’s cease and desist letter in 2002, Auld was unaware of Suzanne’s similarly branded stores. Suzanne’s trademark registration for SUZANNE’S issued in 2003. In deciding that Auld’s use of the SUZANNE’S mark was so extensive that the mark could not be distinctive of Suzanne’s, the Federal Court had relied upon the evidence of actual confusion. The Federal Court of Appeal agreed that Suzanne’s registration should be cancelled. There was “ample evidence” to support the Trial Judge's conclusion that confusion was widespread and of sufficient duration to cause Suzanne’s mark to lose its distinctiveness. There was no general principle that a single infringer’s use could not cause a loss of distinctiveness. “No full or exhaustive definition can be given of the circumstances which will make a word or mark publici juris, and each case must depend on its own facts. Obviously, it will be a rare occurrence when one party is in a position to cause a mark to lose its distinctiveness, but nothing in principle prevents this result.” III.F.6. Dilution After decades of low activity, a recent flurry of decisions has dramatically accelerated the pace of development of Canada’s dilution laws, which are founded on Section 22(1).193 While Canada still lags behind the United States, the gap has significantly narrowed in the last two years. This year’s seminal decision in Clicquot—in which the Supreme Court of Canada fleshed out many unexplored aspects of the depreciation of goodwill cause of action—seems destined to overshadow the rather superficial treatment afforded Section 22 in last year’s decisions in A&W Food Services of Canada Inc. v. McDonald’s Restaurants of Canada Ltd.,194 Tommy Hilfiger Licensing Inc. v. Produits de Qualité I.M.D. Inc.195 and ITV Technologies, Inc. v. WIC Television Ltd.196 193. Section 22(1) provides: “No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.” See also Kevin Sartorio & R. Scott Jolliffe, The Rebirth of Section 22 of Canada’s Trade-marks Act as an Anti-Dilution Remedy, 96 TMR 1020 (2006). 194. [2005] 40 C.P.R. (4th) 126 (F.C.), summarized at 96 TMR 331 (2006). 195. [2005] 37 C.P.R. (4th) 1 (F.C.), summarized at 96 TMR 331-32 (2006). 196. [2005] 38 C.P.R. (4th) 481 (F.C.A.), summarized at 96 TMR 330-31 (2006). Vol. 97 TMR 391 A more thorough analysis took place in last year’s Remo Imports Ltd. v. Jaguar Cars Ltd.,197 the appeal of which is expected to be argued before the Federal Court of Appeal in 2008. In Clicquot,198 the Supreme Court of Canada affirmed the lower courts’ dismissal of Veuve’s claim that Boutique had not violated Section 22 because Veuve failed to establish that: (1) upon seeing Boutiques’ use of the word CLIQUOT, a mental association with Veuve’s mark would be evoked in a relevant universe of consumers; and (2) depreciation of the goodwill in Veuve’s mark was the likely consequence of Boutiques’ use of CLIQUOT. There was nothing in the evidentiary record from which likelihood of depreciation could be inferred. Absent such evidence, the Court would not assume same whenever a luxury mark is used on lower quality goods. The Court’s other important findings and comments are as follows: 1. Because Veuve had treated its Section 22 claim “as something of a poor cousin,” it was not the subject of much evidence at trial. Only before the Supreme Court did Section 22 come to the fore, in part due to the intervention of the International Trademarks Association.199 2. Section 22 has four elements: (1) a claimant’s registered mark is used by the defendant in connection with goods or services—whether or not competitive with those of the claimant; (2) the claimant’s registered mark is sufficiently well known to have significant goodwill attached to it; (3) the claimant’s mark is used in a manner likely to have an effect on that goodwill (i.e., linkage); and (4) the likely effect would be to depreciate the value of the mark’s goodwill (i.e., damage). 3. While “fame” is not a requirement of Section 22, that would be relevant to the existence of goodwill capable of depreciation by a “non-confusing” use (as here), as would more general factors such as: (a) the degree of recognition of the mark within the relevant universe of consumers; (b) the volume of sales and the depth of market penetration of products associated with the claimant’s mark; (c) the extent and duration of advertising and publicity accorded 197. [2006] 47 C.P.R. (4th) 1 (F.C.), summarized at 96 TMR 332 (2006), appeal to the Federal Court of Appeal filed (Court File No. A-06, 2006). 198. For a discussion of the facts and confusion issues, see III.A.1. Famous Marks. See also Sartorio & Jolliffe, supra note 64. 199. 70. R. Scott Joliffe and Kevin Sartorio, Amicus Letter of the International Trademark Association in Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Les Boutiques Cliquot Ltee, Mademoiselle Charmante Inc. and 3017320 Canada Inc., 95 TMR 919 (2005). 392 Vol. 97 TMR 4. 5. the claimant’s mark; (e) the geographic reach of the claimant’s mark and its degree of inherent or acquired distinctiveness; (f) whether products associated with the claimant’s mark are confined to a narrow or specialized channel of trade or move in multiple channels; and (g) the extent to which the mark is identified with a particular quality. Nothing in Section 22 requires a demonstration that use of both marks in the same geographic area would likely lead to confusion. The Court identified four forms of goodwill depreciation that could fall within Section 22: disparagement; reduced distinctiveness (dilution, taking a valuable asset); blurring; and tarnishment. III.G. Post-Registration Evidence of Use and Renewals At issue in Marks & Clerk v. Sparkles Photo Limited200 was the significance of modifications to a trademark required by a government official in the context of a summary non-use challenge pursuant to Section 45. In 1999, Marks & Clerk requested that the Registrar require Sparkles to show whether its mark depicted (at left below) had been used in Canada at any time within the preceding three-year period for the services listed in the registration, namely the distribution and sale of packaged nuts, dried fruits, candies and potato chips: Mark As Registered Mark As Used Since 1995 The Registrar had accepted Sparkles’ evidence that in 1994, a Federal Ministry of Agriculture representative (1) told Sparkles that its use of the 11-point maple leaf was prohibited because it would leave the false impression that the nuts were Canadian products (which they were not); and (2) asked Sparkles to add the abbreviation “Co.” after the words “Nature's Choice” to avoid creating the impression that all the products were naturally occurring (which was also not the case). Accordingly, in early 1995, Sparkles introduced the packaging depicted at right above, which it continued to use until the present. 200. [2005] 41 C.P.R. (4th) 236 (F.C.). Vol. 97 TMR 393 Comparing the mark as registered and the revised design employed after 1995, the Registrar had concluded that the essential and distinctive elements of the mark had not been modified. On this basis, the Registrar had declined to cancel the registration. The Registrar had also found that: (1) the 11-point maple leaf was not a distinctive element of the design and its removal would not deceive or injure the public in any way; and (2) it would be unfair to take away Sparkles’ rights where it had endeavored to comply with requests made by a government official. Marks & Clerk appealed. Because no new evidence was filed on appeal, the Federal Court applied a standard of review of reasonableness simpliciter. The Court rejected Marks & Clerk’s submission that Sparkles’ affidavit evidence was unreliable: “the description of the intervention by a government official and the firm's response to it [was] clear and unambiguous. Apart from that intervention, there was no reason for [Sparkles] to change its packaging and use of the mark. They did so solely because they were told by that official that the mark as registered did not conform to federal law and would mislead consumers as to the source of the wares.” The Court believed it was open to the Registrar to accept this explanation and that the Registrar’s reasons for so doing stood up to “a somewhat probing examination.” The Registrar correctly concluded that the dominant features of the mark were the words “Nature's Choice” in the font and arrangement that the company continued to use. The maple leaf was not a predominant element of the design, nor was the addition of “Co.” The Federal Court of Appeal's decision in Ridout & Maybee LLP v. Omega SA201 is a reminder that the validity of a trademark registration is not in issue in Section 45 proceedings. In overturning the Registrar’s decision, the Federal Court ordered202 that certain goods and the general class containing them be canceled from Omega’s registration for OMEGA & Design for products for keeping time and accessories therefor.203 The Federal Court had determined that while Omega had sold goods that were 201. [2005] 43 C.P.R. (4th) 18 (F.C.A.). 202. [2004] 39 C.P.R. (4th) 261 (F.C.). 203. The complete statement of services provided (translated): “watches and boxes for watches; small pendulums, apparatuses or instruments to measure and mark time, watch chains, tools and accessories including supplies and parts used in the timekeeping and jewelry industries; cases and packing, namely, containers in the form of fabric covers and boxes; meters and chronographs used for sports timing; technical and scientific apparatus for electricity, optics, telegraphy, cinema, radio, telephony, telegraphy, namely the photoelectric cells, gates, wire-cutters, chronometers with acoustic signals, film and paper tape recording meters, apparatus for releasing multiple to meters or chronographs, wireless apparatus for the transmission of impulses, starting guns with electrical contacts, apparatus for filming the passage of time.” 394 Vol. 97 TMR for use in the sports timing industry, the registration also enumerated other kinds of goods of scientific or technical application, which performed different functions.204 On this basis, the Federal Court determined that it did not follow that any of the sold goods could serve as representatives of the broader class of scientific and technical applications specifically identified in the registration. The Federal Court of Appeal disagreed with the Federal Court and reinstated the Registrar’s decision maintaining Omega’s registration in its entirety. The Court of Appeal declared that the Registrar was entitled to refuse to become involved in analyzing the wording of the registration and the general class to which certain specifically identified goods was associated. In deciding to cancel the goods and the general class in question, the Federal Court undertook such an analysis, which lay beyond the scope of Section 45 and the jurisdiction of the Registrar. The Federal Court judge only had to find that Omega’s mark was being used in regard to property specified under the general class. Whether the wording of the registration accurately expressed or defined Omega’s rights was not in issue. Because there was evidence of the use of the mark, the appeal was allowed and the decision of the Federal Court was set aside. In Spirits International N.V. v. Registrar,205 Spirits—the Netherlands Antilles-based owner of the STOLICHNAYA family of marks—appealed the Registrar’s decision to maintain Romaniabased SC Prodal’s 1998 registration for use of the trademark STOLICHNAYA in association with vodka. In response to the Registrar's Section 45 notice, SC Prodal stated that: (1) it had never used STOLICHNAYA in Canada, but claimed such nonuse was excused by special circumstances; (2) SC Prodal was advised by the marketing agency it hired and by the Québec provincial liquor licensing authority that an ISO 9001 certification and attractive packaging were required to sell its products in Canada; (3) the 2-½-year delay caused by seeking an ISO 9001 certification had prevented SC Prodal from entering the Canadian market; (4) the requirement for a more attractively designed label for the product was an impediment; and (5) SC Prodal had begun to arrange for the distribution of its products in Canada, including commencing procedures for registration with the Québec licensing authorities, as evidenced by an incomplete SAQ application form for authorization to sell vodka as a gift presentation. 204. Namely (translated): “electricity, optics, telegraphy, cinema, radio, telephony, telegraphy.” 205. [2006] 49 C.P.R. (4th) 196 (F.C.), aff’g [2005] 42 C.P.R. (4th) 279 (Registrar), appeal to the Federal Court of Appeal filed (Court File No. A-248-06, May 26, 2006). Vol. 97 TMR 395 On the basis of this evidence, the Registrar had initially maintained the registration considering that the nonuse of the mark was excused by special circumstances. Because Spirits did but did not file any new evidence on appeal, the standard of review was reasonableness simpliciter. In deciding whether the Registrar was justified in finding special circumstances that would excuse SC Prodal’s non-use of the mark, the Federal Court stated that Section 45: (1) was intended to be a simple, summary and expeditious procedure for cleaning up the Register of trademarks that had fallen into disuse; (2) was designed to clear the dead wood from the Register, not to resolve issues in contention between competing commercial interests, which should be resolved in cancellation proceedings under Section 57; (3) did not contemplate a determination on the issue of abandonment, but was merely a summary procedure whereby the registered owner of a mark was required to provide either some evidence of use in Canada or evidence of special circumstances that excuse the absence of use; (4) directed an inquiry as to whether the mark was in use in Canada at any time during the relevant period; (5) revealed more than a bald assertion of use, but nevertheless affidavit materials need only supply facts from which, on balance, a conclusion of use may follow as a logical inference; and (6) imposed a “relatively low” burden of proof. In this case, the Registrar was satisfied that SC Prodal had met that burden and the Federal Court saw no reason to interfere with that conclusion. “Special circumstances” do not have to apply to all businesses in the same position as the registrant. The Registrar was entitled to find that the ISO 9001 certification requirement was the result of external forces and not a voluntary decision made by SC Prodal. It was reasonable to conclude that a vodka distiller from an emerging nation would be unfamiliar with Canadian alcohol distribution requirements and would rely on marketing advice from a local firm with regard to product quality and promotional standards. The belief that ISO certification was a prerequisite was not unreasonable, even in the absence of direct evidence that it was necessary. In Flanders Fillers v. Trade-mark Reflections Ltd.,206 Flanders appealed the Registrar’s decision to cancel its subsidiary’s AIRPURE registration for high-efficiency air filters for industrial and commercial use, in particular, the finding that the mark was associated with such goods at the time of their transfer, as required by Section 4(1).207 206. [2006] 48 C.P.R. (4th) 269 (F.C.), rev’g [2005] 48 C.P.R. (4th) 153 (Registrar). 207. Section 4(1) provides: “A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are 396 Vol. 97 TMR On appeal, Flanders filed supplemental evidence that: (1) the registered owner of the registration was a subsidiary of Flanders; (2) another subsidiary of Flanders was authorized by the registered owner to manufacture and package air filters in connection with the mark for resale to retailers or distributors; (3) Flanders was authorized by the registered owner to prepare corresponding promotional and other materials bearing the mark to be distributed by the registered owner and its other subsidiary; (4) Flanders routinely supervised the packaging of products; and (5) an excerpt from a product catalogue and labels that were applied to the registered goods bore the mark and identified the filter as being manufactured by the registered owner. The registration was maintained based on this fresh evidence. In the Federal Court’s view, the totality of the evidence established that: (1) During the calendar years 1999-2002 inclusive, there were sold in Canada at least 100,000 highefficiency air filters for industrial and commercial use manufactured by the other subsidiary pursuant to authority given by Flanders; and (2) Each unit was packaged with a label that displayed both the AIRPURE trademark and the name of the registered owner, which was stated to be the manufacturer. The filters themselves either bore the mark or had a label attached to the filter that bore the mark. The Federal Court found that such evidence was sufficient to establish use in Canada within the relevant three-year. Accordingly, the appeal was allowed. In 1147015 Ontario Ltd. v. Réno-Dépot Inc.,208 the Registrar’s decision to cancel Réno-Dépot’s registration for BASEMENT BOSS for the provision of construction and repair services to residential homeowners and commercial customers was overturned by the Federal Court on the basis that Réno-Dépot had not received the Registrar’s original Section 45 Notice, and was not aware that the registration had been cancelled until 18 months later. The Federal Court exercised the authority granted to it pursuant to Section 56(1)209 and extended the time for filing the appeal until the date when Réno-Dépot actually filed its appeal. Based on the evidence of the use submitted by Réno-Dépot, the appeal was allowed and its registration reinstated. distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.” 208. [2006] 47 C.P.R. (4th) 412 (F.C.). 209. Section 56(1) provides: “An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.” Vol. 97 TMR 397 V.A. Domain Names The tests for determining the legitimacy of a dot-ca domain name owner’s interests, and whether such a registration was obtained in bad faith under the Canadian Internet Registration Authority (CIRA) Domain Name Dispute Resolution Policy was the subject of considerable discussion in House of Blues Brands Corp. v. Artbravo Inc.210 U.S.-based House of Blues was the registered owner of several Canadian registrations for trademarks composed of HOUSE OF BLUES, and the former owner of the registration for the houseofblues.ca domain name. When House of Blues failed to renew the latter, Artbravo registered the name. According to Section 3.1 of the CIRA Policy, a successful complainant must comply with the Canadian presence requirements, and must establish that: (1) the dot-ca domain name is confusingly similar to a mark in which it had rights; (2) the domain name owner has no legitimate interest211 in the name; and (3) the domain name was registered in bad faith.212 Five days after House of Blues commenced the CIRA proceedings, Artbravo applied to register HOUSEOFBLUES.CA in Canada as a trademark for a nonprofit, for-information-only online art gallery dedicated solely to Pablo Picasso's blue period from 1901 to 1904. On the issue of Artbravo’s legitimate interest in the domain name, the Panel rejected Artbravo’s contention that its use of the domain name fell within Section 3.6(d)213 of the CIRA Policy (specifically, the noncommercial criticism and review of the work of Pablo Picasso). Instead, the Panel found that Artbravo was using the domain name as part of a revenue-generating business conducted by redirecting the contested domain name (as part of a multitude of domain names) to a third-party website expressly referring especially to music generally and to blues music particularly, and at which referral fees were to be generated. The parties’ arguments on the issue of bad faith mirrored these submissions on legitimate interest. The Panel found bad faith under Sections 3.7(b) and 3.7(c) of the Policy,214 namely that 210. [2006] 48 C.P.R. (4th) 363 (C.I.R.A.). 211. Exhaustively defined in Section 3.6 of the CIRA Policy. 212. Exhaustively defined in Section 3.7 of the CIRA Policy. 213. Section 3.6(d) of the CIRA Policy provides: “The Registrant has a legitimate interest in a domain name if, and only if, before the receipt by the Registrant of notice from or on behalf of the Complainant that a Complaint was submitted . . . the Registrant used the domain name in Canada in good faith in association with a non-commercial activity[,] including, without limitation, criticism, review or news reporting.” 214. Section 3.7 of the CIRA Policy provides, in part: “For the purposes of paragraph 3.1(c), a Registrant will be considered to have registered a domain name in bad faith if, and only if: . . . (b) the Registrant registered the domain name or acquired the Registration in order to prevent the Complainant, or the Complainant’s licensor or licensee of the 398 Vol. 97 TMR Artbravo had registered the domain name for the purpose of (1) disrupting the business of House of Blues and (2) preventing House of Blues from registering the mark HOUSE OF BLUES as the contested domain name and had engaged in a pattern of registering domain names in order to prevent persons who have rights in marks from registering the marks as domain names. The Panel ordered that the registration for the domain name be transferred to House of Blues, despite the wording of Section 2(q)215 of the Canadian Presence Requirements for Registrants, pursuant to which a non-Canadian entity may own a registration for a dot-ca domain name registration, provided the domain name consists of or includes the exact word component of the foreign entity’s Canadian trademark registration. According to the majority of the Panel, Section 2(q) should either be read out or be read such that it related only to the limitation of the trademark owner being able to apply for a dot-ca domain name (i.e., did not qualify the owner’s right to both bring a complaint and own a dotca domain name in the foreign owner’s name). A minority of the Panel would have required the houseofblues.ca domain name to have been transferred to House of Blues’ nominee. CHILE I.B.1. Generic Names For the past 30 years, the trademark NAPOLITANO had been afforded registration for goods in International Classes 29 and 30. Notwithstanding that history, the Head of the Department of Industrial Property surprisingly rejected the trademark owner’s application for re-registration of its mark and accepted an opposition based on the claim that NAPOLITANO was a generic term for the goods in question. Mark, from registering the Mark as a domain name, provided that the Registrant, alone or in concert with one or more additional persons[,] has engaged in a pattern of registering domain names in order to prevent persons who have Rights in Marks from registering the Marks as domain names; or (c) the Registrant registered the domain name or acquired the Registration primarily for the purpose of disrupting the business of the Complainant, or the Complainant’s licensor or licensee of the Mark, who is a competitor of the Registrant.” 215. Section 2(q) of the CIRA Canadian Presence Requirements for Registrants (Version 1.3) provides: “On and after November 8, 2000 only the following individuals and entities will be permitted to apply to CIRA (through a CIRA certified registrar) for the registration of, and to hold and maintain the registration of, a .ca domain name: . . . [a] Person which does not meet any of the foregoing conditions, but which is the owner of a trade-mark which is the subject of a registration under the Trade-marks Act as amended from time to time, but in this case such permission is limited to an application to register a .ca domain name consisting of or including the exact word component of that registered trade-mark. . . .” (Citations omitted.) Vol. 97 TMR 399 What had happened was that, owing to a mishap, Lucchetti Chile S.A. did not renew its trademark NAPOLITANO within the legal term and the registration therefore lapsed. Consequently, the owner refiled for registration of the same mark in the same classes. During the preliminary examination, the Department of Industrial Property found no reasons for rejection; however, when Empresas Carozzi S.A. filed an opposition, claiming that NAPOLITANO was generic with respect to the applied-for goods, the Department, contrary to its previous determinations, ruled in favor of the opponent.216 This decision shows how volatile the intellectual property authority’s understanding of terms such as generic, descriptive, distinctive, novel, and other adjectives can be. In the absence of uniform jurisprudence clarifying what should be understood by those terms, examiners’ decisions are completely subjective. As a result, 30-year-old trademarks are exposed to the possibility of becoming unregistrable. The decision confirms that, under Chilean legal practice, an almost complete lack of importance is accorded prior registration or use of a trademark once its registration has lapsed, and that use does not confer any rights on a trademark holder: a trademark owner has exclusive and excluding rights to its mark only once the mark is registered. The case currently is pending before the Court of Appeals. I.B.3. Not Merely Descriptive Terms Ms. Marcela Beatriz Arancibia Barrios applied for registration of the trademarks SPACCHETTI, FETUCHETTI, ESPIRALETTI, and RIGACCHETTI, all covering goods in International Class 30. Empresas Carozzi S.A. filed an opposition against each of the above-mentioned trademarks on the ground that the marks in question were generic terms because they corresponded to different types of pasta, namely spaghetti, fetuccini, spirals (espirales in Spanish), and rigatoni. The opponent claimed that the differences between the applied-for marks and the descriptive terms for the pastas were so minuscule that it was impossible not to conclude that the consumer, when confronted with one of the marks, would be induced to think only of that specific type of pasta. The Head of the Department of Industrial Property rejected all the oppositions, finding that the marks at issue were, at the most, evocative—that is, the sort that might subtly or indirectly bring to mind a certain good—but that they were not generic terms, or general terms used to refer to pastas, and could not be considered 216. Lucchetti Chile S.A. v. Empresas Carozzi S.A., Head, Department of Industrial Property, Decision No. 136340, April 13, 2006. 400 Vol. 97 TMR descriptive or indicative of the goods in question. On the contrary, each mark possessed sufficient novelty to afford registration.217 The National Association of Realtors filed a trademark application for REALTOR, to cover services in Classes 36, 38, and 42. An opposition was filed by Mr. Andres David Paz Daniels, on the ground that the mark in question was a generic term that meant “real estate agent.” The Head of the Department of Industrial Property rejected the opposition, finding that the trademark was neither generic, descriptive, nor indicative of the services referred to, and that it possessed sufficient novelty to afford registration.218 Moreover, the Head of the Department cited a previous ruling issued by the Department in which the National Association of Realtors was recognized as the creator and owner of the trademark REALTOR.219 Mr. Daniels filed an appeal against the rejection and proceeded to apply for registration of the trademark GROUPREALTOR, for services in Classes 35, 36, and 42.220 The obvious response of the National Association of Realtors was to lodge an opposition against Mr. Daniels’ application, on the ground that the mark in question was identical to the Association’s trademark. The Head of the Department of Industrial Property, concurring with his previous decision, ruled in favor of the National Association of Realtors and rejected Mr. Daniels’ trademark application.221 Again, Mr. Daniels appealed the ruling. He argued that REALTOR was a general term used to refer to real estate agents in all English-speaking countries.222 The National Association of Realtors filed as evidence numerous trademark registrations dating back to the 1950s, plus a series of litigation successes in which it had demonstrated that REALTOR was a coined word created by the Association. In 217. Marcela Beatriz Arancibia Berrios v. Empresas Carozzi S.A., Head, Department of Industrial Property, Decision No. 134326, September 9, 2005; Decision No. 134578, September 23, 2005; Decision No. 134854, October 14, 2005; Decision No. 136488, May 5, 2006. 218. National Association of Realtors v. Andres David Paz Daniels, Head, Department of Industrial Property, Decision No. 116901, May 17, 2002. 219. Ricardo Senerman Volochinsky v. National Association of Realtors, Head, Department of Industrial Property, Decision No. 57548, July 5, 1990. 220. Appeal No. 1034-2002, filed June 11, 2002. 221. National Association of Realtors v. Andres David Paz Daniels, Head, Department of Industrial Property, Decision Nos. 117216, 117217, and 117218, May 31, 2002. 222. Appeal Nos. 1066-2002, 1067-2002, and 1089-2002, filed June 21, 2002. Vol. 97 TMR 401 addition, it filed copies of dictionaries in which the term was defined and acknowledged as a trademark. Notwithstanding such evidence, the Industrial Property Tribunal, second instance court, agreed with the appellant. It held, first, that when applying for the registration of a foreign term, one must provide a translation of the same in Spanish, which in this case had been omitted; had the applicant complied, it would undoubtedly have had to translate the term into its equivalent in Spanish—in other words, the Spanish expression for “real estate agent.” In this respect, and consequently in disregard of the previous rulings of the Department of Industrial Property, which had recognized more than once the status of owner and creator of the trademark REALTOR, the Court partially reversed the prior rulings and granted Mr. Daniels’ trademark application in all the requested classes save Class 36. The Court of Appeals considered that the term REALTOR was not a coined word but a generic word synonymous with real estate agent, and in common use in the English language. Therefore, as such, any individual could register the term in any class except Class 36, in which it was considered generic and descriptive of the services provided.223 Consequently, the trademark REALTOR was granted registration for services in Classes 38 and 42 and the trademark GROUPREALTOR was granted registration for goods in Classes 35 and 42. The National Association of Realtors proceeded to file a complaint before the Chilean Supreme Court against the court that rejected its trademark application, on the grounds that the decision issued was a clear misinterpretation of the law and that the evidence rendered was not taken into consideration.224 The Supreme Court rejected the Association’s recourse. It held that the case history did not lead to the conclusion that in its ruling the court had engaged in conduct contrary to the law that would need to be corrected by means of the Supreme Court’s disciplinary powers. I.B.8.a. Similarity of Marks Armazones y Lentes Ltda. filed a trademark application for NO FEAR, covering all goods in International Class 9. No Fear Inc. lodged an opposition against such registration based on its trademark NO FEAR, registered both in Chile for goods in Class 25 and in other foreign countries for wears in Class 9. 223. National Association of Realtors v. Andres David Paz Daniels, Industrial Property Tribunal, Ruling Nos. 1066-2002, 1067-2002, and 1089-2002, November 24, 2005. 224. Supreme Court, Decision No. 6201-05, March 14, 2006. 402 Vol. 97 TMR The Head of the Department of Industrial Property ruled in favor of the opponent, finding that the trademarks in conflict were identical and that consequently they would be unable to coexist in the market. Moreover, the Head of the Department found that the trademarks were not only identical but also interconnected, given that the goods in Class 9 include optical artifacts, such as eyeglasses, lenses, and sunglasses, that pertain to the clothing genre, which is closely related to the goods included in Class 25. Since the applied-for mark did not differentiate itself from the opponent’s registered trademark, it would undoubtedly be misleading, especially with respect to the origin, quality, or genre of the goods and services on or in connection with which it was to be used.225 I.B.12. Famous Marks The firm Transportes Piolin Limitada filed a trademark application for PIOLIN, to cover load and passenger transport services in general, storage services, and courier or private mailing services in International Class 39, and goods in Classes 25, 29, and 30. Warner Bros. Entertainment Inc. filed an opposition on the grounds that the mark in question was identical to its registered trademark PIOLIN, covering all goods in Classes 29 and 30, and similar to its registered trademark TWEETY/PIOLIN, covering all goods in Class 25. (Warner Bros. does not own any trademark registrations for PIOLIN or TWEETY/PIOLIN covering services in Class 39.) Warner Bros. argued that its mark PIOLIN, which is the Spanish name for the company’s famous cartoon character TWEETY, was a well-known trademark that through association with the character had gained worldwide fame and notoriety and therefore transcended the international classification system. The company claimed that the applied-for mark was misleading and deceitful and would induce consumers, especially children, to confusion by associating the mark with Warner Bros., the owner of the trademark PIOLIN. In addition, it argued that applying for a trademark of such fame and notoriety contravened the principles of fair competition and trade ethics and constituted unfair exploitation of the reputation of its trademark. The Head of the Department of Industrial Property ruled in favor of the opponent, finding that the trademarks in conflict were, with respect to PIOLIN, identical and, with respect to TWEETY/PIOLIN, very similar, and that the applied-for mark did 225. No Fear Inc. v. Armazones y Lentes Ltda., Head, Department of Industrial Property, Decision No. 136488, December 5, 2005. Vol. 97 TMR 403 not contain any element that could dilute such identity or similarity. In addition, given the nature of the goods and services of the marks in conflict, one could only conclude that the appliedfor mark would undoubtedly be misleading and induce consumers to all sorts of errors and confusion. Further, the Head of the Department held that it did not matter that the goods and services covered by Transportes Piolin’s application were in large part different from the goods covered by Warner Bros.’ registered trademarks, given the fame and notoriety of the latter, both in Chile and worldwide. That fame and notoriety were such that if the application were granted, the applied-for mark would inevitably be misleading and deceitful, especially with regard to the business origin of the goods and services.226 Stime Watch Manufacturing Company Limited filed a trademark application for SALCO & Logo (below, illustration at left), for goods in Class 14, specifically watches. DC Comics filed an opposition on the ground that the mark in question was extremely similar to its SUPERMAN logo (below, illustration at right), registered as a trademark in Chile for all goods in Classes 21, 25, 28, 30, and 32, and similar to its foreign trademark registrations for that logo, covering all goods in Class 14. The opponent claimed that the SUPERMAN logo was a wellknown trademark associated with a famous action hero character that had gained worldwide fame and notoriety. It argued that the applied-for mark was misleading and deceitful and that consumers would be induced to confusion by associating it with the SUPERMAN logo and the owner, DC Comics. The Head of the Department of Industrial Property ruled in favor of the opponent. In view of the evidence filed, DC Comics had proven itself to be the creator and current owner of the registered SUPERMAN logo, not only in Chile but abroad for products in Class 14, and also had proven the notoriety and fame of the same; therefore, the similarity between both symbols was evident, and the addition of the term SALCO did not eliminate such similarity or avoid confusion of the same. As a consequence, one could only conclude that the applied-for mark would undoubtedly be 226. Transportes Piolin Limitada v. Warner Bros. Entertainment Department of Industrial Property, Decision No. 135526, December 16, 2005. Inc., Head, 404 Vol. 97 TMR misleading and induce consumers to all sorts of errors and confusion. Furthermore, given the fame and notoriety of DC Comics’ mark, both in Chile and worldwide, if Stime’s application were granted the applied-for mark would undoubtedly be misleading and could induce the consumer public to believe that it was related to, had a connection with, or proceeded from the same parent company. For these reasons, therefore, the trademark application was refused.227 III.F.5. Cancellation Compagnie Gervais Danone (Danone) filed a cancellation/nullity action against the trademark registration for DANONE in International Class 29, owned by Sociedad Productora de Leche S.A. (Soprole), before the Department of Industrial Property. The action was filed on the grounds that the mark in question was identical to the well-known trademark DANONE, registered abroad; that it was misleading and deceitful as to origin and quality of the goods; and that the trademark registration was contrary to public policy, good customs, and the principles of fair competition and business ethics, in accordance with the provisions of Decree-Law No. 958,228 the Chilean Industrial Property Law,229 and the Paris Convention. The plaintiff also asserted, among other things, that it was the creator of the trademark DANONE and the owner of numerous foreign trademark registrations for the mark, and that DANONE was a well-known trademark that had gained worldwide fame and notoriety and was always associated with Compagnie Gervais Danone. In addition, the plaintiff argued, applying for and registering a trademark identical to one of such fame and notoriety contravened the principles of fair competition and trade ethics and constituted unfair exploitation of the reputation of its trademark. Soprole’s main arguments were that Danone’s right to file a nullity action had become unenforceable and that the trademark had been used by the defendant since its first registration date, 1982; therefore, the grounds set forth by the plaintiff were not applicable, since the trademark was neither misleading nor deceitful as to the origin and quality of the goods because consumers had always associated the goods with the current 227. DC Comics v. Stime Watch Manufacturing Company Limited, Head, Department of Industrial Property, Decision No. 137261, July 14, 2006. 228. Decree-Law No. 958 of 1931 on Industrial Property. 229. Law 19.039 of January 24, 1991. Vol. 97 TMR 405 owner. Consequently, the registration could not contravene the principles of fair competition or trade ethics. The Department of Industrial Property had to first consider whether procedurally an application for nullity could be made in this case. The Department determined that the applicable law for determining whether procedurally an application for nullity could be made in this case was Decree-Law No. 958, which was in force at the time of the original registration of the trademark. In this respect Article 31, Paragraph 4 of D.L. No. 958 stated that no third party could apply for the nullity of a registered trademark if the trademark had been in force for more than two years from the date of registration, provided the trademark had been effectively in use in Chile. These two requisites were cumulative, and according to jurisprudence the use had to be relevant, permanent, and in good faith. However, in this case the trademark owner was not able to prove use of the trademark; therefore, the Department concluded that the nullity action was still enforceable. Regarding the substantial part of the conflict, it found that the Chilean trademark registration was identical to the plaintiff’s famous and notorious foreign trademark DANONE and that consequently they would be unable to coexist in the market. The Department went on to hold that in view of the abundant evidence submitted by the plaintiff, it was clear that Compagnie Gervais Danone was the legitimate creator and owner of the trademark DANONE, which it had coined many years before the mark was registered in Chile. In addition, the plaintiff had undoubtedly proven that its trademark was famous and notorious around the world. In view of the above, the Department of Industrial Property ruled in favor of the plaintiff and cancelled the Chilean trademark registration for DANONE.230 V.A. Domain Names With the introduction of new Internationalized Domain Names (IDNs) in Chile, the possibility of registering domain names with special characters such as accents and dieresis has been made available. One of the first decisions rendered by a NIC Chile (Network Information Center Chile) arbitrator in this regard concerned the conflict over the domain name perfumanía.cl. The word perfumania was registered in February 2005 by Perfumanía Inc. as a domain name without an accent over the letter “i.” The new IDN domain name was registered by Mr. Fernando Ibañez in October of that year. As a consequence, on the World Wide Web there coexisted two ccTLD (country code top-level 230. Compagnie Gervais Danone v. Sociedad Productora de Leche S.A. (Soprole), Department of Industrial Property, Decision No. 137051, June 23, 2006. 406 Vol. 97 TMR domain) domain names that were identical save for the accent over the vowel “i.” The dispute was resolved in favor of Perfumanía Inc. The arbitrator held that although the introduction of IDNs permitted Internet users to avoid spelling mistakes, broaden the available characters, and complement and register new domain names, the present situation was not the outcome that had been intended when these new characters were introduced. It was clear, the arbitrator found, that had the addition of the accent over the letter “i” given the word a whole new meaning, or at least changed the manner of accentuation, we would be in the presence of a new domain name. Given the current situation, however, both domain names, with or without the accent over the letter “i,” were grammatically and phonetically the same word, and therefore one could only relate the domain name to its first registrant. Perfumanía Inc. therefore had, without a doubt, better rights over the domain name in dispute. The arbitrator also took into consideration the fact that both parties were dedicated to the same line of business, perfumes, and most importantly that the word perfumania was the trade name of the plaintiff, Perfumanía Inc., which owned two trademark registrations for PERFUMANIA. Consequently, the domain name registered by Mr. Ibañez was transferred to Perfumanía Inc.231 CHINA, PEOPLE’S REPUBLIC I.B.1. Generic Names In May 2006, the Hong Kong Wing Hwa Company abandoned the Chinese applications it had filed for registration of the trademarks DOUBLE YOLK WHITE LOTUS SEED PASTE and DOUBLE YOLK LOTUS SEED PASTE, for food and moon cake products, and brought to an end its battle with several parties from mainland China.232 The case had begun several years before, when the company filed applications to register the marks in China. The trademark applications, which were approved for publication on December 28, 2004, designated 30 food products, including moon cakes. Once the marks were registered, Hong Kong Wing Hwa Company would be able to prohibit competitors from using the terms DOUBLE YOLK WHITE LOTUS SEED PASTE and DOUBLE YOLK LOTUS SEED PASTE for food and moon cake products. Any firm wishing 231. Perfumanía Inc. v. Fernando Ibañez, NIC Chile Domain Name Arbitration, Decision perfumanía.cl, June 7, 2006. 232. “Hong Kong Wing Hwa Abandons Registration, Dispute over Registration of DOUBLE YOLK LOTUS SEED PASTE Is Over,” Chinese Industry & Commerce News No. 3455, May 18, 2006, p. B1. Vol. 97 TMR 407 to use the terms would have to obtain a license from the company and pay trademark royalties. This explosive news drew a strong and immediate response from the Guangdong Chamber of Commerce, the Guangdong Province Food Industry Association, and the Guangdong Cutlery Association. The three organizations issued a joint written statement, claiming that the two marks applied for were generic terms for the ingredients in moon cakes. Registration of the terms as trademarks would invade public resources, infringe intellectual property rights, and have a severe impact on the moon cake industry. An opposition was duly lodged. The Trademark Review and Adjudication Board’s (TRAB’s) decision reveals that Hong Kong Wing Hwa Company later decided to abandon the applications. Therefore, the case was closed and the applications to register the marks were rejected. The opposing parties welcomed the result and claimed that it represented a victory for the whole moon cake industry in Guangdong Province. There are rare cases where registration of a generic mark stirs strong protest. As this case shows, more people in China now pay attention to registration of marks, even in other jurisdictions, and the public is more aware of the importance of trademarks in commercial activities. I.B.8.a. Similarity of Marks A four-year-long opposition action between the Dutch concern Shell Company and the Shandong Pearl Shell Ceramic Company was recently decided in favor of the Chinese company. Along the coastline of Wu Li, where the Chinese company is located, there is a 76-kilometer-long ancient shell dam; the total shell sand weighs 3.6 billion tons. With the addition of tidal deposits, this dam is increased by 100,000 tons each year. To use the resource, Shandong Pearl Shell Ceramic Company, in alliance with several Chinese universities, has invested over 12 million yuan to develop shell ceramic technology for production of highend shell ceramic products for daily use. In November 2000, the company applied to register the trademark PEARLSHELL & Design. On December 12, 2002, a notice of opposition against the mark was filed by the U.K. firm Shell International Limited. Shell claimed that its SHELL and shell design trademarks were famous marks and had been owned by the company for over 100 years. It argued that the applied-for mark was similar to its trademark SHELL both verbally and in meaning, and that the goods designated by the marks were similar; therefore, Shell contended, the application involved both similar marks and similar goods. The U.K. company further alleged that the mark PEARLSHELL & Design was a copy and imitation of the SHELL mark and that its use was likely to cause 408 Vol. 97 TMR confusion among customers and the public. Use and registration of the PEARLSHELL mark would seriously damage Shell’s trademark rights and the public interest; therefore, registration of the mark should be rejected. Shandong Pearl Shell Ceramic Company argued that if the opposition were upheld and registration of the mark PEARLSHELL & Design were rejected, its investment in advertising, packaging, and designing special product websites would be wasted, and that in turn its expansion into foreign markets such as the United States, Korea, and Australia would be seriously hindered. To protect its rights, the Chinese company submitted a reply to the Trademark Office. It argued that the mark applied for was an English version of its Chinese mark, which had long been registered. The mark was designed based on the unique local shell dam and was not an imitation of the SHELL mark. The term PEARLSHELL, the company contended, was a natural expression of a particular phenomenon existing in nature. Its word structure, meaning, pronunciation, and design were all distinguishable from those of the word SHELL. Therefore, registration of the mark should be granted. The Chinese Trademark Office found that the opposed mark, consisting of a design and the English words PEARL and SHELL in combination, was the name of a particular type of scallop, while the opposing mark SHELL referred to the outside cover of scallops. It held that the two marks were distinguishable and were not likely to cause confusion. Moreover, Shell International Limited had not produced evidence to prove that Shandong Pearl Shell Ceramic Company had copied and imitated its mark. Therefore, the Trademark Office dismissed the opposition and granted registration of the trademark PEARLSHELL & Design.233 Likewise, an opposition between Wenzhou Nusheng Clothing Co. and Nike International Co. was decided in favor of the Chinese company. In March 2002, Nike filed an opposition against registration of a two half-hook design mark for headgear and football shoes. The application was filed by Nusheng Clothing and was approved and published in January 2002. Nike based its opposition on the ground that the mark was confusingly similar to its swoosh design mark, already registered in China. It pointed out that the swoosh mark was a simple and unique design to which Nusheng Clothing’s two half-hook design was similar and that the goods designated belonged to the same class. Nusheng Clothing countered that its 233. “The Brightness of ‘SHELL’ Cannot Overshadow PEARLSHELL, Shandong Pearl Shell Ceramic Co. Wins Multi-National Trademark Dispute,” Chinese Industry & Commerce News No. 3465, June 1, 2006, p. B1. Vol. 97 TMR 409 mark consisted of the phonetic symbols of M and the Chinese character for “strength,” which in combination meant “work hard,” a notion adopted by Nusheng Clothing for developing its business. It had no connection with the Nike swoosh mark. The Chinese Trademark Office found the two marks different. Nusheng Clothing’s double half-hook design looked more like a swallow, the overall impression of which was different from Nike’s swoosh mark. Therefore, although the goods designated were similar, no confusion was likely, and consequently the mark was granted registration.234 It is not clear whether Nike will appeal the Trademark Office’s decision. I.B.20. Color Sweden Capman Co. Ltd. brought an administrative court action in the Beijing First Intermediate People’s Court against the TRAB’s decision to dismiss its appeal against the Chinese Trademark Office’s rejection of a color combination mark. In January 2002, the Swedish company filed an application to register the color combination of orange, red, and blue. In August of that year, the Chinese Trademark Office rejected the application. On appeal, the TRAB upheld the Trademark Office’s decision, finding that the color combination lacked distinctiveness for registration.235 In its court action, Sweden Capman claimed that the orange, red, and blue combination brushed on narrow saw bars had acquired distinctiveness as a trademark and was therefore capable of registration. Products bearing the mark have been extensively sold in China and enjoy a high reputation there. That the mark allegedly had been willfully infringed and copied was, the company maintained, an indication that the mark was distinctive. Consequently, the applicant requested the court to vacate the TRAB’s dismissal decision. This is the first administrative court action involving a color combination mark. The case is now pending. It will be interesting to see how the courts will view the issue of color protection and balance interests of trademark owners and those of the public. I.B.23. Official and Certified Marks In 2005, the average income of farmers in Sheyang County, Jiangsu Province, reached RMB 4,968 yuan, an increase of 10.6 percent compared with 2004, despite several natural calamities in 234. “Nusheng Prevails over Nike in the First Round of Trademark Dispute,” China Industry & Commerce News No. 3444, April 26, 2006, p. B1. 235. “First Color Combination Mark Case Accepted by the Beijing First Intermediate People’s Court,” China Industry & Commerce News No. 3346, December 1, 2005, p. B2. 410 Vol. 97 TMR the region. Farmers praised the collective mark SHEYANG RICE as the vehicle for bringing about such a rewarding result. The value of the mark is now estimated at over 1 billion yuan. It is one of the valuable marks that have quickly produced wealth in the region.236 Sheyang rice is well known throughout the country for its high quality and good taste. However, before the collective mark SHEYANG RICE was registered, anyone could label its rice with the mark, with some people using the mark on low-quality and even poisonous rice products in an attempt to make a profit. To protect the well-known regional brand, the local farmers and local Administration of Industry and Commerce joined forces to establish Rice Producers Association, which then applied for registration of the mark. In April 2005, the Chinese Trademark Office approved registration of SHEYANG RICE as a collective mark. Immediately thereafter, the registrant requested that law enforcement agencies take administrative action against counterfeiters, which led to the discovery of more than 45 riceproducing companies and 120 stores that were making or selling counterfeit rice that was labeled with the collective mark. As farmers in Sheyang will agree, those who own a wellknown mark will enjoy the market share. Consequently, there has been an increase in trademark application filings for agricultural products. In 2005 alone, more than 100 applications were filed. III.A.1. Famous Marks Hong Kong Qi Hao (Group) Ltd. is the owner of the trademark WOOD PECKER in Chinese characters. The mark is well known for high-quality new design menswear in China. Its commercial success attracted so many different WOOD PECKER combination marks by various companies that nobody could tell any longer which WOOD PECKER was the genuine one and which was not. To protect its rights, the Hong Kong company brought a lawsuit in Haerbin Intermediate People’s Court against an individual, Wang Qiang, for his unauthorized use of the mark on men’s shoes and on his website China Wood Pecker, requesting that the court recognize the company’s trademark as a well-known mark and enjoin the defendant from using his mark WOOD PECKER in Chinese.237 236. “Sheyang Rice Valued at over 1 Billion Yuan,” China Industry & Commerce News No. 3444, April 26, 2006, p. B2. 237. “Sharp Beak Catches Worms, Judiciary and Administration Provide Joint Protection, Judicial Recognition of WOOD PECKER as a Well-known Mark,” China Industry & Commerce News No. 3379, January 18, 2006, p. B1. Vol. 97 TMR 411 The defendant argued that his website was legally registered in accordance with Chinese law. Furthermore, the plaintiff’s mark was registered for clothing products and not for footwear, so the defendant’s use of the mark did not constitute trademark infringement. Therefore, the plaintiff’s claim for damages was groundless. The court found that the mark in question met the requirements for a well-known mark. Its registration, use, advertising, and fame proved that it was a well-known mark in China. In 1993, the plaintiff registered, in International Class 25 for clothing, Class 18 for leather goods, and Class 35 for business administration, the mark WOOD PECKER in Chinese, the bird design, and TUCANO as combination marks to form a comprehensive trademark protection scheme. In addition, the plaintiff’s products bearing the mark had passed several quality checks by the National Textile Product Quality Control Test Center and other similar test centers, and the plaintiff had formed a nationwide sales network. The plaintiff had also spent a substantial amount of money to advertise its WOOD PECKER series marks, including printing product brochures, advertisements, and advertising through media such as television channels. Frequent infringement of the mark was another indication that the mark had acquired fame. Finally, the government had issued more than 60 administrative decisions on trademark infringement, and both administrative and legal infringement actions had been extensively broadcast and televised. The court, therefore, had ample evidence to find that the mark was well known in China. Protection of a registered well-known mark in China goes beyond the particular goods and class it designates. In this case, registration of the mark WOOD PECKER for clothing was sufficient to prevent the defendant from using it on its footwear or website. Allowing such use easily could have misled the public and damaged the rights of the trademark owner. The court ultimately ordered the defendant to cease and desist the use of the plaintiff’s WOOD PECKER mark in Chinese, to transfer its website to the plaintiff for its use, to write an apology to the plaintiff that would be published in local newspapers and on websites, and to pay damages to the plaintiff in the amount of RMB 100,000 yuan. Many legal professionals view the lawsuit as a new trend and a mechanism for trademark owners to better protect their marks. Trademark owners are now more readily pursuing damages and other available remedies in infringement actions. They are also requesting that their trademarks be recognized as well-known marks to enhance the effectiveness of their overall protection. 412 Vol. 97 TMR Famous mark protection is certainly a key advantage in trademark infringement actions. III.A.3. Prior User Further to the settlement in 2004 of a dispute between the French company Lacoste and the Hong Kong firm Crocodile Co. over the registration and use of the trademark CROCODILE design, on November 17, 2005, Lacoste announced at a press conference that it finally settled a five-year-long trademark infringement case with Zhejiang Crocodile Clothing Manufacturing Co. Ltd. over the use and registration of the same mark.238 Zhejiang Crocodile acknowledged Lacoste’s exclusive right in the CROCODILE design mark and undertook to stop using the mark ZHEJIANG CROCODILE after a phasing-out period. In exchange, Lacoste withdrew its trademark infringement suit against the Zhejiang company and gave the latter a three-year grace period to phase out the ZHEJIANG CROCODILE mark and adopt a new mark instead. Zhejiang Crocodile is a joint venture between the Singapore Crocodile T-Shirt Ltd. and the Zhejiang Foreign Trade Co. Although the Singaporean company originally agreed to let the joint venture use its marks, the agreement was never honored. Instead, the joint venture started to use a design mark very similar to the CROCODILE mark owned by Lacoste. The French company followed with a lawsuit that lasted for five years. Mr. Qiyang Hu, president of Zhejiang Crocodile, said that the company acknowledged the authority of the law and the importance of recognizing other people’s prior rights in trademarks. The company agreed to build its own brand in the future, and will concentrate on actively developing and protecting its own new brands. The president of Lacoste praised the importance of intellectual property rights in China and was satisfied that the settlement was a win-win solution for all parties. Although the CROCODILE mark is infringed in many places of the world, the French company continues with its efforts to curb the illegal activities. It is patient but persistent in pursuing its goal. No details of the settlement were disclosed at the press conference. Zhejiang Crocodile claimed it was confident of developing a true new brand of its own in three years. 238. “French and Zhejiang Crocodiles Shake Hands to Make Peace, Zhejiang Crocodile Claims to Develop Own Brand in 3 Years,” China Industry & Commerce News No. 3346, December 1, 2005, p. B2. Vol. 97 TMR 413 III.A.12. Distinctiveness LITTLE SHEEP & Design is a trademark for restaurant services. The owner, Inner Mongolian Restaurant Group Company, applied for registration of the mark on December 18, 2001. The mark was later approved for publication.239 Xian Little Sheep Barbecue Restaurant filed an opposition, claiming that the mark, as a merely descriptive term, was not registrable. The TRAB found that the mark had become quite distinctive and was now an indication of source of restaurant services provided by the applicant. It now functioned as a service mark and as such had acquired the distinctiveness to be registrable. The opponent was not satisfied. It applied for judicial review at the Beijing First Intermediate People’s Court and later further appealed to the Beijing High People’s Court. On May 19, 2006, the appellate court ruled that the mark had a close connection with its applicant and was well known in China. The mark actually could indicate the source of the restaurant services it designated, thanks to extensive use and advertising by its owner. Consequently, the court held that the mark was distinguishable and therefore registrable. This ruling is significant for the applicant, as the court’s confirmation of the registration will permit the company to take legal action against infringement and dilution of the mark by others and prevent the adverse consequences of an unregistered mark. The company’s business is expected to grow more rapidly after registration of its house mark is confirmed in court. III.A.22. Trade Dress In 1982, the Italian chocolate manufacturer Ferrero Co. started to sell chocolate products bearing the mark FERRERO ROCHER in Taiwan and Hong Kong. The mark was translated and registered as JINSHA in Chinese, which means gold sand. Since October 1986, the Italian company has registered the mark FERRERO ROCHER & Design and has been using the mark together with JINSHA in Chinese, although the latter has not been registered in China.240 Later, another company registered the mark JINSHA for similar chocolate products and assigned the mark to a third company, Montesa Co., which used JINSHA together with the 239. “Little Sheep Happily Returns to Prairie, Beijing High Court’s Final Ruling Confirming Registrability of Mark LITTLE SHEEP,” China Industry & Commerce News No. 3465, June 1, 2006, B1. 240. “A Case of Unfair Competition in Using Packaging and Trade Dress of Well-Known Products, (2005) Jin Gao Civil Three Final No. 36,” China Patents and Trademarks, 2006, No. 3, p. 99. 414 Vol. 97 TMR words TRESOR DORE and registered the combination as its composite mark. The packaging and design of Montesa Co.’s JINSHA TRESOR DORE chocolate products are identical to those of Ferrero Co.’s JINSHA FERRERO ROCHER chocolate products. The Italian company brought suit against the Chinese company, claiming that the use of its packaging design constituted unfair competition. The court of the first instance, the Tianjin No. 2 Intermediate People’s Court, found the chocolate products of both companies to be well known in China, each distinctive in its own way. Therefore, it determined that there was no likelihood of confusion, and the unfair competition claim was dismissed. On appeal by Ferrero Co., the higher court agreed that both China and Italy are members of the Paris Convention, which prevails whenever there is a conflict between the Convention and the Chinese national laws. The Paris Convention provides that the application of unfair competition laws should not be limited to situations expressly listed in those laws. In this case, the Chinese company used without authorization the specific packaging and design of FERRERO ROCHER chocolate products, which directly affected the sales and reputation of the Italian company’s products. Though not specifically enumerated in the laws, such conduct constitutes unfair competition that infringes the lawful interest of the Italian company. On January 9, 2006, the court, applying the principles of the Paris Convention, ordered the defendant to stop the infringement and pay RMB 700,000 yuan in damages to the Italian plaintiff Ferrero Co. III.B.1. Passing Off Every morning in Shanghai, people stand in long lines to buy BARBIE brand (in Chinese characters) steam buns in front of more than 50 BARBIE chain stores. Nobody expected that the mark would be infringed by unauthorized use, such as individuals seeking to pass off their own products as those coming from the successful chain for the sake of a quick profit.241 The founder of the chain, Mr. Huiping Lin, came to Shanghai to set up a steam bun store. He designed the BARBIE mark and applied for its registration in April 2004. With a sizable investment of capital, he set up a dust-free filling processing and distribution center to control quality of fillings for the BARBIE steam buns. In little over a year, his chain had expanded to 55 stores, whose annual profit exceeded RMB 2 million yuan. Building on his successful venture in Shanghai, Lin opened another 14 chain stores in neighboring cities and provinces. 241. “BARBIE Steam Buns Suffer from Infringement,” China Industry & Commerce News, February 21, 2006, p. A2. Vol. 97 TMR 415 One day, Mr. Lin received a complaint call from a customer saying that BARBIE stores had cheated him. An investigation by Lin shocked him, as he found that somebody else had used the mark without his authorization to grant franchises to others for royalties. At the time of the investigation, there were more than 30 counterfeit BARBIE steam bun stores. Lin brought a lawsuit against one of the infringers, claiming that the defendant had intentionally used the well-known mark BARBIE to enroll franchisees in order to unlawfully profit from a mark that did not belong to it. He charged that the defendant’s acts had caused confusion in the marketplace, misled consumers, and constituted unfair competition. The Shanghai First Intermediate People’s Court ruled in 2005 that the defendant food company must immediately stop the infringement and cease using BARBIE and distributing false allegations on the Internet. The defendant was also ordered to publish a notice in the newspaper of the court’s ruling and pay the plaintiff damages in the amount of RMB 26,000 yuan. Although Lin won the case, there was no time for him to celebrate. After the Chinese New Year in 2006, he found several stores on the market that were still using the mark BARBIE in various ways to test the tolerance of the law. Lin immediately set up an anticounterfeiting department in his company to work with the local Administration of Industry and Commerce to continue fights against trademark infringement. He plans to check and verify all BARBIE chain stores in Shanghai to prevent possible trademark infringement. III.B.8. Slavish Imitation BIG WHITE RABBIT is a well-known mark for a milkflavored candy product in China, manufactured by Guanshenyuan Group, Inc. The product was so successful that other manufacturers started to use various versions of the mark in an attempt to grab a share of the market. Over the next few years, more than 60 different RABBIT marks for candies appeared on the Chinese market: LITTLE WHITE RABBIT, BIG GRAY RABBIT, BIG MIXED COLOR RABBIT, WHITE RABBIT, etc. Some were used on candies of far inferior quality.242 To protect its mark and the mark’s reputation, Guanshenyuan Group formulated and enforced a strategy to register more than 60 different WHITE RABBIT variation marks and acquired the registrations of some of the marks already owned by other companies. This strategy effectively prevented others from riding on the goodwill of the BIG WHITE RABBIT mark. Currently, the 242. “60 Rabbit Marks Protect BIG WHITE RABBIT,” Xinmin Evening News, September 13, 2005, p. 3A. 416 Vol. 97 TMR company owns Chinese registrations for BIG WHITE RABBIT along with all its combinations and variations available on the market, including the sleeping rabbit design and the naked rabbit design. Under proper and adequate protection, sales of BIG WHITE RABBIT candies increased by RMB 1 billion yuan in 2005. This demonstrates that registering a group of secondary marks to protect a core mark is an effective strategy to protect and expand an owner’s trademark rights. COLOMBIA I.B.1. Generic Names Pechiney Plastic Packaging Inc. applied to register the trademark CEBAL AMERICAS, covering products243 in International Class 20. The Colombian Trademark Office granted the registration despite the oppositions filed by Industria Americana de Colchones S.A. (INDUAMERCOL) (formerly Industrias Dormiluna Ltda.) based on its trademarks AMERICA, AMERICAN, AMERICAN HOUSE, AMERICANOS, CASA AMERICANA, LADY AMERICANA, and POLIAMERICANA, all of them registered in Class 20. INDUAMERCOL filed before the Council of State (the Colombian administrative court) an action for declaration of nullity and restoration of rights against the resolutions of the Trademark Office that disallowed the oppositions and allowed the registration of the trademark CEBAL AMERICAS.244 The opponent’s main arguments were that (1) the CEBAL AMERICAS trademark did not meet the requirement of distinctive capacity established in the Andean Community provisions on trademark registration and (2) the word AMERICAS in the mark reproduced the main element in the trademarks AMERICA, AMERICAN, and AMERICANA, registered in the opponent’s name. The Council of State held that a comparison of the trademark CEBAL AMERICAS and the trademarks of the opponent, made as suggested by the Court of Justice of the Andean Community in the pre-judicial interpretation handed down for this case,245 did not reveal confusion, as the word CEBAL had sufficient capacity to differentiate the opposed mark from any other trademark 243. Plastic containers; tubes; nonmetallic lids and capsules to be closed with a cork; containers with a body laminated in plastic; containers in the form of tubes; tubes for packaging products. 244. Resolution No. 18901, June 24, 2002; Resolution No. 33481, October 24, 2002. 245. Andean Court of Justice, Proceeding No. 167-IP-2004, March 16, 2005, published in Gaceta Oficial del Acuerdo de Cartagena No. 1190, May 4, 2005. Vol. 97 TMR 417 containing the word AMERICA.246 Indeed, the Andean Court stated that there is no risk of confusion when the words added to those word elements that coincide have a strong enough meaning to identify the source of the products, thus preventing consumers from making mistakes. In addition, the Council of State clarified that the word AMERICAS was commonly used in Colombia and confirmed that there were a large number of registrations containing it. As a consequence of the generalized use of this weak element, trademark owners could not claim an exclusive right to use it. Therefore, as the owner of such trademarks, INDUAMERCOL could neither prevent the inclusion of the word in third parties’ marks nor allege, based on that single fact, a risk of confusion or association between the marks at issue. L’Oréal filed before the Council of State an action for declaration of nullity and restoration of rights against the resolutions by which the Trademark Office refused the registration of the trademark SENSI, for perfumery products in Class 3.247 The Trademark Office took into account not only the opposition filed by Avon Products Inc., owner of the trademark SENSING, registered in Class 3, but also the applied-for mark’s similarity to a large number of trademarks containing the particle SENSI and registered in that same class. In its complaint, L’Oréal argued that SENSI was a fanciful word that did not evoke the product or any of its characteristics and was not confusable with other trademarks containing that element and registered in the same class. The Council of State, however, held that the trademark SENSI was characterized by the simplicity of the prefix forming it, which was in common use and could be applied to the products in Class 3. In addition, the Council determined that the word SENSI could easily be related to sensible (“sensitive”), which was evocative of all the products and services related to perfumery. A proof of the latter was the very large number of Class 3 products containing the prefix SENSI- (e.g., SENSITIF, SENSIFLUID, SENSIKIT, SENSITIQ, and SENSIBIO), which turns the trademark into a weak mark. If, therefore, L’Oréal’s mark were allowed to proceed to registration, it would be equal to monopolizing a prefix, to the detriment both of the registrations mentioned above and of others that could be applied for in the future to cover products in Class 3. Last, L’Oréal also argued that its trademark SENSI was duly registered in Bolivia and Peru, two of the member countries of the 246. Industria Americana de Colchones S.A.–INDUAMERCOL S.A. v. Superintendencia de Industria y Comercio, Council of State, File 8888, August 18, 2005. 247. Resolution No. 33743, October 23, 2001; Resolution No. 4700, February 19, 2002; Resolution No. 28411, August 30, 2002. 418 Vol. 97 TMR Andean Community. This argument aimed to demonstrate the distinctive capacity of the mark in the subregion and the subsequent legal effects produced in the Community as a result of regional provisions governing the matter. The Council of State, relying on the pre-judicial interpretation rendered by the Andean Court of Justice for this case,248 concluded that neither the continued and actual use of the mark in Peru and Bolivia, nor the fact that the mark would have become distinctive in said countries with respect to the products covered, had been duly proven in the proceedings.249 I.B.2. Merely Descriptive Terms Canal + Société Anonyme (Canal +) filed before the Council of State an action for declaration of nullity and restoration of rights against the Trademark Office’s resolutions refusing the registration of the word and design mark CINE CLASSICS (“CINEMA CLASSICS”), which was intended to cover various services in International Class 41 (see below).250 The Trademark Office had declared ex officio that the mark was not eligible for registration based on the fact that it consisted only of an indication used in commerce to describe the characteristics of the services with respect to which it was to be applied. The plaintiff countered that the Trademark Office was wrong in its argumentation, given that the trademark was formed of both nominative and graphical elements and for that reason could not be labeled as descriptive. In deciding the nullity action filed by Canal +, the Council of State established that the first task was to determine what was the prevailing element in the trademark arrangement. The Council concluded that the element with the greatest expressive and characterizing strength was the nominative element, as 248. Andean Court of Justice, Proceeding No. 151-IP-2004, November 25, 2004, published in Gaceta Oficial del Acuerdo de Cartagena No. 1165, February 7, 2005. 249. L´Oréal v. Superintendencia de Industria y Comercio, Council of State, File 8781, September 8, 2005. 250. Resolution No. 8974, May 12, 1995; Resolution No. 25496, September 30, 1997; Resolution No. 32501, November 30, 2000. Vol. 97 TMR 419 consumers would ask for the service or identify it by the name CINE CLASSICS, and not by describing a rhombus. Following the conclusions reached by the Andean Court of Justice in its pre-judicial interpretation for this case,251 the Council of State ruled that the CINE CLASSICS mark described the services contained in Class 41, given that this class includes the showing of films.252 The Council added that, even though CLASSICS is a foreign word, it is known by almost everybody, and according to the prejudicial interpretation, it should be taken as local. I.B.5. Personal Names Mr. Arturo Calle, owner of the trademark AC ARTURO CALLE, for all products in International Class 25, requested that the Council of State annul the resolutions issued by the Trademark Office that allowed the registration of the trademark PAUL CALLEY, applied for by the corporation Wilcos Ltda. and covering products in the same class.253 Mr. Calle asserted that the PAUL CALLEY trademark lacked sufficient extrinsic distinctive capacity to be registered, given that there was another “identical or similar previously registered or applied-for mark,” namely CALLE, which was his last name and part of his registered trademark. Likewise, Mr. Calle asserted, his trademark AC ARTURO CALLE was well known in the clothing and footwear fields, owing to the extensive advertising of its products on the radio and the large number of stores nationwide. Pursuant to the parameters established by the Andean Court of Justice in its pre-judicial interpretation for this case,254 the Council of State deemed that, from the graphical point of view, the similarity alleged in the complaint did not exist. It also pointed out that even though vowels and consonants in the words CALLE and CALLEY coincided, in Mr. Calley’s mark the word CALLEY was preceded by PAUL and in Mr. Calle’s trademark the word CALLE was preceded by AC ARTURO, which made them sufficiently different.255 In addition, the Council noted that the pronunciation of PAUL CALLEY and AC ARTURO CALLE was considerably different, stressing the point of the distinctiveness of both marks. 251. Andean Court of Justice, Proceeding No. 59-IP-2004, July 21, 2004, published in Gaceta Oficial del Acuerdo de Cartagena No. 1111, September 2, 2004. 252. Canal + Société Anonyme v. Superintendencia de Industria y Comercio, Council of State, File 7461, June 16, 2005. 253. Resolution No. 28066, September 22, 1999; Resolution No. 7485, April 3, 2000; Resolution No. 11003, May 31, 2000. 254. Andean Court of Justice, Proceeding No. 78-IP-2004, September 1, 2004, published in Gaceta Oficial del Acuerdo de Cartagena No. 1124, October 4, 2004. 255. Arturo Calle Calle v. Superintendencia de Industria y Comercio, Council of State, File 06682, September 8, 2005. 420 Vol. 97 TMR Finally, the Council of State explained that from a conceptual point of view, PAUL and ARTURO were proper names, and as they were accompanied, respectively, by CALLEY and CALLE, it was clear to consumers that these were two different people. I.B.7.b. Three-Dimensional Marks Gaseosas Posada Tobón S.A. (Postobón) filed before the Council of State an action for declaration of nullity and restoration of rights against the Trademark Office’s resolutions refusing the registration of a design mark in the shape of a bottle, to cover all products in International Class 32 (see below).256 The Trademark Office, in refusing to register the mark, alleged that this was the usual form of the bottle of the product, which was not eligible for registration under the relevant Andean Community legislation.257 Postobón argued that the mark was formed by the shape of a bottle that had novel and distinctive characteristics, namely, the inclusion of veins and the dots and dashes that simulated an engraving and were placed on the upper side, elements that in the plaintiff’s opinion were not usual in bottles for Class 32 products. The Court of Justice of the Andean Community, in the prejudicial interpretation rendered for this case, emphasized that the usual shapes of bottles are not eligible for registration if there are not other, distinctive elements in the design.258 Consequently, the Council of State refused Postobón’s claims, considering that the 256. Resolution No. 25198, September 29, 2000; Resolution No. 1338, January 30, 2001; Resolution No. 18306, May 31, 2001. 257. Andean Community, Decision 344, Art. 82(b); Decision 486, Art. 135(c). 258. Andean Court of Justice, Proceeding No. 88-IP-2004, August 18, 2004, published in Gaceta Oficial del Acuerdo de Cartagena No. 1116, September 10, 2004. Vol. 97 TMR 421 components accompanying the applied-for mark lacked distinctive capacity. It stated that, even though the bottle includes veins, dots, and dashes that assimilate an engraving around the neck, these elements did not add a creation that could be deemed suggestive, arbitrary or fanciful and that could take consumers to see it as non-confusable. Hence, the trademark is not a characteristic, particular, and original mark that allowed this product to be differentiated from other similar products in the market.259 In a separate action, Postobón filed before the Council of State for declaration of nullity and reinstatement of rights against the resolutions by which the Trademark Office refused the registration of another three-dimensional mark, SHAPE OF A CONTAINER IN THE FORM OF A BOTTLE, covering all products in Class 32 (see below).260 For purposes of the registration, the graphic representation of the mark was described as a container in the form of a shortnecked bottle with a square body and slightly rounded sides. The lower half of the bottle was divided by five horizontal and equidistant ribs; the upper part, close to the neck, had two 259. Gaseosas Posada Tobón S.A. v. Superintendencia de Industria y Comercio, Council of State, File 7619, August 4, 2005. 260. Resolution No. 14735, June 30, 2000; Resolution No. 26228, October 20, 2000; Resolution No. 15583, April 30, 2001. 422 Vol. 97 TMR horizontal ribs, the distance between which was the same as that separating the ribs in the lower part of the container. The Trademark Office determined that the mark was not eligible for registration because traders used bottles with the same or a similar shape to market different beverages, and therefore exclusive rights in the shape could not be granted to only one owner, as competitors should be assured of the right to use it. According to the Trademark Office, the mark fell within the exceptions to registrability contained in Articles 82(b) and 82(d) of Andean Decision 344, the regional legislation in force at that time. These articles provided that marks consisting of the usual forms of products or their containers, or consisting exclusively of a mark that was used in commerce to designate or describe the products or services for which it was to be used, could not be registered. Postobón contended that the Trademark Office could not refuse the registration based on absolute lack of originality, given that bottles were the natural containers for the liquids comprised by Class 32. It added that the analysis should refer to whether the container for which the registration application was filed had specific characteristics as to size, shape, and combination and distribution of geometric figures that could assure distinctiveness. Finally, the plaintiff insisted that the Trademark Office’s proffered reason for the refusal was false, as the Office had previously allowed the registration of container shapes as marks and had acknowledged that their distinctiveness stemmed from their characteristics. In its ruling, the Council of State indicated that, according to the guidelines established by the Andean Court of Justice in the pre-judicial interpretation issued for this case,261 a threedimensional container was eligible for registration as a trademark. The condition, though, was that the container should be sufficiently distinctive, that is, its special elements could produce in those who perceive it an impression different from the one made by other containers or forms of packaging intended to identify the same class of products in the market. The Council held that the design of a bottle with a square body was original and sufficiently distinctive with respect to existing trademarks consisting of container shapes, from which the shape applied for was totally differentiable. It held, further, that the existence of other registered three-dimensional marks consisting of the shape of a bottle indicated that such shapes were eligible for registration, provided their characteristics allowed their differentiation from other containers, as in the present case.262 261. Andean Court of Justice, Proceeding No. 113-IP-2003, November 12, 2003, published in Gaceta Oficial del Acuerdo de Cartagena No. 1028, January 14, 2004. 262. Gaseosas Posada Tobón S.A. v. Superintendencia de Industria y Comercio, Council of State, File 7620, June 8, 2006. Vol. 97 TMR 423 Last, the Council of State clarified that this case was different from the one involving Postobón’s application for registration of another three-dimensional mark consisting of the shape of a bottle. In that case, the Council of State had upheld the Trademark Office’s refusal of registration on the ground that the bottle did not add any fanciful creation and had no characteristics that would make it different from other, previously registered containers. Here, the mark had a novel design that was original and differentiable from those of other bottles existing in the market. I.B.8.a. Similarity of Marks Société des Produits Nestlé S.A. (Nestlé) filed before the Council of State an action for declaration of nullity and restoration of rights against the resolutions in which the Trademark Office declared ungrounded Nestlé’s opposition and allowed the registration of the trademark QUESITRIX, covering products in International Class 29,263 in the name of Productos Alimenticios Bocadeli S.A. de C.V.264 Nestlé filed oppositions on the ground that it had previously applied to register the trademark NESTLÉ TRIX, covering products in Class 30. The plaintiff argued that the trademark QUESITRIX had characteristics that made its differentiation impossible, given that its main component, the fanciful element TRIX, was the same as in the NESTLÉ TRIX mark, and the prefix QUESI- could not be taken as an element because it described queso (“cheese” in Spanish). Even though trix is a Latin ending that indicates the feminine gender of nouns (e.g., aviatrix, executrix), the Council of State acknowledged in its ruling that TRIX was a fantasy expression because it had not become a part of the Spanish language as a known and commonly used word. Likewise, and under the same interpretation, it could be said that this ending was generic for products in Class 30 because it was fanciful and had no direct relationship with that class. In comparing the trademarks, the Council of State brought up the issue of house marks. It established that the first element in the opposing mark was the corporate name of the manufacturer (Nestlé) and was used to indicate to consumers that the product covered by the trademark TRIX was manufactured by that company. In the case of the trademark QUESITRIX, the first part of the word gave consumers only the idea that the product was made from cheese (queso). 263. Meat; fish; poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies and jams; eggs, milk and milk products. 264. Resolution No. 26885, November 29, 1996; Resolution No. 805, January 29, 1998; Resolution No. 1411, January 30, 2001. 424 Vol. 97 TMR The Council of State, following the pre-judicial interpretation of the Andean Court of Justice for this case,265 concluded that when the marks NESTLÉ TRIX and QUESITRIX were compared as whole units, successively and not simultaneously, the impression conveyed was that they were similar or that there was a relationship between them.266 Consequently, consumers would be impressed by the similarities and not by the differences, and could be led mistakenly to attribute to the marks a common origin. Finally, the Council found that this risk had to be prevented, especially because the products concerned were foodstuffs that, although belonging to different international classes, were competitively related and could lead consumers to think that the QUESITRIX products were a variety of those sold under the mark NESTLÉ TRIX. Ava Enterprises Inc. requested that the Council of State declare null and void the Trademark Office’s resolutions refusing the registration of the trademark BOSS AUDIO SYSTEMS, to cover products in Class 9, particularly apparatus for recording, transmission, or reproduction of sound.267 The Trademark Office refused the registration based on its analysis of the oppositions filed by Bose Corporation, owner of the trademark BOSE in Class 9, which alleged that the applied-for mark lacked distinctiveness because it was graphically, orthographically, and phonetically similar to the opponent’s registered trademark BOSE. The Trademark Office indicated that consumers could be confused with respect to the product itself and that therefore the coexistence of the marks in the market was impossible. The Council of State, following the precepts established by the Andean Court of Justice in its pre-judicial interpretation for this case,268 affirmed the Trademark Office’s decision refusing the registration of the trademark BOSS AUDIO SYSTEMS on grounds of lack of distinctiveness with respect to the trademark BOSE.269 The Council determined that similarity between trademarks can refer to their orthographic, phonetic, or ideological aspects; it found that in the case of the BOSS AUDIO SYSTEMS mark, the 265. Andean Court of Justice, Proceeding No. 55-IP-2003, June 18, 2003, published in Gaceta Oficial del Acuerdo de Cartagena No. 961, August 4, 2003. 266. Société des Produits Nestlé S.A. v. Superintendencia de Industria y Comercio, Council of State, File 7337, August 4, 2005. 267. Resolution No. 1175, January 29, 1998; Resolution No. 9364, May 29, 1998; Resolution No. 32574, September 28, 2001. 268. Andean Court of Justice, Proceeding No. 106-IP-2004, September 22, 2004, published in Gaceta Oficial del Acuerdo de Cartagena No. 1136, November 5, 2004. 269. Ava Enterprises Inc. v. Superintendencia de Industria y Comercio, Council of State, File 7889, August 18, 2005. Vol. 97 TMR 425 word BOSS stood out because of its characterizing strength with respect to the other word element, AUDIO SYSTEMS, which performed a weak differentiating function because it evoked the products covered, and those products were identical to those covered by the trademark BOSE. Alpha Shoes S.A. requested that the Council of State annul the resolutions of the Trademark Office that declared ungrounded the company’s opposition to the registration of the design mark WILD ANIMAL IN CHARGING POSITION OR BULL IN FIGHTING ATTITUDE, applied for by Red Bull GmbH and covering products270 in Class 25.271 The opposition of Alpha Shoes, both in the administrative proceedings and in the nullity action, was based on its prior registration for the design mark RHINOCEROS OR FOURLEGGED BEAST IN WALKING POSITION. This, the company argued, left Red Bull’s mark without distinctive capacity; as a consequence, consumer confusion could result if the marks were allowed to coexist in the market. Red Bull countered that there was no visual similarity between the trademarks, as its mark was formed by the shape of a charging fighting bull, which conveyed the idea of strength, defense, and aggressiveness, while the opposing mark was a caricature depicting a walking rhinoceros with shoes. (See below.) According to Red Bull, the graphics of the designs made different impressions on consumers’ minds. Mark Registered by Alpha Shoes S.A. Mark Applied For by Red Bull GmbH The Court of Justice of the Andean Community, in the compulsory pre-judicial interpretation rendered for this case,272 stated that potentially similar marks, or those capable of causing confusion among consumers, should be compared according to the following rules: 270. Clothing, footwear, headgear; sport clothing; sport footwear; football boots; antislippery devices for shoes; fabric-made diapers. 271. Resolution No. 22778, September 12, 2000; Resolution No. 31139, November 30, 2000; Resolution No. 12256, March 30, 2001. 272. Andean Court of Justice, Proceeding No. 84-IP-2004, September 15, 2004, published in Gaceta Oficial del Acuerdo de Cartagena No. 1129, October 15, 2004. 426 Vol. 97 TMR 1. Considering that the confusion results from the general impression caused by the marks, all the elements forming each mark must be examined without breaking or altering the phonetic and graphic unit. The dissection of the integrating parts of the marks under comparison must be avoided. 2. In the determination of registrability, the marks must be examined successively and not simultaneously, as this is the way a common user would act. 3. The similarities, and not the differences, between the marks must be taken into account, as the similarity existing between the marks derives from their similar elements or from the similar location of the elements, and not from the different elements appearing in the trademark arrangement. 4. The examiner must play the role of an assumed consumer, taking into account the nature of the products or services covered by the marks being compared. After examining the trademarks as indicated, the Council of State deemed that their coexistence in the market would not pose a risk of confusion, as an unaware consumer would remember that one of them was formed by a rhinoceros and the other by a bull.273 Lloreda S.A. filed before the Council of State an action for declaration of nullity and reinstatement of rights against the Trademark Office’s resolution allowing the registration of the trademark LEGRIFF & Design, applied for by Griffith Colombia S.A. and covering all products in Class 29.274 The complainant argued that the challenged resolution violated Andean Community provisions, as the applied-for mark was confusingly similar to its registered trademark LEFRIT, also covering products in Class 29. In fact, Lloreda claimed, Griffith Colombia’s trademark reproduced its trademark almost in total, since, notwithstanding some differences in graphics, the two marks were practically identical in phonetic terms. With regard to the conceptual aspect, there was consensus both in doctrine and in jurisprudence that expressions in languages other than Spanish should be deemed fantasy expressions if the general public did not know their meaning. This clarification was made because the Trademark Office had stated that the word LEGRIFF corresponded to “claw” in French. The Council of State, in accordance with the pre-judicial interpretation for this case issued by the Andean Court of 273. Alpha Shoes S.A. v. Superintendencia de Industria y Comercio, Council of State, File 7461, June 16, 2005. 274. Resolution No. 37513, November 20, 2001. Vol. 97 TMR 427 Justice,275 affirmed that there were visual, orthographic, and phonetic similarities between the trademarks at issue, in addition to the fact that the covered products belonged to the same class. With regard to likelihood of confusion from the conceptual or ideological point of view, the Council held that “claw” corresponded not to the French word GRIFF but to the word GRIFFE, and that, in any event, it was evident that the meaning of the word was not known to the average Colombian consumer. For that reason, LEGRIFF, like LEFRIT, had to be deemed a fanciful expression. This refuted the Trademark Office’s statement that the word LEGRIFF evoked a concept. The Council of State also held that confusion here was not only direct but also indirect, for consumers could think that the source of the products covered by the trademark LEGRIFF and that of the products covered by the trademark LEFRIT were the same. Accordingly, the Council of State declared null and void the resolution granting Griffith Colombia the registration of the trademark LEGRIFF & Design.276 I.B.9.a. No Similarity of Marks On December 2, 1999, Santander Investment Bank Limited applied to register the word and design mark BSCH, to cover all services in International Class 36. The application was published in the Industrial Property Gazette, and no third party filed oppositions within the legal term. On June 15, 2000, the applicant signed a worldwide agreement with Robert Bosch GmbH, owner of the registered trademark BOSCH, concerning the coexistence of the trademarks BSCH and BOSCH in Class 36. However, the Trademark Office refused the registration of BSCH as a trademark; based on a successive and comparative study of the marks, it had concluded that they were similar in both orthographic and phonetic terms, and that if they were allowed to coexist in the market they would lead consumers to error. In response, Santander Investment Bank brought before the Council of State an action for declaration of nullity and restoration of rights against the Trademark Office’s resolutions.277 It argued that as the letters BSCH were the acronym of Banco Santander Central Hispano, they sufficiently distinguished the bank’s services from those offered by its competitors and performed an 275. Andean Court of Justice, Proceeding No. 116-IP-2005, August 3, 2005, published in Gaceta Oficial del Acuerdo de Cartagena No. 1242, September 12, 2005. 276. Lloreda S.A. v. Superintendencia de Industria y Comercio, Council of State, File 7988, March 16, 2006. 277. Resolution No. 20428, August 25, 2000; Resolution No. 31168, November 30, 2000; Resolution No. 9630, March 29, 2001. 428 Vol. 97 TMR actual individualizing function, which could be derived from the volume of business and the number of clients. The bank also asserted that the coexistence agreement entered into with respect to the trademark BOSCH, which covered insurance services that were different from the financial and banking activities carried out under the BSCH mark, allowed a coexistence of the marks free from a risk of confusion with respect to the services and their sources. The Council of State, following the pre-judicial interpretation rendered by the Andean Court of Justice for this case,278 clarified that coexistence agreements neither make marks registrable per se nor prove that their similarities will not lead consumers to error.279 Agreements of this nature reflect the perception of the parties regarding a risk of confusion. It must always be remembered, the Council added, that the purpose of the trademark legislation in the Andean Community is to protect consumers, and for this reason it is the state that in all cases determines the possibility of confusion with respect to an applied-for mark after a comparative examination against prior-registered trademarks. Notwithstanding the above statements, the Council of State held that there was no risk of confusion between BSCH and BOSCH that would make the former unregistrable. It found that, when the marks were seen as whole units, taking into account their visual, phonetic, and conceptual aspects, there were more differences than similarities between them. Accordingly, the trademarks could coexist in the market without posing a risk of confusion among consumers. Indeed, the Council held, as BSCH was the acronym of the corporate name of the bank, it was graphically representable and different from BOSCH. Additionally, each of the letters in BSCH had to be pronounced separately, while BOSCH was pronounced as one word. On January 5, 1996, the Colombian corporation Productos Alimenticios Gallo S.A. (Gallo) applied to register the trademark GALLO & Design, covering products for preparation of pasta in Class 30. The Trademark Office refused the registration based on an opposition filed by Corporación de Alimentos S.A., owner of the word and design mark GALLO and the design mark SHAPE OF A ROOSTER,280 also registered in Class 30. Gallo filed before the Council of State an action for declaration of nullity and reinstatement of rights against the resolutions of the Trademark Office. It argued that the agency had erred in holding 278. Andean Court of Justice, Proceeding No. 104-IP-2003, October 29, 2003, published in Gaceta Oficial del Acuerdo de Cartagena No. 1015, November 27, 2003. 279. Santander Investment Bank Limited v. Superintendencia de Industria y Comercio, Council of State, File 7319, August 11, 2005. 280. Gallo means “rooster” in Spanish. Vol. 97 TMR 429 that there were similarities between the applied-for mark and the opposing party’s marks that could confuse consumers.281 The complainant highlighted that even though the products to be covered by the applied-for mark belonged to Class 30, the application specified that the mark was to cover pasta-related products, whereas the opponent’s registered trademarks covered rice. The difference in products, Gallo argued, reduced the likelihood of confusion. As evidence of peaceful coexistence of the marks, the complainant noted that both the applied-for mark and the opposing marks were registered in the same class in Peru and Ecuador, two member countries of the Andean Community, and in some other jurisdictions. This, Gallo contended, proved the wellknown character of its mark not only at the national but also at the international level. In its answer to the complaint, the Trademark Office argued that ineligibility for registration due to confusion was evident, as the marks showed graphic, orthographic, and phonetic similarities and the products involved were the same. If registration were allowed, consumers would not be protected. The Trademark Office also argued that the well-known character of a mark was not a guarantee for obtaining its registration, but instead a defense mechanism, useful in preventing the registration of trademarks that would reproduce, imitate, translate, or transcribe, whether totally or partially, a well-known mark or in requesting the cancellation of the registration of a trademark that would be similar or identical to the well-known mark. Regarding the registration in other countries, the Office indicated that there were no International Registrations, so there were no impediments to revising the registrability conditions of the trademark when applied for in Colombia. The Council of State, following the pre-judicial interpretation rendered by the Andean Court of Justice for this case,282 held that even though the marks were clearly similar, which did pose a risk of confusion, other aspects of the examination had to be revised. One of them was the consumer acknowledgment of the mark that stemmed from the advertising and dissemination of the product made by Gallo in order to produce in consumers a sensorial effect sufficient to make the product and its source distinguishable and differentiable. The Council held, further, that in this particular case it was possible to assume that consumers could differentiate the 281. Resolution No. 27546, October 28, 1997; Resolution No. 9787, May 29, 1998; Resolution No. 4432, February 25, 2003. 282. Andean Court of Justice, Proceeding No. 129-IP-2004, November 17, 2004, published in Gaceta Oficial del Acuerdo de Cartagena No. 1158, January 17, 2005. 430 Vol. 97 TMR trademarks from the fact that they were registered in several countries, from the advertising afforded by the company, and from the fact that the marks were known in different jurisdictions. In addition, the Council of State acknowledged, the Peruvian registration was proof of the peaceful coexistence of the marks. Therefore, the Trademark Office’s resolutions were declared null and the trademark GALLO was allowed to proceed to registration.283 The French corporation Accor filed before the Council of State an action for declaration of nullity and restoration of rights against the Trademark Office’s resolutions refusing the registration of the trademark IBIS, to cover lodging services in Class 42. The Trademark Office based its decision on the similarities between the IBIS mark and the previously registered trademark AVIS, owned by Wizard Co. Inc.284 Accor alleged that the trademarks were different both phonetically and orthographically. In addition, the plaintiff argued, they had previously coexisted in Colombia and currently coexisted in many other countries, such as Peru, Bolivia, the United States, South Korea, Spain, France, and Mexico. The pre-judicial interpretation by the Andean Court of Justice focused on the rules of comparison for determining when two trademarks are confusable. The Andean Court asserted that the assessment must be made based on the total effect of the mark, taking into account all of its elements, in order to preserve the phonetic, graphic, and conceptual unity. Furthermore, the method to be employed must compare trademarks consecutively instead of simultaneously. Finally, the Andean Court noted, the authority must observe the similarities instead of the differences between the marks.285 Taking this judgment into account, the Council of State made a further comparison and concluded that there was no risk of confusion between the trademarks IBIS and AVIS.286 First, the Council found differences after comparing the marks with a view to total effect and orthography. Second, it determined that the expressions, when analyzed consecutively, did not produce an impression of similarity. Finally, the Council grounded its finding both on the fact that consumers of Class 42 products are usually 283. Productos Alimenticios Gallo S.A. v. Superintendencia de Industria y Comercio, Council of State, File 00330, March 30, 2006. 284. Resolution 15806, August 12, 1999; Resolution No. 10803, May 29, 2000; Resolution No. 21715, August 31, 2000. 285. Andean Court of Justice, Proceeding No. 147-IP-2003, February 18, 2004, published in Gaceta Oficial del Acuerdo de Cartagena No. 1047, March 3, 2004. 286. Accor v. Superintendencia de Industria y Comercio, Council of State, File 6902, June 2, 2006. Vol. 97 TMR 431 sophisticated and on the proof of the previous coexistence of the trademarks in Colombia as well as in other countries. Société des Produits Nestlé S.A. (Nestlé) filed before the Council of State an action for declaration of nullity and reinstatement of rights against the resolutions of the Trademark Office that refused the registration of the trademark OPEN UP, applied for to cover all products in Class 35.287 The refusal was based on the similarity of the mark OPEN UP to OPEN TV, a trademark registered in Class 35 and owned by Opentv, Inc., a corporation domiciled in Mountain View, California, USA. According to the Trademark Office, there were graphic, orthographic, and phonetic similarities that prevented consumers from easily differentiating the products covered by each mark. In the defense filed before the Trademark Office, Nestlé had argued that the words forming the mark OPEN TV had a meaning of their own, affirming that they meant televisión abierta (“open television”) and that the Colombian public, at all levels, could understand the expression. This allegation was disregarded by the Trademark Office, which indicated that even though the word “open” appeared in the Diccionario de la Real Academia de la Lengua Española (“Royal Academy Dictionary of the Spanish Language”) with its original English-language meaning, this could not be taken as evidence that the word was universally known among Colombians. To prove this, the Office indicated a list of words that, even though contained in the dictionary, were not known to all the citizens. Finally, the Trademark Office indicated that, where one of the elements of the marks at issue was in common use (in this case, the word OPEN, which appears in a large number of marks), said element could be used by other applicants as long as the other elements provided the distinctiveness required for the trademarks to coexist in the market. According to the Office, the addition of the word UP did not give the mark any distinctive strength. The Council of State, following the pre-judicial interpretation issued by the Court of Justice of the Andean Community,288 deemed that the similarity existing between the trademarks was evident, but that the Trademark Office made a mistake in holding that “open” could not be deemed a term in common use only because it was in the Diccionario de la Real Academia de la Lengua Española. According to the Council, the inclusion of an Anglicism in the dictionary was evidence of common use, given 287. Resolution No. 15396, May 21, 2002; Resolution No. 27904, August 29, 2002; Resolution No. 33167, October 18, 2002. 288. Andean Court of Justice, Proceeding No. 168-IP-2004, February 2, 2005, published in Gaceta Oficial del Acuerdo de Cartagena No. 1176, March 17, 2005. 432 Vol. 97 TMR that, as a rule of thumb, the dictionary includes only foreign words that are customarily used and the language enriches itself from these words only if they are frequently used over time. Consequently, the Council of State concluded that Opentv could not own the word OPEN in an exclusive manner because it was in common use; that the additional element—TV—did not give Opentv exclusive rights to prevent future registrations of trademarks including the word OPEN; and that, for these reasons, the Trademark Office should have allowed the registration of the trademark OPEN UP applied for by Nestlé.289 I.B.22. Distinctiveness Adidas Salomon AG (Adidas) applied before the Council of State for the nullification of the Trademark Office’s resolution refusing the registration of a graphic mark consisting of three parallel stripes arrayed vertically along a bottom garment (e.g., a trouser leg), applied for to cover all products in International Class 25 (see below).290 The Trademark Office had rejected the application on the ground that the mark lacked distinctiveness because it was customarily used in the market by various manufacturers of clothing; consequently, the mark would not identify the source of the covered products, and competitors’ use of it would be unjustifiably limited. Adidas contended that the mark was distinctive, as (1) it had used and registered a trademark consisting of three parallel stripes in different positions and shapes, both in Colombia and in several other countries; (2) it had registered the same mark in Bolivia and Ecuador for use along a bottom garment; and (3) the 289. Société des Produits Nestlé S.A. v. Superintendencia de Industria y Comercio, Council of State, File 8910, March 9, 2006. 290. Resolution No. 8267, March 23, 2001; Resolution No. 16232, May 18, 2001; Resolution No. 28705, August 30, 2001. Vol. 97 TMR 433 trademark was a well-known mark nationally and internationally, covering sports products. In the mandatory pre-judicial interpretation rendered for this case, the Andean Court of Justice stated that the analysis conducive to establishing whether a graphic mark has distinctiveness requires a more elaborate cognitive process, because such a mark should be protected not only because of the graphic aspect itself but also because of the response that the figure can produce in consumers, which should prevail. The Andean Court held that if a mark intended to be registered consists of a graphic to be applied to the surface of products, it should have a specific element that allows consumers to identify its commercial origin.291 The Council of State held that Adidas’s trademark was not distinctive, as the figure claimed was in common use, being used on many garments, and included vertical stripes that were similar to the pattern applied for. As a result, the Council of State ruled that, in conformity with the Andean laws, the mark could not be registered because it lacked an essential requirement for the registration of a mark, namely, distinctiveness.292 III.A.1. Famous Marks Supertex Medical S.A. filed before the Council of State an action for declaration of nullity and restoration of rights against the Trademark Office’s resolutions allowing the registration of the trademark SUPERTEX, covering products in International Class 2,293 in the name of Mr. Jairo Caicedo Castillo.294 In support of its claims, the plaintiff argued that the Trademark Office did not take into account the fact that the trademark applied for was identical to its previously registered trademark SUPERTEX (Classes 5 and 24) and trade emblem SUPERTEX. Supertex Medical further asserted that by August 1997, the month in which the application was published, all its trademarks were already famous, as proven by the sales volumes for 1994 to 1998, certified by an internal auditor. To reinforce the argument about the well-known character of its trademarks, the plaintiff had asked the Trademark Office to obtain from 15 large health institutions nationwide certifications of purchases made from the corporation. But the Trademark Office 291. Andean Court of Justice, Proceeding No. 149-IP-2004, January 13, 2005, published in Gaceta Oficial del Acuerdo de Cartagena No. 1172, March 7, 2005. 292. Adidas Salomon AG v. Superintendencia de Industria y Comercio, Council of State, File 00103, March 9, 2006. 293. Paints, colorants, varnishes, lacquers, resins. 294. Resolution No. 13705, July 21, 1999; Resolution No. 23771, November 17, 1999; Resolution No. 3290, February 24, 2000. 434 Vol. 97 TMR never called for this evidence, which it deemed useless. Instead, it disallowed the opposition, on the grounds that (1) there was no risk of confusion, because the marks belonged to different classes, and (2) the plaintiff had produced no evidence intended to prove the well-known character of the mark, especially with respect to product advertising. The Council of State rejected the decision of the Trademark Office. It deemed that the evidence produced by the plaintiff to prove the well-known character of its mark, such as turnover certificates, packaging, and invoices issued to a significant number of customers, was sufficient. Moreover, the Council held, the Trademark Office erred in failing to issue an order to obtain the certificates from the health institutions, as requested by the plaintiff to prove the well-known status of its marks. The Council of State explained that if the products covered by a given trademark are bought for years by the same supplier, it necessarily has to be because the good quality and reliability of the mark are known, and these aspects are set forth in the Andean legislation as necessary to establish the well-known character of a trademark. It reiterated that the well-known character of a trademark can be proven by any suitable evidentiary means, and that such determination must be the result of the application of sensible criticism. In its pre-judicial interpretation for this case, the Andean Court of Justice clarified that both the extent to which a trademark has been disseminated in different markets and has been used, and the prestige it has acquired, determine the wellknown character of the same.295 Following the Court’s precepts, the Council of State declared null and void the challenged resolutions. It determined that the well-known character of the trademark SUPERTEX in Classes 5 and 24 was proven by the length of time the mark had been in commerce and by its continued use. The Council of State also indicated that a comparison of the marks showed that they were identical, and further that the fact that the opposed registration covered products in Class 2 was irrelevant because the Andean Community legislation provides for special protection over well-known trademarks, regardless of the class in which a similar or identical trademark may be applied for.296 295. Andean Court of Justice, Proceeding No. 77-IP-2004, September 5, 2004, published in Gaceta Oficial del Acuerdo de Cartagena No. 1128, October 13, 2004. 296. Supertex Medical S.A. v. Superintendencia de Industria y Comercio, Council of State, File 6450, October 20, 2006. Vol. 97 TMR 435 III.F.3. Nullity The corporation Tecnas S.A., producer of the EL FORTÍN liquid firewood smoke sauces, filed before the Council of State an action for declaration of nullity and restoration of rights against the resolution by which the Trademark Office allowed the registration of the word and design mark HUMO DE LEÑA LIQUIDO (“LIQUID FIREWOOD SMOKE”), covering all products in International Class 30, in the name of Mr. León Sardi Herrera.297 Tecnas asserted that the Trademark Office issued the resolution without noticing that it referred to a mark that could not be registered as a trademark. The reason the mark was ineligible was that it was not sufficiently distinctive, owing to the fact that it just indicated to consumers the characteristics of the products. In this case, the product was a firewood smoke-flavored sauce that was used to give meats a smoky taste. In reply, Mr. Sardi Herrera argued that the expression HUMO DE LEÑA LIQUIDO, together with the accompanying design (logs on a fire), formed a distinctive and fanciful mark that was eligible for registration. The Council of State, based on testimony given by several experts and the pre-judicial interpretation for this case rendered by the Andean Court of Justice,298 concluded that the plaintiff was right in arguing that the phrase HUMO DE LEÑA LIQUIDO was not registrable, as the expression was the very definition of the product itself and described its own characteristics.299 The Council specifically pointed out that if the trademark were registered, it would prevent other producers from using the expression, which could not be appropriated because it described the smoky taste of products that any other trademark could intend to cover. COMMUNITY TRADE MARK I.B.7.b. Three-Dimensional Marks Wim De Waele, an individual residing in Belgium, filed with the Office for Harmonization in the Internal Market (OHIM) an application for registration as a Community trade mark (CTM) of a three-dimensional mark, to cover goods in International Classes 297. Resolution No. 2221, January 31, 1995. 298. Andean Court of Justice, Proceeding No. 24-IP-2004, May 12, 2004, published in Gaceta Oficial del Acuerdo de Cartagena No. 1080, June 9, 2004. 299. Tecnas S.A. v. Superintendencia de Industria y Comercio, Council of State, File 6425, April 28, 2005. 436 Vol. 97 TMR 18, 29, and 30.300 The applied-for mark was in the shape of an empty, twisted sausage casing (see below). By decision of September 14, 2004, the OHIM examiner dismissed the application in part—with respect to gut for making sausages in Class 18 and with respect to meat, poultry, and game; charcuterie; milk products, including cheese; confectionery; and chocolate in Class 30—on the ground that the mark was devoid of distinctive character. The applicant thereupon filed before OHIM a notice of appeal against the decision. The First Board of Appeal of OHIM modified the examiner’s decision, holding that the mark in question had distinctive character for milk products, including cheese.301 As regards the other goods to be covered, the Board held that the fact that the twisted appearance of the shape applied for was slightly more pronounced than that of the shapes usual in the trade nevertheless did not mean that such appearance was sufficiently distinctive to allow consumers to perceive it unambiguously as an indication of origin of the goods in question. Mr. De Waele then filed appeal before the European Court of First Instance (CFI) against the Board’s decision as far as “gut for making sausages” was concerned. 300. Community Trade Mark Application No. 003050531, filed February 13, 2003. 301. Case R 820/2004-1 (OHIM First Board of Appeal, November 16, 2004) (unreported). Vol. 97 TMR 437 The CFI upheld the Board of Appeal’s decision.302 More specifically, the Court confirmed the Board’s finding that the relevant public for the assessment of the distinctiveness of the mark consisted not only of consumers who were involved in the specific sector (charcuterie, in this case) but also of the end consumers in general. It also held that three-dimensional trade marks that consist of the packaging of goods and that are linked to the nature of the products must enable the average consumer to distinguish the product concerned from those of other manufacturers, and that such marks must be perceived at once as an indication of the origin of the goods concerned. Thus, they must be significantly different from the norm or customs of the sector. In this case, the CFI found that the shape applied for looked like a variant of the basic shapes for charcuterie and therefore lacked distinctive character. Accordingly, the CFI dismissed De Waele’s appeal. The decision is significant in that it underscored that the end consumer’s perception regarding the association of the threedimensional mark with the origin of the goods was crucial in the examination of registrability.303 I.B.8.a. Similarity of Marks The Greek company Athinaiki Oikogeniaki Artopoiia AVEE filed a CTM application for registration of the mark FERRÓ & Device, covering goods and services in International Classes 29, 30, and 42 (see below).304 Ferrero OHG mbH, a German company, filed opposition against the application with respect to certain goods and services in these classes, based on its prior German trade mark registration for FERRERO,305 covering certain goods in Classes 5, 29, 30, 32, and 33. 302. De Waele v. OHIM, Case T-15/05 (CFI, 3d Chamber, May 31, 2006), available at http://oami.europa.eu/en/mark/aspects/pdf/jt050015.pdf. 303. See “Alicante News - European Trade Marks and Designs Newsletter,” No. 06-2006, June 21, 2006. 304. Community Trade Mark Application No. 001010099, filed February 26, 1999. 305. Registration No. 956 671, issued April 6, 1997. 438 Vol. 97 TMR By decision of March 25, 2002, the Opposition Division of OHIM upheld the opposition with respect to certain goods in Class 30. It found that the marks under comparison were phonetically and visually similar and that they covered similar or identical goods. The applicant appealed. The OHIM First Board of Appeal confirmed the decision of the Opposition Division,306 finding that there was a likelihood of confusion and association between the marks by virtue of their phonetic and visual similarity. In addition, the Board noted, it was acknowledged that the goods covered by the marks in question were partly identical and partly similar. The applicant filed a further appeal before the CFI against the latter decision. The CFI upheld the Board’s decision and rejected the appeal.307 It confirmed the finding of both the Board and the Opposition Division that the verbal element FERRÓ was the dominating feature of the contested trade mark, the figurative part thereof (i.e., the banner) not being a characteristic element of the mark. Indeed, the banner did not “constitute a particularly original or imaginative representation capable of attracting the consumer’s attention” that was sufficient to differentiate the contested mark from the prior-registered trade mark FERRERO. On comparing the verbal element FERRÓ with the word mark FERRERO, the CFI found that the fact that the words shared the letters F, E, R, and O and that those letters were placed in the same order was more important than the fact that they did not have the same number of syllables. Accordingly, the Court concluded that the marks were confusingly similar. In this case, the European courts adopted a different position from the Greek courts, which, on comparing the trade marks in question, had found that there was no similarity between them and held that there was no risk of confusion of consumers in the Greek market. The Spanish company L & D, SA filed with OHIM a CTM application for the word and design mark AIRE LIMPIO (“CLEAN AIR”), to cover “perfumery, essential oils” in Class 3, “scented air fresheners products” in Class 5; and “advertising; commercial business handling; commercial administration; office works” in Class 35 (below, illustration at left).308 The Swiss company Julius Sämann Ltd. filed opposition against the application,309 primarily on the basis of its prior CTM 306. Case R 460/2002-1 (OHIM First Board of Appeal, December 1, 2003) (unreported). 307. Athinaiki Oikogeniaki Artopoiia AVEE v. OHIM, Case T-35/04 (CFI, 3d Chamber, March 15, 2006), available at http://oami.europa.eu/en/mark/aspects/pdf/JT040035.pdf. 308. Community Trade Mark Application No. 000252288, filed April 30, 1996. 309. Notice of Opposition No. 000086928, filed September 29, 1998. Vol. 97 TMR 439 registration for a figurative mark covering goods in Class 5 (below, illustration at right),310 as well as numerous prior-registered national and international trade marks comprising an almost identical device. L & D’s Mark Julius Sämann’s Mark The Opposition Division of OHIM rejected the opposition,311 but the Second Board of Appeal reversed and upheld it. In comparing the applied-for mark with the opposing mark, the Board found that the latter had acquired distinctiveness by virtue of the use and well-known character of a prior-registered international mark that was essentially identical in shape to the opponent’s CTM.312 Upon considering the issue, the CFI affirmed the Board of Appeal’s decision.313 The Court concluded that L & D’s defence that the mark used as the basis for the opposition lacked distinctive character had no merit, finding that the mark was distinctive. It also found unpersuasive the applicant’s arguments that the goods covered by said mark rendered it descriptive. The CFI’s conclusions were based on, inter alia, the Board’s finding that the evidence showed 50 percent recognition (market share) of the opposing mark in Italy, and use by the opponent of a series of similar marks in various countries. Having dealt with the defences and objections, the Court went on to deal with the issue of similarity, which was the essence of the matter before it. It concluded that, from both a visual and a conceptual point of view, the marks were sufficiently similar, as the primary device on both marks was a fir tree, and not, as L & D had argued, a cartoon character on the one hand and a fir tree on the other. The difference in the verbal aspect of the Spanish company’s mark AIRE LIMPIO was not, per se, sufficient to offset the risk of confusion of consumers, given the highly distinctive character of the device mark so extensively used by the opponent. 310. Community Trade Mark No. 91 991, filed April 1, 1996, registered December 1, 1998. 311. OHIM Opposition Division, February 25, 2003. 312. Case R 326/2003-2 (OHIM Second Board of Appeal, March 15, 2004) (unreported). 313. L & D, SA v. OHIM, Case T-168/04 (CFI, 4th Chamber, September 7, 2006), available at http://oami.europa.eu/en/mark/aspects/pdf/JT040168.pdf. 440 Vol. 97 TMR I.B.8.b. Similarity of Goods/Services The Spanish company Arbora & Ausonia, SL filed an opposition314 against the CTM application by Gérard Meric, a French individual, for the word mark PAM-PIM’S BABY-PROP, covering disposable babies’ napkin-pants of paper or cellulose in International Class 16.315 The opposition was based on the opponent’s three prior CTM registrations for marks containing the words PAM-PAM: 1. The word mark PAM-PAM,316 for “any ready-made clothing, in particular napkin-pants, footwear” in International Class 25; 2. The word mark PAM-PAM SERVICIO DE MERCHANDISING, SA,317 for “sanitary pants, sanitary towels, absorbent wadding, sanitary tampons and towels, sterilising preparations, cotton wool for medical purposes” in Class 5; and 3. The word and design mark PAM-PAM,318 for “napkinpants made out of paper and cellulose (disposable)” in Class 16 (see below). The Opposition Division upheld the opposition, finding that the marks demonstrated sufficient phonetic similarity that, coupled with the fact that the goods covered were identical, they created a risk of confusion of the consuming public.319 The OHIM First Board of Appeal took the same view.320 After reviewing the facts before it, the Board determined that the opposition was well substantiated and that the similarity of the important parts of the mark under review to the earlier-registered marks was so significant that it outweighed the differences in the 314. Notice of Opposition No. 000505067, filed April 19, 2002. 315. Community Trade Mark Application No. 002158467, filed July 9, 2001. 316. Community Trade Mark No. 855 931, registered October 7, 1981. 317. Community Trade Mark No. 1 153 492, registered April 20, 1988. 318. Community Trade Mark No. 1 146 300, registered May 7, 1991. 319. Decision No. 289/2004 (OHIM Opposition Division, February 9, 2004). 320. Case R 250/2004-1 (OHIM First Board of Appeal, January 17, 2005) (unreported). Vol. 97 TMR 441 remaining parts. This was because, as the Board held, the terms BABY and PROP were descriptive, in that the first refers to babies, the target group for the particular product (i.e., napkinpants), and the second is derived from the French verb propre, meaning “to toilet train.” Therefore, the Board was satisfied that the dominant element of the applied-for mark was the word combination PAM-PIM’S and that this element was quite similar to the opposing PAM-PAM marks. As the goods covered were also deemed to be similar, the risk of confusion of consumers was unavoidable. The CFI affirmed the Board’s decision.321 It ruled that the Board was correct in finding that the goods covered by the opposing marks were visually and aurally similar. Both marks related to the clothing sector, and the Court was explicit in confirming, as common practice among clothing manufacturers, the use of sub-brands, that is, marks deriving from a principal mark and sharing with it a common dominant element. Under such circumstances, the CFI held, the consuming public could quite easily be subject to direct or indirect confusion regarding the origin of the goods. I.B.9.a. No Similarity of Marks The Belgian company Inex SA filed an opposition322 against the application by Robert Wiseman & Sons Ltd, a company established in Scotland, for registration as a CTM of a black-andwhite representation of a cowhide, to cover goods in International Classes 29 and 32 and services in Class 39 (see below). 323 Inex’s opposition was based on its prior Benelux registration for a word and design mark consisting in part of a representation of a cowhide in black and white (see below).324 321. Meric v. OHIM, Case T-133/05 (CFI, 5th Chamber, September 7, 2006), available at http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en&Submit=Rechercher&alldocs=alldocs& docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=T-133/05&datefs=&datefe=& nomusuel=&domaine=&mots=&resmax=100. 322. Notice of Opposition No. 000010738, filed January 22, 1998. 323. Community Trade Mark Application No. 000132134, filed April 1, 1996. 324. Registration No. 580 538, issued October 19, 1995. 442 Vol. 97 TMR The opposition concerned some of the goods covered by the earlier mark, namely “milk and milk products, dairy products.” It was directed against “milk, milk beverages and milk products, dairy products,” referred to in the CTM application. OHIM’s Opposition Division325 and Second Board of Appeal326 dismissed, respectively, the opposition and the opponent’s subsequent appeal, on the ground that there were strong visual differences between the marks, albeit both tribunals conceded that, conceptually, the two marks were similar, since both prompted the recollection of a cow’s skin. The CFI, in examining the merits of the case, began by recognizing that it was well-settled case law that “a complex mark and another mark which is identical or similar to one of the components of the complex mark may be regarded as being similar where that component forms the dominant element within the overall impression given by the complex mark.” It went on to state, however, that in this particular case, “having regard to the goods concerned, the cowhide design cannot be regarded as highly distinctive, since that element is strongly allusive to the goods in question. That design refers to the idea of a cow, an animal known for its milk production, and constitutes an element which is unimaginative to designate milk and milk and dairy products.” The Court did recognize that the marks were not completely devoid of distinctive character. The decisive issue, however, was the assessment of the distinctive character of each mark in relation to the specific milk products it was intended to cover, as both marks contained a representation of a cow’s skin and therefore indirectly connoted that the products covered came from cows. In examining the respective marks, the CFI was satisfied that the mark forming the basis for the opposition was quite distinctive from the opposed mark, since it comprised the word mark INEX, 325. Decision No. 2822-2000 (OHIM Opposition Division, November 29, 2000). 326. Case R 106/2001-2 (OHIM Second Board of Appeal, February 4, 2003) (unreported). Vol. 97 TMR 443 as well as several different device and word elements aside from the cowhide design, which was per se different from the one comprising the opposed mark. Based on the finding that there were indeed significant differences between the respective marks and that those were significant enough to ensure that the likelihood of confusion was avoided, the CFI dismissed the Opposition.327 Marcorossi Srl, an Italian company, filed with OHIM a CTM application for the registration of the word mark MARCOROSSI, to cover goods in Classes 18 and 25.328 The Italian company Sergio Rossi SpA filed opposition against the application for all covered goods in Classes 18 and 25, based on the following prior trade mark registrations: (1) the Italian word mark MISS ROSSI, covering shoes in Class 25;329 (2) the Italian figurative mark SERGIO ROSSI, covering the same goods;330 and (3) the CTM SERGIO ROSSI, covering goods in Classes 18 and 25.331 The Opposition Division of OHIM upheld the opposition, finding that the dominant feature of the marks under comparison, namely the last name ROSSI, created an aural and conceptual resemblance between them that was sufficient to mislead consumers, especially non-Italians, as to the origin of the covered goods. Upon recourse filed by Marcorossi, the Second Board of Appeal of OHIM332 reversed the decision of the Opposition Division, holding that the last name Rossi was not the dominating feature of the marks and that there was visual and aural dissimilarity between them. The Board stated, further, that in the sector of fashion, consumers are used to marks consisting of first and last names of designers, and thus they would think that each mark originated from a different designer. Sergio Rossi appealed before the CFI against the latter decision. The CFI upheld the Board’s decision and accepted the CTM registration of MARCOROSSI.333 According to the decision’s 327. Inex SA v. OHIM, Case T-153/03 (CFI, 2d Chamber, June 13, 2006), available at http://oami.europa.eu/en/mark/aspects/pdf/JT030153.pdf. 328. Community Trade Mark Application No. 001405869, filed December 1, 1999. 329. Registration No. 553 016, issued November 11, 1991. 330. Registration No. 611 072, issued December 9, 1993. 331. Community Trade Mark No. 391 656, filed October 18, 1996, registered March 20, 2000. 332. Case R 226/2003-2 (OHIM Second Board of Appeal, December 17, 2004) (unreported). 333. Sergio Rossi SpA v. OHIM, Case T-97/05 (CFI, 2d Chamber, July 12, 2006), available at http://oami.europa.eu/fr/mark/aspects/pdf/JT050097.pdf (in French). 444 Vol. 97 TMR rationale, the trade marks MARCOROSSI and SERGIO ROSSI are visually and aurally different, the common name Rossi not being sufficient to cause risk of confusion to consumers. Regarding the notoriety of the prior trade mark SERGIO ROSSI as far as shoes are concerned, the CFI stressed that this would make consumers more careful as to the origin of the covered goods. Anheuser-Busch, Inc., an American company, filed with OHIM applications for the registration as CTMs of the following “BUD” marks: 1. The word mark BUD,334 for goods in Class 32; 2. The figurative mark AMERICAN BUD,335 for goods in Classes 16, 25, and 32 (below, illustration at left); and 3. The figurative mark ANHEUSER BUSCH BUD,336 for goods in Classes 16, 25, and 32 (below, illustration at right). Following publication of the above marks in the official Community Trade Marks Bulletin of OHIM, the German company Bitburger Brauerei Th. Simon GmbH launched an opposition against each mark337 on the basis of its prior rights deriving from, inter alia, the following German national trade mark registrations: 1. The word mark BIT,338 for goods in Class 32, including, inter alia, beers, mineral waters, and carbonated waters; 2. The word and figurative mark BIT,339 for beer in Class 32 (below, illustration at left); 334. Community Trade Mark Application No. 000024711, filed April 1, 1996. 335. Community Trade Mark Application No. 000398966, filed October 16, 1996. 336. Community Trade Mark Application No. 000398867, filed October 16, 1996. 337. Notice of Opposition No. 000138281, filed March 3, 1999 (word mark); Notice of Opposition Nos. 00048274 and 00049173, filed June 10, 1998 (figurative marks). 338. Registration No. 39 615 324, issued September 17, 1996. 339. Registration No. 505 912, issued December 12, 1938. Vol. 97 TMR 3. 4. 445 The word and figurative mark BITTE EIN BIT!,340 for beer and nonalcoholic beverages in Class 32 (below, illustration at right); and The word and figurative mark BITTE EIN BIT!,341 registered in Germany for various products in Classes 16, 18, 20, 21, 24, 25, 28, 32, 34, and 42 (below, illustration at right). The CFI dismissed342 Bitburger’s oppositions and affirmed the judgments of the OHIM Opposition Division343 and Second Board of Appeal,344 which had held that the marks were not similar and as such not likely to cause confusion. In doing so, the CFI highlighted in its rationale some rather interesting points. In particular, it held that the BIT brand did not just have a “certain enhanced distinctive character,” as the Board of Appeal had concluded. Instead, based on the submitted evidence of recognition of the BIT brand by 83.3 percent of German beer drinkers on unprompted questioning and 94.8 percent on prompted questioning, the Court went beyond the previous finding and held that BIT was an extremely well-known mark and thus had an “enhanced distinctive character.” Nevertheless, while it accepted the fame of the BIT brand among the German public and effectively was prepared to acknowledge that the dominant element of all three AnheuserBusch’s marks might in fact be the word BUD, the CFI still held that there was no likelihood of confusion between the two brands. This finding was made despite Bitburger’s arguments that in the German language, if the consonant “d” is the last letter of a word, it is pronounced exactly like the consonant “t,” and despite the fact that the goods in question were likely to be ordered orally in bars or other noisy environments. The CFI readily acknowledged that it was well-established case law in actions involving CTMs that the more distinctive the 340. Registration No. 704 211, issued July 5, 1957. 341. Registration No. 1 113 784, issued November 3, 1987. 342. Bitburger Brauerei Th. Simon GmbH v. OHIM, Joined Cases T-350/04–T-352/04 (CFI, 5th Chamber, October 19, 2006), available at http://oami.europa.eu/en/mark/aspects/ pdf/JT040350.pdf. 343. OHIM Opposition Division, March 27, 2002. 344. Cases R 447/2002-2, R 451/2002-2, and R 453/2002-2 (OHIM Second Board of Appeal, June 22, 2004) (unreported). 446 Vol. 97 TMR earlier mark, the greater the likelihood of confusion, and that since the earlier marks were registered in Germany, the relevant consuming public to be considered in assessing the risk of confusion was that of Germany. Nevertheless, after dissecting each component of the respective marks, the CFI was satisfied that, phonetically speaking, the verbal elements BIT and BUD were quite different in their pronunciation, so much so that they were distinguishable, notwithstanding the particularities of pronunciation of the German language. The above finding was further supported by the fact that, visually, the marks had sufficient differences that they were distinguishable. In light of its findings, the CFI was satisfied that there was no likelihood of confusion, and that the autonomy of the CTM system was such that it did not obligate the Court to be consistent in its rulings with the findings of the German national courts on the same matter. I.B.11.d. Scandalous Mark Kenneth Jebaraj, an individual resident in the United Kingdom and trading as Screw You, filed a CTM application for SCREW YOU,345 to cover the following goods: • “Sunglasses, spectacle frames, spectacle cases, spectacles, swimming jackets, weights” in Class 9. • “Condoms, contraceptives, breast pumps, artificial breasts, sex toys (vibrators, dolls)” in Class 10. • “Clothing, footwear, headgear” in Class 25. • “Bags, balls for games, baseball gloves, bats for games, belts for weight lifting, boxing gloves, games, guns (paint ball), sporting apparatus, ice skates, rackets, roller skates, skates (ice), surf boards, weight lifting belts (sports articles)” in Class 28. • “Alcoholic beverages (except beers), beverages containing fruit (alcoholic), bitters, brandy, cider, cocktails, gin, liqueurs, rum, spirits (beverages), vodka, whisky, wine” in Class 33. Upon examination of the applied-for mark, the OHIM examiner informed the applicant that the mark was not eligible for registration as it contravened the principles of public decency or the generally accepted principles of morality, “screw” being “a coarse slang word equivalent to the word ‘fuck’ and the expression 345. Community Trade Mark Application No. 003888344, filed June 21, 2004. Vol. 97 TMR 447 SCREW YOU [being] a profane expression used to insult a person.”346 Despite subsequent correspondence between the applicant and the examiner, the examiner’s decision deeming the mark ineligible for registration was not altered. As a consequence, the applicant filed an appeal347 against the decision, which was referred by the Second Board of Appeal to the Grand Board. The applicant based his appeal primarily on the following grounds: • The word “screw” was not as offensive as other words with a similar meaning, and the expression “screw you” had been used on both EastEnders and The Simpsons, two very popular British television programmes, without apparent upset of the public. • A good criterion for deciding the appropriateness of language is if such language has been used in broadcast television in the United Kingdom (given the fact that there are usually various checks before airing an episode, especially of the EastEnders programme, in order to avoid causing widespread offence to viewers) and the reaction, if any, caused to the British public. • The American comedian George Carlin’s list of “Seven Dirty Words” did not include the particular word “screw.” In fact, in the United Kingdom, other marks that appeared to be of greater moral concern were being used—for example, FCUK, Criminal, Virgin, Suck it & See, and Wet’N Wild. • The mark SCREW YOU was registered in the United Kingdom on April 28, 2006, for the following goods: 1. Condoms, in Class 10; and 2. Beers, mineral and aerated waters and other nonalcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages, in Class 32. The Grand Board of Appeal, in its rationale, reviewed several different aspects of the matter at issue. In particular, first, it distinguished the issue of registration from the issue of use in that one does not affect the other in terms of national law. Therefore, it held that even if such a mark were to be registered, there was nothing to preclude the national courts of the European Union Member States from prohibiting the use of said mark in a specific country’s territory, as was expressly called for in the Community trade mark Regulation.348 346. Letter of November 3, 2004. 347. Case R 495/2005-G, appeal filed April 27, 2005. 348. Council Regulation (EC) No. 40/94, Art. 106(2), December 20, 1993. 448 Vol. 97 TMR The Grand Board then went on to examine the issue of freedom of expression as protected by Article 10 of the European Convention for the Protection of Human Rights and Fundamental Freedoms, in conjunction with the fact that traders should, by virtue of their activities, be allowed sufficient liberty to employ words and images in their effort to attract business and assess whether, in this case, which extent of such freedom might unduly curtail the right of the public not to be confronted with disturbing, insulting, and even threatening trade marks. The Board underlined the difficulty in deciding when a mark actually qualifies as being “seriously abusive and likely to cause deep offence,” as opposed to being “merely irreverent or distasteful.” In doing so, it referred to previous similar matters, such as DICK & FANNY349 and BIN LADEN,350 and reiterated that the proper threshold for deciding the eligibility of a trade mark and its potential conflict with public morality or policy was the standard of a reasonable person with normal levels of sensitivity and tolerance. In applying the above test to the facts before it, the Grand Board of Appeal concluded that the mark at issue certainly fell “within the domain of vulgarity, insult and profanity. The question is just how vulgar, insulting and profane is the expression SCREW YOU in the English language?” In order to decide the above, the Board had to decipher the difference between freedom of artistic expression and freedom of commercial expression and the priority of the latter over the former. It therefore considered that restrictions against the use of the term in question would in principle be applied more leniently in television programmes than they would in the commercial sector. As such, the use of the expression SCREW YOU on television programmes, that is, in the name of art and literature, would by no means offer a sufficient prima facie “defence” for allowing its use in the business sector. After concluding that the expression erm SCREW YOU, while not the coarsest one in the English language, was still capable of offending a substantial portion of the ordinary citizens in Britain and Ireland, especially if it were encountered in ordinary shops to which children had access, or if advertised on television at a time when children might be watching, the Board went on to scrutinize which goods may be covered by the particular mark and which ones are to be deemed “ordinary items” found in regular outlets visited by the general public and which are to be considered “specialized” goods sold exclusively in sex shops. The Grand Board of Appeal therefore ultimately held that use of the mark SCREW YOU should be allowed only on or in 349. Case R 111/2002-4. 350. Case R 176/2004-2. Vol. 97 TMR 449 connection with those products that were specifically sold in sex stores and that the expression should not be allowed to be registered for the remainder of the proposed products, which were available to and accessible by the general public.351 II.G. Evidence Baron Philippe de Rothschild SA, a French company, filed with OHIM a CTM application for the registration of the word mark LA BARONNIE, to cover goods in International Class 33.352 The Spanish company La Baronía de Turis filed opposition against the application based on its prior-registered word mark BARONIA, covering goods in the same class. The opponent submitted evidentiary material in an effort to prove use of its mark. The Opposition Division of OHIM rejected the opposition, finding that the submitted material was not sufficient to prove use of the trade mark BARONIA. La Baronía de Turis filed recourse before the Second Board of Appeal of OHIM and submitted new evidentiary material. The Board rejected the recourse on the ground that the newly submitted evidence had been filed after the expiry of the term it had set.353 Upon further appeal by La Baronía de Turis against the latter decision, the CFI agreed with the decisions of both the Board and the Opposition Division to the extent that they held that the evidentiary material submitted by the company was not sufficient to prove its use of the BARONIA mark. Regarding the new material submitted by La Baronía de Turis before the Board of Appeal, however, the CFI differed in its position. Taking into consideration the provisions of the Community Trade Mark Regulation, the Court held that the Board of Appeal had the same powers as the Opposition Division, which issued the contested decision, and that the Board’s examination concerned the entirety of the dispute. The CFI held, further, that in accordance with the provisions of Article 74(2) of the Regulation, OHIM, in considering an appeal, may not take into consideration evidence that has not been submitted by the parties “in due time.” However, the term “in due time” must be interpreted as referring to the term for the filing of an appeal, as well as to any other time limit set in the course of the proceedings in question. Accordingly, the Board was obliged to take into consideration evidentiary material submitted to it irrespective of whether said material had 351. Case R 495/2005-G (OHIM Grand Board of Appeal, July 6, 2006), available at http://oami.europa.eu/LegalDocs/BoA/2005/en/R0495_2005-G.pdf. 352. Community Trade Mark Application No. 002057487, filed January 26, 2001. 353. Case R 57/2003-2 (OHIM Second Board of Appeal, July 9, 2003) (unreported). 450 Vol. 97 TMR already been filed before the Opposition Division or was first submitted before the Board of Appeal. In view of the above, the CFI ruled that the Board of Appeal erred in not taking into consideration the evidentiary material submitted by La Baronía de Turis; however, according to established jurisprudence, a decision may be annulled based on the existence of a procedural defect only where the decision could have been different if said defect did not exist. In this case, the CFI held that it could not be excluded that the evidentiary material in question would not have been crucial to the outcome of the case, and therefore it annulled the Board’s decision.354 CZECH REPUBLIC I.B.9.a. No Similarity of Marks The owner of the registered trademark VITACTIVE filed an opposition against the application for registration of the trademark VITAFIT, for products in Class 32. The bases for the opposition were visual and phonetic similarity of the marks being compared and similarity of the goods covered. The Czech Industrial Property Office refused the opposition, finding that there was no confusing similarity between the marks under comparison. On appeal, the appellate panel of the Industrial Property Office upheld the decision at first instance.355 After comparing the opposed trademark VITAFIT and the opposing trademark VITACTIVE, it found that both were composed of a one-word element with the same number of syllables; however, the pronunciation of the second and third syllables was substantially different. Therefore, the panel found that the marks demonstrated no phonetic or visual similarity. With regard to the inclusion of the identical combination of letters V I T A in both marks, the panel determined that those letters evoked the designation of vitamin preparations and/or products, and thus the element VITA was nondistinctive. The distinctive parts of the marks under comparison, therefore, were the second elements, FIT and ACTIVE. III.A.11.a. No Similarity of Marks The owner of the registered trademark CLASSIC filed a cancellation action against the younger trademark TCHIBO 354. La Baronía de Turis, Cooperativa Valenciana v. OHIM, Case T-323/03 (CFI, 1st Chamber, July 10, 2006), available at http://oami.europa.eu/fr/mark/aspects/pdf/JT030323. pdf (in French). 355. Office of Industrial Property, Decision No. O-189549, November 3, 2005. Vol. 97 TMR 451 CAPPUCCINO CLASSIC. It argued that the mark at issue was confusingly similar to its mark and had been registered for the identical goods in International Class 30. The cancellation action was dismissed by the Czech Industrial Property Office, which held that the marks were not confusingly similar. On appeal, the petitioner argued that the trademark CLASSIC had a high distinctive capacity that had been acquired through its use, and that such capacity was demonstrated to the Office in the registration proceedings concerning this mark. The petitioner claimed that the word element CAPPUCCINO was merely a descriptive term and that an average consumer would likely disregard the other word element, TCHIBO, contained in the contested mark. It also argued that the dominant part of the contested mark was the word CLASSIC, which was identical to the petitioner’s prior-registered trademark. The appellate panel of the Industrial Property Office upheld the first instance decision.356 It determined that the word “classic” was commonly understood by the average consumer as meaning “classical, usual and/or well-established.” As “classic” lacked inherent distinctiveness, registration was granted on the basis of acquired distinctiveness, which had been established in the registration proceedings. The panel also found that of the three words comprising the contested trademark, the words CLASSIC and CAPPUCCINO lacked distinctiveness and served merely to describe the quality of the products. The only distinctive part of the contested trademark was the word TCHIBO. Therefore, the panel found no similarity between the marks under comparison. DENMARK I.B.4. Geographical Names Aalborg, the fourth-largest city in Denmark, was the subject of two recent Danish Supreme Court decisions concerning trademark rights in geographical names.357 The first case concerned an application for registration of the trademark AALBORG for boilers in the name of Aalborg Industries A/S. The Danish Patent and Trademark Office and the Board of Patent and Trademark Appeals rejected the application on distinctiveness grounds. Applying the European Court of Justice’s (ECJ’s) holding in Windsurfing Chiemsee,358 the middle court (the Copenhagen Maritime and Commercial Court in) held 356. Office of Industrial Property, Decision No. O-145648, October 20, 2005. 357. See also III.A.11.a. No Similarity of Marks. 358. Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) v. Boots- und Segelzubehör Walter Huber & Franz Attenberger, Cases C 108/97 and C 109/97 (ECJ, May 4, 1999). 452 Vol. 97 TMR that there were no geographical or other factors in Aalborg that gave boilers that were designed and produced in Aalborg, even by other manufacturers, special characteristics or qualities. Boilers made in Aalborg do not distinguish themselves from boilers made or designed in other parts of Denmark or the rest of the world, and the geographical indication Aalborg does not impart a particular characteristic to boilers. Accordingly, the Maritime and Commercial Court found that the mark was distinctive. The Danish Supreme Court, though, reversed. It held that there was nothing in Article 3(1)(c) of the European Trademarks Directive,359 the legislative history, or the jurisprudence whereby only geographical indications, which the relevant group of consumers associates with a particular quality or other characteristics of the goods at issue, are not registrable. As Aalborg is a fairly large city with a not insignificant amount of industry, the relevant consumers would consider the goods to originate there. Despite the fact that OHIM (Office for Harmonization in the Internal Market) had registered the AALBORG mark and the OHIM Cancellation Division had rejected a demand to cancel the registration,360 the Danish Supreme Court held that the mark lacked distinctiveness.361 III.A.2.b. Similarity of Marks A golf club’s use of the name Royal Copenhagen Golf Center was found to have infringed the trademark ROYAL COPENHAGEN, which had been licensed to the Royal Copenhagen Golf Club. ROYAL COPENHAGEN is the oldest trademark in Denmark, having been used on porcelain since 1775. In 1987, the proprietor, Royal Copenhagen A/S, had the mark registered for sports articles in International Class 28 and sporting events in Class 41. In 2001, the Copenhagen Golf Club asked Royal Copenhagen A/S for permission to use the name Royal Copenhagen when using the English version of the golf club’s company name; the club commenced such use by 2002. 359. First Council Directive 89/104/EEC of December 21, 1988, to approximate the laws of Member States relating to trade marks. Article 3(1)(c) provides that “trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods,” may not be registered or if registered may be liable to be declared invalid. 360. Case 669C (OHIM Cancellation Division, November 23, 2004). The decision has apparently been appealed. 361. Ankenaevnet for Paterneter og Varemaerker v. Aalborg Industries A/S, Case No. 579/2004 (Danish Supreme Court, October 4, 2006), Ugeskrift for Retsvaesen 2007.146H. Vol. 97 TMR 453 The defendant, Royal Copenhagen Golf Center A/S, had the name Royal Copenhagen Golf Center registered in the Danish Commerce and Companies Register in 2000. The Danish Supreme Court found that the defendant might have been able to remove the ROYAL COPENHAGEN registration in 2000 for non-use with respect to all goods and services for which the mark was not in genuine use, but did not do so. Thus, the famous porcelain manufacturer was entitled to grant a license in 2001. The Court found, further, that the plaintiff, Copenhagen Golf Club, was entitled to police the trademark as licensee, and that it was not guilty of laches. The Supreme Court held that the name Royal Copenhagen Golf Center could be confused with Royal Copenhagen Golf Club and therefore was infringing the plaintiff’s license to use the name Royal Copenhagen in the English version of its club name.362 III.A.4. Disclaimers A disclaimer was decisive in a case involving the trademark rights of the famous singer Olivia Newton John. The dispute concerned the application by Egmont Serieforlaget A/S for registration of the trademark OLIVIA in International Class 16. ON-J Productions, Ltd. opposed on the basis of its prior-registered trademarks OLIVIA and OLIVIA NEWTON-JOHN, effectively for the identical goods in Class 16. The complainant’s OLIVIA word mark had the following disclaimer at the end of the recitation of goods in Class 16: “all of the foregoing associated with the wellknown entertainer Olivia Newton John.” The respondent’s goods were a publication entitled OLIVIA, concerning pets, that was aimed at young girls and that made no mention of the famous entertainer. Thus, there was no similarity of goods and no confusing similarity of marks.363 III.A.11.a. No Similarity of Marks In its dispute with another company, Aalborg Engineering, the plaintiff, Aalborg Industries A/S, claimed that Aalborg Engineering was infringing the word mark AALBORG INDUSTRIES and the logo AALBORG INDUSTRIES & Triangle Design. The Supreme Court ruled that Aalborg Industries did not have the exclusive right to use the word Aalborg as a trademark.364 It 362. Københavns Golf Klub v. Royal Copenhagen Golf Center A/S, Case No. 15/2004 (Danish Supreme Court, February 13, 2006), Ugeskrift for Retsvaesen U2006.1486H. 363. Egmont Serieforlaget A/S v. ON-J Productions, Ltd., Case AN 2006 00014 (Danish Board of Patent and Trademark Appeals, October 20, 2006), reversing the Danish Patent and Trademark Office. 364. See also I.B.4. Geographical Names. 454 Vol. 97 TMR found that there was no visual and auditory similarity between the words ENGINEERING and INDUSTRIES. Therefore, the defendant’s use of the word mark AALBORG ENGINEERING did not infringe the plaintiff’s trademark rights. However, the Supreme Court prohibited the defendant from using a logo similar to the plaintiff’s logo AALBORG INDUSTRIES & Triangle Design.365 III.A.18. Equitable Defenses Acquiescence concerning company names was at issue in In Vitro A/S v. Invitrogen A/S. In Vitro A/S had had its name registered in the Danish Commerce and Companies Register since 1989. In 2001, the defendant changed its name from Life Technologies A/S to Invitrogen A/S. The defendant’s parent company had been doing business under the name Invitrogen Corporation since 1987. Both In Vitro A/S and Invitrogen A/S sold basically the same medical products to the same group of customers. In Vitro A/S sought to restrain Invitrogen A/S’s use of its company name as a trademark and to have the name removed from the Danish Commerce and Companies Register. The lower court held that the plaintiff’s mark IN VITRO and the defendant’s mark INVITROGEN were confusingly similar and that the defendant had not established trademark rights in INVITROGEN prior to 2001. On appeal, the Danish Supreme Court agreed that the plaintiff’s mark and company name had achieved the requisite distinctiveness through use. Further, the Supreme Court found that the two companies acted in the same market—sometimes in direct competition—and agreed that the trademarks and company names were confusingly similar. The Court noted, however, that the defendant’s parent company had sold INVITROGEN products in Denmark via foreign distributors since the beginning of the 1990s, and that sales had steadily increased through 2001. It was assumed that In Vitro A/S was aware of the use of the INVITROGEN mark sometime prior to its objection in 2001. Under these circumstances, Invitrogen A/S was allowed to continue to use its company name as a trademark in Denmark. The Supreme Court ruled that the name not be removed from the Danish Commerce and Companies Register.366 365. Intrade Finance A/S (formerly known as Aalborg Engineering A/S) v. Aalborg Industries A/S, Case No. 109/2005 (Danish Supreme Court, October 5, 2006), Ugeskrift for Retsvaesen 2007.150H. 366. Invitrogen A/S v. In Vitro A/S, Case No. 226/2004 (Danish Supreme Court, November 11, 2005), Ugeskrift for Retsvaesen 2006.480H. Vol. 97 TMR 455 III.A.22. Trade Dress The boundary between non-trademark decoration and trade dress rights was addressed by the Danish Supreme Court in a case concerning whether a supermarket’s sale of a jacket with a fourstripe design infringed plaintiff Adidas International’s three-stripe device mark. Defendant FDB, a supermarket chain, had sold jackets that were decorated with four stripes down the sleeve. Plaintiff is the owner of a number of registered device marks consisting of three parallel stripes, equally long and equally wide, running down the sleeve of a sweater or a jacket. Adidas claimed that FDB’s jackets had infringed its trademark rights. The Danish Supreme Court found that the plaintiff’s trademark rights must be seen in light of the right of other designers to use stripes as decoration. It found that Adidas therefore could not be protected through regular trademark protection, but only through its mark’s having acquired distinctiveness through use. The Court emphasized that in defining the sphere of protection of the trademark right, the rights of other traders to use stripes as decoration on clothing must not be limited more than necessary to protect the trademark. The four stripes of decoration were held to be not confusingly similar to Adidas’s three-striped trademark, in that the consumers were able to see that the stripes were just decoration.367 The scope of protection of trade dress for snacks, and in particular how much an infringer must change before its new product is no longer infringing, was addressed by the Copenhagen Maritime and Commercial Court. The case concerned the cone-shaped BUGLES trade dress, which was registered in Denmark in 1998 on the basis of acquired secondary meaning. At first, defendant OK Snacks A/S used a snack that was similar to the BUGLES cone but curved like a boat. Plaintiff Frito-Lay’s licensor successfully opposed registration of this boat-shaped mark as a Community trade mark (CTM). OK Snacks ceased marketing the boat-shaped cone and began marketing a bell-shaped cone. This bell-shaped cone was registered as a CTM, and thus was not challenged by the plaintiff or its licensor. The Maritime and Commercial Court found that the boatshaped product clearly was an infringement. It held, moreover, that the bell-shaped version of the snack was still similar, and therefore that, based on an overall evaluation, the snacks had to be 367. Adidas International B.V. v. FDB, Case No. 361/2001 (Danish Supreme Court, November 30, 2005), Ugeskrift for Retsvaesen 2006.600H. 456 Vol. 97 TMR considered confusingly similar. It was irrelevant that Frito-Lay had not objected to the registration of the bell-shaped cone.368 III.A.27. Exhaustion of Trademark Rights The Danish Supreme Court has addressed the issue of the exhaustion of trademarks for construction materials sold in bulk and in boxes. Fischerwerke Artur Fischer GmbH & Co. KG was the owner of the trademark FISCHER, for wall plugs, etc. Expandet Screw Anchors A/S, a competitor, used the trademark EXPANDIT for the same products. A Danish distributor changed suppliers from Fischer to Expandet. Expandet removed Fischer’s surplus stock of FISCHER products and repackaged these in EXPANDIT boxes. When Fischer objected, Expandet repackaged the goods again, in neutral boxes. The Copenhagen Maritime and Commercial Court found that both the repackaging in EXPANDIT boxes and the repackaging in neutral boxes were an infringement of Fischer’s trademark rights and in violation of the Danish unfair competition legislation. Accordingly, it levied damages and fines of DKK 125,000 (about US $21,500). On appeal, the Danish Supreme Court agreed that the repackaging in EXPANDIT boxes was an infringement. However, it held that the sales in bulk from neutral, open boxes did not infringe Fischer’s rights. As the duration and scope of the sales in the repackaged FISCHER products in EXPANDIT boxes were small (14 days from two stores), the Supreme Court ruled that no damages or fines were due.369 III.J. Gray Marketing The conditions for applying the new securing-of-evidence provisions of the Administration of Justice Act in a parallel import case were addressed by the Danish Supreme Court in Fotex v. BLEND A/S. Fotex, a Danish department store, had sold jeans bearing the trademark BLEND. Under the assumption that the jeans were illegal parallel imports, BLEND A/S, the owner of the BLEND trademark, brought suit for an injunction, alleging that the jeans were placed on the market in the European Union without its permission. The defendant refused to inform the Bailiff’s Court where it had purchased the jeans, but stated under penalty of perjury that it had seen invoices proving that the jeans were not 368. Frito-Lay Trading Co. (Europe) GmbH v. OK Snacks A/S, Case V-116-04 (Copenhagen Maritime and Commercial Court, May 19, 2006) (unpublished). 369. Expandet Screw Anchors A/S v. Fischerwerke Artur Fischer GmbH & Co. KG, Case No. 78/2005 (Danish Supreme Court, August 31, 2006), Ugeskrift for Retsvaesen 2006.3158H. Vol. 97 TMR 457 illegal parallel imports. The plaintiff requested that the Bailiff’s Court secure evidence at the defendant’s domicile. The relevant article of the Administration of Justice Act provides that the presumption that a violation occurred must be well supported.370 The Bailiff’s Court found that the terms for the securing of evidence were not met, in that Fotex, through its testimony, had raised doubts as to whether the jeans were actually brought to market by BLEND A/S or with its consent. The Court of Appeal, however, reversed, finding that mere testimony was not sufficient to raise sufficient doubt as to the trademark owner’s rights. The Supreme Court agreed with the lower court that the special securing-of-evidence provisions should be used only where there is a well-supported suspicion that trademark infringement is taking place. Under the circumstances of this case, the conditions for securing of evidence were not met.371 V.A. Domain Names The boundaries concerning a parallel importer’s ability to use another’s trademark as part of a domain name were at issue in the case of Inter-Data, Silkeborg A/S v. 2c Distribution. Complainant was the exclusive Danish distributor of XEROX displays. Respondent parallel-imported XEROX displays legally and attempted to market these via the domain name xeroxdisplays.dk. The DIFO Complaints Board for Domain Names found that such use of the domain name gave the impression that there was a commercial relationship between the respondent and the owner of the XEROX trademark, in contravention of the ECJ’s ruling in BMW v. Deenik.372 The Board held that the domain name was confusingly similar to the XEROX trademark, and that the use of the domain name gave the incorrect impression that such use was authorized by the trademark owner. In addition, the use was not deemed necessary. Accordingly, the Board ordered the domain name cancelled.373 In certain circumstances, surnames can be stronger than trademark rights where domain names are concerned, as seen in the case of Thomas Højgaard Allin v. USG Danmark. The complainant’s surname is Allin. The respondent was the owner of a 370. Administration of Justice Act (RPL) art. 653. 371. Fotex v. BLEND A/S, Case No. 444/2005 (Danish Supreme Court, order of August 11, 2006), Ugeskrift for Retsvaesen 2006.2982H. 372. Bayerische Motorenwerke AG (BMW) & BMW Nederland BV v. Ronald Karel Deenik, Case C-63/97 (ECJ, February 23, 1999). 373. Inter-Data, Silkeborg A/S v. 2c Distribution, Case No. 931 (DIFO Complaints Board for Domain Names, November 6, 2006), available at www.domaeneklager.dk. 458 Vol. 97 TMR Danish trademark registration for ALL-IN, registered in August 1998 and denoting all-inclusive insurance. In October 1998, the respondent registered the Danish domain name allin.dk, which it used to point to another of its websites, on which ALL-IN insurance products were sold. The complainant alleged that the respondent’s use constituted use not of the trademark ALL-IN but of the trademark ALLIN. The DIFO Complaints Board for Domain Names held that the provisions of the Danish Surnames Act were meant to protect the bearers of a surname against unwarranted use of the name. The respondent had no trademark rights in ALLIN, only in ALL-IN. There was no evidence of common-law use by the respondent of the mark ALLIN. Therefore, despite its use by the respondent for over seven years, the Board ordered that the domain name be transferred to the complainant.374 DOMINICAN REPUBLIC I.B.8.a. Similarity of Marks Leo Pharmaceutical Products Trading Ltd. A/S (also trading as Lovens Kemiske Fabrik Handelsaktieseskab) filed an opposition against the application filed by Laboratorio Pablo Cassara S.R.L. for the trademark registration of FLUTICORT, to protect products in International Class 5. The National Office of Industrial Property375 held that the opposed mark was a partial reproduction of the opponent’s registered trademark FUCICORT, covering products in Class 5, and that such similarity gave rise to the possibility of confusion among the consumer public. Therefore, it rejected the registration of the trademark FLUTICORT.376 I.B.9.a. No Similarity of Marks Bora Bora, Inc., owner of the registered trademark BORA BORA, for goods in International Class 25, appealed the decision allowing the registration by Liz Claiborne of the trademark BORA BORA, covering goods in Class 3.377 374. Thomas Højgaard Allin v. USG Danmark, Case No. 970 (DIFO Complaints Board for Domain Names, September 23, 2006), available at www.domaeneklager.dk. 375. The National Office of Industrial Property, the trademark and patent office of the Dominican Republic, was established under the Industrial Property Law (Law No. 20-00). It is better known as ONAPI, which stands for Oficina Nacional de Propiedad Industrial. 376. Leo Pharmaceutical Products Trading Ltd. A/S (also trading as Lovens Kemiske Fabrik Handelsaktieseskab) v. Laboratorio Pablo Cassara S.R.L., Resolution No. 355 (National Office of Industrial Property, September 25, 2006). 377. Resolution No. 712 (National Office of Industrial Property, November 21, 2005). Vol. 97 TMR 459 The National Office on Industrial Property held that although the marks had the same name, the goods they protected were different. Therefore, Liz Claiborne’s trademark BORA BORA was distinctive enough to coexist in the marketplace. Accordingly, the National Office of Industrial Property confirmed the resolution.378 Reckitt & Colman (Overseas) Limited, owner of the trademark TEMGESIC, protecting goods in Classes 1 and 5, filed an opposition against the trademark application filed by Acromax Dominicana S.A. for FEMIGESIC, to cover goods in Class 5. The opponent argued that registration of the applied-for mark could lead to consumer confusion. The National Office of Industrial Property rejected the opposition. It held that there were sufficient distinctive elements in both marks that allowed them to coexist in the marketplace without inducing consumer error.379 III.A.10. Non-use of Trademark The Procter and Gamble Company filed an action for cancellation for non-use against the trademark MAGIA BLANCA, registered to protect products in International Class 3. Articles 93 and 94 of the Industrial Property Law grant any person the right to lodge an action for cancellation of a trademark that has not been used for an uninterrupted period of three years. The National Office of Industrial Property cancelled the trademark MAGIA BLANCA because the owner of the registration, Sociedad Industrial Dominicana, did not submit proof of use of its mark and consequently could not refute the arguments of the plaintiff.380 ECUADOR I.B.19. Slogans In order for a slogan to be registered in Ecuador, it must be tied to a mark and be registered separately from and as an accessory to that mark.381 In other words, the slogan follows the 378. Bora Bora, Inc. v. Liz Claiborne, Resolution No. 59 (National Office of Industrial Property, July 5, 2006). 379. Reckitt & Colman (Overseas) Ltd v. Acromax Dominicana S.A., Resolution No. 387 (National Office of Industrial Property, October 30, 2006). 380. Procter & Gamble Co. v. Sociedad Industrial Dominicana, Resolution No. 677 (National Office of Industrial Property, November 21, 2005). 381. Commission of the Andean Community, Decision No. 486 (Common Intellectual Property Regime), Article 176, September 14, 2000. Article 176 provides: “The application 460 Vol. 97 TMR fortunes of the mark as regards protection, term, cancellation, and change of ownership. Decortextiles Cia. Ltda. applied for registration of the slogan TEJIENDO IDEAS . . . PARA SU HOGAR (“WEAVING IDEAS . . . FOR YOUR HOME”), to accompany the registered trademark DECORTEXTILES, protecting cloth and textile products in International Class 24.382 Editorial Televisa Internacional S.A. filed an opposition based on its registered trademark IDEAS PARA SU HOGAR (“IDEAS FOR YOUR HOME”) in Class 16, covering a periodical magazine of that title specializing in decoration, needlework, embroidering, and knitting. The grounds for Editorial Televisa Internacional’s opposition were: (1) lack of distinctiveness of the slogan with respect to its prior-registered and notorious mark; (2) ideological confusion between the conflicting marks; (3) association between the goods; and (4) the common destination of the goods in the market. In its defense, Decortextiles argued that no similarity or likelihood of confusion existed between the goods because they were different items. It argued, further, that the applied-for slogan would always be used together with the trademark DECORTEXTILES and that such use would give the slogan sufficient distinctiveness. The Ecuadorian Industrial Property Institute (IEPI) held that a slogan cannot be registered if it refers to expressions that could hinder the protected products or services. The IEPI found that the slogan and the opponent’s mark— conceptually and appreciated in terms of both their individual elements and their total impression—had elements in common with respect to their writing as well as their pronunciation. Therefore, they presented the same idea to the consumer because cloth and textile products and a magazine specializing in decoration, needlework, embroidering, and knitting were aimed at the same market and the same consumer. This would result in a risk of confusion among consumers, who, owing to the similarity of the marks, could purchase one product instead of another in the mistaken belief that they had the same commercial origin and were of a specific quality. In addition, there was a risk of dilution of the mark if it were allowed to coexist with an identical or almost identical slogan. Based on these considerations, the opposition was admitted and registration of the slogan was denied.383 for registration of an advertising slogan shall specify the filed for or registered trademark with which it shall be used.” 382. Registration No. 32421, September 17, 2004. 383. Editorial Televisa Internacional S.A. v. Decortextiles Cia. Ltda., Docket No. 15160704, Ecuadorian Industrial Property Institute, August 22, 2006 (IDEAS PARA SU HOGAR, TEJIENDO IDEAS . . . PARA SU HOGAR). Vol. 97 TMR 461 This decision is important because it was one of the first to analyze the likelihood of confusion among consumers where the conflict concerned a mark and a slogan. III.L. Opposition/Cancellation Procedure On August 26, 2004, Arcor S.A.I.C. applied for registration of the trademark KRIPTONITA, to protect products in International Class 30. On December 13, 2004, DC Comics filed an Andean opposition based on the Venezuelan registration for its trademark KRIPTONITA, protecting products in Classes 9, 16, 25, 28, and 30. In order to fulfill the requirement of interest in the market, which means that the opponent must have the intention of marketing its goods in Ecuador, DC Comics filed, simultaneously with the opposition, applications for registration of the KRIPTONITA mark in Ecuador with respect to products in Classes 9, 16, 25, 28, and 31.384 The opposition was also grounded on the notoriety of DC Comics’ trademark KRIPTONITE, registered in the European Community (Classes 9, 16, 25, 28, 29, 30, and 32), New Zealand (Class 16), the United States (Classes 3, 25, and 28), and Argentina (Class 30). Concerning copyrights, DC Comics argued that it was the author of the characters of the SUPERMAN and BATMAN comic strips, and therefore the owner of the copyrights for products under its trademark KRIPTONITA. In answer to the opposition, Arcor asserted that the real interest in the market had not been satisfied because DC Comics had not filed an application for an Ecuadorian registration of the KRIPTONITA mark in Class 30. With regard to copyrights, Arcor argued that DC Comics could not be the author of the SUPERMAN and BATMAN comic strip characters, as it was not a person; therefore, it could be only the rights holder. In addition, Arcor submitted various examples of coexisting marks in the United States and Mexico that were as similar as KRIPTONITE and KRIPTONITA. The IEPI ruled in favor of Arcor on the grounds that (1) DC Comics presented no evidence for the notoriety of its trademark 384. Commission of the Andean Community, Decision No. 486, Article 147, September 14, 2000. Article 147 provides, in relevant part: “For the purposes of the previous article, it shall be understood that both the owner of an identical or similar trademark, for goods or services in respect of which use of the other trademark would be likely to lead to confusion, and the person that first applied for registration of the trademark in any Member Country, have a legitimate interest in lodging objections in the other Member Countries. In either case, such opponents shall demonstrate real interest in operating in the market of the Member Country where they are filing an objection by applying for registration of the trademark at the moment they express their opposition.” 462 Vol. 97 TMR KRIPTONITA and for the submission of its application for the Venezuelan registration (the main basis of the opposition), and (2) the requirement of interest in the market was not fulfilled because the opponent did not file an application for registration of the mark in Ecuador in Class 30.385 It also noted that in view of the fact that the copyrights were granted in the United States, it was strange that there was peaceful coexistence of DC Comics’ trademark KRIPTONITE with identical trademarks of other rights holders. EL SALVADOR I.A.2. Assignments The French company Rhône-Poulenc S.A. filed a trademark application for AVENTIS: OUR CHALLENGE IS LIFE & Design, for goods in International Class 31. The Intellectual Property Department denied registration based on the trademark AVENTIS & Design, registered in the name of the German firm Hoechst Aktiengesellschaft. On appeal, the National Bureau of Registries revoked the Intellectual Property Department’s denial of registration based on the fact that Hoechst’s mark had been assigned to Rhône-Poulenc subsequent to the denial resolution.386 I.B.2. Merely Descriptive Terms Hasbro, Inc., a corporation with headquarters in the United States, filed an application for registration of the trademark GAME BOARD & Design, to protect goods in International Class 28. Registration was denied by the Intellectual Property Department on grounds of descriptiveness. The National Bureau of Registries, on appeal, confirmed the Intellectual Property Department’s denial of registration.387 I.B.8.a. Similarity of Marks The Netherlands-based company Unilever N.V. filed an application to register the mark HOLANDA DE WALL´S, for goods in International Class 30. The Intellectual Property Department denied the application based on the prior registration of the 385. DC Comics v. Arcor S.A.I.C., Docket No. 987432, Ecuadorian Intellectual Property Institute, March 31, 2006 (KRIPTONITE, KRIPTONITA). 386. National Bureau of Registries, Resolution of August 17, 2005, Certification to Intellectual Property Department (Registry of Commerce) February 10, 2006. 387. National Bureau of Registries, Resolution of June 7, 2005, Certification to Intellectual Property Department (Registry of Commerce) February 28, 2006. Vol. 97 TMR 463 trademark HOLANDA & Design by the Salvadoran company Holanda S.A. de C.V. On appeal, the National Bureau of Registries confirmed the denial of Unilever’s application by the Intellectual Property Department.388 I.B.9.a. No Similarity of Marks Bayer Aktiengesellschaft, a German firm, filed a trademark application for GLUCOR, to protect goods in International Class 5. The French company Société de Produits Nestlé, S.A. filed opposition based on the applied-for mark’s lack of similarity to its prior-registered trademark GLUCO B NESTLE & Design, for goods in the same class. The Intellectual Property Department denied the opposition, holding that the marks at issue were not sufficiently similar to create a risk of consumer confusion. On appeal by Nestlé, the National Bureau of Registries upheld the Intellectual Property Department’s decision.389 I.B.12. Famous Marks The Salvadoran company Industrias Mike Mike, S.A. de C.V., filed an application to register the mark TOMMY HILFIGER, for goods in International Class 18. The Intellectual Property Department denied registration based on the fact that the appliedfor mark was identical to the notorious and worldwide famous trademark TOMMY HILFIGER and because the application mentioned that the origin of the mark was El Salvador and not the United States. On the applicant’s appeal, the National Bureau of Registries confirmed the denial of registration by the Intellectual Property Department. The Bureau also held that registration of an identical mark for different products would cause confusion among consumers with respect to the trademark’s origin.390 Hard Rock Café Limited, a company headquartered in the United States, filed an application to register its trademark HARD ROCK CAFÉ as a trade name. The Intellectual Property Department denied registration on the ground that an application for the trade name had been filed by the Salvadoran company Kosmeticos de El Salvador, S.A. de C.V. 388. National Bureau of Registries, Resolution of August 31, 2005, Certification to Intellectual Property Department (Registry of Commerce) February 8, 2006. 389. National Bureau of Registries, Resolution of August 17, 2005, Certification to Intellectual Property Department (Registry of Commerce) February 1, 2006. 390. National Bureau of Registries, Resolution of June 15, 2005, Certification to Intellectual Property Department (Registry of Commerce) February 28, 2006. 464 Vol. 97 TMR The National Bureau of Registries, on appeal, revoked the Intellectual Property Department’s denial of the registration based on the fact that HARD ROCK CAFÉ is a notorious and famous mark worldwide.391 II.C. Disclaimers and Consents Eastman Chemical Company, a U.S. corporation, filed a trademark application for EASTMAN, to protect goods in International Class 1.392 The Intellectual Property Department denied registration based on the fact that an identical mark had been registered by the American firm Eastman Kodak Company for goods in the same class.393 On appeal, the National Bureau of Registries revoked the Intellectual Property Department’s denial of registration, based on the fact that the two companies had signed a coexistence agreement so that Eastman Chemical Company could register the EASTMAN mark for specific products.394 The German company Henkel Bautechnik GmbH filed an application for registration of the trademark CERESIT, for goods in Class 2. Registration was denied by the Intellectual Property Department based on the prior registration of an identical mark in the name of the German company Ceresit GmbH. On the applicant’s appeal, the National Bureau of Registries revoked the Intellectual Property Department’s denial of registration, based on the fact that the companies had signed a consent agreement and that Ceresit GmbH had been acquired by Henkel Bautechnik GmbH.395 391. National Bureau of Registries, Resolution of July 13, 2005, Certification to Intellectual Property Department (Registry of Commerce) February 2, 2006. 392. “Chemical products such as: dyes (colorings) used as additives; adhesives; synthetic and artificial dyes, coatings, resins and plastics; intermediate organic or inorganic products, such as: additives, ingredients, solubles, solvents, reactives, catalysts for industrial use, pharmaceutical products for scientific investigation, polyethylene wax; chemical products used in lacquers, paints and other preservatives against collapsing and deterioration of wood, metals and other surfaces; antioxidants and other chemical preparations used as inhibitors to retard the deterioration of eatable foods; and all the modifications resulting in the related industrial products.” 393. “Chemicals used in industry, in science, photography and agriculture; artificial resins without processing, plastics without processing; adhesives used in industry; chemical substances intended to preserve foods.” 394. National Bureau of Registries, Resolution of October 14, 2005, Certification to Intellectual Property Department (Registry of Commerce) March 2, 2006. 395. National Bureau of Registries, Resolution of September 13, 2005, Certification to Intellectual Property Department (Registry of Commerce) February 8, 2006. Vol. 97 TMR 465 ESTONIA III.A.15. Deceptive Use There have been heated discussions in Estonia as to whether the advertisements for the new curd snack K-kohuke (“K-curd snack”), which use the same initial letter and the same colours as Keskerakond (“Centre Party”), can be regarded as political advertising. Estonia held elections for the local government councils on October 16, 2005. After the parliament had banned outdoor political advertising one month before the local elections, an Estonian advertising agency that also provides services to the Centre Party launched a massive outdoor advertising campaign for the little-known curd snack (kohuke), the ads for which were designed on the same principles as the Centre Party’s election advertising. The Centre Party denied any involvement in the controversial advertising campaign for K-curd snack, although the ads displayed curd snacks under the letter K in green, the symbol and colour of the Centre Party (K is the first letter of Keskerakond). The Centre Party’s position was supported by the Supreme Court,396 which held that the advertisements for K-curd snack were not confusingly similar to the Centre Party’s registered trademark.397 Although both had a large letter K on a green background, the Supreme Court found that their details were sufficiently different that the ads could not be regarded as political advertising. Notwithstanding the Supreme Court’s holding, the Estonian National Electoral Committee considered the ads for K-curd snack as banned outdoor political advertising before elections. Both the law chancellor and the minister of justice were also of the opinion that the ads were clearly political advertising. A poll taken in November 2005 showed that half of voters were confident that the curd snack ads were designed and displayed as hidden political advertising for the Centre Party. Fifty-one percent of the respondents said that the curd snack ads were illegal, while 37 percent said that they had seen no wrongdoing. The Estonian Consumer Protection Board said that it was treating the outdoor ads for K-curd snack as misleading advertising, as they did not make clear what the advertised product was. Misleading advertising is prohibited by Estonian law. According to the Consumer Protection Board, the design elements and the text used in the ad in question were similar to the design of an election advertisement of one political party. Therefore, 396. Case No. 3-4-1-27-05, Supreme Court, November 14, 2005. 397. Estonian Trademark Registration No. 37110. 466 Vol. 97 TMR consumers did not associate the ad in question with the curd snack, but with election propaganda. V.A. Domain Names In December 2005, the City Court of Tallinn issued its ruling on the domain name aldautomotive.ee.398 According to the information from EENet, the manager of the .ee country-code toplevel domain (ccTLD), this was the first case in which the parties did not reach an amicable settlement and EENet cancelled the domain name registration in order to enforce the judgment. The claimant, ALD Automotive Eesti AS, is a company belonging to the Société Générale group and registered in Estonia. Société Générale is the owner of the trademark ALD AUTOMOTIVE, registered in International Classes 12, 36, 37, and 39 and protected also in Estonia.399 On January 4, 2005, an article on the entry of ALD Automotive Eesti AS into the Estonian car leasing market was published in a business newspaper. A couple of days later, a competitor, OÜ Cavois Finances, filed for the domain name aldautomotive.ee. All visitors to the home page www.aldautomotive.ee were directed to the home page of OÜ Euroliising, which was also active in the car leasing field. As all three companies were active in the same field of activity in Estonia, the claimant considered the activities of OÜ Cavois Finances and OÜ Euroliising to be unfair competition that infringed its rights in the business name as well as its personal rights. The claimant also had the right to take necessary steps to protect the registration for the ALD AUTOMOTIVE mark on behalf of the Société Générale group in Estonia. According to the domain name registration rules of EENet, a domain name has to be released before it can be registered to another company. Therefore, the claimant asked the court to ascertain OÜ Cavois Finances’ obligation to file an application with EEnet for release of the domain name. In addition, the claimant asked the court to establish OÜ Cavois Finances’ obligation to remove the automatic direction from the home page www.aldautomotive.ee to www.euroliising.ee and OÜ Euroliising’s obligation to block the access from the home page www.aldautomotive.ee to the home page www.euroliising.ee. The City Court of Tallinn made a default judgement and satisfied the claim of ALD Automotive Eesti AS in its entirety. 398. Case No. 2/20-4414/05, City Court of Tallinn, December 7, 2005. 399. International Trademark Registration No. 808809. Vol. 97 TMR 467 EUROPEAN COURT OF JUSTICE I.B.10. Deceptive Marks In Elizabeth Florence Emanuel v. Continental Shelf 128 Ltd,400 the ECJ considered the issue of when a trade mark registration equating to the name of an individual can be refused or invalidated on the ground that it could deceive or mislead the public within the meaning of Article 3(1)(g) or 12(2)(b) of the EC Trade Marks Directive (the “Directive”). In 1996, Elizabeth Emanuel (who found fame as the designer of Princess Diana’s wedding dress) assigned to Elizabeth Emanuel plc all assets of her business, including an application to register her name as a UK trade mark. Registration was granted in 1997. In September 1997, Elizabeth Emanuel plc assigned its business to Frostprint Ltd (later Elizabeth Emanuel International Limited) and assigned the ELIZABETH EMANUEL trade mark to Oakridge Trading Ltd. In March 1998, Oakridge applied to register a second UK trade mark in respect of the Emanuel name; subsequently it assigned both this application and the earlier registration to Continental Shelf 128 Ltd. Ms. Emanuel opposed Oakridge’s trade mark application and applied for revocation of the earlier mark on the ground that the marks were of such a nature as to deceive the public into believing that Ms. Emanuel herself was involved in the design of products supplied by Continental Shelf. Her claim was rejected by the UK Trade Mark Office at first instance on the basis that any such confusion was a lawful consequence of the original assignment of the trade marks. Ms. Emanuel then appealed to the Appointed Person. The Appointed Person referred to the ECJ the question of when registration should be refused or invalidated on the ground that it is of such a nature as to deceive the public within the meaning of Articles 3(1)(g) and 12(2)(b) of the Directive. Article 3(1)(g) provides that trade marks shall not be registered, or, if registered, shall be liable to be declared invalid, where they are “of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service[s].” Article 12(2)(b) provides that a registered trade mark is liable to revocation if, after the date of registration, “in consequence of the use made of it by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, 400. Case C-259/04 (ECJ, March 30, 2006) (unreported), available at http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en&Submit=Rechercher&alldocs=alldocs& docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=C-259/04&datefs=&datefe=& nomusuel=&domaine=&mots=&resmax=100. 468 Vol. 97 TMR it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.” In relation to Article 3(1)(g), the ECJ confirmed that the essential function of a trade mark was the guarantee of origin: the presence of a mark indicates that the quality of the goods covered is guaranteed by the holder of the mark. Even if the average consumer had been influenced by the belief that Ms. Emanuel had been involved in the design of the goods, the characteristics and quality of the goods were still guaranteed by the holder of the trade mark. Any representations made to the consumer by the trade mark holder that Ms. Emanuel was involved in the design might be actionable in national courts, but they were not relevant to the consideration of registrabilty under Article 3. The ECJ concluded that a trade mark corresponding to the name of a designer or first manufacturer should not be refused registration or, once registered, revoked by reason of this particular feature alone—in particular where the mark and associated goodwill are later assigned together with the business making the goods to which the mark relates. This was equally so whether the question was registration or revocation under Article 3(1)(g) or revocation on grounds of deceptive use under Article 12(2)(b). I.B.22. Distinctiveness In Matratzen Concord AG v. Hukla Germany SA,401 the European Court of Justice (ECJ) clarified whether Articles 28 and 30 of the EC Treaty (Treaty Establishing the European Community), which relate to restrictions on trade between EU Member States, preclude the registration in a Member State, as a national trade mark, of a term borrowed from the language of another Member State when that term would be regarded as devoid of distinctive character or descriptive in the Member State where it originated. Hukla owned the Spanish word mark MATRATZEN, covering beds and other related furniture. Matratzen Concord applied to the Community Trade Mark office (Office for Harmonization in the Internal Market (Trade Marks and Designs), or OHIM) for registration of a composite word and figure mark containing the word MATRATZEN (see below), which Hukla opposed on the basis of its earlier-registered Spanish mark.402 While Hukla’s opposition 401. Case C-421/04, [2006] E.C.R. I-2303 (ECJ, March 9, 2006), available at http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en&Submit=Rechercher&alldocs=alldocs& docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=C-421/04&datefs=&datefe=& nomusuel=&domaine=&mots=&resmax=100. 402. This OHIM proceeding is the subject of a separate order of the ECJ on appeal from the European Court of First Instance: Matratzen Concord GmbH v. OHIM, Case C-3/03, [2004] E.C.R. I-3657 (ECJ, Order, April 28, 2004), available at http://curia.europa.eu/ Vol. 97 TMR 469 was ultimately unsuccessful, Matratzen Concord applied in parallel to the Provincial Court of Barcelona for cancellation of Hukla’s existing word mark under Article 3 of the EC Trade Marks Directive (the “Directive”).403 Matratzen Concord’s Mark Article 3(1) of the Directive provides that trade marks shall not be registered or, if registered, shall be liable to be declared invalid, where they: a. are devoid of any distinctive character; or b. consist exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.404 Matratzen Concord argued that, because the word Matratzen means “mattresses” in German, the MATRATZEN trade mark was generic and liable to mislead customers as to the characteristics and geographical origin of products bearing the mark. Matratzen Concord was unsuccessful at first instance, and it appealed to the Provincial Court of Barcelona. On appeal, the Provincial Court was concerned that the holder of the Spanish trade mark might be in a position to limit or restrict the free movement of mattresses from German-speaking Member States, in contravention of Articles 28 and 30 of the EC Treaty. Article 28 provides that “[q]uantitative restrictions on imports and all measures having equivalent effect shall be prohibited between Member States.” Article 30 provides that Article 28 shall not apply jurisp/cgi-bin/form.pl?lang=en&Submit=Rechercher&alldocs=alldocs&docj=docj&docop= docop&docor=docor&docjo=docjo&numaff=C-3/03%20%20&datefs=&datefe=&nomusuel= &domaine=&mots=&resmax=100=. 403. First Council Directive 89/104/EEC of December 21, 1988, to approximate the laws of Member States relating to trade marks. 404. Art. 3(1)(b), 3(1)(c). 470 Vol. 97 TMR to “preclude prohibitions or restrictions on imports, exports or goods in transit justified on grounds of . . . the protection of industrial and commercial property. Such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States.” Accordingly, the Provincial Court referred to the ECJ the question of whether Articles 28 and 30 should be interpreted so as to preclude registration in a Member State of a word that, in the language of another Member State, lacks distinctive character or is descriptive of the goods or services in respect of which registration is sought. The ECJ held that, in accordance with settled case law, the EC Treaty does not affect the existence of rights recognised by the legislation of a Member State in matters of intellectual property, but only restricts, depending on the circumstances, the exercise of those rights. Accordingly, the question of refusal or invalidity of a trade mark registration such as the one at issue was to be determined by reference to the Directive, not Articles 28 and 30. In relation to the questions of descriptiveness and distinctive character of a national mark under Article 3(1) of the Directive, the ECJ noted that it was necessary to take into account the perception of the relevant parties (i.e., in the trade and amongst average consumers of the relevant goods or services) in the territory where the mark was applied for or registered. It was possible that, because of linguistic, cultural, social, and economic differences between Member States, a trade mark might be devoid of distinctive character or descriptive of the goods or services concerned in one Member State but not in another Member State. Accordingly, the ECJ concluded that Article 3(1) “does not preclude registration in a Member State, as a national trade mark, of a term borrowed from the language of another Member State in which it is devoid of distinctive character or descriptive of the goods and services in respect of which registration is sought, unless the relevant parties in the Member State in which registration is sought are capable of identifying the meaning of the term.” Bovemij Verzekeringen NV v. Benelux-Merkenbureau405 concerned a reference to the ECJ on the registrability of a national trade mark in Belgium, the Netherlands, and Luxembourg (which share a common Benelux Trade Mark Office and procedure for appeals to regional courts of appeal). 405. Case C-108/05 (ECJ, September 7, 2006) (unreported), available at http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en&Submit=Rechercher&alldocs=alldocs &docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=C-108/05&datefs=&datefe= &nomusuel=&domaine=&mots=&resmax=100. Vol. 97 TMR 471 The trade mark at issue was the word mark EUROPOLIS, for a wide variety of financial, real estate, and travel-related services. The regional court of appeal held that this mark was not inherently distinctive. The question then was whether the mark had acquired distinctiveness through use. Like other Member States of the European Union, the Benelux countries are subject to the EC Trade Marks Directive (the “Directive”). Article 3(1) of the Directive provides that a trade mark is not registrable if, amongst other things, it is devoid of distinctive character or is descriptive of the relevant goods or services. However, Article 3(3) provides that, even if a trade mark is not registrable under Article 3(1), it will be registrable if it has acquired a distinctive character through use that took place before the filing date of the application for the trade mark. The Hague Regional Court of Appeal referred to the ECJ several questions relating to whether the EUROPOLIS mark had acquired distinctiveness for the purposes of Article 3(3) and was therefore registrable on that basis. The first two questions asked whether, in order for a mark to acquire a distinctive character, it was necessary that such distinctive character be regarded by the relevant public throughout the entire Benelux territory, that is, in Belgium, the Netherlands, and Luxembourg, or merely in a substantial part of the Benelux territory. The ECJ observed that Article 3(3) does not provide an independent right to have a trade mark registered: it is an exception to the grounds for refusal set out at Article 3(1) of the Directive. Accordingly, the ECJ held that, in assessing whether those grounds for refusal must be disregarded because of the acquisition of distinctive character through use under Article 3(3), only the situation prevailing in the territory of the Member State (or, in this case, the Benelux territory) where the grounds for refusal have been noted is relevant. The Court of Appeal’s third question had two parts. The first part was whether, when assessing character acquired through use of a mark consisting of a word or words of an official language of the Member State (or, in this case, the Benelux territory), it was necessary to take into account the language regions of that territory. The ECJ determined that it was necessary. Because the referring court had found that the EUROPOLIS mark lacked inherent distinctive character for a class of persons who were Dutch-speaking, it was only within that linguistic community that distinctiveness had to be acquired for registration purposes. The second part of the third question was whether, in order to establish acquired distinctiveness, it would be sufficient to take into account the relevant section of the public in a substantial part of the language region of the Member State (or, in this case, the Benelux territory) in which that language was the official 472 Vol. 97 TMR language. The ECJ rephrased this question somewhat. It considered the question to be “to what extent the linguistic areas in a Member State or, as the case may be, in Benelux, must be taken into account to assess the acquisition of a distinctive character through use in the case of a trade mark consisting of one or more words in the official language of a Member State or of Benelux” (emphasis added). In this regard, the ECJ took the view that, in light of the answer to the first two questions, it was necessary to take into account the part of Benelux where Dutch was spoken. Within that linguistic area, the competent authority had to assess whether the relevant class of persons, or at least a significant proportion thereof, identified the product or service in question as originating from a particular undertaking because of the trade mark. The ECJ did not provide any guidance as to what proportion of a population might be considered “significant.” In summary, the effect of the ECJ’s judgment is that, as regards a mark consisting of one or more words of an official language of an EU Member State (or of Benelux), if the ground for refusal exists only in one of its linguistic areas, it must be established that the mark has acquired a distinctive character through use throughout that linguistic area. In the linguistic area thus defined, the tribunal must assess whether the relevant class of persons, or at least a significant proportion thereof, identifies the product or service in question as originating from a particular undertaking because of the trade mark. This decision is likely to be of significance for all countries of the European Community with multiple official languages. II.D. Appellate Procedure BVBA Management, Training en Consultancy, a Belgian company, applied to the Benelux Trade Mark Office to register the word mark THE KITCHEN COMPANY in several classes, for kitchen utensils and similar goods. Registration was refused on the ground that the mark lacked distinctive character in relation to these goods under Article 3(1) of the EC Trade Marks Directive (the “Directive”). On appeal by BVBA, the Brussels Regional Court of Appeal referred three questions to the ECJ: 1. Is the trade mark authority required, after its examination of all the facts and circumstances concerning an absolute ground of refusal, to state separately in its decision on the application (whether provisional or definitive) its conclusion in regard to each of the goods and services in respect of which trade mark protection is sought? Vol. 97 TMR 473 2. On appeal from the relevant trade mark authority, may the adjudicating authority take into account relevant facts and circumstances arising as a result of lapse of time between the initial decision and the adjudicating authority’s decision, or must the adjudicating authority take account of only such facts and circumstances as were available at the moment when the trade mark authority made its decision? 3. Does the judgment of the ECJ in Postkantoor406 mean that national legislation may not preclude a court from (a) taking into account relevant factors arising after a lapse of time (the “first limb”) and/or (b) ruling on the distinctive character of the mark for each of the goods and services in themselves (the “second limb”)? Advocate General Sharpston delivered her opinion on July 6, 2006.407 In relation to the first question, the Advocate General was of the opinion that the trade mark authority may refuse registration on the basis of an absolute ground of refusal without stating its conclusion separately for each of the individual goods and services at issue. Where registration was refused on that basis for an entire group or category of goods or services, it would be sufficient to state that this was so and to explain adequately why the group or category was ineligible. The Advocate General was clearly conscious of the administrative burden that would be placed on national authorities should the ECJ ultimately rule otherwise; she stated that it would be “manifestly disproportionate” to require national trade mark offices to set out reasons for refusal to register in relation to each and every product and service. The Advocate General considered the second question and the first limb of the third question together. She took the view that that it was for national law (and, therefore, presumably for national courts interpreting that law) to determine whether a court reviewing a trade mark authority’s decision refusing 406. Koninklijke KPN Nederland NV v. Benelux-Merkenbureau, Case C-363/99, [2004] E.C.R. I-1619 (ECJ, February 12, 2004), available at http://curia.europa.eu/jurisp/cgibin/form.pl?lang=en&Submit=Rechercher&alldocs=alldocs&docj=docj&docop=docop& docor= docor&docjo=docjo&numaff=C-363/99&datefs=&datefe=&nomusuel=&domaine=&mots= &resmax=100. In that case, the ECJ held that, in considering an appeal from a trade mark authority, a reviewing court must take into account all the relevant facts and circumstances, subject to the limits on the exercise of its powers as defined by the relevant national legislation. 407. BVBA Management, Training en Consultancy v. Benelux-Merkenbureau, Case C239/05 (ECJ, Advocate General’s Opinion, July 6, 2006) (unreported), available at http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en&Submit=Rechercher&alldocs=alldocs &docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=C-239/05&datefs=&datefe= &nomusuel=&domaine=&mots=&resmax=100. As this issue was going to press, the ECJ delivered its judgment. The ECJ’s decision will be discussed in the Annual Review for 2008. 474 Vol. 97 TMR registration of a mark may take into account facts and circumstances that were not available at the moment when the authority made that decision. Accordingly, it was consistent with Article 3 of the Directive for national rules to preclude a court that was reviewing such a decision from taking account of such facts and circumstances. In relation to the second limb of the third question, the Advocate General determined that it was consistent with Article 3 of the Directive for national rules to preclude a court that was reviewing the decision of a trade mark authority from ruling separately on the distinctive character of the mark for each of the covered goods or services, provided those rules afforded the applicant an effective opportunity to seek partial registration of the mark in the first place (i.e., registration in respect of only certain goods and/or services covered by its principal application). This was so because the fifth recital to the Directive made it clear that Member States were free to specify their own procedures concerning registration, and because of the general rule, enunciated by the ECJ in previous cases, that, in the absence of Community legislation, it was for each Member State to lay down specific procedural rules for safeguarding rights deriving from Community law. III.B.4. Advertising In Siemens AG v. VIPA Gesellschaft für Visualisierung und Prozeßautomatisierung mbH,408 a preliminary ruling, the ECJ considered whether a manufacturer’s use in its advertising of core elements of a competitor’s distinguishing marks constituted taking unfair advantage of the reputation of those marks in contravention of Article 3a(1) of the European directive concerning misleading and comparative advertising.409 Article 3a(1) provides that comparative advertising is permitted when certain conditions are met. At issue here was the condition that the comparative advertiser may not take unfair advantage of the reputation of a trade mark, trade name, or other distinguishing marks of a competitor or of the designation of origin of competing products.410 The issue arose in the course of proceedings brought by Siemens against VIPA in Germany. Siemens used a system of 408. Case C-59/05, [2006] E.C.R. I-2147 (ECJ, February 23, 2006), available at http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en&Submit=Rechercher&alldocs=alldocs &docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=C-59/05%20&datefs=&datefe= &nomusuel=&domaine=&mots=&resmax=100. 409. Council Directive 84/450/EEC of September 10, 1984 (1984 O.J. (L 250) 17), as amended by Directive 97/55/EC of the European Parliament and of the Council of October 6, 1997 (1997 OJ (L 290) 18). 410. Article 3(1)(g) of the EC Trade Marks Directive. Vol. 97 TMR 475 order numbers to identify its “Simatic” programmable controllers and their corresponding add-on components. VIPA manufactured Simatic-compatible components and used core sections of Siemens’ order numbers to identify with which Simatic controller its various components were compatible. Siemens alleged that VIPA was taking unfair advantage of Siemens’ reputation in its distinguishing marks and was thereby engaging in an unauthorised form of comparative advertising. In forming its conclusion, the ECJ considered whether the benefits derived by both the advertiser and consumers as a result of the comparative advertising were relevant factors to take into account. The ECJ found that VIPA was not taking unfair advantage of Siemens’ reputation; it was merely using the order numbers to inform a specialised section of the public that its products had features equivalent to those of the Siemens products. VIPA added its own acronym to the beginning of the Siemens numbers and stated in its advertising that the numbers corresponded to those of Siemens’ controllers. Accordingly, the ECJ found that there could be no possibility that the section of the public at which the advertising was directed would confuse VIPA’s products with Siemens’ products. Furthermore, in addition to their descriptive uses, the numbers had functional uses in that they were required to be programmed into systems to operate the controllers. The Court held that the benefit of comparative advertising to consumers was a necessary factor to take into account in determining whether an advertiser was taking unfair advantage of its competitor’s trade marks, trade names, or distinguishing marks. In this case, the ECJ considered that VIPA’s use of the identifying numbers was advantageous to consumers in that it allowed them easily to determine the compatibility of the products. The benefit derived by an advertiser from comparative advertising, however, was self-evident. Accordingly, the ECJ ruled, it could not, on its own, be a determinative factor in such cases. III.C. Injunctions and Damages In Levi Strauss & Co. v. Casucci SpA,411 the ECJ considered the time at which public perception should be taken into account in resolving questions of loss of distinctiveness of a mark, and the circumstances in which it would be appropriate for a national court to make orders for cessation of use of the mark where loss of distinctiveness had been found. 411. Case C-145/05, [2006] E.T.M.R. 71 (ECJ, April 27, 2006), available at http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en&Submit=Rechercher&alldocs=alldocs &docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=C-145/05&datefs=&datefe= &nomusuel=&domaine=&mots=&resmax=100. 476 Vol. 97 TMR In 1998, Levi Strauss (Levis) brought an action against Casucci in the Brussels Commercial Court, alleging trade mark infringement in relation to embroidery on jeans pockets consisting of a double row of overstitching that curves upwards at the centre of the pocket (below, illustration at left). Since 1980, Levis had been the proprietor of a Benelux graphic mark for a design of overstitching embroidered onto the back pockets of jeans. This “mouette” (seagull) graphic mark consists of a double row of stitching curving downwards at the centre of the pocket (below, illustration at right). Casucci’s Mark Levis’ Mark The action was dismissed at first instance. Levis appealed, but the Brussels Court of Appeal also found in Casucci’s favour. It concluded that the marks were not confusingly similar, and that Levis’ mark was no longer highly distinctive, owing to the fact that it was made of components that were now commonly used on jeans pockets. Levis appealed in turn to the Belgian Cour de Cassation, which referred to the ECJ a number of questions relating to the scope of protection of the mark and the availability of the remedy of cessation of use of the mark. The first and second questions (which the ECJ considered together) asked whether, in determining the scope of protection of a trade mark on the basis of its distinctive character, the national court should take into account the perception of the public concerned at the time that the alleged infringing use commenced (as distinct from the time that the court delivered its ruling). The ECJ held that, in order to give genuine and effective protection to the proprietor’s exclusive rights under Article 5(1) of the EC Trade Marks Directive (the “Directive”), the court had to take into account the public perception at the time when the mark that was alleged to infringe was first used. If it were otherwise, the infringer would be able to take advantage of its own infringing conduct to argue that the product had become less distinctive, when the infringer was responsible for that decrease in distinctiveness. The third question asked whether, as a general rule, national courts should issue an order for cessation of use of the infringing Vol. 97 TMR 477 mark once infringement had been found to have commenced at the time when the infringing mark began to be used. The ECJ held that the Directive left to national courts a discretion as to the form of relief granted for infringement of trade mark rights, albeit a discretion limited by the requirement of genuine and effective protection of the proprietor’s trade mark rights. The Court concluded that it was for the national court, in exercising its discretion, to take such measures as were the most appropriate in light of the circumstances of the case. It noted that such measures might include an order to cease use of the infringing mark. The fourth and final question was whether it was appropriate for a national court to order cessation of use of the alleged infringing mark if the proprietor’s mark had lost its distinctive character, wholly or in part, in circumstances where that loss was due, wholly or in part, to an act or omission of the proprietor. In answer to this question, the ECJ was guided by Article 12(2)(a) of the Directive, which provides that a trade mark is liable to revocation if it has become, in consequence of its proprietor’s conduct, the common name for a product or service. The ECJ concluded that it would not be appropriate to order cessation of use of the alleged infringing trade mark if the relevant trade mark had lost its distinctive character under Article 12(2)(a) and had been revoked accordingly. In drawing its conclusion, the ECJ used the language of actual revocation, but there seems no reason in principle why that justification should not apply equally where the trade mark has not been revoked but is nevertheless revocable under Article 12(2)(a). The ECJ’s position would appear to mean that it will be appropriate to order cessation of use where the trade mark has lost distinctiveness as a result of the acts of its proprietor but in any way falls short of the requirements of Article 12(2)(a). III.J. Gray Marketing Boehringer Ingelheim KG v. Swingward Ltd412 concerned proceedings between pharmaceutical companies and parallel importers. The English Court of Appeal asked the ECJ to clarify the application of the exhaustion of rights provision in Article 7 of the EC Trade Marks Directive (the “Directive”), particularly as it relates to both the overstickering and the reboxing of products. Advocate General Sharpston delivered her opinion on April 6, 2006; at press time, however, the ECJ has not yet given its judgment. 412. Case C-348/04 (ECJ, Advocate General’s Opinion, April 6, 2006) (unreported), available at http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en&Submit=Rechercher& alldocs=alldocs&docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=C-348/04& datefs=&datefe=&nomusuel=&domaine=&mots=&resmax=100. 478 Vol. 97 TMR Article 7(2) of the Directive provides that a trade mark owner may oppose the marketing of a repackaged product if there are legitimate reasons for such opposition. In Bristol-Myers Squibb v. Paranova A/S,413 the ECJ ruled that repackaging of products may constitute a “legitimate reason” if the following conditions (the “BMS Conditions”) are met: (1) the repackaging is necessary for market access; (2) the repackaging does not affect the original condition of the product; (3) the new packaging shows the name of the importer and the manufacturer; (4) the presentation is not such as to be liable to damage the reputation of the mark and of its owner; and (5) the importer gives notice to the owner. The Advocate General was of the opinion that the BMS Conditions do not apply in relation to overstickering (where the parallel importer affixes an additional external label to the original external packaging of the product while retaining the original internal packaging). This is because mere relabelling or restickering is unlikely to give rise to any risk that the guarantee of origin will be impaired. In relation to reboxing (where the original internal packaging of the product is retained but a new external carton is used), the Advocate General clarified that it is only the fact of reboxing that is necessary for market access, and not its precise manner and style. Further, the Advocate General was of the opinion that the requirement that the presentation of the repackaged product not be liable to damage the reputation of the trade mark and of its owner (BMS Condition 4) was not to be limited only to defective, poor-quality, or untidy packaging. Both inappropriate presentation of the trade mark and incorrect suggestion of a commercial link may, in principle, cause damage. Whether particular forms of repackaging (such as reapplying (“co-branding”) or not reapplying (“debranding”) the original trade mark to the new exterior carton) result in a serious risk that the reputation of the trade mark will be damaged was, the Advocate General considered, a question for the national courts to determine. In relation to the notice requirement in BMS Condition 5, the Advocate General concluded that where an importer fails to give notice but complies with the other BMS Conditions, it infringes by every subsequent importation. However, because BMS Condition 5 is procedural, the sanction should be less severe than if the substantive BMS Conditions had also been breached, although it should still be effective and dissuasive. Within these parameters, it was for the national courts to determine what the appropriate sanction should be. 413. Joined Cases C-427/93, C-429/93, and C-436/93, [1996] E.C.R. I-3457 (ECJ, July 11, 1996), available at http://eur-lex.europa.eu/smartapi/cgi/sga_doc?smartapi!celexplus!prod! CELEXnumdoc&lg=en&numdoc=61993J0427. Vol. 97 TMR 479 Finally, the Advocate General concluded that the parallel importer should bear the onus of proving compliance with all the BMS Conditions other than Condition 4 (the “damage to reputation” provision) because the trade mark owner was in the best position to prove damage to the trade mark’s reputation in the latter case. FINLAND I.B.1. Generic Names Total S.A., the French oil company, applied for the registration in Finland of the trademark THERMOCOOL, for “coolants for engines; antifreeze preparations; hydraulic fluids; braking fluids” in International Class 1 and “industrial oils and greases; lubricants” in Class 4. The National Board of Patents and Registration refused registration on the ground that the word THERMOCOOL had the nature of a generic term and consequently could not have been created by the applicant. On appeal, the Board of Appeal of the Finnish Patent Office overturned the decision and returned the matter to the National Board of Patents and Registration for reconsideration.414 The Board of Appeal determined that despite the fact that the mark was suggestive of the property of the goods to be covered, the word THERMOCOOL could not be found in any language references, general or specialist, and therefore it should be capable of registration. I.B.4. Geographical Names The National Board of Patents and Registration refused the application by the Finnish incorporated company Olvi Oyj for registration of the trademark MOMBASA, covering soft drinks made of fruits in International Class 32, on the ground that Mombasa is a town situated in Kenya and therefore the mark would mislead consumers as to the origin of the products. On appeal, the Board of Appeal of the Finnish Patent Office overturned the decision at first instance. As the geographical place in question did not have a particular reputation as a center of manufacturing of fruit soft drinks, it was not likely that the target group would understand the word as referring to the origin of the product. Accordingly, the Board of Appeal returned the matter to the National Board of Patents and Registration for reexamination.415 414. Case No. 2003/T/016 (Board of Appeal, Patent Office, June 1, 2005). 415. Case No. 2003/T/069 (Board of Appeal, Patent Office, June 1, 2005). 480 Vol. 97 TMR This decision shows that a geographical name is not an obstacle to registration unless the link between the trademark and the name is fundamental. I.B.5. Personal Names The National Board of Patents and Registration rejected the application of E.I. du Pont de Nemours and Company (later DuPont), headquartered in Wilmington, Delaware, USA, for registration of the trademark DUPONT on the ground that it was a Finnish surname. The Board of Appeal of the Finnish Patent Office rejected the applicant’s appeal on the same grounds, holding that DuPont failed to prove that the mark had become so widely known that it would no longer be associated with someone else’s surname. In its appeal, filed with the Supreme Administrative Court, the applicant argued that the name du Pont was, in fact, the surname of the founder of the firm. In support of this argument the company noted that the first search result for the word DUPONT on the GOOGLE Internet search engine led to its website, www.dupont.com. DuPont argued, further, that the public in Finland associated the mark DUPONT with the company and not with a Finnish surname, because the mark had been used for a long time in Finland and had therefore become well known in the market. The Supreme Administrative Court rejected DuPont’s appeal. It held that the mark at issue was identical to the surname Dupont and therefore could not be registered as a trademark.416 I.B.8.a. Similarity of Marks The National Board of Patents and Registration rejected the application by the Swedish incorporated company Anza AB for registration of the trademark ROLLEX in International Class 16 because of its similarity to the well-known registered trademark ROLEX, owned by the Swiss company Montres Rolex S.A. Montres Rolex S.A. is the owner of several registrations for the trademark ROLEX, in, inter alia, Classes 9, 14, 16, and 28. The applicant filed, but later withdrew, its appeal to the Board of Appeal of the Finnish Patent Office.417 I.B.9.a. No Similarity of Marks The National Board of Patents and Registration refused the trademark application for PAYREX by the Finnish incorporated company Addsoft Solutions Oy on the ground that it was 416. Case No. 688/3/04 (Supreme Administrative Court, December 20, 2005). 417. Case No. 2003/T/022 (Board of Appeal, Patent Office, September 6, 2005). Vol. 97 TMR 481 confusingly similar to the prior-registered Community trade mark REX, owned by the German company Deutsche Börse AG and registered for, among other things, computer programs connected with stock exchange and financial services in International Class 9. The PAYREX mark covered computer programs used in the banking business in Class 9. Despite the mark REX’s being included within the applied-for mark, the Board of Appeal of the Finnish Patent Office overturned the decision refusing registration of the PAYREX mark on the ground that the word REX not only was weak, as dozens of marks including the word REX coexist in Class 9, but also was not very inventive, owing to its meanings in the Latin and English languages. The Board of Appeal did not view the marks as being confusingly similar either visually or phonetically. The matter was returned to the National Board of Patents and Registration for reexamination.418 Blanco GmbH & Co. KG, a German company, appealed against the registration in Finland of the mark BLANDO, owned by the Finnish corporation KESKO Oyj, on the basis of its confusing similarity to Blanco’s registered trademark BLANCO. Both marks cover identical goods in Classes 11 and 20. The Board of Appeal of the Finnish Patent Office rejected the appeal based on the difference in the suffixes of the marks and on their phonetic and visual differences.419 Additionally, the Board of Appeal noted that the word BLANCO can convey a number of impressions, for example, white or clean, whereas the mark BLANDO has no known meaning. This decision shows that marks differing by as little as one letter out of six can coexist on the register. The National Board of Patents and Registration and the Finnish Patent Office’s Board of Appeal rejected the opposition filed by Antalis Group Limited, a firm located in Southampton, UK, against the trademark NOVAPRESS,420 applied for by the Finnish corporation Stora Enso Oyj. Both tribunals held that the opponent’s international trademark NOVATECH421 was not confusingly similar to the mark at issue. The marks cover identical goods in Class 16. According to the National Board of Patents and Registration, the prefix NOVA- is commonly used in trademarks, so its 418. Case No. 2003/T/023, Board of Appeal, Patent Office, May 31, 2005. 419. Case No. 2003/T/017 (Board of Appeal, Patent Office, June 1, 2005). 420. Registration No. 221679, September 28, 2001. 421. International Registration No. 698499, September 2, 1998. 482 Vol. 97 TMR distinctiveness is deemed weak and it can enjoy only a limited degree of protection.422 The National Board of Patents and Registration and the Board of Appeal of the Finnish Patent Office rejected the opposition filed by the Finnish cooperative HOK-Elanto against the trademark ICA MAXI, owned by the Swedish firm ICA AB. HOK-Elanto claimed that the applied-for mark was confusingly similar to its trademark MAXI and the registered subsidiary trade name Maximarket. Both marks cover identical services in Class 35. The National Board of Patents and Registration and the Board of Appeal were of the view that the opposed mark was weak and that therefore no likelihood of confusion existed.423 I.B.22. Distinctiveness The National Board of Patents and Registration rejected the application by the German firm Ravensburger Aktiengesellschaft for the registration in Finland of the international trademark MEMORY in International Class 28 for lack of distinctiveness. The Board of Appeal of the Finnish Patent Office annulled the decision at first instance and returned the matter to the National Board of Patents and Registration for reexamination.424 The list of goods was limited to cover only parlor games in Class 28. According to the Board of Appeal, the English word “memory” could not be deemed to indicate merely the nature and purpose of the game. Instead, the Board of Appeal held that the mark was suggestive, and, therefore, distinctive and registrable. The National Board of Patents and Registration and the Finnish Patent Office’s Board of Appeal rejected the application for registration of a device mark by Orange Personal Communications Services Limited, a firm headquartered in Bristol, UK. Both tribunals held that the applied-for mark, consisting of an orangecolored square, could not be deemed distinctive.425 III.A.2.b. Similarity of Marks Bryggerigruppen A/S, a Danish company, filed an opposition against the application for registration in Finland of the trademark FAKE by Kimmo Jukka Jusula, a Finnish individual, based on the opponent’s Finnish trademark registration for FAXE, covering goods in International Class 32. 422. Case No. 2003/T/094 (Board of Appeal, Patent Office, May 31, 2005). 423. Case No. 2003/T/071 (Board of Appeal, Patent Office, September 6, 2005). 424. Case No. 2002/T/134 (Board of Appeal, Patent Office, June 1, 2005). 425. Case No. 2003/T/109 (Board of Appeal, Patent Office, September 6, 2005). Vol. 97 TMR 483 The National Board of Patents and Registration annulled Mr. Jusula’s registration. It found that the marks FAKE and FAXE were confusingly similar, as they differed only by one letter and were visually very close. In addition, the marks were registered in the same class. The applicant’s appeal to the Board of Appeal of the Finnish Patent Office was rejected on the same grounds.426 FRANCE I.B.8.c. Conflict Between Trademarks and Corporate Names The company Laboratoire Araquelle International launched an action against Nestlé, owner of several complex marks containing the term AQUAREL and covering mineral water. The plaintiff asserted its corporate name, Laboratoire Araquelle International, in order to request the cancellation of Nestlé’s marks, arguing that there was a risk of confusion for the average consumer. The Court of First Instance (Tribunal de Première Instance (TPI)) of Meaux ruled that there was no risk because the products manufactured and marketed by Laboratoire Araquelle (cosmetics, dietary aids, and energizing goods) were not confusingly similar to those of Nestlé and Nestlé’s subsidiary Aquarel (mineral water and food products). Indeed, the Court observed that “dietary products are solid goods that possess particular features, that concern a specific public (athletic people), that involve elaborate manufacture, and that are consequently completely different from mineral water.” Therefore, the Court ruled that there was no risk of confusion of consumers, since the type of public aimed at and the retail channels used by the two companies were different.427 A comparison of the trade name Laboratoire Araquelle International and Nestlé’s complex marks containing the term AQUAREL led the Court to find that the term “Laboratoire” (“Laboratory”) in the corporate name had a significant impact, since it meant that the company was active in the medical and paramedical field. The use of “Laboratoire” distinguished the corporate name from conflicting marks that did not contain that term. The Court also found that the term “Araquelle” could not be separated from the company name, since it was the name as a whole that had to be taken into consideration. Furthermore, three of the conflicting AQUAREL trademarks contained the term NESTLÉ, which is famous in the food industry. 426. Case No. 2003/T/015 (Board of Appeal, Patent Office, June 1, 2005). 427. Laboratoire Aquarelle International v. Société des Produits Nestlé S.A., RG No. 01/4337 (Court of First Instance of Meaux, 1st Chamber, April 1, 2004), Propriété Industrielle, September 2005, p. 26. 484 Vol. 97 TMR Consequently, the Court ruled that the consumer would not be led to confuse Nestlé’s marks with the corporate name Laboratoire Araquelle International. This decision was upheld by the Court of Appeal of Paris.428 I.B.10. Deceptive Marks Article L. 711-3(c) of the French Intellectual Property Code (IPC) provides that “[there] may not be adopted as a mark or an element of a mark . . . [s]igns liable to mislead the public, particularly as regards the nature, quality or geographical origin of the goods or services.” Hence, a fraudulent or deceptive sign that would lead the public into error cannot constitute a valid trademark, since by misleading the public the trademark can no longer play its role of identification of the goods designated. The Vortex company, which runs Skyrock, a radio station, is the owner of the trademark PREMIER SUR LE MATIN (which may be translated as “First in the Morning”), designating a radio program that airs between 6:00 and 9:00 a.m. This mark apparently could be interpreted as having two meanings and could be viewed as: 1. Being the earliest “in” the morning out of all radio stations; or 2. Being the most-listened-to radio program. On the basis of an audience survey, the company NRJ, Skyrock’s main competitor, launched a cancellation action against Vortex’s mark PREMIER SUR LE MATIN on grounds of deceptiveness, claiming that Skyrock was not the leading station in terms of ratings for that particular time slot. The Court of First Instance (TPI) of Paris dismissed the case. The Court of Appeal of Paris reversed the lower court’s decision and ruled in favor of NRJ. It held that the mark tended to “mislead the public by making the latter believe that Skyrock’s program is the most listened to in that particular time slot, while on the contrary the ratings clearly show that this is not the case.”429 In a similar case, the Court of Appeal of Paris ruled that the owner of the trademark THE PRINCIPAL FINANCIAL GROUP, covering financial services, could not prove that it occupied a leading position in the financial business world market. 428. Case No. 04/17353 (Court of Appeal of Paris, 4th Chamber, October 21, 2005) (unpublished). 429. NRJ v. Vortex (Court of Appeal of Paris, 4th Chamber, October 19, 2005). Propriété Industrielle, January 2006, p. 16. Vol. 97 TMR 485 Accordingly, the Court ordered that the mark be cancelled for deceptiveness.430 I.B.11.a. Copyright Protection The well-known cosmetics company L’Oréal brought suit against other cosmetics companies before the Court of First Instance (TPI) of Paris for copyright infringement regarding several fragrances developed by the company. The TPI denied the fragrances copyright protection and rejected the infringement action.431 On appeal, the Court of Appeal of Paris reversed the decision at first instance and ruled in favor of L’Oréal, holding that a fragrance is a creative work protected under copyright, just like an artistic, literary, or musical work.432 The Court of Appeal considered that the fragrance was “identified by its olfactory structure” and that the “combination of the different essences was an element to prove the creativeness of its author.” The patent protection granted to perfumes was, said the Court, not exclusive; it mattered little that Article L. 112-2 of the IPC did not include “fragrance” among the creative works listed. The Court also held that its finding of infringement was the result of material elements such as analysis of the fragrances and consumer surveys showing that in 80 percent of the cases the consumer was unable to distinguish the original fragrance from the fake one. Previously, only reproduction or imitation of the name of a perfume, its packaging, or its bottle could be restrained on grounds of trademark or design infringement or unfair competition. Attempts to protect a fragrance, however, had been rejected. In holding that a fragrance could be considered an original creation and, thus, capable of copyright protection, the Court of Appeal set forth the scope of protection to be afforded to a fragrance. On the other hand, the Court, rather exceptionally, took into consideration a poll that apparently was performed and paid for by one of the parties to the action. III.A.1. Famous Marks The Nestlé company, owner of the French trademark MONT BLANC, covering cream desserts, lodged a civil action against a 430. Bankers Life Co. v. Decision Director INPI (Court of Appeal of Paris, 4th Chamber, February 15, 1990), PIBD 483/1990 III, p. 489. 431. L’Oréal S.A. v. Sté Bellure NV, Case No. 03/05891 (Court of First Instance of Paris, 3d Chamber, May 26, 2004), Dalloz [2004] No. 36, p. 2642. 432. Case No. 04/18300 (Court of Appeal of Paris, 4th Chamber, Section A, January 25, 2006), Propriété Industrielle, March 2006, p. 25. 486 Vol. 97 TMR French company that had registered an identical trademark for beers and alcoholic beverages. Nestlé’s action was based on Article L. 713-5 of the IPC, under which a wide scope of protection is afforded to marks enjoying a reputation.433 The Court of First Instance of Valence had to determine whether the trademark MONT BLANC was a famous mark and whether use of an identical mark for beers and alcoholic beverages caused prejudice to Nestlé’s image and therefore constituted an unjustified use of its trademark. Based on the criteria now established by case law (intensive use and trade, length of use, advertising, and degree of reputation), the Court found that the trademark MONT BLANC enjoyed a high reputation in France.434 The decision is interesting, because it involves the use of a mark for products different from those for which the prior mark was registered and relies on both requirements of Article L. 713-5, which are in principle alternative requirements: • Use Causes Prejudice to Trademark Owner. Use of the mark MONT BLANC caused prejudice by virtue of the negative impact on Nestlé’s image, as alcohol is incompatible with the healthy idea associated with desserts. • Use Constitutes Unjustified Exploitation of the Mark. Use of the MONT BLANC mark was illegal because the opposite party was trying to take undue advantage of the mark’s reputation in order to gain profit. It should be noted that in France the trademark MONT BLANC is a rare illustration of the “specialty principle,” according to which a trademark can be validly registered and used by different companies for totally different products. Indeed, the MONT BLANC mark is used by Nestlé for “cream desserts” and by the French company Mont Blanc for stationery and, more specifically, for writing cases. Lacoste, owner of the famous crocodile device trademark, claimed that the trademark LA CASTA, registered in the name of French top model Laetitia Casta and covering identical goods 433. Article L. 713-5 provides, in pertinent part: “Any person who uses a mark enjoying repute for goods or services that are not similar to those designated in the registration shall be liable under civil law if such use is likely to cause a prejudice to the owner of the mark or if such use constitutes unjustified exploitation of the mark.” 434. Société des Produits Nestlé S.A., Société Nestlé France & Société Mont Blanc v. Société Eyguebelle, Sté Brassserie Distillerie du Mont Blanc & Sté Alpes Marques (Court of First Instance of Valence, 1st Civil Chamber, November 2, 2004), Propriété Industrielle, May 2005, p. 28. Vol. 97 TMR 487 (clothing), was encroaching on its rights and consequently bought an action against the owner for trademark infringement.435 The Court of Appeal of Paris, upholding the decision of the Court of First Instance, ruled that there was no risk of confusion between the marks, as the overall impression stemming from these marks was different.436 Lacoste filed an appeal before the Supreme Court, claiming that the Court of Appeal had not taken into account a significant body of case law on this issue: 1. European Community case law suggesting that a weak similarity between marks can be compensated for by a strong similarity between the products; and 2. French case law concerning famous marks, which enjoy increased protection under Article L. 713-5 of the IPC. The Supreme Court rejected Lacoste’s claim and held that visually, phonetically, and conceptually the marks were different.437 In practice, a likelihood of confusion will be more easily found by courts where a trademark enjoys a reputation. In the present case, however, the Supreme Court considered that the registered trademark LACOSTE was so famous that it was virtually impossible for consumers to confuse this mark with the trademark LA CASTA. The French luxury company Cartier, owner of the famous trademark MUST, launched an infringement action against the company Oxypas, accusing the latter of having registered a similar mark, PEDIMUST. The Court of Appeal of Paris found that Oxypas was infringing, based on Article L. 713-5 of the IPC.438 It held that the wide scope of protection enjoyed by famous marks, which exceeds the specialty principle, was limited to their identical reproduction and not to their imitation, in compliance with the Supreme Court’s ruling in Olymprix v. Olympique.439 In the present case, the Supreme Court changed its views on Article L. 713-5, taking into account European case law and more specifically the European Court of Justice’s (ECJ’s) decision in 435. In France it is usual to refer to famous female artists, such as Maria Callas, by “La” (“The,” the feminine form of the definite article), as in the expression “La Callas.” 436. Lacoste v. La Société la Chemise Lacoste, Case No. 2002/12952 (Court of Appeal of Paris, October 15, 2004), PIBD 779/2004 III, p. 75. 437. Lacoste v. La Société la Chemise Lacoste, Case No. 03-20955 (Supreme Court, Commercial Chamber, November 22, 2005), 2005 Bulletin Civ. IV No. 233, p. 255. 438. Cartier v. Oxypas, Case No. 2001/15311 (Court of Appeal of Paris, 4th Chamber, May 28, 2003), PIBD 776/2003 III, p. 602. 439. Olymprix v. Olympique, Case No. 97-12045 (Supreme Court, Commercial Chamber, June 29, 1999), 1999 Bulletin Civ. IV No. 143, p. 119. 488 Vol. 97 TMR Adidas-Salomon v. Fitnessworld Trading,440 in which the ECJ held that the protection of famous trademarks covered use of an identical or similar mark for goods identical, similar, or not similar to those registered. Reversing previous French case law based on the Olymprix case, the Supreme Court ruled that Cartier was able to prevent Oxypas from using the trademark PEDIMUST in the course of trade, finding that it was similar to the famous mark MUST.441 III.A.14. Parody The company Esso launched a trademark infringement action against Greenpeace France for having reproduced, on the association’s website, its verbal and semifigurative famous trademark ESSO in the framework of a polemical information campaign initiated by the international organization Greenpeace. Referring to the constitutional principle of freedom of speech, which tolerates criticism as long as it is reasonably formulated, the Court of Appeal of Paris ruled that the polemical campaign of Greenpeace could not be categorized as trademark infringement, considering that the essential function of a trademark is to distinguish goods and services owned by a company from those of its competitors when used in the course of trade. In this case, the judges held that the defendant was not using the trademark in the course of trade, even though Greenpeace’s website was calling for a boycott of Esso. The Court stated that use in the course of trade does not cover use of trademarks related to the commercial activity of their owner when there is no potential risk of confusion for consumers.442 Consequently, it would appear possible to use someone’s trademark without his or her consent, as long as the considered use is limited to a polemical statement and does not interfere with business. III.A.24. Personal Names The Japanese fashion designer Kenzo Takada, owner since 1982 of the trademark KENZO TAKADA, covering all the goods and services of the Nice International Classification, found out that a French company, Takada, specializing in textiles, had registered the trademark TAKADA for all goods and services of the International Classification. Mr. Takada brought an action against 440. Adidas-Salomon AG & Adidas Benelux BV v. Fitnessworld Trading Ltd, Case C408/01, [2003] E.C.R. I-12537 (ECJ, October 23, 2003). 441. Case No. 03-17640 (Supreme Court, Commercial Chamber, July 12, 2005), Dalloz [2005] No. 30, p. 2074. 442. Esso v. Greenpeace France, Case No. 02/9302 (Court of Appeal of Paris, 4th Chamber, Section A, November 16, 2005), Propriété Industrielle, January 2006, p. 17. Vol. 97 TMR 489 the company seeking the abandonment of its rights in the mark TAKADA. In response, the company launched a revocation action against the KENZO TAKADA trademark for non-use. Mr. Takada, together with his company Kenzo Takada, counterclaimed for cancellation of the trademark TAKADA, arguing that the mark was not registrable in light of his company’s name and his personal name. The Court of First Instance of Paris had to determine whether the company Takada was entitled to bring a revocation action. It started by determining whether the trademark TAKADA was validly registered (this was the subject of the counterclaim lodged by the Japanese fashion designer), to allow the revocation action that was the main claim to be considered. This reasoning is interesting because the order of the claims is reversed. The Court deemed that the registration of the trademark TAKADA infringed Mr. Takada’s rights in his personal name, which is also the designer’s professional name and is well known in the ready-to-wear field. The prejudice caused to Mr. Takada was the risk of his name’s becoming common, which would have been incompatible with the reputation he enjoyed. The Court also held that the company name Kenzo Takada constituted a bar to the registration of the trademark TAKADA. Therefore, the Court cancelled the trademark TAKADA and dismissed the defendant’s action for revocation of the plaintiff’s trademark KENZO TAKADA.443 This decision is an example of the supremacy of prior rights in names (company and personal names) over trademark rights when the famous character of the company name or personal name can be proven. III.F.5. Cancellation The company Jenken, owner of the trademark VINTAGE, registered in 1991 and covering ready-to-wear clothing, initiated infringement proceedings against the jeans company Creeks for having commercialized items of clothing under the mark VINTAGE. In response, the defendant sought to cancel Jenken’s mark, arguing that the term had become generic for old styles of clothes and articles and that the mark had not been actively defended by its owner. The Court of First Instance of Paris allowed Jenken’s claim for infringement and dismissed Creek’s claim for cancellation. In considering the claims, the Court of Appeal of Paris first had to determine whether the mark VINTAGE had acquired a generic character. The Court admitted that the mark (which 443. Kenzo Takada v. Takada (Court of First Instance of Paris, 3d Civil Chamber, October 15, 2004), Légipresse No. 219, March 2005, p. 34. 490 Vol. 97 TMR originally derives from oenology and applies to old ports at least 20 years of age) was distinctive at the date of its registration for clothing, as it was neither necessary nor generic for designating items of clothing or their essential quality. Creeks sought cancellation under Article L.714-6(a) of the IPC, which states that “[t]he owner of a mark shall be liable to revocation of his rights if, in consequence of his own acts, the mark has become [t]he common name in trade for a product or service.” Overturning the decision at first instance, the Court of Appeal allowed Creeks’ claim for cancellation and dismissed Jenken’s claim for infringement.444 It held that: 1. The word “Vintage” was widely used today as a common name to designate old clothes; and 2. Jenken’s actions were “insufficient” and “not proportionate in respect to the massive and generalized use of the word ‘Vintage.’” In a ruling similar to that in the PINA COLADA case,445 the judges penalized Jensen for not having reacted strongly enough and taken positive steps to prevent use of its mark. Indeed, to avoid cancellation of its mark, the trademark owner must, in order to affirm its rights, take active and regular steps such as opposition and infringement claims against unauthorized use or registration of a similar or identical trademark by third parties. III.K. Counterfeiting Issues The companies Konica Corp. and Konica France launched an infringement action against the French company Vivitar France, which was selling disposable cameras containing bodies and films bearing the trademark KONICA. The trademark KONICA was not visible to customers purchasing the camera, since a cardboard packaging covered the structure of the camera. The defendant argued that since the trademark was not reproduced on the camera’s packaging, the trademark KONICA was not visible on the disposable camera, and therefore it was neither encouraging customers to purchase this product nor misleading them into doing so. The Court of Appeal of Versailles held that professionals (photographic laboratories and photographers) were able to see the trademark KONICA when proceeding with film development and to associate the trademark with Vivitar France. Furthermore, the KONICA mark also was perceptible by the customers, because the 444. Société Creeks v. Société Jenken (Court of Appeal of Paris, 4th Chamber, April 20, 2005), PIBD 813/2005 III p. 473 445. Ego Fruits S.A. v. Bardinet S.A., Case No. 02-10505 (Supreme Court, Commercial Chamber, April 28, 2004), 2004 Bulletin Civ. IV No. 79, p. 82. Vol. 97 TMR 491 trademark appeared on the edge of the negatives that were delivered to them. The Court relied on principles, originating from the European judges, regarding the “essential function” of the trademark, which is to guarantee the origin of the goods. The Court of Appeal held that the use of the trademark KONICA “allegedly made by the third party [Vivitar France] [was] such as to create the impression that there [was] a material link in trade between the third party’s goods and the undertaking from which those goods originate[d].” Accordingly, it deemed that the prejudice caused to the trademark KONICA was established.446 The Lancôme company, a subsidiary of the L’Oréal group and owner of the trademark NUTRI-RICHE, markets a cosmetic product under this mark in several countries where the mark is protected. In France, however, it sells the same product under the trademark NUTRI-INTENSE because of the existence of the French trademark NUTRI-RICH (without the letter E), belonging to the Dutch company Buttress, in order to avoid the risk of being sued for infringement. Buttress sued L’Oréal on the basis of trademark infringement for having packaged and held goods bearing the trademark NUTRI-RICHE on French territory before exporting them. The Court of Appeal of Paris therefore had to clarify whether the owner of a trademark could prevent reproduction of the mark for goods that were only held in the relevant territory and intended exclusively for export to countries where the use of such a mark was legal. The IPC provides for trademark infringement by reproduction, imitation, use, application, removal, or alteration of a mark; import or export of goods under an infringing mark; and unlawful possession of products bearing a counterfeit mark.447 The Court held that these provisions must be interpreted in the light of the European Trademarks Directive.448 The judges concluded that there was no infringement, holding that use is in the course of trade only when the goods are marketed in the territory in which the trademark rights exist and are put at the consumers’ disposal, which is not the case when the goods are only transferred to a subsidiary company. Therefore, Lancôme’s packaging of cosmetics bearing the mark NUTRI-RICHE and 446. Konica Corp. & Konica France v. Vivitar France (Court of Appeal of Versailles, April 7, 2005), Propriété Industrielle, November 2005, p. 31. 447. IPC arts. L. 716-9, L. 716-10. 448. First Directive 89/104/EEC of the Council, of December 21, 1988. Article 5.3 of the Directive provides that the following are prohibited: “affixing the sign to the goods or to the packaging thereof; offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; importing or exporting the goods under the sign; using the sign on business papers and in advertising.” 492 Vol. 97 TMR holding of them for future export to countries where the mark was protected could not be considered use in the course of trade and therefore did not constitute an infringement of the prior owner’s trademark rights. The Court of Appeal appeared to rely on a very personal interpretation of the notion of use in the course of trade, which is usually more widely understood in European law as comprising reproduction and exportation within a commercial field in order to obtain some economic advantage.449 In the present case, the Court’s decision was influenced by the ECJ’s decision in Rioglass,450 in which the ECJ ruled that the protection of a mark applies to trade in counterfeit goods and that “transit,” which does not imply any trade in the goods under consideration, is not likely to raise any infringement issue. IV. Personality Rights The conditions in which a legal entity can be presumed holder of rights in a work were clarified by the Court of First Instance of Paris in Flaven Scene v. Walt Disney Pictures (France).451 The French company Flaven Scene claimed to be the holder of the rights in the children’s comic book Pierrot le poisson-clown (“Pierrot the Clown Fish”) and brought an action against the Walt Disney Company for infringement. Flaven Scene argued that Disney’s animated motion picture Finding Nemo (“Le Monde de Nemo”) infringed its rights in the book it was marketing. This decision opposed a legal and a judicial presumption. The legal presumption is that “[a]uthorship shall belong . . . to the person or persons in whose name the work has been disclosed”;452 the judicial presumption, however, is that the legal entity that makes use of the work is presumed to be the holder of the rights. In the present case, the French company was claiming that, in the absence of any action initiated by the individuals in whose name the work was disclosed, the judicial presumption was enforceable and, hence, the legal entity had to be considered the owner of the rights in the work. The published book mentioned physical persons as being the author, illustrators, or artistic directors. The Court considered that these physical persons, although not claiming authorship, were identified as being the 449. Buttress BV v. L’Oréal, Case No. 04-09317 (Court of Appeal of Paris, 4th Chamber, Section A, June 1, 2005), Dalloz [2005] No. 35, p. 2467. 450. Administration des Douanes et Droits Indirects v. Société Rioglass S.A. et al., Case C-115/02, [2004] F.S.R. 35 (ECJ, 6th Chamber, October 23, 2003). 451. Case No. 03/14433 (Court of First Instance of Paris, 3d Chamber, April 20, 2005), Revue Communication Commerce Electronique No. 6, June 2005, p. 29. See 95 TMR 406-07 (2005). 452. IPC art. L. 113-1. Vol. 97 TMR 493 authors. Therefore, the legal presumption was enforceable, and Flaven Scene was not entitled to bring suit against the Walt Disney Company. V. Internet Issues The company Hugo Boss AG, owner of several trademarks including the denominations BOSS and HUGO BOSS, sued a German company, Reemtsma Cigarettenfabriken GmbH, specializing in tobacco, for trademark infringement concerning the use of the BOSS mark on its website, which was accessible from France. Under the territoriality principle, use of an identical or similar non-famous French trademark is legal in a foreign country where the owner has no trademark rights in the mark. In the present case, the Supreme Court was asked to clarify whether the use of a French trademark on a foreign website could be considered as trademark use in France and consequently be regarded as infringement. Several French courts had previously considered that when a website was accessible from France, use of a French registered trademark on the Internet amounted to use in France and therefore constituted infringement.453 The Supreme Court noted that it was necessary to make a distinction between the jurisdiction’s competence and the trademark infringement issue. The French jurisdiction would consider itself competent if the website was accessible from French territory. However, the Supreme Court also held that infringement would be involved only if the website was aimed at the French consumer. The Supreme Court enunciated three criteria to be taken into account in determining whether the public aimed at was French: 1. Accessibility of the website in France; 2. Language used on the web pages; and 3. Whether French consumers are, or are not, excluded from the sales. As the website was almost entirely in German (except for one word in French) and the goods bearing the trademarks were not available in France, the Supreme Court ruled that the reproduction of a French trademark on a foreign website did not constitute trademark infringement because the website was not aimed at the French consumer.454 453. E.g., Monsieur F. L. & Sté Smileyworld Ltd v. Société Bertelsman On Line (Court of First Instance of Créteil, March 2, 2004), available at www.juriscom.net/jpt/visu/php? ID=509. 454. Hugo Boss AG v. Reemtsma Cigarettenfabriken GmbH, Case No. 02-18381 (Supreme Court, Commercial Chamber, January 11, 2005), 2005 Bulletin Civ. IV No. 8, p. 8. 494 Vol. 97 TMR GERMANY I.B.4. Geographical Names The German Patent and Trademark Office refused registration of the trademark NEWCASTLE for goods in International Classes 5, 16, and 30—inter alia, for “tea and herbal tea for medical purposes; tea bags, filter paper, tea packaging; tea and herbal tea for consumption purposes.” The Office held that the NEWCASTLE mark had to be rejected because of a need to keep the geographical denomination available for common use, in accordance with Section 8(2) No. 2 of the German Trademark Act. Upon appeal by the applicant, the German Federal Patent Court confirmed the decision.455 It ruled that the term NEWCASTLE was not registrable for the goods in respect of which registration was sought as it had to be kept available for common use. The Court took it for granted that the trade circles and consumers concerned would identify the descriptive meaning of the geographical denomination NEWCASTLE for the relevant goods. It considered that the relevant public in Germany would at least be acquainted with the city of Newcastle-upon-Tyne in Great Britain. In line with the European Court of Justice’s ruling in Chiemsee,456 the Court held that Section 8(2) No. 2 of the Act also applied to geographical names that were not currently associated with the category of goods in question but that were liable to be used in the future as an indication of the geographical origin of that category of goods. With respect to the city of Newcastle in Great Britain, the Court assessed that it was reasonable to assume that the name was capable of designating the geographical origin of the relevant category of goods. Further, the Court held that the existence of more than one city of Newcastle—for example, Newcastle, New South Wales, Australia; Newcastle-under-Lyme, Northern Ireland; and Newcastle, South Africa—was not relevant. According to established practice of the German Federal Supreme Court,457 uniqueness of a name of a city is not a precondition for its use as a geographical denomination. Departing from its precedent458 and from some positions of the leading doctrine, the German Federal 455. German Federal Patent Court, decision of January 19, 2004, 32 W (pat) 322/03 (NEWCASTLE). 456. Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) v. Boots- und Segelzubehör Walter Huber & Franz Attenberger, Cases C-108/97 and C-109/97 (ECJ, May 4, 1999) (CHIEMSEE). 457. German Federal Supreme Court, decision of July 17, 2003, I ZB 10/01, GRUR 882 (2003) (LIECHTENSTEIN). 458. German Federal Patent Court, decision of January 16, 1991, MittdtschPatAnw 98 (1991) (SANTIAGO); decision of June 19, 1991, MittdtschPatAnw 349 (1993) (JACKSON). Vol. 97 TMR 495 Patent Court ruled that the existence of a suffix to the name of a city—as, for example, “upon-Tyne” in “Newcastle-upon-Tyne”—was not an argument against the need to keep the term without the suffix available for common use pursuant to Section 8(2) No. 2 of the German Trademark Act. Registration of the trademark SPA, for “perfumes, products for body beauty care; operation of spas, swimming baths and sauna” in Classes 3 and 44, was granted by the German Patent and Trademark Office. Upon application by a third party, the Office deleted the trademark. It held that the term SPA for the relevant goods and services was devoid of distinctive character and had to be kept available for use by third parties. Therefore, the trademark had been registered in contravention of Section 8(2) Nos. 1 and 2 of the German Trademark Act. Upon appeal by the trademark owner, the German Federal Patent Court confirmed the decision of the Patent and Trademark Office.459 Under Section 8(2) No. 2, the term SPA, which derives from the abbreviation for the Latin phrase sanus per aquam (“healthy through water”), is not registrable, being a common term for wellness facilities and wellness services, as well as for cosmetic products that are used in connection with water. The Court found that it was not relevant that the term SPA was also the name of a city in Belgium. It held that a geographical denomination could achieve a secondary meaning as a descriptive term and therefore become unregistrable under Section 8(2) No. 2 of the German Trademark Act. I.B.22. Distinctiveness The German Patent and Trademark Office refused registration of the trademark BERLINCARD, for goods and services in International Classes 9, 16, 35, 36, 38, 41, and 42. It held that the trademark was not distinctive. The relevant trade would clearly understand the term BERLINCARD to be a synonym for “card for the region of Berlin,” and thus as a reference to the related goods and services. Upon appeal by the applicant, the German Federal Patent Court confirmed the decision.460 The Court held that the trademark was not registrable because of a lack of distinctiveness and the need to keep the term available for use by third parties. Upon the applicant’s further appeal, the German Federal Supreme Court reversed the decision and remitted the case to the 459. German Federal Patent Court, decision of February 15, 2005, 24 W (pat) 297/03, MarkenR 346 (2005) (SPA). 460. German Federal Patent Court, decision of March 14, 2002, 25 W (pat) 127/01, GRUR 693 (2002) (BERLINCARD). See discussion at 94 TMR 419 (2004). 496 Vol. 97 TMR Patent Court.461 The Supreme Court held that BERLINCARD was not devoid of distinctive character in the sense of Section 8(2) No. 1 of the German Trademark Act. It pointed out that the applicant applied not for a multifunction card as such (e.g., identification card, charge card, store card, credit card) but for several goods and services—for example, computers, lamps, magazines, folders, property agency services, and publication of printed matter. Even if these goods and services could be used in connection with a card system, that did not necessarily mean that the relevant trade would not understand the term BERLINCARD as an indication of origin as opposed to description of the goods and services in respect of which registration was sought. The Court held, further, that the trademark BERLINCARD was not descriptive, pursuant to Section 8(2) No. 2 of the German Trademark Act, with respect to the relevant goods and services. In line with its precedential decisions,462 the Court ruled that Section 8(2) No. 2 does not apply if a term describes only circumstances that do not have a sufficiently close connection with the relevant goods or services. Therefore, the German Federal Supreme Court remitted the case to the German Federal Patent Court with instructions to decide, in each individual case, whether the term BERLINCARD in its descriptive sense was sufficiently closely related to the goods and services in respect of which registration was sought. The German Patent and Trademark Office refused registration of the trademark CHOCO'N'MORE, for “chocolate; pastry and confectionery; ice cream” in Class 30, on the ground that the trademark was not distinctive. Upon appeal, the German Federal Patent Court confirmed the decision.463 It held that the term was not registrable based on lack of distinctiveness, in accordance with Section 8(2) No. 1 of the German Trademark Act. According to the Court, the distinctiveness of a combination of words must be considered with respect to the overall appearance of the term. The Court found that the relevant trade circles and consumers would not understand the term CHOCO'N'MORE, with respect to its overall appearance, as an identification of origin. Since CHOCO'N'MORE is only a short form for the term “chocolate and more,” the public would regard the term only as a commercial advertisement. 461. German Federal Supreme Court, decision of December 16, 2004, I ZB 12/02 GRUR 417 (2005) (BERLINCARD). 462. German Federal Supreme Court, decision of October 23, 1997, I ZB 18/95 GRUR 465 (1998) (BONUS); German Federal Supreme Court, decision of February 5, 1998, I ZB 25/95 GRUR 813 (1998) (CHANGE). 463. German Federal Patent Court, decision of July 27, 2005, 32 W (pat) 91/04 (CHOCO'N'MORE). Vol. 97 TMR 497 On the other hand, the Court also held that the trademark CHOCO'N'MORE was not directly descriptive for the relevant goods, pursuant to Section 8(2) No. 2 of the German Trademark Act. In this respect, the Court’s decision differs from the parallel case CHOCO'N'CREAM, which was decided on the same date by the German Federal Supreme Court.464 The German Federal Patent Court pointed out that the term 'N'MORE indicated only something additional to the good “chocolate” but left open the question of what comprised this addition. Therefore, the term CHOCO'N'MORE could not be evaluated as a mere product characteristic; in this regard, it differed from the term CHOCO'N'CREAM, which consists of two product characteristic terms. The German Patent and Trademark Office refused registration of the trademark CHOCO'N'CREAM, for “chocolate; pastry and confectionery; ice cream” in Class 30. The Office held that the applied-for mark was merely descriptive and not distinctive for the relevant goods. Upon appeal by the applicant, the German Federal Patent Court confirmed the decision.465 According to the Court, the term CHOCO'N'CREAM was not registrable because it had to be kept free for use by third parties pursuant to Section 8(2) No. 2 of the German Trademark Act. The Court held that the term was merely descriptive for the relevant goods, as it was a short form for the English terms “chocolate” and “cream.” The abbreviation of the word “and” by the sign 'N' was a common abbreviation used in the English language. According to the Court, this abbreviation was also known among the relevant public circles in Germany, in particular from the use of the very famous term “Rock'n'Roll.” Therefore, the term CHOCO'N'CREAM did not create an impression that was sufficiently far removed from that produced by the mere combination of the meanings lent by the elements of which it was composed. Thus, the term was not more than the mere sum of its parts. The Court’s decision was in line with the jurisprudence of the European Court of Justice.466 Further, the German Federal Patent Court held that the term CHOCO'N'CREAM was not distinctive pursuant to Section 8(2) No. 1 of the German Trademark Act. The Court determined that 464. German Federal Patent Court, decision of July 27, 2005, 32 W (pat) 341/03 (CHOCO'N'CREAM). 465. German Federal Patent Court, decision of July 27, 2005, 32 W (pat) 341/03 (CHOCO'N'CREAM). 466. Campina Melkunie BV v. Benelux-Merkenbureau, Case C-265/00 (ECJ, December 2, 2004) (BIOMILD); Koninklijke KPN Nederland NV v. Benelux-Merkenbureau, Case C363/99 (ECJ, February 12, 2004) (POSTKANTOOR). 498 Vol. 97 TMR the relevant trade would regard the term CHOCO'N'CREAM only as a description of the goods “chocolate and cream” and not as an indication of origin. III.A.10. Non-use of Trademark In its decision on the trademark OTTO, the German Federal Supreme Court dealt with the issue of proper use of a mail order business mark. The mark was identical to the mail order firm’s company name. It had been used on the company’s catalogues and mailing envelopes, and protected a multitude of goods distributed by the company. The Supreme Court held that proper use had not occurred. It found that the consumer looked at the mark, as used on catalogues and mailing envelopes, not as a way of marking the mailed goods but as an identification of the distributing company.467 Such use as a company name, which is not related to the goods for which the mark is registered, is not the same as trademark use, even though it is not always easy to draw a clear line between the uses as trademark and as company name. The German Federal Supreme Court dealt with a similar issue in its decision on the trademark NORMA. The mark was registered for goods and was used by a retail chain on shopping bags, price labels, and leaflets. An ® was added after the mark, a practice that is not too common in Germany. At the outset, the Supreme Court granted that it was not mandatory that the mark be used directly on the product itself; instead, the distinction with regard to origin could also be achieved by other usual and economically sensible uses of the mark. The Court held, however, that if the mark was not being used for a particular product, but only as the distributor’s company name, it was not used in a trademark fashion, even if the ® was added. Instead, the consumer would assume that it was a service mark of the retailer.468 The conclusion to be drawn from these decisions is that retail and mail order businesses should have their mark also registered as a service mark for the service “retail” (International Class 35), at least if the mark is identical to the company name. The European Court of Justice has made service mark protection for the service “retail” available.469 467. German Federal Supreme Court, decision of July 21, 2005, GRUR 1047 (2005) (OTTO). 468. German Federal Supreme Court, decision of September 15, 2005, MarkenR 72 (2006) (NORMA). 469. Praktiker Bau- und Heimwerkermärkte AG v. German Patent & Trademark Office, Case C-418/02 (ECJ, July 7, 2005), GRUR 764 (2005) (PRAKTIKER). Vol. 97 TMR 499 III.A.27. Exhaustion of Trademark Rights The German Federal Supreme Court ruled that the display in advertising of a Ferrari automobile bearing the mark of a race sponsor on the hood did not constitute infringement of the trademark FERRARI. The Court found that Ferrari’s trademark rights were exhausted. The automobile was owned by the race sponsor, Jägermeister. The publisher of a TV journal, together with Jägermeister, had offered the car as a prize in a contest. The Supreme Court found use of the FERRARI mark in a trademark sense for the automobile, but it denied Ferrari’s claims on exhaustion grounds because the car had been sold with Ferrari’s consent. The Court did not decline to apply exhaustion rules because of prevailing interests by the trademark owner. It held that the advertisement did not imply business relations between the race sponsor, Jägermeister, and the trademark owner, Ferrari. Rather, applying the sponsor’s mark to the car served only to make the sponsorship clear and to perpetuate it. This truthful impression did not imply an unfair exploitation of the reputation incorporated in the trademark FERRARI. In addition, the German Federal Supreme Court refused to award Ferrari claims based on unfair competition law, since trademark law, as the more specific set of rules, excludes its applicability. Fair use of a trademark cannot be unfair 500 Vol. 97 TMR competition. Fair use rules are being made more widely available as a result of this decision, which follows a general tendency of liberalization.470 III.C. Injunctions and Damages In a case involving a cease and desist letter alleging trademark infringement, the German Federal Supreme Court had to deal with the question of whether and under what circumstances the recipient of an unjustified cease and desist letter may recover damages. The trademark owner had asked that a competitor refrain from making and selling sanitary fittings that resembled one of the owner’s three-dimensional marks. In response, the competitor challenged the trademark registration, which was subsequently revoked. The German Federal Patent Court confirmed the revocation but did not award costs. The competitor asked that the costs it had incurred in the revocation proceedings be awarded to it as damages. The trademark owner argued that its warning letter had been based on a mark that the German Patent and Trademark Office had registered after examination. It contended that if such a mark were later cancelled, the trademark owner could not be held liable for defending its mark, as it did not act negligently. Negligence is a prerequisite for general tort liability. The Senate within the Federal Supreme Court handling trademark matters had taken the opportunity presented by this case to try to change the liability rules in cases involving unjustified warning letters by applying unfair competition law instead of tort law.471 This would have meant that the sender of the warning letter not only did not act negligently, but would not have committed a tort to begin with. However, the Grand Senate of the Federal Supreme Court, which resolves discrepancies between the practice of its individual Senates, declined to change the rules.472 In doing so, it focused not so much on the relation between an intellectual property right owner and its competitor as on cases where the right owner addresses customers (e.g., retail or mail order businesses) of the manufacturer. Such cases are looked at very critically under German law, and the Grand Senate felt that they were better dealt with under the more stringent rules of general torts law. The recipient of an unjustified warning letter even has the right to have a preliminary injunction issued against the unjustified cease and desist demand. 470. Federal German Supreme Court, decision of November 3, 2005, MarkenR 110 (2006) (PRIZE CAR WITH DIFFERING ADVERTISING EMBLEM). 471. German Federal Supreme Court, decision of August 12, 2004, GRUR 958 (2004). 472. Grand Senate for civil court matters, decision of July 15, 2005, GRUR 882 (2005). Vol. 97 TMR 501 In short—and contrary to some speculations—the aforementioned decisions do not amount to a significant change in the existing case law. Liability arising from unjustified cease and desist letters alleging trademark infringements continues to be limited to cases of negligence, which cannot always be assumed where a trademark owner misjudges the scope of protection (or, as in the present case, even the permanent validity) of its mark.473 GREECE I.B.3. Not Merely Descriptive Terms The Athens Administrative Court of First Instance affirmed the Administrative Trademark Committee’s acceptance of the application filed by Tong Yang Confectionery Corporation for registration of the trademark CHOCOPIE, covering chocolates, ice creams, wafers, candy, gum, and other goods in International Class 30.474 The Court held that the mark was not merely descriptive. Accordingly, it dismissed the recourse against the Committee’s acceptance filed by Lotte Confectionery Co. Ltd., a firm with headquarters in South Korea.475 Lotte had opposed Tong Yang’s application on the grounds that the mark (1) was merely descriptive; (2) had no distinguishing ability; and (3) should not be protected as a trademark because that would confer on the applicant the unfair advantage of a monopoly on a descriptive term, when CHOCOPIE should be left to be freely used by all as a common term. In addition, the opponent had submitted evidence reflecting the rejection of applications for registration of the mark in other jurisdictions, which had deemed it to be a merely descriptive term. The Administrative Trademark Committee had not been convinced. It found that in fact the mark at issue had distinguishing ability. Therefore, it dismissed Lotte’s opposition and allowed the trademark CHOCOPIE to proceed to registration.476 Tong Yang thereupon filed recourse with the Administrative Court of First Instance. It reiterated its argument concerning the descriptive nature of the mark, citing as support decisions from other jurisdictions affirming that assertion. 473. German Federal Supreme Court, decision of January 19, 2006, GRUR 432 (2006). 474. Athens Administrative Court of First Instance, Decision No. 2294/2005, issued October 19, 2005. 475. Recourse Filing No. 11729/2000, filed February 2, 1999. 476. Administrative November 4, 1998. Trademark Committee, Decision No. 6920/1998, issued 502 Vol. 97 TMR Regardless, the Court affirmed the Committee’s decision. It reasoned, among other things, that, notwithstanding conflicting decisions from such jurisdictions as Guatemala, Korea, and Germany, in Greece the word elements CHOCO and PIE did have distinguishing ability, given that they were of foreign origin and as such had not been integrated into the Greek language. This finding was further supported by the fact that the opponent did not furnish the Court any evidence reflecting its assertion that the Greek consumer public considered CHOCO and PIE to be commonplace words. Consequently, the Court of First Instance dismissed the recourse and allowed the trademark CHOCOPIE to proceed to registration. I.B.7.a. Two-Dimensional Marks Pharmacia & Upjohn A.B. (Pharmacia) applied to register a device mark in the form of a stylized cat, to cover a pharmaceutical preparation for veterinary use in International Class 5 (see below). The Administrative Trademark Committee rejected the application on the ground that the mark lacked distinctive character.477 Pharmacia filed recourse before the Athens Administrative Court of First Instance. In its decision the Court took into consideration the fact that Pharmacia’s trademark had been registered since 1996 in various other countries for goods in Class 5. It found that the device distinguished the veterinary character of the covered goods, and therefore was capable of identifying Pharmacia as the origin of those goods. Accordingly, the Court of First Instance reversed the Committee’s decision and allowed the mark to proceed to registration.478 I.B.8. Likelihood of Confusion The Greek company Farmaten E.p.e. submitted an application for registration of the word mark FAMADOL, for pharmaceutical 477. Administrative Trademark Committee, Decision No. 3157/2001, issued April 9, 2001. 478. Athens Administrative Court of First Instance, Decision No. 8482/2005, issued September 23, 2005. Vol. 97 TMR 503 products in International Class 5. The Administrative Trademark Committee accepted the application.479 Sterling Winthorp Group Limited, a British firm, filed an opposition on the basis of its prior trademark registrations for PANADOL, PANADOL EXTRA, PANADOL VITAMIN-C, and PANADOL NIGHT TIME PAIN, covering various pharmaceutical products in Class 5. Sterling alleged that the FAMADOL mark was visually and aurally similar to its registrations for PANADOL because the order of their letters was similar and their suffixes were identical; therefore, it argued, the opposed mark presented a likelihood of confusion of consumers as to the origin of the covered goods. The Administrative Trademark Committee, however, rejected the opposition on the ground that there was not sufficient similarity between the marks under comparison to cause confusion.480 Upon recourse by SmithKline Beecham P.L.C., which in the meantime had acquired the aforementioned PANADOL trademarks, the case was brought before the Athens Administrative Court of First Instance. SmithKline alleged that the similarity between its marks and the opposed mark FAMADOL was very close, and that it was made stronger by the close aural similarity of the letters M and N, the difference between the initial letters F and P not being sufficient to differentiate the marks from each other. SmithKline also stressed the fact that the pharmaceuticals sold under the PANADOL trademarks had been used for many years and were very well known to consumers. The Court accepted that the distinguishing feature of the plaintiff’s trademarks was the term PANADOL. Confirming SmithKline’s allegations regarding the similarity between the marks under comparison, the Court underlined the fact that the goods covered were also similar. It emphasized, further, that the goods sold under the PANADOL trademark were mainly analgesicfebrifuge (pain-relieving, fever-reducing) pharmaceuticals, which were not necessarily sold under a physician’s prescription. For those reasons the Court of First Instance reversed the decision of the Trademark Committee and rejected the trademark application for FAMADOL. The Court so ruled notwithstanding the fact that the goods to be covered were pharmaceuticals and that, as recorded in both the literature and the jurisprudence, trademarks covering such goods had been accepted for registration 479. Administrative Trademark Committee, Decision No. 2627/2000, issued August 21, 2000. 480. Administrative Trademark Committee, Decision No. 2222/2002, issued March 12, 2002. 504 Vol. 97 TMR even though their differences from prior registrations were very slight.481 I.B.8.a. Similarity of Marks Mustang Bekleidungswerke GmbH & Co. KG, a German company, applied to register the word mark HERMANS, covering eyeglasses; sunglasses; disks; compact disks; audiovisual cassettes; magnetic image and sound carriers; data carriers with computer programs, especially computer games; apparatus for recordal, reproduction, and transmission of sound or images; goods of leather and imitations of leather, namely bags and other containers; small goods of leather, in particular purses, pocket wallets, key wallets, and leather labels; handbags; schoolbags; trunks; travel bags; umbrellas; parasols; and mens-, womens-, and childrenswear, including sports clothes, belts, hats, and shoes, in International Classes 9, 18, and 25. The application was accepted by the Administrative Trademark Committee.482 The French company Hermès International filed an opposition based on its prior trademark registrations for HERMÈS, dating back to 1980 and covering goods in Classes 9, 18, and 25. Hermès claimed that the opposed mark (1) had five letters in common with its own marks, thus giving a similar overall aural and visual impression; (2) had been filed in bad faith, given that Hermès’ trademarks were famous; and (3) infringed Hermès’ company name, which was protected by Article 8 of the Paris Convention.483 Mustang then proceeded to limit the specification of goods to be covered by its trademark by deleting eyeglasses, sunglasses, disks, audiovisual cassettes, and magnetic image and sound carriers from Class 9, and trunks, travel bags, umbrellas, and parasols from Class 18. The Administrative Trademark Committee rejected the opposition on the grounds that there was sufficient dissimilarity between the marks, because the word HERMÈS was pronounced and understood as the Greek word ΕΡΜΗΣ (ERMÍS), one of the gods of the ancient Greeks, and that the word HERMANS was totally imaginary.484 Upon recourse, the Athens Administrative Court of First Instance reversed the Committee’s decision and accepted Hermès’ 481. Athens Administrative Court of First Instance, Decision No. 11978/2005, issued October 10, 2005. 482. Administrative September 29, 1997. Trademark Committee, Decision No. 3135/1996, issued 483. Article 8 provides: “A trade name shall be protected in all the countries of the [Paris] Union without the obligation of filing or registration, whether or not it forms part of a trademark.” 484. Administrative Trademark Committee, Decision No. 3780/2001, issued May 4, 2001. Vol. 97 TMR 505 opposition.485 The Court took into consideration the fact that (1) the opposed mark consisted of seven letters (Hermès’ trademarks consisted of six), of which the first four, as well as the final S, were identical to the letters of the HERMÈS trademarks and appeared in the same order; and (2) neither the different linguistic background of the words HERMÈS and HERMANS, nor the Greek origin of the word HERMÈS, had an impact on the visual and aural impression conveyed by the marks, because in the Greek consumer’s mind both words were foreign and, thus, similar. In light of the above, the Court of First Instance held that the overall visual and aural impression given by the marks under comparison was similar, and it rejected Mustang’s trademark application for HERMANS. Maspex Spólka z.o.o., a Polish company, applied to register the word mark LA FESTA, covering coffee, cappuccino coffee, coffee substitutes, chocolate, dietetic chocolate beverages, cocoa, chocolate instant beverage, hot chocolate instant beverage, tea, and instant tea in International Class 30. The Administrative Trademark Committee accepted the application.486 The Italian company Ferrero S.p.A. filed an opposition based on its prior trademark registrations for FIESTA FERRERO and FIESTA & Device, covering coffee, tea, cocoa, sugar, coffee substitutes, bread, ice cream, etc., in Class 30. The Administrative Trademark Committee accepted the opposition on the grounds that the opposed mark was similar to Ferrero’s prior-registered trademarks and that it was filed in bad faith.487 Maspex then filed recourse with the Athens Administrative Court of First Instance. The Court determined that (1) the marks under comparison had in common the letters F, E, S, T, and A, the letter I constituting a difference of minor importance; (2) the addition of the article LA (“THE”) did not give the applied-for mark sufficient distinctive power; (3) the marks covered the same goods; and (4) the fact that the marks coexisted in many countries did not prove that they were different. The Court of First Instance held that there was a risk of consumer confusion as a result of the marks’ significant phonetic and visual similarity. It therefore rejected Maspex’s recourse and upheld the decision of the Trademark Committee.488 485. Athens Administrative Court of First Instance, Decision No. 15394/2004, issued December 27, 2004. 486. Administrative Trademark Committee, Decision No. 47/2001, issued April 20, 2001. 487. Administrative Trademark Committee, Decision No. 4539/2002, issued July 9, 2002. 488. Athens Administrative Court of First Instance, Decision No. 12486/2005, issued September 26, 2005. 506 Vol. 97 TMR I.B.9. No Likelihood of Confusion Markant Handels- und Service GmbH, a German company, applied for the registration of the word mark IBERIANA, to cover goods in International Classes 29, 31, and 32 and services in Classes 35, 39, and 41. The application was accepted by the Administrative Trademark Committee.489 The national air transport carrier of Spain, Iberia, filed opposition based on its various trademark registrations for IBERIA & Design (see below).490 Iberia argued that the IBERIANA mark was confusingly similar to the airline’s series of famous marks, as it contained their basic and distinguishing feature of origin, IBERIA, and covered similar services in Classes 35 and 39. The Committee rejected the opposition.491 It found that (1) the overall visual and phonetic impression given by the opposed mark IBERIANA was sufficiently different from the impression created by the IBERIA marks and that the services in the coinciding classes covered by the respective parties’ marks were also different, as the services covered by the IBERIANA mark in Class 35 related to fruits and vegetables and those in Class 39 to transportation of goods for everyday needs, and none of these services were covered by Iberia’s trademarks; (2) although Iberia was one of the international airlines that were active in Greece, its trademarks did not qualify as famous marks; and (3) as the trademark IBERIANA had been registered since June 13, 1994, for services in Classes 35, 39, and 41 in Germany, Markant’s country of origin, where it was not considered as creating a likelihood of confusion with Iberia’s trademarks, which were also known in that 489. Administrative Trademark Committee, Decision No. 11517/1995, issued May 13, 1997. 490. Opposition Filing No. 2823/1997, filed October 15, 1997. 491. Administrative Trademark Committee, Decision No. 6069/1998, issued October 1, 1998. Vol. 97 TMR 507 country, by virtue of the “telle quelle” clause of the Paris Convention492 a stricter standard of scrutiny could not be applied in another member state of the Paris Convention. Upon recourse filed by Iberia,493 the Athens Administrative Court of First Instance upheld the decision of the Administrative Trademark Committee.494 The Court reasoned that the trademarks under comparison were sufficiently different. Specifically, the addition of the suffix -NA in the opposed mark, and of the letter B and the word PLUS in two of the opponent’s marks, created a different overall impression, and hence the marks were not likely to cause confusion among consumers. The Court also found that adding the suffix -NA to the word IBERIA caused a change in the accent (IBERIÁNA instead of IBÉRIA), which altered the phonetic impression made by the opposed mark. The differences in the services covered by the marks under comparison provided further support for the Court of First Instance’s determinations. Iberia appealed the decision of the Court of First Instance. The Athens Administrative Court of Appeals affirmed the findings of the lower court.495 While it recognized that the differences in the services covered by the respective marks should not, per se, be decisive in determining whether the IBERIANA trademark application had been filed in bad faith, the Court of Appeals held that the IBERIA marks, albeit known in Greece and associated with the Spanish national airline, did not qualify as famous and that the differences in the impression created and the services covered by the marks under consideration were sufficient to ensure that any risk of consumer confusion was averted. I.B.9.a. No Similarity of Marks Reckitt Benckiser N.V. (previously known as Benckiser N.V.) applied for the registration of the word mark MARC, to cover (1) chemical products for industrial purposes, descaling agents, and water softeners in International Class 1; and (2) bleaching preparations and other substitutes for laundry use; cleaning, polishing, scouring, and abrasive preparations; detergents; decalcifying and descaling preparations; fabric softeners; and laundry additives in Class 3. The application was accepted by the Administrative Trademark Committee.496 492. Paris Convention, art. 6quinquies, para. A(1). 493. Recourse Filing No. 1809/1999, filed February 26, 1999. 494. Athens Administrative Court of First Instance, Decision No. 6297/2003, issued May 27, 2003. 495. Athens Administrative Court of Appeals, Decision No. 2741/2005, issued July 5, 2005. 496. Administrative November 19, 1999. Trademark Committee, Decision No. 4436/1999, issued 508 Vol. 97 TMR The German company Merck filed an opposition, alleging that the applied-for mark resembled its famous trademark MERCK, registered in 1934 and covering goods in Classes 1, 2, 3, and 5. The Committee rejected the opposition on the grounds that the marks under comparison were visually and aurally different and that the covered goods were not the same, and therefore there was no likelihood of confusion among consumers.497 Upon recourse before the Athens Administrative Court of First Instance, Merck argued that (1) the trademark MARC resembled both its prior-registered trademark MERCK and its Community trade mark MERCK, registered in 1999 and covering goods in Classes 1 and 3; (2) its trademark had become famous and, thus, enjoyed broader protection; and (3) the trademark MARC infringed its company name, in violation of Article 8 of the Paris Convention. The Court of First Instance upheld the decision of the Trademark Committee.498 It found that MARC, which is a male name, and MERCK were sufficiently different, as their second letters were A and E, respectively, and the last letter of MERCK was K rather than C. Moreover, the goods covered by the marks were different. Further, the Court held that Merck did not produce sufficient evidentiary material to prove the notoriety of its mark in Greece and abroad and that Article 8 of the Paris Convention was not applicable in the case of grounds for the acceptance of a trademark. The German company Dorina Textil GmbH applied for the international registration of the word marks DORINA FREE & EASY and DORINA HAPPY BABY, covering goods in International Classes 10, 24, and 25 (below, illustrations at top). Upon examination during the national phase in Greece, both applications were accepted by the Administrative Trademark Committee for goods in Classes 10 and 24 and rejected for goods in Class 25.499 The ground for the Committee’s rejection with respect to Class 25 goods was that the applied-for marks resembled the prior-registered trademark DORINASEX, covering goods in the same class (below, illustration at bottom). 497. Administrative Trademark Committee, Decision No. 3470/2001, issued June 12, 2001. 498. Athens Administrative Court of First Instance, Decision No. 4315/2005, issued March 23, 2005. 499. Administrative Trademark Committee, Decision No. September 27, 2001; Decision No. 9665/2001, issued October 10, 2001. 8709/2001, issued Vol. 97 TMR 509 Upon recourse,500 the Athens Administrative Court of First Instance held that the trademarks under comparison were sufficiently different, in that the applied-for marks comprised three words, with the word DORINA in a special typeface and the words FREE & EASY and HAPPY BABY in lowercase, smallersize letters, whereas the opposing mark comprised two words that appeared to be written as one, in a special script typeface, and that were accompanied by a characteristic device. The Court of First Instance concluded that the visual and phonetic impression given by the marks DORINA FREE & EASY and DORINA HAPPY BABY was different from that given by DORINASEX, despite the fact that they had the word DORINA in common and were not likely to cause confusion among consumers as far as the origin of the goods was concerned. Consequently, the Court allowed the opposed marks to proceed to registration.501 Elf Aquitaine, a French company, applied for the international registration of the trademark €CO & Device, to cover industrial oils and greases, lubricants, fuels, and petrol products in Class 4 (below, illustration at left). Upon examination during the national phase in Greece, the application was rejected by the Administrative Trademark Committee, on the ground that the applied-for mark resembled the prior-registered Greek trademarks EKO & Seahorse Device, also covering, inter alia, goods in Class 4 (below, illustration at right).502 500. Recourse Filing Nos. 16473/2002 and 16474/2002, filed June 27, 2002. 501. Athens Administrative Court of First Instance, Decision Nos. 13170/2005 and 13171/2005, issued October 31, 2005. 502. Administrative Trademark Committee, Decision No. 9663/2001, issued October 10, 2001. 510 Vol. 97 TMR The Committee’s decision was brought for reexamination at the initiative of Elf Aquitaine, which filed recourse before the Athens Administrative Court of First Instance.503 After reevaluating the facts before it, the Court reversed the Committee’s decision and held that the trademarks under comparison were sufficiently different. The applied-for mark was in Roman letters and its initial letter was the character €, whereas the opposing marks were in Greek letters, with the initial letter E in a larger font, and were accompanied by a seahorse device. The Court of First Instance concluded that the overall visual and phonetic impression given by the trademark €CO & Device and the prior-registered trademarks EKO & Seahorse Device was sufficiently different and that the marks under comparison were not likely to cause confusion among consumers despite the fact that they covered similar goods in the same class. Accordingly, it accepted the applied-for mark for registration.504 Interestingly, the Court did not deem it necessary to examine the special character used for the first letter of the new trademark: the symbol €, which is identical to the symbol used to denote the euro currency unit. I.B.12. Famous Marks The Athens Administrative Court of First Instance reversed the Administrative Trademark Committee’s decisions partially accepting the applications for four CITI+ marks filed by a Greek company and granted the related recourses filed by the American firm Citigroup (which comprises Citibank N.A. and Citicorp). In 1999, the Greek company Citishop—Electronics Merchandise and Electrical Appliances had filed applications for registration of four new trademarks, all containing the word element CITI- as their prefix: CITIPRICE, CITICHECKUP, CITIBILLS, and CITISMILE. All the applications covered goods or services in International Classes 9, 14, 16, and 38. Each mark included some descriptive terms in Greek, depending on the type of goods or services it was intended to cover, as well as minor, cartoon-like devices of mobile phones. At first instance, the Administrative Trademark Committee, pursuant to related oppositions filed by Citigroup, partially rejected the four applications, allowing the marks to proceed to registration in Classes 14 and 38 and refusing them registration in Classes 9 and 16.505 In the Committee’s opinion, although the 503. Recourse Filing No. 16464/2002, filed June 27, 2002. 504. Athens Administrative Court of First Instance, Decision No. 13731/2005, issued November 22, 2005. 505. Administrative Trademark Committee, Decision Nos. 4923/2004–4928/2004, issued May 6, 2004. Vol. 97 TMR 511 applied-for marks were confusingly similar to the well-known CITI+ series of marks of CITIGROUP, a risk of confusion existed only with regard to the conflicting classes (9 and 16). Any potential risk of confusion with respect to the other, non-coinciding classes was mitigated by the fact that none of Citigroup’s CITI+ marks actually covered goods in Class 14 or services in Class 38 and there was no proximity of the goods and services actually covered by the applicant’s marks to those covered by the opponent’s marks. Therefore, consumers were not considered likely to be misled where telecommunications or watches, which were not covered by Citigroup’s series of marks, were concerned. Citigroup filed recourses requesting the Court of First Instance to dismiss the Greek company’s four trademark applications in Classes 14 and 38 as well, primarily on the basis of the fame of its CITI+ marks and notwithstanding the fact that the particular classes applied for did not coincide with any of the classes covered by its numerous CITI+ marks.506 In substantiating this “claim to fame,” Citigroup argued, inter alia, that, based on the evidence submitted, its CITIBANK mark was rated as one of the 75 most valuable marks worldwide, and that fact, in itself, indicated the fame of its CITI+ marks (aside, of course, from the apparently endless list of CITI+ marks registered and used around the globe). It argued, moreover, that, given today’s business realities, the expansion of its activities in various fields would lead consumers to assume that the applied-for goods and services (horological and chronometric instruments and watches, and telecommunications) were part and parcel of those activities. Therefore, Citigroup contended, the onus should be on the Greek company to disprove any allegations of risk of confusion between the applied-for marks and Citigroup’s world-famous CITI+ marks. In examining the merits of the case, the Court momentarily went beyond the facts before it and drew a significant distinction between the direct and indirect risks of confusion. It held that the direct risk was the obvious, evident resemblance of the marks at issue to the earlier-registered marks, which, despite minor differences between the marks, was nonetheless capable of creating confusion in the mind of the average consumer as to the origin of the products involved. The indirect risk of confusion, on the other hand, stemmed primarily from the subconscious perception of the average Greek consumer, who might, in the circumstances, appreciate that the particular products or services applied for did not, or could not, originate from the company that owned the prior-registered mark, 506. Recourse Filing Nos. 28017/2004–28019/2004 and 28023/2004, filed July 7, 2004. Separate recourses with respect to each of the four trademark applications were filed for Citibank N.A. and Citicorp. 512 Vol. 97 TMR but nonetheless might reasonably assume that there was some financial or legal nexus between the two companies. Although Greek trademark law does not expressly mention the indirect risk of confusion as a factor to be considered in determining the admissibility of trademark applications, the Court deemed both the direct and the indirect risks of confusion to be of equal importance. This finding followed from the Court’s interpretation of a combination of relevant provisions of Greek trademark law and upheld related precedent from the Greek Supreme Administrative Court (Council of State) as well as the European Court of Justice. In applying the above legal principle to the facts before it, the Court was satisfied that the dispute under review involved a real, albeit indirect, risk of confusion, given that the classes of goods and services respectively covered did not entirely coincide. The Court went on to examine the fame and goodwill associated with the CITI+ series of trademarks owned by Citigroup. After tracing the long history of Citigroup, which was founded nearly two centuries ago (1812), and its operations in Greece, which commenced in 1964, the Court was convinced that Citigroup’s CITI+ series of marks enjoyed extended fame and notoriety in Greece and were therefore subject to special protection, as they derived in part from Citigroup’s famous company name, which itself contained the Citi- prefix. Notwithstanding the fact that the purported trademark applications were filed by an applicant whose own company name (Citishop) contained the prefix Citi-, the Court was satisfied that Citigroup was sufficiently shielded by its older, world-famous company name, and fortified as well by its globally famous CITI+ series of marks, including, but not limited to, CITIBANK, CITICORP, CITIGOLD, CITIFREEDOM, CITICASH, CITIDIRECT, CITIPHONE, CITIBUSINESS, CITIPAY, and CITIFUND. It was obvious to the Court, after examining the trademark applications under review, that the dominant element of each mark was the prefix CITI- and that the remaining word and device elements were not sufficiently distinct to differentiate them, to a satisfactory extent, from Citigroup’s famous, prior-registered CITI+ marks. The Court therefore held that the applied-for marks, all of which contained the word element CITI- as their prefix, were confusingly similar to the well-known series of CITI+ marks owned by Citigroup and as such had to be denied registration, despite the fact that the classes of goods and services covered by the respective marks did not coincide. In light of all the above, the Court of First Instance held that there was a real and sufficiently detrimental risk of confusion— albeit indirect, considering the non-coinciding classes involved— Vol. 97 TMR 513 given the extended goodwill associated with the CITI+ marks of Citigroup. Accordingly, the Court refused the registration of the applied-for marks and granted the related recourses filed by Citigroup.507 The Athens Administrative Court of First Instance reversed the cancellation of the trademark registration for HENDI BAGS in the name of the company Sanitas–Sanitas S.A.508 The Court held that the mark at issue, covering food bags in International Class 16, was not confusingly similar to the well-known registered trademark FENDI, for goods in Classes 3, 16, 18, 24, and 25. Accordingly, it granted the recourse filed by the applicant for acceptance of its mark.509 Fendi S.r.L., with headquarters in Italy, filed an intervention against the acceptance of the filed recourse and ultimately for the dismissal of the trademark application for HENDI BAGS. In reviewing the facts, the Administrative Court of First Instance held that the HENDI BAGS trademark specifically aimed to distinguish food bags sold in supermarkets, etc. As such, the likelihood of confusion of said mark with the well-known designerbrand bags was averted. In any case, the Court ruled, the HENDI BAGS mark was sufficiently distinct from the FENDI mark, as it also included the word BAGS, which is not incorporated in the Greek vocabulary and as such is not per se a descriptive term. The Court of First Instance therefore granted the applicant’s recourse and allowed the HENDI BAGS trademark to proceed to registration. III.A.1. Famous Marks The Administrative Court of First Instance of Athens reversed the decisions of the Administrative Trademark Committee510 and revoked the cancellations of the trademark registrations for several brick elements (device marks) in the name of the Lego Group, based in Denmark.511 The cancellation petitions512 were filed by Lego’s great Canadian rival, Ritvik, against the LEGO trademarks consisting solely of the devices depicted in the photos below. 507. Athens Administrative Court of First Instance, Decision Nos. 15347/2005– 15354/2005, issued December 22, 2005. 508. Athens Administrative Court of First Instance, Decision No. 6991/2005, issued January 12, 2006. 509. Recourse Filing No. 25098/2001, filed December 7, 2001. 510. Administrative Trademark Committee, Decision Nos. 5335/2001–5337/2001, issued July 2, 2001. 511. Athens Administrative Court of First Instance, Decision Nos. 15920/2005– 15922/2005, issued December 29, 2005. 512. Cancellation Petition Nos. 8384/2000–8386/2000, filed September 4, 2000. 514 Vol. 97 TMR The Court held that the marks in question, which did not contain any word elements whatsoever, were neither functional nor common, and had retained their distinguishing ability throughout their long use in the Greek market. The Court of First Instance revoked the Committee’s decision to cancel the trademark registrations. The related cancellation petitions were based on several grounds, including non-use, and also on grounds of nonadmissibility (which are ordinarily used for oppositions but may also be included in certain cancellation petitions), such as lack of distinguishing ability, purely functional shape mandated by the nature of the product itself, commonly used design, etc. Ritvik also made an unfair monopoly claim for the above reasons. It asserted that Lego sought the protection of such trademarks in bad faith and only for the purpose of enjoying an unfair monopoly of what it alleged to be commonly used bricks, whereas Lego allegedly knew that said bricks were not subject to protection because of their lack of distinguishing character. The Court dismissed all of Ritvik’s non-use claims and allegations against Lego and went into great detail in examining the merits of the case in question. In doing so, it established some very useful guidelines for determining similar trademark disputes. First, by examining the spirit of the law and applying the relevant provisions of the Trademark Law to the facts of the dispute, the Court held that, when determining whether a trademark has been filed in bad faith, what should be taken into consideration is the circumstances and the applicable law in force at the time the application was actually filed, and not the circumstances and applicable law in force at the time a subsequent cancellation petition was filed. In light of the above, the Court considered that, in 1984, when the relevant trademark applications were filed, there was no question as to the admissibility of the trademark devices in question, as there was no dispute over the originality or distinctiveness thereof. As such, Ritvik’s allegation that Lego’s applications for the particular trademarks were filed in bad faith (i.e., that Lego knew that said trademarks were inadmissible but nonetheless filed applications for them) was deemed unsubstantiated based on the facts. This was because no Vol. 97 TMR 515 oppositions or cancellations were ever filed against the particular trademarks by Ritvik or any other party with a legitimate interest. Interestingly, the Court also drew a distinction between, on the one hand, a bad-faith filing, which relates to the applicant’s bad faith per se and can be substantiated by proving, inter alia, that the applicant was aware of the fact that the trademark filed at the time would confer upon him an unfair advantage, and, on the other hand, a filing that contravenes the principle of good faith, for the establishment of which no showing of bad faith on the part of the applicant is required. In fact, by reviewing several other related litigations initiated by Lego, the Court found that in reality it was Lego’s competitors that had acted in bad faith by continually trying to copy the LEGO trademarks, and that Lego was by no means trying to engage in any unfair monopoly, or act in bad faith, but, rather, was only aiming to protect its lawful rights. The Court of First Instance also dismissed the argument put forward by Ritvik that Lego used its trademark devices in its packaging boxes and brochures along with the names LEGO and LEGO SYSTEM, and that such use allegedly proved Lego’s own conviction that its trademark devices were unable to distinguish the LEGO products alone without the presence of the LEGO name. Instead, the Court found that the particular manner of using the LEGO trademarks exhibited prudence on the part of Lego, whose intention was to avoid any risk of confusion between its products and the imitative products of its competitors, which had flooded the market and which were, as deemed appropriate, the subject matter of relevant infringement litigation. Last, the bad faith argument, allegedly proven by the fact that Lego filed the particular trademark applications six years after the lapse of its relevant patents, was dismissed by the Court as irrelevant, as the nature of a trademark right is sufficiently distinct from that of a patent right. The French company Hermès International (Hermès), also known by its distinguishing title Hermès, is the owner of numerous well-known trademark registrations and applications in Greece and worldwide. Hermès filed a Main Infringement Action before the Civil Court of First Instance of Athens against Ermis (Hermes) Bali Issagogiki-Exagogiki, a Greek company that trades in clothing, furniture, and decorative items in Athens.513 The defendant had been using the word EPMHΣ (“HERMES”) in both Greek and Roman letters in its company name and as a trademark on its products, labels, and advertising material. The action was filed on the grounds that, inter alia, the particular company name 513. Main Infringement Action Filing No. 3634/1999, filed January 22, 1999. 516 Vol. 97 TMR infringed Hermès’ own company name and prior trademark registrations and violated the provisions of Greek trademark law and unfair competition law. The Court of First Instance rejected the action.514 Upon appeal filed by Hermès,515 the Athens Civil Court of Appeals reversed the Court of First Instance and upheld the plaintiff’s contentions.516 The basis for the appellate court’s decision was that the word HERMES or EPMHΣ, which had been used by the defendant on its merchandise, labels, and brochures, was a slavish imitation of the Hermès’ distinguishing title and marks, given that the version of the word in Roman letters coincided with the plaintiff’s word mark and company name and the Greek version was nothing more than the Greek attribution of the same. Thus, the defendant’s use of the word EPMHΣ or HERMES constituted an intentional slavish imitation of the plaintiff’s word mark and company name. The Court further found that by using the word EPMHΣ or HERMES in its company name as a distinguishing title, the defendant had obviously and directly infringed the plaintiff’s exclusive rights in the word HERMES. The Court of Appeals revoked the lower court’s decision and issued an order enjoining the respondent from using the word HERMES, either in Latin or in Greek, in its own company name and distinguishing title on its labels, its merchandise, its advertising material, or any of its stationery. The Court also ordered the seizure and destruction of all of the plaintiff's labels, merchandise, advertising material, etc., bearing the word HERMES or EPMHΣ. III.A.2.b. Similarity of Marks The Rhodes Multi-Member Court of First Instance granted the Main Infringement Action517 filed by the British firm Wm Morrison Supermarkets PLC (Morrison) against Michael Hatzinikolas, an individual located in Rhodes, for infringement of the company’s trademark rights.518 Morrison owns a well-known supermarket chain in the United Kingdom under the main brands MORRISONS and MORRISONS & M Device. 514. Athens Multi-Member Civil Court of First Instance, Decision No. 1540/2005, issued March 16, 2005. 515. Appeal Filing No. 7343/2005, filed August 31, 2005. 516. Athens Three-Member Civil Court of Appeals, Decision No. 2461/2006, issued April 7, 2006. 517. Main Infringement Action Filing No. 1154/2004, filed December 22, 2004. 518. Rhodes Multi-Member Court of First Instance, Decision No. 121/2006, issued April 17, 2006. Vol. 97 TMR 517 Mr. Hatzinikolas owned a grocery store on the island of Rhodes in the area of Faliraki, which is frequently visited by British tourists. At the front of his store, Mr. Hatzinikolas had erected a sign copying the MORRISONS logo; the shopping bags distributed to his customers bore Morrison’s mark MORRISONS & M Device. As a result, British tourists who visited Faliraki and saw the MORRISONS sign were expectedly confused and misled into believing that Mr. Hatzinikolas’s store was a Greek branch of the well-known British supermarket chain. Morrison became aware of this infringement from questions addressed to the company by its clients, who had visited the island of Rhodes, discovered Mr. Hatzinikolas’s store, and were inquiring whether the company was expanding its operation in Greece. When Morrison learned of this situation, it immediately initiated legal action. Interestingly, during the hearing the Court examined the risk of confusion of the average British tourist, as the most likely visitor to that particular store, in view of its location. This deviation from the general consumer public of Greece as the threshold for establishing the risk of confusion was necessary in the circumstances, given the target group at issue. When confronted with the facts, Mr. Hatzinikolas admitted that he was aware of the well-known brands owned by Morrison. His claim that the particular marks were not as strong or well known when he first started using them as they were at the time the action was brought was dismissed by the Court as irrelevant. The Court of First Instance held that the fact that the marks in question were identical and the particular environment in which they were used was quite similar to that of a MORRISONS supermarket in the United Kingdom was sufficiently detrimental and capable of causing confusion of the average British tourist. The Court therefore granted Morrison’s Main Infringement Action and ordered, among other things, that Mr. Hatzinikolas be enjoined from using, in any way, shape, or form, the word MORRISONS or MORRISON. V.A. Domain Names Microsoft Corporation successfully cancelled the domain name microsoft.gr, which had been registered by another entity of undisclosed identity.519 Microsoft, with headquarters in Redmond, Washington, USA, is well known even to non-Internet users. When it attempted to register the domain name microsoft.gr in Greece, the company 519. National Telecommunications and Post Committee, Administrative Decision No. 369/40, issued December 29, 2005. Microsoft had previously been successful in a petition for injunction proceeding on the same issue. Athens Single-Member Civil Court of First Instance, Decision No. 841/2001, issued January 24, 2001. See 92 TMR 420 (2002). 518 Vol. 97 TMR discovered that the domain name had been taken by an undisclosed source. Under the relevant provisions of Greek legislation,520 full confidentiality can be granted to those domain name owners that opt for it. Consequently, Microsoft filed a petition with the Public Prosecutor in order to discover the identity of the registrant. The petition was granted, and it was revealed that the registrant was Armada O.E., a personal liability company located in Athens. The National Telecommunications and Post Committee, the Greek national authority responsible for supervising the administration of domain names, held that Armada’s registration was made in bad faith and therefore violated the applicable regulations on the administration of .gr domain names, as there were no legal rights attached to this particular registration. It held, further, that the respondent’s lack of use of the domain name did not eliminate the bad faith that had been found to exist. The National Telecommunications and Post Committee granted the cancellation petition filed against the domain name orangetelecom.gr, which was initially registered in the name of the Greek company Orange Telecom International.521 The Committee held that the domain name infringed, inter alia, the copyright of the well-known telecommunications company Orange Personal Communications Services (Orange PCS), as well as Orange PCS’s trademarks and company name. The copyright on the well-known ORANGE mark (consisting of the word “orange,” in lowercase white characters, at the bottom of an orange square device) belonged to Orange PCS and was part and parcel of the company’s intellectual property rights in the trademark and all related domain names. Following a successful petition for injunction proceeding on the issue of the infringement of the trademark and company name, as well as the copyright,522 the Committee confirmed that the only entity entitled to use the domain name orangetelecom.gr was Orange PCS, as the owner of the relevant copyright, trademarks, and well-known company name. The National Telecommunications and Post Committee issued a decision granting the cancellation petition filed against the domain name dainese.gr, which was initially registered in the 520. National Telecommunications and Post Committee, Administrative Order No. 268/73, superseded by Administrative Order No. 351/76, issued May 20, 2005. 521. National Telecommunications and Post Committee, Administrative Decision No. 373/37, issued February 1, 2006. 522. Athens Single-Member Civil Court of First Instance, Decision No. 4128/2005, issued May 30, 2005. See 96 TMR 421 (2006). Vol. 97 TMR 519 name of the Greek company Papafilopouloi Bros. O.E.523 The Committee found that the domain name was registered in bad faith and infringed, inter alia, the trademarks and company name of the Italian firm Dainese. Dainese, which is well known for its bikers’ accessories, was founded in 1972. Since then it has developed a network of stores on six continents, maintaining three large retail stores in Greece alone. Without the need for confirmation by a court decision in any preceding litigation, the Committee was able, based on the facts before it, to determine that the registration of the domain name dainese.gr by Papafilopouloi Bros. was done in bad faith, as the firm had no relation to Dainese, had no relevant rights in Dainese’s company name, and was engaged in the same field of activity. In fact, the Greek company was selling secondhand items bearing the Italian company’s trademarks. The Committee held that the fact that Papafilopouloi Bros. was obviously aware of Dainese (as it in fact admitted), coupled with the Greek company’s clear effort to extract clientele or divert online visitors from the Italian company, substantiated a finding of bad faith and provided sufficient grounds for granting the petition for cancellation. The National Telecommunications and Post Committee granted the cancellation petition524 filed by Microsoft Corporation against the domain name microsoft.com.gr.525 Prologic A.E., a Greek company, applied for and registered the domain name in 2004. Prologic had absolutely no relation to, or affiliation or financial or other business nexus with, Microsoft. However, it took advantage of the fact that, with respect to .gr domain names, no showing of legitimate interest is necessary in order to allow the registration by a given entity of a particular domain name. After considering all the facts before it, the Committee affirmed its previous judgments on similar matters, which involved both Microsoft and other entities. In something akin to a preemptive strike, the Committee started its analysis by emphasizing that, given the extent of highlevel promotion and the enormous quantity of the trademarks containing the word MICROSOFT, which is the same as Microsoft’s company name, Prologic was estopped from denying 523. National Telecommunications and Post Committee, Administrative Decision No. 376/39, issued March 2, 2006. 524. Cancellation Petition No. 9092/17-3-2006, filed March 17, 2006. 525. National Telecommunications and Post Committee, Administrative Decision No. 393/30, issued June 29, 2006. 520 Vol. 97 TMR that it was aware of Microsoft prior to registering the particular domain name. Applying the principles it had followed in similar disputes in the past to the facts of the dispute at issue, the Committee affirmed relevant precedent submitted by the petitioner, which was based primarily on similar WIPO decisions, and held that Prologic’s registration of the domain name microsoft.com.gr constituted a bad-faith registration for purposes of the administrative regulations applicable in Greece.526 Not only did Prologic have no legal rights in the particular name, but also, as indicated by the WIPO decisions, the fact that the relevant site was inactive did not shield the defendant from liability. Quite the contrary, it constituted a clear showing of bad faith per se. After taking into account all of the above, the Committee ordered the immediate cancellation of the domain name microsoft.com.gr in the name of Prologic A.E. so that its proper owner, Microsoft Corporation, would have the opportunity to register it. HONG KONG I.B.8.a. Similarity of Marks Fujian Septwolves Group Corp. applied to register the composite mark SEPTWOLVES 七匹狼 & Device, for “tobacco; cigars; cigarettes; tobacco pipes; cigarette cases, not of precious metal; cigarette holders, not of precious metal; matches; lighters for smokers; cigarette filters; cigarette paper; [and] smokers’ articles” in International Class 34 (below, illustration at left), pursuant to the old Trade Marks Ordinance (Cap. 43) (the “Ordinance”).527 The mark was accepted after examination and was advertised in the government gazette. Longyan Cigarette Factory opposed the registration on the grounds that use of the mark would likely deceive or cause confusion among consumers and that the mark was not entitled to protection in a court of justice under Section 12(1) of the Ordinance. The opponent’s composite mark SEPTWOLVES 七匹狼 & Device (below, illustration at right) was nearly identical to the applicant’s mark. 526. National Telecommunications and Post Committee, Administrative Order No. 351/76, issued May 20, 2005. 527. Application No. 200117507, filed October 26, 2001. Vol. 97 TMR 521 Applicant’s Mark Opponent’s Mark The key issues in the case were (1) whether the opponent’s composite mark SEPTWOLVES 七匹狼 & Device had established the requisite reputation in Hong Kong at the filing date of the application for the opposed mark to trigger Section 12(1) of the Ordinance and (2) whether there would be a reasonable likelihood of deception of a substantial number of persons if the applied-for mark proceeded to registration. In determining whether the opponent had established the requisite reputation in Hong Kong, the Registrar relied on the requirement, noted in DA VINCI Trade Mark,528 that the reputation of the opponent’s SEPTWOLVES, 七匹狼, and SEPTWOLVES 七匹狼 & Device marks had to be more than de minimis (i.e., more than enough to be taken seriously). Only if the opponent discharged this evidential burden would the onus shift to the applicant to satisfy the Registrar that there would be no reasonable likelihood of deception of a substantial number of persons if the mark proceeded to registration. To meet its burden of proof, the opponent provided evidence of cigarette export contracts and advertising activities, including TV commercials that aired on Phoenix TV Chinese Channel and advertisements in a Hong Kong Chinese newspaper that showed that its cigarette products bearing the SEPTWOLVES, 七匹狼, and SEPTWOLVES 七匹狼 & Device marks were launched in Hong Kong prior to the application date for the opposed mark. Not surprisingly, the Registrar found that the reputation of the opponent’s marks met the standard of more than de minimis. The onus of proof then shifted to the applicant to convince the Registrar that there would be no reasonable likelihood of deception of a substantial number of persons if its mark proceeded to registration. The test applied by the Registrar was whether there would be a reasonable likelihood of confusion of a substantial number of persons if both the applicant and the opponent used their marks in a normal and fair manner in respect of the goods covered by their registrations.529 528. [1980] R.P.C. 237. 529. Smith Hayden & Co’s Application, (1946) 63 R.P.C. 97, 101. 522 Vol. 97 TMR The opponent had used its SEPTWOLVES, 七匹狼, and SEPTWOLVES 七匹狼 & Device marks in relation to cigarette products. The Registrar confirmed that the goods covered by the applied-for mark either were the same or had the same description as the goods covered by the opponent’s marks and that the target customers (i.e., the smoking population in Hong Kong) were also the same. Having compared the applicant’s and the opponent’s marks, the Registrar found that the opponent’s mark SEPTWOLVES 七匹狼 & Device and the applicant’s mark were identical except for slight differences in color contrast. The Registrar observed that the applicant encountered the problem of “triple identity,” which means nearly identical marks for the same goods in the same market. The Registrar concluded that since the marks were nearly identical and covered the same goods in the same market, there was a reasonable likelihood that the registration of the applied-for mark would cause deception or confusion of the public. The Registrar therefore refused the registration of Fujian Septwolves Group’s mark SEPTWOLVES 七匹狼 & Device.530 Chapman Entertainment Limited applied to register a design mark, for clothing, footwear, and headgear in Class 25, pursuant to the Trade Marks Ordinance (Cap. 559) (the “Ordinance”). The mark was presented in a three-dimensional manner and in combination with a crown device (see below).531 The Registrar objected to the application on the grounds that the mark was considered similar to an earlier-registered trade mark Bee & Device532 (see below) and that there would be a likelihood of confusion of the public. 530. Registrar of Trade Marks, decision of June 13, 2006, available at www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC2 00117507OP.pdf. 531. Application No. 300440766, filed June 17, 2005. 532. Registration No. 300330803, granted December 2, 2004. Vol. 97 TMR 523 The applicant argued that its mark consisted of the character of a “Bee Prince” with a three-pronged crown device, presented in a three-dimensional manner, whereas the opponent’s mark resembled a wingless grub or caterpillar and was presented in a two-dimensional manner. Consequently, the applicant argued, no confusion between the marks was likely to arise. In deciding whether there would be likelihood of confusion, the Registrar applied the “global appreciation” test formulated by the European Court of Justice, under which the likelihood of confusion depends on the overall effect of the similarity between the marks and the goods from the perspective of the average consumer, bearing in mind that the marks are perceived by overall impression rather than through their various details. Not surprisingly, the Registrar took the view that the marks in this case claimed the same goods and that the target customers were also similar. The Registrar then compared the marks. While accepting the fact that there were notable differences between them, namely the small three-pronged crown on the head of the figure in the appliedfor mark and the “buoyancy aid” around its neck, the Registrar argued that those differences were not significant. The Registrar asserted that the overall impression conveyed by both marks was that of a cartoon creature or insect with a pair of antennae, big, round eyes, and long, thin limbs, which was portrayed in a standing posture with a big smile. Consequently, the Registrar was of the view that the marks were visually and conceptually similar to the extent that the use of the applied-for mark in relation to the specified goods would likely cause confusion among the public as to origin with the earlier-registered mark. The applicant referred to numerous registered trade marks in Hong Kong that comprise insects or creatures with human attributes, similar to the prior-registered mark. However, the Registrar believed that those marks conveyed different impressions as a result of the different postures adopted by those cartoon devices. Therefore, the Registrar refused the registration of the mark under Sections 12(3) and 42(4)(b) of the Ordinance.533 533. Registrar of Trade Marks, decision of June 26, 2006, available at www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC3 00440766R.pdf. 524 Vol. 97 TMR I.B.9.a. No Similarity of Marks Wong Yuet Mei applied to register the trade mark BANSEOXJA 变色鳄世家, for leather footwear, clothing, and headgear in International Class 25, under the Trade Marks Ordinance (Cap. 559) (the “Ordinance”).534 The mark was accepted after examination and was advertised in the government gazette. Crocodile Garments Limited opposed the registration under Section 44 of the Ordinance on the grounds that the mark was similar to its range of registered trade marks featuring, alone or in combination, the word CROCODILE; various crocodile devices; and the characters 鱷魚, 鱷魚恤, and 鱷魚格格, and that use of the applicant’s mark would be likely to cause confusion on the part of the public. The key issues in the case were (1) whether the applicant’s mark was similar to the opponent’s marks, (2) whether the goods claimed by the applicant were identical or similar to the goods claimed by the opponent, and (3) whether the use of the applicant’s mark in relation to those goods would be likely to cause confusion of the public. Having compared the goods concerned, the Registrar found that there was a high degree of similarity between the goods to be covered by the applicant’s mark and the goods and services for which the opponent’s marks were registered. In determining whether the applied-for mark was similar to any opponent’s mark, the Registrar applied the “global appreciation” test, as laid out in Sabel BV v. Puma AG,535 which requires that the marks be assessed globally, taking into account all relevant factors, in determining whether there is a likelihood of confusion between them. Applying the test to this case in regard to the aural comparison, the Registrar found that the marks were dissimilar owing to their different pronunciation (“Banseoxja” compared with “crocodile”). In terms of the visual comparison, the Registrar likewise found that the overall appearance of the applicant’s mark and the opponent’s marks was completely different. Finally, the Registrar determined that the opponent’s registered trade marks conveyed the idea of a crocodile, whereas the first three characters of the applicant’s mark conveyed the idea of a chameleon and not simply a crocodile. Therefore, the Registrar concluded that conceptually the marks were different. In sum, having compared marks, the Registrar found that they were aurally, visually, and conceptually different, even allowing for imperfect recollection. Not surprisingly, then, the Registrar concluded that there was little or no likelihood of consumers’ being 534. Application No. 300044117, filed July 8, 2003. 535. [1998] R.P.C. 199. Vol. 97 TMR 525 confused into believing that the goods provided by the applicant were those of the opponent. The Registrar therefore allowed the registration of the applicant’s mark.536 I.B.22. Distinctiveness Superfund Asset Management Beteiligungs AG applied to register the trade mark SUPERFUND, for investment management, financial investment, and financial investment consultation services in International Class 36, pursuant to the Trade Marks Ordinance (Cap. 559) (the “Ordinance”).537 The mark was presented in a stylized manner (see below) and in combination with accompanying artwork. The Registrar objected to the application under Section 11(1)(b) of the Trade Marks Ordinance (Cap. 559) (the “Ordinance”) on the ground that the mark was devoid of any distinctive character with respect to the services to be covered. The applicant argued that the stylized letter S in its mark was distinctive and capable of distinguishing the applicant’s services from those of other business undertakings. It referred to a trade mark, consisting basically of a single stylized capital S, that had previously been accepted for registration. The applicant argued that if the letter S alone could be considered sufficiently distinctive to be registered as an individual mark, then the stylized S in the word SUPERFUND should be equally apt to make the mark distinctive. However, the Registrar responded that each case must be decided on its own merits, and not by reference to other marks that have been judged registrable on other occasions. In deciding whether the applicant’s mark was devoid of distinctive character, the Registrar applied the following test, drawn from British Sugar Plc v. James Robertson & Sons Ltd: Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark?538 The Registrar considered that in assessing the distinctiveness of a mark that combines a number of elements, the mark must be regarded and considered as a whole. However, the Registrar was of the view that when gauging the impact of the whole mark on the public, it is proper to consider its separate components. 536. Registrar of the Trade Marks, decision of June 7, 2006, available at www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC3 00044117OP.pdf. 537. Application No. 300270909, filed August 19, 2004. 538. [1996] R.P.C. 281, 306. 526 Vol. 97 TMR Turning to a consideration of the words in the mark, the Registrar asserted that the words “super” and “fund” are ordinary English words that, taken together, convey a direct message that the fund that is managed by the applicant and for which the applicant provides investment and consultation services provided is larger or better-performing than other funds, and that those words can be used by other financial services providers. Further, the Registrar considered the way the words were presented in the mark. The Registrar asserted that the mere fact that the letter S was presented in a stylized way, whereas the rest of the word SUPERFUND consisted of plain block letters, would not make the mark distinctive as a whole. Rather, the Registrar was of the view that an average consumer would perceive the mark in its entirety, and would not single out the representation of the letter S and attach significance to the whole mark. The Registrar therefore concluded that the mark, by itself, would not serve to identify the services as originating from this particular undertaking unless the public were educated beforehand that it was to be used for that purpose. In an effort to prove that its mark had acquired distinctiveness, the applicant submitted printouts of Google and Yahoo searches and asserted that a search of the word “superfund” would link to the applicant’s website and that the mark had been used prominently on the website since 2002. In addition, the applicant argued that the mark had acquired distinctiveness as a result of the use made of it. However, the Registrar responded that no evidence of use in the form of statutory declaration or affidavit had ever been filed by the applicant and that the printouts alone were not sufficient to establish acquired distinctiveness. Therefore, the Registrar refused the registration of the applicant’s mark under Sections 11(1)(b) and 42(4)(b) of the Ordinance.539 ICELAND I.B.2. Merely Descriptive Terms Registration of the word mark SERTRAL, for medicine and various pharmaceutical-related goods and substances in International Class 5, in the name of the Icelandic company Actavis Group hf., was published in the official gazette for opposition purposes.540 Pfizer Inc., a U.S. corporation, filed an 539. Registrar of the Trade Marks, decision of June 1, 2006, available at www.ipd.gov.hk/eng/intellectual_property/trademarks/trademarks_decisions/decision/DEC3 00270909R.pdf. 540. Registration No. 358/2005, granted May 6, 2005, published in Official Gazette No. 5, May 15, 2005. Vol. 97 TMR 527 opposition on the ground that the mark lacked distinctiveness with regard to the goods in question. The opponent argued that the word “sertralinum” (referred to as “sertralin” in English and Icelandic) was an INN (International Nonproprietary Names) term for medicine and pharmaceutical goods containing the antidepressant drug sertralin. As the INN terms, which are issued by the World Health Organization, stand for specified types of pharmaceuticals, no one can acquire trademark rights for these names. Pfizer pointed out that the goods list for the SERTRAL mark extended to pharmaceuticals containing sertralinum and claimed that this mark was descriptive for pharmaceutical goods. The registrant argued that the Governmental Pharmaceutical Institution already had given its consent for use of the name SERTRAL for the company’s medicine and that the Registrar had previously registered several trademarks similar to the INN terms for the respective pharmaceuticals. Actavis argued, further, that the Registrar at first had denied registration but then, after the filing of explanations and at the company’s request, had allowed the mark to proceed to registration. The registrant also supported its claim for registration on its use of the mark in the Icelandic market for four years. After close investigation of the practice in nearby countries, where the mark AMPILIN had been considered too similar to the INN term AMPICILIN and, similarly, the mark RANITISTAD to the INN term RANITIDINE, the Registrar ruled that Actavis’s registration be invalidated. The Registrar noted that use did not support extended rights as to determination of descriptiveness with respect to the INN terms.541 This case is significant because it will presumably result in much greater restriction of the possibilities for registration of trademarks similar to the INN terms for pharmaceuticals. I.B.20. Color United Parcel Service of America, Inc. (UPS) appealed the Registrar’s decision refusing its application for registration of the plain color brown for “transportation, packing, and storing of goods, services relating to transportation and delivery of letters, documents, messages, printed matter, and other goods and property by various ways” in International Class 39. Before the Registrar, UPS claimed registration of the color on the basis of a color sample; the company argued that the mark had acquired distinctiveness through longstanding use for the services 541. Pfizer Inc. v. Actavis Group hf., Docket No. 3/2006 (Registrar, February 10, 2006), available at www.els.is/focal/webguard.nsf/key2/3urdskurdur/$File/SERTRAL%203-2006. pdf (in Icelandic). 528 Vol. 97 TMR in question and, thus, had become registrable. UPS noted, further, that it was the only party to have used this color for the services in question; in support of this argument, it presented a Gallup survey on the recognition of the company, its services, and its UPS trademark by businesses in Iceland, and referred to its registration of the color brown as a Community trade mark by OHIM (Office for Harmonization in the Internal Market). Before the Appeal Board, UPS made a subsidiary claim for registration of the plain color brown, limited to the international color code Pantone 4625U. While acknowledging the possibility that plain color might be considered sufficiently distinctive, based on an international color code and not on a color sample, the Appeal Board nonetheless rejected registration with reference to the criteria enumerated by the European Court of Justice in Libertel.542 The Board considered the services in question too general for color to qualify as a trademark. As to the claim for registration on basis of use, the Board argued that the applicant had failed to demonstrate by the Gallup survey that the color brown per se, rather than in conjunction with the trademark UPS, had acquired distinctiveness through use among the public. Furthermore, the Board found, the Gallup survey dated from mid-2002, whereas the application was filed in November 2000, and the evaluation of registrability would have to be determined based on the circumstances at that time. The Appeal Board confirmed the Registrar’s decision.543 This decision is significant, as it is the first decision in Iceland on an application for registration of color. The Appeal Board indicated that an application for registration of a color by reference to the international color code might be accepted in Iceland for a very narrowly defined list of goods or services for which the color was not descriptive, provided such goods or services were aimed at a narrow group of customers. Strong and precise evidence would have to be presented to support the granting of registration based on use. III.A.25. Geographical Indications Polyflame International B.V., a company based in the Netherlands, appealed the Registrar’s decision invalidating its International Registration of the word and design mark US BASIC (see below),544 for goods in International Classes 18 (leather and 542. Libertel Group BV v. Benelux Merkenbureau, Case C-104/01, [2003] E.C.R. 1-3793 (ECJ, May 6, 2003). 543. United Parcel Service of America, Inc. v. Registrar, Docket No. 16/2004 (Appeal Board, June 23, 2006), available at www.els.is/focal/webguard.nsf/key2/appeal162004.html/ $File/2004-16%20UPS%20litur%20%20URSKURDUR.pdf (in Icelandic). 544. International Registration No. 630158, granted December 20, 1994. Vol. 97 TMR 529 imitation leather; suitcases, trunks, bags, and traveling bags; umbrellas, parasols, and walking sticks) and 25 (clothing, shoes, and headgear), on grounds of geographically deceptive misdescriptiveness. The Registrar held that the consumer would assume that goods sold under this mark would derive from the United States of America, known for its industrial power; it was pointed out that the abbreviation US, without periods, was widely used as a reference to the United States, as well as being the international country code for that nation. In addition, the Registrar found, the stars and stripes in the mark were the same as those that characterized the flag of the United States of America. The Appeal Board confirmed the Registrar’s decision.545 INDONESIA III.A.1. Famous Marks The Italian company Benetton Group S.p.A. filed a trademark infringement complaint against the Indonesian firm N.V. Sumatra Tobacco Co., which had obtained a trademark registration for BENETTON for “cigarettes, cigars, tobacco, cigarette pipes, [and] matches” in International Class 34.546 The plaintiff raised strong objections to the defendant’s registration and use of the mark, which was similar in its entirety to the plaintiff’s well-known mark BENETTON. Benetton argued that it had registered approximately 40 trademarks in different classes at the Indonesian Trademark Office (TMO) and was also granted trademark protection in many countries around the world. Its registration for BENETTON in Italy dated from 1973.547 Moreover, BENETTON was not only the plaintiff’s trademark but also its company name, which Benetton had continuously and actively promoted in many countries. As a result of these intensive marketing efforts, the plaintiff’s 545. Polyflame International B.V. v. Registrar, Docket No. 18/2004 (Appeal Board, July 15, 2005), available at www.els.is/focal/webguard.nsf/key2/appeal18-2004.html/$File/200418%20US%20BASIC.pdf (in Icelandic). 546. Registration No. 308427, a renewal of Registration No. 181825 of April 19, 1984. 547. Registration No. 2316, March 21, 1973. 530 Vol. 97 TMR reputation and the BENETTON mark had earned the special status of international recognition. The plaintiff asserted that, based on the Indonesian Trademark Law548 and the WIPO criteria on well-known marks, .549 it could not be denied that BENETTON was, in fact, a wellknown mark, and therefore it could not be possessed or claimed by any party other than the Benetton itself. Benetton contended that Sumatra Tobacco Co. had registered the same BENETTON mark in International Class 34 in bad faith, for the purpose of cashing in on the fame of Benetton’s well-known mark. More significantly, it was illegal to provide trademark protection based on bad-faith registration. The defendant countered that its BENETTON mark had been registered since 1984, and that therefore the plaintiff had known about the existence of the defendant’s mark for 19 years before bringing this action. Sumatra Tobacco argued that under the former Trademark Law, Benetton had the right to file a cancellation action;550 however, the company had failed to act, and consequently it had waived its right to do so. Therefore, the defendant argued, the plaintiff’s claim was invalid because under the Trademark Law a cancellation claim can be filed only within five years after the date of registration.551 Sumatra Tobacco argued that although the Trademark Law provides that a cancellation claim may be filed without any time limit if the mark in question is contrary to religion, morality, ethics, or public order,552 that exception could not be invoked in the plaintiff’s case. It argued, further, that a cancellation action against a trademark registered at the Trademark Office could be filed only if the registered mark had basic similarities with or was the same in its entirety as an existing registered mark covering the same goods or services.553 In addition, there was no government regulation that made it possible to file a cancellation claim based on a well-known mark for different kinds of goods. The defendant cited Article 16 of the TRIPS Agreement, which provides that the protection of well-known trademarks has been broadened to cover the registration of a trademark for “goods or services which are not similar to those in respect of which a 548. Law No. 15 of 2001, art. 6, para. 1.b. 549. Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO), at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO September 20 to 29, 1999. 550. Law No. 19 of 1992, art. 86, para. 2, juncto art. 85. 551. Law No. 15 of 2001, art. 69, para. 1. 552. Id. para. 2. 553. Id. art. 68, para. 1, juncto art. 6, para. 1.a. Vol. 97 TMR 531 trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.”554 It argued that as the plaintiff did not rely on that statute in its complaint, there was no evidence of bad faith in its own registration. In deciding the case, the Commercial Court considered the following facts: 1. The defendant’s exception was filed with no legal basis. The defendant said in its exception that the claim has expired, as it was filed 19 years after the registration date of the defendant’s BENETTON trademark. The Commercial Court is of the opinion that the claim can be filed at any time without time limitation, if it is related to well-known mark and bad faith issues. The Trademark Law stipulates that cancellation claim of a registered trademark can only be filed within five years since the registration date of the trademark concerned. Moreover, the plaintiff was able to prove that the BENETTON trademark was registered earlier, first in Italy in 1973 and subsequently in other countries. 2. Contrary to the defendant’s allegations, it was, in fact, permissible for the plaintiff to file a cancellation action more than five years after the trademark was registered. The Court determined that the defendant’s mark was filed in bad faith and contrary to public policy, valid legal grounds to ignore the time bar. 3. As to the defendant’s having filed the BENETTON trademark to cover goods that were the same as those covered by the plaintiff’s BENETTON mark, the Court held that this showed that the defendant had (a) filed the BENNETON mark based on the fame of the plaintiff’s BENETTON, (b) tried to obtain economic benefit without incurring promotional expenses, and (c) filed the mark in bad faith. 4. The plaintiff showed that the BENETTON trademark had been registered in 134 countries since 1983 for various kinds of goods, including goods in Class 34. Accordingly, the Commercial Court: 1. Accepted in full the plaintiff’s claims; 2. Declared BENETTON a well-known mark; 554. Agreement on Trade-Related Aspects of Intellectual Property Rights, art. 16, para. 3. 532 Vol. 97 TMR 3. Determined that the BENETTON mark in the name of the defendant had basic similarities with the well-known mark BENETTON owned by the plaintiff; 4. Ordered the cancellation of the registered BENETTON mark owned by the defendant from the general register of the Directorate General of IPR, with all its legal consequences; 5. Ordered the bailiff of the Commercial Court of Central Jakarta to send a copy of this judgment to the Directorate General of IPR, Department of Law and Human Rights, which would be legally bound by it; and 6. Ordered the defendant to pay the costs of this case.555 The defendant filed an appeal to the Supreme Court, which issued a judgment in favor of the plaintiff. The Supreme Court ruled that the Commercial Court’s decision was final and binding.556 This is a very important judgment, in that it covered (1) the cancellation of a well-known mark that was registered in the name of a local company, (2) a mark that had been registered for nearly 19 years at the TMO, (3) a registration that covered different kinds of goods; and (4) an action that was filed more than five years after the mark was registered at the TMO. It also addressed several key issues: (1) the protection of a registered trademark that had been renewed; (2) the fact that the renewal mark was that of a wellknown mark registered by a local company; (3) the fact that the cancelled mark was for different kinds of goods; (4) the element of bad faith; and (5) an action for cancellation of a trademark that was filed five years after the trademarks were registered. III.G.1. Changes to Mark In Cheng Sen Djiang Gunawan Chandra alias Gunawan Chandra v. PT Astra Honda Motor, the plaintiff, an Indonesian individual, filed a trademark application for KRISMA 125 EFC, to cover “apparatus for locomotion by land, air or water and all their parts and accessories, namely, bicycles, motorcycles, and any twowheeled electric or motor vehicles fuelled by gasoline, petroleum, or diesel, pedicab, bemo (small motorized vehicles used for public transportation), and any three-wheeled electric or motor vehicles fuelled by gasoline, petroleum or diesel,” in International Class 12.557 The defendant, a famous Indonesian motorcycle 555. Case No. 68/Merek/2003/PN.Niaga/Jkt.Pst (Commercial Court, Central Jakarta District Court, November 20, 2003). 556. Case No. 02/K/N/HaKI/2004 (Supreme Court, June 7, 2004). 557. Agenda No. D00.2004.00019, filed March 26, 2004. Vol. 97 TMR 533 manufacturer, owns registrations for the trademark KARISMA558 and its variants, such as KARISMA 125559 and KARISMA 125D.560 The plaintiff claimed that the word KRISMA in the applied-for mark was not similar, either in principle or in its entirety, to the defendant’s KARISMA mark, because the two marks had different meanings—that is, KRISMA was the name of his son, and has no meaning, while KARISMA meant special characteristic. The plaintiff brought an action to have the defendant’s trademarks KARISMA, KARISMA 125, and KARISMA invalidated on the ground that these marks had not been used in exactly the same form as they were registered. Specifically, the defendant had registered its KARISMA trademark in block capital letters and in black and white, while in its actual use on motorcycles in the market the KARISMA trademark appeared in stylized letters and in combination with colors. The defendant objected to the plaintiff’s claim. It argued that if the plaintiff’s trademark KRISMA was not similar to the defendant’s trademark KARISMA, the plaintiff should have had no interest in filing an invalidation action based on non-use against the defendant’s KARISMA trademark registrations. In addition, the defendant was of the opinion that the plaintiff’s mark was graphically and phonetically similar to the defendant’s KARISMA marks, even though they have different meanings. The defendant argued, moreover, that even though the marks as used were different from the registered marks, it did not alter the distinctive element of the marks, namely, the word KARISMA. Furthermore, the defendant had applied for registrations of these variations of the KARISMA trademark in stylized form in November 2004. The Commercial Court found for the plaintiff. It ruled that (1) the use of the defendant’s trademarks KARISMA, KARISMA 125, and KARISMA 125D in the market did not conform to the marks as registered by the defendant; and (2) the Trademark Office should cancel the defendant’s trademark registrations for KARISMA, KARISMA 125, and KARISMA 125D.561 On appeal, the Supreme Court reversed the Commercial Court’s judgment, based on the following grounds: 1. The judex facti had wrongly rendered the decision in favor of the plaintiff. 2. The fact that the defendant’s registered trademark KARISMA was used with altered stylization and colors 558. Registration No. 520150. 559. Registration No. 520497. 560. Registration No. 520496. 561. Case No. 06/Merek/2005/PN.Niaga/Jkt.Pst (Commercial Court, Central Jakarta District Court, June 20, 2005). 534 Vol. 97 TMR did not sufficiently change the mark, because the pronunciation and the impression given did not change. 3. The trademarks KARISMA and KRISMA had basic similarities in their entirety and covered the same kinds of goods. 4. The defendant’s trademark KARISMA was a well-known mark and therefore was protected under the Trademark Law562 against the use of a mark, such as the plaintiff’s mark KRISMA, to take advantage of the fame of a wellknown mark. The Supreme Court ruled that a registered trademark may be used differently as long as the change of the mark in use does not change the basic characteristics of the mark.563 III.F.5. Cancellation The plaintiffs in this case, Hawley & Hazel (BVI) Co. Ltd, a British Virgin Islands company (Plaintiff 1), and Hawley & Hazel Chemical Co. (HK) Ltd., a Hong Kong company and a subsidiary of Plaintiff 1 (Plaintiff 2), are the legal owners of the well-known trademarks DARKIE, DARLIE, and Hat Man Design, and also the combinations of those words and design (see below), which are registered in many countries, including Indonesia. In Indonesia, the plaintiffs held the following registrations: • DARKIE & Hat Man Design and other trademark registrations564 • Hat Man Design and other trademark registrations565 • DARLIE and other trademark registrations566 The first use of the plaintiffs’ trademark DARKIE & Hat Man Design occurred in Mainland China in the 1930s. Since then, it has been used and promoted worldwide, including in Indonesia. The defendant, Boediono Tjiptohardjo, an Indonesian citizen, registered the trademark DAR’KIE PEPPERMINTS & Hat Man Design567 (see below) at the Trademark Office after the plaintiffs’ marks already had been registered. Therefore, the plaintiffs demanded the cancellation of the registration under Article 68, paragraph 1 of the Trademark Law. 562. Article 6 para 1 (b) and para 2, Indonesian Trademark Law No. 15 of 2001. 563. Case No. 031 K/N/HaKI/2005 (Supreme Court, December 19, 2005). 564. Registration No. 410650, renewal under Registration No. 233627. 565. Registration No. 261988. 566. Registration No. 259760. 567. Registration No. 432153. Vol. 97 TMR 535 Plaintiffs’ Trademarks Defendant’s Trademark DARKIE & Hat Man Design DAR’KIE PEPPERMINTS & Hat Man Design Hat Man Design DARLIE In reconvention, the defendant raised arguments against the DARKIE trademarks, which had been registered by both Plaintiff 1568 and Plaintiff 2.569 He contended that they had not been used for three consecutive years in the trade of goods since 1997. Therefore, the defendant demanded the cancellation of the plaintiffs’ trademarks. As the marks had not been used, the defendant believed that he was the sole owner of the conflicting trademarks. The Commercial Court determined that (1) there were no similarities between the plaintiffs’ and the defendant’s trademarks, either essentially or in their entirety; and (2) the DARKIE trademark, as registered both in the name of Plaintiff 1 and in the name of Plaintiff 2, had not been used in the trade of goods for three consecutive years since 1997. Therefore, the Court held that (1) the plaintiffs were the legal owners of the well-known marks using DARLIE & Hat Man Design and (2) the plaintiffs’ DARKIE trademarks had not been used for three consecutive years in the trade of goods. Accordingly, the Court ruled that these trademarks should be cancelled and deleted from the General Register of Marks. The Court in the first instance ordered that the 568. Registration No. 410650. 569. Registration No. 365859. 536 Vol. 97 TMR Trademark Office delete the DARKIE trademark and that the plaintiffs pay the Court fees.570 On appeal, the Supreme Court disagreed with the lower court’s findings. It determined that (1) the defendant’s registration was made in bad faith, (2) the defendant’s trademark DAR’KIE PEPPERMINTS & Hat Man Design had similarities in its essential part or in its entirety with the plaintiffs’ previously registered trademarks, and (3) the defendant’s use of the mark caused confusion among consumers. Accordingly, the Court overturned the Commercial Court’s decision. It ruled that (1) the plaintiffs were the legal owners of well-known marks using DARKIE, DARLIE, and Hat Man Design; (2) the defendant’s mark DAR’KIE PEPPERMINTS & Hat Man Design trademark had similarities in its essential part or in its entirety with the plaintiffs’ marks; (3) the defendant’s registration was obtained in bad faith; (4) the defendant’s trademark was to be deleted from the General Register of Marks at the Trademark Office; and (5) the defendant was obligated to pay compensatory damages.571 It is important to note that the Supreme Court’s holding reflects its respect for the existence of well-known marks and the significance of its use of Article 16, paragraph 3 of the TRIPS Agreement in conjunction with Article 6bis of the Paris Convention as the legal basis for its decision overturning the judgment of the Commercial Court, which, it found, had wrongly applied the law. Significantly, the protection afforded well-known marks by Article 16, paragraph 3 of the TRIPS Agreement also applies, mutatis mutandis, to well-known marks for different kinds of goods. Further, as a signatory of the TRIPS Agreement, Indonesia recognizes that the absence of its own governmental regulations addressing the protection of well-known marks that cover different kinds of goods has been remedied by the implementation of TRIPS Article 16, paragraph 3, which has filled that legal gap. Consequently, the use of Article 16, paragraph 3 in conjunction with Article 6bis of the Paris Convention offers the owner of a wellknown mark that seeks cancellation of the same mark of a different owner for different kinds of goods or services—provided the well-known mark concerned has been registered in the country where the protection is sought—the legal basis to shield its mark from infringers. In this case, the DARKIE and DARLIE trademarks, with or without the Hat Man Design, are legally registered in Indonesia. 570. Case No. 50/Pembatalan Merek/2004/PN.Niaga/Jkt.Pst (Commercial Court, Central Jakarta District Court, December 29, 2004). 571. Case No. 04 K/N/HaKi/2005 (Supreme Court, March 31, 2005). Vol. 97 TMR 537 IRAN III.A.3. Prior User Cott Beverages Inc., a Canadian corporation, became aware of the fact that an Iranian firm, Eram Company, had registered Cott’s trademark RC for the identical goods (nonalcoholic beverages) in International Class 32. Since Cott had no prior trademark registration in Iran, it filed an application for registration of the RC mark in Classes 32, 35, and 39 before the Iranian Intellectual Property Office (IIPO). The IIPO rejected the application on the ground that the mark applied for was similar to the Iranian company’s registered trademark RC. Cott filed a petition before the First Instance Public Court of Tehran requesting cancellation of Eram’s trademark registration. It claimed prior registration of its trademark RC in many other countries and continued use of the mark outside Iran. The defendant failed to provide a valid response to the plaintiff’s claims. Accordingly, the court issued a judgment in favor of Cott Beverages Inc. The court held that from the documents provided it was clear that Cott’s mark had priority over Eram’s mark and that therefore the Iranian company’s trademark registration should be cancelled.572 The case was referred to the Appeal Court of Tehran Province, which affirmed the verdict of the court of first instance.573 IRELAND I.B.8.a. Similarity of Marks Société des Produits Nestlé S.A. (Nestlé) opposed an application by Newman Chocolates Limited for registration of the word mark MILKBEARS in International Class 30 in respect of “candy, chocolate, chocolate candies and pastries,” on the basis of its earlier-registered word mark NESTLE MILKY BAR. Following an oral hearing on April 24, 2006, the Controller of Patents, Designs and Trade Marks dismissed the opposition.574 Nestlé claimed to have a very substantial reputation in Ireland under the NESTLE MILKY BAR mark. It sought refusal of the trade mark application for MILKBEARS under the following sections of the Trade Marks Act, 1996: 572. Case No. 291/3/83, First Instance Public Court of Tehran, Court Branch No. 3, Verdict No. 599, November 17, 2004. 573. Appeal Court of Tehran Province, Verdict No. 1854, February 25, 2006. 574. Controller of Patents, Designs & Trade Marks, June 9, 2006 (unreported). 538 Vol. 97 TMR Section 10(2)(b)—Likelihood of confusion on the part of the public • Section 10(3)—Use of mark would take unfair advantage of, or be detrimental to, the distinctive character or reputation of opponent’s mark • Section 10(4)(a)—Use of mark liable to be prevented by virtue of law protecting unregistered trade mark • Section 8(1)(b)—Mark devoid of any distinctive character • Section 8(3)(b)—Mark of such a nature as to deceive • Section 8(4)(a)—Use of mark prohibited by enactment or rule of law • Section 8(4)(b)—Application for registration made in bad faith • Sections 37(2) and 42(3)—Applicant does not use or intend to use mark in relation to goods covered by application The Hearing Officer found that the MILKBEARS mark was a perfectly distinctive mark that evoked a concept of bears composed of milk, or perhaps of bears that like to drink milk. It was deemed an entirely fanciful concept and a distinctive trade mark. The Controller held that the word MILKBEARS was not a descriptive term, as there was no such thing as a milk bear. In comparing the marks at issue, the Controller found that the distinctive and dominant element of the opponent’s prior-registered trade mark was the word NESTLE. The relevant consumer was deemed to be an average child of reading age who was reasonably observant and circumspect; the Controller took the view that the appearances of the two marks and the messages conveyed by them were so different as to render it highly unlikely that a child of average intelligence, exercising even minimal care, would think that there was any relationship between the respective products. The Controller found that the opponent had not satisfied the onus on it to substantiate a claim that the applicant’s use of its mark took unfair advantage of or was detrimental to the distinctive character or reputation of the opponent’s mark. This case is noteworthy because of observations made by the Controller on the need to file evidence in support of objections raised in opposition. The Hearing Officer observed that, as a matter of general principle, the onus lies on the party bringing an objection to the registration of a trade mark to establish, by evidence or argument, a prima facie case in support of each of its grounds of opposition, and that if it fails to do so in respect of any particular ground, the onus does not pass to the applicant to prove otherwise and the objection on that ground is liable to be summarily dismissed. However, he took the view that certain grounds of opposition are, by their nature, more apt to be • Vol. 97 TMR 539 sustained by argument rather than by evidence, and that it would be wrong to hold that an absence of evidence in support of a given ground of objection must necessarily lead to that ground’s being dismissed. In particular, the Controller may be expected to take judicial note of matters of common knowledge. I.B.11.e. Bad Faith In Zockoll Group Limited v. Controller of Patents, Designs & Trade Marks,575 the Irish High Court overturned a decision of the Controller upholding an opposition by 1-800-Flowers Inc. against applications for the trade marks 800 FLOWERS and 800 FLORISTS.576 Zockoll Group Limited (Zockoll) was in the business of promoting and marketing what is known as alphanumeric phone numbers (i.e., a toll-free numerical prefix followed by buttons on the telephone keypad corresponding to the letters of a generic word). Zockoll had procured the telephone numbers equating to the phone names 800 FLOWERS and 800 FLORIST from Telecom Eireann in 1995. In November 1995, it filed applications to register 800 FLOWERS and 800 FLORIST as trade marks in International Class 31 for “natural flowers, dried flowers, wreaths of natural flowers, flower bulbs; plants.” The business of 1-800-Flowers Inc. (Flowers, Inc.) was described as that of a nationwide florist selling flowers and floral products by telephone interactive and online services and at retail stores throughout the United States and throughout the world. Through its telemarketing systems, customers can place orders to Flowers, Inc. from anywhere in the United States for delivery anywhere in the continental United States simply by dialling 1800-FLOWERS. Flowers, Inc. has no registered trade mark rights in Ireland. The opposition was based on the following grounds: (1) the likelihood of deception or confusion under Section 19 of the Trade Marks Act, 1963; (2) that the applicant was not the proprietor of the mark and did not, at the date of application, have a present and definite intention of using the mark in the State under Section 25 of the Act; and (3) that the mark was not a trade mark within the statutory definition and not intended to be used as a trade mark, as required by Section 2. Following a hearing of the opposition on December 12, 2005, the Controller exercised his discretion under Section 25 of the Act and upheld the opposition against the mark 800 FLOWERS on the basis of bad faith because the registration of the mark would frustrate the legitimate expansion of Flowers, Inc.’s business. The 575. Case 2006 No. 137SP (Ir. H. Ct., October 17, 2006). 576. Controller of Patents, Designs & Trade Marks, February 7, 2006 (unreported). 540 Vol. 97 TMR Controller held that Zockoll knew of the existence of Flowers, Inc. and its intention to expand its business to the United Kingdom; therefore, the Controller concluded, Zockoll could reasonably have assumed that Flowers, Inc. would also seek to expand its business into Ireland. In overturning the decision, the Irish High Court concluded that Flowers, Inc. did not have the relevant interest in the mark in Ireland that would cause a substantial number of people in the relevant market to become confused if Zockoll’s application for registration succeeded. The Court was satisfied that Zockoll had an intention to use the trade mark in connection with the relevant products in the course of trade and that there was no clear evidence that Flowers, Inc. in November 1995 intended to expand its business into Ireland, or that Zockoll should have accepted that such expansion was imminent. The very fact that Zockoll had secured for itself the relevant toll-free telephone numbers precluded any reasonable conclusion that Flowers, Inc. could usefully expand its business into this jurisdiction, let alone was imminently about to do so. This decision is noteworthy in relation to allegations of bad faith, as the High Court held that “it is not sufficient or fair to an applicant to characterise its behaviour as bad faith in the course of submissions before the Controller without giving formal, advance notice and particulars in good time to enable the charge to defended.” The Court went on to say that “an allegation suggesting fraud or bad faith is one which should only be dealt with if fully and formally pleaded and particularised and notified to the applicant in advance.” This appears to suggest that a simple claim of bad faith in an opposition will not suffice and that the claim must be fully pleaded in the supporting evidence. I.B.13. First to Apply Versus First to Use The Irish High Court, in Jaguar Cars Limited v. Controller of Patents, Designs & Trade Marks,577 upheld a decision of the Controller of Patents, Designs and Trade Marks578 dismissing an opposition by Jaguar Cars Limited (Jaguar Cars) against the registration of the trade mark JAGUAR in International Class 14 by the Swiss company Manufacture Des Montres Jaguar S.A. (Des Montres). Des Montres is a manufacturer of watches and had sought registration of the trade mark JAGUAR in respect of such goods. Jaguar Cars is involved in the manufacture and sale of cars under the JAGUAR trade mark and JAGUAR device. Three grounds of appeal were relied on: 577. Case 2004 No. 342 SP (Ir. H. Ct., March 24, 2006). 578. Controller of Patents, Designs & Trade Marks, April 20, 2004 (unreported). See 95 TMR 466 (2005). Vol. 97 TMR 541 1. 2. That Des Montres was not the proprietor of the mark; That registration should be refused under Section 19 of the Trade Marks Act, 1963 on the basis of a likelihood of confusion; and/or 3. In the event that grounds 1 and 2 fail, that the Court’s discretion to refuse registration under Section 25(2) of the Act should be exercised in favour of allowing the objection on the basis of a contended lack of bona fides on the part of Des Montres. On the issue of ownership, it was not contended that Des Montres used the mark in Ireland prior to the date of its application, December 4, 1991. The first issue, therefore, was whether Jaguar Cars had used the mark on the relevant goods in Ireland prior to 1991. If the mark was, in fact, used by Jaguar Cars in Ireland prior to the date of Des Montres’ application, then Jaguar Cars must be the proprietor of the mark. Jaguar Cars’ evidence of use of the mark JAGUAR on watches in Ireland consisted of evidence that the mark appeared on an analog clock sold as part of the Jaguar & XJS car in Ireland since 1993, one invoice for the sale of one JAGUAR watch, and brochures. While there is no de minimis rule in relation to use of a trade mark, the Court held that the limited use of the trade mark JAGUAR in respect of watches by Jaguar Cars was not sufficient to establish ownership of the mark in Jaguar Cars. On the likelihood of confusion as a result of brand extension, the Court accepted that the proprietors of major brand names, particularly those associated with prestigious or luxury goods, seek to exploit the brand name concerned, not just for the goods in relation to which the brand name first became established, but also for other, unconnected goods. However, taking into account the fact that although the word JAGUAR was an ordinary English word and had become a major brand name in respect of motorcars, it did not automatically follow that consumers would necessarily believe that every product bearing the word JAGUAR was a product of Jaguar Cars. The Court also declined to exercise its discretion under Section 25(2) of the Act, as requested by Jaguar Cars, on the ground that there was not a sufficient level of inappropriate behaviour on the part of Des Montres such as would justify the exercise of discretion against the registration of a mark that was otherwise registerable. The decision in this case might well have been different if the disputed trade mark had not been an English dictionary word. III.A.10. Non-use of Trademark The Ladies Professional Golf Association (LPGA) was the registered proprietor of the trade mark LPGA & Device (see below) 542 Vol. 97 TMR in International Class 28 in respect of golf clubs, golf bags, and golf balls. The Professional Golfers Association Limited (PGA) applied for revocation of the mark on grounds of non-use. In reply, the registered proprietor asserted that the mark was in fact used within the relevant period; it submitted three statutory declarations as evidence of such use. The application for revocation became the subject of a hearing, held on July 3, 2006.579 The publication of the registration occurred on November 30, 1994. The Hearing Officer held that the essential question was whether there was genuine use of the mark in the State between that date and the date of the PGA’s application for revocation, namely November 28, 2003. In its evidence, the registered proprietor claimed that the mark LPGA & Device was licensed to Women’s Golf Unlimited Inc., which in turn had sublicensed the mark for golf clubs to Voco AG. The LPGA claimed that Voco AG, through its subsidiary Voco (UK) Limited, supplied two sets of golf clubs to a retail outlet in Clonmel, County Tipperary, during the relevant period. The only evidence submitted was a single invoice for £264. The Hearing Officer stated that the fact that the LPGA had licensed the use of the mark to Women’s Golf Unlimited Inc. and the fact that the latter had sublicensed the use of the mark in the United Kingdom and Ireland to Voco AG did not, of themselves, constitute evidence of use of the mark within the State. He acknowledged that licensing and distribution arrangements are a normal part of the exploitation of brand names, but observed that their existence alone does not mean that goods bearing a particular mark have actually been put on the market, nor does the existence of a website that displays the mark constitute evidence of use of the mark in relation to the goods for which it is registered. The Hearing Officer held that the sale of two sets of golf clubs bearing the mark could not be regarded as “real” commercial exploitation of the mark, in the sense that it could not have had the effect of creating for the registered proprietor a share in the market for the goods for which the mark was protected. In order to create and maintain a share in the very substantial market that exists for golf clubs and related goods, the proprietor or its agents would have had to supply a sufficient quantity of marked goods 579. Controller of Patents, Designs & Trade Marks, August 11, 2006 (unreported). Vol. 97 TMR 543 such that there was a real possibility that the average consumer of those goods might be exposed to them and might have the opportunity to acquire them. Having regard to the size of the relevant market, two sets of clubs represented such a limited number of people that there was never any real possibility of goods bearing the mark securing or maintaining a share in that market. For that reason, the Hearing Officer held that use of the mark shown by the registered proprietor was not real commercial use and therefore was not genuine use within the meaning of Section 51 of the Trade Marks Act, 1963. Accordingly, the Hearing Officer allowed the PGA’s application for revocation. At the hearing, both counsel made submissions on the question of whether partial revocation might be warranted if the mark were found to have been used on some of the goods for which it was registered, that is, golf clubs. The Hearing Officer took the opportunity to express an opinion on the issue even though it did not affect the outcome of the revocation action. He opined that there was no requirement that an applicant for revocation specifically request revocation in respect of each and every one of the goods or services for which the mark was registered or risk seeing the application fail if the proprietor should prove that the mark was used in relation to only one of those goods or services. He went on to state that the onus is on the registered proprietor to prove that it has used the registered trade mark in relation to the goods or services for which it is registered, and if the proprietor fails to do so in respect of any of the relevant goods or services, the registration must be revoked to the extent that it covers such goods or services. At the option of the applicant, an application for revocation may be specifically limited to certain of the goods or services covered by a registration; if, however, it is not so limited, it must be understood as relating to all of the relevant goods or services and the possibility of either full or partial revocation is immediately opened up. Accordingly, even if the Hearing Officer had accepted the LPGA’s evidence as showing genuine use of the trade mark in relation to golf clubs, he would have revoked the registration to the extent that it covered golf bags and golf balls, in respect of which goods no evidence of use was filed. ISRAEL I.B.7.b. Three-Dimensional Marks Ein Gedi Cosmetics Inc. (Ein Gedi), an Israeli company that manufactures and distributes souvenirs, cosmetics, perfumes, and artifacts, mainly for use in tourism, applied to register three threedimensional marks. The first application was for an image of packaging, for “perfumes, cosmetic preparations and other 544 Vol. 97 TMR products” in International Class 3;580 the second, for an image of a candle, for “ornamental candles with or without added scent” in Class 4;581 and the third, for an image of packaging, for “gifts, souvenirs and ornaments” in Class 16.582 The Trade Marks Office rejected all three applications on the ground that the marks were nondistinctive, according to Article 8(a) of the Trade Marks Ordinance (1972).583 In addition, the Office held that the marks could not be registered as trademarks because they were descriptive of the goods themselves and, therefore, did not conform to the definition of a trademark, as set forth in Article 1 of the Ordinance;584 they should instead be registered as designs. In an appeal to the Registrar of Trade Marks, Ein Gedi argued that its applications were requests not to register the goods themselves but to register marks that were identifiable with the goods; therefore, the applied-for marks did not contravene Article 8(a). Ein Gedi also argued that the applications should be examined on the same principles that are applied to any trademark application. The company requested that the Registrar reexamine the trademark applications. In considering the appeal, the Registrar made the following findings: 1. Trademarks that describe products can be distinctive.585 2. The main method for determining whether a mark is distinctive is to measure the level of distinctiveness among average consumers. This method applies to threedimensional as well as two-dimensional marks. 3. As a rule, trademarks that describe the goods themselves should be registered as designs. 4. When a three-dimensional mark points directly to the origin of the covered goods and consumers see it as a trademark, it can be registered. On reexamining the registration applications, the Registrar of Trade Marks concluded that the applied-for marks lacked inherent distinctiveness and that consumers would not perceive them as 580. Application No. 169447, filed January 6, 2004. 581. Application No. 169448, filed January 6, 2004. 582. Application No. 169449, filed January 6, 2004. 583. Article 8(a) provides that a trademark will be applicable for registration only if it can help to distinguish between the goods of the trademark owner and those of others. 584. Article 1 defines trademark as a mark that is used for, or intended to be used for, the goods that one produces or sells. 585. The Registrar gave as an example the figurine of a jaguar on cars produced by Jaguar, the automobile manufacturer. Vol. 97 TMR 545 trademarks. Accordingly, the Registrar rejected Ein Gedi’s appeal.586 I.B.8.a. Similarity of Marks E! Entertainment Television Inc. (E!), a media company that owns a television channel called E!, filed an application to register the trademark E! ONLINE, for “providing gossip celebrity news, entertainment news, and movie, television, and music information through an on-line database” in Class 41.587 The Trade Mark Office accepted the application. Deutsche Telekom AG, owner of the trademark registration for T-ONLINE, filed an opposition on grounds of similarity of marks under Article 8 of the Trade Marks Ordinance.588 The Deputy Registrar of Trade Marks rejected the opposition, finding that there was no risk of confusion between the marks E! ONLINE and T-ONLINE. Deutsche Telekom appealed the decision. Before the Supreme Court, Deutsche Telekom argued that there was a likelihood of confusion between the marks because they were registered in the same class and were similar both visually and phonetically. Accordingly, it requested that the Court reverse the Deputy Registrar’s decision. The Supreme Court granted the appellant’s request. It raised the following points: 1. The criteria used to examine whether there is likelihood of confusion between marks are: visual, phonetic, type of goods, type of clients, marketing channels, and other circumstances. 2. A trademark should be examined in its entirety and not by its parts. After reexamining the case, the Supreme Court concluded that there was no likelihood of confusion between the marks E! ONLINE and T-ONLINE, because, when one examined these marks in their entirety, there was no similarity between the verbal components E! and T. The verbal component ONLINE was “transparent,” and did not increase the likelihood of confusion.589 586. Request for registration of three-dimensional trademarks, Nos. 169447, 169448, and 169449, Registrar of Trade Marks, March 6, 2006. 587. Application No. 113350, filed July 2, 1997, registration granted January 17, 2005. 588. Opposition to Israeli Trade Mark Registration No. 113350–E! ONLINE. E! Television Inc. v. Deutsche Telekom AG (Deputy Registrar of Trade Marks, January 13, 2005). 589. Deutsche Telekom AG v. E! Entertainment Television Inc., Case No. CA 1677/05 (Supreme Court, June 29, 2006). 546 Vol. 97 TMR I.B.19. Slogans The Coca-Cola Company (Coca-Cola) submitted five different applications for registration of the word mark DO WHAT FEELS GOOD, for “clothing, footwear, headgear” in International Class 25;590 “games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees” in Class 28;591 “all goods included in Class 32” (nonalcoholic drinks);592 “advertising; business management; business administration; office functions” in Class 35;593 and “telecommunications included in Class 38.”594 The Trade Marks Office rejected the applications on the grounds that the slogan lacked distinctiveness, in accordance with Article 8(a) of the Trade Marks Ordinance, and that the mark dealt directly with the type and quality of the goods to be covered and, therefore, was not eligible for registration, in accordance with Article 11(10) of the Ordinance.595 In its appeal to the Registrar of Trade Marks, Coca-Cola argued that the mark at issue was not a slogan, and that in fact one could not conclude, because of the combination of words, that it was a slogan. The company also asserted that the mark did not deal directly with the goods themselves and their quality. CocaCola requested that the Registrar of Trade Marks reexamine the applications. The Registrar found as follows: 1. The criteria for registering of a slogan are based on two accumulative conditions: a. A slogan can be registered as a trademark only if it has acquired secondary meaning. b. A slogan can be registered as a trademark only if it is proven that the slogan establishes a connection between the goods and services for which the registration is requested. 2. A complex mark consisting of a slogan and a main trademark can qualify for registration under the normal rules for registering a trademark. 590. Application No. 171183, filed March 24, 2004. 591. Application No. 171184, filed March 24, 2004. 592. Application No. 171185, filed March 24, 2004. 593. Application No. 171186, filed March 24, 2004. 594. Application No. 171187, filed March 24, 2004. 595. Article 11(10) provides that a mark will not be capable for registration if it consists of numbers, letters, or words that are in common use in the trade to distinguish or describe goods or types of goods or that deal directly with the essence or quality of the goods, unless it has distinctive character as described in Article 8(b) (extent of use) or 9 (limitation to certain specified colors) of the Ordinance. Vol. 97 TMR 547 3. Only when the broad consumer public recognizes a slogan as distinctive can the slogan be registered as a trademark. 4. A slogan will receive legal protection as a trademark only when the combination of words gives it a new meaning that is not descriptive of the goods. Therefore, the Registrar of Trade Marks, after reexamining the applications, concluded that the mark lacked distinctiveness, as it was intended to be part of Coca-Cola’s commercial promotional campaign.596 ITALY III.A.1. Famous Marks In 2004, Benetton Group S.p.A. and Bencom S.r.l. (collectively, the Benetton Group) filed suit against the International Olympic Committee (IOC) before the Court of First Instance of Venice, seeking the nullification of the Italian designation of the IOC’s International Registrations for the trademarks THE OLYMPIC STORE, OLYMPIC GAMES, THE OLYMPICS, OLYMPIC, and OLYMPNET, as well as for the famous five Olympic rings symbol. The plaintiffs also sought a declaratory judgment as to their use of the word “Olympic” on clothing, which use, they asserted, (1) did not constitute an infringement of the above-mentioned International Registrations and (2) did not violate the Nairobi Treaty on the Protection of the Olympic Symbol, adopted on September 26, 1981, and ratified by Italy with Law No. 434 of July 24, 1985. More specifically, the Benetton Group argued, inter alia, that the word “Olympic” could not be legitimately monopolized by the IOC, as it was a term in common use because it was descriptive of the quality and characteristics of products and services. As examples of the breadth of such common use, the plaintiffs referred to entries for the adjective “Olympic” in numerous dictionaries and its use in common expressions such as “Olympic swimming pool,” “Olympic stadium,” “Olympic team,” etc. Therefore, because all the marks consisting of or comprising the word “Olympic” were null, the Benetton Group’s use of that term in many complex word and graphic names constitute trademark but merelyornamental use. In reply, the IOC—along with the Torino 2006 Organizing Committee (TOROC) and the Italian National Olympic Committee (CONI), which subsequently intervened in the proceedings— requested the dismissal of the Benetton Group’s claims and 596. Request for registration of the word mark DO WHAT FEELS GOOD, Nos. 171183, 171184, 171185, 171186, and 171187, Registrar of Trade Marks, March 6, 2006. 548 Vol. 97 TMR asserted not only the validity of its trademark registrations but also their fame as a consequence of their extensive use by the IOC in connection with the modern Olympic games. The Court of First Instance of Venice rendered its decision just before the opening of the 2006 Winter Olympic Games in Torino. The Court considered decisions of the Office for Harmonization in the Internal Market (OHIM) in opposition proceedings brought by the IOC and foreign court decisions relied upon by the IOC. It confirmed that the IOC’s OLYMPIC and OLYMPIC-formative marks were to be considered very well known given their immediate association throughout the world with the modern Olympic games and the lofty ideals they symbolized, including the “Olympic movement” and the “Olympic spirit.”597 Moreover, the IOC’s marks could not be considered void of distinctive character; even in everyday speech, the term “Olympic” did not exist in isolation, but instead was closely linked to the modern Olympic games. Consequently, in light of the fame and high degree of distinctiveness of the defendant’s trademarks, the Court of Venice rejected the plaintiffs’ request for declarations that (1) the IOC’s marks were null and (2) the use of OLYMPIC on the Benetton Group’s articles of clothing did not infringe the IOC’s rights. Instead, the Court held that all variations and modifications of the OLYMPIC marks used on the Benetton Group’s products maintained the “heart” or “ideological nucleus” of the marks. Finally, the Court also rejected the Benetton Group’s argument that its use of OLYMPIC on clothing was purely ornamental, explicitly referring to the European Court of Justice’s (ECJ’s) holding in Adidas-Salomon AG & Adidas Benelux BV v. Fitnessworld Trading Ltd.: The fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to the protection conferred by Article 5(2) of the [EEC Trademarks] Directive598 where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark. By contrast, where, according to a finding of fact by the national court, the relevant section of the public views the sign purely as an embellishment, it necessarily does not establish any link with a registered mark, with the result that one of the conditions of the protection 597. Benetton Group S.p.A. & Bencom S.r.l. v. Comité International Olympique, Court of First Instance of Venice, decision of January 23, 2006, Il Foro Italiano No. 2, February 2006. 598. First Directive 89/104/EEC of the Council, of December 21, 1988, Approximating the Laws of the Member States Relating to Trade Marks. Article 5(2) of the Directive allows EEC Member States to provide a specific protection to trademarks enjoying a reputation with respect to dissimilar goods or services. Vol. 97 TMR 549 conferred by Article 5(2) of the Directive is then not satisfied.599 On this basis, the Court of First Instance of Venice ruled that the Benetton Group’s graphic representations of the OLYMPIC mark, even if they could be perceived by the public as an embellishment, constituted an infringement of the IOC’s registered trademarks. III.A.2.b. Similarity of Marks The Italian apparel and leather goods firm Peruzzi S.p.A. (Peruzzi) filed an action for trademark infringement and unfair competition before the Court of First Instance of Florence against the U.S. company Stefano Peruzzi Inc. (Stefano Peruzzi), its Italian manufacturer Pellemoda di Bruno Morelli (Pellemoda), and the Italian retailer Parrilli Lucia Vita & C. s.n.c. (Parrilli). Peruzzi, the owner of Italian registrations and applications for the trademark PERUZZI, covering goods in International Classes 18 and 25, learned that Parrilli’s store was selling leather clothing articles bearing the trademark STEFANO PERUZZI, which were manufactured by Pellemoda on behalf of Stefano Peruzzi. Peruzzi having settled out of court with Parrilli, the Court rendered its decision against the remaining two defendants. It found that their manufacture and distribution of clothing articles bearing the STEFANO PERUZZI mark infringed Peruzzi’s trademark rights and constituted an act of unfair competition to the detriment of the latter company. In assessing the likelihood of confusion between the parties’ marks, the Court first determined that PERUZZI was to be considered a strong mark, as it bore no conceptual link to the products it distinguished. It further reasoned that, under Italian case law, a strong mark affords protection against all variations and modifications that leave the “heart” of the trademark intact— in other words, that do not affect the “ideological nucleus” of the mark. Because the STEFANO PERUZZI mark was undoubtedly similar to the trademark PERUZZI and, moreover, reproduced the very heart and ideological nucleus of the plaintiff’s mark, and because the parties’ marks were used on identical goods, the Court concluded that a likelihood of confusion unquestionably existed in this case.600 599. Case C-408/01, [2004] E.T.M.R. 10 (ECJ, October 23, 2003), available at http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en&Submit=Submit&alldocs=alldocs& docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=408%2F01&datefs=&datefe= &nomusuel=&domaine=&mots=&resmax=100. 600. Peruzzi S.p.A. v. Pellemoda di Bruno Morelli & Stefano Peruzzi Inc., Court of First Instance of Florence, decision of October 24, 2005 (unpublished). 550 Vol. 97 TMR The Court of First Instance therefore awarded an injunction against the defendants’ manufacture, distribution, and sale of clothing articles and leather goods bearing the trademark STEFANO PERUZZI, and set a penalty of €300 for every violation by the defendants of the injunctive order. The well-known French company Emanuel Ungaro S.A. (Emanuel Ungaro) brought an action for trademark infringement and unfair competition before the Court of First Instance of Modena against the Italian company Ungaro S.r.l. and other firms to restrain their use of the UNGARO ITALY and RAFFAELE UNGARO trademarks and the UNGARO company name. In previous proceedings the defendants had been preliminarily enjoined from using the marks. Mr. Raffaele Ungaro, the sole director of Ungaro S.r.l., had been found liable for trademark infringement in proceedings brought by Emanuel Ungaro for his use of the mark RAFFAELE UNGARO.601 The Court held that the UNGARO ITALY and RAFFAELE UNGARO marks were confusingly similar to Emanuel Ungaro’s UNGARO trademarks. The latter were to be considered strong marks and, thus, entitled to a greater protection against marks that reproduced the “distinguishing nucleus” UNGARO.602 Moreover, the other elements of the defendant’s marks— RAFFAELE and ITALY—were held to be “non-distinguishing,” and, hence, their presence did not exclude a finding of confusing similarity. In addition, the Court ruled that Ungaro S.r.l. failed to prove its assertion that Raffaele Ungaro’s grandfather and father had operated the family’s clothing business in the geographic area under their surname Ungaro, and the trademark UNGARO since the 1930s. In any event, this would have been irrelevant, as such prior use would not have been by the defendants, so they would not own the ensuing commonlaw rights. The Court of Modena ruled that the defendants of the UNGARO ITALY and RAFFAELE UNGARO marks constituted trademark infringement, as well as unfair competition to the detriment of Emanuel Ungaro. The defendants were ordered to (1) immediately cease using the plaintiffs’ marks; (2) eliminate UNGARO from Ungaro S.r.l.’s company name; (3) recall from the marketplace all products bearing the UNGARO ITALY and RAFFAELE UNGARO marks and destroy same; and (4) pay damages. The decision was required to be published. 601. Emanuel Ungaro S.A. v. Raffaele Ungaro, Court of First Instance of Reggio Emilia, decision of January 23, 2004, reported at 95 TMR 473 (2005). 602. Emanuel Ungaro S.A. v. Ungaro S.r.l. et al., Court of First Instance of Modena, Division of Sassuolo, decision of March 1, 2006 (unpublished). Vol. 97 TMR 551 III.A.3. Prior User In 1995, the Italian clothier Canali S.p.A. filed suit for trademark infringement against Centro Moda Canali di Luciano Canali & C. s.n.c. (Centro Moda Canali). Canali S.p.A. claimed to be a leader in the apparel industry. Since commencing operations, Canali S.p.A. had distinguished all its products by the mark CANALI, which it first filed for registration on October 25, 1967. The defendant, Centro Moda Canali, incorporated in 1980. Pursuant to its recent advertising campaign, which was based on posters focusing on the term “Canali,” Centro Moda Canali displayed a signboard outside its store bearing the word “Canali” only. In its shop windows, it displayed the term “Canali” in large red letters above the words “Centro Moda” written in small white letters. Canali S.p.A. claimed that Centro Moda Canali’s use of the term “Canali” in the company/trade name and on the signboard infringed its trademark rights and constituted an act of unfair competition. Centro Moda Canali, in turn, alleged that (1) its founder, Mr. Luciano Canali, had been operating its retail clothing store since October 4, 1967—that is, prior to the filing date of Canali S.p.A.’s first CANALI mark registration; (2) the business was sold to Centro Moda Canali on the date the latter was incorporated; and (3) its trademarks were not confusingly similar to Canali S.p.A.’s marks and business. Canali S.p.A. lost at both the first instance and the appellate levels on the ground that the marks at issue could not be considered confusingly similar. In any case, Centro Moda Canali had the right to use the personal name “Canali” in its company name and as a trademark in light of its prior use. Canali S.p.A. appealed the decisions to the Italian Supreme Court, arguing, inter alia, that (1) the CANALI mark was to be considered a strong mark, as it had no conceptual connection with the products it distinguished; (2) contrary to the holding of the Court of Appeal of Milan, the “heart” of the appellant’s name and mark was “Canali” and not “Centro Moda” or any other elements; and (3) Centro Moda Canali had not limited itself to including the word “Canali” in its company name, but instead had always given more prominence to this word relative to the others and had removed in its advertising and slogans all reference to the other components of the company name. This use, the appellant argued, caused confusion with its marks and business. The other significant argument under appeal was the application of Article 9 of the Italian Trademark Act (now Article 12.1(b) of the Italian Industrial Property Code), which provides that, where a third party had prior use of a mark in a specific geographic location and the mark has become known in such area, 552 Vol. 97 TMR the third party has the right to continue to use the mark within that geographic location, coexisting with the registered trademark. According to the appellant, (1) Centro Moda Canali had not established use of the CANALI mark prior to October 25, 1967 (the filing date of Canali S.p.A.’s first trademark registration); and, in particular, (2) between its alleged date of first use (October 4, 1967) and October 25, 1967 (i.e., 21 days), the respondent had used its company name and the mark CANALI so extensively as to make the mark known to the local public and hence afford the respondent prior use rights. The Supreme Court partially admitted Canali S.p.A.’s appeal, remanding the case to the Court of Appeal of Milan. It ruled that, while correctly recognizing the respondent’s prior use rights with respect to the name “Canali” in the town where the store was located, the Court of Appeal had erroneously held that its use outside of the specific geographic location did not constitute trademark infringement of Canali S.p.A.’s trademark rights, because the “heart” of the respondent’s mark was, contrary to what the Court of Appeal held, CANALI and not CENTRO MODA. Therefore, the lower court had erred in holding that the use of CENTRO MODA CANALI on the advertising posters placed outside the town where its store was located did not infringe Canali S.p.A.’s trademark rights. III.A.17. Descriptive Use In 1996, Ford Italia S.p.A. and Ford Motor Company Ltd. (collectively, Ford) brought an action before the Court of First Instance of Milan against Autosystem Climatronic S.r.l. (Autosystem), a manufacturer of electronic air-conditioning systems, for its unauthorized use of their trademark FORD in its advertising. In fact, the defendant was using both the plaintiffs’ FORD word mark and its well-known device form (the word “Ford” inside a blue oval) in its catalogues and price lists. The Court held that such use, including that of the phrase “Ford by Autosystem” in the defendant’s brochure, misled consumers regarding the relationship between the parties, and thereby took unfair advantage of the FORD marks’ reputation. It therefore concluded that this type of use constituted both trademark infringement and an act of unfair competition.603 Autosystem appealed the decision, alleging that the use of the FORD trademarks in its advertising material was done for the sole purpose of indicating with which vehicles the company’s products 603. Ford Italia S.p.A. & Ford Motor Company Ltd. v. Autosystem Climatronic S.r.l., Court of First Instance of Milan, decision of June 21, 1999 (unpublished). Vol. 97 TMR 553 were compatible. The Court of Appeal of Milan found in favor of Autosystem,604 and Ford appealed before the Supreme Court. In reversing the Court of Appeal’s decision, the Supreme Court held that the appellate court had failed to evaluate the elements necessary for the use of a trademark to be considered descriptive and hence not infringing.605 It pointed out that the Court of Appeal should have taken into consideration the element of “necessity”— that is, whether the use by Autosystem of the FORD marks, including in their figurative form, was necessary for the description of the products or whether the use of the word “Ford” alone could have sufficed. The Supreme Court therefore remanded the case to the Court of Appeal and ordered it to evaluate the use of the FORD marks in the overall graphic and descriptive context in order to determine whether such use did not interfere with the distinctive function of the trademarks and complied with fair trade practices. III.C. Injunctions and Damages The French luxury fashion house Louis Vuitton Malletier S.A. (Louis Vuitton) filed a petition with the Court of First Instance of Milan to obtain an ex parte preliminary injunction and seizure order against Manuzio 6 S.r.l. (Manuzio) for infringement of its famous TOILE MONOGRAM device. Manuzio, the owner of a popular lounge bar in Milan, was using coffee tables covered with a fabric bearing a pattern identical to Louis Vuitton’s device (see below). In addition, Manuzio dressed its bartenders with aprons bearing a look-alike pattern, which displayed an LX instead of the LV and had a black background. This case therefore concerned the use of both an identical copy and a look-alike copy of a famous mark on dissimilar goods. The Court held that Manuzio undoubtedly used the patterns at issue to take unfair advantage of the fame of the TOILE MONOGRAM device in order to “unjustly exploit its connotation of elegance and class” before its customers.606 Manuzio thus infringed Louis Vuitton’s rights granted under Article 20.1(c) of the Italian Code of Industrial Property (CIP).607 The Court found that Louis 604. Court of Appeal of Milan, decision of April 13, 2001 (unpublished). 605. Ford Italia S.p.A. & Ford Motor Company Ltd. v. Autosystem Climatronic S.r.l., Supreme Court, decision of July 16, 2005 (unpublished). 606. Louis Vuitton Malletier S.A. v. Manuzio 6 S.r.l., Court of First Instance of Milan, ex parte order of November 3, 2005, confirmed with order of November 18, 2005 (both unpublished). 607. On March 19, 2005, the recently enacted Code of Industrial Property (Legislative Decree No. 30, February 10, 2005) came into force. CIP Article 20.1(c) (previously Article 1.1(c) of the Italian Trademark Act), which implements Article 5.2 of the EEC Trademarks Directive (Council Directive 89/104/EEC to Approximate the Laws of the Member States Relating to Trade Marks, December 21, 1988), provides that a trademark owner has the right to exclude others from using “a sign identical with or similar to a mark registered for 554 Vol. 97 TMR Vuitton had shown both a likelihood of success on the merits and the requisite of irreparable harm because of the “objective impossibility [of] quantify[ing] the detriment that would be suffered by the [plaintiff’s] mark should the contested use be allowed until the outcome of the action on the merits.” It therefore granted Louis Vuitton an ex parte order for preliminary injunction and seizure against Manuzio and, in confirming its order, also awarded Louis Vuitton the sum of €2,500 in attorneys’ fees. In a case involving the same plaintiff and before the same court, Louis Vuitton sought an ex parte order for preliminary injunction and seizure against Montecristo S.r.l. and C.A. Diffusione S.r.l., which were, respectively, manufacturing and selling swim trunks reproducing the plaintiff’s famous TOILE MONOGRAM pattern (see below). Defendants’ Pattern Original TOILE MONOGRAM dissimilar goods or services, if the registered mark enjoys a reputation in the Country and if use of the sign without due cause permits the taking of unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.” Vol. 97 TMR 555 Despite the fact that the defendants’ pattern used the initials RDD instead of LV, the Court of First Instance of Milan found that such use infringed Louis Vuitton’s rights in its famous mark and constituted an act of unfair competition, as the existence of a likelihood of confusion had to be determined from an overall perspective of the trademarks and not by comparing each single component of the marks. The Court therefore held that, because all the other components of the defendants’ pattern were identical to the ones found in the TOILE MONOGRAM, the RDD initials alone were not sufficient to distinguish the marks from one another. Louis Vuitton was granted an ex parte order for preliminary injunction and seizure against the defendants, as well as the production of the defendants’ accounting books and other documents (such as invoices and shipping documents) for the purpose of obtaining documentary evidence relating to the infringing activity and determining its actual extent.608 The availability of this last remedy in injunctive proceedings has been confirmed with the enactment of the CIP. In Burberry Limited v. Lanificio F.lli Mannelli di Luigi di Mannelli Emilio & Mauro s.n.c. et al., Burberry Limited (Burberry) filed an action against, inter alia, the manufacturer of women’s trousers that slavishly reproduced the famous BURBERRY CHECK device mark (see below). Burberry’s action was based not only on claims of trademark infringement and unfair competition but also on breach of contract, given that in 1998, following another case involving infringement of the BURBERRY CHECK device, Lanificio Mannelli had undertaken not to manufacture, purchase, or sell any fabric bearing such mark. In following both its own and other courts’ prior decisions, the Court of First Instance of Milan held that the BURBERRY CHECK device was to be considered valid and enforceable under both unfair competition law and, in view of its recent registration as a trademark in Italy, Italian trademark law. The Court ruled that Lanificio Mannelli’s manufacture and sale of the fabric infringed Burberry’s trademark rights and constituted an act of unfair competition.609 In addition, in light of the defendant’s undertaking in 1998, Lanificio Mannelli was also liable for contractual breach. The Court granted an order for injunction, recall, and destruction of all goods on the market using the infringing fabric; a penalty for any future violation of the court order; the publication of the decision; and, most importantly, an award of damages in the 608. Louis Vuitton Malletier S.A. v. Montecristo S.r.l. & C.A. Diffusione S.r.l., Court of First Instance of Milan, order of July 12, 2005 (unpublished). 609. Court of First Instance of Milan, decision of January 19, 2006 (unpublished). 556 Vol. 97 TMR amount of €80,000, which in Italy is considered a very substantial award in trademark litigation. This follows a recent trend, with certain specialized intellectual property courts granting larger damage awards. The decision is currently on appeal to the Court of Appeal of Milan. BURBERRY CHECK Lanificio Mannelli Fabric III.K. Counterfeiting Issues In December 2004, the Public Prosecutor of the Court of First Instance of Genoa ordered the seizure of 7,350 counterfeit Louis Vuitton bags imported into Italy by Zheng Ming Xin. The bags reproduced an imitation of the famous TOILE MONOGRAM with an LX symbol instead of the original LV (see below). Upon the defendant’s petition, however, the Court of First Instance of Genoa annulled the Public Prosecutor’s seizure order. It held that the case was one of slavish imitation and not of “deception of the public faith,” a necessary element for the crime of counterfeiting to exist. Therefore, the Court ruled that this was a case for the civil courts, as it fell within the sphere of unfair competition.610 610. Louis Vuitton Malletier S.A. v. Zheng Ming Xin, Court of First Instance of Genoa, decision of February 28, 2005 (unpublished). Vol. 97 TMR Zheng Ming Xin’s Pattern 557 Original TOILE MONOGRAM Multicolor The Public Prosecutor appealed the decision before the Supreme Court, which overturned the lower court’s decision.611 The Supreme Court reasoned that the crime of introducing in the Italian territory and offering for sale counterfeit goods, provided for by Article 474 of the Italian Criminal Code, indeed concerned the protection of the “public faith,” that is, the reliance by consumers on a trademark or distinctive sign that identifies the goods and guarantees their origin. Therefore, a significant difference between two marks would exclude the requirement that purchasers be deceived, and thus would not satisfy the requirement of deception of the public faith. In the case at issue, however, the lower court had determined that the defendant’s pattern was “shamelessly similar” to Louis Vuitton’s TOILE MONOGRAM device and that the bags constituted a slavish imitation of Louis Vuitton’s products. Consequently, it had contradicted itself in then holding that no deception of the public faith could exist. As a matter of fact, the lower court had held that the mere replacement of the letter V with an X was not immediately perceivable; that should have led it to conclude that the strong similarity between the trade dresses would undoubtedly deceive the public. More importantly, the Supreme Court affirmed that the important principle of post-sale confusion also applied to the crime set forth in Article 474. Accordingly, for purposes of establishing the crime of counterfeiting, the confusion created by the copies in the market should be evaluated not only at the moment of purchase, but also with respect to the subsequent use of the goods at issue. 611. Supreme Court, Second Criminal Division, decision of May 11, 2005 (unpublished). 558 Vol. 97 TMR The Supreme Court’s decision is extremely important for the fight against counterfeiting in Italy. In fact, the appealed decision of the Court of First Instance of Genoa was just one of numerous decisions rendered by this court and its local divisions in which non-identical knock-offs and imitations of trademarks—so-called look-alikes—were held not to deceive the public faith and hence not to constitute counterfeits under Italian criminal law. This Supreme Court decision has, finally, directly confirmed the erroneousness of such trend in the Genoa court’s jurisprudence. JAPAN III.A.2.a. Similarity of Goods/Services The plaintiff, Cartier International B.V., is the owner of the registered trademark CARTIER. Cartier manufactures and distributes wristwatches and accessories under the CARTIER brand. The defendant set diamonds in genuine products of the plaintiff (including wristwatches and accessories) and sold them with the notice “after diamond” in its advertisements. Cartier, whose products are manufactured and sold both with and without diamonds, filed a request for an injunction with a claim for damages against the defendant on the ground of trademark infringement. The Tokyo District Court ruled that the defendant’s act of changing the plaintiff’s goods negatively affected the quality of the plaintiff’s goods and had an adverse effect on the plaintiff’s trademark’s functions as both a designator of source and guarantor of quality. In addition, the court ruled that even though the defendant’s advertisements included the notice “after diamond,” the defendant’s acts still adversely affected the plaintiff’s trademark because there was a likelihood of confusion between the plaintiff’s goods with diamonds and the defendant’s goods. The court therefore concluded that the defendant had infringed the plaintiff’s trademark rights.612 III.B.7. Color The plaintiff manufactured and sold a medication in capsule form, under the brand SELBEX CAPSULES, for treatment of gastric ulcers. The defendant also manufactured and sold a medication in capsules for gastric ulcers. The plaintiff’s medication is sold in a Press-Through Package (PTP). The back of a PTP sheet of the plaintiff’s product was colored silver, and the color of the letters on the PTP sheet was blue. In addition, the color of the 612. Tokyo District Court (wa) No. 8928 of 2005, rendered on November 8, 2005, by Tokyo District Court. Vol. 97 TMR 559 capsules containing the plaintiff’s medication was a combination of green and white. The plaintiff filed a request for an injunction enjoining the sale of the defendant’s goods, with a demand for the destruction of the defendant’s goods and a claim for damages against the defendant, on the ground that the defendant’s acts constituted unfair competition. In this case, the main issue was whether the color scheme of the plaintiff’s product was an “indication of goods.” The Tokyo District Court noted that in order for a configuration of goods, including the color scheme of the goods, to be an “indication of goods” in accordance with Article 2(1)(i) of the Unfair Competition Prevention Act, the configuration must have a distinctive feature that differentiates it from configurations of similar goods and must be well known among consumers. In this case, the court found that neither the color scheme of the plaintiff’s PTP sheet nor the capsules inside it had a distinctive feature that was different from the color scheme of similar goods, such as generic pharmaceuticals. In addition, the court found that, generally, generic pharmaceuticals are not well noted for their form or color scheme, and that the color scheme of the plaintiff’s PTP sheets and capsules also was not well known among consumers. Accordingly, the court rejected the plaintiff’s claim of unfair competition on the basis of like colors.613 III.C. Injunctions and Damages The plaintiff had an exclusive right to use the registered trademark RENAPUR, for creamy leather oil in International Class 4. (The plaintiff subsequently became the owner of the trademark.) The defendant imported and sold a leather treatment in a plastic case in a packing box, and the defendant’s marks (RENAPUR and “RANAPA” in katakana) were put on both the case and the box. The plaintiff filed a request for an injunction against the sale of the defendant’s leather treatment, demanded the destruction of the defendant’s goods, and made a claim for damages against the defendant on the ground of trademark infringement. The Tokyo District Court found that the plaintiff’s and the defendant’s marks were the same or similar, and ruled that there was a possibility of confusion arising with respect to the origin of the goods. In addition, in computing the damages to be awarded, the court ruled that the “unit price of the articles of the trademark registrant,” under Article 38(1) of the Trademark Act, means the 613. Tokyo District Court (wa) No. 5651 of 2005, rendered on December 7, 2005, by Tokyo District Court. 560 Vol. 97 TMR marginal profit which is calculated by deducting expenses and costs directly required for selling the registrant’s articles from the amount sold by the registrant.614 The court found that in this case the unit price of the plaintiff’s articles was the total of the importing cost plus other costs particularly attributable for selling the said articles.615 The plaintiff is the owner of a registered trademark covering magazines. The plaintiff sold comic magazines branded on the cover with the registered trademark, which was also the title of the magazine. The defendant sold comic magazines with unregistered marks, similar to the plaintiff’s trademark, on the cover. The plaintiff filed a request for an injunction enjoining the sale of the defendant’s magazines, with a claim for damages against the defendant, on the ground of trademark infringement. The Tokyo District Court found that the plaintiff’s mark and the defendant’s mark were similar. Therefore, the court ordered an injunction to stop the sale of the defendant’s magazines and ordered the defendant to pay damages to the plaintiff. The plaintiff argued that the amount of damages to be paid should be equal to all of the profit that the defendant obtained through the sale of the defendant’s magazines. The court, however, ruled that the profit made by an infringer rarely is due only to the attraction of customers to a registered trademark, but instead reflects the content of the goods in combination with the marketing efforts of the infringer. In this case, the court concluded that as the sales of magazines were greatly affected by the content of the magazines, the defendant’s mark contributed to 10 percent of the defendant’s profit.616 614. Article 38(1) provides that where the trademark owner or exclusive licensee claims compensation for damage caused by the infringement and the infringer’s act is the assignment of articles by which the act of the infringement was committed, a sum of money, determined by multiplying the unit price of the articles by the number of articles that the trademark owner or exclusive licensee could have sold in the absence of the infringement, may be estimated as the amount of damage suffered by the trademark owner or exclusive licensee, within a limit not exceeding an amount attainable depending on the owner or licensee’s working capacity. 615. Tokyo District Court (wa) No. 11617 of 2004, rendered on October 14, 2005, by Tokyo District Court, 154 Hanrei-Jiho 1925. 616. Tokyo District Court (wa) No. 8092 of 2004, rendered on December 21, 2005, by Tokyo District Court. Vol. 97 TMR 561 JORDAN I.B.8.a. Similarity of Marks The Registrar of Trademarks accepted the notice of opposition filed by the Bermudan firm Gulf International Lubricants Ltd., owner of the trademark GULF617 in International Class 4 (below, illustrations at left and center), against the application for registration of the trademark GULF WORLD FOR LUBRICANTS618 in Class 4 (below, illustration at right), published for opposition in the name of Comet for Engineering and Constructing Co., a Jordanian company. The Registrar determined that registration of the trademark GULF WORLD FOR LUBRICANTS in the name of an unauthorized party would lead to public confusion and would constitute an act of unfair competition.619 Specifically, the Registrar noted that the opposed mark contained the main part of the opponent’s company name. The Registrar of Trademarks accepted the notice of opposition filed by the German company Hans Schwarzkopf, owner of the trademark GLEMO620 in Class 3 (below, illustration at left), against the application for registration of the trademark GLEEM,621 for hair depilatory and henna in Class 3 (below, illustration at right), published for opposition in the name of Anwar Sinjab Est., a Jordanian establishment. 617. Registration No. 18903, published in Official Gazette Supplement No. 75, July 10, 1984, page 47; Registration No. 18904, published in Official Gazette Supplement No. 75, July 10, 1984, page 48. 618. Application No. 48933, published in Official Gazette No. 205, January 9, 1999, page 6. 619. Gulf International Lubricants Ltd. v. Comet for Engineering & Constructing Co., Registrar’s Decision No. TM/48933/31209, December 15, 2005 (unpublished; not appealed). 620. Registration No. 4612, published in Official Gazette Supplement No. 1437, November 5, 1958, page 8. 621. Application No. 53558, published in Official Gazette No. 220, May 7, 2000, page 17. 562 Vol. 97 TMR The Registrar held that registration of the trademark GLEEM in the name of an unauthorized party would lead to public confusion and constitute an act of unfair competition.622 The Registrar of Trademarks accepted the notice of opposition filed by the American company WD-40 Co., owner of the trademark WD-40623 in Class 4 (below, illustration at left), against the application for registration of the trademark HB-40624 in Class 4 (below, illustration at right), published for opposition in the name of Kaleej Oil Co. W.L.L., a Kuwaiti company. The Registrar held that the registration of the trademark HB40 would lead to public confusion, as the marks in conflict were confusingly similar.625 I.B.9.a. No Similarity of Marks The Registrar of Trademarks rejected the notice of opposition filed by the Jordanian company Petra Food Industries against the application for registration of the trademark RINGO & Device626 in International Class 29 (below, illustration at left), published for opposition in the name of Halawani Industrial Co., a Jordanian company. 622. Hans Schwarzkopf v. Anwar Sinjab Est., Registrar’s Decision No. TM/53558/1986, March 16, 2006 (unpublished; not appealed). 623. Registration No. 26558, published in Official Gazette Supplement No. 109, July 15, 1993, page 43. 624. Application No. 51725, published in Official Gazette Supplement No. 214, October 16, 1999, page 63. 625. WD-40 Co. v. Kaleej Oil Co. W.L.L., Registrar’s Decision No. TM/51725/11405, April 27, 2006 (unpublished; not appealed). 626. Application No. 55543, published in Official Gazette No. 225, October 12, 2000, page 304. Vol. 97 TMR 563 The notice of opposition was based on the similarity between the applied-for mark and the opponent’s prior-registered trademarks BINGO627 and ZENGO628 in Class 29 (below, illustrations at center and right). The Registrar held that the similarity of the marks would not lead to public confusion, especially because the word element of the trademark RINGO was in combination with a distinctive logo.629 On appeal, the High Court of Justice affirmed the Registrar’s decision.630 The Registrar of Trademarks rejected the notice of opposition filed by Compagnie Geravis Danone, a French company, against the application for the registration of the trademark DANIAH631 in Class 29 (below, illustration at left), published for opposition in the name of Ra’ad International Est., a Jordanian establishment. The notice of opposition was based on the similarity between the applied-for mark and the opponent’s prior-registered trademark DANONE632 in Class 29 (below, illustration at right). 627. Registration No. 51776, published in Official Gazette No. 214, October 16, 1999, page 311. 628. Registration No. 49454, published in Official Gazette No. 206, February 3, 1999, page 285. 629. Petra Food Industries v. Halawani Industrial Co., Registrar’s Decision No. TM/55543, November 9, 2004 (unpublished). 630. High Court of Justice, Case No. 505/2004, published in Lawyer’s Association Magazine Nos. 4, 5, 6 (2005), pages 753-57. 631. Application No. 53925, published in Official Gazette Supplement No. 219, March 30, 2000, page 18. 632. Registration No. 40124, published in Official Gazette Supplement No. 174, April 25, 1996, page 50. 564 Vol. 97 TMR Although they covered similar goods, the Registrar held that the marks at issue were not confusingly similar and that registration of the applied-for mark would not lead to public confusion.633 The Registrar added that the opponent did not submit convincing evidence that the marks were confusingly similar. The Registrar of Trademarks rejected the notice of opposition filed by F. Hoffmann-La Roche Ltd, a Swiss company, against the application for registration of the trademark LARIDON634 in Class 5 (below, illustration at left), published for opposition in the name of Al-Razi Pharmaceutical Industries Co., a Jordanian company. The opposition was based on the similarity between the opposed mark and the prior-registered trademark SARIDON635 in Class 5 (below, illustration at right), registered in the name of F. Hoffmann-La Roche. The Registrar held that the similarity of the marks would not result in public confusion, as the marks were registered for human pharmaceuticals and the products were handled by professional people.636 In general, this decision reflects the Registrar’s current approach in considering pharmaceutical trademarks. I.B.12. Famous Marks The Registrar of Trademarks accepted the notice of opposition filed by the American corporation AFC Enterprises Inc., owner of the famous trademark POPEYES637 in International Classes 29 and 30 and in numerous other classes (below, illustrations at top), against the application for registration of the trademark PUBAY638 633. Compagnie Geravis Danone v. Ra’ad International Est., Registrar’s Decision No. TM/53925/3136, February 12, 2006 (unpublished; not appealed). 634. Application No. 60252, published in Official Gazette No. 237, April 4, 2002, page 72. 635. Registration No. 7687, published in Official Gazette No. 21, October 16, 1965, page 60. 636. F. Hoffmann-La Roche Ltd v. Al-Razi Pharmaceutical Industries Co., Registrar’s Decision No. TM/60252/12910, May 11, 2006 (unpublished; not appealed). 637. Registration Nos. 39082 and 39075, published in Official Gazette No. 171, January 25, 1996, page 142; Registration No. 39724, published in Official Gazette No. 173, March 30, 1996, page 141; Registration No. 39583, published in Official Gazette No. 173, March 30, 1996, page 134; Registration No. 19310, published in Official Gazette No. 76, March 10, 1985, page 200; Registration No. 19312, published in Official Gazette No. 76, March 10, 1985, page 248. 638. Application No. 51804, published in Official Gazette No. 214, October 16, 1999, page 316. Vol. 97 TMR 565 in Class 29 (below, illustration at bottom), published for opposition in the name of Halawani Industrial Co., a Jordanian company. The Registrar held that: (1) the marks were confusingly similar; and (2) POPEYES was a famous mark, and its registration in the name of an unauthorized party in a different way would lead to public confusion and constitute unfair competition.639 The Registrar of Trademarks accepted the cancellation action filed by the British firm Pedigree Dolls and Toys Ltd, owner of the famous trademark SINDY in Classes 3 and 28, against the registration of the trademark CINDY640 in Class 3 (see below) in the name of Dalan Kimya Endustri Anonim Sirkeh, a Turkish company. The Registrar held that SINDY was a famous mark and that registration of the trademark CINDY in the name of an unauthorized party in any class would lead to public confusion and constitute unfair competition.641 This decision is very important, as the Registrar deemed SINDY to be a famous trademark even though the mark was not registered in Jordan. The Registrar of Trademarks accepted the notice of opposition filed by the British company Castrol Ltd, owner of the trademark GTX642 in Classes 4 and 37 (below, illustrations at top), against the 639. AFC Enterprises Inc. v. Halawani Industrial Co., Registrar’s Decision No. TM/51804/17291, March 21, 2006 (unpublished; not appealed). 640. Registration No. 54552, published in Official Gazette No. 223, July 4, 2000, page 17. 641. Pedigree Dolls & Toys Ltd v. Dalan Kimya Endustri Anonim Sirkeh, Registrar’s Decision No. TM/54552/9365, April 9, 2006 (unpublished; not appealed). 642. Registration No. 10861 in Class 4, published in Official Gazette No. 44, February 28, 1973, page 43; Registration No. 74369 in Class 4, published in Official Gazette No. 291, September 8, 2004, page 49; Registration No. 67107 in Class 37, published in Official Gazette No. 259, April 14, 2003, page 314. 566 Vol. 97 TMR application for registration of the trademark IPC 252 GTX643 in Class 2 (below, illustration at bottom), published for opposition in the name of Paints and Chemicals Co., a Jordanian company. The Registrar held that GTX was a famous mark and its registration in the name of an unauthorized party in a different class or together with additional elements would lead to public confusion and constitute unfair competition.644 The importance of this decision lies in the fact that it establishes that use of a famous mark as part of a trademark will be considered unfair competition. The Registrar of Trademarks accepted the notice of opposition filed by the American company Time Warner Entertainment Co. L.P., owner of the trademark TWEETY645 in Classes 16, 25, 28, and 29 (below, illustration at left), against the application for registration of the trademark ASHOUR TWEETY & Device646 in Class 30 (below, illustration at right), published for opposition in the name of Hassan Ashour & Sons for Industry, a Jordanian company. 643. Application No. 48394, published in Official Gazette No. 204, November 30, 1998, page 12. 644. Castrol Ltd v. Paints & Chemicals Co., Registrar’s Decision No. TM/48394/10819, April 24, 2006 (unpublished; not appealed). 645. Registration No. 40057 in Class 29, published in Official Gazette No. 174, April 25, 1996, page 131; Registration No. 40058 in Class 28, published in Official Gazette No. 174, April 25, 1996, page 116; Registration No. 41601 in Class 16, published in Official Gazette No. 180, September 25, 1996, page 153; Registration No. 41597 in Class 25, published in Official Gazette No. 180, September 25, 1996, page 105. 646. Application No. 56638, published in Official Gazette No. 228, February 6, 2001, page 297. Vol. 97 TMR 567 The Registrar held that TWEETY was a famous trademark and its registration in the name of an unauthorized party in a different class or together with additional elements would lead to public confusion and constitute unfair competition.647 This decision confirms the Registrar’s position that use of a famous mark as part of a trademark will constitute an act of unfair competition. The Registrar of Trademarks accepted the notice of opposition filed by the American corporation 7-Eleven, Inc., owner of the famous trademark 7-ELEVEN648 in Classes 16 and 42 (below illustrations at top), against the application for registration of the trademark 7-ELEVEN in special script649 in Class 25 (below, illustration at bottom), published for opposition in the name of Ali Sanwar Co., a Jordanian company. The Registrar determined that 7-ELEVEN was a famous trademark and its registration in the name of an unauthorized party in a different class would lead to public confusion and constitute an act of unfair competition.650 647. Time Warner Entertainment Co. L.P. v. Hassan Ashour & Sons for Industry, Registrar’s Decision No. TM/56638/12028, May 4, 2006 (unpublished; not appealed). 648. Registration No. 48683 in Class 16, published in Official Gazette No. 204, November 30, 1998, page 136; Registration No. 68838 in Class 16, published in Official Gazette No. 268, July 18, 2003, page 155; Registration No. 69970 in Class 42, published in Official Gazette No. 271, August 28, 2003, page 297. 649. Application No. 53750, published in Official Gazette No. 220, May 7, 2000, page 159. 650. 7-Eleven, Inc. v. Ali Sanwar Co., Registrar’s Decision No. TM/53750/12186, May 7, 2006 (unpublished; not appealed). 568 Vol. 97 TMR The Registrar of Trademarks accepted the notice of opposition filed by the Swiss company Société des Produits Nestlé S.A. (Nestlé), owner of the trademark ASAD in Arabic651 in Class 30 (below, illustration at left), against the application for registration of the trademark AL-ASAD in Arabic with Lion Device652 in Class 30 (below, illustration at right), published for opposition in the name of Palestinian Trading Co., a Jordanian company. (Asad is the Arabic word for lion.) The Registrar held that (1) Nestlé’s trademarks LION in English and ASAD in Arabic were famous marks; and (2) the opposed mark was almost identical to the latter famous mark, and registration thereof in the name of the applicant would lead to public confusion and constitute unfair competition.653 I.B.14. House Marks The Registrar of Trademarks rejected the notice of opposition filed by Hansa Metallwerke AG, a German company, against the application for registration of the trademark WANSA in International Class 11 (below, illustration at left),654 published for opposition in the name of Yousuf A. Al-Chanin & Sons S.L.L., a Kuwaiti company. The opposition was based on the similarity between the opposed mark and the opponent’s prior-registered trademark HANSA655 in Class 11 (below, illustration at right). 651. Registration No. 21822, published in Official Gazette No. 87, March 5, 1987, page 126. 652. Application No. 53939, published in Official Gazette No. 219, March 30, 2000, page 231. 653. Société des Produits Nestlé S.A. v. Palestinian Trading Co., Registrar’s Decision No. TM/53939/13228, May 15, 2006 (unpublished; not appealed). 654. Application No. 58759, published in Official Gazette No. 234, November 18, 2001, page 147. 655. Registration No. 39545, published in Official Gazette No. 172, February 25, 1996, page 80. Vol. 97 TMR 569 The Registrar based his decision on the fact that the trademark WANSA had been registered in Jordan since 1984,656 while the opposing trademark HANSA had been registered only since 1995. Because the applicant had not renewed its registration in due time, it had to submit a new application. The Registrar held that the owner of the opposed trademark was entitled to refile for the registration of its trademark WANSA.657 II.D.3. Improper Pleadings The Registrar of Trademarks rejected the notice of opposition filed by the American corporation Purolator Products Inc. against the application for registration of the trademark PUROLATOR658 in International Class 7 (see below), published for opposition in the name of Diken & Ibrahim Trading Co., a Jordanian company. The notice of opposition was based on the following arguments: 1. Purolator Products had owned the registered trademark PUROLATOR in Class 7 since 1975. 2. The applicant had previously imported from Purolator Products goods bearing the trademark PUROLATOR, which proved that the American company was the owner of the trademark PUROLATOR. In making his decision, the Registrar took into account the fact that the opponent: 1. Did not mention, in the notice of opposition or pleadings, that the name PUROLATOR constituted the main part of its corporate name; 2. Did not submit convincing evidence that the applicant was the opponent’s commercial agent in Jordan; and 656. Registration No. 21657 in Class 9, published in Official Gazette No. 85, February 28, 1987, page 76; Registration No. 21655 in Class 7, published in Official Gazette No. 889, April 25, 1987, page 102; Registration No. 21656 in Class 11, published in Official Gazette No. 103, February 28, 1987, page 103. 657. Hansa Metallwerke AG v. Yousuf A. Al-Chanin & Sons S.L.L., Registrar’s Decision No. TM/58759/12196, May 7, 2006 (unpublished; not appealed). 658. Application No. 47941, published in Official Gazette No. 203, October 10, 1998, page 77. 570 Vol. 97 TMR 3. Did not submit convincing evidence that it had used the trademark PULOLATOR in Jordan before the applicant.659 On appeal, the High Court of Justice affirmed the Registrar’s decision. It added that the opponent could not add new arguments in the case if they were not included in the notice of opposition.660 III.A.2. Likelihood of Confusion The Registrar accepted the cancellation actions filed by the British company Imperial Chemical Industries Ltd, owner of the famous trademark DULUX661 in International Class 2 (below, illustrations at center and right), against the registration of the trademark DEWILUX662 in Classes 1 and 2 (below, illustration at left) in the name of Bayrakli Boya ve Vernik Fabrikalari Anonim Sirketi, a Turkish company. The Registrar determined that the similarity of both the marks and the goods would lead to public confusion.663 III.A.3. Prior User The Registrar of Trademarks rejected the cancellation action filed by Spartan Chemical Co., a Jordanian company, against the trademark GALA LOEWE664 in International Class 3 (below, illustration at left), registered in the name of the Spanish company Loewe S.A. 659. Purolator Products Inc. v. Diken & Ibrahim Trading Co., Registrar’s Decision No. TM/47743/15708, July 26, 2004 (unpublished). 660. High Court of Justice, Case No. 343/2004, Decision No. 46, October 20, 2004, published in Lawyer’s Association Magazine Nos. 4, 5, 6 (2005), pages 604-09 . 661. Registration Nos. 18364, published in Official Gazette No. 74. April 10, 1984, page 17; Registration No. 1383, published in Official Gazette No. 1048, December 3, 1950, page 4. 662. Registration No. 49162, published in Official Gazette No. 206, February 3, 1999, page 3; Registration No. 49161, published in Official Gazette No. 206, February 3, 1999, page 10. 663. Imperial Chemical Industries Ltd v. Bayrakli Boya ve Vernik Fabrikalari Anonim Sirketi, Registrar’s Decision Nos. TM/49162/13094 and TM/49161/13078, May 14, 2006 (unpublished; not appealed). 664. Registration No. 44257, published in Official Gazette No. 190, August 14, 1997, page 23. Vol. 97 TMR 571 The cancellation action was based on the similarity between the GALA LOEWE mark and Spartan Chemical Co.’s priorregistered trademark GALA665 in Class 3 (below, illustration at right). In making his decision, the Registrar took into consideration the following findings: 1. The owner of the challenged trademark had prior use of the trademark both within and outside Jordan. 2. The owner of the challenged trademark had prior registration of the trademark in Jordan and outside Jordan. 3. The similarity between the marks was not sufficiently strong to lead to public confusion.666 III.A.10. Non-use of Trademark The Registrar of Trademarks rejected a cancellation action based on non-use filed by the American company Wyeth Holdings Corp., owner of the trademark MATERNA in International Class 5, against the trademark MATERNA-Z in both Arabic and English versions667 in International Class 5 (see below) by Arab Pharmaceutical Manufacturing Co., a Jordanian company. The Registrar rejected the action because he found that the evidence submitted in support was not convincing.668 In his decision, the Registrar did not consider the fact that the owner of the opposed mark did not submit a counterstatement or furnish any evidence of use of its mark. 665. Registration No. 33109, published in Official Gazette No. 146, June 25, 1994, page 23. 666. Spartan Chemical Co. v. Loewe S.A., Registrar’s Decision No. TM/47380/12185, May 7, 2006 (unpublished; not appealed). 667. Registration No. 25930, published in Official Gazette No. 105, March 25, 1979, page 6. 668. Wyeth Holdings Corp. v. Arab Pharmaceutical Manufacturing Co., Registrar’s Decision No. TM/25930/10048, April 16, 2006 (unpublished; not appealed). 572 Vol. 97 TMR III.G. Post-Registration Evidence of Use and Renewals The Registrar accepted the cancellation action filed by the American corporation PepsiCo, Inc., owner of the trademark WOW in Class 30, against the trademark WOW in both English and Arabic lettering669 in International Class 30 (see below), registered in the name of Halawani Industrial Co., a Jordanian company. Based on PepsiCo’s extensive evidence of prior use and registration of its trademark in several countries of the world, the Registrar held that the continued registration of the opposed mark in the name of an unauthorized party would lead to public confusion and constitute unfair competition.670 This decision is important because the Registrar accepted a cancellation action filed against a Jordanian registered trademark based on a trademark that had not been registered and used outside Jordan. LITHUANIA III.A.2.a. Similarity of Goods/Services In Tenax, SIA v. Tenax S.p.A, the plaintiff, a Latvian company, filed for a cancellation of the registration for the trademark TENAX by the defendant, an Italian company, for goods in Classes 9, 17, 19, 20, 22, 24, and 28 of the Nice Classification, on the ground that the defendant’s mark was identical to the plaintiff’s registered trademark TENAX, for goods in Classes 1, 2, 3, 4, 16, 17, 19, and 39. The State Patent Bureau, having found that the goods covered by the defendant’s registration were similar in Classes 17 and 19, ruled a partial satisfaction of the protest and cancelled the trademark registration for TENAX for the respective goods.671 III.A.2.b. Similarity of Marks MUSTANG–Bekleidungswerke GmbH + Co. KG, a German company, brought an action for cancellation of the registration for the international trademark SIXTYSEVEN BY MUSTANG, 669. Registration No. 54960, published in Official Gazette No. 223, July 4, 2000, page 382. 670. PepsiCo Inc. v. Halawani Industrial Co., Registrar’s Decision No. TM/54960/12591, May 10, 2006 (unpublished; not appealed). 671. Protest No. 1500, Decision No. 810, issued September 30, 2005. Vol. 97 TMR 573 covering goods in Class 25 of the Nice Classification, by the Spanish company Pascual Ros Aguilar, based on the similarity of the defendant’s mark to the plaintiff’s international trademark MUSTANG, also registered for goods in Class 25. The State Patent Bureau held that the word MUSTANG, which resembled the plaintiff’s trademark, was the main element in the defendant’s mark because the graphic elements were not distinctive and made a rather faint impression. Having determined that the marks were similar visually, phonetically, and semantically, the State Patent Bureau cancelled the trademark registration for SIXTYSEVEN BY MUSTANG in Lithuania. 672 In H. D. Lee Co., Inc. v. Dyag Stock SA, the plaintiff, a corporation headquartered in Delaware, USA, requested the cancellation of the French defendant’s registration for the trademark DEBORAH LEE, registered for goods in Class 25, based on the mark’s similarity to the plaintiff’s trademarks LEE and BUDDY LEE, registered for identical and similar goods in Class 25. The State Patent Bureau held that the defendant’s mark resembled the main element of the plaintiff’s company name and registered trademarks, and that, consequently, consumers could perceive the defendant’s mark as a new trademark in the LEE trademark group. Accordingly, it held that the marks were similar from a visual, phonetic, and semantic perspective, and it cancelled the trademark registration for DEBORAH LEE in Lithuania.673 A Lithuanian company, UAB “Švyturys-Utenos alus,” sought cancellation of the registration for the trademark BALTIC, covering goods in Classes 33 (namely spirits, excluding beer) and 35, by Bennet Distributors, an American-Lithuanian company, on the ground that the defendant’s mark was similar to the plaintiff’s trademark BALTIJOS, registered for goods (namely beer) in Class 32. The State Patent Bureau held that the marks were similar in a visual, phonetic, and semantic way. It pointed out that, despite the fact that the marks had different endings, consumers would associate both trademarks with the Baltic Sea. Further, it held that since the goods covered by the registrations (spirits and beer) were of the same nature—alcoholic beverages—and were intended for the same group of end users, the conditions of sale were the 672. MUSTANG–Bekleidungswerke GmbH + Co. KG v. Pascual Ros Aguilar, Protest No. 1517, Decision No. 795, issued August 18, 2005. 673. Protest No. 1518, Decision No. 796, issued August 19, 2005. 574 Vol. 97 TMR same. Consequently, the State Patent Bureau cancelled the defendant’s registration with respect to goods in Class 33.674 The German company Solar Fashion GmbH & Co. KG requested the cancellation of the registration for the trademark SOLAR, for goods in Classes 18 and 25, by the Polish firm Solar Co. Ltd., based on the similarity of the defendant’s mark to the plaintiff’s trademark SOLAR, registered for goods in Class 25. The State Patent Bureau ruled that despite the fact that the marks differed in minor graphic elements, which were of a decorative nature, the marks were similar in their visual, phonetic, and semantic aspects. Accordingly, it cancelled the defendant’s registration.675 UAB “Įvaizdžių Grupė,” a Lithuanian company, sought to cancel the registration by Janina Drižienė, a Lithuanian individual, for the trademark MAJOR IMAGE GROUP, registered for goods in Classes 25, 35, 41, and 44, based on the similarity of that mark to the plaintiff’s Lithuanian company name “Įvaizdžių Grupė” (“Image Group”). The State Patent Bureau ruled that the defendant’s mark was a translation of the plaintiff’s company name and confusingly similar to it both phonetically and semantically. Consequently, it cancelled the trademark registration for MAJOR IMAGE GROUP.676 In Gerardo Cesari S.p.A. v. Bennet Distributors, the plaintiff, an Italian company, filed for the cancellation of the registration for the trademark CAESAR, covering goods in Class 35, by the defendant, an American-Lithuanian company, on the ground that the defendant’s mark was similar to the plaintiff’s trademark CESARI, registered for goods in Class 33. The State Patent Bureau, noting that both trademarks were written in Roman letters; found that there was a phonetic similarity between them, based on the pronunciation of the letters C, S (pronounced Z), and R. The marks were also similar visually, as the letters C, E, S, A, and R of the defendant’s trademark CAESAR also appear in the plaintiff’s trademark CESARI. In addition, consumers would associate both marks with the Roman general, politician, and author Gaius Iulius Caesar. Therefore, having found that the marks were visually, phonetically, and 674. UAB “Švyturys-Utenos alus” v. UAB “Bennet Distributors,” Protest No. 1541, Decision No. 800, issued September 1, 2005. 675. Solar Fashion GmbH & Co. KG v. Solar Co. Ltd., Protest No. 1526, Decision No. 802, issued September 5, 2005. 676. UAB “Įvaizdžių Grupė” v. Janina Drižienė, Protest No. 1553, Decision No. 803, issued September 15, 2005. Vol. 97 TMR 575 semantically similar, the State Patent Bureau cancelled the defendant’s trademark registration.677 In Zenon Tetianec Firma “Veratrum” & AB “Sanitas” v. Stirolbiofarm Baltikum, SIA, the plaintiffs, two Lithuanian companies, brought an action for cancellation of the registration for the trademark CITRAMON-FORTE STIROL, for goods in Class 5, by the defendant, a Latvian company, on the ground that the defendant’s mark was confusingly similar to the prior-registered trademarks CITRAMONUM-P of Zenon Tetianec Firma “Veratrum” and NEOCITRAMONAS of AB “Sanitas,” both registered in Class 5. The State Patent Bureau declared that the word elements FORTE and STIROL could not be held to be the distinctive elements of the trademarks, as “forte” indicated merely the characteristic of the goods (i.e., more strong, more effective) and “stirol” indicated a chemical element. Accordingly, it held that the main word element CITRAMON resembled the prior-registered plaintiffs’ trademarks and was confusingly similar to them visually, semantically, and phonetically. The State Patent Bureau therefore cancelled the defendant’s trademark registration for CITRAMON-FORTE STIROL.678 Hause of Prince A/S, a Danish company, filed for the cancellation of the trademark registration for GAMBLER, covering goods in Class 34, by Republic Tobacco, L.P., a company based in the United States, on the ground that the defendant’s mark was similar to the plaintiff’s trademark RAMBLER, registered for the same class of goods. The State Patent Bureau found that the marks differed only in one letter, and therefore, they were similar in a visual, phonetic, and semantic way. Accordingly, it cancelled the defendant’s registration.679 In ALTANA Pharma AG v. Richter Gedeon Vegyeszeti Gyart R.T., the plaintiff, a German company, sought cancellation of the defendant Hungarian company’s registration for the trademark GONDIL, for goods in Class 5, because of the mark’s similarity to the plaintiff’s trademark QUONTYL, registered for goods in the same class. The State Patent Bureau declared that the marks were similar both visually and phonetically. It refused to analyze the semantic 677. Protest No. 1562, Decision No. 806, issued September 20, 2005. 678. Protests No. 1563 and 1566, Decision No. 811, issued October 4, 2005. 679. Hause of Prince A/S v. Republic Tobacco, L.P., Protest No. 98, Decision No. 813, issued October 13, 2005. 576 Vol. 97 TMR similarity of the marks, having determined that the words were artificially made up and that no meaning could be found. However, the existence of two other criteria, namely visual and phonetic similarity, enabled the State Patent Bureau to find that the marks were confusingly similar. Therefore, it cancelled the trademark registration for GONDIL in Lithuania.680 Gira Giersiepen GmbH & Co. KG, a German firm, sought cancellation of the registration for the trademark WWW.GIRA.LT, covering services in Class 38, by UAB “SMS-Eligita,” a Lithuanian company, on grounds of the mark’s similarity to the plaintiff’s trademark GIRA, registered for goods in Classes 9, 11, and 41. The State Patent Bureau, noting that WWW and LT were unprotected elements of the trademark, compared the distinctive elements of the trademark GIRA and determined that the marks were visually, phonetically, and semantically similar. Consequently, it cancelled the registration for the defendant’s trademark in Lithuania.681 III.A.11.a. No Similarity of Marks In AB “Pieno žvaigždės” v. UAB “Vilkė,” involving two Lithuanian companies, the plaintiff requested the cancellation of the registration for the defendant’s trademark MŪSŲ DVARO, for goods in Class 29 of the Nice Classification, based on that mark’s similarity to the plaintiff’s trademarks DVARO, registered for goods in Classes 5, 29, and 30, and MŪSŲ, registered in Classes 29, 30, and 32. The State Patent Bureau, however, considering the number of the elements in the trademarks, their importance, and their distinctiveness, ruled that the marks were not similar either visually or phonetically, and consequently it upheld the validity of the trademark registration for MŪSŲ DVARO.682 III.A.25. Geographical Indications The French company Moulin Rouge S.A., owner of the several registered MOULIN ROUGE trademarks in Classes 3, 14, 28, 24, 25, 32, 33, 34, and 41 of the Nice Classification, filed for the cancellation of the registration for the trademark MOULIN ROUGE, covering goods in Class 30, by the Lithuanian company UAB “Vilniaus pergalė,” on the ground that the defendant’s trademark could mislead the public as to the nature and geographical origin of the goods. 680. Protest No. 1509, Decision No. 814, issued October 17, 2005. 681. Gira Giersiepen GmbH & Co. KG v. UAB “SMS-Eligita,” Protest No. 1567, Decision No. 822, issued November 25, 2005. 682. Protest No. 1593, Decision No. 821, issued November 17, 2005. Vol. 97 TMR 577 The State Patent Bureau ruled that the defendant’s mark could indicate some geographical connection with the Parisian cabaret. Therefore, it cancelled the trademark registration for MOULIN ROUGE.683 III.A.26. Bad Faith In McDonald’s Corp. v. Future Enterprises Pte Ltd, the plaintiff, an internationally known company based in the United States, sought cancellation of the trademark registration for MACCOFFEE, for goods in Class 30 of the Nice Classification, on the ground that the defendant, a Singaporean company, had filed its application in bad faith. The State Patent Bureau found that the defendant did not violate the provision of the Law of the Republic of Lithuania on Trade Marks relating to bad faith,684 and accordingly it refused to cancel the registration for the trademark MACCOFFEE.685 The German company DaimlerChrysler AG brought an action for cancellation of the registration for the trademark MERCEDEZBENZ KLUBAS, for services in Classes 35 and 41, by Gediminas Tursa, a Lithuanian individual. The plaintiff argued that the defendant’s application was filed in bad faith. The State Patent Bureau held that the defendant violated the provision of the Law on Trade Marks relating to bad faith, and it ordered that the trademark registration for MERCEDEZ-BENZ KLUBAS be cancelled.686 In DaimlerChrysler AG v. UAB “Merselita,” the plaintiff, a German company, requested the cancellation of the registration for the trademark MERS ELITA TAXI TAKSI, for services in Classes 35, 37, and 39, on the ground that the registrant, a Lithuanian company, had acted in bad faith. The State Patent Bureau declared that the registration of the defendant’s mark violated the provision of the Law on Trade Marks relating to bad faith. Consequently, it ordered that the registration be cancelled.687 683. Moulin Rouge S.A. v. UAB “Vilniaus pergalė,” Protest No. 1557, Decision No. 799, issued August 31, 2005. 684. Law No. VIII-1981, Article 7.3 (October 10, 2000, last amended June 8, 2006). 685. Protest No. 1480, Decision No. 792, issued July 12, 2005. 686. DaimlerChrysler AG v. Gediminas Tursa, Protest No. 1550, Decision No. 793, issued July 13, 2005. 687. Protest No. 1547, Decision No. 801, issued September 2, 2005. 578 Vol. 97 TMR MALAYSIA III.L. Opposition/Cancellation Procedure In Bata Limited v. Sim Ah Ba @ Sim Teng Khor, Sim Teng Hua & Sim Teng How (all trading as Kheng Aik Trading),688 the Court of Appeal of Malaysia689 dismissed an appeal from the appellant seeking the expungement and removal of the respondents’ trade mark from the Register of Trade Marks in Malaysia. The Court of Appeal agreed with the High Court's finding that the appellant had no exclusive right to the use of the word POWER on its goods, as there was little likelihood that the general public would be confused and deceived by the presence of two contending marks containing the word POWER. Further, the appellant failed to establish at the commencement of the proceedings that the respondents’ trade mark was not distinctive of their goods. Bata Limited, the appellant, is a well-known shoe manufacturer and retailer and is the registered proprietor of the trade mark POWER & Device, covering “shoes, boots and parts thereof, slippers and sandals” in International Class 25 (below, illustration at left).690 The appellant filed a Notice of Motion in the High Court seeking the expungement and removal of the respondents’ registered trade mark SPORTS POWER & Device, for “socks and underwear” in Class 25 (below, illustration at right).691 The Notice requested in addition that the Registrar of Trade Marks be directed to rectify the Register by removing the respondents’ trade mark pursuant to Sections 10,692 14,693 19,694 688. Civil No. W-02-285-2000, Court of Appeal, June 26, 2006 (reported in [2006] 6 MLJ 445). 689. The Court of Appeal is the second-highest court in Malaysia. 690. Registration No. M/57693, August 23, 1971. 691. Registration No. 88/03298, July 5, 1988. 692. Section 10(1)(e) of the Trade Marks Act 1976 (before amendment in 2000) provides: “In order for a trade mark (other than a certification trade mark) to be registrable in Part A of the Register, it shall contain or consist of, inter alia, any other distinctive mark.” (Other marks that may be registrable in Part A of the Register include (1) the name of an individual, company, or firm represented in a special or particular manner; (2) the signature of the applicant for registration or of some predecessor in his business; (3) an invented word or words; and (4) a word having no direct reference to the character or quality of the goods and not being, according to its ordinary meaning, a geographical name or surname.) 693. Section 14(1)(a) provides: “A mark or part of a mark shall not be registered as a trade mark—if the use of [such mark] is likely to deceive or cause confusion to the public or would be contrary to law.” 694. Section 19(1) provides: “No trade mark shall be registered in respect of any goods or description of goods—(a) that is identical with a trade mark belonging to a different proprietor and entered in the Register in respect of the same goods or description of goods or in respect of services that are closely related to those goods; or (b) that so nearly resembles such a trade mark as is likely to deceive or cause confusion.” Vol. 97 TMR 579 and 45695 of the Malaysian Trade Marks Act 1976.696 The appellant’s grounds in support of its rectification application included the following: • The appellant is the registered proprietor of the appellant’s trade mark POWER & Device under Class 25 for shoes, boots and parts thereof, slippers and sandals. • The appellant had used its trade mark POWER & Device since 1971 for the goods registered. It also claimed to have dealt with socks under its mark and accordingly had gained reputation and goodwill, with substantial income generated from it. To support this, the appellant had adduced various documents showing trading channels where the appellant had marketed its goods bearing the trade mark POWER & Device. • The respondents did not invent or create their trade mark SPORTS POWER & Device but merely coined something similar to the appellant’s mark. • The respondents did not use the SPORTS POWER & Device mark after the mark was registered. Instead, the respondents’ trading activity on their trade mark, if any at all, began only in 1991. Moreover, there was an overlapping of the trade channels of goods bearing the appellant’s trade mark POWER & Device and the respondents’ trade mark SPORTS POWER & Device that had caused confusion and deception of the public. In response, the respondents explained that they never copied the appellant’s trade mark but created their trade mark SPORTS POWER & Device based on their own original idea. While acknowledging that there might be some minor similarities between the marks, they argued that this would not cause confusion or deception of the public. They pointed out that, in fact, 695. Section 45(1)(a) provides: “Subject to the provisions of this Act—the Court may, on the application in the prescribed manner of any person aggrieved by the non-insertion in or omission from the Register of any entry or by any entry made in the Register without sufficient cause or by any entry wrongfully remaining in the Register, or by any error or defect in any entry in the Register, make such order for making, expunging or varying such entry as it thinks fit. . . .” 696. Act 175 (prior to amendment by Act A1078 of 2000). 580 Vol. 97 TMR such apprehension had been addressed and settled by the Registrar of Trade Marks when they successfully convinced the Registrar during the examination stage of their application that no such confusion or deception was likely to arise, which resulted in their mark’s being accepted and advertised in the gazette. The respondents claimed that they had used their trade mark. They further claimed that there was no overlapping of trade channels, as the appellant sold its goods only in its own BATA shops or its franchised outlets, while their goods were retailed in general merchandise stores. The trial judge in the High Court dismissed the appellant’s application on the basis that (1) although some confusion might arise over the word POWER in the respondents’ trade mark, this could be neutralized by the fact that the type of goods covered by the respondents’ trade mark differed from that covered by the appellant’s, and (2) apart from the word POWER, other features in the two contending marks were different. The judge declared, further, that the appellant had no exclusive right to the use of the word POWER because it was a common and generic word and a disclaimer had been imposed on it by the Registrar of Trade Marks. On this basis, the trial judge concluded that the public would not be confused and deceived by the coexistence of the two contending trade marks. As the respondents’ trade mark SPORTS POWER & Device had been registered in excess of seven years, the Court of Appeal agreed that the respondents’ registration for the trade mark SPORTS POWER & Device would be deemed to be conclusive unless the exceptions laid down in Section 37 of the Trade Marks Act could be established and that it must confine itself to only those situations described in Section 37.697 The Court stated that in the circumstances, Sections 10 and 19 of the Act had no relevance in such application. The Court of Appeal focused on the following two main factors, which are the exceptions provided for in Section 37: 1. Whether the respondents’ trade mark was likely to deceive or cause confusion to the public; and 697. Section 37 stipulates that “[i]n all legal proceedings relating to a trade mark registered in the Register (including applications under section 45) the original registration of the trade mark under this Act shall, after the expiration of seven years from the date thereof, be taken to be valid in all respects unless it is shown—(a) that the original registration was obtained by fraud; (b) that the trade mark offends against section 14; or (c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods or services of the registered proprietor, except that this section shall not apply to a trade mark registered under the repealed Ordinances and incorporated in the Register pursuant to subsection (3) of section 6 until after the expiration of three years from the commencement of this Act.” (Emphasis added.) Vol. 97 TMR 581 2. Whether the respondents’ trade mark was, at the commencement of the proceedings, distinctive of their goods. In considering whether the appellant’s trade mark would be sufficiently similar to the respondents’ trade mark as to lead to a likelihood of confusion or deception, the Court considered and took into account the following factors: • The idea of the mark • The fact that the elements of the mark must be taken as a whole • Imperfect recollection of the mark by customers or purchasers • The aural and visual aspect of a customer towards the mark • All the circumstances of the trade The Court of Appeal agreed with the trial judge’s approach, to begin by looking at the two contending trade marks. It was satisfied that the trade marks were visually dissimilar apart from the common word POWER. Further, despite taking the view that the idea of the mark left on the minds of the public was important, the Court found that the effect of the idea of the mark was diluted by the fact that the appellant’s goods bearing the trade mark POWER & Device were retailed only in the appellant’s exclusive BATA shops or franchise outlets. The appellant’s goods bearing the trade mark POWER & Device were not sold in general merchandise outlets, where the respondents’ goods were made available. Therefore, owing to the different trade channels, there was little likelihood that the public would be confused and deceived. In addition, the Court of Appeal compared the phonetic aspects of the trade marks to ascertain whether the appellant had acquired the exclusive right to the use of the word POWER. In this regard, it found that the word POWER was not an invented word and that the appellant had not adduced sufficient evidence to convince the Court that the word had acquired a secondary meaning to distinguish it in connection with the appellant’s goods for the purpose of entitling the appellant to the exclusive right to use the word. Further, the disclaimer imposed on the word POWER by the Registrar of Trade Marks on both the appellant’s and the respondents’ trade marks698 weakened the claim to exclusivity. The Court also found that the goods covered under the respondents’ trade mark were different from those covered under 698. The disclaimer reads: “Registration of this mark shall give no right to the exclusive use of the word POWER.” 582 Vol. 97 TMR the appellant’s trade mark, although the goods all fell under Class 25. The respondents’ assertion that the Court should give substantial weight to the Registrar’s decision in accepting the respondents’ application for registration notwithstanding the fact that they were aware of the presence of the appellant’s trade mark in the Register was found to be both logical and rational. The Court of Appeal agreed that that the Registrar’s decision must have some weight when the Court was considering an application of such nature, for the following reasons: 1. The Registrar’s duty was to ensure that there should be no two similar marks registered if that would cause confusion and deception to the public. 2. To prevent this, the Registrar was granted the discretion by statute to decide whether to allow the respondents’ trade mark to proceed to the next stage of registration. 3. Having accepted the respondents’ explanation, the Registrar must have been satisfied that no such confusion and deception would be caused to the public. Accordingly, the Court concluded in relation to the first issue that there was no real tangible possibility of confusion or deception of the public by the respondents’ use of the trade mark for their goods. In relation to the second issue, the Court of Appeal dismissed this ground on the basis that the appellant had failed to adduce evidence to prove that the respondents’ trade mark was not, at the commencement of the rectification proceedings, distinctive of their goods, as stipulated by Section 37(c) of the Trade Marks Act 1976. The appellant merely adduced evidence of non distinctiveness of the respondents’ goods relative to the trade mark at the time of registration. The Court of Appeal clearly indicated in this decision that the timeline to judge the distinctiveness of the registered mark in rectification proceedings where protection under Section 37(c) of the Trade Marks Act was invoked699 should be the date of application for rectification or expungement, not the time of the original registration of the mark. The Court also appeared to place substantial emphasis on the circumstances of trade where both the appellant’s and the respondents’ goods were sold and retailed. 699. That is, when the registered mark to be expunged or removed under the provisions of Section 45 of the Act has been registered in excess of seven years. Vol. 97 TMR 583 NEW ZEALAND I.B.22. Distinctiveness In Effem Foods Limited v. Cadbury Limited,700 Effem Foods Limited (Effem) appealed the decision of the Assistant Commissioner of Trade Marks allowing the registration of the word mark PURPLE by Cadbury Limited (Cadbury) in International Class 30 in relation to the following goods: chocolate, chocolates, non-medicated confectionery, biscuits, wafers, cakes, snackfood; preparations made from cereal; ice cream, ices, frozen confections; none of the foregoing goods being coloured purple [emphasis added]. Cadbury’s application was reviewed under the provisions of the Trade Marks Act 1953 (the 1953 Act) because it was filed before the Trade Marks Act 2002 (the 2002 Act) came into force. The general principles considered in this case are still relevant, however, in determining whether a mark is registrable under the 2002 Act. The Assistant Commissioner had held that the word mark PURPLE was registrable under the 1953 Act because the word PURPLE was not descriptive of goods that were not colored purple and was not a common word in common use in relation to the goods in question. Effem appealed to the New Zealand High Court on the following grounds: 1. The word PURPLE could not function as a trade mark when used on or in relation to the goods in question because it was descriptive of those goods and otherwise nondistinctive when used in relation to them. 2. The exclusion of purple-colored confectionary and baking products did not overcome these obstacles. Such a negative restriction should not be permitted, as it led to uncertainty. In considering whether the mark PURPLE was registrable under the 1953 Act, Justice McKenzie addressed the following questions: 1. Was the mark one that had no direct reference to the character or quality of the goods? 2. Was the word PURPLE adapted, in relation to the goods in respect of which it was to be registered, to distinguish Cadbury’s goods from those of other traders? 700. Case No. CIV 2004-485-2127 (High Court, Wellington, December 12, 2005) (McKenzie, J.) (unreported). 584 Vol. 97 TMR On the first question, Justice McKenzie held in favor of Cadbury. He found that the word PURPLE had no direct reference to the character or quality of the goods because purple-colored goods were excluded from the specification. Justice McKenzie did not consider it necessary to decide whether the exclusion in Cadbury’s specification was permissible under the 1953 Act. Referring to the European Court of Justice’s decision in Postkantoor,701 His Honor observed that allowing such exclusions raised important issues that might need to be addressed for applications under the 2002 Act. He proceeded on the assumption that a negative restriction in the form adopted by Cadbury was permissible. As to the meaning of Cadbury’s exception, it became common ground during the course of the hearing that the exclusion would cover goods that themselves were colored purple or contained the color purple, and also packaging that contained the color purple. Justice McKenzie referred to such goods and packaging as “purple goods.” When considering the second question, whether the word PURPLE was adapted to distinguish Cadbury’s goods, His Honor applied the test of distinctiveness from W & G Du Cros Ltd’s Applications,702 namely, whether other traders were likely, in the ordinary course of business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, on or in connection with their own goods. Justice McKenzie held that the Du Cros test did not require that the only possible use of the mark to be considered, in relation to distinctiveness, was use on non-purple goods of the type specified in Cadbury’s application. Restriction of the consideration of distinctiveness would be unworkable in this case. He observed that people in the trade could not be expected to know, without a detailed knowledge of the Trade Marks Register, that what was to be distinguished by Cadbury’s PURPLE mark was not, for example, all types of ice cream, but only ice cream that was not colored purple. Although Effem was not able to adduce much evidence of other traders’ using the word PURPLE, this was not fatal to its appeal. While actual use may be relevant to the likelihood of other traders’ wanting to use the same or a similar mark, that was not the test. The likelihood of other traders’ wanting to use the same or a similar mark was sufficiently established in this case by evidence that purple packaging was sometimes used, and use of the word PURPLE as descriptive of that packaging would be legitimate use. 701. Koninklijke KPN Nederland NV v. Benelux-Merkenbureau, Case C-363/99, [2004] E.T.M.R. 57 (ECJ, February 12, 2004), applied in the United Kingdom in Croom’s Trade Mark Application, [2005] R.P.C. 2. 702. (1913) 30 R.P.C. 660 (HL). Vol. 97 TMR 585 Accordingly, Justice McKenzie held that the mark PURPLE did not have the degree of distinctiveness necessary for registration under the 1953 Act, and allowed the appeal. Cadbury has appealed the High Court’s decision to the New Zealand Court of Appeal. III.A.10. Non-use of Trademark In Dick Smith (Wholesale) Pty Ltd v. Smiths City (Southern) Ltd,703 the Assistant Commissioner of Trade Marks refused an application to revoke a trade mark registration for non-use. On April 28, 2004, Smiths City (Southern) Ltd (Smiths City) filed an application to revoke the DICK SMITH ELECTRONICS POWERHOUSE logo registration, on the ground that the owner, Dick Smith (Wholesale) Pty Ltd (Dick Smith), had not used the POWERHOUSE mark for a continuous period of five years preceding the application for revocation. Smiths City was the registered owner of a number of trade mark registrations for POWERSTORE. After reviewing the evidence, the Assistant Commissioner concluded that Dick Smith’s promotional use of the POWERHOUSE mark in a local newspaper constituted genuine use of the mark in New Zealand. The use was in one advertisement and was in anticipation of Dick Smith’s opening its first POWERHOUSE branded store in New Zealand. Dick Smith had also filed evidence of its use of the POWERHOUSE mark since May 2000 on the Dick Smith Australia website. This website had been operating and accessible to New Zealand and Australian customers since about 1996. Use of the POWERHOUSE mark on this website did not constitute genuine use. The Assistant Commissioner went on to consider whether Dick Smith’s registration should be revoked if there had not been genuine use, given that Section 66(1) of the 2002 Act provides that “[t]he registration of a trade mark may be revoked” (emphasis added). She observed that the likely interpretation of this provision was that she had a residual discretion to refuse revocation even if non-use was established, but that residual discretion was to be exercised only in exceptional circumstances. The Assistant Commissioner held that the following circumstances were out of the ordinary and that they justified her not revoking Dick Smith’s registration: • Dick Smith had not abandoned, nor intended to abandon, its POWERHOUSE mark. All the evidence pointed to a 703. Case No. T2/2006 (Intellectual Property Office of New Zealand, January 31, 2006) (Assistant Commissioner Walden) (unreported). 586 Vol. 97 TMR genuine intention over a period of years to set up at least one POWERHOUSE branded store in New Zealand. • The application for revocation was filed on April 28, 2004, and Dick Smith opened its store on May 14, 2004, less than one month out of time. If Dick Smith had opened its store before the application for revocation was filed, it would easily have established genuine use of its POWERHOUSE mark, and could have established that the preparations to open its store occurred before it was aware that the application for revocation would be filed. • It was unlikely that Smiths City would suffer any significant prejudice if the Assistant Commissioner’s discretion were exercised in favor of Dick Smith. • Dick Smith would be seriously prejudiced if its POWERHOUSE registration were revoked. This case is of interest because it provides a rare illustration of the Assistant Commissioner’s exercising her discretion under the 2002 Act in favor of the registered owner of a trade mark and not revoking a trade mark registration. III.A.12. Distinctiveness In Fredco Trading Limited v. Miller,704 the New Zealand High Court dismissed an application by Fredco Trading Limited (Fredco) to have the registration for the three-dimensional shape of a horticultural plastic vine tie declared invalid. Fredco appealed that decision to the New Zealand Court of Appeal.705 This case is significant because it marked the first time that the Court of Appeal considered the registrability of a trade mark under the 2002 Act. Further, no dispute concerning the registrability of a shape mark under the 1953 Act had ever reached the Court. Section 18 of the 2002 Act prohibits the registration of trade marks that have no distinctive character, but recognizes that a trade mark may acquire a distinctive character as a result of its use by the owner. The key issue for the Court was whether the shape of a previously patented plastic vine tie, used in the kiwifruit industry for securing fruit vines to support wires, could acquire, and had acquired, a distinctive character through use. A representation of the mark is set out below. 704. (2004) 65 I.P.R. 653 (HC), reported at 95 TMR 486 (2006). 705. Case No. CA20/05 (July 3, 2006) (unreported). Vol. 97 TMR 587 The facts of this case illustrate that if the shape of a patented product (or the article to which the registered design is applied) has some capricious aspect(s) so that it operates as a badge of origin, and the shape has been exclusively and extensively used by its owner, that shape may be registrable as a trade mark. In the High Court, Justice Venning had held that Robert Miller’s KLIPON brand vine tie was registrable as a trade mark, based on Miller’s showing that the shape had acquired a distinctive character through extensive use. Miller submitted evidence that consumers could identify him as the supplier of the vine tie from the vine tie’s shape alone. Not surprisingly, such acquired distinctiveness was easy enough to show, because the vine tie had been the exclusive monopoly of Miller for the 20-year life span of the now-expired patent. Evidence showed that Miller, through his company, had sold more than 1 billion vine ties during the 20-year lifetime of the patent. Miller only applied for registration as a trade mark once the patent had expired and he became aware that Fredco had started using a vine tie identical in shape to the previously patented one. Fredco appealed Justice Venning’s decision. The appeal raised the following issues: 1. Whether a functional mark can be a trade mark. 2. Whether the goods themselves can be the mark. 3. Whether Justice Venning was wrong to conclude, on the evidence, that Miller’s vine tie denoted origin. 4. Whether Justice Venning took into account irrelevant matters. 5. Whether Miller’s vine tie shape was a limping mark—that is, one that is used in conjunction with a more distinctive mark, such as the KLIPON brand, and has little or no inherent distinctiveness. The Court of Appeal did not consider that it was necessary to decide whether a functional mark could be a trade mark, because Justice Venning had held that the mark was largely functional, not that it was purely functional. The Court observed that, in terms of the policy considerations underlying restrictions on registering functional marks, registration of Miller’s vine tie did not prevent others from using a vine tie. There were other ways of achieving the same functionality. Citing the Federal Court of Australia’s decision in Kenman Kandy Australia Pty Ltd v. Registrar of Trade Marks,706 the Court 706. (2002) 56 I.P.R. 30, para. 45. 588 Vol. 97 TMR held that the goods themselves could be the mark. It noted that any other approach would not give effect to the statutory recognition that a shape can be a mark. The Court further held that the evidence was sufficient to show that the mark was being used as a badge of origin. Fredco argued that Justice Venning considered two irrelevant factors. The first factor alleged was the scale of use of the vine tie for approximately 24 years. The Court of Appeal held that, while the evidence was not “extensive,” Justice Venning was right to conclude that the mark had acquired a distinctive character. The second factor was Justice Venning’s reliance on the availability of alternative shapes to achieve the same result as the vine tie. The Court noted that Justice Venning did not treat the availability of alternative shapes as a determinative factor and that it was not wrong for the Justice to consider it a relevant factor. Finally, the Court upheld Justice Venning’s finding that consumers used the shape of the vine ties to relate the ties back to Miller’s KLIPON brand, rather than the reverse. It also noted that it was possible for a mark to acquire distinctiveness even as part of another mark, citing the European Court of Justice’s decision in Société des Produits Nestlé SA v. Mars UK Ltd.707 On the facts, the Court held that the case was some way off the limping mark situation. The Court of Appeal’s decision was eagerly awaited after some commentators had criticized the High Court’s holding. Arguably, when it enacted the 2002 Act, the New Zealand Parliament did not intend to extend further the life of a patent by conferring trade mark rights on the shape of a previously patented product. The essence of patent law is to encourage competition by limiting the monopoly enjoyed by the patent holder to 20 years in order to give the patent holder sufficient time to profit from its innovative product. However, this decision could be seen as an extension in perpetuity of the patent by allowing the shape of the product to be monopolized by the trade mark owner, simply because the owner could show, through evidence of extensive use, that the mark had acquired a distinctive character. The consequence of enduring monopolies for functional-shaped items could be the stifling of competition, as the best designs for a particular product may be protected by a trade mark registration. 707. Case C-353/03, [2005] 3 C.M.L.R. 259 (ECJ, July 7, 2005). Vol. 97 TMR 589 NORWAY I.B.2. Merely Descriptive Terms Deutsche Telekom AG, the German telecommunications company, filed an appeal with the Second Division of the Norwegian Patent Office over the First Division’s decision refusing registration of its trademark A ONE, for goods and services in International Classes 9, 16, 35, 38, and 42, based on lack of distinctiveness. The Second Division upheld the refusal. It found that A ONE was an internationally known common term for quality classification and within the domain of free speech.708 I.B.9.a. No Similarity of Marks Best Western International, Inc., an American company, filed an appeal with the Second Division of the Norwegian Patent Office over the First Division’s decision granting the trademark registration for BESTE WESTERN (“THE BEST WESTERN”), applied for by a publishing house to cover publishing services in International Class 41. Albeit the appellant’s trademark BEST WESTERN is a wellknown mark for hotels, both the First Division and the Second Division held that the evidence submitted to the Patent Office did not show that Best Western’s rights in its mark had been extended to include publishing services. The Patent Office also found that the trademark BESTE WESTERN was descriptive for publishing services and that its registration would not result in a likelihood of consumer confusion.709 I.B.22. Distinctiveness The German pharmaceutical company Dermapharm AG filed an appeal with the Norwegian Patent Office’s Second Division over the First Division’s decision refusing registration of the trademark DERMAPHARM. The First Division had found the mark unregistrable on grounds of descriptiveness. The Second Division reversed the decision and allowed the mark to proceed to registration. It held that the combination of the two verbal elements, DERMA and PHARM, gave the mark sufficient distinctiveness, in keeping with previous decisions 708. Published by Lovdata, Case No. PS-2005-7338 (Norwegian Patent Office, Second Division, January 10, 2005). 709. Published by Lovdata, Case No. PS-2005-7345 (Norwegian Patent Office, Second Division, May 23, 2005). 590 Vol. 97 TMR allowing the registration of such marks as BABY DRY, HISTOFREEZER, and OVASTOP.710 SmithKline Beecham Plc, a British company, filed an appeal with the Borgarting Appeal Court (Borgarting Lagmannsrett) over the refusal by the Oslo City Court (Oslo Byfogdembete) to register a three-dimensional trademark for pharmaceuticals, in the form of an octagonal medical pill with an elevated pyramid on the top and bottom sides. Both divisions of the Norwegian Patent Office had previously rejected the application for lack of distinctiveness. The Borgarting Appeal Court upheld the previous instances’ refusal to register the mark, on the ground that the mark was not sufficiently distinctive. It also held that acceptance and registration of the mark in some other European jurisdictions was not directly binding on Norway under the European Economic Area Agreement, although such decisions do provide guidance for Norwegian intellectual property tribunals. The court noted that registration had been refused in a number of European countries.711 III.A.1. Famous Marks The U.S. and U.S.-owned firms Minnesota Mining and Manufacturing Company, 3M Innovative Properties Company, and 3M Norge A/S (collectively, 3M) filed suit in Kristiansand City Court against the Norwegian company Note-it AS for infringement of 3M’s trademark POST-IT, registered in Norway in 1980, 1994, 1995, and 1996. The First Division of the Norwegian Patent Office had deemed Note-it’s trademark NOTE-IT registrable, finding that it was not confusingly similar to 3M’s mark. The Second Division, however, had reversed the decision and refused registration on grounds of risk of confusion. Note-it AS had failed to appeal the Patent Office’s registrability decision to the Oslo City Court; such an appeal have precluded 3M from bringing suit until the Oslo City Court had rendered a decision. The Kristiansand City Court adopted the Patent Office’s reasoning concerning risk of confusion, because the defendant had used the slogan “NOTE-IT, don’t POST-IT” in its marketing. Noteit AS was prohibited from further use of its mark and was ordered to change its company name. However, the court rejected the plaintiffs’ claim for damages and payment of legal costs.712 710. Published by Lovdata, Case No. PS-2005-7408 (Norwegian Patent Office, Second Division, February 21, 2005). 711. Published by Lovdata, Case No. LB-2004-84319 (Borgarting Appeal Court, February 7, 2006). 712. Published by Lovdata, Case No. TKISA-2000-34328 (Kristiansand City Court, April 10, 2006). Vol. 97 TMR 591 The Norwegian mutual funds management company Stavanger Fondsforvaltning AS, trading as SkagenFondene (Skagen Mutual Funds) and having used the mark SKAGEN extensively, filed suit in Stavanger City Court against a Norwegian real estate brokerage company, Skagenmeglerne AS (Skagen Brokers), for trademark infringement. The court held that the defendant had infringed the plaintiff’s registered and well-known trademark. It deemed that the defendant’s mark SKAGENMEGLERNE (“SKAGEN BROKERS”) was similar to the plaintiff’s mark and that the services of the two parties also were similar (several Norwegian financial houses are involved in real estate brokerage and other real estate transactions). The defendant was prohibited from using SKAGENMEGLERNE as a trademark and was ordered to change its company name and pay the plaintiff’s legal costs.713 III.A.12. Distinctiveness Findexa AS, the largest publisher of telephone directories in Norway, filed an appeal with the Norges Høyesterett (Norwegian Supreme Court) over the Borgarting Appeal Court’s refusal of registration for the trademark GULE SIDER (“YELLOW PAGES”) in International Classes 9, 16, 35, and 38 on grounds of lack of distinctiveness. The appeal also covered infringement of Findexa’s trademark rights by another Norwegian company, FirmaKatalogen AS. The Supreme Court reversed the Appeal Court’s decision. It held that Findexa’s mark, though not distinctive per se, had acquired distinctiveness through substantial use over many years, and thus was validly registered.714 Firma-Katalogen’s use of a confusingly similar mark was deemed inappropriate. Findexa was awarded damages in the amount of NOK 775,000. The Supreme Court did not award either party legal costs for any of the three instances.715 713. Published by Lovdata, Case No. TSTVG-2005-178340 (Stavanger City Court, June 21, 2006). 714. Published by Lovdata, Case No. LB-2003-9931 (Borgarting Appeal Court, January 4, 2005). Reported at 96 TMR 491 (2006). 715. The Oslo City Court had awarded Findexa legal costs in the amount of NOK 130,000 (approximately USD 20,000). The Borgarting Appeal Court awarded FirmaKatalogen costs in the amount of NOK 80,888 for the city court case plus NOK 247,475 for the appeal court case. 592 Vol. 97 TMR In its opinion the Supreme Court mentioned the European Court of Justice’s holdings in Chiemsee716 and Philips,717 which it found to be of relevance for its decision.718 PANAMA I.A.3. Licenses In Victoria Enterprise, S.A. v. Lomani de Panama, S.A., the Third Superior Court confirmed the lower court’s decision and denied the defendant’s trademark application for L LOMANI & Design in International Class 25, based on the plaintiff’s priorregistered trademark LOMANI in Classes 3, 21, and 24 and on the similarity of the applied-for goods to the plaintiff’s goods in Class 24. The Court disregarded the defendant’s assertion of prior use of the trademark by the plaintiff based on use by a non-registered licensee. It affirmed that third-party use arising out of a license agreement can be considered as evidence of use by the trademark owner only if the license agreement has been duly registered with the Panamanian Trademark Office. While recognizing that the Panamanian Trademark Law allows use of a trademark by the owner or by third parties, the Court observed that the same law expressly establishes that for use by a third party to be regarded as use by the owner, the license agreement must be registered with the Trademark Office. As that requirement was not satisfied in this case, the Court found in favor of the plaintiff.719 I.B.3. Not Merely Descriptive Terms Kellogg Company appealed the lower court’s decision denying its request for the cancellation of the trademark registration for BRAN FRUT in International Class 30 by Grupo Bimbo, S.A. de C.V., on grounds of descriptiveness. Kellogg argued that the words BRAN FRUT described ingredients for products in Class 30 and, as such, could not be monopolized. Moreover, the translation of the word BRAN into Spanish corresponded to an ingredient of certain products, and therefore the BRAN FRUT mark was descriptive for 716. Windsurfing Chiemsee Produktions- und Vertriebs GmbH v. Boots- und Segelzubehör Walter Huber & Franz Attenberger, Joined Cases C-108/97 and C-109-97, [1999] E.C.R. I-02779 (ECJ, May 4, 1999). 717. Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd, Case C299/99, [2002] E.C.R. I-5475 (ECJ, June 18, 2002). 718. Published by Lovdata, Case No. HR-2005-01905 (Norwegian Supreme Court, December 6, 2005). 719. Victoria Enterprise, S.A. v. Lomani de Panama, S.A., First Judicial Circuit, Third Superior Court, April 28, 2006. See also I.B.8.b. Similarity of Goods/Services. Vol. 97 TMR 593 products manufactured from bran and fruit. Registration of a trademark comprising two common terms would, Kellogg asserted, preclude other companies from registering trademarks containing one of these terms or from using them. Grupo Bimbo countered that as its registration was for BRAN FRUT, not just BRAN, and the product protected was not just ground cereal grains, the trademark was not descriptive. Kellogg owned several trademark registrations containing the term BRAN, and therefore the grounds for allowing the registration of the plaintiff’s trademark ALL BRAN should likewise allow the registration of the defendant’s trademark BRAN FRUT. The Third Superior Court offered the following definition for descriptiveness: “A term shall be descriptive if it has a specific meaning conveying an absolute idea of the product or of any of the elements which characterize it or define it.” To establish whether BRAN FRUT was descriptive for products in Class 30, said the Court, one needed to ask the following questions: What product is it? How is the product made? Where does it come from? When was it manufactured, and how much is it? The Court found that, normally, the answer to each of these questions was an adjective; the answers determined whether the mark was descriptive. Applying this test to the mark at issue, the Court held that the expression BRAN FRUT did not directly describe the nature, characteristics, applications, effects, use, quality, destiny, or value of products in Class 30, as the word BRAN was not the answer to any of the questions. Rather, BRAN FRUT was a suggestive mark, as it suggested or evoked qualities or characteristics of the products without describing them. The fact that there were many registered trademarks containing the term BRAN confirmed that the trademark BRAN FRUT was not descriptive for Class 30 products. Consequently, the Third Superior Court confirmed the lower court’s decision.720 Evidently, BRAN FRUT will bear the burden and risks of weak trademarks, as it is extremely suggestive. This is a landmark case, as the Court provided a definition of and a test for establishing descriptiveness. I.B.8.a. Similarity of Marks The Third Superior Court confirmed the lower court’s denial of registration of the trademark RLA & Design in the name of Grupo Asociado Platina, applied for to cover products in International Class 11, on the grounds of similarity with RCA Trademarks S.A.’s registered trademark RCA, for products in the same class. While 720. Kellogg Company v. Grupo Bimbo, S.A. de C.V., First Judicial Circuit, Third Superior Court, April 25, 2006. 594 Vol. 97 TMR recognizing that it was not unusual to find trademarks formed by letters only, especially in the domestic electrical products industry (e.g., LG; JVC, and RCA), the Court ruled against the defendant based on the similarity between the letters used in the two marks and the lack of distinctiveness of the design element of the appliedfor mark. The Court added that the letters of the defendant’s trademark were in the same typeface as that used in the design of the plaintiff’s trademark. Although the plaintiff’s trademark was not registered in Panama, the Court held that its registration in Class 11 in other Interamerican Convention member countries afforded the mark protection in Panama.721 The Third Superior Court confirmed the decision of the lower court denying the application for registration by Empresas Adoc, S.A. de C.V., of the advertisement mark ULTRAFLEX LATEX SOLE & Design in Class 25 on the ground of likelihood of confusion with previous registration petition of ULTRAFLEX of Las Vegas Internacional, S.A. in Class 24. The Court based its decision on the plaintiff’s previous use and registration petition of its trademark ULTRAFLEX in Class 24, along with the fact that the advertisement and the trademark shared the prominent part (Ultraflex). The Court went further to affirm the provision of the Trademark Law establishing that trademarks and commercial names can only be part of advertisement marks belonging to the owner of the trademark or commercial name.722 The Third Superior Court affirmed the Eighth Circuit Court’s decision denying the registration by Inversiones Vida, S.A. de C.V., of the trademark ALPINA & Design, covering bottled water in Class 32, on the grounds of its similarity with the prior-registered trademarks ALPINA & Design, ALPINA & Label, and ALPINA in Classes 29 and 32 in the name of Alpina Porductos Alimenticios, S.A. The Court established that the connection between Classes 29 and 32 did not allow coexistence of the trademarks. It disregarded the defendant’s contention that consumers of bottled water were selective in their choice. Confirming the criteria set out by the lower court on the issue of class connection, the Court confirmed that the key elements were the nature of the products, use, application or destination, place of commercialization, and kind of consumer. 721. RCA Trademark Management, S.A. v. Grupo Asociado Platina, First Judicial Circuit, Third Superior Court, August 3, 2005. 722. Las Vegas Internacional, S.A. v. Empresas Adoc, S.A. de C.V., First Judicial Circuit, Third Superior Court, September 23, 2005. Vol. 97 TMR 595 The Court also dismissed the defendant’s argument that its trademark ALPINA should bear the burden of a weak trademark as it evoked the Alpine mountains. It ruled that if such were the case, evidence that the bottled water to be protected by the ALPINA mark was from the Alps should have been submitted.723 Smithkline Beecham Corporation and Beecham Group p.l.c. filed opposition against the trademark registration by ColgatePalmolive Company for MAX FRESH, covering products in Class 3, on the basis of the prior-registered trademark AQUAFRESH, registered since 1992 for products in the same class, and conceptual similarity. The Third Superior Court confirmed the lower court’s decision and allowed the MAX FRESH mark to proceed to registration. In confirming the previous holding, the Third Superior Court established that defendant was able to show that “FRESH” was descriptive for dental products with the presentation of more than 30 trademarks containing the term FRESH was a qualifier for AQUA and for MAX, said the Court. This having been established, the Court moved to the comparison of the words AQUA and MAX. It held that pose no risk of confusion as these words do not denote visual, phonetic, orthographic, or conceptual similarity. The Court disregarded contempt of ideological or conceptual similarity between AQUAFRESH and MAX FRESH and, on doing so, it further established that the strong influence of the Anglo culture in Panama up to the end of the 20th century had exposed the Panamanian consumer to the English language and such exposure will allow the medium-level consumer to differentiate the meaning of each word.724 This holding reverses the Court’s previous view, which gave no credit to the exposure of Panamanian consumers to English. I.B.8.b. Similarity of Goods/Services The Third Superior Court confirmed the lower court’s decision and denied the application by Lomani de Panama, S.A. for registration of the trademark L LOMANI & Design, to cover products in International Class 25, based on the products’ similarity to those protected by the trademark LOMANI, registered by Victoria Enterprise, S.A. for products in Classes 3, 21, and 24. Although the trademarks covered products in different classes, the Court found that the textile products protected by the 723. Alpina Productos Alimenticios, S.A. v. Inversiones Vida, S.A. de C.V., First Judicial Circuit, Third Superior Court, October 27, 2005. 724. Smithkline Beecham Corporation & Beecham Group p.l.c. v. Colgate-Palmolive Company, First Judicial Circuit, Third Superior Court, March 3, 2006. 596 Vol. 97 TMR plaintiff’s trademark in Class 24 could well encompass scarves, belts, and other items, which are normally sold in the same department or in sections close to where the defendant’s products, consisting of intimate clothing and perfumes, would be sold. It held that there was a connection between the defendant’s and the plaintiff’s goods, as both were geared toward the fashion world, and that such connection rendered the trademarks confusingly similar.725 I.B.9.a. No Similarity of Marks No likelihood of confusion may arise on similar trademarks with designs when the originality of the design of one of them is able to capture consumer’s attention, established the Third Superior Court on affirming the decision of the lower court that allowed the registration of the trademark GUIA DORADA & Design by Publitel de Panama, S.A., in International Classes 16 and 35. The Court ruled out similarity with plaintiff Publicar de Colombia, S.A.’s previously registered word and design mark PAGINAS DORADAS PUBLICAR, S.A., for products in Classes 16 and 35, as the originality of the design became the preponderant part of the trademark, especially when the colors of the design and its formulas had been vindicated as part of the design. The lower court had established that the word DORADAS, as used in the plaintiff’s trademark, evoked the idea of quality or superiority, by contrast with the use of that word in the defendant’s trademark, where DORADA (“GOLDEN”) was an adjective modifying the noun GUIA (“GUIDE”). Even if one attributed the same meaning to the word in both marks, it did not foster similarity as the word was used to describe different objects (GUIA and PÁGINAS (“PAGES”)). The Third Superior Court’s ruling confirms previous holdings establishing that a prominent design may rule out similarity.726 The Third Superior Court confirmed the first-level court decision allowing the registration of the trademark PANAMA Y LO NUESTRO & Design in Class 16 by defendant Nilda Esther Moreno Sandarriaga, notwithstanding the prior registration of the trademarks LO NUESTRO in Class 38 and LO NUESTRO 102.1 FM & Design in Class 41 as of 2002 by plaintiff Multitone Corp. The Court ruled out prior use alleged by the defendant, holding that discontinuance of use for a term of 16 to 18 years impaired a prior use defense. 725. Victoria Enterprise, S.A. v. Lomani de Panama, S.A., First Judicial Circuit, Third Superior Court, April 28, 2006. See also I.A.3. Licenses. 726. Publicar de Colombia, S.A. v. Publitel de Panamá, S.A., First Judicial Circuit, Third Superior Court, June 30, 2005. Vol. 97 TMR 597 Notwithstanding that holding, the Court found in favor of the defendant on the basis of no likelihood of confusion of the marks at issue and lack of connection among Classes 16, 38, and 41.727 I.B.19. Slogans The Third Superior Court confirmed the lower court’s denial of the registration for the trademark SI ES GOYA, TIENE QUE SER BUENO (“IF IT’S GOYA, IT’S GOT TO BE GOOD”) in International Classes 29, 30, and 32 by the defendant Goya Foods, Inc. in the opposition filed by plaintiff BDS Two, Inc. BDS Two had evidenced prior use and registration of its trademark in Class 29 in the United States as of 1945 and 1988, respectively. Goya failed to evidence claimed prior use as of 1939. The Court found that the defendant’s trademark was a mere translation of the plaintiff’s trademark into Spanish. It established that the fact that the main trademark from which each trademark originated was part of each one had no impact on the idea that both trademarks conveyed. The Court added that the plaintiff’s ample advertisement of its trademark had generated a distinctive meaning among consumers. It did not, however, go further to analyze the plaintiff’s dilution contempt, a course of action that needs to be taken to clarify dilution criteria.728 III.A.6. International Conventions On confirming the lower court’s decision cancelling the trademark registration for PRO-1000 PLUS in International Class 2 by Comercial Mexicana de Pinturas, S.A. de C.V., the Third Superior Court established that members of a convention have the right to refuse the registration of a trademark registered in a member country if such registration affects third parties’ previously acquired rights, especially if the recognition granted by the registration disregards legally acquired rights in the country where protection is claimed. The Court found in favor of the plaintiffs, which had evidenced prior registration of their trademarks PRO-1000, PRO-270, and PRO-370 in Costa Rica, a member country of the Interamerican Convention. It overruled the defendant’s argument that PRO was a term commonly used as indication of professional use, as no evidence geared toward proving such argument was filed. On the contrary, the Court found that the argument that PLUS was generic for a quality of the product was evidenced by the filing of several products bearing that term. 727. Multitone Corp. v. Nilda Esther Moreno Sandarriaga, First Judicial Circuit, Third Superior Court, July 26, 2005. 728. BDS Two Inc. v. Goya Foods, Inc., First Judicial Circuit, Third Superior Court, April 28, 2006. 598 Vol. 97 TMR In regard to the issue of coexistence, the Court established that evidence of long-lasting market coexistence and not of mere registration coexistence can diminish likelihood of confusion. It did not, however, go further to establish what the requirement for a long-lasting coexistence would be.729 PARAGUAY I.B.8.a. Similarity of Marks The Paraguayan firm Fármaco S.R.L. applied for registration of the trademark AMOXICLER, to cover pharmaceutical products in International Class 5. SmithKline Beecham Corporation, a company based in the United Kingdom, filed an opposition against this application on the basis of its Paraguayan registration for the trademark AMOXIL, also for pharmaceutical products in Class 5. The opposition was rejected by the Chief of the Litigation Department of the Trademark Office on the ground that AMOX is a generic radical for Class 5.730 On appeal, the Director of the Trademark Office revoked the decision of the Chief of the Litigation Department and rejected the trademark application for AMOXICLER.731 The main point made by the Director in his decision was that the marks had visual and phonetic similarities that could lead to confusion among consumers. In particular, they had in common the prefix AMOXI-, which, the Director determined, was the main element in both. Fármaco then filed a judicial action before the First Exchequer Court of Justice. The Court, after analyzing the arguments made by the Chief of the Litigation Department and the Director of the Trademark Office, held that, as consumers do not have any specific pharmaceutical knowledge, trademarks used on or in connection with pharmaceuticals must be easily distinguishable, so that consumers are not required to analyze each one. Further, the Court expressed the view that protection should extend not only to the trademark owner but also to potential consumers, who might believe that they were purchasing a certain pharmaceutical product according to a medical prescription but could be mistakenly led to purchase a different product with a similar trademark. 729. Fábrica de Pinturas Glidden, S.A., Kativo Chemical Industries, S.A. & H.B. Fuller Company v. Comercial Mexicana de Pinturas, S.A. de C.V., First Judicial Circuit, Third Superior Court, October 21, 2005. 730. Smithkline Beecham Corp. v. Fármaco S.R.L., Decision No. 66, Chief of Litigation Department, Trademark Office, February 23, 2000. 731. Resolution No. 104, Director of Trademark Office, June 27, 2002. Vol. 97 TMR 599 In conclusion, the First Exchequer Court of Justice held that the applied-for mark AMOXICLER could not coexist with the registered trademark AMOXIL. Consequently, the Court affirmed the resolution of the Director of the Trademark Office.732 Until recently, the criterion used to judge the likelihood of confusion between marks used in connection with medications had been elastic. Now, however, as this decision shows, the likelihood of confusion between trademarks for medications is to be judged more strictly. The criterion in this case was not considered correctly, however, because in Class 5 there are many trademarks with the prefix AMOX-. PORTUGAL I.B.2. Merely Descriptive Terms DIETAMED-Produtos Dietéticos e Medicinais, Ldª. filed an appeal against the decision of the Portuguese Industrial Property Office (IPO) that refused the registration of the trademark VERALOÉ, designating “dietetic substances for medicinal purposes” in International Class 5,733 on the ground that the mark lacked distinctive character. The provisions of the Portuguese Industrial Property Code734 require refusal of registration of a mark lacking distinctive character or consisting exclusively of an indication of the nature, quality, or other features of the product.735 The Low Court determined that consumers viewing the trademark VERALOÉ would immediately assume that it was intended for products containing aloe vera. Although the mark VERALOÉ included both these words in an inverted position, that fact did not, the Court held, confer on it the required distinctiveness. The Court further determined that the expression VERALOÉ merely described the composition of the products for which the mark was intended. Accordingly, the Court ruled that the IPO’s refusal decision should be maintained.736 732. Decision No. 53, First Exchequer Court of Justice, August 1, 2005. 733. Portuguese Trademark Application No. 370.680, filed March 11, 2003. 734. Decree-Law No. 36/2003 of March 5, 2003. 735. Portuguese Industrial Property Code Article 223(1)(a), (c). 736. Low Court, June 23, 2005, published in Portuguese Industrial Property Bulletin No. 1/2006, January 31, 2006, p. 18. 600 Vol. 97 TMR I.B.9. No Likelihood of Confusion Orlane SA filed an appeal with the Low Court against the decision of the Portuguese Industrial Property Office that granted registration of the trademark B20,737 designating products in International Classes 3, 18, and 25, in the name of El Corte Inglês, SA. Orlane argued that the mark was confusingly similar to its various well-known registered trademarks incorporating the distinctive element B21.738 The Low Court reversed the decision of the IPO and refused trademark protection for the B20 mark for all the products included in all the classes covered. El Corte Inglês appealed to the High Court, arguing that registration should have not been refused in respect of nonperfumery products. Orlane argued that the marks were practically identical and that they covered identical or similar products, thus misleading the consumer as to the origin of the products. It further argued that its B21 trademarks were well-known marks and that the refusal of trademark registration for B20 on grounds of unfair competition was correct. The High Court ruled that the products in Class 18 (leather goods, animal skins, etc.) and Class 25 (clothing, footwear, and headgear) designated by the B20 mark were not similar to those in Class 3 that were covered by the B21 marks (soaps, perfumery, essential oils, cosmetics, hair lotions, and dentifrices), and thus no competition on the market could arise among them. In addition, the High Court held that as the B20 mark included a striking device aspect and the B21 marks were not composed exclusively of a letter and a numeral but included other word and device elements, the marks were not confusingly similar. Therefore, there was no possibility of unfair competition. The High Court confirmed the IPO’s decision granting trademark protection for B20 for all the goods covered.739 III.A.2.b. Similarity of Marks Sotorock Holding Ltd. filed an appeal against the Portuguese Industrial Property Office’s decision granting the registration of the Portuguese trademark D.SAMPLE, for clothing in 737. Portuguese Trademark Registration No. 351.668, filed November 29, 2000, and granted February 23, 2005. 738. International Registration Nos. 490.424 (B21 BIO ENERGIC ORLANE), 618.543 (B21 BIO ENERGIC), 679.630 (B21 OLIGO VIT-A-MIN), and 727.702 (BE 21), in the name of Orlane SA for products in Class 30. Registration Dates: No. 490.424, January 7, 1985; No. 618.543, May 24, 1994; No. 679.630, September 16, 1997; No. 727.702, January 3, 2000. 739. El Corte Inglês, SA v. Orlane SA, Case No. Proc. 2149/2003-7 (TRL) (High Court, April 29, 2003), available at www.dgsi.pt (in Portuguese). Vol. 97 TMR 601 International Class 25, in the name of Paulo Alexandre Pinheiro dos Santos.740 Sotorock argued that the mark was confusingly similar to its registered trademark SIMPLE, covering “clothing, including footwear and headgear” in Class 25.741 Noting that this case involved the interpretation of the provisions of the Portuguese Industrial Property Code regarding the assessment of distinctiveness,742 the Low Court concluded that the marks at issue should be compared as a whole, in terms of all their elements, and not by assessing their individual dissimilarities. The Court found that the distinctive element of the trademark D.SAMPLE was the word SAMPLE, which was confusingly similar to the word SIMPLE. It further determined that the fact that both marks consisted of English words whose meaning had no direct connection to the respective products covered could enhance the possibility of confusion. Consequently, the Court reversed the decision of the IPO and ruled that the trademark registration for D.SAMPLE should be refused.743 III.B.8. Slavish Imitation J & P Coats, Ltd. filed an appeal against the decision of the Portuguese Industrial Property Office that granted the registration of the Portuguese trademark VEADO & Device (below, illustration at left; veado means “deer”), for thread in International Class 23, in the name of Linhas Afemar, Lda.744 J & P argued that it was the owner of a trademark consisting of the device of a goat (below, illustration at center), registered in 1964 and designating similar products in the same class.745 The company further contended that it had been using on the market, since 1993, a label with the same configuration as the device mark at issue but displaying its goat device instead of the deer. It added that the mark VEADO & Device was being used in a label that was a copy of J & P’s own label, and that such use constituted an act of unfair competition. The Low Court reversed the decision of the IPO and refused the registration of the trademark VEADO & Device. 740. Portuguese Trademark Registration No. 359.223, filed October 9, 2001, and granted November 14, 2003. 741. Portuguese Trademark Registration No. 304.452, filed October 17, 1994, and granted May 16, 1997. 742. Portuguese Industrial Property Code Article 245. 743. Sotorock Holding Ltd. v. Paulo Alexandre Pinheiro dos Santos (Low Court, September 22, 2004). 744. Portuguese Trademark Registration No. 331.661, filed July 24, 1998, granted January 4, 1999, refused by court order of April 29, 2005. 745. Portuguese Trademark Registration No. 121.738 (CABRA), filed December 23, 1963, granted August 17, 1964. 602 Vol. 97 TMR Linhas Afemar filed an appeal with the High Court against the Low Court’s refusal decision. The High Court noted that this case involved the interpretation of the law with respect to the requirements for distinctiveness and the standards for assessing confusing similarity of marks. It recognized that J & P Coats had been using its label since 1993 on the market, despite the fact that it had not applied for registration until 1999 (below, illustration at right).746 The High Court ruled that the marks were confusingly similar, not only from a graphic point of view but also with respect to the colors used, wording, and chosen symbol, and that they designated identical products. It further ruled that the VEADO & Device mark of Linhas Afemar was a copy of the label used by J & P Coats since 1993, although the former company had registered its mark first. In view of the above, the High Court affirmed the refusal decision of the Low Court on the ground of unfair competition.747 Label with Linhas Afemar’s Mark VEADO & Device J & P Coats’ Goat Device Mark (Reg. No. 121.738) J & P Coats’ Label (Reg. No. 338.740) 746. Portuguese Trademark Registration No. 338.740 (CABRA ALGODÃO & Device), filed July 27, 1999, and granted March 2, 2000, in the name of J & P Coats, Ltd., designating “thread” in Class 23. 747. Linhas Afemar, Lda. v. J & P Coats, Ltd., Case No. 10778/2004-6 (High Court, January 29, 2004), available at www.dgsi.pt (in Portuguese). Vol. 97 TMR 603 REPUBLIC OF SOUTH AFRICA I.B.7.b. Three-Dimensional Marks In Die Bergkelder Beperk v. Vredendal Koöp Wynmakery,748 the registrability of a three-dimensional mark (a wine bottle) was considered by the South African Supreme Court of Appeal. The court stressed that from a legal perspective, container trade marks do not differ from any other kind of trade mark—that is, they must be capable of distinguishing the goods or services of one proprietor from those of another. The container in question (see below), which is known as a Bocksbeutel, has been in constant use by Franconian vintners for at least 500 years. The appellant had been marketing its GRÜNBURGER line of wines in Bocksbeutels in South Africa since the early 1950s and had had extensive sales. While Bergkelder is the only South African producer marketing wine in such containers, Portuguese wines are also sold in South Africa in Bocksbeutels. In considering the registrability of the container mark, the court determined that, “[s]ince containers are not usually perceived to be source indicators, a container must, in order to be able to fulfil a trade mark function, at least differ ‘significantly from the norm or custom of the sector’.”749 The court was influenced by the preexistence of the Franconian and Portuguese Bocksbeutels. On the facts, it concluded that the appellant’s container trade mark could not be a badge of origin in the ordinary trade mark sense, and it ordered the mark expunged from the register. In future legal proceedings relating to container marks, or indeed any three-dimensional marks, the proprietor of the mark in question would be well advised to adduce evidence relating to the norms or customs of the sector in question. The public perception of containers as a source indicator would differ between goods such as alcoholic beverages, perfumes, hair shampoos, and foodstuffs. 748. Case No. 105/05, 2006 4 SA 275 (SCA, March 9, 2006), available at www.supremecourtofappeal.gov.za/judgments/sca_judg/sca_2006/105_05.pdf. 749. Quoting Henkel KGaA v. OHIM, Joined Cases C-456/01 P and C-457/01 P, [2004] E.C.R. I-5089, para. 39 (ECJ, April 29, 2004). 604 Vol. 97 TMR Once the norm has been established, the proprietor must establish that its mark differs significantly from the norm to be capable of distinguishing its goods. The message from the South African Supreme Court of Appeal is clear. It will scrutinise three-dimensional marks for registrability in the future in order to ensure that such marks do not afford the applicant a patent-like or industrial design-like monopoly in the mark. RUSSIAN FEDERATION I.B.8.a. Similarity of Marks The Presidium of the Russian Federation Higher Arbitrazh Court issued two important rulings that may serve as precedents in cases involving confusing similarity of trademarks. OAO Vena a joint stock company, is the owner of the word mark NEVSKOYE, registered in International Classes 21, 32, 33, and 42 (in particular for beer, and for food and beverage supply services). The company applied to the Chamber for Patent Disputes of the Russian Patent Office (CPD) for cancellation of the registration for the combined trademark AMRO NEVSKOYE, registered in the name of OOO Black-Jack-1, a limited liability company, with respect to Classes 29 (for shrimp, pistachio nuts, salted and dried fish, nuts, and seeds) and 30, because of the similarity of the trademarks and the likelihood of confusion of consumers. The CPD denied the application on the ground that the marks under comparison were registered with respect to dissimilar goods. OAO Vena appealed. The Moscow Arbitrazh Court vacated the CPD decision,750 but the Ninth Appellate Arbitrazh Court reversed the lower court’s ruling751 and the Federal Arbitrazh Court for Moscow and Moscow Region affirmed the reversal.752 On further appeal, the Higher Arbitrazh Court overturned the Federal Arbitrazh Court’s decision and reversed the CPD’s ruling refusing cancellation of the trademark registration for AMRO NEVSKOYE.753 At the hearing, the CPD representatives argued that according to Russian Patent Office rules and practice, beer 750. OAO Vena v. OOO Black-Jack-1, Moscow Arbitrazh Court, Decision No. A4063533/04-67-642, March 23, 2005, available at www.arbitr.ru. 751. Ninth Appellate Arbitrazh Court, Resolution No. 09AP-5702/05-GK, June 21, 2005, available at www.arbitr.ru. 752. Federal Arbitrazh Court for Moscow and Moscow Region, Resolution No. KAA40/10576-05, December 8, 2005, available at www.arbitr.ru. 753. Presidium of the Russian Federation Higher Arbitrazh Court, Resolution No. 2979/06, July 18, 2006 (unpublished). Vol. 97 TMR 605 and snacks should not be reckoned similar goods. However, in its ruling the Higher Arbitrazh Court referred to international practices that require that target consumer groups be taken into consideration when determining whether goods covered by similar trademarks may be viewed as complementary. Beiersdorf AG, the owner of the trademark NIVEA & Device (see below, illustrations at top), applied to the CPD for cancellation of the registration for the trademark LIVIA & Device (see below, illustration at bottom), registered in the name of OOO BRKCosmetics, as confusingly similar. Both the CPD and all three lower courts ruled in favor of the dissimilarity of the trademarks NIVEA & Device and LIVIA & Device.754 The Higher Arbitrazh Court reversed, holding that despite the difference in the word elements the graphic parts of the marks were close enough to create likelihood of confusion. In making its determination, the court also took into account the fact that the words NIVEA and LIVIA were the same length and that the three letters common to both were in the same position.755 The ruling was counter to prior Russian Patent Office practice, which had always favored the word elements of a trademark above the figurative ones. It is noteworthy that in both the foregoing cases the Higher Arbitrazh Court emphasized that the use of an imitative 754. Beiersdorf AG v. OOO BRK-Cosmetics, Moscow Arbitrazh Court, Decision No. A4010573-04/5-92, June 16, 2005; Ninth Appellate Arbitrazh Court, Resolution No. 09AP9456/05-AK, September 14, 2005; Federal Arbitrazh Court for Moscow and Moscow Region, Resolution No. A40-10573/04-5-92, December 27, 2005. All available at www.arbitr.ru. 755. Presidium of the Russian Federation Higher Arbitrazh Court, Resolution No. 3691/06, July 18, 2006 (unpublished). 606 Vol. 97 TMR trademark should be treated as an act of unfair competition, something that the CPD and the courts were careful to avoid in the past, when the issue of confusing similarity was always treated separately from that of unfair competition. SINGAPORE I.B.11.e. Bad Faith Rothmans of Pall Mall Limited v. Maycolson International Ltd756 marked the first time that the High Court addressed the issue of bad faith under the Singapore Trade Marks Act. Rothmans had registered numerous trade marks in International Class 34, including six trade marks containing a device consisting of a dark-blue background framed by a gold/yellow border, a crest at the top, and a banner at the bottom. All but one of these trade marks contained the word ROTHMANS. Maycolson, a British Virgin Islands company, was a licensee of the Hertlein brothers, who were involved in a number of legal proceedings with Rothmans over the use of the trade mark FAIRLIGHT. Maycolson filed an application in Class 34 to register a word and device mark comprising the word FAIRLIGHT on a blue, hexagon-shaped background. Rothmans opposed Maycolson’s trade mark application on three grounds: (1) Maycolson’s mark was so similar to Rothman’s marks that it was likely to cause confusion; (2) the applied-for mark was not registrable, as it breached the law of passing off and copyright; and (3) Maycolson’s application was filed in bad faith. The Registrar dismissed Rothmans’ opposition on all three grounds, finding that the marks were not similar and that there was no likelihood of confusion. The Registrar also held that there was no passing off or infringement of copyright. In addition, Maycolson had not acted in bad faith, as failure to make inquiries regarding the mark did not justify a finding of bad faith. On appeal by Rothmans, the High Court considered the appropriate test for bad faith under Section 7(6) of the Trade Marks Act.757 It held that a “trade mark applicant should bear a positive duty to investigate into the bona fides of a mark before seeking registration.” A duty to make reasonable inquiries was a necessary corollary to disproving bad faith. This duty had to be imposed on an applicant if the circumstances would lead a reasonable person to harbour suspicions as to the propriety of the proposed mark. Even where further inquiries did not reveal clear 756. [2006] 2 SLR 551. 757. Section 7(6) provides: “[A] trade mark shall not be registered if or to the extent that the application is made in bad faith.” Vol. 97 TMR 607 and conclusive evidence of a legal breach, a breach of the applicant’s duty could arise. Allowing the appeal, the High Court found that although the marks in question were not similar, bad faith existed. Bad faith was distinct from breach of a legal requirement and included conduct that might be morally reprehensible although not illegal. The Court took the view that regard should be had to the overseas proceedings involving the trade mark, as they might be an indication of the impropriety of the proposed mark. In arriving at its decision, the High Court took into consideration the following factors: (1) the circumstances surrounding the incorporation of Maycolson were highly suspicious in nature; (2) Maycolson had no place, or no proper place, of business in Singapore; (3) there was no evidence that Maycolson had been involved in distributing or intended to distribute the goods; and (4) the online advertisements placed by the Hertlein brothers blatantly claimed that FAIRLIGHT cigarettes were similar in taste and packaging to ROTHMANS cigarettes. This suggested that Maycolson was simply a shell company set up to allow the Hertlein brothers to continue their bad-faith use of the FAIRLIGHT trade mark. III.A.11.a. No Similarity of Marks In Polo/Lauren Co., LP v. Shop-In Department Store Pte Ltd.,758 the Court of Appeal considered the requirements for infringement under Section 27(2) of the Trade Marks Act.759 Polo/Lauren Company, LP had registered six trade marks in International Class 25: POLO (word mark), POLO BY RALPH LAUREN (word mark), RALPH LAUREN & Polo Player Device, POLO RALPH LAUREN & Polo Player Device, LAUREN RALPH LAUREN (word mark), and RALPH LAUREN (word mark). ShopIn Department Store, a private limited company incorporated in Singapore, had filed trade mark applications for the word mark POLO PACIFIC in Classes 18 and 25; these were accepted by the Registry although opposition proceedings brought by Polo/Lauren were pending. In the meantime, Shop-In began to sell goods bearing the mark. Polo/Lauren sued for trade mark infringement. 758. [2006] SGCA 14. 759. Section 27(2) provides: “A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because— (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public.” 608 Vol. 97 TMR The trial judge held that the plaintiff’s mark had not been infringed, and dismissed the claim. Polo/Lauren appealed. The Court of Appeal found that the marks were not similar, and dismissed the appeal. Applying the test in British Sugar plc v. James Robertson & Sons Ltd,760 instead of the global assessment test, it held that Section 27(2) of the Trade Marks Act would be contravened only if three conditions were present: (1) the alleged offending mark was shown to be similar to the registered mark; (2) both the offending mark and the registered mark were used in relation to similar goods or services; and (3) there existed a likelihood of confusion on the part of the public on account of the presence of the first two conditions. On the facts, the Court found that the word POLO was not per se distinctive, being a common English word, and that the incorporation of the entire registered word mark POLO into a trade mark did not automatically amount to infringement. Further, of significance was the fact that Polo/Lauren did not in practice use the mark POLO alone on its goods. Instead, it was always accompanied by other words, and therefore had not acquired distinctiveness. The Court of Appeal held that the question of likelihood of confusion had to be looked at globally, taking into account all the circumstances, including the closeness of the goods, the impression given by the marks, the possibility of imperfect recollection, and the risk that the public might believe that the goods came from the same source or from economically linked sources. Other extraneous factors, such as the steps taken by the allegedly infringing party to differentiate its goods from those of the registered proprietor, and the type of customer who would be likely to buy their respective goods, could also be taken into consideration when determining the likelihood of confusion. Therefore, although the marks at issue were used in relation to similar goods, there was no likelihood of confusion. Unlike Polo/Lauren, which sold its goods in up-market boutiques located in prime shopping areas, Shop-In operated suburban stores selling goods aimed at the mass market. There was also a great price disparity between their respective goods, and the customers targeted by Polo/Lauren were likely to be more discerning and sophisticated. This decision is significant, as it establishes that the British Sugar test is the test for infringement of a trade mark under Section 27(2) and makes clear that in determining likelihood of confusion the courts may look at extraneous factors beyond similarity of marks and goods. 760. [1996] RPC 281. Vol. 97 TMR 609 SOUTH KOREA I.A.3. Licenses In Loufrani v. Wal-Mart Stores Inc.,761 the Korean Supreme Court affirmed the Korean Patent Court’s decision and held that a licensee’s failure to register its trademark license invalidated its sublicense of the mark and consequently left the mark vulnerable to cancellation on grounds of non-use. On January 1, 1998, Franklin Loufrani, a French individual, and Smiley Licensing Corporation Limited, a London-based company of which Mr. Loufrani was then the president, entered into a master license agreement for the use of the world-famous SMILEY logo, covering all designated goods, namely, plastics, engravings, pictures, books, newspapers, magazines, calendars, diaries, catalogues, posters, phone cards, credit cards, paintings, and writings.762 On June 3, 1999, the corporation, which had changed its trade name to SmileyWorld Limited (SWL), sublicensed the mark to Two.n.5 Inc., a Korean company, for use on calendars and diaries. During the licensing process, however, SWL failed to register its exclusive license with the Korean Industrial Property Office (KIPO). The American corporation WalMart Stores Inc., which had long used the SMILEY logo as a personification of its price-reducing policy, brought an action before the Korean Industrial Property Tribunal (KIPT) of the KIPO for cancellation of Mr. Loufrani’s registration on grounds of non-use. SWL’s failure had fatal consequences. The Patent Court held, and the Supreme Court affirmed, that since the company did not register its exclusive license with the KIPO, it had no right to sublicense the mark, and therefore Two.n.5’s use of the mark amounted to non-use for purposes of Wal-Mart’s cancellation action. Consequently, Mr. Loufrani’s registration was cancelled. III.A.2.b. Similarity of Marks One of the world’s most well-known fashion houses, Gianni Versace, prevailed in a trademark infringement action against Alfredo Versace based on consumer recognition of just the name VERSACE. The Seoul Eastern District Court held that, although the marks GIANNI VERSACE and ALFREDO VERSACE might appear different when viewed as a whole, there was a strong likelihood that ordinary consumers perceived the mark GIANNI 761. 2004 Hu 2529 (Supreme Court, May 12, 2006). 762. Mr. Loufrani, who claims to have invented the SMILEY logo in 1968, first registered the mark in France in 1971. 610 Vol. 97 TMR VERSACE in terms of the last name, VERSACE, alone. Consequently, the Court found, there was a likelihood of confusion as to the source of the designated goods. The Court held that the defendant’s mark ALFREDO VERSACE was confusingly similar to the plaintiff’s mark GIANNI VERSACE. It added that “the fact that the two marks come from English names should not be the decisive basis for inseparable combination in comparing for similarity.”763 III.A.17. Descriptive Use The KIPT and the Korean Patent Court held that the word STAR in the mark STAR JEWELRY, designating goods in precious metals and stones, was descriptive. On appeal, the Korean Supreme Court reversed, holding that the word STAR was merely suggestive. The Supreme Court found that STAR, in connection with the designated goods, could suggest, but did not directly describe, the quality or nature of the designated goods.764 SWEDEN I.B.9.a. No Similarity of Marks AGA AB, a Swedish public limited liability company, applied for registration of the trademark THEROX for goods and services in International Classes 5, 6, 9, 11, and 42, in particular for apparatus and instruments for weighing, measuring, and control of gas in Class 9. The mark was registered by the Swedish Patent Office.765 Xerox Corporation and Rank Xerox Limited filed opposition on the basis of the prior registration for the trademark XEROX.766 That registration covered, inter alia, the identical goods in Class 9: apparatus and instruments for weighing, measuring, and control. The Patent Office dismissed the opposition, although it admitted that there was a certain visual and phonetic similarity between the marks. These were, however, determined to be sufficiently different in their entireties, and the buying circles were considered to have sufficient professional knowledge to differentiate the marks and their respective goods. The opponents filed an appeal. 763. Gianni Versace v. Alfredo Versace, 2005 Kahap 4992 (Seoul Eastern District Court, April 28, 2006). 764. Star Jewelry Inc. v. Jae Ho Chung, 2005 Hu 2786 (Supreme Court, July 28, 2006). 765. Registration No. 337429, Swedish Patent Office, June 5, 2003. 766. Registration No. 110322, Swedish Patent Office, July 3, 1964. Vol. 97 TMR 611 The Swedish Court of Appeal upheld the Patent Office’s decision, essentially on the same basis as had been given for granting the registration. The Court observed that the opponents had not stated anything that could have any bearing on the distinctiveness of the trademark XEROX.767 SWITZERLAND I.B.3. Not Merely Descriptive Terms The Federal Institute rejected for registration the service mark STARS FOR FREE, covering artistic services and musicals in International Class 41. On appeal, the Federal Commission accepted the mark and ordered that it be registered.768 The Commission found that STARS FOR FREE was not a standard expression and could be understood only (if at all) after one applied some thought to it. That was particularly true in this case, as artists’ services and musicals usually are not performed “for free.” The fact that the mark was registered in Germany was not decisive, but rather was just an indication of its registrability. I.B.4. Geographical Names The Federal Institute rejected the trademark application for WÜRTH PHOENIX & Device, for goods in International Class 9 and services in Classes 35, 38, and 42 (see below). The Institute held that the word PHOENIX was a direct geographical indication. The Federal Commission granted an appeal and ordered that the applied-for mark be registered.769 It held that the mark WÜRTH PHOENIX created a new overall impression by adding the family name WÜRTH. In addition, the word PHOENIX had a mythological meaning. When considered in conjunction with the 767. Case Nos. 03-210 and 03-221, Swedish Patent Court of Appeal, March 7, 2006. 768. Federal Commission of Appeals, decision of July 4, 2005; sic! 12/2005, 875 STARS FOR FREE. (Note: sic! is the short title for the periodical Magazine for Industrial Property Law, Information Law and Competition Law.) 769. Federal Commission of Appeals, decision of August 30, 2005; sic! 1/2006, 40 WÜRTH PHÖNIX. 612 Vol. 97 TMR overall impression created by the mark from the perspective of the average consumer, these factors were sufficient for the Commission to deny a geographic characteristic for the mark. III.A.2.a. Similarity of Goods/Services The Federal Commission held that the trademarks PROTEOS and PROTOS were confusingly similar.770 It found that there was a similarity between the covered goods (pharmaceutical products in International Class 5, protected by the older mark PROTEOS, and surgical instruments in Class 10, to be covered by the younger mark PROTOS), despite the fact that they were not in the same international classification. III.A.2.b. Similarity of Marks The trademarks AUDATEX and INDATEX were held to be confusingly similar in spite of their different prefixes.771 In the opinion of the Federal Commission, the initial element in a trademark is not always decisive in determining similarity. If there are sufficient indications in the remaining part of the trademark, they can cause similarity as well. In this case, the older mark, AUDATEX, protected expertise and opinions in relation to car insurance matters in International Classes 36 and 37, while the younger mark, INDATEX, covered insurance matters in general in Class 36. III.A.11.a. No Similarity of Marks The Federal Commission held that the trademarks MICTONORM and MIKTOSAN were not confusingly similar.772 Similarity could be seen in the prefixes MICTO and MIKTO, but this was not sufficient, as these verbal elements were descriptive for the covered pharmaceutical products. The effect of the element MICTO on the overall impression created by the MICTONORM mark was, therefore, minimal, and not sufficient to create a danger of confusion among consumers. III.G. Post-Registration Evidence of Use and Renewals The Federal Commission ruled that use of the older trademark INTEGRA was not sufficient to validate the registration. As a consequence, the trademark registration for the INTEGRA was no 770. Federal Commission of Appeals, decision of June 17, 2005; sic! 2/2006, 86 PROTEOS/PROTOS. 771. Federal Commission of Appeals, decision of August 30, 2005; sic! 3/2006, 175 AUDATEX/INDATEX. 772. Federal Commission of Appeals, decision of October 20, 2005; sic! 2/2006, 90 MICTONORM/MIKTOSAN. Vol. 97 TMR 613 basis on which to justify denial of registration for the younger trademark ÖKK INTEGRA.773 The opponent, the owner of the INTEGRA mark, presented evidence showing use of its mark in connection with internal pension funds. The Commission held, however, that a trademark must be used in commerce with third parties. SYRIA III.A.2.b. Similarity of Marks In 1978, Wella AG, a German company, registered the trademark WELLA in Syria for use on perfumes, essential oils, cosmetics preparations, and hair lotion in International Class 3. A Syrian citizen registered the trademark RELLA for use on the same products.774 Wella brought suit for trademark infringement. The Court of First Instance held that the defendant’s trademark was similar to and infringed the plaintiff’s mark WELLA. Accordingly, it ordered the following: 1. Cancellation and extinguishment of the defendant’s registration; and 2. Payment by the defendant of 20,000 Syrian pounds to the plaintiff as compensation. The decision of the Court of First Instance was ratified by the Court of Appeal and the Court of Cassation.775 The American company General Mills Inc. registered the trademark BUGLES in Syria in 1994 for use on snack foods in Class 30. A Syrian citizen registered the trademark BUGLES in Arabic characters for use on the same products.776 General Mills sued the owner for trademark infringement. The Court of First Instance ruled that the defendant’s trademark was similar to and infringed the plaintiff’s mark BUGLES. It ordered that: 1. The defendant’s registration be cancelled and extinguished. 2. The plaintiff’s demand in respect of compensation be rejected. 773. Federal Commission of Appeals, decision of December 14, 2005; sic! 3/2006, 180 INTEGRA/ÖKK INTEGRA. 774. Registration No. 32839, June 15, 1986. 775. Case No. 28, Decision No. 38 (Court of Cassation, January 29, 2004). 776. Registration No. 54629, March 26, 1995. 614 Vol. 97 TMR The decision of the Court of First Instance was ratified by the Court of Appeal and the Court of Cassation. III.B.5. Compensation Loto Sport Italia SpA, an Italian company, registered the trademark LOTO in Syria in 1978 and 1997 for use on ready-made clothes in International Class 25. A Syrian citizen registered the trademark LOTO for use on sportswear and women’s wear. Loto Sport Italia brought suit for trademark and trade name infringement. A mutual agreement was concluded between the plaintiff and the defendant to resolve the conflict amicably. Accordingly, the Civil Court of First Instance rendered the following decision: 1. The defendant’s registrations were to be cancelled and extinguished. 2. The cancellation of the registrations was to be considered as the plaintiff’s compensation.777 TAIWAN I.B.8.a. Similarity of Marks Adidas-Salomo AG (Adidas) registered the trademark ADIDAS & Device for clothing in International Class 25 (below, illustration at left). Lutong Enterprise Corp. (Lutong) applied to invalidate the trademark registration based on its prior registration of the trademark LUTONG’S 3-STRIPE DEVICE for identical goods (below, illustration at right). At the first and second instances, the Intellectual Property Office (IPO) and the Ministry of Economic Affairs (MOEA), respectively, decided in favor of Lutong by invalidating the registration of the disputed mark. Adidas appealed to the Taipei High Administrative Court against the decisions. Adidas’s Mark Lutong’s Mark Adidas appealed on the grounds that Adidas created the threestripe device, which has been used on shoes since 1949, and that the marks at issue were not similar because of the differences in the devices and the words of the marks. The court held that the disputed mark was not the same as the three-stripe device 777. Case No. 198, Decision No. 30 (Civil Court of First Instance, 2006). Vol. 97 TMR 615 originally created or those thereafter revised and used by Adidas. Although extension of trademark rights by a series of similar marks is not forbidden, the court affirmed that it is still subject to examination against prior rights under the Trademark Act.778 Based on the examination criteria, the court held that the disputed mark is indeed confusingly similar to the prior-registered trademark LUTONG’S 3-STRIPE DEVICE and should be invalidated for violation of the Trademark Act.779 Accordingly, the Taipei High Administrative Court affirmed the original decisions of the IPO and the MOEA and dismissed the appeal. I.B.9.a. No Similarity of Marks Systech Group Corporation (Systech) applied to register the disputed mark CITIPACK with Chinese characters for goods (PDAs, interface cards, etc.) in International Class 9. Citibank, N.A. (Citibank) opposed the mark based on a series of its CITI marks, such as CITIGROUP, CITIBANK, CITIDIRECT, CITICARD, and CITIPHONE. The opposition action was dismissed at the first and second instances by the IPO and the MOEA, respectively. Citibank appealed to the Taipei High Administrative Court against the decisions. The court held that there was no likelihood of confusion between Systech’s mark and Citibank’s marks for the following reasons: 1. In addition to the marks at issue, numerous CITI-prefixed marks, such as CITISOUND, CITILINK, CITILAN, CITINET, and CITIMEN, coexisted in the marketplace as well as the Trademark Registry; 2. The disputed mark CITIPACK and the plaintiff’s CITI marks had been coexisting in the marketplace for years; and 3. The Chinese characters of the disputed mark served to further the distinction between both parties’ marks. Accordingly, the Taipei High Administrative Court affirmed the earlier decisions of the IPO and the MOEA and dismissed the appeal.780 III.A.16. Absence of Willful Intent The French firm Compagnie Générale des Établissements Michelin - Michelin & Cie (Michelin) filed a complaint with the 778. Trademark Act, as amended and promulgated May 28, 2003. 779. 94-Su-1755, Taipei High Administrative Court, April 26, 2006. 780. 94-Su-2234, Taipei High Administrative Court, July 5, 2006. 616 Vol. 97 TMR Hsin Chu District Prosecutor’s Office accusing an individual named Wu A-Man (Wu) of trademark infringement for selling clothes bearing its registered trademark MICHELIN without authorization. After investigation, Wu was indicted for violation of the Trademark Act, but she was later acquitted by the Hsin Chu District Court.781 The Trademark Act states that “use of a trademark” refers to use of a mark for marketing purposes on or in connection with goods or services that enables relevant consumers to recognize it as a trademark.782 It also provides that any person who knowingly sells, displays for sale, exports, or imports, without authorization from the trademark owner, goods on which the trademark is being used shall be subject to criminal liabilities.783 The court held that there was no “use of a trademark” in the subject case and that the defendant did not knowingly sell trademarked products without authorization. Its determination was based on the following findings: 1. The purpose of a trademark is for general consumers to recognize it as a badge of origin for goods or services and to avoid likelihood of confusion. In this case, the alleged infringing clothes featured a number of different marks, including WEST, MOBIL, MERCEDES BENZ, BOSS, HUGOBOSS, and SCHWEPPES, in addition to the plaintiff’s mark MICHELIN. As such, general consumers or retailers would view these marks not as badges of origin but rather as decoration of the clothing. 781. 95-Yi-15, Hsin Chu District Court, May 15, 2006. 782. Article 6 of the Trademark Act provides: “The term [‘]use of trademark,[’] as referred to in this Act[,] connotes the utilization for marketing purpose[s] of [a] trademark on goods, services or relevant articles thereof, or the utilization through means of twodimensional graphic, audio and visual digitization, electronic media, or other medi[a] sufficient [to] make [the] relevant consumers recognize it as a trademark.” 783. Article 81 of the Trademark Act provides: “Any person who [is found guilty of] commit[ing] any of the following acts without [the] prior consent of the trademark or [] collective trademark right holder thereof shall be [sentenced to] imprisonment for no more than three years [or] detention[,] and, in addition thereto or in lieu thereof, [fined] no more than NT$200,000: 1. [Using] a mark identical to [the] registered trademark or collective trademark [for] the same goods or services; 2. [Using] a mark identical to [the] registered trademark or collective trademark [for] similar goods or services[,] and [thereby] caus[ing] likelihood of confusion [among] or misleading [the] relevant consumers; [and] 3. [Using] a []mark [] similar to [the] registered trademark or collective trademark [for] the identical or similar goods or services, and [thereby] caus[ing] likelihood of confusion [among the] relevant consumers.” Article 82 provides: “Any person who [is found guilty of] knowingly sell[ing], display[ing], export[ing], or import[ing] the goods referred to in the preceding article[] shall be [sentenced to] imprisonment [for] no more than one year [or] detention, and, in addition thereto or in lieu thereof, [fined] no more than NT$50,000.” Vol. 97 TMR 2. 3. 617 The plaintiff was famous for making automobile tires. The defendant had been engaged in selling clothing for over 20 years but had seen no MICHELIN clothing products. Therefore, a defense based on the absence of willful intent was admissible. Accordingly, the Hsin Chu District Court held that Wu did not use a trademark without authorization, as defined by the Trademark Act, and that she had no intent to infringe Michelin’s trademark rights. III.A.18. Equitable Defenses Far EasTone Telecommunications Co., Ltd. (FET) is owner of the trademark I STYLE, registered for electronic products, such as PDAs and microphones, in International Class 9. Panasonic Taiwan Co., Ltd. (PT) manufactures the SV-MP510 and SVMP500V series of portable CD players. Panasonic Consumer Sales (Taiwan) Co., Ltd. (PCS) is the general agent for selling these CD players in Taiwan and is also responsible for the promotion thereof. FET filed a civil suit with the Bain Chao District Court against PT and PCS, claiming damages for trademark infringement on the ground that the defendants were using the mark I-STYLE on the packaging of the disputed CD players, as well as in TV commercials, in advertisements, and on their websites. While admitting the use of the I-STYLE mark, the defendants denied that it was use of a trademark and argued that, even if it was a trademark use, there was no likelihood of confusion arising from it. They submitted that the expression I-STYLE described the configuration of the disputed CD player and was always used in combination with other words, such as “Give me 5 I-style” and “It’s my life, It’s I-style,” in which it was displayed in small size and in a less conspicuous manner, but never alone or in a distinctive style. In addition, PANASONIC, a famous and well-known mark for electronic products, was always used distinctively and would be easily recognized by general consumers as a badge of origin for the disputed CD players. Although the plaintiff was a famous telecommunications company, it had never produced or sold any CD player or other related electronic products. Therefore, the defendants argued, it was very unlikely that general consumers would purchase the disputed CD players in the mistaken belief that they were the plaintiff’s products. The court accepted the defendants’ arguments. It held that the use of the mark I-STYLE for the disputed CD players was not use of a trademark, as defined in Article 6 of the Trademark Act, and 618 Vol. 97 TMR that such use would not cause confusion on the part of general consumers concerning the origin of the goods. Accordingly, the Bain Chao District Court ruled that the defendants did not commit trademark infringement, and it dismissed the plaintiff’s claim.784 THAILAND III.A.1. Famous Marks In Compaq Information Technologies Group, L.P. v. Intel Inter Marketing Co., Ltd.,785 the Thai Dika (Supreme) Court confirmed the strength of well-known marks by allowing the owner to take action to cancel third-party trademark registrations across classes of goods different from those for which the owner had registered his mark. Compaq Information Technologies Group, L.P. (Compaq) filed an action with the Central Intellectual Property & International Trade Court (IP&IT Court) for cancellation of Intel Inter Marketing Co., Ltd.’s (Intel Inter Marketing’s) registered trademarks COMPAC TOP & Device and COMPAQ TOP & Device (below, illustrations at left). The action was based on Compaq’s five trademark registrations for COMPAQ in Thailand (below, illustrations at right) and a UK registration for the trademark COMPAQ, which marks was similar in sound and appearance. Intel Inter Marketing’s Trademarks Compaq’s Trademarks Compaq had registered its marks for various electronic goods in International Class 9, such as personal computers and other computer equipment. In addition, Compaq had registered the same marks as service marks in Class 42 in respect of computer services, such as computer networking and training. Intel Inter Marketing had registered its trademarks for goods in Class 20, including furniture surface tops. 784. 94-Chung Chi-16, Bain Chao District Court, February 23, 2006. 785. Case No. 173-174/2549 (Dika Court, May 25, 2006). Vol. 97 TMR 619 Intel Inter Marketing contended that the marks COMPAC TOP & Device and COMPAQ TOP & Device were its original creations, noting that the company’s products typically were called “compact laminate” or “top.” The defendant argued that the adjectives COMPAC and COMPAQ were chosen so as to have the same pronunciation as the word COMPACT, and further that, as most of its products were attached to the surface of furniture, it used the word TOP in conjunction with the word COMPAC or COMPAQ to describe the physical nature of those products. Intel Inter Marketing also distinguished the two main quality levels that categorized its products by using the letter C for “common material” and the letter Q for “qualitative material.” In October 2003, the IP&IT Court decided in favor of the plaintiff. It held that Compaq had superior intellectual property rights by virtue of its COMPAQ and COMPAC trademarks, and ordered that Intel Inter Marketing’s trademark registrations be withdrawn. In November 2003, Intel Inter Marketing filed an appeal with the Dika Court, asking the Court to reverse the judgment of the IP&IT Court and dismiss Compaq’s complaint. The Dika Court found that, based on the evidence submitted, Compaq’s trademarks had achieved well-known status among the public through extensive use. It held Intel Inter Marketing’s claim that it had independently created marks that were coincidentally similar to Compaq’s not credible; and that Intel Inter Marketing had registered its marks in bad faith. The Court held, further, that the defendant’s trademarks COMPAC TOP & Device and COMPAQ TOP & Device were confusingly similar to the plaintiff’s trademarks COMPAC and COMPAQ. Under the Thai Trademark Act, the use of a mark that is similar to a well-known mark is prohibited even if the goods are in different classes, as such use may cause confusion among the public as to the owner and origin of the goods. Consequently, the Dika Court affirmed the IP&IT Court’s decision and ordered the cancellation of Intel Inter Marketing’s trademarks. III.A.3. Prior User The Thai Dika Court rendered a judgment against a trademark applicant and reversed the IP&IT Court’s decision allowing the applicant’s mark DAI to proceed to registration. Thai Roller Chain Industrial Partnership (Thai Roller Chain), the plaintiff in this case, is a manufacturer and distributor of motorcycle and bicycle chains. Thai Roller Chain has consistently used the marks DAIICHI and DAI with its products for more than 30 years, since the start of its business operations. The plaintiff registered its DAIICHI mark in Thailand on July 12, 1985; the latest renewal of the registration was on July 13, 1995. 620 Vol. 97 TMR On July 4, 1997, Thai Roller Chain authorized its distributor, Mitkammakorn (Bangkok) Limited Partnership, to register the mark DAI in International Class 12. On May 7, 1998, Mr. Wichien Wattanakulchai, the defendant in this case, filed an application to register the mark DAI, also in Class 12. In addition, he filed an opposition against the plaintiff’s mark DAI, claiming that he was the rightful owner of the DAI mark. The Trademark Registrar decided in favor of Mr. Wattanakulchai and objected to the registration of Thai Roller Chain’s mark. On appeal, the Board of Trademarks affirmed the Registrar’s decision. Thai Roller Chain then filed a civil complaint with the IP&IT Court under Section 67 of the Trademark Act, claiming that it had the better right to the trademark DAI and that Mr. Wattanakulchai should be prohibited from using such a mark. The plaintiff argued that it had used the word DAI for more than 30 years and that the defendant filed the application in bad faith, as he was the managing partner of O Alai Part Center Limited Partnership and O Alai Bangkok Co., Ltd., both of which were the plaintiff’s customers. Mr. Wattanakulchai responded that he was the director of O Alai Bangkok Co., Ltd. and D.I.D. Thailand Co., Ltd.; that both companies had been in the motorcycle and bicycle chains business for ten years; that the Trademark Registrar had granted registration of his mark DAI in Class 12 in 1985; and that the mark had been used with his products since then. The defendant went on to say that although he failed to renew his trademark DAI, he had continued to use the mark until he filed the new application in 1998. The IP&IT Court found the defendant’s reasoning and evidence persuasive, and dismissed the complaint. The plaintiff appealed. The Dika Court held that, based on the evidence and witness testimony, the plaintiff had in fact used the mark DAI in the course of its business prior to the defendant; that the defendant was well aware that the plaintiff owned the mark DAI; and that the defendant acted in bad faith by copying the plaintiff’s mark. It added that the defendant’s trademark would likely cause confusion among the public as to the source of the goods. As the plaintiff’s mark was not yet registered and remained pending in Thailand, however, the Court ruled that the plaintiff did not have the right, as provided by the Trademark Act, to initiate a suit to prevent the defendant’s use of its unregistered trademark or to recover damages for the defendant’s unauthorized use of the mark. The Dika Court reversed the decision of the IP&IT Court and held that Thai Roller Chain had a better right to the mark DAI than Mr. Wattanakulchai. It ordered that the defendant’s Vol. 97 TMR 621 trademark application be withdrawn, and awarded the plaintiff court costs and attorneys’ fees.786 TURKEY I.B.7.b. Three-Dimensional Marks Pepsico Inc. instituted an action against the Turkish Patent Institute for the withdrawal of the Institute’s final decision refusing its trademark application for a three-dimensional figure of a conic-shaped appetizer,787 covering goods in International Classes 29 and 30, on grounds of nondistinctiveness. The plaintiff claimed that the applied-for mark was distinctive and registrable. In response, the Turkish Patent Institute claimed that its decision was justified. It argued that the applicant’s mark was devoid of distinctive character in accordance with Article 7(a) of the Decree-Law on the Protection of Trademarks (Decree-Law No. 556)788 and requested the rejection of the action. The Court held that (1) a trademark may consist of all kinds of signs that distinguish the goods and services of one undertaking from those of other undertakings, in accordance with Article 5 of Decree-Law No. 556; and (2) a trademark is defined as consisting of two elements: first, the sign, and second, the distinctive character of that sign, which may consist of words (including personal names), designs, letters, numerals, and the shape of the goods or of the packaging, capable of being represented graphically or by similarly descriptive means and capable of being published and reproduced by printing. The Court also stated that distinctive character expresses the features and the elements that distinguish one sign from another and that a sign can be distinctive from the outset or by virtue of its longstanding use. The Court emphasized that signs that are not close to the name of the goods or services covered or that do not remind the consumer of those goods or services are accepted as being intrinsically distinctive. It held that the plaintiff’s mark, which consisted of a conical appetizer figure, was not descriptive for goods in Classes 29 and 30, and therefore accepted the mark as distinctive enough to distinguish the covered goods from those of other businesses. The Court also held that registration of the mark in Central and South America for the same classes of goods prior to the application date constituted a presumption as to its distinctiveness. 786. Thai Roller Chain Industrial Partnership v. Wattanakulchai, Case No. 2644/2548 (Dika Court, September 16, 2005). 787. Application No. 2002/33265. 788. Decree-Law No. 556 of June 27, 1995, as amended by Law No. 4128 of November 7, 1995. 622 Vol. 97 TMR Consequently, the Court accepted the action in accordance with Article 4bis of the Paris Convention and Article 15 of the TRIPS Agreement, and ruled that the Turkish Patent Institute’s final decision be withdrawn.789 III.A.1. Famous Marks An action was instituted for the withdrawal of Turkish Patent Institute’s decision refusing the opposition by Bacardi & Co. Ltd to the trademark application of Mettas Tekstil Sanayi ve Ticaret A.S. and the cancellation of the trademark FRANCO MARTINI & Device, for goods in International Classes 25, 35, and 42, on grounds of similarity to the plaintiff’s well-known trademarks MARTINI, MARTINI & Device, MARTINI ROSSI, MARTINI MARTINI, and MARTINI ROSSI & Device and for the determination that the plaintiff’s MARTINI trademark as a wellknown mark. The Court found that the plaintiff’s trademark MARTINI had been registered in Turkey since 1961 for goods in Class 25, and that several trademarks including the word MARTINI had been registered in the name of the plaintiff. Based on the evidence submitted, it held that (1) the plaintiff’s trademarks MARTINI and MARTINI & Device were registered in more than 150 countries, (2) these trademarks had been marketed throughout the world since 1847, and (3) the plaintiff had spent heavily for the promotion and advertising of the trademarks, and that hence they had become well-known marks in Turkey and throughout the world. The Court, fully accepting the plaintiff’s claims, ruled that the plaintiff’s trademark MARTINI was well known in light of the evidence, number of the registrations, market share, and advertising expenses, and in accordance with Article 6bis of the Paris Convention and Article 16 paragraph 2 of the TRIPS Agreement. It further ruled that the defendant’s trademark registration for FRANCO MARTINI & Device be cancelled in its entirety and ordered the defendant to stop its act of unfair competition.790 In addition, the Court ordered the publication of the ruling in one of the largest newspapers with nationwide distribution. An action was instituted by Basic Trademark S.A. against Hamit Yuzuguzel and the Turkish Patent Institute. The plaintiff 789. Pepsico Inc. v. Turkish Patent Institute, Case No. 2004/1156, Decision No. 2006/312 (Specialized Court of Ankara on Intellectual and Industrial Property Rights, May 25, 2006, notified on June 7, 2006 (unpublished)). 790. Bacardi & Co. Ltd v. Mettas Tekstil Sanayi ve Ticaret A.S. & Turkish Patent Institute, Case No. 2003/680, Decision No. 2005/145 (1st (Specialized) Court of Istanbul on Intellectual and Industrial Property Rights, July 7, 2005). Vol. 97 TMR 623 requested the determination of its registered trademark KAPPA as a well-known mark, the withdrawal of the Institute’s final decision refusing its opposition against Mr. Yuzuguzel’s trademark application for KAPPAZ, and the cancellation of his trademark registration for KAPPAZ791 based on its similarity to the plaintiff’s various registered KAPPA trademarks. The plaintiff claimed that the KAPPA marks were among the world’s leading trademarks in clothing, especially sportswear, as recognized by a 1992 Turkish court decision;792 and that, as a result of the rejection of its opposition, the trademark application for KAPPAZ had matured into a registration. In response, the Turkish Patent Institute asserted that there was no likelihood of confusion between the marks. Mr. Yuzuguzel contended that his registered trademark KAPPAZ was not similar to the plaintiff’s trademarks and asserted that KAPPAZ was the name of a village. The Court held that the plaintiff’s KAPPA trademarks were registered for goods in Classes 9, 18, 25, and 28 as from 1991; that the reputation of the KAPPA trademarks in accordance with Article 6bis of the Paris Convention had been recognized by the prior court; that the 1992 decision constituted conclusive evidence in the current case; and that the KAPPA trademarks were well known in the view of the plaintiff’s registrations, licenses, sponsorships, endorsement, market share, and advertising expenditures. With respect to the cancellation of the trademark registration for KAPPAZ, the Court took into account the following considerations: • The plaintiff’s trademarks were registered for goods in Classes 9, 18, 25, and 28. • The distinctive element of the plaintiff’s trademarks was the word KAPPA, in view of the fact that the plaintiff’s first trademark registration was for KAPPA and that the expression ROBE DI KAPPA means KAPPA’S CLOTHING. • According to Article 8/1(b) of Decree-Law No. 556, the defendant’s trademark KAPPAZ was similar visually and phonetically to the plaintiff’s KAPPA trademarks.793 791. Registration No. 2001/9392. 792. Case No. 1991/1862, Decision No. 1991/5127 (1st Commercial Court of Istanbul, May 6, 1992). 793. Article 8/1(b) provides: “On opposition from the proprietor of a trademark registration application or registered trademark, the trademark registration applied for shall not be granted under the following circumstances: … if, because of its identicalness or similarity to a trademark that has an earlier application date or to a registered trademark and because of the identicalness or similarity of the goods and services covered by the trademarks, there exists a risk of confusion on the part of the public and that risk of 624 Vol. 97 TMR The Court partially accepted the action. It ruled that: 1. The plaintiff’s KAPPA trademarks were acknowledged to be well-known marks; 2. The defendant’s trademark registration for KAPPAZ be cancelled and the mark excluded from the Trademark Registry; and 3. The Turkish Patent Institute’s refusal decision be rejected, as the trademark was registered when the action was instituted.794 GA Modefine S.A. instituted an action against Senda Konfeksiyon Sanayi ve Ticaret A.S. for the cancellation of its trademark registration for ARMANC795 on the grounds that the defendant’s mark was similar to the plaintiff’s well-known and registered trademarks including the name ARMANI and that the defendant had acted in bad faith. The plaintiff claimed that its ARMANI trademarks were registered in Turkey for goods in several classes and were well known in accordance with Article 6bis of the Paris Convention; that although the defendant had no relationship to the plaintiff, it had registered the trademark ARMANC, which was confusingly similar to the plaintiff’s ARMANI trademarks, in respect of goods without the plaintiff’s authorization; and that in so doing the defendant was attempting to take unfair advantage of the reputation of the well-known ARMANI marks. The defendant did not attend any of the hearings and did not submit any reply to the plaintiff’s claims. The Court held (1) that the plaintiff owned several registrations in Turkey and further that the plaintiff’s registered trademark ARMANI796 had been accepted as a well-known mark by the Turkish Patent Institute; and (2) that cancellation actions on grounds of notoriety must be instituted within five years of the registration date of the contested mark and this limitation period must be ex officio considered, whereas no time limit exists for filing a cancellation action where the registrant has acted in bad faith. The Court also held that although the cancellation action was instituted seven years after the registration date of the mark at issue, the defendant was not considered to have acted in good faith on the grounds that the word ARMANC has no meaning in confusion includes the likelihood of association with the registered trademark or with the trademark that has an earlier application date.” 794. Basic Trademark S.A. v. Hamit Yuzuguzel & Turkish Patent Institute, Case No. 2003/1001, Decision No. 2005/193 (1st (Specialized) Court of Istanbul on Intellectual and Industrial Property Rights, September 27, 2005). 795. Registration No. 97/006063. 796. Registration No. 80722. Vol. 97 TMR 625 Turkish and that the defendant is doing business in the same field as the plaintiff. With regard to notoriety, the Court ruled that the ARMANI trademarks should be accepted as well known in view of the plaintiff’s promotional expenditure, sales figures, and advertising, under Article 6bis of the Paris Convention. As to similarity, the Court held that, according to Article 7 of Decree-Law No. 556,797 1. Most of the plaintiff’s trademarks consisted of only the name ARMANI; 2. The defendant’s trademark ARMANC differed from the plaintiff’s marks by only one letter; 3. Where the trademarks were pronounced, the basic emphasis was on the second syllable, and therefore the letters I and C did not constitute a distinguishing character; 797. Article 7 provides: “The following signs shall not be registered as trademarks: (a) signs that do not conform to the provisions of Article 5; (b) trademarks identical or confusingly similar to a trademark registered or filed for registration earlier in respect of an identical or confusingly similar type of product or service; (c) trademarks consisting exclusively of signs or indications that serve in trade to indicate the kind, characteristics, quality, quantity, intended purpose, value or geographical origin or to designate the time of production of the goods or rendering of the services or other characteristics of the goods or services; (d) trademarks consisting exclusively of signs and names that are used to distinguish specific groups of craftsmen, professionals or tradesmen or have become customary in the current and established practices of the trade; (e) signs constituted by the shape of the product, resulting from the nature of the product, necessary to obtain a technical result or giving substantial value to the product; (f) trademarks that are of such a nature as to deceive the public, notably as to the nature, quality, place of production or geographical origin of the goods and services; (g) trademarks that have not been authorized by the competent authorities and are to be refused under Article 6ter of the Paris Convention; (h) trademarks incorporating badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention that have not been authorized by the competent authorities and are of particular historical and cultural interest to the public; (i) trademarks that have not been authorized by their owners and well-known marks within the meaning of Article 6bis of the Paris Convention; (j) trademarks that incorporate religious symbols; (k) trademarks that are contrary to public policy and to accepted principles of morality. The provisions of subparagraphs (b), (c) and (d), above, may not be invoked to refuse the registration of a trademark that has been used before registration and through such use has acquired distinctive character in relation to the goods and services for which it is to be registered.” 626 Vol. 97 TMR 4. The marks were visually and conceptually similar, as the word ARMANC does not have any meaning in Turkish; and 5. The defendant had registered its trademark in order to take unfair advantage of the reputation of the plaintiff’s well-known trademarks. On these grounds the Court ordered the cancellation of the trademark registration for ARMANC and the publication of the summary of the verdict in one of the three largest newspapers with nationwide distribution.798 An action was instituted against Yardim Tekstil Sanayi ve Dis Ticaret Limited Sirketi and the Turkish Patent Institute for the cancellation of the first defendant’s trademark registration for ROTHMANS,799 based on the mark’s similarity to the plaintiff’s trademark ROTHMANS; the determination that the plaintiff’s ROTHMANS mark was well known; the determination of trademark infringement and unfair competition; and the publication of the Court’s decision. The plaintiff claimed that its ROTHMANS trademarks had been registered in Turkey as from 1964; that ROTHMANS was a well-known trademark in the sense of Article 7/1(ı) of Decree-Law No. 556 and Article 6bis of the Paris Convention; that the word ROTHMANS was the surname of its founder, Louis Rothman; that ROTHMANS was the distinctive part of its trade name; and that the registration of the defendant’s trademark ROTHMANS for apparel had led to dilution and harmed the reputation of its wellknown trademarks. The plaintiff asked the Court to acknowledge that ROTHMANS was a well-known mark and cancel the defendant’s trademark registration for ROTHMANS. Yardim Tekstil Sanayi ve Dis Ticaret Limited Sirketi claimed that the plaintiff’s trademark had been registered for all the goods in Class 34, whereas its trademark had been registered for Class 25 goods; that the plaintiff’s trademark should not be considered as well known in light of the plaintiff’s decreasing sales as from 1997; and that ROTHMANS had not been published as a wellknown trademark by the Turkish Patent Institute in the Special Bulletin for well-known trademarks. The Turkish Patent Institute claimed that the objection that was filed against the registration of the trademark ROTHMANS by the plaintiff had been rejected by the Institute on the grounds that the listings of goods covered by the marks under comparison 798. GA Modefine S.A. v. Senda Konfeksiyon Sanayi ve Ticaret A.S., Case No. 2004/779, Decision No. 2005/280 (2d (Specialized) Court of Istanbul on Intellectual and Industrial Property Rights, November 24, 2005). 799. Registration No. 993112. Vol. 97 TMR 627 did not fall into the same classes, and that the plaintiff’s trademark did not enjoy protection as a well-known mark. The Court held that although the plaintiff claimed that ROTHMANS was the surname of its founder, no evidence had been submitted to prove this assertion, and therefore the plaintiff’s claim had not been evaluated in the scope of Article 8/5 of DecreeLaw No. 556. The Court appointed a panel of experts, which concluded that ROTHMANS was a well-known trademark. The Court ruled that the plaintiff’s trademark ROTHMANS had been registered for various classes in several countries; that the plaintiff’s trademark was a well-known mark in view of its worldwide use, advertisement, and geographical scope; and that the name ROTHMANS was the trade name of the plaintiff and therefore was under protection in the sense of Article 8 of the Paris Convention. Accordingly, the Court partially accepted the action and ruled that 1. The plaintiff’s trademark ROTHMANS was determined to be well known; 2. The defendant’s trademark registration for ROTHMANS be cancelled; and 3. The verdict be published in one of the three mostcirculated newspapers in Turkey.800 III.A.3. Prior User An action was instituted against the Turkish Patent Institute and Alsa Konfeksiyon Ticaret ve Sanayi Ltd. Sirketi for the withdrawal of the Institute’s final decision refusing the plaintiff’s trademark application for DRI-FIT801 and for the cancellation of the second defendant’s trademark registrations for DRI-FIT802 and DRI-FIT & Device803 on the basis of the plaintiff’s well-known trademark and the distinctiveness acquired by that mark as a result of its use. The plaintiff claimed that its trademark DRI-FIT had acquired distinctiveness through its use worldwide since 1991 and in Turkey since 2000. The plaintiff also claimed that its trademark application for DRI-FIT, covering goods in International Class 25, 800. Rothmans of Pall Mall Ltd v. Yardim Tekstil Sanayi ve Dis Ticaret Ltd. Sirketi & Turkish Patent Institute, Case No. 2004/217, Decision No. 2006/97 (2d (Specialized) Court of Istanbul on Intellectual and Industrial Property Rights, April 11, 2006, notified on August 17, 2006 (unpublished)). 801. Application No. 2003/12131. 802. Registration No. 2001/06793. 803. Registration No. 2003/08523. 628 Vol. 97 TMR had been rejected by the Higher Council of Examination because of the existence of the defendant’s prior conflicting trademark registrations for DRI-FIT and DRI-FIT & Device, which had been obtained in bad faith. The Turkish Patent Institute claimed that the decision of the Higher Council was justified since the applied-for mark was identical to the cited trademarks and their listings of goods fell into Class 25. It also claimed that the well-known character and the distinctiveness of the plaintiff’s trademark had not been proven. The second defendant, Alsa Konfeksiyon, claimed that the plaintiff’s trademark should not be considered a well-known and distinctive mark. The Court held that the essential element in the defendant’s registered trademark was the expression DRI-FIT, which was visually and phonetically identical to the verbal element DRI-FIT covered in the plaintiff’s trademark, and that their listings of goods fell into the same subclasses of Class 25. The Court ruled that the trademark DRI-FIT had been registered in several countries; that the trademark had been first used in Turkey in 1999, according to the invoices and customs documentations; that DRI-FIT had become a highly valued trademark and accordingly acquired a distinctiveness through use prior to the defendant’s application date; and that the trademark enjoyed protection as a well-known mark. As a result, the Court partially accepted the action and ruled as follows: 1. It ordered the withdrawal of the Turkish Patent Institute’s final decision; and 2. It ordered the cancellation of the defendant’s trademark registrations for DRI-FIT and DRI-FIT & Device.804 III.A.11.a. No Similarity of Marks An action was instituted by Alcatel against the Turkish Patent Institute and Acotel S.p.A. for the withdrawal of the Institute’s decision rejecting its opposition against Acotel’s trademark application for ACOTEL805 and for the cancellation of the trademark ACOTEL on grounds of similarity to the plaintiff’s registered trademarks for ALCATEL.806 804. Nike International Ltd. v. Alsa Konfeksiyon Ticaret ve Sanayi Ltd. Sirketi & Turkish Patent Institute, Case No. 2005/448, Decision No. 2006/217 (Specialized Court of Ankara on Intellectual and Industrial Property Rights, April 20, 2006 (unpublished)). 805. Application No. 2002/2315. 806. Registration Nos. 1997/186440, 1987/103392, and 1988/105361. Vol. 97 TMR 629 The plaintiff claimed that the essential element of its ALCATEL marks was a well-known trademark in several countries, that the word ALCATEL was the trade name of the plaintiff and therefore was protected according to Article 8 of the Paris Convention, and that the defendant’s trademark ACOTEL was almost identical to the plaintiff’s trademark ALCATEL. Alcatel further asserted that it had filed an opposition against the trademark application for ACOTEL on grounds of similarity, notoriety. and unfair competition and that its opposition was rejected by the Turkish Patent Institute. The plaintiff requested the withdrawal of the administrative decision refusing its opposition against the defendant’s trademark application and the cancellation of the registration obtained for ACOTEL. The Turkish Patent Institute claimed that its decision was justified and accordingly requested the rejection of the action. Acotel S.p.A. claimed that the trademark ACOTEL was not similar to the plaintiff’s trademark ALCATEL, that the denomination ACOTEL also comprised its trade name and had been protected in Italy as its trade name as from 1992, that both companies were operating in the telecommunication industry, and that therefore the attention level of consumers in this sector was higher than the attention level of average consumers. The Court first appointed a panel of experts to determine whether there was a similarity between the plaintiff’s trademark and the defendant’s trademark. The experts concluded that the plaintiff’s trademark ALCATEL was a well-known mark and that the defendant’s trademark ACOTEL was confusingly similar to the ALCATEL mark. Upon the objection of Acotel S.p.A., the Court appointed a second panel of experts. The second panel of experts decided by the majority that the defendant’s trademark ACOTEL was not similar to the plaintiff’s trademark ALCATEL and that since the defendant’s trademark had been used in the telecommunication business the attention level of consumers would be higher than the attention level of the average consumers. Therefore, the panel held that there was no risk of confusion. The Court, having upheld the second experts’ report, held that the verbal element TEL in the plaintiff’s and the defendant’s trademark was the abbreviation of the word “telecommunication,” and therefore the essential elements of the trademarks were the prefixes, ALCA and ACO, and that the trademarks had to be considered in terms of their overall visual impression. Accordingly, the Court ruled that the plaintiff’s trademark ALCATEL was not similar to the defendant’s trademark ACOTEL, that both parties were involved in telecommunication, and accordingly the consumers were generally investor companies that would carefully 630 Vol. 97 TMR ascertain the service providers and would not confuse the trademarks ACOTEL and ALCATEL. As a result, the Court decided to the reject the action.807 III.C. Injunctions and Damages Upon complaint filed with the Public Prosecutor, an action for trademark infringement and unfair competition was instituted against the shopkeeper/retailer Ismail Kucukarslan for dealing with and selling counterfeit goods carrying the trademark LONGCHAMP. The plaintiff requested the determination of trademark infringement, the destruction of the infringing goods, the payment of 5 billion TL for compensation of material damages and 500 million TL for moral damages, and the payment of 3 billion TL as compensation for damages to the reputation of the trademark. The plaintiff claimed that its trademark was registered before the Turkish Patent Institute;808 that its bag designs and models were protected in several countries, including the home country, with design registrations; and that the sale by the defendant of low-quality bags damaged the reputation of the trademark. The defendant asserted that he had bought the goods from a third party; that he did not know that the trademark was owned by the plaintiff and could not know that the designs of the bags were registered and protected; and that the infringement did not arise from the goods found in his warehouse. He requested the rejection of the action. The Court held that the expert examination showed that the goods seized on the defendant’s business premises infringed the trademarks of the plaintiff, since the goods were confusingly similar to the plaintiff’s products. The Court noted that the defendant was penally convicted of the same act of infringement and was sentenced to a 22,500 TRY heavy fine, to the closure of its business premises for 10 months, a ban on the exercise of professional activity for 10 months, and the definite seizure of the confiscated counterfeit goods found on his business premises.809 On the basis of the facts and the evidence submitted to the Court, and in consideration of the importance of the plaintiff’s trademark for the sale of goods and the advertising expenditures 807. Alcatel v. Acotel S.p.A. & Turkish Patent Institute, Case No. 2004/561, Decision No. 2006/198 (Specialized Court of Ankara on Intellectual and Industrial Property Rights, April 14, 2006, notified on June 28, 2006 (unpublished)). 808. Registration No. 97/020079. 809. Case No. 2003/1165, Decision No. 2005/792 (1st Penal Court of Istanbul on Intellectual and Industrial Property Rights, May 11, 2005). Vol. 97 TMR 631 for the plaintiff’s trademark and in accordance with Articles 67 and 68 of Decree-Law No. 556,810 the Court: 1. Determine that the defendant’s acts constituted trademark infringement and unfair competition. 2. Ordered the definite seizure of the confiscated counterfeit goods and their destruction once the decision had become final. 3. Ordered the payment of 3,000 TRY for compensation of damages to the reputation of the trademark and the payment of 2,730 TRY for material damages. 4. Ordered the payment of 500 TRY as additional compensation for damages to the reputation of the plaintiff’s trademark in consideration of the economic contribution of the mark to the sale of goods. The Court’s awarding of such additional compensation was within its discretionary competence under Article 67. 5. Ordered the publication of the finalized decision in one of the nationwide respected newspapers.811 The important point in this decision is the refusal by the Court to award damages for design patent infringement on the grounds that the plaintiff had knowingly decided not to register his designs in Turkey and that with respect to the protection of unregistered designs, the general rules of unfair competition in this regard have to be interpreted restrictively, in view of the fact that unregistered designs are protected in the European countries for a limited period of three years and that protection on the basis of unfair competition would be for an unlimited period of time, whereas the overall protection period for a design patent in Turkey does not exceed 25 years. Although this portion of the decision does not concern the trademarks, it may be of relevance, as nothing excludes the possibility that the same reasoning can also be applied by analogy to trademarks. It should be noted that an appeal was filed against this point before the Supreme Court. 810. Article 67 provides: “Where the proprietor of the trademark has selected one of the calculation methods specified in subparagraphs (a), (b) and (c) of Article 66, the court may add a reasonable additional amount if, in its opinion, the trademark contributes substantially to the economic value of the product.…The assessment of the trademark’s contribution to the economic value of the product shall be based on verification that the demand for the product is to a large extent due to the trademark.” Article 68 provides: “The proprietor of a trademark may request extra damages for the harm done through the improper use of the trademark by the infringing party that was detrimental to the reputation of the sign.” 811. Jean Cassegrain (S.A.S.) v. Ismail Kucukarslan, Case No. 2003/69, Decision No. 2005/297 (2d (Specialized) Court of Istanbul on Intellectual and Industrial Property Rights, December 13, 2005). 632 Vol. 97 TMR III.D.1. Civil Actions An action was instituted against Tekcan Uluslararası Ticaret and Necla Tekcan to stop the defendants’ trademark infringement against the plaintiff’s trademark KENT and for destruction of the counterfeit cigarettes seized at Turkish Customs. The plaintiff claimed that it was a worldwide well-known firm operating in the manufacture and marketing of cigarette and tobacco products and that counterfeit cigarettes and packaging bearing the trademark KENT, which were seized at the Customs Authority of Gemlik/Bursa, were counterfeit. The plaintiff asked for a determination of trademark infringement, the destruction of the counterfeit goods, and the publication of the Court’s decision. The defendants did not attend the hearings despite having been notified of the action. The Court appointed a panel of experts to evaluate whether the seized goods were counterfeit. The experts issued a report that stated that the seized KENT cigarettes differed from the cigarettes produced and sold in Turkey and that accordingly the seized cigarettes were counterfeit. The Court, having upheld the experts’ report, ruled for: 1. Determination of the trademark infringement; 2. Destruction of the counterfeit KENT cigarettes and their packaging; and 3. Publication of the decision in a newspaper.812 III.F. Loss of Trademark Rights was instituted by Leadtek Research Inc. against An Leadtek Bilgisayar Dis Ticaret Ltd. Sirketi for the surrender of the trademark WIN FAST, which was registered in the name of the defendant, under Article 6septies of the Paris Convention. The plaintiff claimed that it was a well-known company operating in the manufacture and marketing of computer hardware and spare parts thereof and that its trademark WIN FAST is registered in many countries; that the parties had agreed on the sale of the WIN FAST products in Turkey through the defendant, which was the exclusive distributor; that a Distributorship Agreement between the parties had been action813 812. British American Tobacco (Brands) Inc. v. Tekcan Uluslararasi Ticaret & Necla Tekcan, Case No. 2003/1240, Decision No. 2006/164, (1st (Specialized) Court of Istanbul on Intellectual and Industrial Property Rights, May 30, 2006, notified on September 8, 2006 (unpublished)). 813. Leadtek Research Inc. v. Leadtek Bilgisayar Dis Ticaret Ltd. Sirketi, Case No. E. 2001/1391, Decision No. 2004/739 (1st (Specialized) Civil Court of Istanbul on Intellectual and Industrial Property Rights, December 21, 2004, notified on August 8, 2006 (unpublished)). Vol. 97 TMR 633 concluded; that during the business relationship the defendant had filed the trademark application for WIN FAST without the plaintiff’s consent; and that such registration constituted unfair competition in accordance with the Turkish Commercial Code and was contrary to Articles 8/2, 8/3(a), 11, and 17 of Decree-Law No. 556 and Article 6septies of the Paris Convention. The plaintiff requested the surrender of the defendant’s mark and the registration of the trademark WIN FAST in its favor. The defendant requested the rejection of the action. It claimed that the registration date of the WIN FAST trademark was December 17, 1999, and that, considering that the date of the distributorship agreement was February 21, 2000, there was no doubt that it was the owner of the trademark and that it had never been the plaintiff’s agent or representative. The Court held that the trademark WIN FAST was registered abroad in the name of the plaintiff; that the defendant had registered the trademark on December 17, 1999; that there had been a business relationship between the parties even before that date; and that the defendant did not have a prior right in the trademark WIN FAST. The Court accepted the action and ruled for the assignment and registration of the trademark WIN FAST in the name of the plaintiff. The decision was appealed by the defendant. The Supreme Court unanimously decided to uphold the decision of the first instance court. It ruled that the defendant was actually the sole distributor of the plaintiff’s products and should be accepted as the representative of the plaintiff, and that the decision of the first instance Court was well grounded.814 III.F.5. Cancellation An action was instituted against the registrant Emine Rezan Sağlam for the cancellation of his trademark registrations for DEBENHAMS815 on grounds of similarity to the plaintiff’s wellknown and registered trademark DEBENHAMS and the bad faith of the defendant. The plaintiff claimed that its trademark DEBENHAMS was a well-known mark, that the defendant had registered DEBENHAMS trademarks for different goods, and that the word DEBENHAMS was the name of the plaintiff’s founding partner and the essential element of its trade name. The plaintiff requested the cancellation of the defendant’s trademark 814. Case No. 2005/4812, Decision No. 2006/7240 (Supreme Court, 11th Civil Chamber, June 20, 2006, notified on August 3, 2006 (unpublished)). 815. Registration Nos. 195362, 97/15841, and 97/15842. 634 Vol. 97 TMR registrations for DEBENHAMS and compensation for trademark and trade name infringement. The defendant claimed that the action was not instituted in due time, that the plaintiff did not prove its claim as to the wellknown status of the DEBENHAMS trademark, and that the founding partner did not have any relationship with the plaintiff as from 1927. The Court ruled that although the plaintiff’s trademarks had been registered in several countries as from 1994, most of the evidence attesting to the well-known status and the use of the plaintiff’s trademark was dated after 1999, which was not prior to the registration date of the defendant’s trademark. Accordingly, the Court held that the status of the plaintiff’s trademark as well known was not proven as of the application date for the defendant’s trademarks (1997). The Court held, however, that the word DEBENHAMS was the distinctive element of the plaintiff’s trade name, in view of the fact that the plaintiff had changed its trade name to Debenhams Plc before December 4, 1997, and accordingly that the word DEBENHAMS was protected under Article 8 of the Paris Convention and Article 8/5 of Decree-Law No. 556. It ruled that the defendant’s registrations were obtained in bad faith, with the intention of blocking the registration of the plaintiff’s trademarks. Consequently, the Court partially accepted the action. It ordered 1. The cancellation of the defendant’s trademark registrations for DEBENHAMS; and 2. The publication of the verdict in a newspaper.816 UNITED KINGDOM I.B.5. Personal Names In In re Trade Mark Application No. 2323092B by Sir Alexander Chapman Ferguson,817 the UK Trade Marks Registry refused the application by Sir Alex Ferguson, manager of the Manchester United football team, to register his own name in respect of printed matter. Although the Registry did not object to the application in respect of most of the listed products, it raised objections, based on Sections 3(1)(b) and 3(1)(c) of the Trade Marks Act 1994, in respect of “image carrier” goods in International Class 816. Debenhams Retail plc v. Emine Rrezan Sağlam, Case No. 2001/1460, Decision No. 2006/159 (1st (Specialized) Court of Istanbul on Intellectual and Industrial Property Rights, May 23, 2006, notified on September 14, 2006 (unpublished)). 817. Case No. O-266-05 (September 23, 2005), available at www.patent.gov.uk/tm/legal/ decisions/2005/o26605.pdf. Vol. 97 TMR 635 16, namely posters, photographs, transfers, stickers, decalcomanias, stickers relating to football, and any other imagebearing printed matter. The hearing officer followed the decision of the Appointed Person in the LINKIN PARK trade mark case818 and rejected the application on the ground that the mark at issue consisted exclusively of a sign that potential purchasers would immediately recognise as designating the subject matter of the goods. In addition, the sign did not have distinctive character, as the general public would not distinguish between image-carrying ALEX FERGUSON goods and similar products of other traders. Sir Alex subsequently appealed to the Appointed Person.819 He argued that the Registry’s practice concerning the registration of the name of a famous person was unlawful as it discriminated against the individual on the basis of his or her status, in contravention of the European Convention on Human Rights as implemented by the Human Rights Act 1998. The Appointed Person ordered a preliminary hearing to determine whether the appeal should be referred to the High Court or the European Court of Justice (ECJ). At that hearing he expressed the view that there were a number of difficulties in arguing that Registry practice was contrary to human rights law. Nevertheless, he thought the case raised the question of general importance as to whether Registry practice regarding celebrity applications was “too strict, too lenient or substantially correct in terms of the requirements of Community law.” The Registrar indicated that if the applicant were to amend its ground of appeal to encompass the issues raised by the Appointed Person, the correct way forward would be a reference to the ECJ. However, the applicant confirmed that he did not wish to do that. Under the circumstances, no reference was made, and the appeal was listed to be heard before another Appointed Person. This appears to be at least the second occasion on which an Appointed Person has expressed the view that the approach of the Registry and UK trade mark law, as far as registration of celebrity names and images is concerned, would benefit from ECJ consideration.820 The issue has been recognised as being of considerable importance, and it would appear to be only a matter of time before in some other case a reference to the ECJ is made. 818. In re Trade Mark Application No. 2313504 by Linkin Park LLC, Case No. O-035-05 (August 3, 2004), available at www.patent.gov.uk/tm/legal/decisions/2004/o22504.pdf. 819. Case No. O-094-06 (March 22, 2006), available at www.patent.gov.uk/tm/legal/ decisions/2006/o09406.pdf. 820. See id. at 5 (comments of Appointed Person). 636 Vol. 97 TMR I.B.7.a. Two-Dimensional Marks The Court of Appeal dismissed Philips’ appeal in Koninklijke Philips Electronics N.V. v. Remington Consumer Products Ltd et al.821 It agreed with the High Court822 that Philips’ trade mark No. 1533452 (the “452 Mark”) was invalid under Section 3(2)(b) of the Trade Marks Act 1994. The 452 Mark (shown below) consisted of a two-dimensional image of the top part of a three-headed electric shaver. Its overall shape was that of an inverted triangle, with the three heads sitting within a raised faceplate of a cloverleaf design superimposed on the triangle. Philips alleged that Remington had infringed the 452 Mark by selling models of electric shavers with heads identical or confusingly similar to it. Remington claimed the 452 Mark was invalid and should not have been registered because it consisted exclusively of the shape of the goods that was necessary to achieve a technical result (as stated in Section 3(2)(b) of the Act). In a previous case, Philips had failed to establish the validity of a similar registered mark (the “208 Mark”), which was different only in that it lacked the cloverleaf embellishment on the faceplate.823 Philips had to argue why the 452 Mark should be valid where the 208 Mark was not. It did so by contending that Section 3(2)(b) should apply only where all “essential features” of a mark are aimed at achieving a technical result. The cloverleaf embellishment exempted the 452 Mark from Section 3(2)(b), as it was an essential feature of the design that was “non-functional” and therefore did not contribute to the “technical result.” Mr. Justice Rimer in the High Court had ruled that whether a shape mark fell within the ambit of Section 3(2)(b) was a question of fact in each case and that in assessing the shape it was 821. [2006] E.W.C.A. Civ. 16 (January 26, 2006), available at www.bailii.org/ew/cases/ EWCA/Civ/2006/16.html. 822. [2004] E.W.H.C. 2327 (Ch., October 21, 2004), reported at 96 TMR 551 (2006). 823. Koninklijke Philips Electronics N.V. v. Remington Consumer Products Ltd, Case C299/99, [2002] E.C.R. I-05475 (ECJ, June 18, 2002). Vol. 97 TMR 637 necessary to identify its essential characteristics or features. If these related solely to the achieving of the intended technical result, the prohibition would apply. That the shape might include nonessential elements that were not attributable to the intended function was irrelevant, as long as the overall shape was so attributable. On the facts, the cloverleaf was not an essential feature of the shape, but formed part of the overall triangular faceplate and was indisputably part of the faceplate. The faceplate as a whole constituted an essential feature of the shape. In addition, the cloverleaf did in fact also perform a function (skin stretching and hair raising); it was irrelevant that this function could also be performed by another shape. Provided each essential feature as a whole performed a technical function, it did not matter that minute elements of it might not themselves contribute to that performance. The 452 Mark was therefore invalid. At the Court of Appeal, Lord Justice Mummery held that the High Court was entitled to find that the cloverleaf feature was not an essential feature of the shape at issue. This alone was sufficient for the High Court to decide that the 452 Mark was invalid, as none of its essential features differed from the invalid 208 Mark. Further, the Court of Appeal agreed that it was sensible to go on to address the question of whether the shape of the faceplate, of which the cloverleaf formed a part, was attributable “solely” or “only” (or “exclusively”) to the obtaining of the intended technical result for the purposes of Section 3(2)(b). It held that in order to decide whether the shape of the goods in question was necessary to the obtaining of a technical result, the court had to consider the mark as a whole. Having decided that the “dominant impression” of the 452 Mark was not created by the cloverleaf, so that the cloverleaf was not an essential feature of the mark, the High Court had been entitled to conclude that the 452 Mark was in substance functional. I.B.11.d. Scandalous Mark In In re Trade Mark Application No. 2376955 by Sporting Kicks Ltd,824 the Registry refused, under Section 3(3)(a) of the Trade Marks Act 1994, to allow an application to register a figurative mark (see below) including the words INTER CITY FIRM and ICF for a variety of goods, including clothing, footwear, headgear, and badges, in International Classes 25 and 26. 824. Case No. O-302-05 (November 11, 2005), available at www.patent.gov.uk/tm/legal/ decisions/2005/o30205.pdf. 638 Vol. 97 TMR The hearing officer said that although the mark was, on the face of it, innocuous, the name Inter City Firm was chosen by a group of hooligans that had been described as the most notorious bunch of football hooligans the country had ever seen. The hearing officer concluded that the mark fell within a category of marks that could be described as “anti-social branding.” In addition, the mark comprised a display that was potentially threatening to others and was likely to cause alarm or distress. Given the renewed interest in groups such as Inter City Firm, it would be against public policy to register a mark that might be interpreted as glorifying or promoting their exploits. In response to the applicant’s argument that there were several previous trade mark registrations that were more offensive than the INTER CITY FIRM mark, the hearing officer referred to the comment of Mr. Justice Jacob in British Sugar PLC v. James Robertson825 that comparison with other marks on the register is in principle irrelevant when a new mark tendered for registration is under consideration. In In re Application for a Declaration of Invalidity No. 81862 by Dennis Woodman,826 the UK Trade Marks Registry rejected an application from an individual to have the trade mark FCUK declared invalid on the ground that it was contrary to public policy or accepted principles of morality, in accordance with Section 3(3)(a) of the Trade Marks Act 1994. French Connection Limited was the registered proprietor of the trade mark FCUK, for a variety of goods, including watches and jewellery, in Class 14. Dennis Woodman applied for a declaration of the invalidity of French Connection’s registration under Section 47 of the Act. He claimed that the FCUK mark had been registered in breach of Section 3(3)(a) as it was contrary to 825. [1996] R.P.C. 281 (Ch., February 7, 1996). 826. Case No. O-137-06 (May 17, 2006), available at www.ukpats.org.uk/tm/tdecisionmaking/t-challenge/t-challenge-decision-results/o13706.pdf. Vol. 97 TMR 639 public policy or accepted principles of morality, in that it was capable of being misconstrued as the vulgar word “fuck.” The hearing officer said that the nub of the issue was whether the trade mark FCUK was likely to cause offence because it would be seen as the swear word that he considered to be unregistrable. As there was no evidence that the FCUK mark when used alone was seen as an expletive by an identifiable section of the public, it would not be right to consider a mark open to objection because it was capable of being seen as something it was not. Any offence that had been caused was a result not of the use of the trade mark FCUK per se, but rather of the context in which the mark was used in promotional activities. The decision is remarkable for its detailed review of the operation of principles of public policy and public morality across a range of different intellectual property rights. It is also to be contrasted with the decision in Scranage’s Trade Mark Application,827 in which the Appointed Person dismissed an appeal against the refusal to register the mark FOOK for clothing, footwear, and headgear. I.B.17. Disclaimers In General Cigar Co. Inc. v. Partagas y Cia S.A.,828 the High Court considered the interplay of the disclaimer regime under the Trade Marks Act 1938 (the 1938 Act) and the Trade Marks Act 1994 (the 1994 Act) and the effect of changes in Trade Marks Registry practice. General Cigar had been granted registration of CIFUENTES WINKS as a UK trade mark under the 1938 Act on the condition that the company disclaim its right to the exclusive use of the name Cifuentes. It had originally sought to register only CIFUENTES, the surname of the founder of the original Cuban cigar company to which both General Cigar and Partagas claimed to be the successor. However, Registry practice at the time in relation to the registration of surnames, whereby a name would be regarded as devoid of distinctive character if the number of times the name appeared in telephone directories exceeded a certain limit, meant that General Cigar’s application to register CIFUENTES alone was rejected. Subsequently, Partagas applied to register CIFUENTES. This application was opposed by General Cigar. On appeal to the High Court, the main issue was whether General Cigar could oppose Partagas’s application to register the 827. In re Trade Mark Application No. 2309350 by Kevin Scranage, No. O-182-05 (June 23, 2005). 828. [2005] E.W.H.C. 1729 (Ch., July 29, 2005), available at www.bailii.org/ew/ cases/EWHC/Ch/2005/1729.html. 640 Vol. 97 TMR name CIFUENTES, in reliance upon Section 5(2)(b) of the 1994 Act, on the basis of its registration of the trade mark CIFUENTES WINKS, despite General Cigar’s disclaimer of its right to exclusive use of the name Cifuentes. The hearing officer had held that, given the disclaimer, the comparison to be made was between the words CIFUENTES and WINKS. As a result, there was no likelihood of confusion, and General Cigar’s opposition failed. General Cigar contended on appeal that the hearing officer’s decision was incorrect, and that Practice Amendment Circular 3/00 and the decision in the PACO/PACO LIFE IN COLOUR trade marks case,829 on which the hearing officer had relied, were wrong. The comparison to be made was with the CIFUENTES WINKS mark as a whole, as the disclaimer operated only post-registration (in relation to infringement) and was not applicable to registration matters such as opposition. General Cigar argued that this had been the practice under the 1938 Act, under which the mark was registered, and so it would be a strange result if a disclaimer worded to suit that regime was to be interpreted as having a wider effect under the subsequent 1994 Act. In addition, Section 13 of the 1994 Act, which deals with disclaimers, expressly served to limit the rights conferred by Section 9 of the 1994 Act, that is, the right to prevent infringement, without making any reference to Section 5, which concerned the grounds on which marks could be opposed. General Cigar argued that this indicated that the disclaimer obviously was not intended to limit opposition rights. The High Court rejected these arguments and the distinction between the effect of a disclaimer on registration matters and infringement issues. The concept of likelihood of confusion was common to both infringement and opposition and should therefore be applied equally in the context of each. As a result, a registered mark could not be relied upon to oppose the registration of another mark where the only similarity of that mark to the registered mark was the part that was disclaimed. The court noted that there was an element of unfairness in the circumstances of this case. Given that the Registry’s guidelines for registration of surnames as applied at the time of General Cigar’s application had now been superseded, the result of this case could be that General Cigar would lose priority in relation to the name CIFUENTES because of the disclaimer, leaving Partagas able to register it. However, the High Court commented that it might be appropriate to stay any further action in the proceedings in order to allow General Cigar to make an application under Section 64(5) of the 1994 Act to remove the disclaimer. 829. In re Application No. 2046730A by Paco Rabane Parfums to Register a Trade Mark in Class 25, [2000] R.P.C. 451 (October 13, 1999). Vol. 97 TMR 641 III.A.2. Likelihood of Confusion In Julius Sämann Ltd et al. v. Tetrosyl Ltd,830 the High Court sought to emphasise and clarify the differences in the analysis of likelihood of confusion in trade mark and passing-off actions. The case concerned a claim by Julius Sämann Ltd (JSL) against Tetrosyl Ltd for trade mark infringement and passing off with respect to JSL’s registered UK and Community trade marks for air fresheners, which consist of a stylised fir or pine tree on a base (see below). UK Mark CTM JSL has used these marks since the 1950s, but in 2003 Tetrosyl began selling a Christmas tree-style air freshener, in the shape of a fir tree but covered in snow and with flashing lights (see below). 830. [2006] E.W.H.C. 529 (Ch., March 17, 2006), available at www.bailii.org/ew/cases/ EWHC/Ch/2006/529.html. See also III.F.6. Dilution. 642 Vol. 97 TMR Tetrosyl denied infringement, arguing that it had a defence under Article 6(1)(b) of the EC Trade Marks Directive831 (implemented by Section 11(2)(b) of the Trade Marks Act 1994) because the use of the Christmas tree shape constituted an indication concerning the quality of the product—it was a decoration shaped like a Christmas tree. Tetrosyl also counterclaimed for the revocation of JSL’s trade marks. Mr. Justice Kitchin held that Tetrosyl had infringed JSL’s trade marks under both Article 5(1)(b) and Article 5(1)(c) of the Directive but that there had been no passing off. Under Article 5(1)(b) of the Directive (implemented by Section 10(2) of the Trade Marks Act 1994), there was a likelihood of confusion because Tetrosyl had used, in the course of trade, a mark that had a “marked visual and conceptual similarity” to JSL’s trade marks. The judge said he had to consider the product “in a vacuum,” discounting the box and particular circumstances in which Tetrosyl’s product was sold. Further, the risk of confusion was increased by the use of the trade marks over the years by JSL. Tetrosyl’s argument under Article 6(1)(b) was rejected—use of the mark complained of gave the impression of a commercial connection with JSL, not an indication of the quality of the product. Equally, the judge rejected Tetrosyl’s claims as to the validity of JSL’s trade marks—these were valid because they had a substantial reputation. However, the judge dismissed JSL’s claim for passing off. He concluded that in a passing-off claim, factors such as packaging, point of sale, circumstances, and price should be taken into account (following the House of Lords’ holding in Reckitt & Colman Products Ltd v. Borden Inc.832); it was not the case that the product should be considered “in a vacuum,” as with the analysis of likelihood of confusion under Article 5(1)(b). III.A.10. Non-use of Trademark Laboratoires Goëmar SA v. La Mer Technology Inc.833 concerned the interpretation of “genuine use” in the context of an application for revocation of a registered trademark for non-use. Laboratoires Goëmar SA was the proprietor of the registered mark LABORATOIRE DE LA MER in International Classes 3 and 5 for, respectively, perfumes and cosmetics containing marine products and pharmaceutical, veterinary, and dietetic products with medical use and also containing marine products. Within the 831. First Directive 89/104/EEC of the Council, of December 21, 1988, to Approximate the Laws of the Member States Relating to Trade Marks. 832. [1990] R.P.C. 341 (H.L., February 8, 1990). 833. [2005] E.W.C.A. Civ. 978 (July 29, 2005), available at www.bailii.org/ew/ cases/EWCA/Civ/2005/978.html. Vol. 97 TMR 643 relevant period of five years following the registration of the mark, Goëmar had sold about £800 worth of goods to an appointed agent located in Scotland. The goods appeared to have been imported in small containers bearing the mark. The agent made preparations for onward sale of the products, by appointing individual members of the public as sub-agents to sell the goods at private parties. There was no evidence that such sales were actually ever effected. Goëmar remained interested in marketing and selling its goods in the United Kingdom and also found another distributor, but not within the relevant time period. La Mer Technology Inc. applied to revoke the mark and had been partially successful before the hearing officer, to the extent that the mark covered pharmaceutical, veterinary, and sanitary products in Class 5. The case heard by the High Court related to those goods and services that had been maintained, that is, those in Class 3 and relating to cosmetic products.834 The High Court referred to the ECJ for interpretation seven questions relating to the interpretation of “genuine use” in Articles 10 and 12 of the EC Trade Marks Directive, which was reflected in the Trade Marks Act 1994. Following the directions given by the ECJ by means of a procedural order,835 the High Court held that “genuine use” meant actual use of the mark that was not merely token (solely serving the purpose of preserving the rights conferred by the mark) and not merely internal. Such use required that the mark would come to the attention of the end-users and consumers. Therefore, the mere importation of the goods in question by an independent importer did not by itself amount to genuine use of the mark; indeed, the High Court was of the opinion that the importation of the goods in this case was akin to internal use. The trade mark was therefore revoked for non-use.836 The Court of Appeal allowed the appeal and reversed the findings of the High Court. Unlike the High Court, the Court of Appeal accepted that the sale of the goods to the UK importer by Goëmar was a third-party transaction at arm’s length and hence external to Goëmar. The Court of Appeal commented that the question of whether the importation of goods by a single importer could amount to “genuine use” was put to the Court of Justice and that this was said to be capable of being “sufficient to demonstrate that such use was genuine,” even though the goods imported were not of a great number or substantial value. 834. [2001] E.W.H.C. 492 (Ch., December 19, 2001), available at www.bailii.org/ew/ cases/EWHC/Ch/2001/492.html. 835. [2004] F.S.R. 38 (ECJ, January 27, 2004). 836. [2004] E.W.H.C. 2960 (Ch., December 21, 2004). 644 Vol. 97 TMR The Court of Appeal disagreed with the High Court that in order to show “genuine use” of a mark, one had to show that the mark was brought to the attention of consumers and end-users. It stated that the “Court of Justice did not rule that the retail or enduser market [was] the only relevant market on which a mark [was] used for the purposes of determining whether use of the mark [was] genuine.” Therefore, the market as between manufacturer and wholesaler could be a relevant market, as the wholesale purchaser of goods bearing a particular trade mark would be relying on the mark as a badge of origin just as much as would a consumer who purchased the goods from the wholesaler. As the court said: “The fact that the wholesaler may be attracted by the mark because he believes that the consumer will be attracted to the mark does not call into question the fact that the mark is performing its essential function as between the producer and the wholesaler.” Therefore, the sale of the goods by Goëmar to the UK importer was sufficient to establish “genuine use,” and the revocation of the mark for non-use was reversed. The case is remarkable in that notwithstanding the fact that the ECJ thought the question of what constituted genuine use was so straightforward that it could be deposed of by way of procedural order rather than judgment, when the matter came back to the United Kingdom the first instance and appeal courts were able to come to different conclusions. It raises the question of the extent to which the issue of genuine use would benefit from further scrutiny at the ECJ level. In Almighty Marketing Ltd v. Milk Link Ltd,837 the High Court considered the requirements of Rule 31(3) of the Trade Mark Rules 2000 in relation to the evidence of use that a trade mark proprietor must file when opposing an application for non-use under Section 46 of the Trade Marks Act 1994. According to Rule 31(3), within three months of service of an application to revoke a trade mark for non-use, the trade mark proprietor must file a counterstatement and evidence of use of the mark, or reasons for non-use, failing which the Registrar may treat the opposition to the application to revoke as being withdrawn. In this case, Milk Link Limited applied to revoke the trademark MOO JUICE, which was registered by Mark Cooper and then subsequently assigned to Almighty Marketing Limited, of which Mr. Cooper was managing director. Almighty Marketing provided two witness statements as evidence of use under Rule 31(3), one from its trade mark attorney and one from Mr. Cooper that attached two exhibits. These exhibits comprised a letter from Mr. Cooper’s accountants confirming that the mark had been used 837. [2005] E.W.H.C. 2584 (Ch., November 18, 2005), available at www.bailii.org/ew/ cases/EWHC/Ch/2005/2584.html. Vol. 97 TMR 645 by Mr. Cooper’s business on a daily basis, and a sample label used on milk cartons showing the mark. The Trade Marks Registry found this evidence to be sufficient,838 but the hearing officer overturned the decision. On appeal by Almighty Marketing, the High Court held that the proprietor had submitted sufficient evidence to establish that it had an arguable defence in accordance with Rule 31(3). The Court reasoned that Rule 31(3) was not merely a procedural hurdle that was satisfied by a mere assertion by a witness that the trade mark had been put to genuine use. The evidence had to provide a sufficient explanation of how the mark was used so that it could be determined whether the proprietor had an arguable or viable defence. However, the evidence did not need to be so persuasive that, if unanswered, it would necessarily discharge the burden of proof on the proprietor. There was no requirement under Rule 31(3) for a proprietor to provide information of a specific nature, such as brochures and pamphlets, as the hearing officer had wrongly asserted in reliance upon the Carte Bleue Trade Marks case,839 although the court mentioned that such evidence was highly desirable. On the facts of this case, the High Court held that Mr. Cooper’s witness statement, together with the labels exhibited, was sufficient to show that Almighty Marketing had an arguable case of genuine use of the MOO JUICE mark. III.A.24. Personal Names The use of the “own name” defence to trade mark infringement by a company was considered by the High Court in Fields v. Klaus Kobec Ltd & Cohen.840 The relevant provision in UK law is Section 11(2) of the Trade Marks Act 1994, which provides that “the use by a person of his own name or address” is a defence provided such use is “in accordance with honest practices in industrial or commercial matters.” In 1995, Fields and Cohen together had founded a business, called Klaus Kobec International Limited, to sell watches under the Klaus Kobec name. Cohen subsequently set up a company called Klaus Kobec Limited (KKL) in 1997; Fields registered KLAUS KOBEC as a UK trade mark in 1996 and as a Community trade mark in 2001. When the parties fell out, Cohen continued to 838. Case No. O-149-05 (June 3, 2005), available at www.ukpats.org.uk/tm/tdecisionmaking/t-challenge/t-challenge-decision-results/o14905.pdf. 839. In re Trade Mark Registration Nos. 1281471, 1521713 and 1521717 in the Name of Groupement Carte Bleu [sic], [2002] R.P.C. 31 (January 17, 2002). 840. [2006] E.W.H.C. 350 (Ch., March 2, 2006), available at www.bailii.org/ew/ cases/EWHC/Ch/2006/350.html. 646 Vol. 97 TMR sell watches under the KKL name, with the result that Fields initiated proceedings for trade mark infringement.841 Following the decision in Reed Executive plc v. Reed Business Information Ltd,842 the judge accepted that the own-name defence could be relied upon by a company as well as by an individual. However, significantly, the company still needed to show that its use of the mark was in accordance with “what constituted honest practices.” The interesting aspect of this case is that the judge then proceeded to analyse each of the alleged infringing acts in question and came to different conclusions on the question of whether the use was in accordance with honest practices. Use that took the limited form of the reproduction of the company name on the back case of watches, where that use was required in order to ensure compliance with contracts entered into with third parties, fell within the scope of the defence. In contrast, the continued use of the name in the form of the domain name klauskobec.com after the company had rebranded so as to trade under the name footballwatchshop.com was not permitted. III.A.25. Geographical Indications In Northern Foods PLC v. Department for Environment, Food & Rural Affairs & Melton Mowbray Pork Pie Association,843 the High Court upheld the decision by the Department for Environment, Food and Rural Affairs (DEFRA) to forward to the European Commission an application by the Melton Mowbray Pork Pie Association (MMPPA) for the registration of “Melton Mowbray pork pie” as a protected geographical indication (PGI). PGIs are names of agricultural products that indicate their geographical origin and guarantee a particular standard of quality. They are governed by the EC regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.844 Article 2(2)(b) of the Regulation states that a PGI means the name of a region, a specific place, or, in exceptional cases, a country, that is used to describe an agricultural product or a foodstuff that: 1. Originates in that region, specific place, or country; and 841. The defendants also relied on Section 11(3) of the Trade Marks Act 1994, which provides a defence for use of trade marks in a “particular locality” if an “earlier right” exists. However, this was rejected by the judge, since on the facts of the case KKIL’s use of the mark had not predated Fields’ own use. 842. [2004] E.W.C.A. Civ. 159 (March 3, 2004), available atwww.bailii.org/ew/cases/ EWCA/Civ/2004/159.html. See 95 TMR 560, 561, 565-66 (2005). 843. [2005] E.W.H.C. 2971 (Admin., December 21, 2005), available at www.bailii.org/ ew/cases/EWHC/Admin/2005/2971.html. 844. Council Regulation (EEC) No. 2081/92 of July 14, 1992. Vol. 97 TMR 647 2. Possesses a specific quality, reputation, or other characteristics attributable to that geographical environment with its inherent natural and human factors, and the production and/or processing and/or preparation of which takes place in the defined geographical area. Article 4(1) of the Regulation provides that to be eligible to use a PGI, an agricultural product or foodstuff must comply with a specification that includes: 1. The definition of the geographical area (Article 4(2)(c)); 2. Evidence that the agricultural product or the foodstuff originates in the geographical area, within the meaning of Article 2(2)(b) (Article 4(2)(d)); and 3. The details bearing out the link with the geographical environment or the geographical origin, within the meaning of Article 2(2)(b) (Article 4(2)(f)). The claimant, Northern Foods PLC, applied to the High Court for judicial review to challenge the decision of DEFRA to forward MMPPA’s application to the European Commission. Its main argument was that the geographical area proposed by MMPPA under Article 4(2)(c) was, at 1,800 square miles, too large to comply with the regulations. Northern Foods contended that this area instead referred to the same specific place of geographical origin, as defined under Article 2(2)(b). The court noted that PGI status had been granted to a number of foods, including Pruneaux d’Agen and Agneau de Pauillac, where the geographical area was wider than the geographical origin. He concluded that the defined geographical area could be wider than the place of geographical origin, rejecting Northern Foods’ application for judicial review and leaving MMPPA’s application to proceed from DEFRA to the European Commission for a decision on whether PGI status should be granted. III.B.4. Advertising In O2 Holdings Ltd & O2 (UK) Ltd v Hutchison 3G Ltd,845 the High Court ultimately rejected O2’s claims against mobile telephone operator Hutchison 3G Ltd for trade mark infringement arising out of a television advertisement for Hutchison’s “3” brand, broadcast in August 2004. The advertisement had claimed that Hutchison’s new pre-pay mobile telephone service was cheaper than those of its competitors, including O2. 845. [2006] E.W.H.C. 534 (Ch., March 23, 2006), available at www.bailii.org/ ew/cases/EWHC/Ch/2006/534.html. See also III.F.6. Dilution. The High Court’s earlier refusal to grant an interim injunction in this case is reported at 96 TMR 561 (2006). 648 Vol. 97 TMR Hutchison’s advertisements featured bubbles during the comparison with O2. O2 owned 11 registered trade marks featuring bubbles, which were widely used to illustrate the O2 brand in the United Kingdom. The case focused on the alleged infringement of four of these trade marks, one of which is illustrated below. Hutchison’s counterclaim that these marks were invalid was rejected, which meant that Hutchison had been in breach of Article 5(2) of the EC Trade Marks Directive,846 as implemented by Section 10(2) of the Trade Marks Act 1994.847 However, the judge then went on to consider the provisions of the EC Comparative Advertising Directive (the “Directive”).848 He felt that the recitals to the Directive made it clear that if the criteria were complied with, no infringement of trade mark rights would occur. The Directive also influenced the interpretation of Section 10(6) of the Act. This provided that use of a registered trade mark for the purpose of identifying goods or services of the trade mark owner (which included use in comparative advertising) would not be infringement provided it was not “otherwise than in accordance with honest practices.” The phrase “otherwise than in accordance with honest practices” had to be interpreted with the Directive in mind. Therefore, provided the advertisement did not fall afoul of the six tests provided in Article 3a(1) of the Directive, Hutchison would have a valid defence even if prima facie trade mark infringement had occurred. 846. Council Directive 89/104/EEC, December 21, 1988. 847. O2 also alleged that the advertisement infringed section 10(3) of the Act. This claim was rejected but is considered in greater detail under the heading III.F.6. Dillution. 848. Directive 97/55/EC of the European Parliament and of the Council, of October 6, 1997, Amending Directive 84/450/EEC Concerning Misleading Advertising so as to Include Comparative Advertising. Vol. 97 TMR 649 It was agreed by the parties that the advertisement did not fall foul of the first three tests: that is, the advertisement was not misleading, compared goods and services intended for the same purpose, and objectively compared prices. The judge also did not believe that the advertisement created confusion between Hutchison and O2, as the viewer would be left in no doubt, at the end of the advertisement, as to the respective marks and offer of each service provider. Therefore, the fourth test was satisfied. As to the fifth test—that is, did the advertisement discredit or denigrate O2’s trade marks or services—the judge felt that a certain robustness had to be expected in comparative advertising. Accordingly, he rejected O2’s contention that the advertisement created the impression that O2’s service was of poor quality. Finally, on the sixth test, the judge rejected O2’s claims that Hutchison had taken unfair advantage of O2 or its trade marks. In doing so, he did not accept O2’s further contention, based on Article 14 of the Directive, that use of the trade mark was permitted only if it was “indispensable”; he held that such use was not indispensable in this case, as the O2 name could have been used instead. According to the court, the question was not whether the use of bubbles was indispensable to making the comparison but whether it was indispensable in order to make “comparative advertising effective.” This was to be interpreted as a far more forgiving test. Whilst extensive reference was made in this judgment to ECJ case law, this case can be seen as the latest in a long line of decisions indicating the High Court’s reluctance to rule against comparative advertising. It will be interesting to see whether in due course the ECJ agrees with this approach, and in particular with the English court’s liberal interpretation of the “indispensability” test. III.C. Injunctions and Damages Sun Microsystems v. Amtec Computer Corp. Ltd849 concerned an application by Sun for judgment in default or summary judgment in trade mark infringement proceedings that it had brought against Amtec in respect of the parallel importation of SUN servers. Sun was the owner of various registered trade marks. Amtec had obtained a number of SUN servers from a Danish intermediary, which had acquired them from a UK company. The servers had been put on the market in Israel, but not in the European Economic Area (EEA). Amtec conceded that it had infringed Sun’s trade marks, but argued that it had done so 849. [2006] E.W.H.C. 62 (Ch., January 30, 2006), available at www.bailii.org/ew/cases/ EWHC/Ch/2006/62.html. 650 Vol. 97 TMR innocently and reasonably, thinking that it was entitled to do what it had done. There were two issues before the High Court: (1) the extent of the enquiry as to profits or damages that should be ordered in respect of the acknowledged infringements and (2) the extent of any injunctive relief to be awarded against Amtec to protect Sun from future infringement. The court held that it was clear on the facts that Amtec had infringed Sun’s registered trade marks, because Amtec was unable to show that the servers had been put on the market in the EEA by Sun or with Sun’s consent, in accordance with the test in Zino Davidoff and Levi Strauss.850 It was no defence for an importer to show that it had taken all reasonable steps available to it to establish that goods were put on the market by, or with the consent of, the trade mark proprietor. As to the extent of the relief sought, Amtec argued that the extent of the account (as to profits or damages) should be limited to the ten servers supplied to Amtec. The High Court, however, found that the evidence established infringements going beyond this. As a result, Sun was entitled to an order designed to identify any additional past infringements. In relation to the injunctive relief, the court held that as an infringement had been established, ordinarily some type of injunctive relief would follow. Amtec claimed that the injunction should be qualified so as to allow it to deal with SUN products in the future. However, Sun contended that the normal rule in intellectual property cases was that the court should grant an unrestricted injunction that would prohibit any future infringement. The High Court in this case took the unusual step of granting a qualified injunction. In doing so it noted that there was a tension between Sun’s entitlement to prevent further infringement of its trade marks and Amtec’s ability to carry on its legitimate business, including dealing in SUN products that had been placed on the market in the EEA. According to the court, a balance had to be struck, and the remedy afforded to Sun had to be proportionate. As a result, the injunction granted in this case should allow Amtec to continue to sell SUN products, subject to Amtec’s complying with certain conditions requiring prior investigation of the source of the products concerned. 850. Joined Cases C-414/99–C-416/99, [2001] E.C.R. I-8691 (ECJ, November 20, 2001). Vol. 97 TMR 651 III.F.6. Dilution In Julius Sämann Ltd et al. v. Tetrosyl Ltd,851 the High Court upheld dilution claims under Article 5(2) of the EC Trade Marks Directive852 (implemented in the United Kingdom by Section 10(3) of the Trade Marks Act 1994) that had been brought by the claimant in relation to trade marks taking the form of a stylised fir or pine tree. The product complained of was a Christmas tree-style air freshener, in the shape of a fir tree but covered in snow and with flashing lights.853 Mr. Justice Kitchin felt that there was a real probability that the public would think Tetrosyl’s product was part of Sämann’s range because of the substantial reputation of Sämann’s products in the United Kingdom. Under the circumstances, the court had little difficulty in concluding that that the average consumer would make a link between Tetrosyl’s mark and Sämann’s marks that would “inevitably damage the distinctiveness” of the latter. The text of the legislation required the use to be “without due cause,” but the burden of establishing that the use complained of was “with due cause” fell on Tetrosyl. In this respect the court made reference to the decision in Premier Brands UK Ltd v. Typhoon Europe Ltd.854 That case emphasised that regard must be had to the purpose of the provision, which is to protect the value and goodwill of trade marks, particularly in cases where they are well known, from being unfairly taken advantage of or unfairly harmed. This standard and the wording of the relevant provisions led the judge to conclude that Tetrosyl had a “relatively stringent test” to satisfy. He held that Tetrosyl had not satisfied its burden in this case. The fact that the mark complained of was innocently adopted was not sufficient to invoke the exception. The only possible justification for Tetrosyl’s use of the mark that might bring its actions within the “with due cause” exception was that the Christmas tree product was a novelty item and that anyone seeking to produce a Christmas novelty air freshener in the shape of a Christmas tree would infringe Sämann’s trade marks. This was also not sufficient. Tetrosyl had no need to produce an air freshener in the shape of a fir tree, even at Christmas. 851. [2006] E.W.H.C. 529 (Ch., March 17, 2006), available at www.bailii.org/ew/cases/ EWHC/Ch/2006/529.html. 852. First Directive 89/104/EEC of the Council, of December 21, 1988, to Approximate the Laws of the Member States Relating to Trade Marks. 853. For a full discussion of the facts of this case, see III.A.2. Likelihood of Confusion. 854. [2000] F.S.R. 767 (Ch., January 21, 2000). 652 Vol. 97 TMR In O2 Holdings Ltd & O2 (UK) Ltd v. Hutchison 3G UK Ltd,855 the High Court rejected O2’s claims against mobile telephone operator Hutchison for trade mark infringement arising out of a television advertisement for Hutchison’s “3” brand that was broadcast in August 2004. For the most part the case dealt with the extent to which the comparative advertisement in that TV ad complied with the EC Comparative Advertising Directive.856 However, the court also considered O2’s claim that Hutchison had breached Article 5(2) of the EC Trade Marks Directive857 (implemented in the United Kingdom by Section 10(3) of the Trade Marks Act 1994). This claim was rejected. Whilst the court accepted that there was an association in the minds of a significant number of consumers between O2 and the blue bubbles used in the advertising, it did not accept that the average consumer would have made a connection between the bubbles in Hutchison’s advertisement and any of the specific forms of bubbles for which O2 held a trade mark. The case is nevertheless of interest given the court’s detailed assessment of the concepts of Section 10(3) dilution or tarnishment, albeit in a comparative advertising context. Whilst matters were complicated by the fact that the language of the EC Trade Marks Directive and the UK legislation differed, the court considered that the appropriate approach was to ask to separate questions: that is, whether the use in any particular case was without due cause, and whether it took unfair advantage of the mark. The High Court accepted that what amounted to use without good cause was “not easy to identify.” However, it quoted the test previously formulated in the Benelux Court of Justice: that the question was whether the user was under “such a compulsion to use this very mark that he cannot honestly be asked to refrain from doing so regardless of the damage [to] the owner of the mark . . . or . . . the user is entitled to the use of the mark in his own right and does not have to yield this right to that of the owner of the mark. . . .” As far as unfair advantage was concerned, the mischief that the court believed the provision was aimed at was the use of a mark that called to mind a mark with a reputation in another field, so as to increase sales. The High Court noted that it was 855. [2006] E.W.H.C. 534 (Ch., March 23, 2006), available at www.bailii.org/ew/cases/ EWHC/Ch/2006/534.html. The High Court’s earlier refusal to grant an interim injunction in this case is reported at 96 TMR 561 (2006). 856. For a full discussion of the facts of this case and a discussion of the comparative advertising issues, see III.B.4. Advertising. 857. First Directive 89/104/EEC of the Council, of December 21, 1988, to Approximate the Laws of the Member States Relating to Trade Marks. Vol. 97 TMR 653 difficult to apply statements made in the context of such use to cases where comparative advertising had taken place. III.J. Gray Marketing In Hewlett-Packard Development Co. LP et al. v. Expansys UK Ltd,858 the High Court granted summary judgment to plaintiffs Hewlett-Packard Development Company LP and Compaq Trade Mark BV and an injunction against further parallel importation by defendant Expansys UK Ltd of trade-marked personal organisers from outside the EEA. Hewlett-Packard and Compaq were the registered proprietors of the trade marks HP and IPAQ, covering personal organisers. Expansys had started to import genuine HP IPAQ organisers from Malaysia and Pakistan and was selling these in the United Kingdom. In its defence to the claim of trade mark infringement, Expansys raised three arguments, all of which were rejected by the judge. Expansys argued first that the claimants’ two-year delay between discovering that it was importing HP IPAQ organisers and bringing proceedings gave rise to a defence. The judge pointed out that, in the absence of evidence suggesting acquiescence or estoppel, mere delay did not in itself give rise to a triable defence. Next, Expansys claimed that there was evidence from which it could be inferred that the claimants had unequivocally renounced their right to object to the imports. This evidence consisted of the language of the instruction booklets supplied with the products, the shape of the electric plugs attached to them, and the alleged deliberate oversupply of products to the Malaysian and Pakistani markets. The court held that none of the alleged facts relied on by Expansys showed that the claimants had renounced their rights. In fact, far from consenting to the importation, the claimants objected to it, and Expansys was aware of that fact at all material times. Perhaps of greatest interest, however, was the court’s approach to Expansys’ argument that Hewlett-Packard enjoyed a dominant position in the UK market for personal organisers that it was abusing by fixing prices and that Hewlett-Packard’s dominance was facilitated by its use of its trade mark rights to keep out cheap imports from outside the EEA. The High Court held that even if Hewlett-Packard could be shown to be in breach of competition law, there was no link between the alleged breach and the enforcement of the claimants’ intellectual property rights. The enforcement of Hewlett-Packard’s trade mark rights did not determine whether or how Hewlett-Packard fixed prices in the 858. [2005] E.W.H.C. 1495 (Ch., July 14, 2005), available at www.bailii.org/ew/cases/ EWHC/Ch/2005/1495.html. 654 Vol. 97 TMR United Kingdom. Regardless of whether there had been price fixing, Hewlett-Packard would be just as likely to use its trade mark rights to prevent unlicensed imports that could damage its European markets. In the High Court case of Kabushiki Kaisha Sony Computer Entertainment et al. v. Nuplayer Ltd,859 the claimants were designers and manufacturers of the PLAYSTATION Portable (PSP) handheld console and owners of the PS logo mark, the PLAYSTATION mark, and the Playstation controller button symbols marks. Before Sony officially launched the PSP console in the United Kingdom, the defendant began importing PSP consoles from Japan and sold the goods to the public exclusively on its website, rather than from retail premises. Sony applied for summary judgment or, in the alternative, an interim injunction pending trial. The judge stated that the starting point in such a case was that there was infringement where a registered trade mark was used in the United Kingdom without the proprietor’s consent, or goods were offered for sale, put on the market, or imported under the mark.860 A trade mark was not infringed by the use of the trade mark in relation to goods that had been put on the market in the EEA with the proprietor’s consent,861 but was infringed by importation from outside the EEA without the consent of the proprietor.862 Nuplayer contended that it did not “use” Sony’s registered trade marks within the meaning of Section 9(1) of the Trade Marks Act 1994 because the marks were not visible at the point of sale. The judge rejected this argument. Even if the marks were not seen by the consumer before a sale was concluded, there was still an infringement, as Nuplayer clearly was using the marks in relation to the goods. The fact that Nuplayer sold the PSP consoles on the Internet, did not display the goods for inspection, and described them as “PSP consoles” (PSP itself not being a registered trade mark) did not mean that it was not using the marks. Section 10(4)(b) of the Trade Marks Act 1994 specifically includes stocking products under the mark as an infringement, and in Arsenal Football Club plc v. Reed863 the ECJ interpreted “use” for the 859. [2005] E.W.H.C. 1522 (Ch., July 14, 2005), available at www.bailii.org/ew/cases/ EWHC/Ch/2005/1522.html. 860. Trade Marks Act 1994, Sections 9(1), 10(4). 861. Id. Section 12(1). 862. Zino Davidoff SA v. A & G Imports Ltd and Levi Strauss & Co. v. Tesco Stores Ltd, Joined Cases C-414/99–C-416/99, [2001] E.C.R. I-8691 (ECJ, November 20, 2001). 863. Case C-206/01, [2002] E.C.R. I-10273 (ECJ, November 12, 2002). Vol. 97 TMR 655 purposes of Article 5(1) of the EC Trade Marks Directive864 to include matters arising after sale. The judge pointed out that if this were not the case, the sale of counterfeit goods over the Internet would not be an infringement, and it would also follow that every mark on products inside packaging or on components inside a product would not be an infringement. In granting summary judgment, the judge also rejected Nuplayer’s argument that if it obliterated Sony’s registered marks from its website and the PSP consoles by, for example, applying a skin over the console, selling the products in plain boxes, and covering the controller systems with indelible ink, it would not be infringing the marks. Section 15(1) of the Trade Marks Act 1994 merely provides for the obliteration of an offending mark as one of the possible remedies for a trade mark proprietor; the High Court held that the provision could not possibly found an argument that products that would otherwise be infringing cease to be so when the marks are erased or obliterated. In Roche Products Ltd et al. v. Kent Pharmaceuticals Ltd,865 the High Court decided, in a case involving parallel imports, that a CE mark placed on the packaging of trade-marked goods did not constitute an implicit consent by the owner of the trade mark to the importation and marketing of the goods within the EEA. The trade-marked goods concerned were Roche Products Ltd’s ACCU-CHECK Advantage II strips, which are used for the selftesting of blood glucose levels. The strips were manufactured and packaged solely for use in clinical trials in the Dominican Republic and on the condition that they would not be resold or transferred to a third party. However, in breach of these terms, some or all of the strips were sent to France, where they were bought by Kent Pharmaceuticals Ltd, which subsequently imported them into the United Kingdom. Kent argued that Roche had impliedly consented to the strips’ being brought into the EEA because of the CE (Conformité Européene) mark on the packaging, which indicates that goods comply with EU quality and safety requirements. By placing the CE mark on the packaging, Kent claimed, Roche could not oppose the placing of the goods on the market in the EEA, as the relevant public would view the CE mark as indicating that the goods complied with EU legislation and Roche had impliedly consented to their sale within the EEA. Mr. Justice Lewison rejected Kent’s contentions and granted summary judgment in Roche’s favour. He ruled that a CE mark is concerned with the quality and safety of a product and has no 864. First Directive 89/104/EEC of the Council, of December 21, 1988, to Approximate the Laws of the Member States Relating to Trade Marks. 865. [2006] E.W.H.C. 335 (Ch., February 23, 2006). 656 Vol. 97 TMR relevance to trade marks generally or to whether a trade mark owner consents to the marketing of its goods in the EEA. Whilst the CE mark might indicate that a product could as a matter of safety law be sold in the EEA, that did not mean that anyone could sell products bearing that CE mark freely within the EEA without the consent of the trade mark owner. The High Court case of MasterCigars Direct Ltd v. Hunter & Frankau Ltd and Corporacion Habanos SA v. MasterCigars Direct Ltd et al.866 again highlighted the difficulties facing a parallel importer in establishing the consent of a trade mark owner where such consent was not given in writing. Corporacion Habanos SA (HSA), a joint venture between a Spanish company and an organisation of the Cuban government, owned UK and Community trade marks for its hand-rolled Cuban cigars (habanos), which were distributed in the United Kingdom exclusively by Hunters & Frankau (H&F). MasterCigars Direct Ltd (MDL) acquired a consignment of the cigars, bearing HSA’s trade marks, from an official outlet in Cuba and imported them into the United Kingdom. Following an allegation from H&F that the cigars were counterfeit, UK customs officials seized the consignment on its arrival. MDL brought an action against H&F seeking a declaration that they were not counterfeit and that they were not infringing HSA’s trade marks. H&F and HSA responded with a claim that the cigars infringed their trade marks. MDL had acquired the cigars from official outlets in Cuba. In view of the fact that individuals are allowed to purchase up to $25,000 worth of cigars for “personal consumption,” MDL argued that HSA had impliedly consented to the importation of the cigars—first because such an allowance was absurd and was in reality a consent to commercial resale, and second because, as Cuba is a communist regime, HSA and the outlets in Cuba were effectively part of the government, and therefore the consent of the outlets to the sale was effectively the consent of HSA. The High Court agreed with MDL that the cigars were not counterfeit. However, Judge Fysh held that MDL had infringed HSA’s trade marks under Section 10(1) of the Trade Marks Act 1994. The burden of proving consent was on MDL as the parallel importer, and MDL was unable in these circumstances to show that HSA had given its consent. As the outlets from which MDL had bought the cigars were not economically linked to HSA, MDL could not show that HSA had “unequivocally renounced the benefit of all its major trade mark rights in the EEA,” even though the judge accepted that the unusually high limit for personal 866. [2006] E.W.H.C. 410 (Ch., March 10, 2006), available at www.bailii.org/ew/cases/ EWHC/Ch/2006/410.html. Vol. 97 TMR 657 consumption suggested, “at the least, the turning of a blind eye to the most natural consequence of such a sale. . . .” In Sportswear SpA v. Stonestyle Ltd,867 the Court of Appeal was called upon to consider the controversial question of the interplay between principles of European competition law, on the one hand, and intellectual property rights, in this instance trade mark rights, on the other. Sportswear SpA (the “First Respondent”) manufactured Stone Island brand clothing and was the owner of trade mark rights in that brand. Four Marketing Ltd (the “Second Respondent”) was the exclusive distributor of those products in the United Kingdom, Ireland, and Iceland under an exclusive distribution agreement (the “Distribution Agreement”). Trade mark infringement proceedings were commenced against Stonestyle Ltd (the “Appellant”). The garments sold by the Appellant were genuine; however, the Appellant had obtained them not from the Second Respondent but from an undisclosed Italian source. Further, the garments had been doctored: the garment codes, which formed part of the labels and the swing tabs and which identified the retailer for which the particular item had been manufactured, had been removed. The Appellant had claimed that the garment codes formed part of an illegal arrangement between the respondents to partition national markets and to fix prices within the EEA and that this provided it with a defence to the trade mark infringement claim. This aspect of the Appellant’s case had been struck out at a preliminary hearing, and it was that decision that was the subject of this appeal. The relevant law here was Article 81 of the EC Treaty, which prohibits anticompetitive behaviour, and Articles 7(1) and 7(2) of the EC Trade Marks Directive868 (given effect in the United Kingdom by Sections 12(1) and 12(2), respectively, of the Trade Marks Act 1994). Article 7(1) provides that a registered trade mark is not infringed by use in relation to goods put on the market in the EEA by the proprietor or with its consent; however, Article 7(2) provides an exception to Article 7(1) where “there exist legitimate reasons for the proprietor to oppose further dealings in the goods.” The respondents asserted that the codes had legitimate purposes, such as the prevention of counterfeiting and the prevention of parallel importation of products from outside the EEA. Therefore, the removal of garment codes was said to provide 867. [2006] E.W.C.A. Civ. 380 (April 11, 2006), available at www.bailii.org/ew/cases/ EWCA/Civ/2006/380.html. 868. First Directive 89/104/EEC of the Council, of December 21, 1988, to Approximate the Laws of the Member States Relating to Trade Marks. 658 Vol. 97 TMR legitimate reasons to oppose further dealings under Article 7(2). The Appellant contended that the respondents’ real intention was to use the codes to police and enforce an illegitimate partitioning of the EEA market. Since this was an appeal from a strike-out application, the respondents accepted for the purposes of the appeal only that the Distribution Agreement did contravene Article 81 of the EC Treaty. However, even if the Appellant had a claim under Article 81, according to the respondents this did not provide it with a defence to the trade mark infringement proceedings. In other words, the Article 81 claim at best provided the Appellant with a “sword, but not a shield.” Also, it was incumbent on the Appellant to show that the removal of the garment codes was “not such as to be liable to damage the reputation of the trade mark and its owner.” Lord Justice Lloyd, in a judgment with which all other members of the Court of Appeal concurred, held that it was far from clear as a matter of European law that Article 81 could be used only as a sword and not a shield in trade mark infringement proceedings. It was at least arguable that European Community law did not invariably allow trade mark issues and anticompetition issues to be compartmentalised and separated from one another. Indeed, the judge thought it “well arguable” that a breach of Article 81 would give a defendant a “stronger basis for saying that the [c]laimant does not have legitimate reasons under [S]ection 12(2).” It was therefore inappropriate to strike out the Appellant’s Article 81 defence prior to trial. The case is remarkable in that it suggests greater willingness on the part of the English courts to entertain competition law defences to intra-Community parallel importation cases. That is not to say that the courts welcome such defences with open arms. The Court of Appeal fully recognised that allowing the Article 81 defence to continue in this case would add significant further complication and expense to the proceedings and that to have come to a different conclusion on the point would have been more “convenient.” However, in the words of another of the judges in the Court of Appeal, “convenience is not always the same as justice.” Further clarification from the ECJ on the interaction between Article 81 of the EC Treaty and Article 7(2) of the EC Trade Marks Directive would be welcome in future. The interface between EU competition law and trade mark law in a parallel importation context was also considered by the Court of Appeal in Doncaster Pharmaceuticals Group Ltd v. Bolton Pharmaceutical Co. 100 Ltd et al.869 In this case, the Court of 869. [2006] E.W.C.A. Civ. 661 (May 26, 2006), available at www.bailii.org/ew/cases/ EWCA/Civ/2006/661.html. Vol. 97 TMR 659 Appeal overturned the grant by the High Court of summary judgment against an intra-Community parallel importer of trademarked products. KALTEN, the trade mark in question, had been registered both in Spain and in the United Kingdom in relation to pharmaceutical products. Its original owner, Astra Zeneca, had assigned the Spanish KALTEN mark to a separate Spanish company, which took over manufacture of the product in Spain. The original owner also assigned its UK trade mark KALTEN to Bolton Pharmaceutical Co. 100 Ltd, which began to manufacture and sell the product in the United Kingdom. This meant that KALTEN products of two different manufacturers were in circulation in the European Union. The Spanish product was repackaged and relabelled for sale in the United Kingdom under the trade mark KALTEN by Doncaster Pharmaceuticals Group Ltd. Bolton claimed that this was an infringement of its trade mark, because Doncaster was using the KALTEN trade mark in the United Kingdom without Bolton’s consent. Doncaster maintained that there was sufficient economic connection between the original owner, the Spanish company, and Bolton for there to have been an exhaustion of rights in the KALTEN trade mark under Article 6 of the EC Trade Marks Directive so far as Doncaster’s UK dealings were concerned. However, the High Court found that there was no evidence before it to suggest the economic linkage claimed, and given the decision of the ECJ in IHT Internationale Heiztechnik GmbH v. Ideal Standard GmbH,870 Doncaster’s defence based on the exhaustion of rights doctrine had no real prospect of success. Accordingly, the court granted summary judgment in Bolton’s favour. On appeal, Lord Justice Mummery, in a decision with which the other members of the court concurred, held that Doncaster’s appeal should be allowed. The position before the assignments had meant that parallel imports of KALTEN products into both the Spanish and the UK markets were lawful. Therefore, according to the judge, a finding of infringement now was “difficult to square with the general rule that an assignee steps into the shoes of the assignor and, in law, is in no different position than the assignor was.” The court accepted that, following the Ideal Standard case, where there was a transfer of marks and surrender of control of products in different EU territories, trade mark rights could legitimately be relied upon to prevent importation from one country to another. However, it did not follow from this that assignment of a mark for a particular territory must necessarily involve surrender of control. 870. Case C-9/93, [1994] E.C.R. I-2789 (ECJ, June 22, 1994). 660 Vol. 97 TMR Whilst there was no evidence of “conventional control” by Astra Zeneca, according to the Court of Appeal that was not the end of the matter. The material that the court had seen was not complete. There was also some material that suggested that Astra Zeneca might “remain a single point of control over the composition and quality of the product.” It was also apparent that both the Spanish and the UK manufacturers remained party to know-how licences with Astra Zeneca. Under the circumstances, why the original owner chose to split the assignments and the continuing level of Aztra Zeneca’s involvement with the products warranted investigation. The matter should go to trial, and that necessitated the disclosure of documents and exchange of witness statements. The Court of Appeal also commented that once the full facts had been ascertained at trial, it might be necessary to seek further guidance in this area from the ECJ. III.L. Opposition/Cancellation Procedure In Special Effects Ltd v. L’Oréal S.A. et al.,871 the High Court refused to allow L’Oréal to counterclaim for invalidity of a trade mark in infringement proceedings where L’Oréal had previously been unsuccessful in opposition proceedings concerning the same mark in the UK Trade Marks Registry. Special Effects Limited was the proprietor of the word mark SPECIAL EFFECTS in International Classes 3 and 44. The first defendant, L’Oréal S.A., in reliance upon Sections 3 and 5 of the Trade Marks Act 1994, had unsuccessfully opposed Special Effects’ application to register that mark. Special Effects subsequently issued infringement proceedings against L’Oréal S.A. and the second defendant, L’Oréal (UK) Limited, in respect of L’Oréal’s use of the mark SPECIAL FX. In its claim, Special Effects asserted that L’Oréal was prohibited from challenging the validity of the mark on the basis that such an action was precluded by cause of action estoppel, issue estoppel, or abuse of process. At a preliminary hearing, L’Oréal argued that the two defendant companies should not be so precluded, owing to the practical differences between opposition proceedings and invalidity proceedings, the fact that decisions in opposition proceedings were not final, and the supposed unwelcome consequences of extending the principles set out in Hormel Foods Corp. v. Antilles Landscape Investments NV872 to opposition proceedings. (In the Hormel case, the claimant, which had unsuccessfully sought a declaration of 871. [2006] E.W.H.C. 481 (Ch., March 17, 2006), available at www.bailii.org/ew/cases/ EWHC/Ch/2006/481.html. 872. [2005] E.W.H.C. 13 (Ch., January 24, 2005), reported at 96 TMR 555 (2006). Vol. 97 TMR 661 invalidity of a trade mark from the Registrar of Trade Marks, was precluded from making a further challenge on validity on different grounds in the High Court.) In addition, it was argued that L’Oréal (UK) Limited had not been party to the opposition proceedings and so was not a “privy” of L’Oréal S.A. so as to be bound by the decision in the opposition proceedings. The High Court held that L’Oréal S.A. was precluded by cause of action estoppel and issue estoppel from contesting the validity of the SPECIAL EFFECTS mark in infringement proceedings where it had been unsuccessful in the opposition proceedings, as there was no relevant difference between opposition and invalidity proceedings. In each case, the issues centred on whether the provisions of Sections 3 and 5 of the Act had been satisfied. The court went on to say that the order of the Registrar in opposition proceedings was final, subject to appeal, and the fact that it might give rise to an estoppel binding in later High Court proceedings was an inevitable consequence of the acceptance of the proposition that the decisions of lower courts might give rise to an estoppel. The contention that L’Oréal (UK) Limited was not barred by an estoppel because it had not been party to the opposition proceedings was also rejected by the court, as there was sufficient identity between the two L’Oréal entities to justify the decision of the opposition proceedings binding L’Oréal (UK) Limited. Given this finding, the High Court did not need to consider Special Effects’ claim of abuse of process. L’Oréal appealed the matter to the Court of Appeal.873 The International Trademark Association was granted permission to join the proceedings as an intervener. The Court of Appeal overturned the High Court’s decision. Lord Justice Chadwick, giving the decision of the Court of Appeal, noted that OHIM decisions on oppositions in relation to Community trade marks did not bind national courts. It would, therefore, be an odd and unfortunate state of affairs if the decisions of the UK Registry were treated differently as a matter of English law. According to the court, issues of cause of action estoppel did not arise. Neither an application for a trade mark nor an opposition to a trade mark could be sensibly characterised as providing a “cause of action” to either the applicant or the opponent. Therefore, cause of action estoppel could not apply. The doctrine of issue estoppel was more flexible, but the Court of Appeal rejected Special Effects’ contention that whilst opposition proceedings did not bind an unrelated party, they could bind an unsuccessful opponent. An unconnected third party could challenge the validity of a trade mark registration despite an 873. [2007] E.W.C.A. Civ 1 (January 12, 2007), available at www.bailii.org/ew/cases/ EWCA/Civ/2007/1.html. 662 Vol. 97 TMR earlier unsuccessful opposition by another, and if that challenge were successful the unsuccessful opponent could not be said to be in any way bound by the outcome of its own unsuccessful challenge. Accordingly, the decision of the Registry was not a “final decision,” and issue estoppel did not arise. The decisions on cause of action and issue estoppel meant that the Court of Appeal also had to go on to consider the issue of whether allowing L’Oréal “two bites at the cherry of the validity of the trade mark” involved an abuse of process. The Court of Appeal thought that it did not. What is at stake in opposition proceedings before the Registry may be much less than what is at stake in infringement proceedings before a court where invalidity is then raised as a defence. A potential opponent could therefore reasonably take the view that more limited resources should be deployed in opposition proceedings than in the court proceedings. This would also be consistent with the attitude that proceedings in the Registry are designed to be economical and expeditious, with limited costs recovery for the successful party. If in any particular case proceedings in the Registry were fought in a manner similar to the conduct of High Court litigation, then to raise the same issue in litigation might well be abusive; but that was not the case here. Many will welcome the Court of Appeal’s decision. Had the first instance decision been allowed to stand, the consequences would have been profound. Those challenging a trade mark at the opposition stage would have had little choice but to invest substantial effort in that opposition. The Court of Appeal has now made it clear that this is not the case. It is interesting, however, that in reaching its conclusions in this case the Court of Appeal refused to decide whether the decision in Hormel was right. At least for the present, those making applications for revocation in the Registry should assume that any decision will be binding on them in subsequent court proceedings, even though a decision in opposition proceedings would not. V.A. Domain Names In Global Projects Management Ltd v Citigroup Inc.,874 the High Court applied the case of British Telecommunications plc v. One in a Million Ltd875 in granting summary judgment to Citigroup in a claim for passing off and trade mark infringement concerning a domain name registration. In April 1998, the merger of two U.S. companies that resulted in the formation of Citigroup was announced. On the same day, 874. [2005] E.W.H.C. 2663 (Ch., October 17, 2005), www.100megsfree4.com/andrewmurray/gpm%20v%20citigroup.pdf. 875. [1999] 1 W.L.R. 903 (C.A. (Civ.), July 23, 1998). available at Vol. 97 TMR 663 Jim Davies, a director of Global Projects Management Limited (GPM), successfully applied to register the domain name citigroup.co.uk (the “Domain”). The following day, Mr. Davies tried to register citigroup.com, but that domain name was no longer available. When accessed, the Domain resolved to a website displaying the message “an error has occurred”; if someone attempted to send an email to a citigroup.co.uk email address, that person would receive a return message stating that the email had been wrongly addressed and that the Domain was owned by GPM. Neither GPM nor Mr. Davies attempted to sell the Domain, nor did they have any connection with Citigroup. When Citigroup became aware of the situation, it wrote to GPM, stating that registration of citigroup.co.uk was an act of passing off and trade mark infringement and threatening legal action. Citigroup initially sought to resolve the dispute via the Nominet dispute resolution procedure. However, this process was brought to an end without a decision’s being made when GPM commenced a threats action against Citigroup under Section 21 of the Trade Marks Act 1994. Citigroup then counterclaimed against GPM and Mr. Davies for passing off and trade mark infringement under Section 10(3) of the Act, and subsequently applied for summary judgment. In granting summary judgment to Citigroup, the High Court, following the One in a Million case, held that the mere registration and maintenance in force of a domain name that led, or might lead, people to believe that the holder of the domain was linked with a person or entity was enough to make the domain a potential “instrument of fraud” and amounted to passing off. The fact that Mr. Davies had not attempted to sell the Domain made no difference to this finding. Although there was no evidence of Mr. Davies or GPM’s having a track record of cybersquatting, as had been the case with the defendants in One in a Million, the High Court had little difficulty in concluding that that the defendants’ object had been to obtain a domain name that carried the potential threat of deception harmful to Citigroup. Factors of importance here were the timing of Mr. Davies’ application to register the domain on the day the merger was announced; his attempt to register citigroup.com; the volume of emails mistakenly sent to GPM and the ability of Mr. Davies to “snoop” on these; and the fact that Mr. Davies must have foreseen what would happen, given the scale of Citigroup’s business in the United Kingdom, and yet refused to assign the Domain to Citigroup. Given the court’s conclusions as to Mr. Davies’ intent, the arguably generic nature of the domain name did not matter. It also did not matter that the limitation period in UK law for passing-off 664 Vol. 97 TMR claims was six years and the registration had taken place more than six years prior to the commencement of proceedings. The continued holding of the domain name in this case was sufficient for the passing off to involve a continuing cause of action. In Tesco Stores Ltd v. Elogicom Ltd & Robert Ray,876 the High Court awarded the retailer Tesco a quia timet injunction to prevent trade mark infringement and passing off arising from the use of domain names incorporating the “Tesco” name to redirect Internet users to official Tesco websites. The defendant, Elogicom Limited, was part of a websiteaffiliation program with Tesco, run by the Internet firm TradeDoubler AB, that was aimed at increasing traffic to members’ websites. Affiliates registered with TradeDoubler displayed on their websites advertisements that, if clicked on by a visitor to the website, took the visitor to the website of TradeDoubler’s client. Any purchases then made by the redirected visitor on the client’s website were tracked by TradeDoubler’s software and were subject to a 2 percent commission, payable to the affiliate via TradeDoubler. Elogicom registered two websites (www.avon4me.co.uk and www.avonlady.co.uk) with TradeDoubler as affiliate sites on the Tesco-Affiliate Program. As part of the program, Tesco was able to approve all affiliated websites, and it approved both these sites accordingly. However, TradeDoubler’s system allowed an affiliate to register several ancillary domain names grouped under its general site name. In this way, Elogicom registered more than 20 domain names, all of them featuring the word “tesco” (e.g., www.tesco2u.co.uk, www.tesco-diet.com, and www.tescojersey.co.uk). If an individual searching the Internet entered any of these Tescorelated domain names into the address bar on his or her computer, they took him or her not to either of the two Elogicom registered websites but instead to an official Tesco website. The TradeDoubler software recorded this traffic with those users directed to the Tesco website by clicking on the advertisements on the avon4me.co.uk and avonlady.co.uk websites. It appeared to Tesco that large amounts of traffic were being generated by these websites, when in reality the traffic was the result of Elogicom’s ownership of the various Tesco-related domain names. The payments due Elogicom from Tesco via TradeDoubler increased from £75.42 in April 2005 to £26,688 in May 2005. Tesco brought proceedings against Elogicom and Robert Ray, the sole director and majority shareholder of Elogicom, for trade mark infringement and passing off. Although the High Court found that Elogicom had not used the “tesco” domain names to 876. [2006] E.W.H.C. 403 (Ch., March 8, 2006), available at www.bailii.org/ew/cases/ EWHC/Ch/2006/403.html. Vol. 97 TMR 665 direct consumers to its own websites or to sell its own goods or services, Elogicom was nevertheless found guilty of passing off and infringing Tesco’s trademarks under Sections 10(2) and 10(3) of the Trade Marks Act 1994. In relation to Section 10(2), the judge found that the defendants had infringed Tesco’s trade marks because the provision of the domain names constituted a “service” in its own right that was identical or similar to the services covered by Tesco’s trade mark registrations. Under Section 10(3), the defendant’s use of the Tesco-related domain names took unfair advantage of the Tesco brand, in that, first, the domain names contained the word “tesco” in order to trade off Tesco’s reputation and, second, through such use the defendant captured part of the Internet traffic of people entering Tesco-related names into their address bars in order to locate genuine Tesco websites and obtained payment of commission from Tesco, via TradeDoubler, as a result. In addition, the defendants were guilty of passing off for attempting to trade on Tesco’s goodwill and because their threat to continue using the Tesco name could damage that goodwill. In the circumstances, the judge felt that the granting of a quia timet injunction was entirely appropriate. URUGUAY I.B.7.b. Three-Dimensional Marks Unilever N.V. filed an application for the design mark LABEL (VIENNETTA 3-D Device), to distinguish “ice-creams, water ices, frozen confections, and preparations to make such products” in International Class 30 (see below). The Uruguayan Patent and Trademark Office (PTO) granted the referenced application but without exclusive rights over the dessert design, on the ground that it considered the design generic and therefore included in the prohibitions of the Uruguayan Trademark Act.877 877. Resolution of the Patent and Trademark Office, September 26, 2002. 666 Vol. 97 TMR Unilever brought an administrative appeal against the PTO’s decision not to grant it exclusive rights over the dessert design. The company argued that the design was not common, but rather was novel and unique, and that it had the fantasy element necessary to be admitted in the register. Additionally, the appellant stressed that its mark was widely recognized among the consumer public. The Board of Appeals in Trademark Matters dismissed Unilever’s petition on the same ground as that given by the PTO.878 Unilever presented a final claim before the High Administrative Court, the highest body in Uruguay with jurisdiction over administrative decisions issued by governmental bodies, seeking the annulment of the PTO’s resolution. The claimant furnished abundant materials in support of its position, evidencing the worldwide use and registration, with exclusive rights over the dessert design, of the mark LABEL (VIENNETTA 3-D Device) and illustrating said mark’s international notoriety and widespread popularity among consumers, including the Uruguayan consumer public. In addition, Unilever placed special emphasis on the fact that the PTO had already approved a prior application from the company for the mark VIENNETTA (label), which was formed by the term VIENNETTA and a dessert design that was very similar to the one at issue, and had granted Unilever exclusive rights over the design. The High Administrative Court, by unanimous decision of all its members, accepted Unilever’s claim and ruled in favor of annulling the contested decision.879 In their ruling, the judges stressed that the plaintiff claimed rights over the specific representation of a dessert, which, in the opinion of the Court, was a unique and original label with a combination of colors and shapes arranged in such a way as to confer undisputable distinctive power on the mark as a whole. In addition, the Court underscored that the trademark sign (label) whose inclusion in the register was requested presented the requisite novelty and specialty characteristics required under Uruguay’s trademark law. The judges pointed out, moreover, that while the image in question referred to an ice cream cake, it was not a common or ordinary ice cream dessert, as it consisted of alternating wavy layers of white, light-brown, and dark-brown ice cream, producing an image that was original and special. 878. Resolution of the Board of Appeals in Trademark Matters, October 1, 2003, published in Official Gazette No. 26,363, October 17, 2003. 879. Ruling of the High Administrative Court, Case No. 846/03, Ruling No. 295/06, April 19, 2006. Vol. 97 TMR 667 Last, the Court stressed that the challenged administrative decision was contradictory, because the PTO had previously granted the company registration of the mark VIENNETTA (label), with exclusive rights over all the elements that comprised it—that is, the term VIENNETTA and a dessert design that was almost identical to the one whose registration the PTO had sought to limit. VIETNAM I.B.8.a. Similarity of Marks T.C. Pharmaceutical Industries Co., Ltd. (T.C. Pharmaceutical Industries), a Thai company, is the owner of the trademark Double Bulls Device in Circle, registered in Vietnam for goods in International Classes 5 and 32.880 The trademark is used for energy drink products. T.C. Pharmaceutical Industries lodged an opposition with the National Office of Intellectual Property of Vietnam (NOIP) against the grant of a registration certificate for the graphic element Double Animals Device in the trademark THAILAND FLAVOUR & Double Animals Device of Tu Thien Manufacture, Import-Export Services and Investment Receiving Company (Tu Thien Co.), applied for to cover energy drinks (not including pharmaceutical preparations) in Class 32.881 (See below, illustration at left.) The opposition was based on the following grounds: 1. Tu Thien Co.’s mark THAILAND FLAVOUR & Double Animals Device—in particular, the graphic element Double Animals Device, depicting two fighting animals (rhinoceroses) in a half circle—was confusingly similar to T.C. Pharmaceutical Industries’ trademark Double Bulls Device in Circle. (See below, illustration at right.) 2. The goods covered by the trademarks under comparison were identical. 3. T.C. Pharmaceutical Industries’ mark was registered and used prior to the filing date of Tu Thien Co.’s trademark application. If registration of the opposed mark were granted, it would cause confusion among consumers as to the origin of the products covered and damage the opponent’s prestige and image. After carefully considering the opposition, the NOIP agreed with the argument that the Double Animals Device graphic was confusingly similar to the trademark Double Bulls Device in 880. Registration No. 6595, April 17, 1992. 881. Application No. 4-2004-01444, filed February 27, 2004. 668 Vol. 97 TMR Circle. Accordingly, the NOIP refused to grant a certificate of registration for Tu Thien Co.’s trademark THAILAND FLAVOUR & Double Animals Device. Tu Thien Co.’s Mark Industries’ Mark T.C. Pharmaceutical III.A.2.b. Similarity of Marks Syngenta Participations AG (Syngenta), a Swiss company, is the owner of the registered trademark CP Frame Device (see below, illustration at top), used in connection with goods in International Classes 1, 5, and 42.882 In particular, the mark is used on the label of the fungicide product TiltSuper. Syngenta lodged an infringement claim at the NOIP against Golden Rice Agrochemistry Joint Stock Company (Golden Rice), on the ground that the device used on Golden Rice Co.’s fungicide product CureSupe was confusingly similar to the mark CP Frame Device on Syngenta’s product TiltSuper (see below, illustrations at bottom). Syngenta’s Trademark CP Frame Device Device on Golden Rice Co.’s Product 882. Registration No. 754902, March 19, 2001. CP Frame Device Mark on Syngenta’s Product Vol. 97 TMR 669 After examining the claim, the NOIP issued a Notification confirming the infringement, on the ground that the device in Golden Rice’s mark was confusingly similar to Syngenta’s registered trademark.883 Disagreeing with the decision, Golden Rice requested that the NOIP reexamine the case; however, upon reexamination, the NOIP’s conclusion was unchanged. Golden Rice filed an appeal with the Ministry of Science and Technology (MoST), the management body of the NOIP, based on the following grounds: 1. Syngenta’s device was not a trademark but only a simple geometric device. Accordingly, everyone could use this device as the unifying element on its product. 2. Golden Rice device was totally different from Syngenta’s. In particular, there were two parallel curving wave lines in Syngenta’s trademark, versus only one curving wave line in Golden Rice’s device. The two devices were also different in size. Moreover, Golden Rice’s aim in designing such a device was to provide a place at the corner of its product for its name and logo. 3. Syngenta’s product TiltSuper had been registered at the Vietnamese Plant Protection Department only since 2003. Therefore, it would not be considered as widely used in Vietnam. 4. Golden Rice conducted an investigation, involving nearly 700 questionnaires, to assess the similarity between the two devices. More than 90 percent of the people responding confirmed that the marks were not confusingly similar. In response, Syngenta argued as follows: 1. Syngenta’s mark CP Frame Device met the protection criteria and, in fact, was protected as a trademark in Vietnam and more than 30 other countries. Therefore, Syngenta had the sole right to use the trademark in Vietnam. 2. Even though Golden Rice used one wave line on its product device and Syngenta’s mark was designed with two curving wave lines, there was not much difference between them, since the curving wave lines were highly similar and were in the same place. Further, by designing such a device and positioning it in the same place, Golden Rice intended to use a trademark that was confusingly similar to the prior registered and used trademark of Syngenta. 883. Notification No. 2472/SHTT-TTKN, December 14, 2005. 670 Vol. 97 TMR 3. As provided by the regulations, if a product has been tested and circulated in other developed countries, it is not necessary that the product be tested in Vietnam. That was the reason why Syngenta’s product TiltSuper was granted a visa for circulation in Vietnam without examination. In fact, Syngenta used the mark CP Frame Device on all of its products, and these products had become familiar to Vietnamese customers. Moreover, the use of the trademark CP Frame Device also marked the history of Syngenta in Vietnam. 4. Golden Rice’s investigation was not objective, because the interviewees were not only farmers but also such people as students, workers, etc., who were not customers for fungicide products. Further, the interviews concerned Golden Rice’s product CureSupe and of Syngenta’s trademark CP Frame Device, but not Syngenta’s product TiltSuper. Therefore, interviewees were not provided with all the information necessary for an accurate comparison of the similarity between the two products. After considering the arguments of Syngenta’s intellectual property agent, the MoST accepted the argument that the device on Golden Rice’s product CureSupe caused confusion among consumers with the device on Syngenta’s product TiltSuper. Accordingly, the NOIP determined that Golden Rice infringed Syngenta’s intellectual property rights in its trademark CP Frame Device. III.B. Unfair Competition Boots Company Plc (Boots), a firm based in the United Kingdom, is the owner of the registered trademark STREPSILS & Device, covering goods in International Class 5.884 (See below, illustration at left.) The trademark is used on anti-cough medicine. Boots lodged a claim with the NOIP against the sale of an anti-cough medicine manufactured by Ha Thanh Pharmaceutical Company Limited (Ha Thanh Co.) and sold under the mark STREPFAMIC & Device (see below, illustration at right), on the ground that such use constituted unfair competition. The company’s main arguments were as follows: 1. The design, color arrangement, and shape of the package bearing Ha Thanh Co.’s mark STREPFAMIC & Device were confusingly similar to the product packaging with Boots’s trademark STREPSILS & Device. In particular, the use of the same prefix, STREP,- in both marks resulted in similarity in pronunciation. Both marks were 884. Registration No. 43856, November 1, 2002. Vol. 97 TMR 2. 3. 671 in black type on a white background, and both package designs were in the colors dark green and red. Moreover, both products were packaged in rectangular nylon packs containing two pills each. The goods covered by the marks under comparison were identical. This could cause confusion among customers with respect to the origin of the goods. The product sold under the mark STREPSILS & Device had been widely used and marketed in Vietnam. Thanks to improvement in product quality and effective advertisements, Boots’s STREPSILS product had become more popular among Vietnamese customers, as evidenced by the high sales turnover of this product over the past several years. Boots’s Product Ha Thanh Co.’s Product After carefully considering the claim, the NOIP concluded that the manufacturing and sale of Ha Thanh Co.’s product under the mark STREPFAMIC & Device constituted an act of unfair competition against the product marketed by Boots under its trademark STREPSILS & Device.885 885. Notification No. 2598/SHTT-TTKN, December 28, 2005. Vol. 97 TMR 673 TABLE OF MARKS €CO .........................................510 208 Mark ................................636 452 Mark ................................636 7-ELEVEN .............................567 800 FLORISTS.......................539 800 FLOWERS.......................539 A ONE ....................................589 AALBORG ..............................451 AALBORG ENGINEERING .454 AALBORG INDUSTRIES .....453 AB FARMO QUÍMICA ..........364 AC ARTURO CALLE ............419 ACCU-CHECK.......................655 ACOTEL .................................628 ADIDAS..........................349, 614 AH CARAMEL!......................377 AIRE LIMPIO ........................438 AIRPURE ...............................395 AKV ........................................343 AL-ASAD................................568 ALCATEL...............................628 ALD AUTOMOTIVE .............466 ALEX FERGUSON................635 ALFREDO VERSACE ...........609 ALL BRAN .............................593 ALLERGAN ...........................339 ALLERGIN ............................339 ALLIN.....................................458 ALPINA ..................................594 AMERICA ..............................416 AMERICAN ...........................416 AMERICAN BUD ..................444 AMERICAN HOUSE.............416 AMERICANOS ......................416 AMOXICLER .........................598 AMOXIL .................................598 AMPILIN................................527 AMRO NEVSKOYE...............604 ANHEUSER BUSCH BUD...444 AQUA PANNONIA................342 AQUAFRESH ........................595 AQUAREL..............................483 ARMANC................................624 ARMANI.................................624 ASAD...................................... 568 ASHOUR TWEETY .............. 566 AUDATEX ............................. 612 AUSTRICA ............................ 342 AVENTIS: OUR CHALLENGE IS LIFE...... 462 AVIS ....................................... 430 B20 ......................................... 600 B21 ......................................... 600 BABIX .................................... 338 BABY DRY............................. 590 BABY PHAT .......................... 388 BALTIC.................................. 573 BALTIJOS ............................. 573 BANSEOXJA 变色鳄世家...... 524 BARBIE ................................. 370 BARBIE'S .............................. 370 BARONIA .............................. 449 BASEMENT BOSS ............... 396 BASIX PLUS ......................... 338 BATMAN ............................... 461 BENETTON........................... 529 BERLINCARD....................... 495 BEST WESTERN .................. 589 BESTE WESTERN (“THE BEST WESTERN”)............ 589 BIG GRAY RABBIT .............. 415 BIG MIXED COLOR RABBIT .............................. 415 BIG WHITE RABBIT............ 415 BIN LADEN .......................... 448 BINGO ................................... 563 BIT ......................................... 444 BITTE EIN BIT!.................... 445 BLANCO ................................ 481 BLANDO................................ 481 BLEND................................... 456 BOJANGLES CAFÉ.............. 374 BORA BORA.......................... 458 BOSCH................................... 427 BOSE...................................... 424 BOSS .............................. 493, 616 BOSS AUDIO SYSTEMS ..... 424 BRAN FRUT.......................... 592 674 BSCH......................................427 BUD ........................................444 BUDDY LEE ..........................573 BUGLES.........................455, 613 BULLDOG..............................359 CAESAR .................................574 CALLE....................................419 CALVIN KLEIN ....................388 CANALI..................................551 CARAMELLA ........................377 CARTIER ...............................558 CASA AMERICANA..............416 CEBAL AMERICAS ..............416 CENTRO MODA....................552 CERESIT................................464 CESARI ..................................574 (CHÂTEAU) MOUTON ROTHSCHILD ...................356 CHOCO'N'MORE...................496 CHOCOPIE ............................501 CIFUENTES WINKS ............639 CINDY ....................................565 CINE CLASSICS ...................418 CITIBANK .....................511, 615 CITIBILLS .............................510 CITIBUSINESS .....................512 CITICARD..............................615 CITICASH ..............................512 CITICHECKUP .....................510 CITICORP ..............................512 CITIDIRECT..................512, 615 CITIFREEDOM .....................512 CITIFUND .............................512 CITIGOLD..............................512 CITIGROUP...........................615 CITILAN ................................615 CITILINK...............................615 CITIMEN ...............................615 CITINET ................................615 CITIPACK ..............................615 CITIPAY.................................512 CITIPHONE...................512, 615 CITIPRICE.............................510 CITISMILE ............................510 CITISOUND...........................615 CITRAMON-FORTE STIROL...............................575 CITRAMONUM-P .................575 Vol. 97 TMR CLASSIC................................ 450 CO-ENAPRIL 1A PHARMA. 334 COLORADO .......................... 324 COMPAC TOP....................... 618 COMPAQ ............................... 618 COMPAQ TOP....................... 618 CROCODILE ......................... 412 D.SAMPLE ............................ 600 DAI ......................................... 619 DAIICHI ................................ 619 DANCE VALLEY .................. 349 DANIAH ................................ 563 DANONE ....................... 404, 563 DAR’KIE PEPPERMINTS.... 534 DARKIE ................................. 534 DARLIE ................................. 534 DEBENHAMS ....................... 633 DEBORAH LEE .................... 573 DECORTEXTILES................ 460 DELL...................................... 351 DERMAPHARM.................... 589 DEWILUX.............................. 570 DICK & FANNY.................... 448 DICK SMITH ELECTRONICS POWERHOUSE................. 585 DO WHAT FEELS GOOD .... 546 DOMAINE DU MOUTON .... 356 DORINA FREE & EASY ...... 508 DORINA HAPPY BABY ....... 508 DORINASEX ......................... 508 DOUBLE YOLK LOTUS SEED PASTE..................... 406 DOUBLE YOLK WHITE LOTUS SEED PASTE....... 406 DOUWE EGBERTS .............. 358 DRI-FIT.................................. 627 DULUX .................................. 570 DUPONT................................ 480 DVARO .................................. 576 E! ONLINE ............................ 545 EASTMAN ............................. 464 EKO........................................ 510 EL FORTÍN ........................... 435 ELIZABETH EMANUEL ..... 467 ELLE...................................... 353 ELLE & LUI .......................... 353 ENAPRIL CO 1A PHARMA . 334 Vol. 97 TMR ENCLAVE DU MOUTON.....356 ΕΡΜΗΣ (ERMÍS) ...................504 EPMHΣ (“HERMES”) ............515 ESPIRALETTI .......................399 ESSO ......................................488 EUROPOLIS ..........................471 EXPANDIT.............................456 EXPRESS MAIL ....................375 FAIRLIGHT ...........................606 FAKE ......................................482 FAMADOL .............................502 FAMILIA ................................348 FARMOQUÍMICA .................363 FAXE ......................................482 FCUK......................................638 FEMALE TREASURE...........357 FEMIGESIC...........................459 FENDI ....................................513 FERRARI ...............................499 FERRERO ..............................437 FERRERO ROCHER.............413 FERRÓ ...................................437 FETUCHETTI .......................399 FIESTA...................................505 FIESTA FERRERO ...............505 FILA .......................................365 FIRST-CLASS MAIL.............375 FISCHER ...............................456 FLOXAMICIN BIOTENK .....322 FLUTICORT ..........................458 FOOK......................................639 FORD......................................552 FRANCO MARTINI ..............622 FUCICORT ............................458 GALA ......................................571 GALA LOEWE .......................570 GALLO ...................................428 GAMBLER .............................575 GAME BOARD ......................462 GASPRIDE.............................316 GIANNI VERSACE ...............609 GLEEM...................................561 GLEMO ..................................561 GLUCO B NESTLE...............463 GLUCOR ................................463 GONDIL .................................575 GOOGLE ................................480 GROUPREALTOR.................400 675 GRÜNBURGER .................... 603 GTX ........................................ 565 GUIA DORADA..................... 596 GULE SIDER (“YELLOW PAGES”) ............................. 591 GULF ..................................... 561 GULF WORLD FOR LUBRICANTS ................... 561 HANSA .................................. 568 HARD ROCK CAFÉ.............. 463 HARLEY ................................ 369 HARLEY-DAVIDSON .......... 369 HARLEYWOOD .................... 369 HE .......................................... 353 HENDI BAGS........................ 513 HERMANS ............................ 504 HERMÈS ............................... 504 HIJ ......................................... 353 HIS ......................................... 353 HISTOFREEZER .................. 590 HOLANDA DE WALL´S....... 462 HOLLANDHOSE .................. 356 HOUSE OF BLUES .............. 397 HUGO BOSS ......................... 493 HUGOBOSS .......................... 616 HUMO DE LEÑA LIQUIDO............................ 435 HUSH PUPPIES ................... 316 I STYLE ................................. 617 IBERIA................................... 506 IBERIANA ............................. 506 IBIS ........................................ 430 ICA MAXI .............................. 482 IDEAS PARA SU HOGAR (“IDEAS FOR YOUR HOME”).............................. 460 IMMOMAXX.......................... 336 IN VITRO............................... 454 INDATEX .............................. 612 INDIAN VALLEY ................. 349 INTEGRA .............................. 612 INTER CITY FIRM............... 638 INVITROGEN ....................... 454 IPC 252 GTX.......................... 566 ÍPSEI ..................................... 354 JAGUAR ................................ 540 JAVA ...................................... 368 JAVACAFE............................ 368 676 JINSHA ..................................413 JINSHA FERRERO ROCHER ............................414 JINSHA TERESOR DORE ...414 KALTEN.................................659 KAPPA....................................623 KAPPAZ .................................623 KARISMA...............................533 KARISMA 125........................533 KARISMA 125D.....................533 KENZO TAKADA ..................488 KLAUS KOBEC.....................645 KLIPON..................................587 KONICA .................................490 KRIPTONITA ........................461 KRIPTONITE ........................461 KRISMA 125 EFC .................532 KUAT......................................362 L LOMANI .............................592 LA BARONNIE......................449 LA CASTA..............................486 LA FESTA ..............................505 LABEL (VIENNETTA 3-D Device) ................................665 LABORATOIRE DE LA MER........................642 LACOSTE...............................487 LADY AMERICANA .............416 LARIDON...............................564 LAUREN RALPH LAUREN .607 LEE.........................................573 LEFRIT ..................................426 LEGO......................................513 LEGO SYSTEM .....................515 LEGRIFF................................426 LES BOUTIQUE CLIQUOT .380 LES MARCHÉS TRADITION .......................385 LEVI'S ....................................388 LINKIN PARK.......................635 LITTLE SHEEP.....................413 LITTLE WHITE RABBIT .....415 LIVIA......................................605 LO NUESTRO........................596 LO NUESTRO 102.1 FM.......596 LOMANI.................................592 LONGCHAMP ...............630, 632 LOTO ......................................614 Vol. 97 TMR LOUIS VUITTON ................. 388 LUTONG’S 3-STRIPE DEVICE.............................. 614 M 387 MACCOFFEE........................ 577 MAGIA BLANCA .................. 459 MAJOR IMAGE GROUP...... 574 MARC..................................... 507 MARCOROSSI ...................... 443 MARIENBURG RUM ........... 358 MARTINI ............................... 622 MARTINI MARTINI ............. 622 MARTINI ROSSI................... 622 MATERNA............................. 571 MATERNA-Z ......................... 571 MATRATZEN ........................ 468 MAX FRESH ......................... 595 MAXI...................................... 482 MC VEGGIE .......................... 320 MCDONALD’S ...................... 320 MELLO YELLO .................... 361 MEMORY....................... 344, 482 MERCEDES BENZ ............... 616 MERCEDEZ-BENZ KLUBAS............................. 577 MERCK.................................. 508 MERS ELITA TAXI TAKSI.. 577 MICHELIN ............................ 616 MICROSOFT ......................... 519 MICTONORM ....................... 612 MIKTOSAN ........................... 612 MILKA ................................... 319 MILKBEARS ......................... 537 MISS ROSSI .......................... 443 MOBIL ................................... 616 MOMBASA ............................ 479 MONT BLANC ...................... 485 MOO JUICE .......................... 644 MORRISONS......................... 516 MOULIN ROUGE ................. 576 MOUTON CADET ................ 356 MUST..................................... 487 MUSTANG ............................ 573 MŪSŲ .................................... 576 MŪSŲ DVARO...................... 576 NAPOLITANO ...................... 398 NEDERHOSE........................ 356 NEOCITRAMONAS.............. 575 Vol. 97 TMR NESPRESSO..........................338 NESTLÉ .................................483 NESTLE MILKY BAR...........537 NESTLÉ TRIX .......................423 NEUROCIN ...........................338 NEUROTONIN......................338 NEVSKOYE ...........................604 NEWCASTLE ........................494 NIVEA ....................................605 NO FEAR ...............................401 NO FRILLS ............................366 NORMA ..................................498 NOTE-IT.................................590 NOVAPRESS .........................481 NOVATECH...........................481 NUTRAVITE..........................384 NUTRI-INTENSE .................491 NUTRILITE ...........................384 NUTRI-RICHE ......................491 ÖKK INTEGRA .....................613 OLIVIA ...................................453 OLIVIA NEWTON-JOHN.....453 OLYMPIC...............................547 OLYMPIC GAMES ................547 OLYMPNET...........................547 OPEN TV................................431 OPEN UP ...............................431 ORANGE ................................518 OTTO ......................................498 OVASTOP ..............................590 PACO ......................................640 PACO LIFE IN COLOUR .....640 PAGINAS DORADAS PUBLICAR, S.A. ................596 PAM-PAM ..............................440 PAM-PAM SERVICIO DE MERCHANDISING, SA ....440 PAM-PIM’S BABY-PROP......440 PANADOL..............................503 PANADOL EXTRA ................503 PANAMA Y LO NUESTRO ..596 PANASONIC..........................617 PAUL CALLEY......................419 PAYREX .................................480 PEARLSHELL .......................407 PEDIMUST ............................487 PEONY BRAND ....................367 PEPSI .....................................354 677 PEPSI-COLA ......................... 355 PERFUMANIA...................... 406 PERRY ELLIS ....................... 388 PERUZZI ............................... 549 PIOLIN .................................. 402 PLAYSTATION ..................... 654 POLIAMERICANA ............... 416 POLO ..................................... 607 POLO BY RALPH LAUREN .............. 607 POLO PACIFIC..................... 607 POLO RALPH LAUREN ...... 607 POPEYES .............................. 564 POST-IT ................................. 590 POWER .................................. 578 POWERFOODS..................... 347 PREMIER SUR LE MATIN . 484 PRESIDENT’S CHOICE....... 373 PRO-1000............................... 597 PRO-1000 PLUS.................... 597 PRO-270................................. 597 PRO-370................................. 597 PROTEOS .............................. 612 PROTOS................................. 612 PUBAY................................... 564 PUNCH .................................. 321 PUP’S SHOES ....................... 316 PUROLATOR ........................ 569 PURPLE................................. 583 QUESITRIX........................... 423 QUONTYL ............................. 575 RAFFAELE UNGARO.......... 550 RALPH LAUREN.................. 607 RAMBLER ............................. 575 RANITIDINE......................... 527 RANITISTAD ........................ 527 RAPTOR ................................ 363 REALTOR.............................. 400 RED BULL ............................ 352 RED ENERGY....................... 352 RELLA ................................... 613 RENAPUR ............................. 559 RHINOCEROS OR FOURLEGGED BEAST IN WALKING POSITION ...... 425 RIGACCHETTI ..................... 399 RINGO ................................... 563 ROBE DI KAPPA .................. 623 678 ROLEX ...................................480 ROLLEX .................................480 ROTHMANS ..................606, 626 ROYAL COPENHAGEN .......452 S.C. SERVICOMPRAS 24 .....320 SACHER.................................341 SALCO....................................403 SARIDON...............................564 SCHWEPPES.........................616 SCREW YOU .........................447 SELBEX CAPSULES ............558 SEÑOR FROG’S ....................323 SENSI.....................................417 SENSIBIO ..............................417 SENSIFLUID.........................417 SENSIKIT ..............................417 SENSITIF...............................417 SENSITIQ ..............................417 SENZA PIOMBO ...................344 SEPTWOLVES 七匹狼...........520 SERGIO ROSSI .....................443 SERTRAL...............................526 SHAPE OF A ROOSTER ......428 SHELL....................................407 SHEYANG RICE ...................410 SI ES GOYA, TIENE QUE SER BUENO (“IF IT’S GOYA, IT’S GOT TO BE GOOD”) ..................597 SIE & WIR .............................336 SIMPLE..................................601 SINDY ....................................565 SIXTYSEVEN BY MUSTANG .........................572 SKAGEN ................................591 SKAGENMEGLERNE (“SKAGEN BROKERS”) ....591 SMARTIES.............................335 SMI .........................................345 SODA STREAM .....................341 SODA-CLUB ..........................341 SOLAR....................................574 SPACCHETTI ........................399 SPECIAL EFFECTS..............660 SPECIAL FX ..........................660 SPORTS POWER...................578 STAR JEWELRY ...................610 STARS FOR FREE ................611 Vol. 97 TMR STEFANO PERUZZI ............ 549 STOLICHNAYA .................... 345 STOLNAYA ........................... 345 STREPFAMIC ....................... 670 STREPSILS ........................... 670 STUDIENKREIS................... 336 SUPERFUND ........................ 525 SUPERMAN .................. 403, 461 SUPERTEX ........................... 433 SUTTER CLEAN .................. 318 SUTTER DEO ....................... 318 SUTTER FLASH ................... 318 SUTTER FLOOR................... 318 SUTTER HAND .................... 318 SUTTER HYGENE ............... 318 SUTTER MATIC ................... 318 SUZANNE’S .......................... 389 SWISS MARKET INDEX ..... 345 T.S.C. THE SALES CHANNEL ......................... 320 TAKADA ................................ 488 TALPA ................................... 351 TCHIBO CAPPUCCINO CLASSIC ............................ 451 TEJIENDO IDEAS . . . PARA SU HOGAR (“WEAVING IDEAS . . . FOR YOUR HOME”) ......... 460 TEMGESIC............................ 459 TENAX................................... 572 THAILAND FLAVOUR ........ 667 THE KITCHEN COMPANY. 472 THE OLYMPIC STORE ....... 547 THE OLYMPICS ................... 547 THE PRINCIPAL FINANCIAL GROUP ........ 484 THERMOCOOL .................... 479 THEROX ................................ 610 TIEN ...................................... 350 TOILE MONOGRAM............ 553 TOMMY HILFIGER ............. 463 T-ONLINE ............................. 545 TOPPITS................................ 350 TORONTO RAPTORS .......... 363 TRADITION .......................... 385 TRADITION MARKET FRESH FOODS ................. 385 TRÉSOR................................. 357 Vol. 97 TMR TRIX .......................................423 TUB-ITS .................................350 TUCANO ................................411 TV 10 ......................................350 TWEETY ................................566 TWEETY/PIOLIN..................402 ULTRAFLEX .........................594 ULTRAFLEX LATEX SOLE...................................594 UNGARO................................550 UNGARO ITALY ...................550 UNITED STATES POSTAL SERVICE ............................375 US BASIC...............................528 VEADO ...................................601 VERALOÉ ..............................599 VERAMINA ...........................317 VERAMINA OCEFA .............317 VEROTINA ............................317 VERSACE ..............................609 VEUVE CLICQUOT..............380 VIBE .......................................388 VIBE DESIGN .......................388 VIENNETTA..........................666 VINTAGE ...............................489 VINUM ...................................340 VIRGIN ..................................382 VITACTIVE............................450 VITAFIT .................................450 WALT DISNEY......................380 679 WANSA .................................. 568 WE.......................................... 353 WELLA .................................. 613 WELLMARK ......................... 360 WELLNESSPRESSO............ 338 WEST ..................................... 616 WHITE RABBIT.................... 415 WIENER WERKSTÄTTE..... 347 WILD ANIMAL IN CHARGING POSITION OR BULL IN FIGHTING ATTITUDE......................... 425 WIN FAST ............................. 632 WOOD PECKER ................... 410 WOW ...................................... 572 WÜRTH PHOENIX............... 611 www.avon4me.co.uk.............. 664 www.avonlady.co.uk.............. 664 WWW.GIRA.LT ..................... 576 www.tesco2u.co.uk ................. 664 www.tesco-diet.com ................ 664 www.tescojersey.co.uk ............ 664 XEROX................................... 457 YOU & ME............................. 353 ZENGO................................... 563 ZHEJIANG CROCODILE .... 412 ZIJ .......................................... 353 ZORR...................................... 339 ZORRO................................... 339 In-House Trademark Counsel’s Workshop June 5, 2007 | BRUSSELS, BELGIUM Don’t miss INTA’s first benchmarking event for corporate trademark owners in Europe! With the help of several of the world’s leading authorities in trademark law from the corporate sector, discover how other trademark owners in Europe protect their brands and trademarks through proper strategic planning, use of best practices and past experiences as well as lessons learned the hard way. At this workshop you can: • Learn how other trademark owners structure their IP departments • Hear effective ways to create a brand protection team environment with the marketing department • Discover the risks and benefits experienced by other companies with outsourcing of services • Pick up tips to streamline internal processes to make your trademark department’s operation more efficient and cost effective Enrollment for this unique program is limited to 100 INTA Regular (Corporate) Members and non-member in-house practitioners to allow for meaningful, interactive discussion. Early registration is highly recommended as this program will surely sell out. Visit www.inta.org/go/education to register and find out more today! And if you also register for the INTA / OHIM Conference: Community IP Rights – Present and Future, taking place at the same location the day before, you can take advantage of the special combination rate! Price In-House Trademark Counsel’s Workshop Only Early Bird Non-Early Bird Members US $300.00 + US $63.00 VAT US $300.00 + US $63.00 VAT Non-MembersUS $300.00 + US $63.00 VAT US $300.00 + US $63.00 VAT Combined Discount (with INTA / OHIM Conference) Early Bird Non-Early Bird Members US $775.00 + US $162.75 VAT US $875.00 + US $183.75 VAT Non-MembersUS $900.00 + US $189.00 VAT US $1,000.00 + US $210.00 VAT INTA / OHIM Conference Community IP Rights – Present & Future June 4, 2007 | BRUSSELS, BELGIUM The International Trademark Association (INTA) and the Office for Harmonization in the Internal Market (OHIM) present their third collaborative conference for trademark practitioners: Community IP Rights – Present & Future. Designed for brand owners and advanced-level professionals in the trademark and related fields, this one-day conference will provide valuable insights and tips on enhancing your success rate in dealing with OHIM, registering your trademarks and designs, and enforcing Community Trade Mark rights. Top reasons to register: • Exchange ideas with a highly experienced and authoritative faculty • Meet with senior officials at the Office for Harmonization in the Internal Market and the European Commission • Learn to make the most of your registered and unregistered Community Design rights Visit www.inta.org/go/education to register and find out more today! And if you are a Regular Member or in-house counsel and also register for the In-House Trademark Counsel’s Workshop, taking place at the same location the next day, you can take advantage of the special combination rate! Price INTA / OHIM Conference Only Early Bird Non-Early Bird Members US $550.00 + US $115.50 VAT US $650.00 + US $136.50 VAT Non-Members US $675.00 + US $141.75 VAT US $775.00 + US $162.75 VAT Combined Discount (with In-House Trademark Counsel’s Workshop) Early Bird Non-Early Bird Members US $775.00 + US $162.75 VAT US $875.00 + US $183.75 VAT Non-Members US $900.00 + US $189.00 VAT US $1,000.00 + US $210.00 VAT Trademark Administration Paralegal Symposium June 25 – 26, 2007 | Munich, Germany Attention European paralegals and trademark administrators: INTA is coming to Munich, Germany to provide valuable information on trademark management! The Trademark Administration Symposium is designed specifically for paralegals and trademark administrators in Europe. Join INTA and a faculty of experts including non-attorney trademark professionals for this in-depth two-day program covering: • Managing a multinational trademark portfolio • Practical aspects of the classification and formulation of goods and services • Extension of international registration to the United States • Current issues, developments and problems in proceedings before the Office for Harmonization in the Internal Market (OHIM) All presentations and course materials will be in German. Visit www.inta.org/go/education to register and find out more today! Price Early Bird Non-Early Bird Members US $750.00 + US $142.50 VAT US $800.00 + US $152.00 VAT Non-Members US $950.00 + US $180.50 VAT US $1,000.00 + US $190.00 VAT R O U N D TA B L E S Various Locations These popular discussions cover a variety of topics and are held in numerous cities throughout the United States. Designed to fit into the busy shcedules of trademark professionals, roundtables are an ideal way to conveniently meet colleagues and stay current on trademark issues. U.S. Roundtables Trademark Trial and Appeal Board (TTAB) Practice July 15 – 29, 2007 Trademark Prosecution for Lawyers October 8 – 28, 2007 Price US $45.00 Trademark Administrators Roundtables Proper Trademark Use June 11 – 22, 2007 Managing Trademark Portfolios October 15 – 26, 2007 Price US $45.00 Visit www.inta.org/go/roundtables for further details GUIDELINES FOR SUBMITTING MANUSCRIPTS TO THE 7 TRADEMARK REPORTER 1. Length of articles is flexible, depending upon what is necessary to adequately cover the subject. Articles can be sent via email to [email protected] or a hard copy and disk can be mailed to: The Trademark Reporter7, 655 Third Avenue, New York, NY 10017-5617 USA. 2. Articles under consideration are initially sent to our Articles Editors for a pre-review to assess the topic and quality of the article and decide if the article is one that the TMR wishes to pursue. If the article is accepted, it is sent to three members of our Editorial Board for review and comment. To ensure an objective process, the author's name is removed from the article. The reviewer's comments are then sent to our Articles Editor and Editor-in-Chief for a final publication decision. This process usually takes about 60 days. During this review process, we ask that contributors make a commitment to the TMR and not publish their articles elsewhere. Our reviewers are practitioners and other trademark professionals who contribute their time on a voluntary basis. The TMR counts on their expertise to ensure the quality of articles published in the TMR and we ask that contributors respect the time commitment they make. 3. The style of citations should follow The Bluebook: A Uniform System of Citation. THE TRADEMARK REPORTER7 ONLINE International Trademark Association: Issues of The Trademark Reporter7 beginning with Volume 88, Number 1, 1998, are available to INTA members under Information & Publishing at www.inta.org. LexisNexis7: All issues of The Trademark Reporter7, beginning with Volume 32, Number 1, 1942, are available on the LexisNexis7 service database under Law Reviews & Journals at www.lexis.com. Westlaw7: Issues of The Trademark Reporter7, beginning with Volume 80, Number 1, 1990, are available on the Westlaw7 service database under Treatises & Other Materials at www.westlaw.com. BACK ISSUES Current and prior year's issues of The Trademark Reporter7 are available at International Trademark Association. Earlier issues can be ordered directly from: William Hein & Company Inc. 1285 Main Street Buffalo, NY 14209 USA +1 (716) 882-2600 MICROFILM All issues of The Trademark Reporter7, beginning with 1911, are available on microfilm and/or microfiche and can be ordered from: ProQuest Information and Learning 300 North Zeeb Road Ann Arbor, MI 48103 +1 (800) 521-0600 +1 (734) 761-4700 www.il.proquest.com
