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® Official Journal of the International Trademark Association ANNUAL REVIEW The Twelfth Annual International Review of Trademark Jurisprudence Vol. 95 March-April, 2005 No. 2 Vol. 95, No. 2 ® THE TRADEMARK REPORTER Pages 267 to 581 March-April, 2005 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 ANNE GUNDELFINGER ............................................................................................................. President PAUL W. REIDL ............................................................................................................... President Elect RHONDA STEELE .............................................................................................................. Vice President DEE ANN WELDON-WILSON ............................................................................................ Vice President RICHARD HEATH ...................................................................................................................... Secretary SCOTT E. THOMPSON ...............................................................................................................Treasurer ALAN C. DREWSEN.....................................................................................................Executive Director EDITORIAL BOARD SANDRA EDELMAN, Editor-in-Chief ROBERT M. KUNSTADT, International Articles Editor LANNING G. BRYER, International Articles Editor PIER LUIGI RONCAGLIA, International Articles Editor CLIFFORD W. BROWNING, United States Articles Editor SHERRI FELT DRATFIELD, United States Articles Editor JONATHAN MOSKIN, United States Articles Editor BENJAMIN Y. AGRESS RAYMOND G. AREAUX ALLEN J. BADEN WILLIAM G. BARBER MARTIN J. BERAN DANIEL R. BERESKIN CHRISTOPHER P. BUSSERT MICHAEL CANTWELL THOMAS L. CASAGRANDE ROSEMARIE CHRISTOFOLO LAURENCE P. COLTON PATRICK CONCANNON JOHN M. CONE RUTH CORBIN BARTH DE ROSA CHRIS DEJARDIN WENDY DIAZ JOAN L. DILLON JON A. DORF TILA M. DUHAIME JONATHAN M. EISENBERG CATE ELSTEN THEOPHILUS I. EMUWA DANA A. FERESTIEN GERALD L. FORD GREGORY FRANTZ EILEEN KING GILLIS CHRISTOPHER GLANCY DANIEL C. GLAZER ELENA GRIMME STACY GROSSMAN FRED W. HATHAWAY CHRISTY L.E. HUBBARD JAMES HUMANN SCOTT KAREFF IMAN KARKHANEHCHI BRUCE P. KELLER FARRUKH I. KHAN EDWARD G. LANCE IV BINGHAM B. LEVERICH KWAN-TAO LI CARMEN LICHTENSTEIN THAD G. LONG MARIE LUSSIER KEVIN MACKINNON MICHELLE MANCINO MARSH DOUGLAS N. MASTERS JONATHAN D. MATKOWSKY JOHN GARY MAYNARD J. THOMAS MCCARTHY KATHLEEN E. MCCARTHY ANTONY J. MCSHANE GABRIEL R. MENESES CHRISTOPHER MICHELETTI C. JOE MILLER KAREN A. MONROE MARIA K. NELSON REGINA A. O'BRIEN SALVATORE ORLANDO JOHN PEACOCK DEBORAH PECKHAM ANTHONY M. PRENOL H. JONATHAN REDWAY MAURIZIO SARPI DARREN W. SAUNDERS ERIC P. SCHROEDER MARK J. SEVER ALEX SIMONSON SUSAN A. SLATER BARRY I. SLOTNICK RANDY S. SPRINGER JAMES STRONSKI JAMES L. VANA JOHN THOMAS WARLICK MICHAEL J. WEBER CONRAD WEINMANN JORDAN S. WEINSTEIN JOSEPH J. WEISSMAN JOHN L. WELCH SUSAN NEUBERGER WELLER THOMAS WETTERMANN PETER E. WILD ERIN WILLIAMS DOUGLAS R. WOLF BARRY JOSEPH YEN RANDI MUSTELLO, Managing Editor JOHN MORALES, Assistant Editor Advisory Board—Former Editors MILES J. ALEXANDER WILLIAM M. BORCHARD 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. GUIDELINES FOR SUBMITTING MANUSCRIPTS TO THE TRADEMARK REPORTER7 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. LexisNexis™ Service All issues of The Trademark Reporter7, beginning with Volume 32, Number 1, 1942, are available on the LexisNexis™ service database. Library/File Location: TRDMRK/TMR Westlaw7 Service Issues of The Trademark Reporter7, beginning with Volume 89, Number 1, 1999, are available on the Westlaw7 service database. Identifier: TMARKR 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 48106-1346 USA +1 (734) 761-4700 ® (USPS 636-080) Copyright 2005, by the International Trademark Association All Rights Reserved Vol. 95 March-April, 2005 No. 2 TABLE OF CONTENTS ARTICLES AND REPORTS ANNUAL REVIEW The Twelfth Annual International Review of Trademark Jurisprudence Editor’s Note ...................................................................................267 Part I. Acquisition of Rights and Registrability .............................. * A. Acquisition of Rights ................................................................... * 1. Bases for Acquisition ........................................................... * a. Functionality .................................................................. * b. Quality and Quantity of Use .............................280, 451 c. Appropriation of a Trademark ...................................... * 2. Assignments.............................................................272, 373 3. Licenses ............................................................................331 4. Protection for a Non-Renewed Trademark......................... * 5. Bankruptcy...............................................................273, 308 B. Registrability............................................................................... * 1. Generic Names.................................304, 332, 374, 509, 529 2. Merely Descriptive Terms ......309, 354, 358, 376, 379, 399, 437, 452, 462, 482, 531 3. Not Merely Descriptive Terms .......................274, 424, 532, 543, 573, 576 (continued on next page) * 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 95 TMR ___ (2005). 4. 5. 6. 7. Geographical Names........286, 355, 399, 418, 424, 518, 551 Personal Names .......305, 324, 341, 380, 387, 478, 530, 552 Letters and Numbers.......................................................528 Device and Design Marks................................................483 a. Two-Dimensional Marks ...................................286, 426 b. Three-Dimensional Marks........286, 311, 342, 365, 381, 468, 520, 533, 544 8. Likelihood of Confusion ......................................................520 a. Similarity of Marks...........275, 305, 325, 333, 343, 356, 358, 360, 374, 388, 400, 427, 439, 452, 462, 483, 510, 552 b. Similarity of Goods/Services......................389, 401, 534 c. Conflict Between Trademarks and Corporate Names.........................................................275, 487, 521 9. No Likelihood of Confusion ................................................. * a. No Similarity of Marks .............277, 283, 348, 359, 374, 389, 402, 428, 442, 453, 488, 535, 539, 573 b. No Similarity of Goods/Services ........313, 464, 513, 535 10. Deceptive Marks................................................................403 11. Other Objectionable Features ............................................. * a. Copyright Protection..................................296, 334, 371 b. Official Names............................................................334 c. Violation of Public Order ...........................................430 d. Scandalous Mark .......................................................431 e. Bad Faith....................................................296, 376, 553 12. Famous Marks ................................314, 328, 349, 362, 375, 432, 449, 465, 491, 569 13. First to Apply Versus First to Use.................297, 335, 450, 466, 500 14. House Marks ........................................................................ * 15. Foreign Registrations .......................................................... * 16. Trade Dress .......................................................................... * 17. Disclaimers........................................................................... * 18. Joint Ownership...............................................................336 19. Slogans .............................................................................357 20. Color .........................................................................382, 502 21. Trade Names............................................................336, 378 22. Distinctiveness.................287, 315, 375, 391, 419, 433, 555 23. Official and Certified Marks ...........................................287 24. Service Marks ...................................................................... * 25. Sound Marks ........................................................................ * (continued on next page) 26. Detriment/Unfair Advantage .............................................. * 27. Scent Marks ......................................................................... * Part II. Procedural Matters .............................................................. * A. Formalities for Acceptable Filings ............................................. * B. Identification of Goods or Services.........................................498 C. Disclaimers and Consents .......................................................... * D. Appellate Procedure.................................................................... * 1. Jurisdiction/Authority .............................................287, 524 2. Who May Appeal? ................................................................ * 3. Improper Pleadings .........................................................529 E. Forum Conflicts...............................................288, 330, 503, 557 F. International Issues........................................................316, 454 G. Evidence...................................................................................536 Part III. Post-Registration Issues..................................................... * A. Infringement and Defenses ........................................................ * 1. Famous Marks .................337, 434, 469, 471, 495, 497, 522 2. Likelihood of Confusion a. Similarity of Goods/Services.......................................... * b. Similarity of Marks...........288, 297, 306, 338, 351, 366, 372, 404, 421, 455, 472, 495, 499, 505, 515, 536, 538, 545, 558 3. Prior User.........................................................................517 4. Disclaimers........................................................................... * 5. Fair Use....................................................................478, 560 6. International Conventions .................................................. * 7. Symbols ................................................................................ * 8. Infringement of Unregistered Trademarks ............353, 537 9. Standing ............................................................................... * 10. Nonuse of Trademark .....................277, 289, 366, 383, 406, 496, 505, 537, 550, 560 11. No Likelihood of Confusion ................................................. * a. No Similarity of Marks ......289, 317, 367, 406, 496, 561 (continued on next page) 12. 13. 14. 15. 16. 17. 18. 19. 20. 21. 22. 23. 24. 25. b. No Similarity of Goods/Services ........299, 319, 367, 474 Lack of Distinctiveness....................290, 300, 408, 474, 504 File Wrapper ........................................................................ * Parody .................................................................................. * Deceptive Use...................................................................301 Absence of Willful Intent.................................................320 Descriptive Use ........................................................340, 563 Equitable Defenses ..........................................................409 Family of Marks................................................................... * Guarantee ............................................................................ * Staying of Court Action ....................................................... * Trade Dress ......................................................................321 Abuse of Process................................................................... * Personal Names ................................................................... * Geographical Indications.................................................307 B. Unfair Competition .................................................................511 1. Passing Off .......................................321, 410, 454, 479, 564 2. Character Marks.................................................................. * 3. Statutory Issues................................................................... * 4. Advertising...............................................................279, 470 5. Compensation ...................................................................... * 6. Configuration of Goods ............................................301, 435 7. Color .................................................................................423 8. Slavish Imitation ................................................................. * C. Injunctions and Damages ...............................279, 411, 506, 566 D. Seizures ....................................................................................... * 1. Civil Actions ......................................................................... * 2. Criminal Actions ..............................................................566 E. Valuation and Tax Treatment.................................................... * F. Loss of Trademark Rights .......................................................... * 1. Forfeiture .........................................................308, 385, 480 2. Lapsing of Registration ....................................................... * 3. Nullity ......................................................290, 302, 512, 575 4. Attachment of Trademark................................................... * 5. Cancellation .............290, 322, 340, 412, 457, 497, 541, 567 6. Dilution ............................................................................526 (continued on next page) G. Post-Registration Evidence of Use and Renewals.................362 H. Amendments................................................................................ * 1. Amendments to Marks ........................................................ * 2. Amendments to Registrations.........................................375 I. Trademark Agent in a Litigation ............................................... * J. Gray Marketing...............................386, 414, 435, 481, 506, 567 K. Counterfeiting Issues......................................................475, 538 L. Opposition/Cancellation Procedure................................292, 303 M. Licensing Issues ..............................................293, 323, 476, 542 N. Counsel, Conflicts........................................................................ * Part IV. Personality Rights............................................................... * Part V. Internet Issues ..................................................................... * A. Domain Names .......................................293, 303, 363, 368, 395, 415, 436, 455, 477, 507 Table of Marks ................................................................................577 (continued on next page) COUNTRY INDEX Argentina ............................... 272 Australia................................. 280 Austria.................................... 286 Benelux................................... 296 Brazil ...................................... 304 Canada ................................... 308 Chile........................................ 324 China ...................................... 331 Colombia................................. 341 Community Trademark......... 354 Costa Rica............................... 358 Czech Republic....................... 360 Denmark................................. 365 Ecuador .................................. 371 El Salvador............................. 373 Estonia.................................... 376 European Community ........... 379 Finland ................................... 387 France..................................... 399 Germany................................. 418 Greece ..................................... 424 Hong Kong.............................. 437 Iceland .................................... 451 Indonesia ................................ 455 Iran ......................................... 462 Ireland .................................... 462 Israel....................................... 468 Italy ........................................ 471 Japan...................................... 478 Jordan .................................... 482 Mauritius ............................... 497 Mexico .................................... 498 New Zealand.......................... 500 Nigeria ................................... 503 Norway................................... 505 Panama .................................. 509 Paraguay................................ 511 Peru ........................................ 513 Philippines ............................. 515 Portugal ................................. 518 Puerto Rico ............................ 524 Republic of South Africa ....... 526 South Korea ........................... 528 Spain ...................................... 529 Sweden ................................... 530 Switzerland............................ 531 Syria ....................................... 538 Taiwan ................................... 539 Thailand................................. 542 Turkey.................................... 543 United Kingdom .................... 551 Uruguay ................................. 569 Venezuela............................... 573 Vietnam.................................. 576 ® ANNUAL REVIEW THE TWELFTH ANNUAL INTERNATIONAL REVIEW OF TRADEMARK JURISPRUDENCE Editor’s Note The TMR wishes to welcome you to the Twelfth Annual International Review of Trademark Jurisprudence. This edition of the Review was edited by a Task Force of the TMR co-chaired by Rosemarie Christofolo and Pier Luigi Roncaglia, who were assisted by Christy Hubbard, a member of the TMR Editorial Board, John Morales, TMR Assistant Editor, Joel Bromberg, Editor, and Randi Mustello, TMR Managing Editor. As was the case last year, the Review is organized in alphabetical country order with each country divided by subject and topic. Also, for Table of Contents continuity, if a particular subject or topic is not covered in this edition, it will be so noted on 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. 95 TMR 267 268 Vol. 95 TMR Contributors are listed below. Due to the 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 Tira Greene Kenneth Porter Keithley Lake & Assoc. Anguilla, British West Indies Argentina Iris V. Quadrio Marval, O’Farrell & Mairal Buenos Aires, Argentina Australia and Papua New Guinea Trevor 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 Christopher C. Hale Blake, Cassels & Graydon Ridout & Maybee Toronto, Canada Paul Tackaberry 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 Germán Cavelier Natalia Tobón Cavelier Abogados Bogota, Colombia Community Trademark Elaine Rowley Marks & Clerk London, England Costa Rica Denise Garnier Gonzalez-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. 95 TMR 269 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 Maria Cecilia Romoleroux Corral & Rosales Quito, Ecuador Egypt Nazeeh A. 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 Community Adam N. Cooke Wragge & Co. London, England Finland Seija 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, Köerner & Partners Cologne, Germany Carmen Lichtenstein Stuttgart, Germany Ghana Nii Arday Wontumi Aélex Accra, Ghana Greece Helen Papaconstantinou Maria Athanassiadou Eleni Lappa Theodorides & Papaconstantinou Athens, Greece Guatemala Analucia Carrillo Carrillo y Asociados Guatamala City, Guatamala Gulf States (Kuwait, Saudi Arabia, United Arab Emirates and Yemen), Bahrain, Oman and Qatar M. Farrukh Irfan Khan United Trademark & Patent Services Lahore, Pakistan Honduras Ricardo Anibal Mejia Bufete Mejia & Asociados San Pedro Sula, Honduras 270 Vol. 95 TMR Jurisdiction Name Firm Address Hong Kong, Cambodia, Laos and Macao Barry J. Yen So Keung Yip & Sin Central Hong Kong Iceland Skúli Th. Fjeldsted Fjeldsted, Blöndal & Fjeldsted Reykjavik, Iceland India, Bhutan and Nepal Amar Raj Lall Lall Lahiri & Salhotra Gurgaon, India Indonesia Erna L. Kusoy Hadiputranto, Hadinoto & Partners Jakarta, Indonesia Iran Alireza Laghaee Dr. Ali Laghaee & Associates Tehran, Iran Ireland Brenda O’Regan Neil McVeigh 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 Societá 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 A.A.A. Baltic Service Company Vilnius, Lithuania Malaysia and Singapore Ponnampalam Sivakumar P. Sivakumar & Co. Singapore Malta and Gazo Richard Camilleri Antoine Camilleri Mamo TCV Advocates Valletta, Malta Mexico Antonio Belaunzaran Luis Schmidt Olivares & Cia. Mexico City, Mexico New Zealand John B. Hackett Richard Griffin A J Park Auckland, New Zealand Nicaragua Guy Jose BendanaGuerrero Guy Jose BendanaGuerrero Managua, Nicaragua Nigeria Theophilus I. Emuwa Aélex Lagos, Nigeria Norway Egil Lassen Actio Lassen AS Bergen, Norway Pakistan and Bangladesh Hasan Irfan Khan United Trademark & Patent Services Lahore, Pakistan Vol. 95 TMR 271 Jurisdiction Name Firm Address Panama Nadia Pedreschi de Halman Pedreschi & Pedreschi Panama City, Panama Paraguay Gladys E. Bareiro de Modica Bareiro Modica & Asociados Asuncion, Paraguay Peru Jose Barreda Micaela Mujica Barreda Moller Lima, Peru Philippines Rogelio Nicandro Romulo, Malanta, Bonaventura, Sayoc & De Los Angeles Manila, Philippines Portugal Rosario Cruz Garcia Nuno Cruz J. Pereira da Cruz, S.A. Lisbon, Portugal Puerto Rico Federico CalafLegrand Reichard & Calaf 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 South Korea Junghoon Kenneth Oh Central International Law Firm Seoul, Korea Spain Pablo GonzalezBueno Elzaburu S.A. Madrid, Spain St. Kitts-Nevis Lindsay F.P. Grant Veira, Grant & Associates Basseterre, St. Kitts Sweden Bengt Nihlmark B. 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 Bangkok, Thailand Turkey M.N. Aydin Deris Deris Patents & Trademarks Agency Ltd. Istanbul, Turkey United Kingdom Matthew Harris Norton Rose London, England Uruguay Juan A. Pittaluga Juan A. Pittaluga & Associates Montevideo, Uruguay Venezuela Rafael A. Marquez Losada Marquez & Marquez Abogados Caracas, Venezuela Vietnam Nguyen Tran Bat Investconsult Group Hanoi, Vietnam 272 Vol. 95 TMR ARGENTINA I.A.2. Assignments Escada A.G. (Escada) filed trademark applications in Classes 18 and 25 for a design consisting of two stylized and opposite letters “E.” These classes generally cover a variety of handbags, purses and clothing, The company EF S.R.L. (EF) opposed the applications on the basis of its trademark EF. Escada filed a court action requesting the withdrawal of the oppositions. When filing the bill of complaint, Escada (1) informed the Court that the opposing trademarks had been assigned from EF to Icticola Argentina S.A. (Icticola) and that the latter had ratified the opposition at the Trademark Office, and (2) summoned Icticola as co-defendant. EF stated that it nevertheless had a legitimate interest in opposing Escada’s applications, because Icticola had licensed the assigned trademarks to EF. It introduced further arguments in support of the opposition, alleging that Escada’s design was also confusingly similar to EF’s trade name and de facto trademark. The Judge of First Instance admitted the complaint and ruled that the trademarks were not confusingly similar. This decision was appealed by EF, the current licensee—but not by Icticola, the current owner—of the trademarks. On appeal, the Federal Court of Appeals upheld the decision1 on the ground that Icticola, the owner of the trademarks, who primarily has the legitimate interest in opposing the registration of a trademark, had not challenged the Court of First Instance’s decision. However, since EF had brought the appeal, the appellate court had to render its decision. The Court identified two issues: 1. On the one hand, the Court clearly stated that, as Icticola’s licensee, EF held no further right than licensor and that since Icticola had consented to the Court of First Instance’s decision, EF had no right to question that decision on the basis of the confusing similarity of the marks in conflict. 2. On the other hand, since EF had introduced additional arguments as the basis of the opposition—which arguments were different from Icticola’s—the Court of Appeals considered those arguments before making a final decision and affirming the Court of First Instance’s ruling. 1. Escada A.G. v. EF S.R.L., Federal Court of Appeals, Division II, Case 3.926/97, decided on March 16, 2004 (unpublished). Vol. 95 TMR 273 This decision is particularly interesting because the appellate court decided to examine additional grounds for opposition raised by a party that was no longer an opponent (as it had assigned the marks on which the opposition was based to a third party) and ruled that the assignment of the opposing trademark does not necessarily prevent the assignor—which in this case was also a licensee—from filing additional arguments in support of its opposition. I.A.5. Bankruptcy Sancor Cooperativas Unidas Ltda. (Sancor) filed a trademark application that was opposed by Ghelco S.A.I.C.A. (Ghelco). In the absence of a friendly settlement, Sancor filed a court action seeking the withdrawal of the opposition. During the trial, Ghelco informed the Court that it had gone bankrupt, and the judge ordered that the case be sent to the Commercial Court in charge of the bankruptcy proceedings for future handling, in accordance with Section 132 of the Insolvency and Bankruptcy Law.2 Sancor appealed the decision, but the Federal Court of Appeals upheld it.3 The appellate court ruled that it was clear that this opposition case involved monetary issues and therefore fell within the provisions of Section 132 of the Insolvency and Bankruptcy Law. The Court also decided that the defendant’s consent to continue the prosecution of the lawsuit before the Federal Court of Appeals had no effect, as the provisions of the Bankruptcy and Insolvency Law affect the public interest. In local practice, parties have refused to submit opposition cases to the jurisdiction of the Commercial Courts, as Commercial Judges are not specialized in trademark matters and tend to defer judgments. In addition, because the receiver and the creditor’s committee in the bankruptcy action also become parties to the trademark lawsuit, proceedings usually become more complex. This practice was confirmed by Asociación Argentina de Adventistas del Séptimo Día v. Fibas SACIA,4 in which the 2. Section 132 provides: “The declaration of bankruptcy causes the court hearing the bankruptcy proceedings to have competent jurisdiction over all the legal actions brought against the bankrupt involving monetary rights, except for any condemnation suits, and those involving family matters. The prosecution of the actions outside the court's regular jurisdiction is suspended upon the issue of a final bankruptcy decree against the defendant; until such time, they are prosecuted with the receiver's participation, without it being possible to carry out any acts of forced execution.” 3. Sancor Cooperativas Unidas Ltda. v. Ghelco S.A.I.C.A., Federal Court of Appeals, Division III, Case 8.248/01, decided on May 27, 2004 (unpublished). 4. Asociación Argentina de Adventistas del Séptimo Día v. Fibas SACIA, Argentine Supreme Court, decided on November 17, 1994, 317 Fallos 1635, [1995-III] J.A. 85. 274 Vol. 95 TMR Supreme Court ruled that, despite the existence of bankruptcy proceedings, the Federal Courts of Appeals had jurisdiction to hear opposition cases because those cases—contrary to the situation in cancellation and infringement proceedings—do not involve monetary issues that could affect creditors’ interests. At present, two of the three divisions of the Federal Court of Appeals have changed their criteria and held that if an opponent files for bankruptcy, the trademark conflict—even an opposition case—must be sent to the Commercial Court hearing the bankruptcy proceedings. This decision is in line with the latest rulings of the Federal Courts of Appeals that any trademark matter filed against a party facing insolvency or bankruptcy proceedings should be heard by the Commercial Judge handling those proceedings. I.B.3. Not Merely Descriptive Terms British American Tobacco Brands Inc. (BAT) filed a trademark application to register KENT FRESH (label) to cover all goods in Class 34, which includes tobacco and tobacco products. Massalin Particulares S.A. (Massalin) opposed the application on the basis of descriptiveness (Sections 2a), 2b) and 3d) of the Argentine Trademark Law).5 BAT filed a court action seeking the withdrawal of Massalin’s opposition. The First Instance Judge admitted the complaint and declared the opposition ill founded. Massalin appealed the decision because, in its opinion, the term FRESH is descriptive and may lead consumers to error as to the nature and characteristics of the product involved. The Federal Court of Appeals upheld the decision6 and ruled that FRESH is not a descriptive but a suggestive term and, as such, it can enjoy trademark protection. The Court of Appeals mentioned that the Argentine Trademark Law does not prohibit the registration of suggestive terms, especially when they are accompanied by fanciful terms that give distinctiveness to the 5. Section 2 of Trademark Law 22.362 provides: “The following are not considered as trademarks, nor are they capable of registration: a) Names, words and signs which constitute the necessary or usual designation of the product or service, or which are descriptive of its nature, function, qualities or other characteristics; b) Names, words, advertising signs and phrases that have passed into general use prior to the application for registration thereof; . . .” Section 3 of Trademark Law 22.362 provides: “The following can not be registered: ... d) trademarks which may lead consumers to error as to the nature, properties, merit, quality, manufacturing methods, purpose, origin, price or other characteristics of the products or services; . . .” 6. British American Tobacco Brands Inc. v. Massalin Particulares S.A., Federal Court of Appeals, Division I, Case 5.706/98, decided on December 4, 2003. Vol. 95 TMR 275 trademark, as in the present case. The appellate court also stated that an adjective is capable of registration if it does not constitute the necessary or usual designation of the product. I.B.8.a. Similarity of Marks Midwestern Pet Foods Inc. (Midwestern) filed a trademark application to register PRO PAC to cover all goods in Class 31, which includes dog food. Ralston Purina Company (Ralston) opposed the application based on the likelihood of confusion with their trademark PRO-PLAN registered in the same class. The First Instance Judge dismissed the complaint filed by Midwestern and ruled that PRO PAC was confusingly similar to PRO-PLAN. Midwestern appealed the decision on the basis of the following arguments: (1) the term PRO is of common use in the class; (2) both marks are used in connection with pet food; (3) both marks coexist in several countries; and (4) the same conflict was decided in France and the Trademark Office authorized the coexistence of both marks for being clearly distinguishable. The Federal Court of Appeals upheld the decision.7 Although the appellate court did not deny the applicant the possibility to use the term PRO, as it considered such term of common use in the class, the Court ruled that the applicant should have added another term to the mark to make it distinguishable from other registered trademarks containing the term PRO. The appellate court also mentioned that despite PRO PAC being registered in several countries and both PRO PAC and PRO-PLAN coexisting in the United States, this does not have a direct impact on the resolution of the case nor does it mean that coexistence should also be admitted in Argentina as the Argentine Trademark Law adopts the principle of territoriality. Moreover, it was neither alleged nor proven that the mark in conflict was famous or well known. I.B.8.c. Conflict Between Trademarks and Corporate Names Exxon Corporation (Exxon) filed a complaint against Axxon Electric S.A. (Axxon) and requested that Axxon cease use of its corporate name and change it to another non-confusingly similar name on the basis of Exxon’s preexisting trademark registrations and trade name in Argentina. Though Axxon was primarily engaged in the sale of electric and electronic applicances and products for the distrubiton of 7. Midwestern Pet Foods, Inc. v. Ralston Purina Company, Federal Court of Appeals, Division III, Case 3.375/00, decided on July 15, 2003. 276 Vol. 95 TMR electric energy, its corporate purpose, which was published in the Official Gazette, was very broad and included, inter alia, activities relative to oil and gas. When the incorporation was published in the Official Gazzette, Exxon sent a cease-and-desist letter to Axxon objecting to its corporate name and requesting that use of such name be discontinued, arguing Axxon’s activities in the electric field were related to the energy-related petroleum products and services covered by Exxon’s trademarks. The cease-and-desist letter was unanswered and Exxon instituted court proceedings. Axxon answered the complaint stating that the matter had become statute-barred in line with the provisions of Section 29 of the Argentine Trademark Law8 and argued that its company name was not confusingly similar to Exxon’s trademarks and trade name. Exxon countered that, according to Section 3986 of the Argentine Civil Code,9 the ceaseand-desist letter sent to Axxon had suspended the one-year term prescribed in the Argentine Trademark Law. The First Instance Judge considered that the cease-and-desist letter sent by Exxon had suspended the term to file the court action, and admitted the complaint on the grounds of the likelihood of confusion between AXXON and EXXON. Defendant appealed the decision on the basis of the following arguments: (1) the statute of limitations cannot be suspended through the sending of a cease-and-desist letter; (2) the comparison should have been made between Axxon Electric S.A. and Exxon Corporation and not merely between AXXON and EXXON; (3) Axxon’s activities are not related to Exxon’s business; and (4) Exxon had not objected to Axxon’s name at the time the company was incorporated and registered at the Registry of Companies nor was any objection filed by the Registry of Companies. The Federal Court of Appeals upheld the decision10 and ruled that: (1) the cease-and-desist letter had suspended the right of action for one year in line with the provisions of Section 3986 of the Argentine Civil Code; (2) terms such as “Corporation” or 8. According to Section 29 of Trademark Law 22.362, trade names or company names may be opposed within one year counted: (i) as of the date such trade name is first publicly used, or (ii) as of date claimant becomes aware of the use of such name. 9. Section 3986 of the Argentine Civil Code provides: “The statute of limitations is interrupted by an action against the possessor or debtor, even when brought before a judge not of competent jurisdiction, and even when it is void on account of a formal defect or because the plaintiff did not have the legal capacity to sue. The statute of limitations is also suspended, for one time only, by the declaration of the debtor’s default made by any trustworthy means. This suspension will only be valid for one year or for the shorter term that may correspond to the statute of limitations.” 10. Exxon Corporation v. Axxon Electric S.A., Federal Court of Appeals, Division III, Case 6.943/00, decided on September 2, 2003. Vol. 95 TMR 277 “Electric” or acronyms identifying the type of company, such as, S.A. or S.R.L. are generic and carry no weight in the test for confusing similarity; therefore, the comparison had to be focused on EXXON and AXXON, which the court considered to be confusingly similar; (3) there was an overlapping between the goods/services covered by Exxon’s marks and Axxon’s business; and (4) the failure to challenge Axxon’s name by the Registry of Companies at the time of incorporation does not affect Exxon’s right to object to it in accordance with the provisions of Sections 27 to 29 of the Argentine Trademark Law,11 as corporate names can be objected to not only on the basis of another corporate name but also on the grounds of a registered trademark. I.B.9.a. No Similarity of Marks Boehringer Ingelheim International GMBH (Boehringer) filed a trademark application to register EVANATURA to cover all goods in Classes 5 and 30, which include home health care products and foods. Aceitera General Deheza S.A. (Deheza) opposed the applications on the basis of its trademarks NATURA registered in the same classes. Boehringer filed a court action seeking the withdrawal of Deheza’s opposition. The First Instance Judge admitted the complaint. On appeal, the Federal Court of Appeals upheld the decision12 on the ground that NATURA is of common use in Classes 5 and 30, and therefore Deheza’s trademarks were weak. The appellate court also stated that the term EVA in Boehringer’s mark constitutes a distinctive element that makes such mark different from Deheza’s trademark, and concluded that both trademarks can coexist without any risk of confusion. III.A.10. Nonuse of Trademark Saenz Briones y Cia. S.A. (Saenz Briones), owner of several marks for GRAN SIDRA REAL and REAL in International Class 33, which covers alcoholic beverages, filed a cancellation action for nonuse against the trademark TERO REAL, owned by Goyenechea S.A. (Goyenechea) in International Class 33. Saenz Briones alleged that the TERO REAL mark had not been used within five years prior to the commencement of the 11. Section 27 of Trademark Law 22.362 provides: “The name or sign used to designate an activity, whether for profit or not, constitutes a property for the purposes of this law.” Section 28 of Trademark Law 22.362 provides: “Ownership of a trade name is acquired through use thereof and only in relation to the activity for which it is used, and shall not be confusingly similar with preexisting trade names for the same activity.” 12. Boehringer Ingelheim International GMBH v. Aceitera General Deheza S.A., Federal Court of Appeals, Division I, Case 3.413/98, decided on October 7, 2003. 278 Vol. 95 TMR action, as required by the Argentine Trademark Law. Goyenechea argued that the plaintiff had no legitimate interest in requesting the cancellation action for nonuse and mentioned that its mark had been registered since 1950. Goyenechea also stated that Saenz Briones’ oldest registration dated back to 1974, and therefore the marks at issue had coexisted for the past 25 years. The Judge of First Instance dismissed the cancellation. Saenz Briones appealed based on the following arguments: (1) it had proved that the defendant had not had large enough sales of TERO REAL products to comply with the use requirement established by the Argentine Trademark Law; and (2) Saenz Briones had a legitimate interest in filing a cancellation action for nonuse, as the defendant was a competitor and the plaintiff’s marks, GRAN SIDRA REAL and REAL, were well-known marks and deserved protection against dilution. The Federal Court of Appeals admitted that the marks were not confusingly similar (this was not a matter at issue) and found that the plaintiff had a legitimate interest in seeking cancellation for nonuse, as the TERO REAL mark could blur the distinctiveness of its marks.13 However, the appellate court ultimately upheld the dismissal, finding the accountant expert’s report proved that there had been sales of the products identified with the defendant’s mark during the questioned period. In this respect, even though Saenz Briones argued that Goyenechea had made little use of the mark, the court ruled that the Argentine Trademark Law was flexible with respect to the extent of use expected in order to avoid the lapsing of a trademark and that in evaluating use the exchange, sale and other manner of disposition of goods should also be taken into consideration. The fact that the volume of sales had been poor was not construed by the Court as supporting the argument that the defendant’s intention was to breach the law. Rather, the Court ruled that the existence of sales implied that there must have been other forms of use of the mark, such as its inclusion in price lists and invoices. This case is significant because it broadens the parameters measuring the extent of use necessary to prevent a mark from being cancelled for nonuse, which has always been a debatable issue. In addition, it is the first case in which a court has ruled that the possibility of dilution justifies the genuine interest of a trademark owner in having a competitor’s registration cancelled 13. Saenz Briones y Cia. S.A. v. Goyenechea S.A., Federal Court of Appeals, Division I, Case 8-434/99, decided on February 17, 2004 (unpublished). Vol. 95 TMR 279 for nonuse, when such registration weakens the distinctive power of the owner’s trademark. III.B.4. Advertising Cervecería y Maltería Quilmes S.A.I.C.A. y G. (Quilmes) filed a petition for an injunction against Cervecería Argentina S.A. Isenbeck (Isenbeck), requesting that the Court order Isenbeck to cease the unauthorized use of the trademark QUILMES in advertisements comparing both companies’ products. Quilmes based the petition on the provisions of Article 50 of the TRIPS Agreement. Although there are no specific rules that apply to comparative advertising, so far the Federal Courts have accepted comparative advertising only if (1) the comparison is not made on false facts, (2) the comparison is not aimed to take advantage of the prestige of the compared mark and (3) there is no tarnishment of the compared mark. The Judge of First Instance granted the injunctive relief and ordered Isenbeck to cease the unauthorized use of the QUILMES mark in any manner.14 The Judge ruled prima facie, that Isenbeck would not have obtained authorization from Quilmes to use its trademark, and that it was reasonable to conclude, from the evidence presented in Court, that Isenbeck was trying to persuade consumers of the superiority of its products over those of Quilmes. The Judge also held that if comparative advertising is intended to cause confusion among consumers and to discredit third parties’ marks, as appeared to be the case here, the advertising is unlawful. Isenbeck has appealed this decision. III.C. Injunctions and Damages FV S.A. (FV) is the owner, among other registrations, of the trademark FV and design covering sanitary wares in Class 11. FV also filed applications for FV GARANTIA TOTAL and label design in Classes 11 and 37. Upon discovering competitors using a similar mark, FV filed a petition for an injunction on the basis of the provisions of Article 50 of the TRIPs Agreement and requested the competitors, Videsur S.A. and Artica S.A., cease the use of the infringing label design that was confusingly similar to the FV GARANTIA TOTAL (label) trademark application. 14. Cervecería y Maltería Quilmes S.A.I.C.A. y G. v. C.A.S.A. Isenbeck, Court of First Instance No. 6, decided on June 8, 2004, L.L. 15/6/04, 7. 280 Vol. 95 TMR The First Instance Judge dismissed FV’s petition on the ground that the requirements to grant an injunction were not fulfilled because FV’s applications had not yet been registered and that, therefore, there was no infringement of trademark rights. FV appealed the decision and argued that (1) the defendants were using a confusingly similar label design in the promotion and sale of sanitary wares; (2) even though the opposing trademark applications had not been granted, FV had been using them since 1997; and (3) the applications contain the FV trademark, which had already been registered in several classes. The Federal Court of Appeals revoked the first instance decision and granted the injunction15 considering that, at this provisional stage, the defendants’ label design appeared to be a copy of the FV GARANTIA TOTAL label design. The appellate court also mentioned that FV is the owner of the registration FV and design, and even though FV’s applications had not yet been granted, it must be recognized that FV is the owner of a de facto trademark. Therefore, the fact that the law only authorizes owners of registered marks to apply for injunctions does not mean that the owner of a de facto trademark may not apply for injunctive relief, especially when a competitor is infringing its rights. AUSTRALIA I.A.1.b. Quality and Quantity of Use Resource Capital Australasia Pty Ltd. (the applicant) applied to register the trade mark JAMES BONDI for entertainment services. That application was opposed by Danjaq LLC (the opponent), which claimed ownership of the well-known JAMES BOND character. Attempts by the opponent to serve documents at the applicant’s principal place of business and registered office revealed that the applicant could not be located at that address, that the telephone had been disconnected and that there was no current telephone listing for the applicant. The applicant’s post office box address was also cancelled. Further enquiries conducted on behalf of the opponent established that the applicant had made numerous trade mark applications for marks that resembled trade marks owned by other persons. It was also established that the sole director, company secretary and shareholder of the applicant company was an individual named Marcus Stephen Boland. The opponent’s submissions included references to a recently concluded Federal Court action involving the same corporation, 15. FV S.A. v. Videsur S.A. et al., Federal Court of Appeals, Division I, Case 8.726/03, decided on October 2, 2003. Vol. 95 TMR 281 with Mr. Boland being the sole director and secretary of the corporation. In those proceedings, the judge had found that Mr. Boland’s corporation had a history of cybersquatting—that is, registering Internet domain names for pecuniary advantage. Mr. Boland was, in the judge’s words, “a far from impressive witness . . . (who) clearly has no great regard for the truth.” In the present proceedings, the Hearing Officer accepted that there were strong parallels between the applicant’s conduct in seeking to register the trade mark JAMES BONDI, and other trade marks, and its behaviour in registering the domain names at issue in the Federal Court proceedings. The principal ground of opposition advanced on behalf of the opponent was that the applicant did not intend to use the trade mark JAMES BONDI,16 however the opponent had not expressly mentioned this ground in its notice of opposition. As a preliminary matter the Hearing Officer referred to the discretionary power of the Registrar to refuse to register a trade mark even if the grounds of opposition have not been established. The Hearing Officer accepted that as a public official the Registrar must be concerned with the public interest. That interest could be harmed by the wrongful registration of a trade mark that, during the opposition proceedings, is revealed clearly not to qualify for registration but in respect of which the reason for that disqualification was not one of the grounds stated in the notice of opposition. However, the Hearing Officer was prepared to exercise the Registrar’s discretion in allowing the opponent to rely on that ground. In considering the opponent’s evidence and submissions, the Hearing Officer considered each of the following issues in determining whether the applicant possessed the requisite intention to use the trade mark: 1. The applicant’s trading activities. These activities included the limited business conducted by the applicant, the breadth of the applicant’s claims as to both goods and services in respect of which the applicant intended to use the trade mark and the Federal Court’s assessment of the applicant’s sole director and shareholder. Based on this information the Hearing Officer drew an inference that the applicant did not have the capacity or means to use the trade mark and that the applicant’s expression of intention to use the mark was illfounded. 2. Other trade mark applications made by the applicant. The applicant had made 22 trade mark applications and had shown no interest in actively prosecuting those applications. 16. Danjaq LLC v. Resource Capital Australasia Pty Ltd, (2004) AIPC 91-984. 282 Vol. 95 TMR 3. Cybersquatting. When the applicant’s demonstrated behaviour in relation to cybersquatting was juxtaposed with its pattern of trade mark applications, the Hearing Officer was prepared to draw a further adverse inference, namely that the applicant sought trade mark registrations to sell such registrations, in the same manner that it had sought to sell domain names to their rightful owners, or that the applicant sought to traffic in trade mark registrations rather than to use the trade marks in trade. 4. Address for service. The applicant provided a postal address for service that was inaccurate and had not attempted to rectify that situation. The physical business address of the applicant was, according to ASIC (Australian Securities and Investments Commission) records, false at the time that the trade mark application was made. These circumstances, coupled with any of the other circumstances referred to by the Hearing Officer under the headings Trading Activities, Trade Marks’ History and Cybersquatting, gave rise to an inference that the applicant had attempted in some way to insulate itself from the repercussions of its behaviour. However, the Hearing Officer emphasized that this was not necessarily a matter that reflected on the applicant’s intention to use the trade mark. Having concluded these considerations, the Hearing Officer was then required to determine whether such inferences were enough to establish the relevant ground of opposition. According to the Hearing Officer, quite clear inferences could be separately or collectively drawn from the evidence that the applicant did not intend to use the trade mark. The evidence from which these inferences were drawn was unchallenged and unrebutted by the applicant, which could have readily addressed such inferences in its own evidence. The Hearing Officer found that the opponent’s evidence was cogent, relevant and drawn from the records of the ASIC, the Federal Court and the Trade Marks Office. That evidence had a high provenance and credibility in a situation where slight evidence should suffice to shift the onus onto the applicant. The Hearing Officer therefore accepted the inferences in the opponent’s evidence and was satisfied that the applicant did not intend to use the trade mark. The trade mark therefore was refused. Oppositions based on an applicant’s lack of intention to use are seldom successful in Australia. This is due largely to the onus on the opponent of adequately establishing the absence of an intention to use. The present case goes some way to bringing together several threads that might be helpful for opponents seeking to substantiate a claim that the applicant does not intend to use the trade mark sought to be registered. Vol. 95 TMR 283 I.B.9.a. No Similarity of Marks Thorpedo Enterprises Pty Ltd. applied to register the trade mark THORPEDO in respect of 13 classes of goods and services, including clothing under Class 25 and a wide range of sporting articles and games under Class 28. The word THORPEDO was a nickname for Ian Thorpe, the well-known Australian swimmer. Following acceptance of the trade mark, an opposition to the mark was filed by Torpedoes Sportswear Pty Ltd. (Sportswear). At the hearing of the opposition before the Registrar of Trade Marks, Sportswear relied on several grounds of opposition, including that the applicant’s trade mark was deceptively similar to prior existing trade marks owned by the opponent. For purposes of that ground of opposition Sportswear relied on its registrations for the trade mark PARADISE LEGENDS TORPEDOES for all goods under Class 28 and the trade mark TORPEDOES (with stylised letter T) for clothing, including headgear and footwear, under Class 25. The Registrar concluded that the trade mark THORPEDO was neither substantially identical with nor deceptively similar to Sportswear’s registered trade marks. The opposition failed for that reason, and it also failed on the other grounds relied upon by the opponent. An interesting, albeit unsuccessful, argument was put to the Registrar by Sportswear—that a connotation exists in the word THORPEDO such that its use by the applicant company on the specified goods and services would be likely to deceive unless such use were endorsed by Ian Thorpe himself. On behalf of Sportswear it was contended that any connection between Ian Thorpe and Thorpedo Enterprises Pty Ltd. was tenuous and unsubstantiated. Furthermore, there was no evidence that Ian Thorpe had consented to or authorised the use of the word THORPEDO as a trade mark. It appears that this argument failed as a result of the Registrar’s discerning a sufficient connection between Thorpedo Enterprises and Ian Thorpe such that Thorpe was found to be the ultimate beneficiary of the commercial dealings conducted by Thorpedo Enterprises Pty Ltd. Sportswear appealed against the Registrar’s decision to the Federal Court of Australia.17 The appeal was heard by Judge Bennett in the Federal Court (New South Wales District Registry). In relation to the nature of trade mark appeal proceedings, Judge Bennett expressed the view that the scheme of appeals in opposition proceedings under the Patents Act is applicable to appeals in opposition proceedings under the Trade Marks Act. This led to the conclusion that Sportswear’s opposition should be upheld 17. Torpedoes Sportswear Pty Ltd. v. Thorpedo Enterprises Pty Ltd., (2003) 59 IPR 318. 284 Vol. 95 TMR only if the Court were satisfied that the trade mark clearly should not be registered. According to the judge, there was no evidence that the word THORPEDO had been used as a trade mark prior to the application by Thorpedo Enterprises Pty Ltd. to register the trade mark. There was also no evidence of any actual confusion between the word THORPEDO and Sportswear’s trade marks. The principal ground of appeal was that the trade mark sought to be registered was deceptively similar to the appellant’s prior registration for the trade mark TORPEDOES with stylised letter T. In relation to the issue of substantial identity, the judge stated that the totality of the characteristics of the marks should be taken into account. According to the judge, the T device and the stylisation of that device within the trade mark TORPEDOES were essential features in Sportswear’s trade mark. Those features resulted in significant differences between the appellant’s trade mark and the word THORPEDO and gave rise to a total impression of dissimilarity. The judge concluded that compared side by side the trade marks were not substantially identical. In relation to the issue of deceptive similarity, the judge referred to the likelihood of confusion as being “at the nub of Sportswear’s contention,” having regard to the visual and aural similarities. It was accepted that the onus was on Sportswear to establish deception or confusion, and it was also conceded that if the judge were unsatisfied or unsure as to whether confusion was likely to emerge, the onus would not be satisfied and the trade mark THORPEDO should then proceed to registration. The judge provided a summary of the relevant principles drawn from well-known and regularly cited cases. In applying those principles the judge emphasized that much depends on the words themselves, their origins and meanings and the surrounding circumstances of their use. Each comparison further depends on matters such as the pronunciation of the words and the categories of goods to which the marks are to be applied. Included in the principles summarised by the judge was the principle that where an element of a trade mark has a degree of notoriety or familiarity it would be artificial to separate out the physical features of the mark from the viewer’s perception of them. The question of resemblance, said the judge, is about how the mark is perceived. No evidence of actual deception or of the manner in which potential buyers would refer to the goods was tendered. In her decision the judge concluded that the visual impression of the marks was different. Even if the typeface and the joinder of the letters in the word TORPEDOES were disregarded, the T device conveyed an impression of dissimilarity. Aurally, the “th” functions in ordinary use as a different letter and different sound from “t,” and the presence of the “es” not only adds to the end of Vol. 95 TMR 285 the word but also serves to shift to some extent the emphasis on the syllables of TORPEDOES compared to THORPEDO. For these reasons the judge was not persuaded that the words themselves were aurally sufficiently similar to cause confusion. A further factor likely to avoid confusion as to the origin of the goods was the evidence that established a linkage between the word THORPEDO and Ian Thorpe. According to the judge, that linkage would reasonably extend to the minds of customers for sporting goods and clothing. On that basis the judge was of the view that it was unlikely that customers would attribute a TORPEDOES origin to goods bearing the THORPEDO mark, especially given that the test is not one of mere probability of confusion but one of real, tangible danger. Taking into account the visual and aural characteristics of the marks, the judge concluded that Sportswear had not established deceptive similarity, even accounting for imperfect recollection. Furthermore, the judge was not satisfied that there existed a likelihood of deception of confusion. Under the heading “reverse confusion” the judge considered whether the relevant section of the Trade Marks Act mandated a consideration that, by reason of the reputation of the opposed mark (the THORPEDO mark), purchasers of the goods with the registered mark (the T device mark) might be caused to wonder whether the source of those goods was Thorpe or Thorpedo Enterprises Pty Ltd. According to the judge the answer was no. Under that section, reputation is relevant only as a circumstance to be taken into account in considering deceptive similarity. The appellant also relied on a further ground of opposition based on its prior reputation in the word TORPEDOES alone. For purposes of establishing its prior reputation under the relevant ground of opposition, Sportswear sought to rely on its common-law rights in that word. However, given the aural and visual differences between the words TORPEDOES and THORPEDO, the judge was of the view that Sportswear had not established that the marks were deceptively similar. Even if the words were deceptively similar, the judge found that Sportswear had failed to establish the degree of reputation required under the Act. This ground of appeal, therefore, also failed. In conclusion, the judge was not satisfied that any of the grounds of opposition had been made out, and the appeal was dismissed. In addition to the detailed discussion of deceptive similarity, the judgement includes a discussion of the meaning of substantial identity. Many decisions under the relevant sections of the Act do not canvass the assessment of substantial identity in any detail. In the present case, the judge sets out a useful analysis of the characteristics of the trade marks to be taken into account in 286 Vol. 95 TMR making the appropriate side-by-side comparison. The judgement also puts into context the role of reputation, or notoriety, in relation to any assessment of deceptive similarity—that is, that reputation is an appropriate circumstance to be taken into account in considering deceptive similarity under the Act. AUSTRIA I.B.4. Geographical Names Protection for the international word-device marks ERFURT and ERFURT–RAUHFASER (raised fabric) was refused in Austria. In the absence of an impressive figurative part, the worddevice mark presents itself as a mere word mark to the customer. Moreover, the name of the German industrial town Erfurt is understood as a reference to the geographical origin, particularly since a “new meaning” of the geographical designation was not proven and, therefore, distinctiveness was not obtained.18 I.B.7.a. Two-Dimensional Marks An argument against registration based on lack of distinctiveness of a combined word-device mark for food and beverages consisting of the slogan “Plus, wir bieten mehr” (“Plus, we offer more”) accompanied by an illustration of various fruits, cheese and skewers remained unsuccessful. The Supreme Patent and Trademark Board held that the general impression is crucial, whereas a dissecting approach is not permitted. Even if some of the parts of a mark taken alone may not be protectable, a combined word-device mark can be registrable if parts are designated graphically, resulting in a figurative effect, which was accepted for the present case.19 I.B.7.b. Three-Dimensional Marks An international, three-dimensional mark consisting of a tubeshaped container (for storing chocolate dragees) with printed coloured lenses (in the shape of dragees known under the name of SMARTIES) on its outside was finally granted protection in Austria by the Administrative Court after the Patent Office barred a registration. Protection was granted because it cannot be denied that the coloured lenses printed on the above mentioned tubeshaped container are capable of indicating to the customer the 18. Administrative Court, September 24, 2003, Zl. 2001/04/0020 and 0021 (Bm 13 and 14/98)—Pbl 2004, 19. 19. Supreme Patent and Trademark Board, June 11, 2003, Om 3/03 (Nm 149/94 and Nm 150/94)—Pbl 2004, 6. Vol. 95 TMR 287 origin of the product dressed in such a way, and therefore, distinctiveness can be assumed.20 I.B.22. Distinctiveness Regarding the IR-Trademark “LADY DIANA– KÖNIGIN DER HERZEN” DAS MUSICAL (“Lady Diana—Queen of Hearts” The Musical), registered in Class 9 (records, cassettes, CDs, etc.) and Class 41 (shows, musicals, operettas, etc.), it was decided that protection in Austria could only be granted after proving acquired distinctiveness. This was based on the ground that not only appearance but also the theme, i.e., the content, is an essential feature and characteristic of the product or performance. The mark in question leaves, however, a priori no room to be regarded as distinctive of an enterprise.21 I.B.23. Official and Certified Marks A sign, used for cosmetic products, leather goods and clothing, consisting of a blue circle and a ring of yellow stars with the letters ITC and the words International Trade Consulting in the centre has been denied registration as a trademark based on the fact that a yellow ring of stars on a blue background is the emblem of the European Council. Therefore, the sign includes a component that is similar to that emblem. For this reason, registration as a trademark would have only been possible after proving entitlement for use of the sign.22 II.D.1. Jurisdiction/Authority After a judgement for costs of the Supreme Patent and Trademark Board in second and last instance in a nullification procedure, which had been ended because of the abandonment of the trademark, one of the two parties filed an appeal at the Constitutional Court, whereas admissibility of such an appeal was under dispute. The Constitutional Court stated that, since decisions of the Supreme Patent and Trademark Board may not be nullified or amended in an administrative procedure, the appeal is admissible. In the present case the appeal was nevertheless unsubstantiated 20. Administrative Court, April 23, 2003, Zl. 2001/04/01/05 (Bm 7/98)—Pbl 2004, 16. 21. Austrian Patent Office (Appeal Division), March 22, 2001, Bm 27/2000 (IR 1219/99)—Pbl 2003, 108. 22. Austrian Patent Office (appeal division), April 10, 2003, Bm (15/02)—Pbl 2003, 161. 288 Vol. 95 TMR because the constitutional right to hold personal property was not infringed by an unreasonable interpretation of the law.23 II.E. Forum Conflicts In the course of an action for injunction, involving Austrian marks as well as Community Trademarks, the Austrian Supreme Court stated for the first time that it—but not the European Court of Justice—is competent to decide upon remedies against decisions of the (national) Community Court of the second instance, i.e., Oberlandesgericht Wien (Upper District Court of Vienna), concerning the infringement of a Community Trademark.24 In order to recover outstanding debt from a foreign (Czech) company, the credit company sued the debtor in Austria based on the fact that the debtor owns an international trademark that is also valid in Austria. While the action was in limine dismissed by the courts of first and second instance (Commercial Court of Vienna, Upper District Court of Vienna), the request was eventually affirmed by the Supreme Court based on the following grounds. The international trademark is a domestic asset, corresponding (in the present case) to about 20% of the value of litigation, therefore, domestic jurisdiction exists. The selection of the court depends on the location of the Austrian Patent Office because the latter may influence existence, continuance and scope of the trademark in Austria. Therefore, the suit was rightly filed with the Commercial Court of Vienna.25 III.A.2.b. Similarity of Marks A proceeding for preliminary injunction involved an older word mark KLEINER FEIGLING (little coward) and a word-device mark KLEINER FEIGLING (with an illustration of a pair of eyes on a dark background looking to the right) and the use of the younger word mark KLEINER FRECHDACHS (little cheeky monkey) and the word-device mark KLEINER FRECHDACHS (with an illustration of a manikin on a dark background whose eyes are looking to the right). The trademarks were competing in the market, both being used for fig liqueur with vodka. The owner of the younger trademark was also using the slogan “Sei kein Feigling, trink kleiner Frechdachs!” (“Don’t be a coward, drink little cheeky monkey!”). 23. Constitutional Court, February 26, 2001, B 1177/00 (Supreme Austrian Patent and Trademark Board, March 29, 2000, Om 6/99)—ÖBl 2003, 153. 24. Supreme Court, January 21, 2003, 4 Ob 185/02p—ÖBl 2003, 186. 25. Supreme Court, July 8, 2003, 4 Ob 128/03g—ÖBl 2004, 31. Vol. 95 TMR 289 The preliminary injunction was granted by the Supreme Court on the following grounds: Aside from the adjective klein (little), the average consumer would retain a vague recollection of a character trait that begins with the letter “F” and a pair of eyes on a dark background. Considering that the younger trademark also contains a character trait of two syllables that begin with the letter “F” and an illustration that is largely similar to the older word-device mark, danger of confusion can be assumed. Moreover, the use of the word Feigling (coward) coining the older trademark in the advertising slogan was deemed to be an unauthorized use of the older trademark.26 III.A.10. Nonuse of Trademark In a cancellation action pursued by Hugo Boss AG based on nonuse against the word mark BOSS for cigarettes, the trademark owner justified the nonuse of the trademark by the fact that it had been at odds with Hugo Boss AG for a long time, and that the adversary had repeatedly threatened the owner so that a launch of the product in Austria would have to be carried out with all due caution. This reasoning was not regarded as a justification of nonuse by the Supreme Patent and Trademark Board because the owner was aware of the risks regarding this registration from the beginning: Basically a nonuse can only be justified by facts that lie outside of the sphere of influence of the owner.27 The Austrian Trademark BUDWEISER BÜRGERBRÄU for beers brewed in Budweis (Czech Republic) was cancelled upon request on the basis of nonuse because the total beer imported was 7.5 hectolitres in 2000 and, therefore, was not regarded as a serious use of the trademark in Austria compared to the total beer turnout of about 200,000 hectolitres of the company for the same year.28 III.A.11.a. No Similarity of Marks The owner of the world famous trademark OMEGA (including the capital Greek letter Ω), registered for watches, took action against the younger word-device mark MEGA 5, also registered for watches, but remained unsuccessful. The Supreme Patent and Trademark Board stated that the term “Mega” used for watches 26. Supreme Court, January 21, 2003, 4 Ob 273/02d—ÖBl 2003, 182. 27. Supreme Patent and Trademark Board, March 12, 2003, Om 14/02 (Nm 49/99)— Pbl 2003, 171. 28. Supreme Patent and Trademark Board, March 12, 2003, Om 15/02 (Nm 33/00)— Pbl 2003, 174. 290 Vol. 95 TMR was to be considered a relative fanciful term, having distinctiveness. In addition, MEGA 5 was not considered confusingly similar to OMEGA because MEGA as part of OMEGA was not regarded as the main element, but only understood as a part of the word. Moreover, OMEGA does not include a digit and differs from MEGA 5 with respect to sound as well as meaning.29 III.A.12. Lack of Distinctiveness Numerous design marks, basically consisting of multicoloured, uniquely curved pasta/gel chords, have been contested in a combined procedure based on lack of distinctiveness. These marks were registered in International Class 3, covering goods such as laundry preparations and laundry bleach but including dentrifrices and mouthwashes. Ultimately, the marks have been cancelled only with regard to dentrifrices because the trademarks have been judged as a depiction of the actual appearance of the goods. For the remaining goods of International Class 3, the Supreme Patent and Trademark Board held that, due to peculiar characteristics and distinctive traits, the marks can be understood by the market as an indication of the operational origin of the goods.30 III.F.3. Nullity The international trademark, TALALAY, registered since 1993 among other goods for filling material and mattresses made of latex, has been declared invalid in the territory of the Republic of Austria upon request because, at the time of the priority date of the trademark, the name TALALAY had long since been a generic term for a manufacturing process for latex foam and therefore lacked distinctiveness.31 III.F.5. Cancellation In 1995, a device trademark LEX NET was registered for a number of services, among others for education and electronic data processing services. A cancellation action was initiated by the holder of an older registration for LEXIS, registered for education facilities, computers, research, etc. The LEX NET applicant raised objections including that the registered holder of the LEXIS 29. Supreme Patent and Trademark Board, July 10, 2002, Om 2/02 (Nm 144/96, 145/96)—Pbl 2003, 88. 30. Supreme Patent and Trademark Board, April 23, 2003, Om 5/02 (Nm 42-46/97 etc.)—Pbl 2003, 176. 31. Austrian Patent Office (Nullity Division), June 25, 2003, Nm 15/2000—Pbl 2003, 187. Vol. 95 TMR 291 trademark, a company, had never existed, i.e., neither at the time of the trademark application nor at the time of the cancellation request, which also constitutes a reason for cancellation. However, in the course of the proceedings it turned out that at least one of the persons who had intended to found a company at the time of the trademark application is still engaged in a business that— according to the provisions of a former regulation—could provide the services of the trademark LEX NET. Consequently, this person was considered to be passively legitimized. Because the device mark LEX NET was not regarded to be confusingly similar to the word mark LEXIS, the trademark register was bound to register this single person as the trademark owner of the prevailing trademark LEX NET.32 In a cancellation action against MANPOWER trademarks based on nonuse, the Supreme Patent and Trademark Board discussed among other things whether the use of the sign on classic promotional articles (such as pocket diaries and ball-point pens) is deemed as use of a trademark for the service “provision of personel.” As opposed to goods, a designation of the origin of services cannot be achieved by a direct, physical link between the mark and the services. Rather, the legally relevant use of a service mark consists in a mental connection established by the trade concerned, assigning a service to a particular company. This mental connection is created by rendering the service in such a way that it is obvious for the customer that the service was furnished under the trademark. In the present case, the Supreme Patent and Trademark Board held that the use on advertising material qualifies as a use of the trademark.33 An entrepreneur whose grandfather obtained permission to use the name Radetzky by the great-grandson of the legendary Austrian Field Marshal, Joseph Wenzel Graf Radetzky, uses the designation “Radetzky Weingut” (Radetzky Winery) and also owns numerous word and word-device marks for alcoholic beverages, which include the name Radetzky. The great-great-grandson of Graf Radetzky cofounded Radetzky Weinhandelsgesellschaft mit Beschränkter Haftung (“Radetzky Wine Trade Limited”) in 1983 and obtained trademarks for wine, champagne, etc., although he was aware of the older rights granted otherwise by his father. In a cancellation request against his younger trademarks by the above-mentioned 32. Austrian Patent and Trademark Board, December 11, 2002, Om 11/02 (Nm 163/96)—Pbl 2003, 76. 33. Supreme Patent and Trademark Board, December 11, 2002, Om 13/02 (Nm 210/97 to Nm 212/97)—Pbl 2003, 99. 292 Vol. 95 TMR entrepreneur, based on confusing similarity of the trademarks to his older trademarks and company name, the great-greatgrandson justified himself with reference to his right of name and also claimed forfeiture, particularly because he had been in contact with the appellant who was well aware of the younger trademarks. However, he remained unsuccessful because it was rightly held that the appellant has a derivative right to use the name Radetzky and, therefore, owns older valid trademarks with which the younger trademarks were deemed confusingly similar due to the distinctive part RADETZKY. Furthermore, the older business designation was also deemed to be a basis for cancellation of the younger marks. Regarding the claimed forfeiture, it was held that acquiescence is present only if, upon consideration of all facts, the behaviour of the owner of an older right clearly indicates that he will likely not take action against a younger trademark within a period of five years, starting from the day the owner gained knowledge of the use of the younger trademark. The presumption of acquiescence is excluded if a warning was given within that timeframe. Therefore, despite the authorized use of his name for his company, the opponent should have obtained the applicant’s permission prior to the registration of the challenged trademarks. However, this was not the case.34 Based on the use of the establishment’s designation VILLA KUNTERBUNT for a restaurant since 1993, the owner achieved the cancellation of the trademark HOTEL VILLA KUNTERBUNT, registered in 1995 for the services “temporary accommodation; services for providing food and drinks.” This ruling was issued because, in a conflict of property rights, priority is crucial because the opposing designations are virtually identical and the services of a café/restaurant are identical to “services for providing food and drinks” and similar to “temporary accommodation.”35 III.L. Opposition/Cancellation Procedure The cancellation request against a trademark was delivered by the Austrian Patent Office to the foreign, French-speaking owner of the mark but was forwarded in its enterprise to the clerk only after the term for filing a reply had expired. The petition for restitution was granted in spite of the applicant’s objections on the following ground: both misplacing and forgetting a postal item as well as communication, organisational or actual failures by the 34. Austrian Patent Office, Nullity Division, March 6, 2003, Nm 72/97 to 75/97—Pbl 2003, 114. 35. Supreme Patent and Trademark Board, April 9, 2003, Om 1/03 (Nm 264/99)—Pbl 2003, 185. Vol. 95 TMR 293 defaulting party that resulted in a party not gaining knowledge of a legally effective delivery without (gross) fault on its part, therefore suffering legal prejudice, are circumstances that in the event of mere slight negligence can still lead to restitution. A minor error does not hinder the restitution. A minor error is assumed if a mistake is committed that could also be made on occasion by a diligent person. For parties not versed in the law, no severe standards shall be set in judging the lack of diligence that leads to default.36 III.M. Licensing Issues In an infringement suit where the nonexclusive licensee of the word mark BRÜHL successfully opposed the use of the same name in a combined word-device mark by a competitor, the Supreme Court again37 had to consider the right of action of a licensee. Whereas hitherto it was clear that the exclusive licensee is entitled to take action against infringements of trademark rights by third parties, the Supreme Court now held that also the nonexclusive licensee is entitled to sue, provided that he was authorized to do so by the licensor.38 V.A. Domain Names A company founded in 1999, using the designation INET in its company name and also having this designation registered as a trademark for Internet technology services, filed a cease and desist action against a software company that had possessed the domain inet.at since 1997, but did not use it actively to maintain contact with its clients. As the defendant was able to prove that it had used its domain (or email address, respectively) after its registration at least for redistributing emails received from its clients, this was regarded as reasonable distinctive use. Due to the priority of the domain have over the registration of the company and the trademark, the plaintiff did not succeed.39 The Austrian Company AMS Auto - und Motoren - Service GmbH, registered since 1975 and engaged in the field of motor vehicle mechanics, registered the domain ams.at in July 2001. In 1994, a public service company, whose name Arbeitsmarktservice (“job market service”) was abbreviated AMS, was established by 36. Supreme Patent and Trademark Board, September 25, 2002, Om 12/02 (Nm 19/00)—Pbl 2003, 74. 37. Reported at 93 TMR 529 (2003). 38. Supreme Court, October 15, 2002 4 Ob 209/02t—ÖBl 2003, 87. 39. Supreme Court, August 20, 2002, 4 Ob 101/02k—ÖBl 2003, 180. 294 Vol. 95 TMR federal law, assigned to execute the labour policy of the federal government. It owned the word-device mark AMS since 1996 and runs a websiteams.or.at. The public company demanded cease and desist and assignation of the domain ams.at from the defendant, claiming that AMS would possess outstanding distinctiveness, and therefore, a consideration of interests in favour of the plaintiff would have to be taken. However, the action was ultimately dismissed by the Supreme Court. The court reasoned that the defendant’s right to the name of the defendant was of older priority than the trademark rights of the plaintiff. In addition, the interest of the plaintiff to be in possession of the domain name ams.at was, in spite of its prominence, not to be judged considerably more important than the interest of the adversary in using its website in the future for doing business. With this ruling, the Supreme Court for the first time addressed the issue of under which circumstances even the authorized use of a name can be unlawful. In conclusion, it held that unlawfulness is to be assumed when the interest is deemed significantly less valuable than the interest of a person or entity with the same name to use that name without restriction.40 On the occasion of a legal dispute concerning the use of the toponym “Adnet” (a tourist hamlet community in the Austrian federal state of Salzburg) by a local private individual in his domain adnet.at the, Supreme Court had the opportunity to make some groundbreaking statements. The registration of a toponym connected with the top-level domain “.at,” as well as with “.com” or “.org,” does not constitute a challenge of the right of the owner of the name (i.e., the community). A presumption of name only interferes with the rights of the owner of the name if it violates the worthy interests of the owner, i.e., if the unauthorized use of the name leads to a confusion of attribution. In the case of domains, not only the domain name but also the content is critical because the risk of confusion can be precluded by a clarifying notice (as it was in the present case). A violation of other legitimate interests of the owner of the name (i.e., the community) can be assumed in case of a conflict of interests. However, such a conflict was denied in this case because the private individual referred on his webpage to the homepage of the community and generally served the interests of the community, particularly to make a positive impression to foster tourism. Therefore, a unity of interests existed.41 40. Supreme Court, November 5, 2002, 4 Ob 207/02y—ÖBl 2003, 140. 41. Supreme Court, May 20, 2003, 4 Ob 47/03w—ÖBl 2003, 271. Vol. 95 TMR 295 As part of a marketing concept, a hotel operator planned to run several hotels under the common name CENTRO-HOTELS, and therefore, registered the domain centro-hotels.com in 1998. In 1999, another corporation was founded under the chosen name of Centro-Hotel, which in 2000 applied for a corresponding trademark, started operation of a hotel and got the domain centrohotel.at. Although the latter company has the later priority regarding the firm’s name, the trademark, the name of the establishment and the domain, it requested, in a preliminary injunction proceeding, the cessation of the use of the older domain centro-hotel.com based on a consideration of interests, claiming that at the time of filing the lawsuit the defendant was still running only one hotel. However, the action finally proved unsuccessful. The Supreme Court held that the interests of the plaintiff, being the owner of the domain centro-hotel.at, are not deemed considerably more valuable than the interests of the defendant so that injunctive relief based on the right to the name was not justified. Even under the concept of “stocking” of rights on considerable reasons it was not justified to ban the defendant from using the designation “centro-hotel” because his marketing concept might still prove successful. Also, deception of the trades concerned was ruled out by the Supreme Court. It conceded that the trade concerned is well aware of the fact that each domain name can only be granted once, and therefore, meaningful Internet addresses may not be available in an unlimited amount. Thus, the mere use of the disputed domain name cannot be seen as deceptive.42 The media company RTL, well known in Austria and in the surrounding countries, successfully took action against an advertising specialist, demanding cessation of use and consent to cancellation of the domain name rtl.at, having earlier priority and consisting of the latter’s initials. The Supreme Court held that the defendant’s pseudonym “rtl” or “r.t.l.” has a name function and is, therefore, protected like a name. However, the necessary consideration of interests was made in favour of the media group that had achieved a valuable reputation worthy of protection. The defendant was expected to use his full name for his Internet presentation. Furthermore, in a groundbreaking remark, the Supreme Court held that neither the net designation (i.e., www) nor a top-level domain (i.e., .at or .com) are relevant for distinguishing names. The second-level domain is the decisive 42. Supreme Court, May 20, 2003, 4 Ob 103/03f—ÖBl 2003, 241. 296 Vol. 95 TMR component in determining the general impression of a domain name.43 BENELUX I.B.11.a. Copyright Protection While denying the similarity between the trademarks TRÉSOR (which translates to “treasure”) and FEMALE TREASURE, the Court of Appeal in Bois-le-Duc, in a landmark decision, ruled that the composition of TRÉSOR perfume enjoyed copyright protection, and it enjoined the FEMALE TREASURE product.44 Kecofa’s FEMALE TREASURE perfume contained 24 of the 26 olfactory components contained in Lancôme’s TRÉSOR. The chance that this was accidental was computed as being the same as for winning the lotto every day during an entire century. This was considered sufficient proof that FEMALE TREASURE was infringing the TRÉSOR copyright. I.B.11.e. Bad Faith The Benelux Court of Justice has rendered a decision in Unilever N.V. v. Arctic N.V.45 From 1997 onward, Unilever successfully marketed an ice cream product under the name of WINNER TACO. The product is sold in the form of a taco. In early 1999, Arctic started marketing a similarly shaped ice cream under the trademark EL TACO, after clearing with the Trademarks Registry that Unilever had not registered the WINNER TACO shape. Following Arctic’s introduction of its competing product, Unilever registered its shape of the ice cream as a trademark. The matter before the Benelux Court of Justice concerned the question whether that registration by Unilever was done in bad faith, considering that Unilever knew, at that moment in time, that Arctic was already using a similar shape. The Benelux Court of Justice ruled that under the given circumstances there was no bad faith. The Court considered that the mere knowledge of use by Arctic within Benelux, of which Unilever was aware at the time of filing the application, did not constitute an act of bad faith in itself, given that Unilever had used its mark well prior to Arctic. 43. Supreme Court, March 25, 2003, 4 Ob 42/03k—ÖBl 2004,35. 44. Lancôme Parfums et Beauté et cie S.N.C. v. Kecofa B.V., Court of Appeal, Bois-leDuc, June 8, 2004, IER 73 (2004), NJ 515 (2004). 45. Benelux Court of Justice, June 25, 2004 (not published). The decision in this case at the court of first instance was discussed at 92 TMR 271 (2002). Vol. 95 TMR 297 I.B.13. First to Apply Versus First to Use Sogni d’Oro Trading B.V., the plaintiff in this case, is a trader in waterbeds. The firm alleges that it developed the trade name ALIVIO for these goods. On May 15, 2003, Sogni d’Oro registered ALIVIO WATERBEDS as a trading style with the Netherlands Chamber of Commerce. A week thereafter, the defendant, Baltimore Waterbedden B.V.—likewise a waterbed supplier— registered ALIVIO as a trademark with the Benelux Trademarks Office in International Classes 10, 20 and 35. The plaintiff claimed that the defendant’s registration had been done in bad faith, arguing that Baltimore knew or should have known about Sogni d’Oro’s use of ALIVIO WATERBEDS as a trading style prior to Baltimore’s registration of ALIVIO. The President of the District Court of Leeuwarden rejected the claim on the ground that the plaintiff could not substantiate it.46 Even worse for the plaintiff, the President stated that its use of ALIVIO WATERBEDS constituted an infringement of the defendant’s legitimately registered trademark ALIVIO, and consequently Sogni d’Oro was ordered to cease and desist in the use of its trading style. This case is yet another warning not to rely upon the use of a trading style but, if possible, to register it as a trademark, even when there may be doubt that the name is being used as such. III.A.2.b. Similarity of Marks Plaintiff Pfizer Inc. is the owner of various Benelux and CTM trademark registrations for the word VIAGRA, as well as for the specific figurative element of the drug sold under that name. In Benelux VIAGRA is a prescription drug only. Defendant Alpha Pharmaceuticals B.V. sells blue-colored, hexagonally shaped pills under the trademark SIGRA as a sexual stimulant. These are sold through the Internet and so-called smart shops. The District Court of Zutphen held that there was indeed auditive, visual and conceptual similarity between both marks. Interestingly, the court found that as VIAGRA is a prescription drug, the general public had only an imperfect recollection of the shape of the product. As the choice of the color blue and the hexagonal form was unnecessary to the proper functioning of the product, these aspects also were held to infringe the plaintiff’s rights, and the court enjoined any use of a product under the name SIGRA in a form consisting of blue hexagonal tablets.47 46. Sogni d’Oro Trading B.V., a.k.a. Alivio Waterbeds v. A.I. Baltimore Waterbedden B.V., President of the District Court, Leeuwarden, August 28, 2003 (not published). 47. Pfizer, Inc., v. Alpha Pharmaceuticals B.V., District Court, Zutphen, March 24, 2004, NJF 352 (2004). 298 Vol. 95 TMR In the same case, the Netherlands licensee of the plaintiff had joined in its action against the defendant. However, this is possible only with the explicit approval of the trademark owner. The fact that the trademark owner was a co-plaintiff in the same matter could not be held to contain such approval. As a result, the licensee’s claims were rejected. Dance Valley B.V. v. Stichting Musicon Tilburg concerned a Community Trade Mark (CTM) registration for DANCEVALLEY, invoked against the use of the defendant’s mark DANCEHILL.48 The defendant claimed that the opposing mark lacked distinctiveness. The President of the District Court of Tilburg held that, as the plaintiff’s mark had been registered by the European Trademarks Office after a thorough and critical examination and the defendant had not filed a cancellation action, the registration must be considered valid. Subsequently, the use of the defendant’s mark was enjoined. This case is a reminder that it is advisable to re-counter summary actions based on descriptive CTM registrations with the filing of a cancellation action. According to the President of the District Court of Zwolle, the defendant, Mr. Nijkerk, did not infringe plaintiff Microsoft’s trademark rights by reserving the alphanumeric telephone numbers 0800-MICROSO and 0900-MICROSO. The numbers were not intended to be used in commerce and consequently could not constitute an infringement. Nijkerk pointed out his intention to use the name MICROSOOF in relation to his commercial activities and, therefore, claimed the domain name microsoof.nl. The President did not qualify this as having infringed Microsoft’s trademark rights either. On appeal, the Court of Appeal in Arnhem partly reversed the President’s decision and ruled that the use in commerce of MICROSOOF did indeed constitute an infringement of the plaintiff’s trademark rights.49 Microsoft failed, however, to convince the appellate court that Nijkerk’s reservation of the alphanumeric telephone numbers infringed its trademark rights. By simply reserving numbers corresponding to a trademark, therefore, one should not be found to have taken unfair advantage of or caused damage to the reputation of the owner. As long as Nijkerk does not use names identical or similar to the MICROSOFT mark, no problems should arise. 48. Dance Valley B.V. v. Stichting Musicon Tilburg, President of the District Court, Tilburg, January 30, 2004, IER 48 (2004). 49. Microsoft B.V. v. Wouter Nijkerk, a.k.a. Omega, Court of Appeal, Arnhem, March 23, 2004, IER 38 (2004). Vol. 95 TMR 299 In SNS Reaal Groep NV v. SNS Group plc, the President of the District Court of Bois-le-Duc had ruled that the plaintiff’s registrations of its SNS marks in Class 35 had partially lapsed as a result of nonuse and that the defendant had a valid reason for the use of its trading style SNS Group plc in Benelux because it was legally established in the UK, its home country.50 The plaintiff is a well-known bank in Benelux. The defendant uses its name in respect of public relations services. On appeal, the President’s judgment was overturned. The Court of Appeal in Bois-le-Duc assumed likelihood of confusion, taking into account that the plaintiff’s service marks for banks have a well-established reputation in Benelux. In addition, a market research report revealed that a third of the public associated the defendant’s mark with the plaintiff. As a result, SNS Group was ordered to cease and desist in the use of its trade name and trademark containing the word element SNS.51 After having initiated summary proceedings before the Finnish court in Helsinki, which admitted its claim, Microsoft Corp. asked the President of the District Court of Amsterdam to order Lindows.com, Inc. to cease and desist in the use of its signs LindowsOS and Lindows.com in Benelux.52 Lindows.com, Inc. is an American software company that markets operating systems under the name LindowsOS. This operating system is equally compatible with both LINUX and WINDOWS software. The President ruled that although the defendant correctly alleged that it was entitled to make use of the WINDOWS trademark to indicate the destination of its products, this did not imply that Lindows.com could use the WINDOWS mark, albeit in altered form, in the name of its own products. In this sense, Lindows.com took unfair advantage of the distinctive character and reputation of the WINDOWS trademark. Because LindowsOS and WINDOWS are used for identical or at least similar goods, that made it likely that the visual and auditive similarity would confuse the average informed, cautious and observant consumer. III.A.11.b. No Similarity of Goods/Services The plaintiff in this case, McDonald’s, is the owner of various Benelux trademarks containing the prefix Mc-. With the exception 50. SNS Reaal Groep N.V. v. SNS Group plc, President of the District Court, Bois-leDuc, May 22, 2003, IER 71 (2003). See the discussion at 94 TMR 311-12 (2004). 51. SNS Reaal Groep N.V. v. SNS Group plc, Court of Appeal, Bois-le-Duc, October 14, 2003, IER 11 (2004). 52. Microsoft Corp. v. Lindows.com, Inc., President of the District Court, Amsterdam, January 29, 2004, IER 47 (2004). 300 Vol. 95 TMR of the trademark McDONALD’S, the suffix of most of these marks refers to a specific fast food product or generic indication (e.g., McDONUT, McSHAKE, McSNACK). The defendant, Mr. F. Schaap, has registered the trademark McSMART with the Benelux Trademarks Office for so-called “smart products,” such as herbs and mushrooms, which are considered illegal drugs in many jurisdictions. The Regional Court in Utrecht found that although the goods for which both trademarks were registered were meant for human consumption, McSMART products were offered mainly in stores or through the Internet, while McDonald’s used restaurant outlets. Furthermore, McDonald’s main interest lay in the fast food market, whereas the McSMART mark focused on the alternative drug market, which served a quite different type of specific consumers. As a result, the court ruled, these goods were considered dissimilar. The court also held that although there was a certain relationship between both marks—notably the use of the prefix Mc-—the similarity was not sufficient to cause risk of association. Noting that there are various registrations by third parties in Benelux for trademarks containing the prefix Mc-, the court ruled that the mere fact that the defendant used his mark for specific food products did not in itself constitute a breach of the plaintiff’s trademark rights, as it was unlikely that the public would associate McSMART with fast food products. As a result, the plaintiff’s claims were dismissed.53 Surprisingly, the fact that “smart products,” might provide a negative association with the famous McDONALD’S trademarks apparently was not made an issue in this case. III.A.12. Lack of Distinctiveness Plaintiff Gratiz.nl Internet Diensten (Gratiz.nl) provides a Web page—gratiz.nl—that contains links to free products and services. Gratiz.nl has registered the word mark www.gratiZ.nl with the Benelux Trademarks Office. Defendant Matrix B.V. provides similar services under the domain name gratis.nl. The Groningen District Court ruled that the www.gratiZ.nl trademark did not have any distinctiveness and consequently declared its registration void. This was upheld by the Court of Appeal in Leeuwarden, which also expressly confirmed that the plaintiff’s trademark registration was void on the grounds of descriptiveness of the dominant element “gratiZ.”54 53. McDonald’s International Property Co. Ltd. v. F. Schaap, Regional Court, Utrecht, April 14, 2004 (unpublished). 54. E. Scholtens, d.b.a. Gratiz.nl Internet Diensten v. Matrix B.V., Court of Appeal, Leeuwarden, July 23, 2003 (not published). Vol. 95 TMR 301 III.A.15. Deceptive Use M.J. van Meeteren, the defendant in this case55 trades in new and used automobiles of the trademark MERCEDES-BENZ. However, he is not a member of the dealer organization of DaimlerChrysler AG, owner of the MERCEDES trademark. The defendant has, inter alia, claimed the domain name vanmeeterenmercedes.nl. The MERCEDES trademark is frequently used on his site. In conformity with case law of the European Court of Justice,56 the District Court of Breda ruled that the use of a brand for cars by an enterprise that is not a member of the dealer organization of the trademark owner was allowed only insofar as this use did not give the impression that a certain relationship existed between the enterprise and the trademark owner. In more practical terms, the court held that van Meeteren was entitled to use the MERCEDES trademark to indicate the goods in which he trades and to inform the public that he is a specialist in the field of MERCEDES automobiles. The defendant used the trademark, however, as a part of his secondary trading style, viz., Van Meeteren Mercedes and Van Meeteren MercedesBenz. This specific use of the trademark, as well as the use of the domain name vanmeeterenmercedes.nl, was found to be an indication of the enterprise rather then an indication of the goods sold under the trademark. The public might, consequently, have the erroneous impression that there was a relationship between the defendant and DaimlerChrysler AG. Use of both the trading style and the domain name, therefore, was subsequently enjoined. III.B.6. Configuration of Goods The plaintiff, Distillers & Vintners Amsterdam B.V. (UDV), is the owner of various Benelux trademark registrations for the trademark MALIBU, as well as for a design mark comprising a two-dimensional reproduction of a non-transparent white bottle with a brown cap. MALIBU has become well known in Benelux for a rum-based coconut liqueur. The defendant, Koninklijke Cooymans B.V., has been selling a similar coconut liqueur under the trademark SURFERS in Benelux since 1987. From 1994 onward SURFERS had also been marketed in a white, nontransparent bottle with a brown cap. In the first instance, the District Court of Breda dismissed the plaintiff’s infringement claim and ruled that there was no likelihood of confusion in the 55. DaimlerChrysler AG v. M.J. van Meeteren d.b.a. Handelsonderneming M. van Meeteren, District Court, Breda, January 14, 2004, IER 46 (2004). 56. See e.g., ECJ, February 23, 1999 (NJ 134 (2001)), and September 25, 2000 (NJ 245 (2001)). 302 Vol. 95 TMR mere use of a white bottle with a brown cap for an identical liqueur. The District Court held that the white, non-transparent bottle with a brown cap was not distinctive and ordered cancellation of plaintiff’s corresponding registration. The Court of Appeal in Bois-le-Duc, in reversing the District Court’s ruling, held the bottles to be confusingly similar and, moreover, ruled that the two-dimensional registration of the MALIBU bottle could indeed result in protection of its threedimensional shape.57 The plaintiff could, therefore, object against the use of the defendant’s three-dimensional bottle on the basis of its registration for a two-dimensional bottle. In addition, the Court of Appeal rejected the defense that the MALIBU bottle trademark was not used per se but rather was used exclusively in combination with a MALIBU label and that consequently there was no proper use of the mark as registered. The appellate court held that such combined use also implied use of the mark as registered. Despite the fact that the SURFERS bottle had been used for a number of years in many markets, the Court of Appeal rejected the defendant’s claim that UDV had acquiesced in the use of the bottle, and even ordered that all profits made by the use of the bottle be surrendered to UDV. This decision should serve as a caution to the users of brands not to rely too much on the rule of acquiescence and also as advice to trademark owners to at least send a letter of objection to the owner of a later, similar mark, even if the matter is not at that point brought before the court.58 III.F.3. Nullity MELROSE is the name of a music group. The name had originally been introduced into the group by the defendant. The partners of the group had signed a partnership deed, which expressly stipulated that members could resign at any time by simply informing the others. It also stated that in case of resignation the remaining members had the right to take over the assets of the partnership, including the trade name. The defendant registered the trademark ALL-ROUND ORKEST MELROSE (“AllRound Orchestra Melrose”) with the Benelux Trademarks Office in International Classes 9 and 41 in his own name in 2000, three years after the partnership was formed. The plaintiffs claimed that as the defendant had resigned from the partnership he should not 57. Distillers & Vintners Amsterdam B.V. v. Koninklijke Cooymans B.V., Court of Appeal, Bois-le-Duc, July 29, 2003, IER 9 (2004). 58. Under Article 14bis of the Uniform Benelux Trademarks Law the holder of a senior trademark can no longer object to the use of a junior registered trademark if he has knowingly acquiesced in the use thereof during five consecutive years, unless the junior mark was registered in bad faith. Vol. 95 TMR 303 make further use of the name MELROSE and his trademark ALLROUND ORKEST MELROSE. The President of the Groningen District Court ruled that the name MELROSE belonged to the partnership, being the defendant’s contribution at the time of its foundation.59 All rights to this trade name had been surrendered at that time. With regard to the defendant’s trademark registration, the President ruled that it had been obtained in bad faith. Such a registration cannot be ordered cancelled in summary proceedings, but the President could and did enjoin any use thereof by the defendant. III.L. Opposition/Cancellation Procedure Granuband B.V, the defendant in the case at the court of first instance, had summoned the plaintiff, Granuflex Ipari Es Keresdemi Kft (Granuflex), before the President of the District Court of Bois-le-Duc in summary proceedings to object to the alleged infringement of Granuband’s Community Trade Mark GRANUFLEX. The President admitted the claim by default of Granuflex. Granuflex opposed the decision, and appealed. The President, however, ruled that the objection was inadmissible, as the plaintiff’s claims were not based on the correct legal grounds. Granuflex had not mentioned or alleged the terms Community Trade Mark and Community Trade Mark Regulation. As the claims should be based on the latter, the fact that the plaintiff did in fact invoke some articles of the Benelux Trademarks Act was considered irrelevant.60 V.A. Domain Names The plaintiff is the owner of the Benelux trademark HOLIDAY CARS & Device in respect of car rental services and also owns the domain name holidaycars.nl. Prior to the plaintiff’s trademark registration, the defendant had claimed the domain name holidaycar.nl, which offers identical services. In summary proceedings61 the President of the District Court of The Hague held that the plaintiff’s trademark registration, in proceedings on the merits, most probably would be considered void, owing to lack of distinctive character.62 The President ruled, further, that even if HOLIDAY CARS would in time have acquired a certain level of 59. President of the District Court, Groningen, March 9, 2004 (not published). 60. Granuband B.V. v. Granuflex Ipari Es Keresdemi Kft, President of the District Court, Bois-le-Duc, October 14, 2003, and May 25, 2004 (unpublished). 61. Sunset Holidays B.V. v. Sunny Cars Aktiengesellschaft, President of the District Court, The Hague, October 3, 2003, IER 24 (2004). 62. A trademark registration cannot be cancelled in summary proceedings. 304 Vol. 95 TMR distinctiveness through use, this would not automatically imply that the defendant infringed the plaintiff’s trademark rights by registering and using the domain name holidaycar.nl. As the terms holiday and car were purely descriptive for the services rendered, the plaintiff could not object to the use thereof by third parties to designate the character of their services. Neither did the use of metatags containing the words HOLIDAYCAR, HOLIDAY CARS and HOLIDAYCARS infringe the plaintiff’s trademark rights. The outcome could be different only if the mark had become established. This judgment is yet another caution to trademark owners that descriptive marks may be the easiest but not the best choice after all. BRAZIL I.B.1. Generic Names The Brazilian Patent and Trademark Office (PTO) rejected an application (No. 821282050) to register the trademark MASTERTICKET, in Class 36, in the name of MasterCard International Incorporated (MasterCard), based on likelihood of confusion.63 The PTO indicated as anticipations several registrations owned by the ACCOR Group (ACCOR), all for trademarks incorporating the expression “ticket,” covering various services. MasterCard appealed the decision, arguing that “ticket” per se was a word in common use that described a pass given to consumers for use in various types of activities, such as food and transportation. It also argued that ACCOR, owner of the anticipations, was not entitled to exclusive use of the expression “ticket,” and that the existence of other trademarks containing the same expression, such as COMBUSTICKET, TICKET and BANCO 1 – PHONE TICKETS, would allow the coexistence of the marks in conflict. The PTO sustained the appeal and, consequently, reversed its decision and allowed the application for MASTERTICKET to proceed to registration.64 The final fees were paid, the granting decision was published65 and the Certificate of Registration of the trademark was issued. 63. Decision published in Official Bulletin No. 1606, of October 16, 2001. 64. Decision published in Official Bulletin No. 1730, of March 2, 2004. 65. Decision published in Official Bulletin No. 1741, of May 18, 2004. Vol. 95 TMR 305 I.B.5. Personal Names The Brazilian PTO published application No. 820241504, for the trademark ARTHUZICO, in the old Brazilian Class 37.25, in the name of Alessandro Provenzano Vassalo, for opposition purposes by third parties.66 The well-known Brazilian former soccer player nicknamed Zico, who is now a soccer coach in Japan, filed an opposition arguing the nonregistrability of the ARTHUZICO mark based on Article 124, Item XVI of the Brazilian Industrial Property Law, which states that famous stage names or nicknames, without the consent of the respective owners, their heirs or their successors, cannot be registered as trademarks. The PTO then published a notice rejecting the application for the trademark ARTHUZICO,67 citing as the basis for its decision the arguments set forth in the Brazilian former soccer player’s opposition. I.B.8.a. Similarity of Marks The Brazilian PTO rejected an application to register the trademark VIVRE,68 in the old Brazilian Class 25, Items 10, 20 and 60, for clothing and clothing accessories for common use, clothing and clothing accessories for use in sports, and travel articles, in the name of Arpel Confecções Ltda. (Arpel). The PTO’s decision was based on likelihood of confusion, with the trademark applications for SAVOIR VIVRE69 and JOIE DE VIVRE70 being cited as an impediment to the registration of the trademark VIVRE. Arpel appealed the PTO’s decision with the courts,71 seeking registration of its mark on the ground that the trademarks were composed of different elements, which made them sufficiently distinctive to coexist in the Brazilian market. Following an unfavorable lower court decision, the applicant appealed to the Regional Federal Court of Appeals of the Second Region, which affirmed the lower court’s decision72 on the ground that the coexistence of the marks could cause confusion among consumers as the marks in question identify the same products. 66. Decision published in Official Bulletin No. 1414, of January 27, 1998. 67. Decision published in Official Bulletin No. 1719, of December 16, 2003. 68. Application No. 811.007.510. 69. Application No. 815.811.632. 70. Application No. 816.372.470. 71. Civil Action No. 92.02.13117-1. 72. Decision published in Official Gazette of June 15, 2004. 306 Vol. 95 TMR III.A.2.b. Similarity of Marks Seara Indústria e Comércio de Produtos Agropecuários Ltda. filed a lawsuit73 against Bunge Alimentos S.A. and the Brazilian PTO before the 28th Federal Court of Rio de Janeiro, seeking the annulment of the PTO’s rejection of its applications to register trademarks, all containing the expression “SEARA,”74 which applications were rejected in view of the previous existence of the defendant Bunge Alimentos’ trademark registrations for the mark SEARA, granted for the same and similar classes.75 The plaintiff argued that it had IP rights in the expression “SEARA,” taking into consideration its priority rights in its corporate name, containing the word “SEARA” (the company was founded in 1973). In addition, the plaintiff alleged priority regarding its first trademark application for the mark SEARA (filed with the PTO in 1986). The plaintiff’s main argument, however, was that Bunge Alimentos became the owner of the registrations for the SEARA mark only in 1990, when the PTO published the assignment of these trademark registrations by Seara Indústrial S.A. to the defendant. Rebutting these allegations, the defendant demonstrated to the Federal Court that, in reality, it had the previously mentioned priority rights, owing to the fact that its corporate name— containing the word “SEARA”—preceded that of the plaintiff. (Bunge Alimentos was founded in 1956; its first corporate name was Frigorífico Seara S.A., which company was incorporated by the defendant a few years later.) As regards the applications (as well as the registrations), the defendant demonstrated to the Federal Court that its first application for the SEARA mark was filed in 1958 (its registration was granted in 1962) and that, since then, the trademark SEARA had been protected—prohibiting, therefore, its misappropriation by third parties—independently of when the assignment to the defendant was recorded by the PTO. Bunge Alimentos affirmed 73. Protocol No. 94.004.28251. 74. Applications No.: 812835158, in Class 33; 815538618, in Class 31; 816937362, in Class 32; 816937389, in Class 10; 816937400, in Class 21; 816937427, in Class 21; 816937443, in Class 29; 816937460, in Class 30; 816937486, in Class 33; 816937508, in Class 29; 815371870, in Class 29; 816558019, in Class 32; 816937370, in Class 32; 816937397, in Class 10; 816937419, in Class 29; 816937435, in Class 29; 816937451, in Class 29; 816937478, in Class 32; 816937494, in Class 33; 816946620, in Class 40; and 812835166, in Class 30 (this last application was cancelled after an appeal filed by the defendant was sustained). 75. Nos. 002735857, in Class 29; 811216853, in Class 21; 811882888, in Class 29; 811882845, in Class 22; 814891160, in Class 32; etc. Vol. 95 TMR 307 that both parties commercialize the same kind of products, which may cause confusion in consumers’ minds. The PTO stated that the plaintiff’s requests should not be granted, in view of defendant Bunge Alimentos’ prior trademark rights and the similarity of the products commercialized by the parties, and also mentioned the possible confusion by the consumers. The Federal Court rejected the plaintiff’s requests, based on the arguments and facts exposed by Bunge Alimentos and the PTO in their defense motions.76 The Court also noted that both companies competed in the same market segment, and therefore the trademarks used by them could mislead consumers. The plaintiff filed an appeal77 with the Regional Federal Court of Appeals of the Second Region against the lower court decision, which was affirmed on the same grounds.78 The plaintiff did not file any appeal against the decision rendered by the Court of Appeal. III.A.25. Geographical Indications Brasilcom Comércio e Representação Ltda. (Brasilcom) filed a lawsuit79 against Varese Indústria e Comércio de Calçados e Bolsas Ltda. (Varese) and the Brazilian PTO seeking to cancel Registration No. 608345741, for the trademark VARESE, in the old Brazilian Class 25.10, for clothes and clothing accessories for common use, owned by Varese. Even though Brasilcom does not own any trademark containing the expression VARESE, it based its arguments on the ground that Varese is the name of an Italian city, well known for its leather products, and that geographical indications are not registrable as marks according to the applicable legislation. Defendant Varese filed counterarguments alleging that consumers did not know about the existence of the cited Italian city or about its leather products’ notoriety. Therefore, Varese argued, it did not take any advantage by having the city’s name as its registered mark. The Federal Court rejected the plaintiff’s allegations,80 arguing that this Italian city was unknown to ordinary consumers. Brasilcom lodged an appeal against the lower court’s decision with the Regional Federal Court of Appeals of the Second Region,81 76. Decision published in Official Gazette of May 10, 1996. 77. Protocol No. 96.02.37369-5. 78. Decision published in Official Gazette of May 26, 2004. 79. Civil Action No. 96.02.36782-2. 80. Decision published in Official Gazette of September 26, 1996. 81. Appellate Review No. 96.02.36782-2. 308 Vol. 95 TMR taking the same line of argument as that set forth in the initial complaint. The Federal Court of Appeals rejected the plaintiff’s pleadings and ordered the maintenance of the registration for the trademark VARESE.82 III.F.1. Forfeiture An administrative forfeiture action based on nonuse was filed by National Amusements, Inc.83 against the trademark registration (No. 815423543) for SHOWCASE, in the old Brazilian Class 41.20/40, owned by Cataratas Iguaçu Showcase Promoções e Eventos Culturais. As the registrant did not file counterarguments against the forfeiture action, the Brazilian PTO published its decision canceling the cited registration.84 When the legal term for lodging an appeal against the decision ended without such appeal being lodged, the PTO declared the referred registration extinct under the terms of Article 142, Item III of the Brazilian Industrial Property Law.85 CANADA I.A.5. Bankruptcy A group of franchisees of Telemark Inc. used the trademark SHOWCASE and other trademarks under license, in association with retail stores. Telemark attempted to terminate the underlying premises leases and franchise agreements and repossessed some franchisees’ premises. The franchisees sued Telemark for breach of its obligations under the franchise agreement and of Ontario franchise laws.86 They obtained an injunction returning the seized premises and requiring Telemark to continue to service the franchisees. Very shortly thereafter, Telemark made an assignment in bankruptcy. Having notice of the franchisees’ claims, Osiris Inc. sought to purchase Telemark’s trademarks free and clear of liabilities, but it was required to expressly waive that disclaimer in order to obtain court approval of its purchase. Notwithstanding that requirement, Osiris then sought an injunction requiring the franchisees to cease use of the marks.87 82. Decision published in Official Gazette of May 17, 2004. 83. Official Bulletin No. 1362, of January 7, 1997. 84. Decision published in Official Bulletin No. 1416, of February 10, 1998. 85. Decision published in Official Bulletin No. 1709, of October 7, 2003. 86. Arthur Wishart Act (Franchise Disclosure), 2000, S.O. 2000, Ch. 3. 87. Osiris Inc. v. 1444707 Ontario Ltd., [2004] 30 C.P.R. (4th) 154 (Ont. S.C.J.). Vol. 95 TMR 309 To assess whether an interlocutory injunction should be granted, the court considered whether there was a serious issue to be tried, whether the plaintiff would be irreparably harmed by the defendant’s activity and whether the balance of convenience favored the plaintiff. Here, the court accepted that there was a serious issue to be tried, but it emphasized the importance of the unresolved claims of the defendant against Telemark. In the view of the court, any potential harm to Osiris could be compensated in damages. Finally, because the franchised businesses depended significantly on the trademarks, and given the unresolved claims against Telemark, the balance of convenience favoured the defendants. The motion for an injunction was denied. Purchasers of trademarks should always carefully review the nature and status of existing license and franchise agreements, and any outstanding claims thereunder. This case emphasizes that the purchaser may be subject to liabilities, or at least debts incurred by a bankrupt predecessor-in-title. I.B.2. Merely Descriptive Terms In Best Canadian Motor Inns Ltd. v. Best Western International, Inc.,88 the Federal Court may have significantly raised the bar for the registrability of design marks the dominant feature of which is text that, when sounded, is clearly descriptive of the associated goods or services. As a result, the Trade-marks Office has issued a draft practice notice that would formally adopt the reasoning in this case. Best Western was opposing Best Canadian’s application to register a design mark for hotel and restaurant services consisting of the following elements (from top to bottom): (1) a horizontal line broken by a stylized 11-point maple leaf; (2) BEST on top of CANADIAN, both in large type; (3) a second horizontal line; and (4) the words MOTOR INNS in small type distinct from that used for BEST and CANADIAN. Best Canadian had disclaimed BEST, CANADIAN, MOTOR and INNS, and the maple leaf. In addition to an allegation of confusion with its BEST WESTERN marks, Best Western argued that Best Canadian’s design mark was unregistrable pursuant to Section 12(1)(b) of the Trade-marks Act.89 88. [2004] 30 C.P.R. (4th) 481 (F.C.). 89. Trade-marks Act, R.S.C. 1985, ch. T-13, § 12(1)(b) (“a trade-mark is registrable if it is not . . . whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used . . . ”). 310 Vol. 95 TMR The Trade-marks Opposition Board90 had disagreed with Best Canadian’s submission that even if the words BEST, CANADIAN, MOTOR and INNS were clearly descriptive, the design mark was still registrable in view of the other design components. The Opposition Board noted that the maple leaf had been disclaimed and could not be distinctive.91 The other design features (i.e., horizontal lines and the fact that BEST CANADIAN appeared in lettering that was larger than and a different style from MOTOR INNS) were considered insufficient to render the mark registrable. The Opposition Board formed the view that the applied-for mark would be sounded by reference only to the words incorporated within the mark (BEST CANADIAN MOTOR INNS). Then, focusing on Section 12(1)(b), particularly the words “depicted, written or sounded,” the Opposition Board concluded that these constituted three separate tests to be met. Because the applied-for mark was descriptive when sounded, it was deemed unregistrable. Best Canadian filed additional evidence on appeal, namely the affidavit of a branding expert. He opined that it was wrong to ignore the design features of the Best Canadian logo in attempting to understand the impression it created. The court found that the expert was “simply wrong” to the extent he was implying that the Registrar ignored the design features of the mark. Whether the Registrar reached a conclusion different from that advocated by an appellant’s expert was not the test for determining whether new evidence was material. As no new material evidence had been submitted on appeal, the appropriate standard of review was reasonableness simpliciter; the court was not entitled to come to its own conclusion as to the correctness of the Registrar’s decision. Here, it was clear that the Registrar had put his mind to the relevant issues prior to refusing registration. This decision reflects a deviation from previous practice, where “depicted,” “written” and “sounded” were not considered either conjunctively or disjunctively, but rather were referenced in a single analysis of the overall impact of the mark. As noted above, and notwithstanding the apparent split in the Federal Court, the Trade-marks Office has reacted, circulating a draft practice notice. According to the draft notice, if an examiner determined that a mark had clearly descriptive or deceptively misdescriptive words that were its dominant feature, the application would be rejected. The Best Canadian case may have changed the landscape for many marks previously thought to be registrable. For any design 90. [2002] 23 C.P.R. (4th) 110 (T.M.O.B.). 91. The 11-point maple leaf depicted on the Canadian flag is considered a prohibited mark under Section 9(1)(e) of the Trade-marks Act. However, it may be incorporated in a trademark provided a disclaimer is entered and certain other conditions are met. Order-inCounsel P.C. 1965, 1623. Vol. 95 TMR 311 mark incorporating descriptive words, applicants may have to consider whether the mark contains design elements that are important enough to preclude the characterisation of the descriptive words as dominant. If not, the applicant may have to look for other arguments to support registrability—for example, that the words when sounded together are not clearly descriptive or deceptively misdescriptive. This decision may also expose existing registrations to challenge, but it is difficult to know how judges in the Federal Court will react, given the apparent split between two members of the court on this point. I.B.7.b. Three-Dimensional Marks In WCC Containers Sales Ltd. v. Haul-All Equipment Ltd.,92 the court considered an application to expunge Haul-All’s distinguishing guise trademark registration for the shape of an animal-proof garbage can. The court was required to consider both the doctrine of functionality in relation to trademarks and the relationship between trademarks and industrial designs. Haul-All obtained an industrial design registration for a garbage can design. The registration expired in 1994. In 1996, a Canadian government agency invited tenders for the supply of bear-proof garbage containers for a national park. The tender required the containers to be built in accordance with a specific design, which displayed the characteristics of Haul-All’s container. The successful bidder was a predecessor-in-title to WCC. In 1997, a different Canadian government agency invited tenders for the supply of animal-proof refuse containers for another national park. By this time, Haul-All had filed an application to register the shape of its container as a distinguishing guise trademark. Upon learning of the tender, Haul-All requested expedited examination of its application, and the registration issued quickly thereafter. A few days later, HaulAll informed the second government agency of its new trademark registration. Haul-All was ultimately awarded the contract even though WCC tendered a lower bid. A few weeks later, a request for tender was issued by a third government agency. It required that the containers be built in accordance with a specified design depicted in photographs showing the containers built by WCC’s predecessor-in-title under its earlier contract, and specifically provided that the container “must be on an angle as per photo illustration” of WCC's container. Haul-All threatened to sue the agency for inducing trademark infringement if the contract were awarded to anyone other than 92. [2003] 28 C.P.R. (4th) 173 (F.C.T.D.). 312 Vol. 95 TMR Haul-All. Again, while WCC presented the lower bid, the contract was awarded to Haul-All. WCC applied to expunge Haul-All’s distinguishing guise registration on several grounds, including the following: 1. Haul-All had breached an implied promise, made when it registered the shape of the containers under the Industrial Design Act,93 to dedicate the design to the public after the expiry of its design registration; and 2. The trademark was functional and the registration prohibited because it was likely to unreasonably limit the development of the art or industry for these containers. On the first point, WCC argued that by implication the industrial design registrant dedicates the design to the public following its expiry, and that to allow a distinguishing guise registration for the same design was contrary to the legislative intent under the Industrial Design Act of the grant of a limited monopoly. The interaction between trademark and industrial design law had previously received judicial attention in Canada. In W.J. Hughes & Sons “Cornflower” Ltd. v. Moriawiec,94 the court had opined that an industrial design registration was not necessarily fatal to registration of the same design or pattern as a trademark; however, in that case, the court did not have to decide the point. In WCC, the court noted that neither the Trade-marks Act nor the Industrial Design Act contains a provision prohibiting registration, as a trademark, of a design that was the subject of an expired industrial design registration. By contrast, the Copyright Act removes some design-bearing useful articles from the benefit of copyright protection,95 limiting the owner to industrial design protection. The court concluded that Parliament did not intend to explicitly limit the overlapping of industrial design and trademark protection in the same way as it had done for industrial design and copyright protection. The second issue was functionality. Pursuant to the Trademarks Act, a distinguishing guise is registrable only if it has been so used in Canada as to have become distinctive at the date of filing of the application for its registration, and if the exclusive use by the applicant of the distinguishing guise is not likely unreasonably to limit the development of any art or industry.96 93. R.S.C. 1985, ch. I-9. 94. [1970] 62 C.P.R. 21 (Ex. Ct.). 95. Copyright Act, R.S.C. 1985, ch. C-42, § 64. 96. Trade-marks Act, R.S.C. 1985, ch. T-13, § 13. Vol. 95 TMR 313 Reviewing case law dealing with functionality, including Remington Rand Corp. v. Philips Electronics N.V.,97 the court noted that while a distinguishing guise may possess a functional element or component, something that goes beyond distinguishing the wares of its owner to the functional structure of the wares is not a trademark. The court found that the sloped design of Haul-All’s product facilitated the functionality of the garbage container by, for example, impeding access by small animals and facilitating removal of bagged garbage. More significantly, however, the court noted that the request for tender from the third government agency specified the design features of Haul-All’s containers. The court concluded that the third government agency required the refuse container to be on an angle like Haul-All’s container for a utilitarian or functional reason. The court also considered whether Haul-All’s distinguishing guise was likely unreasonably to limit the development of any art or industry. Haul-All argued that the registration did not prohibit WCC or anyone else from developing its own line of containers that had the same functional benefits as Haul-All’s container. The court rejected this argument; that WCC was free to propose its own design did not address the fact that Haul-All had created a market for such garbage containers and that registration of the container design as a trademark restrained others from manufacturing in that part of the market. Having found that the third government agency specified Haul-All’s design for a functional, not aesthetic, purpose, the court concluded that Haul-All had used its trademark registration to limit the development of the art or industry. The key holding in this decision is that the existence or expiry of an industrial design registration does not preclude trademark protection for the same design. The decision also suggests that where the design of a product becomes the de facto standard that the relevant market expects for the product, particularly when specified by a government agency, a distinguishing guise trademark registration for that design may be unavailable. I.B.9.b. No Similarity of Goods/Services Gestion A.D.L. applied to register BAILEY’S & Design for use with tobacco products. R & A Bailey & Co. opposed the application based on its use of BAILEY’S in association with a cream liqueur. In trying to establish confusion, the opponent put forward evidence of the “affinity” between the marketing of tobacco products and alcohol products. Reference was made to the significant amount of advertising of liquors in publications devoted 97. [1995] 64 C.P.R. (3d) 467 (F.C.A.). 314 Vol. 95 TMR to tobacco products, and several samples of such advertisements were produced. The opponent also noted the number of tobacco products that are flavoured with spirits and wines, and submitted copies of receipts for purchases of samples of such products. However, no evidence of the extent of the distribution of the smoking-related magazines in Canada was provided, nor was there any evidence that R & A Bailey itself advertised or intended to advertise in such publications. The Trade-marks Opposition Board found only a “very minor association” between the parties’ respective wares. Based on an analysis of all of the relevant factors, the opposition was ultimately rejected.98 Failure of the opponent to establish an overlap between the parties’ wares was not determinative, but it was obviously relevant. I.B.12. Famous Marks In Mattel, Inc. v. 3894207 Canada Inc.,99 the Federal Court, Trial Division, affirmed the Trade-marks Opposition Board’s rejection100 of Mattel’s opposition to an application to register BARBIE’S & Design for restaurant services. Mattel had argued that such mark was likely to be confused with Mattel’s BARBIE mark for dolls. On appeal, Mattel filed additional evidence, including a survey in which the participants were given no information about the applicant’s business; anyone familiar with the applicant’s business was excluded from the sample. The court found that Mattel’s mark enjoyed a very extensive worldwide reputation in association with dolls. However, the notoriety of a mark was only one factor to be considered; if such fame could prevent all other uses of the mark, the fundamental concept of granting a trademark in association with certain goods would be rendered meaningless. Here, the nature of the goods, services and businesses “could not have been more different.” While Mattel’s dolls were targeted at 3- to 11-year-old girls, the applicant’s restaurants catered to an adult clientele. There was nothing about the restaurants that was suggestive of toys, dolls or childhood. It was “difficult to imagine that an individual would show up at one of the applicant’s restaurants intending to buy dolls.” The consideration of future events and possibilities of diversification (1) was properly restricted to the potential expansion of existing operations and (2) should not include speculation as to diversification into entirely new ventures, 98. R & A Bailey & Co. v. Gestion A.D.L., [2003] 29 C.P.R. (4th) 391 (T.M.O.B.). 99. [2004] 30 C.P.R. (4th) 456 (F.C.T.D.), appeal to Federal Court of Appeal filed (File No. A-99-04). 100. [2002] 23 C.P.R. (4th) 395 (T.M.O.B.). Vol. 95 TMR 315 involving new kinds of goods, services or businesses. Mattel’s survey was deemed to have taken place “in a vacuum” and given no weight except to establish that Mattel’s mark was well known, a conclusion that had been reached at first instance. The court’s requirement that surveys include (or at least not exclude) customers of the applicant is consistent with previous cases.101 The court explicitly relied upon the decision of the Federal Court of Appeal in United Artists Corp. v. Pink Panther Beauty Corp.102 I.B.22. Distinctiveness The decision in Novopharm Ltd. v. AstraZeneca AB103 dealt with pill designs. AstraZeneca applied for registration of two trademarks for use with felodipine, a drug used to treat hypertension. One design consisted of a pink color tied to the entire visible surface of the tablet; the other consisted of a redbrown color applied to the entire visible surface of a tablet. Novopharm opposed the applications. The Trade-marks Opposition Board rejected the oppositions on the ground that there was insufficient detail provided in the Statements of Opposition to enable AstraZeneca to respond to allegations of nondistinctiveness.104 On appeal, both decisions were upheld.105 New evidence had been filed on appeal, but it was given little weight by the court. The standard of review was, therefore, reasonableness, rather than mere correctness. A further appeal was taken by AstraZeneca to the Federal Court of Appeal.106 It held the Opposition Board had erred by failing to have reference to the opponent’s evidence, which would have cured any deficiency in the Statement of Opposition. The first appellate court was also found to have erred. The additional evidence filed on appeal had a material effect on the analysis; therefore, the court should have set the standard for review as correctness, rather than reasonableness. The Federal Court of Appeal remitted the matter to the Federal Court, Trial Division, for a determination on the merits. The central question was whether either of the marks was distinctive. A mark can be distinctive either if it is adapted so as to 101. See, e.g., Walt Disney Productions v. Fantasyland Hotel Inc., [1994] 56 C.P.R. (3d) 129 (Alta. Q.B.). 102. [1998] 80 C.P.R. (3d) 247 (F.C.A.). 103. [2003] 28 C.P.R. (4th) 129 (F.C.T.D.). 104. [1999] 1 C.P.R. (4th) 397, 403 (T.M.O.B.). 105. [2001] 13 C.P.R. (4th) 61 (F.C.T.D.). 106. [2002] 21 C.P.R. (4th) 289 (F.C.A.). 316 Vol. 95 TMR distinguish, that is, the mark is inherently distinctive, or if it actually distinguishes the owner’s products, that is, the mark has acquired distinctiveness or a secondary meaning. AstraZeneca submitted that the elements of color and shape in each of the two marks made the marks inherently distinctive; AstraZeneca noted that these elements were arbitrary and contended that an arbitrary mark is inherently distinctive. The court took the view that the colors and the shape of the tablets were not unique or unusual. It contrasted these with a coined word, which it held would be inherently distinctive. The court appeared to reject the proposition that an arbitrary mark is inherently distinctive. The court’s approach on this issue reflected the approach of the Federal Court of Appeal in another matter involving the same two parties.107 As of the date of the opposition, AstraZeneca had used the redbrown mark, but not the pink mark, and so AstraZeneca could allege acquired distinctiveness only with respect to the red-brown mark. The court held that the red-brown mark had not acquired distinctiveness. The court first considered the issue of the relevant market. The court’s conclusion on this point was not particularly clear, but the court accepted as relevant evidence of several redbrown pills used in association with other pharmaceuticals in Canada. The court also concluded from the evidence before it that pharmacists identified tablets primarily by Drug Identification Numbering, “markings” (presumably, word marks) and package labeling; tablet color and shape were secondary. AstraZeneca had conceded that physicians had limited reference to color and shape. There was no overt analysis of the effect of color and shape on patients, although potential for patient confusion is indisputably relevant.108 This latest decision is consistent with many others in setting high barriers for pharmaceutical companies to overcome in order to establish that pill designs are distinctive. II.F. International Issues In Pro Swing Inc. v. ELTA Golf Inc.,109 the issue was the extent to which a Canadian court would enforce a foreign judgment embodying equitable remedies. Pro Swing sued ELTA in a U.S. court, alleging trademark infringement and related causes of action in relation to trademarks for golf equipment. The parties 107. AstraZeneca AB v. Novopharm Ltd., [2003] 24 C.P.R. (4th) 326 (F.C.A.), summarized at 94 TMR 321 (2004). The mark in question was the color yellow as applied to the entire surface of a tablet of felodipine. 108. CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 44 C.P.R. (3d) 289 (S.C.C.). 109. [2003] 30 C.P.R. (4th) 165 (Ont. S.C.J.). Vol. 95 TMR 317 entered into a settlement agreement dealing with issues in the United States and elsewhere; the court issued a consent decree enjoining ELTA from using the marks. Several years later, Pro Swing learned ELTA was infringing; Pro Swing launched civil contempt proceedings and obtained an order for delivery up of offending materials and certain accounting information intended to permit the calculation of a damage award. ELTA did not respond to the contempt proceedings or provide the required information, and Pro Swing commenced proceedings in Ontario,110 where ELTA’s principal offices were located. ELTA contended that the U.S. court orders were not enforceable in Canada, as they were not final judgments, nor for a fixed sum of money, and that additionally the contempt order was quasi-criminal, and therefore subject to a long-established bar against enforcement of foreign penal laws. The court considered recent case law in this area.111 The court concluded that the historic common-law requirement that a foreign judgment be for a fixed sum may still be generally appropriate, but that the courts had to consider what was appropriate on a case-bycase basis. Here, the parties had consented to a decree, applicable extraterritorially. Moreover, the settlement agreement set out an agreed factual matrix. In those circumstances, the court determined that it should enforce the terms of the consent decree. The court also held that substance should dominate over form in determining whether a consent order should be enforced. Here, the order flowed from an action between private parties, and was restitutionary in nature. The court had concerns regarding the issue of finality, but it determined that certain aspects of the order, including those requiring an accounting, and the names of ELTA’s suppliers and purchasers did not offend the requirement for finality, and were severable from the balance of the order. The decision shows that Canadian courts are willing to enforce foreign judgments in appropriate circumstances, but highlights that many barriers remain. III.A.11.a. No Similarity of Marks In Alticor Inc. v. Nutravite Pharmaceuticals Inc.,112 the Federal Court, Trial Division, found no likelihood of confusion between NUTRILITE (which Alticor had used for over 50 years in 110. Pro Swing Inc. v. ELTA Golf Inc., [2003] 30 C.P.R. (4th) 165 (Ont. S.C.J.). 111. Morguard Investments Ltd. v. De Savoye, [1990] 76 D.L.R. (4th) 256 (S.C.C.); Hunt v. T&N plc, [1993] 109 D.L.R. (4th) 16 (S.C.C.); Uniforêt Pâte Port-Cartier Inc. v. Zerotech Technologies Inc., [1998] 50 B.C.L.R. (3d) 359 (B.C.S.C.). 112. [2004] 31 C.P.R. (4th) 12 (F.C.T.D.). Alticor has appealed this decision to the Federal Court of Appeal (File No. A-143-04). 318 Vol. 95 TMR 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). Alticor had also used the slogan BEST OF NATURE—BEST OF SCIENCE since 1998. In 1997, Nutravite’s application to register its mark based on use since 1992 was successfully opposed113 by Alticor on the primary basis of a likelihood of confusion with Alticor’s NUTRILITE mark, which was registered in 1952. Alticor accused Nutravite of trademark infringement, as well as passing off based on Nutravite’s use of the slogan A PERFECT BLEND OF SCIENCE AND NATURE, which ceased in 1999. Nutravite tendered evidence of 81 third party marks comprising the prefix NUTR for health-related products (including 38 such marks for vitamin, mineral or herbal supplements). Nutravite’s defense included an allegation that Alticor’s registration for NUTRILITE was invalid on the basis that the mark was unregistrable owing to descriptiveness. Alticor’s founder adopted NUTRILITE after reading a 1928 scientific article that defined “nutrilites” as “vitamin-like substances which in small amounts function in the nutrition of organisms.” However, the court declined to cancel Alticor’s registration because Nutravite was unable to show that in 1952 (when Alticor’s registration issued) Canadian consumers knew “nutrilite” to have such a meaning. Alticor urged the court to give significant weight to the Trademarks Opposition Board’s 1997 finding of confusion; the court refused to do so, noting that, in this action, the burden of proof was reversed and the evidence was significantly different. Despite concluding that the parties’ marks were similar in sound and appearance, the court was led by a number of mitigating circumstances to conclude that use of the parties’ marks was unlikely to cause confusion in the marketplace: 1. Given the large number of NUTR health products in the marketplace (including vitamin pills, nutritional bars and hair care products), the court had “no difficulty” concluding that consumers were able to distinguish such products on the basis of small differences in the associated marks. 2. While Alticor’s registration was not restricted to any particular channels of trade, it did not follow that confusion must be assessed on the basis that Alticor was “free to operate in any way open to it.” In fact, there was no evidence that Alticor’s product would ever be sold in retail outlets, and there were substantial barriers in this regard. 113. [1997] 84 C.P.R. (3d) 276 (T.M.O.B.). Vol. 95 TMR 319 3. It was “almost a certainty” that purchasers would know Alticor’s product was only sold through its multilevel marketing program and not in stores. While the relevant issue was “likelihood of confusion” and not “actual confusion,” the court was entitled to draw an adverse inference when there was no evidence of actual confusion despite extensive concurrent use. 4. Alticor’s survey evidence was insufficient to counter such an inference. While the credentials of Alticor’s survey expert were “exemplary,” Alticor’s survey was deficient in that it (a) did not consider the first impression on respondents who claimed to have no knowledge of the NUTRAVITE product; (b) did not include all independent business operators in Quebec; and (c) was very limited in scope, being carried out exclusively by telephone. By using A PERFECT BLEND OF SCIENCE AND NATURE NUTRILITE, Nutravite had not passed itself off as Alticor. The court considered the following factors: 5. Nutravite’s use of the phrase was limited to one television commercial and one magazine advertisement. It never appeared on bottles or containers. 6. Alticor’s use of BEST OF NATURE—BEST OF SCIENCE was not a prominent part of its NUTRILITE marketing. The phrase appeared in small print on the side of the bottles and did not always conform exactly to the trademark. The court was not inclined to intervene when Alticor could “not bother to reproduce its mark consistently and prominently.” III.A.11.b. No Similarity of Goods/Services In Veuve Clicquot Ponsardi v. Les Boutiques Cliquot,114 the Federal Court of Appeal affirmed the Trial Division’s dismissal115 of Veuve’s action for trademark infringement, passing off and depreciation of goodwill, primarily on the basis that the parties’ marks were not confusing. 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 did not unduly emphasize (a) the differences between the parties’ goods 114. [2004] F.C.A. 164 (F.C.A.); summarized at 94 TMR 324 (2004). Veuve Cliquot has been granted leave to appeal this decision to the Supreme Court of Canada (File No. 30398). 115. [2003] 28 C.P.R. (4th) 520 (F.C.T.D.), summarized at 94 TMR 324 (2004). 320 Vol. 95 TMR and services, (b) the promotional nature of Veuve’s distribution of clothing or (c) the speculative nature of Veuve’s plans to expand into clothing. In the view of the Federal Court of Appeal, the trial judge correctly understood the rule laid down in United Artists Corp. v. Pink Panther Beauty Corp.,116 namely that there can be no likelihood of confusion absent a link between the parties’ goods and services. The trial judge was justified in rejecting Veuve’s attempts to extend the protection of its mark by relying on its future possible use when its current use was restricted to champagne. The emphasis on Veuve’s intentions and business plans was due to its litigation strategy, and to deficiencies in its evidence. Boutique had not violated Section 22 for at least two reasons: (1) Boutique was using CLIQUOT, as opposed to Veuve’s mark CLICQUOT; and (2) Veuve failed to establish that Boutique’s activities were likely to diminish the value associated with Veuve’s mark. III.A.16. Absence of Willful Intent In Tommy Hilfiger Licensing, Inc. v. International Clothiers Inc.,117 the Federal Court of Appeal considered whether a plaintiff in a trademark infringement action must show the defendant intended to use the objectionable mark as a trademark. Clothiers sold shirts featuring a crest that was “very similar” to Hilfiger’s Crest Design. The trial judge made the following findings of fact: (1) Hilfiger’s mark had acquired distinctiveness by reason of its continuous use in the marketplace for at least ten years; (2) Clothiers’ crest was placed on the breast of its shirts, as with Hilfiger’s shirts; (3) Clothiers had no involvement in the creation of the crest featured on its shirts; (4) there was no evidence that Clothiers had used the mark as a trademark; and (5) Clothiers was aware of the common practice of affixing a logo on the breast of a shirt, independently of a brand name, for the purpose of indicating source. Notwithstanding these findings, the trial judge interpreted Section 2 of the Trade-marks Act as requiring proof that a defendant intended to use its mark for the purpose of distinguishing its wares from those of others.118 According to the Court of Appeal, the trial judge erred. Rather, the crucial question was: Irrespective of its intentions, had Clothiers used the crest to (a) denote the origin of the shirts or (b) serve the purpose of so 116. [1998] 80 C.P.R. (3d) 247 (F.C.A.). 117. [2004] 32 C.P.R. (4th) 289 (F.C.A.), rev’g [2003] 29 C.P.R. (4th) 39 (F.C.T.D.). 118. Section 2 defines “trade-mark” as “a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others. . . .” R.S.C. 1985, ch. T-13, § 2 (emphasis added). Vol. 95 TMR 321 indicating origin? There “could not be much doubt” that Clothiers had so used its crest, considering the trial judge’s finding that Hilfiger’s Crest Design was already distinctive. The finding of distinctiveness constituted a finding that Clothiers’ crest would be recognized by the public as an indication that the garments associated with the design were those of Hilfiger. This was “so obviously the case” that the trial judge easily came to the conclusion that Clothiers had breached Section 7(b) by passing off its goods as those of Hilfiger. Whether Clothiers intended to use its mark for the purpose of indicating origin was irrelevant, as, in fact, the design served that purpose. III.A.22. Trade Dress The Supreme Court of Canada granted leave to appeal in Kirkbi AG v. Ritvik Holdings Inc.119 III.B.1. Passing Off Passing off was the cause of action in Atkinson & Yates Boatbuilders Ltd. v. Hanlon.120 A&Y introduced a boat design that was quite different from most of the then-current competitive designs. The design was marketed quite widely and successfully for ten years. One of A&Y’s distributors advised A&Y that Hanlon was offering to sell a boat with the identical hull design, but under a different name. A&Y called evidence from (1) the employee who created the hull design, describing how the plaintiff’s design differed from others available at the time of introduction of the plaintiff’s boat into the market; (2) a naval architect, who characterized the hull as the distinguishing feature of any boat and testified that while he had never applied for any patent, copyright or trademark for any of his designs, international custom in the trade dictated that no one would use another person’s design without permission; and (3) the distributor, who indicated that the moment he saw Hanlon’s boat he recognized the design as A&Y’s design. There was evidence that Hanlon had copied third party products. Also, evidence at trial showed that Hanlon had misled the court as to the number of boats he produced using the disputed design, in an affidavit filed in related interlocutory proceedings. The court concluded that a boat hull design could be distinctive of its owner, and that in this case the plaintiff’s hull design constituted a distinctive get-up. The finding of a 119. [2003] 26 C.P.R. (4th) 1 (F.C.A.), summarized at 94 TMR 325 (2004); Supreme Court File No. 29956. 120. [2003] 27 C.P.R. (4th) (Nfld. S.C. (T.D.)). 322 Vol. 95 TMR misrepresentation was based primarily on the similarity of the designs; the court also noted that evidence of copying, and of other activities such as Hanlon’s targeting of a customer who had placed a classified advertisement for the purchase of one of A&Y’s boats, supported a conclusion of misrepresentation. A&Y obtained an injunction, an order for destruction of Hanlon’s hull mold and an award of damages and costs. This case affirms that passing off is a viable cause of action against copycat product designs. Defenses will likely include functionality.121 III.F.5. Cancellation The Federal Court of Appeal has upheld122 the Trial Division’s decision123 in Boston Pizza International Inc. v. Boston Market Corp., which involved Boston Pizza’s allegations that Boston Market’s use of BOSTON MARKET for restaurant services infringed Boston Pizza’s registrations for BOSTON PIZZA, also for restaurant services. The trial judge had denied Boston Pizza’s request for summary dismissal of Boston Market’s counterclaim for cancellation of Boston Pizza’s registrations for BOSTON PIZZA owing to loss of distinctiveness caused by common use of “Boston”; the trial judge concluded that there was a genuine issue for trial, considering deficiencies in (1) Boston Market’s evidence of third party use of “Boston” and (2) Boston Pizza’s survey evidence aimed at showing its mark was distinctive. In a brief ruling, the Court of Appeal declined to interfere with the discretion exercised by the trial judge to refer the matter for trial. However, the court noted that the trial judge may have intended to foreclose a determination at trial based on issue estoppel. The Court of Appeal was “not at all satisfied that issue estoppel may not apply.” Accordingly, it was open for (1) the parties to address issue estoppel at trial and (2) the trial judge to consider the question should it be raised. In Cassels Brock & Blackwell LLP v. Montorsi Francesco E Figli-S.p.A.,124 the registrant owned the trademark DANIEL & Design for San Daniele ham. The registrant was assigned the registration in 1994. The registrant had not used the mark since acquisition, and in response to a Section 45 notice issued on January 15, 2001, could not offer evidence of use within three 121. See WCC Containers Sales v. Haul-All Equipment, [2003] 28 C.P.R. (4th) 173 (F.C.T.D.). 122. [2004] 32 C.P.R. (4th) 455 (F.C.A.). 123. [2003] 27 C.P.R. (4th) 455 (F.C.T.D.), summarized at 94 TMR 330 (2004). 124. [2003] 29 C.P.R. (4th) 106 (Trade-marks Hearing Officer). Vol. 95 TMR 323 years of that date, but provided evidence of what were asserted to be special circumstances justifying nonuse. San Daniele was recognized as a denomination of origin in 1996. San Daniele ham could be sold only by members of a recognized consortium (the registrant was a member). Pursuant to a 1998 agreement between the European Community and the government of Canada, each consortium member had to meet certain manufacturing requirements, and the Italian government had to implement a certification process. The registrant had made the necessary changes to its manufacturing facilities, but not all other members had done so; moreover, the Italian government certification process had not been implemented. The hearing officer concluded, based on the evidence, that the registrant had taken what steps it could, and that the registrant’s ability to sell San Daniele ham in Canada (and thereby use the DANIEL & Design mark) was impeded by the need for other consortium members and government entities to take certain actions, all of which were beyond the registrant’s control. The hearing officer concluded that the situation constituted special circumstances justifying nonuse. However, he felt that certain aspects of the registrant’s evidence were unclear, and decided to issue a further Section 45 notice simultaneously with issuance of the decision. In prior decisions, special circumstances generally have been found to exist where legislative or regulatory changes required a manufacturer to take action, such as reformulation of a product. In this case, the actions of private third parties were relevant, but the wider context was nevertheless a need to respond to actions of government (here, including a foreign government). III.M. Licensing Issues A recent decision of the Trade-marks Opposition Board confirms the need for adequate evidence regarding existence of a license. Hallmark Cards sought to register the trademark EXPRESSIONS FROM HALLMARK & Design for greeting cards, gift wrap and related wares. The application was later assigned to William E. Coutts Co., Hallmark Cards’ Canadian subsidiary. Hudson’s Bay Company opposed the application125 on the ground of confusion with its trademark REAL EXPRESSION for similar goods and other EXPRESSION marks for other goods. The application was rejected. The licensing issue arose from the applicant’s evidence of use. Some sample products bore the name Hallmark Cards, but no 125. Governor & Company of Adventurers of England Trading into Hudson’s Bay v. Hallmark Cards, [2003] 30 C.P.R. (4th) 231 (T.M.O.B.). 324 Vol. 95 TMR reference to the applicant William E. Coutts. The applicant explained that it was a wholly owned subsidiary of Hallmark Cards, and that Hallmark Cards exercised control of trademark use through “communications on a regular basis at all levels through the corporate structure and by regular visits to and from the corporate head office. . . .” A copy of a “Corporate Brand Identity Standards Manual” was produced. Not surprisingly, the Opposition Board found that this evidence of corporate control by the parent did not constitute any evidence whatsoever of a license from the subsidiary to the parent. At a minimum, Hallmark Cards emphasizes the need to show that control is exercised by the trademark owner, particularly where the trademark user is the owner’s parent, which would ordinarily not be subject to control by the subsidiary for corporate purposes. CHILE I.B.5. Personal Names Ms. Lorena Leonelli filed a trademark application for EINSTEIN, covering a commercial establishment for the purchase and sale of all types of products in International Classes 16, 20, 25 and 28. In Chile, commercial and industrial establishments are considered as separate national classes. An opposition was filed by the Hebrew University of Jerusalem on the grounds that the mark in question was the name of a historical character who died less than 50 years ago and that Albert Einstein’s heirs had not given the applicant their consent to use the name EINSTEIN. In this respect, it is necessary to point out that the Chilean Trademark Law does not permit the registration of names of historical characters who have been dead less than 50 years without the express consent of the character’s heirs.126 The Head of the Department of Industrial Property ruled in favor of the Hebrew University of Jerusalem, finding that the applied-for trademark could induce consumers to errors or mistakes. The decision stated that the EINSTEIN mark had been filed by a person different from Albert Einstein’s legitimate heirs, and this would therefore undoubtedly induce consumers to error with respect to the business origin of the products covered by the trademark. The decision went on to state that even though the provision of the Chilean Trademark Law cited in these proceedings requires a clear and precise individualization of a person, that is, both the 126. Article 20 Letter c) of Law 19.039. Vol. 95 TMR 325 first name and the last name, the fame and notoriety of the word EINSTEIN with respect to Albert Einstein made inevitable the association of the last name with the complete name of the character. Therefore, the trademark had to be rejected, as 50 years had not yet elapsed since Albert Einstein’s death.127 I.B.8.a. Similarity of Marks Multiopticas Chile S.A. filed a trademark application for VISION CENTER SUDAMERICA, covering a commercial establishment for the purchase and sale of all products in International Class 9. An opposition was lodged by Manuel Valente, who claimed that the application lacked novelty and was generic for the applied-for coverage. A second opposition was filed by Topsa Productos Opticos S.A. on the same grounds as the first opposition. Finally, a third opposition was filed by Rotter & Krauss S.A. Optica on the ground that the application was similar to the trademark VISION, protected by several registrations, covering commercial establishments related to Class 9 products. The Head of the Department of Industrial Property rejected both the first and the second oppositions, as he found that the applied-for trademark neither lacked novelty nor was generic. However, he ruled in favor of the third opposer, finding that the trademarks in question were similar enough to be an obstacle to their peaceful coexistence within the marketplace. The decision stated that the first and most important and relevant element of the application was the word VISION, which was clearly identical, both graphically and phonetically, to the registered trademark VISION. The addition of the words CENTER and SUDAMERICA did not make the applied-for trademark any less identical, and that led the Head of the Department of Industrial Property to suppose that in the event that the marks were to coexist in the market they would induce consumers to all types of errors or confusion, especially with respect to the business origin of the products covered by the application. The application was, therefore, rejected for registration.128 Cohama S.A. filed a trademark application for DRAKKAR NOIR, covering products in Class 25, which includes clothing. An opposition was duly filed by Parfums Guy Laroche, owner of the 127. Lorena Patricia Leonelli v. Hebrew University of Jerusalem, Decision No. 127566, issued by the Head of the Department of Industrial Property, November 14, 2003. 128. Multiópticas Chile S.A. v. Manuel Francisco Valente Docaser, Topsa Productos Opticos S.A. & Rotter & Krauss S.A. Optica, Decision No. 126759, issued by the Head of the Department of Industrial Property, October 3, 2003. 326 Vol. 95 TMR famous and notorious trademark DRAKKAR, covering products in Class 3, which includes cosmetics and cologne. The Head of the Department of Industrial Property ruled in favor of the opposer, noting in his decision that although the scope of coverage of the application was different from that of the registered trademark, the mark DRAKKAR was renowned; as such it had had an important presence in the market for many years now, and consequently was known by the public in general, both in Chile and abroad. He noted, further, that the principal element of the applied-for trademark was identical to the principal element of the mark registered by Parfums Guy Laroche. The fact that the elements POUR HOMME were replaced by the word NOIR in the label in question was not enough to give the applied-for trademark sufficient distinctiveness and individuality by comparison with the prior-registered trademark. The decision went on to add that the design of the letters in the applied-for label was identical to that used in the opposer’s mark and the geometrical figure used as a background for the applied-for label was noticeably similar to the one used in the opposer’s design. These factors led the Head of the Department of Industrial Property to conclude that if the application were granted it would undoubtedly be the cause of all types of errors and confusion among consumers, especially with respect to the business origin of the products covered by the application. In this decision the prestige of the trademark DRAKKAR was recognized as a public and notorious fact, especially with respect to Class 3 products; this had been acknowledged by the Department in a previous decision. The Head of the Department of Industrial Property concluded that, on the basis of the documentation filed in these opposition proceedings, the design of Cohama’s mark was not a mere coincidence but, rather, a clear imitation of a famous and notorious trademark belonging to Parfums Guy Laroche; this was especially evident when one compared the applicant’s mark and the mark already registered by the opposer, as the two were similar not only with respect to their wording but also with respect to their design. That constituted a breach of the laws regarding unfair competition and trade ethics. Therefore, the application was rejected.129 Mr. Rodolfo Garrido filed two trademark applications for SPORTS ILLUSTRATED SWIMSUIT, one covering “communication services, namely, radio phonic, telex, radio broadcasting and television, broadcasting of programs by radio or 129. Cohama S.A. v. Parfums Guy Laroche, Decision No. 129138, issued by the Head of the Department of Industrial Property, April 20, 2004. Vol. 95 TMR 327 television” in Class 38 and the other covering “filming on video, recreation, entertainment and the organization of cultural events and sports competitions; discotheques” in Class 41. Oppositions were duly lodged by Time Inc., based on its trademark registration for SPORTS ILLUSTRATED covering products in Class 9 and on foreign registrations covering products in Classes 9 and 16 and services in Class 41. The opposer also cited the fact that for many years it has produced a special edition of its magazine, called SPORTS ILLUSTRATED SWIMSUIT, that is widely sold around the world, as well as a special video referring specifically to the photographic sessions by means of which the special swimsuit edition is prepared. The Head of the Department of Industrial Property ruled in favor of the opposer with respect to both applications, having concluded that the similarities between the registered trademark SPORTS ILLUSTRATED and the applied-for trademark SPORTS ILLUSTRATED SWIMSUIT would prevent their healthy coexistence in the marketplace. He noted in his decision that when the trademarks were compared one could see that the SPORTS ILLUSTRATED SWIMSUIT mark coincided in its two first elements, in the same order and sequence, with the SPORTS ILLUSTRATED trademark, which was profusely registered around the world, particularly in Chile, in different classes. He found that the inclusion of the word SWIMSUIT was insufficient to create a new trademark with its own identity and that from a phonetic point of view the trademarks were confusingly similar. Secondly, the Head of the Department of Industrial Property found that the opposer had clearly proven with the documentation filed—copies of the SPORTS ILLUSTRATED SWIMSUIT magazine, pages printed from several websites, etc.—that the SPORTS ILLUSTRATED SWIMSUIT magazine actually exists, and that information relating to the videos taken at the photographic sessions of said magazine was sold separately by the opposer. Also, with the auditing reports and additional documentation it provided, Time Inc. had proved that its trademark was famous and notorious. Lastly, the filing in the opposition proceedings of copies of the different registrations of the SPORTS ILLUSTRATED trademark in various countries, covering products and services in all classes, clearly proved that Time Inc. was the owner of said mark not only in Chile but in the United States, Costa Rica, the Dominican Republic, the European Union and numerous other jurisdictions, and that the mark covered both products in Classes 16 and 9 and “online information services regarding sports,” among other services. In view of the above, and taking into consideration the existence of numerous trademark registrations belonging to the opposer in Chile and abroad, in different classes, the Head of the 328 Vol. 95 TMR Department of Industrial Property was led to conclude that if the applied-for mark were granted it would undoubtedly result in all types of errors or confusion, especially with respect to the business origin of the applicant and the coverages of the applications. Therefore, the two applications for registration were rejected.130 I.B.12. Famous Marks Mr. Alfonso Campos filed a trademark application for EL CORRECAMINOS, covering products in International Class 33, among which are alcoholic beverages. An opposition was lodged by Time Warner Entertainment Company, L.P. on the ground that the word CORRECAMINOS is simply the Spanish translation of the famous and notorious trademark ROAD RUNNER, which is associated with the cartoon bearing the same name. Time Warner claimed that ROAD RUNNER was a renowned trademark and therefore that it transcended the international classification system; in addition, the opposer cited numerous trademark registrations in Chile both for CORRECAMINOS and for ROAD RUNNER. (Time Warner Entertainment Company, L.P. does not have any trademark registrations for either CORRECAMINOS or ROAD RUNNER for products in Class 33, however.) In addition, the opposer claimed that the applied-for trademark would induce consumers, especially children, to confusion. The Head of the Department of Industrial Property ruled in favor of the opposer, finding that the trademarks in conflict were extremely similar and that consequently they would be unable to coexist in the market. His decision specifically noted that when the trademarks were compared it was obvious that the principal and most distinguishing element of the applied-for trademark coincided in all of its letters, in the same order and sequence, with the opposer’s registered trademark CORRECAMINOS. The inclusion of the word EL was insufficient to create a novel mark, with a proper identity and physiognomy, and from a phonetic point of view the trademarks could still be easily confused. In addition, the Head of the Department of Industrial Property found that Time Warner’s mark was a famous trademark, in both languages, both in Chile and around the world and in fact had been so since long before the trademark application was filed, as established by previous decisions issued by the Trademark Office. This fact, and the existence of several trademark registrations belonging to Time Warner in Chile, covering products in several classes, led to the conclusion that if 130. Rodolfo Félix Garrido Cisternas v. Time Inc., Decision Nos. 129349 and 129579, issued by the Head of the Department of Industrial Property, May 12, 2004, and June 11, 2004, respectively. Vol. 95 TMR 329 the trademark application were granted the applied-for mark would undoubtedly induce consumers to all sorts of errors or confusion, especially with respect to the business origin of the company and the kinds of products covered by the mark. Therefore, the application was finally rejected.131 Prodesa S.A. filed a trademark application for MUPPET, covering products in Classes 5, 16 and 25. An opposition was filed by the Jim Henson Company (Henson), based on the trademark MUPPET, which had been created, used and registered by the opposer around the world to cover, among other things, products in those three classes. Henson also claimed that, in view of the notoriety of its trademark, the application contravened the principles of unfair competition and trade ethics, in addition to Article 6bis of the Paris Convention. The Head of the Department of Industrial Property ruled in favor of the opposer, taking into account the documentation filed by Henson and not objected to by the applicant, especially the certificates of registration proving the existence of numerous registrations for the MUPPET mark in Australia, Brazil, Canada and Germany, among other countries, for products in Classes 16 and 25. Said documents clearly proved that Henson was the creator of the trademark MUPPET. In addition, the other evidence filed by the opposer, such as videos, books and clothing articles, in which the MUPPET mark is clearly shown, allowed Henson to prove the fame and notoriety of the mark, in accordance with Article 6bis of the Paris Convention. The decision noted that the marks in question were clearly identical, and that the applied-for mark did not include any element or segment that might make it different from Henson’s trademark. In addition, the Head of the Department of Industrial Property concluded that if a famous and notorious trademark were granted to a third party that was not the opposer, it would result in all types of errors and confusion among consumers with respect to the real origin of the manufacturer and of the products protected by the trademark. The application was, therefore, rejected.132 Mr. Sergio Dughman filed a trademark application for THE RITZ-CARLTON, covering products in International Class 25. An opposition was duly lodged by Ritz-Carlton Hotel Co., LLC, based on its trademark registration for THE RITZ-CARLTON covering Class 43 services in Chile, in addition to foreign registrations for 131. Alfonso Alfredo Campos Morales v. Time Warner Entertainment Co., L.P., Decision No. 126022, issued by the Head of the Department of Industrial Property, August 29, 2003. 132. Prodesa S.A. v. Jim Henson Co., Decision No. 126718, issued by the Head of the Department of Industrial Property, October 3, 2003. 330 Vol. 95 TMR the trademark THE RITZ-CARLTON covering products in Class 25. The Head of the Department of Industrial Property ruled in favor of the opposer. He indicated that in light of the abundant evidence filed in these opposition proceedings proving that the trademark THE RITZ-CARLTON was already registered for Class 25 products, the fame and notoriety of said mark and the fact that the marks in conflict were identical, the opposition was sustained, as it would not be possible for the two trademarks to coexist adequately in the market because consumers would be induced to error or mistake with respect to both the business origin of the products and the quality and type of products being covered by the trademark. Consequently, the applied-for trademark was rejected for registration.133 II.E. Forum Conflicts Laboratorio City S.A. filed a trademark application for the mark PAMELA GRANT VOLUMATIC, covering products in International Class 3. An opposition was filed by Helena Rubinstein S.A. based on its Chilean trademark registration for VOLUMATIC, also covering Class 3 products. The Head of the Department of Industrial Property ruled in favor of the opposer. His decision noted that the third element of the applied-for trademark plainly coincided with, and could easily be confused with, Helena Rubinstein’s registered trademark, and that one could therefore suppose that if the trademarks were to coexist in the market it would lead to errors and confusion among consumers, particularly with respect to the business origin of the products protected by the mark.134 Subsequently, the applicant filed an appeal before the Second Instance Industrial Property Court, which revoked the first instance decision by a vote of two to one. Helena Rubinstein proceeded to file a complaint at the Chilean Supreme Court against the two judges who had rejected the opposition. The Supreme Court ruled in favor of the opposer. It held that in this case the two judges committed fault or grave abuse in issuing their decision in view of the seniority of the VOLUMATIC mark and the fame and notoriety of the trademark HELENA RUBINSTEIN, bases cited by the dissenting judge 133. Sergio Dughman Abud v. Ritz-Carlton Hotel Co., LLC, Decision No. 130494, issued by the Head of the Department of Industrial Property, September 3, 2004. 134. Laboratorio City S.A. v. Helena Rubinstein S.A., Decision No. 109536, issued by the Head of the Department of Industrial Property, May 15, 2001. Vol. 95 TMR 331 below.135 In addition, the Supreme Court took into account the fact that the opposer had invented the word VOLUMATIC and that said expression had no meaning in any language. Consequently, it found that the applicant was clearly and unlawfully trying to use an intellectual creation belonging to a competitor. The Supreme Court’s decision went on to state that it was extremely easy to confuse the two marks in question, both from a visual and from a phonetic point of view. Consequently, if the marks were to coexist in the marketplace, they would inevitably produce confusion and would induce the consumer public to error. In view of the aforementioned arguments, the Supreme Court concluded that it was substantial error for the second instance decision to allow the registration of PAMELA GRANT VOLUMATIC. The case before the Supreme Court was decided by a vote of three to two, the minority opinion stating that the case history did not lead to the conclusion that in their ruling the judges against whom the complaint was filed had engaged in conduct of which the law disapproved and that would need to be curbed or corrected by means of the Supreme Court’s disciplinary powers.136 It must be pointed out that in the last eight years the Chilean Supreme Court has very exceptionally heard any complaints filed with respect to trademark matters, on the same ground as that set forth in the Supreme Court’s minority opinion referred to above. CHINA I.A.3. Licenses The French fashion house Pierre Cardin has sued its exlicensee and its manufacturer in Nanjing for unpaid royalties and damages resulting from trademark infringement.137 Defendant Nanjing Zhengfang Group was at one time the plaintiff’s licensee. In July 1998 the two parties signed an agreement allowing Zhengfang to use the mark PIERRE CARDIN on Chinese-made children’s shoes and socks until the end of 2001. A further license agreement, signed in 1999, allowed the defendant’s use of the mark on children’s clothing until the end of 2002. The total royalties for the two agreements were US $940,000; of that amount, the plaintiff asserts that the defendant still owes US $869,500 (equivalent to 7,210,000 yuan). What is 135. Case No. 962-2001, decision issued by the Industrial Property Appeals Court, April 22, 2004. 136. Case No. 1556-04, decision issued by the Chilean Supreme Court, June 23, 2004. 137. Yi Shui, “Pierre Cardin Seeks 9,530,000 Yuan Damages in Nanjing,” China Intellectual Property News, July 17, 2004, at 2. 332 Vol. 95 TMR worse, Zhengfang, without Cardin’s authorization, sublicensed codefendant Qiuzhiniao Industrial Company to manufacture children’s shoes and clothes bearing the mark. The plaintiff states that the defendant has caused it loss in the amount of US $280,000 and that it has filed the lawsuit for recovery of 9,530,000 yuan in total for past royalties and damages. The Nanjing Intermediate People’s Court has accepted the case, which is expected to be tried with much publicity. I.B.1. Generic Names In 2004, after the Chinese Trademark Office approved and published a trademark application for CHIONG YAO JIANG (meaning “fairy drinks”) for wine, brandy and fruit wine in International Class 33 by Yantai Zhangyu Group, Inc. in Yantai City, Shandong Province, Weilong Wine Co. Ltd., also in Yantai, filed an opposition against the registration of the mark. The opponent viewed the term CHIONG YAO JIANG as a generic name for one of the major raw materials for white wine. Weilong argued that using the name as a trademark on wine made of the same raw material violated the Chinese Trademark Law. It argued, moreover, that the term would be misrepresentative, and therefore mislead consumers, if it were used on wine in whose manufacture the raw material was not a major component.138 Weilong submitted some authoritative publications and books in the wine industry to prove that CHIONG YAO JIANG is the name of a variety of grape from which white wine is made. It is up to the Trademark Office to decide whether the term can be registered as a trademark for wine products. The Beijing No. 1 Intermediate People’s Court recently dismissed an appeal by the applicant of BLUETOOTH to register the term as a trademark.139 The Trademark Review and Adjudication Board ruled that the mark, as a generic term for a standard for telecommunication technology to support real-time phone communication and data communication between bluetooth equipment, was not registrable. The applicant appealed to the court but failed to submit evidence to prove that the term has been used in China as a trademark. It is not clear whether the applicant, a U.S. company, has decided on a further appeal. 138. Zhen Dean, “Registration of CHIONG YAO JIANG Questioned and Opposed,” China Intellectual Property News, Apr. 20, 2004, at S9. 139. Xue Hongsheng, “‘Bluetooth’ Technology Cannot Be Exclusive,” China Industry & Commerce News, June 24, 2004, at 1. Vol. 95 TMR 333 Publication of another mark, DI KA in Chinese (meaning “low calorie”), has caused concern among people in the food industry. On May 26, 2004, Sichuan Blue Sword Group (Blue Sword), an established beverage company, opposed the mark after it was published, on the ground that the term is generic for low-calorie food.140 The applicant for registration of the mark is Anhui Sincere Food Co., Ltd. (Sincere). Sincere’s application passed examination and was published on March 21, 2004. If no oppositions were filed within three months, the mark would be registered. Blue Sword argued that once the term was registered as a trademark, other food companies could not use it in advertising their low-calorie products, such as low-calorie strawberries, low-calorie chocolate, low-calorie beverages, etc. Monopoly of such a popular term by one company, Blue Sword argued, is detrimental to fair competition. The opponent also pointed out that food products bearing the DI KA mark do not necessarily have low calories, and therefore registration of the term as a trademark was likely to permit the registrant to mislead the public. The opposition is pending and will probably be decided in favor of the opponent. I.B.8.a. Similarity of Marks On June 16, 2004, the Beijing No. 1 Intermediate People’s Court rendered a decision on Apple Computer’s appeal regarding registrability of its APPLE design mark for clothing products in International Class 25.141 The company’s application to register the mark in China in Class 25 was rejected by the Chinese Trademark Office on the basis of an existing registration of an APPLE design mark for leather accessories by a local company in Guangdong. Although Apple Computer’s design mark shows an apple with a bite in it and the cited design shows a complete apple, the court agreed with the Chinese Trademark Office that the two marks were confusingly similar conceptually and phonetically and the goods designated were related. To prevent possible customer confusion, registration of the APPLE design mark in Class 25 by Apple Computer was denied. 140. “Dispute over Application of Trademark ‘DI KA,’” China Intellectual Property News, June 3, 2004, at 3. 141. Fan Hongping, “‘Dented Apple’ Could Not Be Registered for Clothing,” China Industry & Commerce News, June 24, 2004, at 1. 334 Vol. 95 TMR I.B.11.a. Copyright Protection In 2003, Warner Bros. failed in its attempt to cancel two registrations for TU BA GE in Chinese characters (translation and transliteration of BUGS BUNNY) for cookies and instant noodles in International Class 30 and for nonalcoholic beverages in Class 32.142 The owner of the two registrations is a businessman in Shandong who owns a small food and beverage company. His birth year animal symbol is the rabbit, and he was aware of TU BA GE in Chinese characters, the nonofficial translation of BUGS BUNNY when the cartoon was first shown in China. He registered the mark on January 14, 1998. The next year, Warner Bros. filed cancellation actions against the two registrations, claiming that BUGS BUNNY, as the main character in its BUGS BUNNY cartoon since the 1940s, should enjoy copyright protection and not be registered as a trademark by others. Mr. Wang, the registrant, rebutted, stating that the 50-year copyright protection term for BUGS BUNNY under the Berne Convention had expired and that therefore he was free to register the mark. Moreover, he argued, the mark consists only of three Chinese characters, which cannot be considered copyrightable works by Warner Bros. The Trademark Review and Adjudication Board agreed that Warner Bros. owns copyright over the image of BUGS BUNNY and the cartoon works but does not enjoy copyright over the Chinese characters of TU BA GE. Therefore, the two registrations were maintained. People have had different reactions to the decision. Some view it as a success for small companies in China and have hailed their increasing awareness of trademark rights and value. Others think Mr. Wang’s acts are dangerous and are suspicious of his intention to ride on the goodwill of well-known IP rights. New legislation may be necessary to prevent similar cases in the future. I.B.11.b. Official Names With the successful launch of Shenzhou (meaning “magic land,” a nickname for China) No. 5 spaceship, use of the term SHENZHOU has spread quickly in China. Many people, especially quick-minded merchants, wish to take advantage of the brand recognition effect of the term. Several new 142. “Domestic Rabbit Prevails over Foreign Rabbit, Suspicious of Riding on Other’s Good Will,” Trademark World, Jan. 9, 2003, at 1. Vol. 95 TMR 335 applications to register the term as a trademark in various classes have been filed with the Chinese Trademark Office.143 Whether the term is registrable is now a heatedly discussed topic among legal scholars and practitioners. Some view the Shenzhou No. 5 spaceship as an important national project, with anything related thereto belonging to the state, or to the Shenzhou or Shen Wu (transliteration and abbreviation of Shenzhou No. 5) project team. They argue that the term is similar to the Olympic symbol, which can be registered only by specific parties and not by individuals or private companies for their personal and commercial use. Others find the term a concocted one that is registrable. It will be interesting to see how the Chinese Trademark Office decides the issue. I.B.13. First to Apply Versus First to Use On May 24, 2004, Hongyou Science and Technology Co. Ltd. sued the Trademark Review and Adjudication Board (TRAB) in Beijing No. 1 Intermediate People’s Court regarding approval of registration of the trademark MUSTEK for computer and peripheral devices in Class 9. Hongyou claimed that the applicant had violated Article 31 of the Chinese Trademark Law and tried to register another person’s known mark through unfair means. Hongyou asserted that it had prior rights based on its use of the mark on scanners.144 The TRAB stated that to satisfy Article 31 one has to prove that (1) the mark is already known in the territory covered by the Chinese Trademark Law and (2) the applicant has acquired the registration through illicit acts. Hongyou failed to prove either of these elements with sufficient evidence. Almost all of the evidence Hongyou submitted covered only territories outside of mainland China or was dated after the applicant’s application was filed. Only an advertisement in Computer World, dated July 7, 1993, complied with the formality requirement, and this was not sufficient to prove that Hongyou’s mark had acquired recognition in mainland China. On the other hand, the applicant submitted evidence, which Hongyou failed to rebut, to prove its first use of the mark in Taiwan. Based on the evidence and arguments submitted, the TRAB viewed it as proper for the applicant to apply for registration of a mark it first created and used in China. Both parties, as well as people interested in the case, are waiting for the court’s ruling. 143. “Successful Launch of Shenzhou No. 5 Space Ship Prompts Competition to Register the Term as a Mark,” China Intellectual Property News, Apr. 20, 2004, at 1. 144. Liu Guodong, “How to Determine Prior Use, ‘MUSTEK’ Case Was Tried in Beijing,” Trademark World, June 3, 2004. 336 Vol. 95 TMR I.B.18. Joint Ownership Recently, the French company Lacoste settled a 14-year trademark dispute with Hong Kong Crocodile Ltd., and both parties signed an agreement regarding the coexistence of the crocodile design marks in mainland China.145 This result is the best expected by many and is a win-win solution for both parties. Each of the two companies separately created and used a crocodile design mark for goods in International Class 25. Lacoste, of course, was the first one in the world to make the crocodile design mark famous for its clothing products and accessories, and the company had registered it in China. However, it was the Hong Kong company that first used and registered a similar crocodile design mark for goods in the same class in other countries in Asia. The two designs differ only in the direction of the head of the crocodile. For years, a bitter legal battle was carried on between the two companies. It was widely reported and watched by people in the field. Aside from the dispute as to who has the right to use and register the crocodile design mark in China, both faced increasing infringement of their crocodile design mark by third parties. Now that they have settled the dispute, the two companies will join efforts to fight infringement of their design marks and prevent unauthorized use of the marks by others. This resolution of this matter has opened up a new alternative strategy for protection of famous marks. I.B.21. Trade Names Guangzhou Estee Lauder Cosmetics, Inc. is a company registered in Guangzhou in August 2000. Its main products are cosmetics and hair care products.146 The Guangzhou company, without authorization or knowledge of the owner of the trademark ESTEE LAUDER, used the mark in its trade name. Moreover, it produced and sold products that are confusingly similar to or the same as those manufactured by the famous cosmetics company. In its advertisements and product brochures the Guangzhou company claimed that it had relied on a famous international brand and expanded it in China. The State Administration of Industry and Commerce sent an investigation team to Guangzhou to investigate the matter. It found that the Guangzhou company’s unauthorized use of the 145. Ma Hailin, “What Dispute over Crocodile Mark Reminds Us,” China Intellectual Property News, Apr. 20, 2004, at 10. 146. “Guangzhou Estee Lauder Co. Severely Penalized for False Advertising and Unauthorized Use of World Famous Mark as Trade Name,” China Intellectual Property News, Apr. 17, 2004, at 1. Vol. 95 TMR 337 mark, which had been registered in China by its U.S. owner, constituted trademark infringement. The enforcement agents seized 12,170 copies of advertisements and brochures bearing the mark. The investigation team found that this was a typical infringement case where the infringer had blatantly copied the trademark owner’s mark. Accordingly, the Administration of Industry and Commerce of Guangzhou immediately ordered the local company to change its trade name and delete ESTEE LAUDER in Chinese and not to use any similar words in its trade name. In addition, it imposed a fine of up to 200,000 yuan. III.A.1. Famous Marks A flower design with a red flower and green stem is a design mark for the famous clothing brand MONTAGUT and its Chinese equivalent MENG TE JIAO. In recent years, the owner of the mark has found that there are several infringing designs in the market in China that either have an extra petal added or have several leaves deleted.147 To ordinary customers, these designs are confusingly similar with the authentic MONTAGUT design mark. After a market investigation, the owner of the real MONTAGUT design, a French company, sued two local clothing companies in Guangdong Province, Guangzhou Mr. Meng Jiao Trading Co. Ltd. and Guangzhou Mr. Meng Jiao Clothing Co. Ltd., in Beijing Second People’s Court. The court heard the case on May 18, 2004.148 The plaintiff claimed that it registered MONTAGUT, MENG TE JIAO and the design mark with the Chinese Trademark Office for clothing, footwear and headgear in International Class 25, and that these registrations were valid. It asserted that its clothing products bearing the above marks have been on sale in China and enjoy a good reputation. The defendants, as the general agents for Meng Te Jiao (HK) Development Co. Ltd., have offered for sale MENG TE JIAO clothing products, using the MENG TE JIAO mark and a flower design mark similar to the plaintiff’s flower design mark. The plaintiff claimed that the defendants’ action constituted unfair competition and infringement of its trademark rights. In reply, the defendants denied that the sample infringing clothing products were theirs and claimed that the plaintiff’s marks were not distinctive and thus should not enjoy exclusive protection. 147. “‘MENG TE JIAO’ and ‘MR. MENG TE JIAO’ in Court,” China Intellectual Property News, May 29, 2004, at 2. 148. Id. 338 Vol. 95 TMR The court, after conducting a close to three hours’ hearing of the matter, is expected to make a decision soon. III.A.2.b. Similarity of Marks Hainan Asia Pharmaceutical Group owns the trademark KUAI KE for its flu medicine. With increasing recognition of the KUAI KE mark by Chinese customers, products bearing marks similar to KUAI KE have started to appear on the market in China.149 To stop the infringement, Hainan Asia Pharmaceutical Group retained counsel to take legal action against the medicine NEW KUAI KE, manufactured by Jilin Pharmaceutical Co. Ltd. At first glance, the medicine products bearing these two marks appear similar. However, Jilin Pharmaceutical actually has no relationship with Hainan Asia Pharmaceutical. Therefore, the quality of its products is not monitored or guaranteed by the owner of the KUAI KE mark. According to Article 52 of the Chinese Trademark Law, use of a mark identical or similar to another person’s registered mark without authorization is an infringement of the other party’s trademark right and should be stopped. In this case, local agents from the Administration of Industry and Commerce seized more than 166 cases of the infringing products, worth more than 130,000 yuan. On September 22, 2003, the Jiangsu Qingman Group filed a complaint with the Administration of Industry and Commerce in Shuyang County, Jiangsu Province, for trademark infringement. The company found that shirts offered for sale on the local market bore the company’s trademark QINGMAN.150 It turned out that the QINGMAN shirts offered for sale in Shuyang were put on sale by Shanghai Qingman Clothing and Accessory Co. Ltd. At the time of the complaint, a total of 114 shirts were on sale, of which nine had been sold, for 582 yuan. Shanghai Qingman had registered its own mark RAN TIAN for shirts and did use it on the shirts sold. However, it used words, letters and designs similar to those of the registered mark QINGMAN and repeatedly used the word QINGMAN on the packaging of the shirts. Jiangsu Qingman claimed that the repeated use of QINGMAN constituted infringement of its registered trademark and requested that the enforcement agency seize the infringing shirts. 149. Wen Bing et al., “‘KUAI KE’ Fights ‘NEW KUAI KE’,” China Intellectual Property News, July 17, 2004, at 3. 150. Chi Muo, “Dispute Between Real QINGMAN and Fake QINGMAN,” Trademark World, May 27, 2004. Vol. 95 TMR 339 The Shuyang Administration of Industry and Commerce found that Shanghai Qingman’s use of the term, which is also part of its trade name, infringed upon Jiangsu Qingman’s trademark rights in the word and should be stopped. Although the Shanghai company used its own registered mark RAN TIAN on the shirts in dispute, the form of the mark used differed significantly from the mark as registered, and the word QINGMAN shown on the package of those shirts was confusingly similar to the registered trademark QINGMAN owned by the Jiangsu company. The Administration of Industry and Commerce ruled that the Shanghai company was guilty of trademark infringement and fined the company 8,000 yuan, in addition to confiscating the 105 infringing shirts. In November 2003, Paradise on Earth Night Club in Shanghai changed its trade name to Shanghai Paradise on Earth Entertainment Co. Ltd., as per a preliminary injunction order issued by the No. 2 Intermediate People’s Court in Shanghai.151 The plaintiff, Beijing Chang Qing Tai Restaurant and Entertainment Co. Ltd. (Chang Qing Tai), sued the Shanghai company for service mark infringement and requested a preliminary injunction against use of the mark by the defendant in its business. Chang Qing Tai acquired registration of PASSION PARADISE ON EARTH for services for nightclubs, entertainment, etc., in 1999 and since then has used the mark in running the PARADISE ON EARTH nightclub in the Great Wall Hotel in Beijing. The plaintiff claimed that since July 2003 the Shanghai company had used PARADISE ON EARTH neon postings in its nightclubs and had printed that mark on business cards for its staff members. Chang Qing Tai alleged service mark infringement and applied for a preliminary injunction against use of the mark by the Shanghai company. It also sued the defendant for service mark infringement in Shanghai. The court found the Shanghai company’s trade name confusingly similar to Chang Qing Tai’s registered service mark. The defendant’s conspicuous use of the plaintiff’s mark in services similar to the plaintiff’s, the court found, was likely to cause customer confusion and constituted service mark infringement. As the plaintiff’s request was reasonable and complied with the law, the court granted a preliminary injunction order, with which the defendant complied by changing its trade name. 151. “Court Issued Preliminary Injunction, ‘Paradise on Earth’ Changed Name in Shanghai,” China Intellectual Property News, Nov. 25, 2003, at 6. 340 Vol. 95 TMR This case is one of those where both parties are Chinese companies. It shows that now not only foreign companies but also Chinese domestic firms have started to appreciate the power of trademarks and are willing to seek effective legal remedies to protect their legal rights over these valuable symbols. The defendant claimed that it did not intentionally infringe upon the plaintiff’s trademark. Since Shanghai Paradise on Earth Entertainment Co. Ltd. had registered PARADISE ON EARTH with the government in Shanghai, it will continue to use that as its trade name. Meanwhile, it has removed the neon lights in dispute. III.A.17. Descriptive Use Xiahua Electronics is a Chinese company that owns a registration for the trademark CHDTV for high-definition television. In August 2003, Xiahua sued Changhong, another major television manufacturer in China, claiming unauthorized use and infringement of its mark by the latter. Changhong responded immediately, stating that its use of the mark was not trademark use and that the lawsuit by Xiahua was brought only for the purpose of promoting Xiahua’s products.152 Within a month, the State Administration of Industry and Commerce issued a decision, finding that Changhong’s use of HDTV on its product label was a proper, non-trademark use and thus did not infringe upon Xiahua’s trademark rights. Although Xiahua had registered CHDTV as its trademark, the mark is a weak one that enjoys only limited protection, as the acronym HDTV must be available for use by companies in the industry in advertising their products in fair competition. III.F.5. Cancellation The Trademark Review and Adjudication Board (TRAB) recently dismissed a nonuse cancellation action filed by Wal-Mart against the Chinese trademark registration for GEORGE, ZHUANG JI in Chinese characters & Design in International Class 25. This was the first cancellation action filed by a foreign company against a trademark registration owned by a local company in the Wenzhou area for clothing products since China joined the World Trade Organization.153 Wal-Mart claimed that the owner of the registration, Zhuang Ji Group, did not use the mark during the period 2001 to 2003. 152. “Regulate Trademark Protection to Improve Market Quality,” China Intellectual Property News, Apr. 20, 2004, at 6. 153. “Result of Trademark Dispute Between Wal-Mart and Wenzhou Company, Zhuang Ji Mark Still Valid,” China Intellectual Property News, June 3, 2004, at 2. Vol. 95 TMR 341 According to the Chinese Trademark Law, any registration that has not been used for three consecutive years should be cancelled. Zhuang Ji Group submitted use evidence as well as other documents to prove its ownership of the mark. It also retained legal counsel to respond to the cancellation action. The TRAB decided that the registrant’s reply and supporting documents were sufficient to maintain the registration, and Wal-Mart’s request was dismissed. Sources said Wal-Mart had earlier filed an application to register the mark GEORGE for clothing products in Class 25 in China. Now Zhuang Ji Group has filed an opposition against WalMart’s application, claiming that the applied-for mark is confusingly similar to its trademark GEORGE, ZHUANG JI & Design. The two parties have switched their positions. Nobody can predict who the final winner will be. COLOMBIA I.B.5. Personal Names In August 2004, a final decision was issued refusing the registration of the name mark SIR WILLIAM WALLACE, covering alcoholic beverages (except beer) in International Class 33, on the ground that it was misleading. In the first stage, the Trademark Office had refused the registration, indicating that as the applied-for mark referred to a Scottish character, it would suggest to consumers that the products come from Scotland, a country that is famous for the production and quality of its whiskies, and thus could mislead consumers.154 The applicant appealed. The Superintendent of Industry and Commerce, in confirming the misleading nature of the mark, cited the following grounds: The mark designates a historical character deemed a hero in Scotland, and for this reason the consumers will associate the character [with] the geographical location. Scotland, the country indirectly designated by the mark, is known worldwide for the production and commercialization of topquality whisky, but the products to be covered by the mark did not come from a Scottish producer. The Superintendent concluded that, when they viewed the mark, consumers would associate the mark, the products and a place of production, so they would reasonably be induced into assuming a geographical origin different from the actual origin of 154. Resolution No. 4601, February 27, 2004. 342 Vol. 95 TMR the product, which would be a distortion of reality. That, in turn, would affect consumers’ right of free choice, as well as the conditions of competition in the market. Therefore, the Superintendent affirmed the Trademark Office’s refusal of registration for SIR WILLIAM WALLACE.155 I.B.7.b. Three-Dimensional Marks A three-dimensional trademark is a mark occupying three dimensions in a space (height, width and depth). If the mark in question does not occupy a space but is contained in a physical volume element, it is not deemed three-dimensional. The definition of this term was so explained by the Andean Court of Justice in a pre-judicial interpretation requested by the Council of State of Colombia in the context of a nullity action filed by Nintendo of America Inc. against the decision of the Superintendency of Industry and Commerce156 to refuse the registration of the shape of its device, commonly known as Nintendo, in International Class 9 as a three-dimensional trademark.157 The Nintendo device is a rectangle placed on a rounded vertex in whose interior several geometrical figures appear (two rectangles at the top side, one inside the other; one cross to the left; two adjacent circles to the right; and two small ovals centered at the bottom) and a series of parallel lines close to the rounded vertex. The Court explained that the shape of products usually corresponds to their wrapping or container—that is, all that covers, wraps or contains a product, and its container. A container is understood to be any receptacle intended to hold liquid or gaseous products or products that, lacking a shape when in their natural state, take the shape of the thing that contains them. Containers comprise bottles, boxes, cases, cans, packaging—in sum, anything with a volume or showing a form other than the simple form of two-dimensional marks. The purpose of the prohibition, found in most legislative codes, against registration of a commonly used product shape as a trademark is to prevent the creation of a monopoly of shapes that 155. Resolution No. 21105, August 30, 2004. 156. Resolution No. 13486, August 18, 1994. 157. Class 9—Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus. Vol. 95 TMR 343 other traders would need.158 If a shape imposed by the nature or industrial function of a product could be monopolized in perpetuity through trademark registration, free access of competitors to the market would be blocked, as they would not be able to manufacture or distribute their products. Applying the Court’s pronouncement, the Council of State ruled that the shape of the game device known as Nintendo could not be registered as a three-dimensional trademark because it did not have a sufficiently distinctive fanciful, suggestive or arbitrary shape that would make it different from the usual form of video games.159 I.B.8.a. Similarity of Marks The corporation Tecnoquímicas S.A. applied for the registration of the trademark LOXAN for pharmaceutical, veterinary and hygiene products; diet substances for medical use; products for destroying vermin; fungicides; and herbicides, all in International Class 5. In the first stage, the Colombian Trademark Office allowed this registration and declared ungrounded an opposition filed by the corporation Asta Medica Aktiengesellschaft (Asta) based on its trademark HOLOXAN.160 Asta filed for legal remedies and obtained revocation of the decision issued in the first stage, thus preventing the registration of the trademark LOXAN.161 Tecnoquímicas filed a nullity action against this new decision before the Council of State, arguing that there were more differences than similarities between the trademarks. The Council of State requested a pre-judicial interpretation from the Andean Court of Justice. The Court ruled that for a word to be registered as a trademark it must comply with the requirements of distinctiveness and perceptibility and be able to be represented graphically. It also indicated that the marks must be compared based on their phonetic, graphical and conceptual elements, keeping in mind that consumers do not separate these elements, but perceive the trademark as a whole. Finally, the Court affirmed that when it comes to pharmaceutical trademarks, the risks to human health 158. Andean Court of Justice, Proceeding No. 31-IP-2003 (June 18, 2003), [2003] ACCJ 65. 159. Nintendo of America Inc. v. Superintendency of Industry & Commerce, Council of State, File 6790, August 6, 2004 (not yet published). 160. Resolution No. 11394, June 23, 1999. 161. Resolution No. 17250, August 30, 1999. 344 Vol. 95 TMR posed by the sale of a product that is similar to another product already registered must be taken into account.162 Applying this interpretation to the matter at hand, the Council of State determined that, as HOLOXAN covers a product for cancer and LOXAN covers a product for urinary infections, a mistake could certainly pose a risk for the consumer. Indeed, consumers could confuse the marks given their undeniable graphical and phonetic similarity and because, in Colombia, medicines are easily sold without a medical prescription. The Council of State supported the position of the Andean Court, holding that when the products involved are pharmaceuticals the comparison of the trademarks must be more stringent, given that human health is also involved. As a result, the Council of State’s ruling was that the decision to refuse the registration of LOXAN, as made by the Trademark Office, was valid.163 Mr. Libardo Rivera applied for the registration of the trademark BAZZER & Design, covering dresses, footwear and headwear in International Class 25. The design is similar to an oval figure with blue, yellow and orange background, and the word BAZZER is written in the middle. The corporation Stanton & Cia S.A. opposed this registration based on its trademark BAXTER, previously registered and covering products in Class 25. The Trademark Office refused Mr. Rivera’s application on the ground of similarity of marks.164 Mr. Rivera filed a nullity action against this decision before the Council of State, which requested a pre-judicial interpretation of the relevant Andean Community provision from the Andean Court of Justice. The Court ruled that only those marks that are perceivable, are sufficiently distinctive and can be graphically represented are eligible for registration. Also, it ruled that those marks that are identical, or so similar to marks previously registered by third parties that they could induce consumers into error, are not eligible for registration.165 The Council of State applied this ruling to the case at hand and determined that there were graphical, orthographical and phonetic similarities, as the intermediate consonants in each mark 162. Andean Court of Justice, Proceeding No. 91-IP-2003 (October 8, 2003), [2003] ACCJ 112. 163. Tecnoquímicas S.A. v. Asta Medica Aktiengesellschaft, Council of State, File 6159, February 26, 2004 (not yet published). 164. Resolution No. 16173, August 18, 1999. 165. Andean Court of Justice, Proceeding No. 5-IP-2002 (February 20, 2002), [2002] ACCJ 7. Vol. 95 TMR 345 (XT and ZZ) were not sufficient to differentiate the marks from each other. Likewise, it determined that the nominative element prevailed in both trademarks, and that the similar impression they made when considered by consumers was likely to cause confusion. Therefore, having concluded that the marks showed sufficient visual, conceptual and orthographical similarities to cause likely consumer confusion, the Council of State ruled that the Trademark Office’s decision to refuse the registration of the trademark BAZZER was valid.166 Starbucks Corporation applied for the registration of the mark STARBUCKS COFFEE & Design, which consists of a circle within which there is the shape of a woman wearing a crown, and the expression STARBUCKS COFFEE written around the circle. This mark was applied for to cover products in International Class 30. The Trademark Office refused the registration, deeming that its word part was orthographically and phonetically similar to STARBURST, a mark registered in Class 30 by Mars Incorporated, for which reason it could induce the public into error.167 Given the refusal of the registration, Starbucks filed a nullity action against this decision before the Council of State. In the complaint, the corporation asked this body to take into account the worldwide trademark coexistence agreement entered into by the parties, which agreement had allowed these trademarks to coexist peacefully in the market for several years. The Council of State requested a pre-judicial interpretation of the Andean Community provision from the Andean Court of Justice. The Court ruled that only those marks that are perceivable, are sufficiently distinctive and can be graphically represented are eligible for registration. It ruled, further, that those marks that are identical, or so similar to marks previously registered by third parties that they could induce consumers into error, are not eligible for registration. It concluded by stating that, in fact, coexistence agreements do not generate rights, do not have any legal relevance in terms of exempting a mark from the registrability study and do not render inapplicable the analysis of confusability made by the examiner.168 The Council of State applied this interpretation to the case at hand, and established that there certainly were phonetic and visual similarities between the marks STARBUCKS COFFEE and STARBURST that could confuse consumers, even more so because 166. Stanton & Cia. S.A. v. Libardo Rivera, Council of State, File 6653-01, January 22, 2004 (not yet published). 167. Resolution No. 16520, August 31, 1995. 168. Andean Court of Justice, Proceeding No. 79-IP-2003 (September 16, 2003), [2003] ACCJ 100. 346 Vol. 95 TMR they cover products belonging to the same class. It clarified that, although STARBUCKS COFFEE was a combined mark, that is, formed by both a graphic element and a nominative element, the prevailing element was the word. Regarding the coexistence of the trademarks, the Council of State deemed that the similarity existing between the marks and the consequent risk for consumers were so evident that the companies owning the marks had to enter into an agreement that would allow their coexistence in the market. Given the above, the Council of State ruled that the decision to refuse the registration of the mark STARBUCKS COFFEE, as made by the Trademark Office, was valid.169 In Colombia, trademark coexistence agreements—instruments that traders execute to commercialize products or merchandise covered by similar or identical trademarks—must meet the following requirements: 1. Existence of registrations for identical trademarks in the Subregion; 2. Existence of an agreement between the parties; 3. Adoption by the parties of measures intended to prevent confusion among consumers, and clear information about the origin of the products or services; 4. Recordal of the agreement before the national competent office; and 5. Observance of provisions concerning commercial practices and promotion of competition. Failure to meet any one of these requirements implies inapplicability of the agreement. This principle was enunciated by the Council of State in its decision resolving a nullity action brought by Sony Kabushiki Kaisha (Sony Corporation) against the refusal of the Trademark Office to register the trademark WEGA & Design.170 The trademark had been applied for to cover television sets, projectors and products comprised in International Class 9. The Council of State upheld the decision of the Trademark Office for two reasons. First, it deemed that WEGA was confusingly similar to VEGA, a trademark previously registered in Class 9 in the name of Vega Grieshaber KG. Second, it deemed that the coexistence agreement executed by these two companies did not contemplate the measures required to prevent confusion. 169. Starbucks Corp. v. Mars Inc., Council of State, File 7062, February 19, 2004 (not yet published). 170. Resolution No. 08409, April 27, 2000. Vol. 95 TMR 347 Specifically, the Council of State indicated that, in order to prevent confusion, Vega Grieshaber KG should have undertaken under the agreement to limit the Class 9 products, both those it currently produced and those it would produce in the future, for which it would use its registered trademark VEGA.171 The Council of State, in resolving this action, applied the pre-judicial interpretation that the Andean Court of Justice had been asked to hand down for this particular case.172 It determined that the execution of the coexistence agreement did not make automatic the registration of the trademark applied for—that the purpose of trademark legislation, which is to guarantee protection to the consumer public, may not be forgotten. Coexistence agreements have two limitations: 1. The parties must adopt measures under the agreement for preventing confusion among consumers as to the origin of the products. 2. The agreement is subordinated to the power the trademark office in each country has to refuse the registration of one of the trademarks if it deems that consumers could be confused. Such was the explanation of the Council of State when it decided to refuse the registration of the trademark STARBUCKS and the application of a coexistence agreement signed by its owner, Starbucks Corporation, with Mars Incorporated, the owner of the trademark STARBURST.173 In the agreement, Starbucks undertakes to refrain from using its trademarks with respect to fruit candies and confectionary products, while Mars undertakes to refrain from using its mark with respect to coffee, cocoa, espressos, coffee substitutes and coffee beverages, and also to respect certain limitations as to the places where these products are sold. The Council of State applied the pre-judicial interpretation delivered by the Andean Court of Justice, which had determined that STARBUCKS and STARBURST were similar because they begin with the syllable STAR, followed by the phoneme BU.174 Also, even though the trademarks end in different consonants (CKS versus RST), the truth, according to the Council of State, is 171. Sony Kabushiki Kaisha v. Vega Grieshaber KG, Council of State, File 6903, August 23, 2004 (not yet published). 172. Andean Court of Justice, Proceeding No. 85-IP-2003 (October 1, 2003), [2003] ACCJ 107. 173. Starbucks Corp. v. Mars Inc., Council of State, File 7063, August 20, 2004 (not yet published). 174. Andean Court of Justice, Proceeding No. 104-IP-2002 (December 4, 2002), [2002] ACCJ 118. 348 Vol. 95 TMR that this little difference lacks differentiating capacity, since the ending is a weak part when considered with respect to the whole, the order of the common elements of the whole and the vowels in the initial syllable. This ruling may have a strong impact on the business world, as Starbucks, whose trademark is one of the most recalled marks in the world, has not been able to open markets in some of the Andean Community countries for this same reason. I.B.9.a. No Similarity of Marks Kraft Foods Inc. applied for the registration of the trademark KISS COOL for products in International Class 30. Hershey Foods Corporation S.A. opposed this registration based on its word trademark HERSHEY’S KISSES, previously registered also for products in Class 30. The Trademark Office declared the opposition ungrounded, and allowed the registration of KISS COOL in Class 30 as applied for by Kraft, deeming that the trademarks were not confusing and did not show similarities that could induce the public into error. Hershey filed a nullity action against this decision before the Council of State, which requested a pre-judicial interpretation of the relevant Andean Community provision from the Andean Court of Justice. The Court ruled that those marks that are identical, or so similar to marks previously registered by third parties that they could induce the consumers into error, are not eligible for registration. Also, those words in another language whose use becomes prevalent in Colombia should be treated as local expressions, as their meaning is known in Spanish owing to their frequent use.175 The Council of State, applying this interpretation to the case at hand, concluded that the trademarks involved, when appreciated as a whole and successively, produced an impression different from the impression their elements would produce separately, thus preventing confusion. In addition, it concluded that the word KISS, which is known by the general public because of its meaning, has been used so much in Colombia as a designation for certain candies, chocolates and flour products that such use has deprived the word of its own distinctiveness (the dilution phenomenon). Consequently, the Council of State did not find a true risk of confusion in graphic, phonetic or ideological terms between 175. Andean Court of Justice, Proceeding No. 63-IP-2002 (August 28, 2002), [2002] ACCJ 75. Vol. 95 TMR 349 HERSHEY’S KISSES and KISS COOL, and it deemed valid Kraft’s registration.176 I.B.12. Famous Marks Warner-Lambert Company, owner of the trademark LUBRIDERM, filed a nullity action before the Council of State against the decision of the Trademark Office to allow the registration of the trademark DERMALUB, alleging that the two trademarks were confusingly similar and, additionally, that LUBRIDERM was a well-known trademark. Because Nobel Farmaceutica S.A. had applied to register its mark DERMALUB in 1992, to cover pharmaceutical, veterinary and sanitary products in International Class 5, the first problem that the Andean Court of Justice faced in giving a pre-judicial interpretation in this case was the application of law over time. Since that year, industrial property has been regulated in the Andean Community by several decisions;177 to some of the parties to the proceeding, therefore, it was not clear which was the applicable law. The conclusion reached and stated by the Court was that, in cases where the law has changed, the Andean Community legislation that was in force when the application to register was filed is the one to be applied when judging the legality of national administrative acts. With respect to the issue of the well-known character of the LUBRIDERM trademark alleged by Warner-Lambert, the Court first explained that special protection granted to a well-known trademark with respect to the product or service that is its subject matter is extended—in the event of risk of confusion with a mark reproducing, imitating, translating or transcribing it, whether totally or partially—regardless of the class to which the product or service may belong or the country where the trademark may have been registered, as the purpose is to prevent undue use and the damage that registration of a similar mark could cause to the distinctive capacity or the reputation of the well-known trademark. The Andean Court added that the well-known character of a trademark is a matter of facts that must be proved sufficiently, based on, among other criteria, the extent to which the trademark is known, diffused and advertised; its years of existence and 176. Kraft Foods Inc. v. Hershey Foods Corp., Council of State, File 5449-01, February 19, 2004 (not yet published). 177. Commission of the Andean Community, Decisions 313, 344, 486. 350 Vol. 95 TMR continued use; and the production and marketing analyses of the products covered by the trademark.178 The Council of State applied this interpretation and decided the case by refusing the claims of the plaintiff. Among other things, the Council of State ruled, first, that Warner-Lambert did not prove sufficiently the well-known character of its trademark, and, second, that LUBRIDERM and DERMALUB were not confusable, as from the visual, orthographical and phonetic points of view they were perceived differently by consumers because of their spelling and pronunciation.179 The company Harrods Limited asked the Council of State to decree the nullity of the resolution by which the Trademark Office granted the registration of the trademark HARRODS in favor of Harrods (Buenos Aires) Limited for products in International Class 9 (scientific, nautical, geodesic and other instruments and apparatuses). In the opinion of Harrods Limited, the registration for HARRODS owned by Harrods (Buenos Aires) Limited was null for the following reasons: 1. The existence of the prior registration for the trademark HARRODS (mixed), for products in Class 28 (games, gymnastic items, decorations, etc.), in the name of Harrods Limited; 2. The well-known character of the HARRODS trademark; and 3. The existence of the commercial name Harrods prior to the registration application for the trademark HARRODS by Harrods (Buenos Aires) Limited. Comparing the previously registered trademark HARRODS owned by Harrods Limited and the applied-for trademark HARRODS owned by Harrods (Buenos Aires) Limited, the Council of State concluded that it was not necessary to implement a further analysis to establish that the two trademarks were identical. It then explained that in the Andean Community the existence of two identical trademarks for identifying different products is possible unless one of them is a well-known trademark, because that situation could induce consumers to error with regard to the origin of the products. The Council of State went on to analyze whether HARRODS was a well-known trademark. It began by analyzing the history of the expression HARRODS as a distinctive mark, and found that it 178. Andean Court of Justice, Proceeding No. 86-IP-2003 (October 8, 2003), [2003] ACCJ 114. 179. Warner-Lambert Co. v. Nobel Farmaceutica S.A., Council of State, File 05394, July 21, 2004 (not yet published). Vol. 95 TMR 351 started in 1849, when a food store with that name was opened in London, England. In 1889, the firm became a limited liability company and changed its name to Harrods Limited. The store began making sales by catalog, both at the national and at the international level, and it now sells an ample scope of products, such as cosmetics, jewels, clothing, food and books, that bear the HARRODS mark. The mark is registered in more than 40 countries of the world, among them Colombia. In addition, the Council of State found that Harrods Limited invests approximately £2.3 million a year in advertising and that its products have been the object of advertising campaigns in magazines in the Americas, including Colombia, as well as in Europe. Consequently, the Council of State concluded that HARRODS complied with the requirements for being considered a well-known trademark. Based on the foregoing, the Council of State declared the nullity of the registration of the HARRODS trademark that had been granted in favor of Harrods (Buenos Aires) Limited.180 III.A.2.b. Similarity of Marks Warner-Lambert Company sought the nullification of the Trademark Office’s resolution granting the registration of the trademark DELISTER in favor of Laboratorios Lister S.A. to cover products in International Class 3.181 In the opinion of WarnerLambert, DELISTER was similar to its well-known trademark LISTERINE, registered in Colombia for products in Classes 3 and 5. The Council of State asked the Andean Court of Justice for a pre-judicial interpretation regarding this case. The Court decided as follows: 1. Regarding law conflict in time. As the resolution that granted the trademark registration was issued in 1996 and since then the Andean Community legislation has changed, the first discussion was regarding the law applicable to the case. The Court ruled that the substantial norm in force at the moment of filing the application for registration of a mark as a trademark is the one applicable to deciding on the granting or refusal of the registration, as well as regarding any refutation, either administrative or judicial. 180. Harrods Ltd. v. Harrods (Buenos Aires) Ltd., Council of State, File 1-8303, October 22, 2004 (not yet published). 181. Resolution No. 9107, March 22, 1996. 352 Vol. 95 TMR 2. Comparison of nominative trademarks. As the marks to compare, namely, DELISTER and LISTERINE, are nominative, the Court held that the comparison should have taken into account all the syllables and letters forming the words in the conflicting trademarks. The Andean Court added that two marks are similar when the tonic syllable occupies the same position in the two denominations being compared and is identical or very difficult to distinguish. Inside a word, the tonic syllable is the one pronounced with more strength. For example, in the word candelabro, the tonic syllable would be “la.” The other syllables carry no accent and thus are called atonic syllables. In this example, the atonic syllables would be “can,” “de” and “bro.” 3. Derived trademark. With regard to the discussion of trademarks derived from the mark LISTERINE, the Court had the following findings: a. The derived trademark gives its legal owner the power to use the trademark, including nonsubstantial variations, and said fact does not decrease its protection. b. The legal owner of a derived trademark can file new registration applications regarding marks constituting derivations of an already-protected trademark. c. Even with regard to a previously registered derived trademark, however, the legal owner is not entitled to have exclusive rights to the particles, prefixes and suffixes, roots or terminations, either common, necessary or usual, because they belong to the public domain, and exclusiveness would create a monopoly on the use of the particles necessary for the identification of certain products or services for the benefit of a few. 4. Well-known trademarks. As Warner-Lambert alleged the well-known character of its trademark LISTERINE, the Court reminded the company of the doctrine criteria generally used for deciding whether a trademark is well known: a. Whether extensive advertising has made the trademark known to a high percentage of the general population. b. Whether the mark enjoys extensive use and acceptance by a large number of consumers. c. Whether the mark enjoys an outstanding reputation in the corresponding industrial or commercial field. Vol. 95 TMR 353 d. Whether mention of the mark elicits in the public a direct association with the product or service identified. 182 Adopting all these remarks of the Court, the Council of State proceeded to decide this specific case. In doing this, it compared the two marks from the phonetic, spelling and conceptual points of view, and concluded that they shared several similarities. DELISTER and LISTERINE contain the expression LISTER and share the same vowels, “I” and “E,” even though in a different order. The only difference is the initial “DE” of DELISTER and the final “INE” of LISTERINE. The Council of State went on to analyze the topic of wellknown character, according to the guidelines set by the Andean Court of Justice. It concluded that LISTERINE, registered by Warner-Lambert in Colombia and in 88 other countries of the world, was a well-known trademark. Because both DELISTER and LISTERINE covered products belonging to Class 3 and LISTERINE was a well-known trademark within the scope of the products for oral hygiene, the Council of State concluded that there was an undeniable risk of confusion for consumers, and therefore it declared the nullity of the trademark DELISTER.183 III.A.8. Infringement of Unregistered Trademarks Even if the packaging, flier, label and logotype of a product are clearly a forgery, the author of the forgery may not be charged for trademark and patent usurpation unless it is proved that the trademark was registered. That was the determination of the Supreme Court of Justice of Colombia when it revoked a decision handed down by a criminal judge and court declaring guilty a man who had been found at home preparing a powdered soap that he would then pack in plastic bags imitating the trademark FAB of the corporation Colgate-Palmolive Corporation.184 In Colombia, whoever fraudulently uses “a trade name, emblem, mark, label, drawing, or tag, or a patent or industrial, commercial or agricultural model ‘legally protected’” may be punished with imprisonment under Article 236 of the Criminal Code. The lower court deemed that the fact that FAB was a wellknown trademark and its manufacturer a multinational company 182. Andean Court of Justice, Proceeding No. 30-IP-2004 (May 19, 2004), [2004] ACCJ 53. 183. Warner-Lambert Co. v. Laboratorios Lister S.A., Council of State, File 20020012701, September 9, 2004 (not yet published). 184. Supreme Court of Justice, Case No. 17.702, July 21, 2004. 354 Vol. 95 TMR widely known in Colombia was sufficient for the mark to meet the “legally protected” requirement. Consequently, the judge held that, as the soap of Colgate-Palmolive was a primary commodity in common and daily use, a whole community would be deceived if the sale of forged products were allowed. The Supreme Court, however, ruled that these reasons were not sufficient to protect a trademark in Colombia. It stated that in Colombia, as in the other countries of the Andean Community (Venezuela, Ecuador, Peru and Bolivia), the protection afforded a trademark, whether famous or not, derives from its registration, which is the act that grants title in the trademark.185 The Supreme Court clarified that, even though the well-known character of a mark translates into wide knowledge of the product by consumers, well-known trademarks are to be protected against unauthorized use in the Andean Community only if they have been registered.186 It held, further, that the knowledge of a fact by a judge does not constitute evidence of said fact, and the well-known character of a trademark must be demonstrated with evidence. Although experts in international law have criticized this ruling because the Supreme Court of Justice did not request an opinion from the Andean Court of Justice—which is mandatory in proceedings referring to the validity of a trademark—the truth is that there is a lesson to learn in this case: in the Andean Community all trademarks must be registered. COMMUNITY TRADEMARK I.B.2. Merely Descriptive Terms Streamserve, Inc. applied to register the mark STREAMSERVE for goods in Classes 9 and 16, largely relating to computing. The application was refused under Articles 7(1)(b) and (c) of Council Regulation No. 40/94 on the grounds that the mark was made up of two English words without any additional unusual or innovative element, that it was descriptive of the intended use of the goods concerned, in this case a technique for transferring digital data from a server enabling them to be processed as a steady and continuous stream. The Second Board of Appeal upheld the refusal and the applicant appealed to the Court of First Instance. The objection was maintained and the application refused. The Court stated that Article 7(1)(c) pursued an aim in the public interest, namely that the signs and indications referred to 185. Commission of the Andean Community, Decision 486 (Common Intellectual Property Regime), Article 134, September 14, 2000. 186. Commission of the Andean Community, Decision 486, Article 225. Vol. 95 TMR 355 in that provision should not be reserved to one undertaking alone by reason of their being registered as a mark, but can be freely used by all. In the present case, the applicant’s goods were targeted at average English-speaking consumers who used the Internet and were interested in its audiovisual aspect. From the viewpoint of the relevant public, there was a sufficiently direct and specific relation between the sign and the goods for which registration was sought. The mark was made up of the noun, stream, and the verb, serve, that were not unusual for the consumers concerned. The word, streamserve, referred to a technique for transferring digital data from a server. This technique did not merely constitute a field in which the goods were applied, but rather one of their specific functions.187 I.B.4. Geographical Names Nordmilch eG applied to register the mark OLDENBURGER for a range of goods in Classes 29, 30 and 32, many of which were made with or contained milk. Objection was raised under Articles 7(1)(c) on the grounds that the term Oldenburg designated the principal town of the region of Weser-Ems in the Land of Niedersachsen and a town of the same name in the Land of Schleswig-Holstein in Germany. Goods of the kind covered by the application were manufactured in the district of Weser-Ems. The applicant denied that the mark was composed, exclusively, of an indication which, taken alone, designated or could designate the geographical origin of the goods. It submitted that the mark indicates a male personalized form or a male inhabitant of the town of Oldenburg. The case law stemming from the judgement in Windsurfing Chiemsee in joined Cases C-108/97 and C-109/97 was not relevant as the mark is OLDENBURGER and not OLDENBURG. OHIM considered that the adjectival form of a place name clearly falls within the scope of Article 7(1)(c), which does not prohibit the registrations of geographical names but rather the registration of indications that may serve to designate geographical origin. The applicant’s appeal to the Board of Appeal was rejected and a further appeal was made to the Court of First Instance. The Court of First Instance upheld the objection and the refusal of the application. The Office had rightly argued that the other conceivable meanings were so absurd as to be unacceptable. The word in question was commonly used in the sector for the 187. Streamserve, Inc. v. OHIM – Judgement of the Court of First Instance in Case C150/02P – 5 February 2004. 356 Vol. 95 TMR goods concerned. The adjectival form was customary in German to construct designations of origin or geographical indications. With regard to the goods, such as fish, for which it had not been established whether the geographical area evoked by the sign is well known or not, it is reasonable to assume that those goods will in the future be associated with the word in question in the minds of the relevant persons.188 I.B.8.a. Similarity of Marks Interquell GmbH applied to register a mark consisting of the words HAPPY DOG and device elements for “foodstuffs for dogs.” The application was opposed by SCA Nutrition Limited under Article 8(1)(b) of Council Regulation No. 40/94 on the basis of the similarity of the mark to the word mark HAPPIDOG and a composite word and device mark, featuring the word HAPPIDOG registered in the United Kingdom for foodstuffs for dogs. The opposition was allowed and the applicant appealed. The appeal was dismissed by the Second Board of Appeal referring to the strong conceptual and visual similarities between the conflicting marks. The applicant appealed to the Court of First Instance submitting that, when used for foodstuffs for dogs, the expression HAPPY DOG is descriptive in that it designates the quality and intended use of those foodstuffs. The expression indicates that the foodstuffs are composed in such a healthy and tasty way that, after having eaten them, the dog will be in good health and therefore happy. The applicant contended that the opponent was only able to obtain registration of its word mark in the United Kingdom by modifying the word HAPPY to HAPPI and joining the terms so as to create a grammatically incorrect expression. The applicant argued that the protection afforded to such a mark is limited solely to cases of a likelihood of confusion with identical signs. The Court held that it was clear from Article 8(1)(b) that all properly registered marks are protected not only in the case of identity but also in the case of similarity between the earlier mark and the sign claimed and between the goods or services concerned. The marks at issue have the same conceptual content. As regards the visual comparison, the word component HAPPY DOG predominates in the applied for mark. Given the conceptual similarity and the phonetic identity of the word elements, the visual differences between the signs are incapable of ruling out a likelihood of confusion on the part of the public. 188. Nordmilch eG v. OHIM – Judgement of the Court of First Instance in Case T295/01 – 15 October 2003. Vol. 95 TMR 357 Even if the combination HAPPY DOG could be regarded as descriptive when used in relation to dog food and, consequently, the earlier word mark were to be regarded as being distinctive only to a small degree, it must be understood that the factors relevant to the assessment of the likelihood of confusion are interdependent. The fact that the goods concerned are identical and that there is a high degree of similarity between the marks is sufficient for a finding that such a likelihood of confusion exists. The applicant argued that, under Article 12 of Council Regulation No. 40/94, the protection enjoyed by the earlier mark did not prohibit use by competitors of descriptive terms such as “happy dog.” Article 12 of Council Regulation No. 40/94 concerns the limitations on the right conferred by a Community trademark on its proprietor. Article 12 may be relied upon as a defense by an alleged infringer. However, account cannot be taken of Article 12 during the procedure for registration of a mark because it does not, as the applicant has argued, entitle third parties to use terms designating the character or quality of the goods as a trademark but merely ensures that they may use them in a descriptive manner, in accordance with honest practices of the trade.189 I.B.19. Slogans Fieldturf, Inc. applied to register the mark LOOKS LIKE GRASS . . . FEELS LIKE GRASS . . . PLAYS LIKE GRASS for synthetic surfacing for the playing of sports including soccer, football and lacrosse and for services to install such surfacing. The Examiner found the mark applied for was exclusively composed of a very simple slogan devoid of any distinctive character and, therefore, not capable of registration pursuant to Article 7(1)(b) of Council Regulation No. 40/94. The rhetorical flourish, emphatic sound and symmetrical form, which were claimed, were not sufficient to confer any distinctiveness on the mark. The fact that the mark was registered in the United States was not a sufficient reason to conclude that the mark was distinctive. The Board of Appeal maintained the refusal. The applicant appealed to the Court of First Instance. The applicant argued that the mark applied for had a vague, multiple meaning. PLAYS LIKE GRASS, in particular, was not a common construction and suggested something that plays in the same way that grass plays. The Court rejected the appeal. Registration of a mark, consisting of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services is not excluded as such by virtue of such use. However, 189. Interquell GmbH v. OHIM – Judgement of the Court of First Instance in Case T20/02 – 31 March 2004. 358 Vol. 95 TMR an advertising slogan is only registrable if it may be perceived immediately as an indication of the commercial origin of the goods or services in question. The mark suggested the following clear and direct meaning: “Has the same appearance as grass . . . [p]roduces the same sensation as grass . . . [i]s as suitable for playing on as grass.” The mark, therefore, directly informs the relevant public that the goods applied for have qualities similar to those of natural grass. The mark was found to have no particular rhetorical flourish, poetic character or rhythm. Even if the mark had been found to produce such effects, they would be very diffuse and would not induce the relevant consumer to see in the mark anything other than a promotional formula applicable to synthetic surfaces in general and not therefore capable of designating the origin of those goods.190 COSTA RICA I.B.2. Merely Descriptive Terms The trademark PURO CUERO (Spanish for PURE LEATHER) in Class 20 in the name of PURO CUERO S.A. was denied registration on the ground that it was merely a descriptive term for the goods (mainly home and office furniture) intended to be distinguished by the trademark.191 The trademark FROSTED NUTS & Design in Class 29 was denied registration on the ground of its being descriptive of the products it was intended to protect. The resolution was appealed and was confirmed by the Tribunal.192 I.B.8.a. Similarity of Marks Laboratorio Maver of Chile filed for the trademark BBDENT in Class 5. The filing was opposed by Dentinox Gesellschaft für pharmazeutische Präparate Lenk & Schuppan on the basis of the previous registration of the trademark NENEDENT in Class 5. Because of the phonetic similarity of the trademarks and the fact that both were intended to protect Class 5 products, the Tribunal found that the similarity was evident and could lead to the 190. Fieldturf Inc. v. OHIM – Judgement of the Court of First Instance against the decision of the First Board of Appeal on 31 March 2004 in Case T-216/02. 191. Tribunal Superior Contencioso Section 3, Resolution No. 387-2003, San Jose, Costa Rica, December 18, 2003. 192. Tribunal Superior Contencioso Section 3, Resolution No. 388-2003, San Jose, Costa Rica, December 18, 2003. Vol. 95 TMR 359 confusion of consumers. Registration of BBDENT was, therefore, denied.193 The trademark EVAX in the name of Fustery S.A. in Class 5 was denied registration by the Costa Rica Trademark Office based on the previous registration of IVAX in the same class. On appeal, the Tribunal found that the similarity was enough to confuse the public, and confirmed the resolution.194 In the matter of the filed trademark QUESIFRITOS in the name of Alimentos S.A. and the opposing registered trademark FRITOS in the name of Pepsico, Inc., it was evident that there was a complete reproduction of the registered trademark FRITOS, even though there were other elements in the filed trademark, such as the words “delicious,” “tasty,” etc., and other graphic elements. The placement and size of the main word, QUESIFRITOS, were enough evidence for the Tribunal to conclude that the central part of the filed trademark was that word and no other; when, in addition, the similarities in color between the two trademarks were considered, there was likelihood of confusion. Therefore, registration was denied.195 I.B.9.a. No Similarity of Marks Between the filed trademark BI DEXATON in the name of Fide S.A. and the opposing registered trademark DEXA NEUROBION in the name of Merck A.G., both in Class 5, there were enough different elements that would not allow confusion of the trademarks.196 Between the filed trademark ROCK ICE & Design in the name of Florida Ice and Farm S.A. and the opposing registered trademark COLD FILTERED ICE DRAFT BEER BUDWEISER and design in the name of Anheuser Busch Inc., there was no possibility of confusion. The Tribunal ruled that although both marks protect the same kind of products, there were enough elements to distinguish them properly, and they could coexist.197 193. Tribunal Superior Contencioso Section 3, Resolution No. 383-2003, San Jose, Costa Rica, December 18, 2003. 194. Tribunal Superior Contencioso Section 3, Resolution No. 386-2003, San Jose, Costa Rica, December 18, 2003. 195. Tribunal Superior Contencioso Section 3, Resolution No. 71-2004, San Jose, Costa Rica, March 26, 2004. 196. Tribunal Superior Contencioso Section 3, Resolution No. 202-2004, San Jose, Costa Rica, July 8, 2004. 197. Tribunal Superior Contencioso Section 3, Resolution No. 135-2004, San Jose, Costa Rica, May 21, 2004. 360 Vol. 95 TMR Between the filed trademark DEXEL in the name of Fide S.A. and the opposing registered trademark DUXIL in the name of BIOFORMA of France, not only for pharmaceutical products but for very different areas, one pediatric and the other cardiovascular purposes, the marks could be easily distinguished and could coexist.198 Between the filed trademark X.ACTO & Design in the name of Pruebas Modernas S.A. and the opposing registered trademark ACTO in the name of Takeda Chemical Industries Ltd., both in Class 5, there were enough differences for the marks to coexist.199 Between the filed trademark NOVASIL in the name of Global Farma S.A. and the opposing registered trademark NOVARTIS, both in Class 5, the differences were enough to allow coexistence.200 CZECH REPUBLIC I.B.8.a. Similarity of Marks An application for registration of the denomination BARBRA (combined) was refused on the basis of an opposition filed by the owner of the older trademark registration BARBIE. The Czech Office of Industrial Property (the “Office”) in its decision stated that the denomination BARBRA is confusingly similar to the trademark BARBIE from the visual, phonetic and semantic points of view. The Office was of the opinion that the combination of letters B-A-R-B represents the dominant part of both compared denominations. Thus, the fact that the initial four letters of the denominations BARBIE and BARBRA are identical results in confusing similarity from the visual and phonetic perspectives. In the opinion of the Office, the fact that the last two letters of the compared denominations were different was not sufficient to minimize potential confusion of similar products bearing these marks. Finally, the Office stated that both denominations derived from the female name, Barbara, and thus 198. Tribunal Superior Contencioso Section 3, Resolution No. 134-2004, San Jose, Costa Rica, May 21, 2004. 199. Tribunal Superior Contencioso Section 3, Resolution No. 109-2004, San Jose, Costa Rica, April 30, 2004. 200. Tribunal Superior Contencioso Section 3, Resolution No. 4-2004, San Jose, Costa Rica, January 16, 2004. Vol. 95 TMR 361 they can also be seen as being confusingly similar from a semantic point of view.201 An application for registration of the denomination PUMS (combined) was refused on the basis of an opposition filed by the owner of the older trademark registration PAMPERS (combined). The contested denomination PUMS: The trademark Pampers: In its decision, the Czech Industrial Property Office stated that it is obvious that the word elements PUMS and PAMPERS are different as regards visual and phonetic similarity and that the graphic elements used in the compared denominations are not identical. However, the contested denomination PUMS used graphic elements that were organized into a similar overall composition and were similar in the technique of their design and symbolism to those used on the PAMPERS trademark. The word PUMS uses the first, middle and last consonants of the word PAMPERS and, in spite of the use of a different vowel, it could be seen as an abbreviation. 201. Decision of the Office of Industrial Property No. O-183760 / October 15, 2003. 362 Vol. 95 TMR The Czech Industrial Property Office concluded that the contested denomination PUMS was confusingly similar to the trademark registration for PAMPERS because the symbolic meaning created by the compared denominations evokes a similar impression. Therefore, consumers could presume that it is another trademark with an abbreviated word element that belongs to a chain of trademarks of the same entrepreneur.202 I.B.12. Famous Marks An Appeals Panel of the Czech Office of Industrial Property upheld a first instance decision that refused registration of the trademark BCBG on the basis of an opposition filed by the holder of non-Czech registrations for the denomination BCBG who claimed that its trademark was well known under Article 6bis of the Paris Convention. The Appeals Panel stated that the opposing party’s BCBG trademarks should be considered well-known trademarks despite the fact that knowledge of the trademarks among general consumers was limited because they were used for luxury goods. The Appeals Panel stated that it is important to examine the wellknown character of a trademark from the point of view of the relevant consumers. In this case, the relevant group would be consumers of luxury clothing and individuals involved in fashion and the fashion industry. Additionally, the Office recognized evidence of fame in the form of advertisements and articles in non-Czech language editions of fashion magazines such as ELLE, HARPER’S BAZAAR, MARIE CLAIRE, VOGUE, together with articles and advertisements appearing on the Internet, satellite and cable television. The fact that these are available on the Czech market, even in limited numbers, was sufficient to establish the fame of the BCBG trademarks, taking into consideration that the relevant consumer group for luxury fashion products is narrower than that for products of everyday use.203 III.G. Post-Registration Evidence of Use and Renewals The petitioner sought to cancel the trademark KINDER SOFTY on the ground that the trademark had not been used in the Czech Republic for at least five years before institution of the proceedings for its cancellation. 202. No. O-170912, Decision of the Office of Industrial Property (published April 1, 2003). 203. Decision of the Office of Industrial Property No. O-175740 / July 23, 2003. Vol. 95 TMR 363 The owner of the trademark argued in response to the cancellation action that products bearing the KINDER SOFTY trademark were commonly distributed in the Czech Republic through a related Czech company. This statement was supported by evidence in the form of invoices issued in the relevant period, photographs of the products bearing the trademark and a copy of an agreement on authorized use between the owner of the trademark and the related Czech company. The Office rejected the petition for cancellation, stating that under the Trademark Act a trademark may be cancelled on the ground of nonuse only when the Office properly determines that the trademark has not been used in the Czech Republic for at least five years before institution of the cancellation action and if the owner of the trademark does not properly explain the failure to use the trademark at issue. The Office concluded that use of a trademark by a third party with the owner’s consent will be considered as proper use even if the agreement is not a registered license agreement. The Office stated that the aim of the nonuse cancellation provision is to prevent accumulation in the Trademark Registry of trademarks that are not actually used by their owners and thus prevent other entrepreneurs from registration and use of such trademarks. A petition for cancellation can be successful only when there is a total lack of interest of the trademark owner to use the trademark. The Office found from the submitted evidence that it was obvious that an agreement for use of the subject trademark existed and it was clear from the evidence that the trademark was used in the territory of the Czech Republic during the relevant period. The Office confirmed its existing practice of recognizing as valid use of a trademark its use on documents, in this case on invoices issued in connection with sales of the products covered by the list of goods of the contested trademark.204 V.A. Domain Names The petitioner sought a judgment by which the City Court of Prague would order Mr. X. to desist from any manipulation and use of the domain names bonaqua.cz, cappy.cz and kinley.cz, to provide the petitioner with appropriate damages and reimbursement of costs of proceedings and further to oblige the Czech Domain Name Register to transfer the ownership of the second level domain names bonaqua.cz, cappy.cz and kinley.cz to the petitioner. The Court concluded that Mr. X. was engaged in the activity of registering various second level domain names and then seeking to 204. Decision of the Office of Industrial Property No. O-194713 / February 25, 2004. 364 Vol. 95 TMR sell those domain names to individuals who might be interested in owning them. This conclusion was supported by a partial list of domains owned by Mr. X., submitted by the Czech Domain Name Register, including 3,307 domains registered by Mr. X. from August 29, 2003, through September 7, 2003. The Court determined that all three denominations forming the basis of the subject domain names could be considered as wellknown trademarks. The Court stated that the registration of the subject domain names by Mr. X. prevented the registration or use of the same domain names by the parties entitled to them. As a result, the Czech Trademark Act was violated because the registration itself, which consists of a trademark that is the dominant part of the domain name, effectively prevents the owner of a trademark that is the dominant part of the domain name from full and unhindered use of such trademark. The Court came to the conclusion that with regard to the wide range of activities of Mr. X., as far as domain names are concerned, it is necessary to consider the mere registration of the subject domain names that were identical to the petitioner’s trademarks as actual use of the domain names. In addition, the Court concluded that while this conduct is not illegal per se, the defendant must take into account that he is liable for his conduct, if such registrations interfere with legal rights of third parties. The fact that Mr. X. does not operate any webpages under the domain names bonaqua.cz, cappy.cz and kinley.cz does not protect him because the reality is that an Internet visitor who cannot find anything under these addresses might reach the conclusion that the petitioner does not care about proper presentation of its products or is not able to offer such presentation. In connection with the above stated findings, the Court concluded that the conduct of Mr. X. fulfills the elements of the general definition of unfair competition under Section 44 of the Czech Commercial Code, namely conduct in economic competition that may be detrimental to other competitors. The Court stated that such conduct conflicts with the accepted practices of competition because there is no relevant reason why Mr. X. should have registered the subject domain names that he does not use and that the domain names include denominations of well-known products, of which Mr. X. must have been aware. Mr. X. was ordered by the Court to desist from manipulation and use of the domain names bonaqua.cz, cappy.cz, and kinley.cz and to pay damages and court costs to the petitioner. The Czech Domain Name Register was ordered to transfer the ownership of the mentioned domain names to the petitioner.205 205. City Court of Prague, decision of September 9, 2003 / Unpublished. Vol. 95 TMR 365 DENMARK I.B.7.b. Three-Dimensional Marks Two cases show that it is difficult to obtain trade dress protection for the shape of the good itself and for nondistinctive packaging. In the first case, plaintiff filed for registration of a three-dimensional trademark (device mark) of three French press coffee makers. The Danish Patent and Trademark Office rejected the applications for lack of distinctiveness, holding that the trademarks were merely a depiction of the coffee pots. Plaintiff filed evidence that the marks had acquired secondary meaning due to sales that spanned over 25 years. Even though the coffee pots had been marketed for such a long time, the PTO did not find that the coffee pots had acquired distinctiveness in that the marks were mere reproductions of the goods themselves. Plaintiff appealed the decision to the Danish Board of Patent and Trademark Appeals, but the Board affirmed the decision, holding that neither the coffee pots themselves nor the details of the coffee pots could function as a trademark. Plaintiff appealed further to the Maritime and Commercial Court of Copenhagen. The court affirmed, stating that the coffee pots do not have such a distinctiveness that the plaintiff’s coffee pots can distinguish themselves from competing coffee pots. The court stated that due to the fact that trademark protection grants exclusive rights not only over identical marks but also over similar marks, there is a reluctance to grant trademark protection to the good itself unless special circumstances exist. Such special circumstances did not exist in this case, in part because the documentation did not support a finding of acquired secondary meaning, in part because the coffee pots were marketed under a word mark (BODUM) and not by the shape of the coffee pots alone.206 The second case involved the Danish chapter of Société des Produits Nestlé S.A. (Nestlé) and its trademark SMARTIES/ Mars, Inc.’s M&M MINIS tube packaging litigation. Nestlé had sold SMARTIES chocolate candies in paper tubes for over 50 years in Denmark. An application for registration of a 13cm by 2cm tube was originally rejected for lack of distinctiveness, but Nestlé had gotten this provisionally registered by documenting that the tube had acquired secondary meaning. Mars, Inc.’s Danish subsidiary Master Foods A/S lodged an opposition against the final registration of this tube and commenced selling M&M MINIS in a 10cm by 3cm plastic tube. Nestlé sought an injunction and 206. PI Design AG v. Danish Board of Patent and Trademark Appeals, Ugeskrift for Retsvaesen 2003.2166S. 366 Vol. 95 TMR damages. Master Foods A/S counterclaimed with a demand that the provisional registration be removed from the Trademark Register. Both the Maritime and Commercial Court of Copenhagen and the Danish Supreme Court held that the undecorated cylindrical cardboard container lacked characteristic elements and therefore had to be considered as a common shape. Upholding Nestlé’s trademark would give Nestlé a monopoly to use a common container when selling candy. The Danish Supreme Court held that Nestlé’s paper tube could not acquire distinctiveness to achieve trademark protection for this common, basic shape. Both the Maritime and Commercial Court and the Supreme Court gave judgment in favour of Master Foods and, as consequence of the judgment Nestlé’s trademark was removed from the Trademark Register.207 III.A.2.b. Similarity of Marks Even marks made up of a single letter and a single numeral can enjoy extensive rights in Denmark. For many years, plaintiff, the main public service radio station, had called its four nationwide radio channels P1, P2, P3 and P4, the “P” being an abbreviation of “Program.” Furthermore, plaintiff had registered P1, P2, P3, P4, P5, P6, P7 and P8 as trademarks.208 Defendant launched a new radio channel in Denmark under the name SKY RADIO P5. Plaintiff sought to enjoin the use in that the services were identical and the marks were similar. Defendant claimed that P5 was the commonly known name for the new, fifth, nationwide radio channel in Denmark. Plaintiff secured a temporary injunction and defendant appealed. The Court of Appeals for the Eastern District found that there was no evidence to support a claim that P5 was commonly known except for defendant’s own homepage and interviews in the newspapers. Furthermore, the evidence could not support claims that plaintiff had not prosecuted violations of its trademark rights in P5. Therefore, the court did not find P5 to be generic and accordingly affirmed the temporary injunction.209 III.A.10. Nonuse of Trademark Use of a registered mark together with the house mark can still be “genuine use.” If a trademark has not been put to “genuine 207. Société des Produits Nestlé S.A. v. Master Foods A/S, Ugeskrift for Retsvaesen 2003.2400 H. 208. The latter four expressly as a result of the OHIM Board of Appeal decision of March 11, 1998, in Case R 4/1998-2 concerning the trademark IX, which held that even two-letter marks could possess the requisite distinctiveness for registration. 209. Sky Radio A/S v. DR , Ugeskrift for Retsvaesen 2004.1673 Ø. Vol. 95 TMR 367 use” for a period of five years, the trademark registration can be removed from the Danish Trademark Register. As part of the suit involving Deutche Bank AG v. Din Bank A/S, defendant sought to remove plaintiff’s registration due to nonuse on the ground that plaintiff almost never used the BANK24 mark alone as registered, but only in conjunction with plaintiff’s house mark, i.e., as DEUTSCHE BANK24. The Maritime and Commercial Court of Copenhagen held that use of the trademark together with the house mark satisfied the use requirements and rejected defendant’s claim of nonuse.210 III.A.11.a. No Similarity of Marks Device marks containing descriptive elements can be graphically similar but not necessarily confusingly similar. Plaintiff Deutsche Bank AG and defendant Din Bank A/S had both registered device marks comprised of the word Bank followed by the number 24. Both were written with lower-case letters, and there was a circular element around the 24. Defendant’s mark also contained the Danish domain name suffix .dk. Both marks were used for Internet banking services open 24 hours a day. Plaintiff asserted word mark protection based on use. The Maritime and Commercial Court of Copenhagen, however, held that BANK24 was a weak word mark, and therefore received only a narrow judicial protection. Further, it held that the trademark lacked distinctiveness. Plaintiff, a German bank, had only a few thousand customers in Denmark, and had not used the trademark in such a way that the trademark had obtained distinctiveness by establishment. In spite of certain similarities, the two device trademarks were not considered to be confusingly similar because the weighing of the mark elements did not result in sufficient similarities. The court found no basis to infer that the defendant had been aware of the plaintiff’s use of the mark in Germany and thus found no infringement of the unfair competition legislation.211 III.A.11.b. No Similarity of Goods/Services In determining similarity of services, weight is given to the purchasers of the services, and not the users. Plaintiff’s trademark MEDICON was registered for a broad list of health care-related services in Class 42 and used for performing clinical tests for the pharmaceutical industry and research hospitals. Defendant’s trademark MEDICONNECT was in use for an Internet-based communications system for county health care providers to get in 210. See also III.A.11.a. No Similarity of Marks for additional discussion of this case. 211. Deutsche Bank AG v. Din Bank A/S, Ugeskrift for Retsvaesen 2004.2774S. 368 Vol. 95 TMR touch with specialist doctors. Plaintiff sought to enjoin defendant’s use of MEDICONNECT. The Maritime and Commercial Court of Copenhagen held, firstly, that there was similarity between the marks, despite the fact that the mark elements were weak and there were phonetic differences. It stated that if MEDICON and MEDICONNECT were used for the same services or goods, MEDICON could stop the use of MEDICONNECT. However, the court found that the services were not similar. Even though specialist doctors used both MEDICON and MEDICONNECT, the purchasers of the services were different. MEDICON was purchased by the pharmaceutical industry, while MEDICONNECT was purchased by the county social service departments. The services, albeit both health related, were clearly distinct in the marketplace. Consequently, because there was no risk of confusion, MEDICON could not enjoin the use of MEDICONNECT.212 V.A. Domain Names The Danish Supreme Court has issued its first ruling relating to domain name registration. The Court affirmed a lower court’s ruling that the passive registration of a domain name is commercial “use” that infringes the Danish unfair competition legislation because it blocks the plaintiff from using the domain name. Plaintiff is a leading toy distributor in Scandinavia, and its BR retail stores are well known in Denmark. It is the registered owner of the BR trademark. Defendant, a website development company, registered the domain name br.dk in 1998 but never used it, maintaining that it had registered the domain name for a third party and was holding it for use in relation to another project. Plaintiff brought a complaint before the Maritime and Commercial Court of Copenhagen, claiming that the domain name registration infringed its rights. It pointed out that defendant had also registered xerox.dk at about the same time and had been forced to relinquish this domain name by court order. A material segment of the population would search for plaintiff at br.dk and discover that the site was not in use, thereby causing damage to plaintiff. Passive registration (i.e., registration without use) is a commercial use in contravention of the Danish unfair competition legislation. On appeal, the Danish Supreme Court affirmed the decision. The Court noted that the fact that defendant had registered and had been forced to surrender xerox.dk was relevant evidence; it reasoned that defendant had registered br.dk for the 212. Medicon A/S v. Mediconnect, Ugeskrift for Retsvaesen 2004.610 S. Vol. 95 TMR 369 purpose of selling it to plaintiff in contravention of Section 1 of the Marketing Practices Act.213 Registered trademark rights, in particular the five-year grace period in the use requirement, were decisive in a domain name case concerning an accidentally non-renewed domain name. Complainant Createam A/S, an advertising agency, registered the trademark CREATEAM in 1972. Following a merger, the complainant ceased use of the CREATEAM mark in 2000 and began trading under the name MANTRA. Complainant had made use of the domain name createam.dk, which, following the merger, redirected Internet users to the MANTRA website. However, complainant failed to notify the domain name registrar of the change in its contact details, and its createam.dk registration was cancelled for lack of payment of the renewal fee. In January 2003, the domain name was registered by the respondent, CreaTeam, who started using it for a competing advertising agency. Complainant argued that the disputed domain name infringed its rights in the registered CREATEAM trademark. The Danish Complaints Board for Domain Names upheld the complaint and ordered the domain name transferred to the complainant. The Board stated that because complainant had last used its mark as late as the year 2000, the trademark registration was still enforceable because registered marks benefit from a nonuse protection period lasting five years. Thus, the domain name was transferred to the complainant, even though the complainant no longer used the trademark and had not done so for about three and a half years.214 Distributors and in particular ex-distributors have no rights to Danish domain names corresponding to the trademark of the distributed products. Complainant, a Dutch company, manufactures tanning equipment and related products under the marks ALISUN, ALLURA, AMBIANCE and SUNVISION. However, only SUNVISION was registered as a trademark in Denmark. Respondent was complainant’s general distributor in Denmark for 16 years, and had registered the domain names alisun.dk, allura.dk, ambiance.dk and sunvision.dk. The domain names were used to redirect Internet users to respondent’s own website. Complainant terminated the distribution agreement with respondent and set up its own Danish subsidiary. Respondent refused complainant’s request to transfer the four domain names, 213. Top-Toy A/S v. Icom Data ApS, Ugeskrift for Retsvaesen 2004.1561 H. 214. Createam A/S v. CreaTeam, DIFO Complaints Board for Domain Names decision of January 23, 2004, in Case No. 371, published at http://www.domaeneklager.dk/. 370 Vol. 95 TMR citing, among other things, its need to use them for continuing to service the tanning equipment that had been sold under the distribution agreement, and the fact that their use was sanctioned by the “spare parts” and exhaustion rules in Sections 5 and 6 of the Danish Trademark Act. The Danish Complaints Board for Domain Names found, firstly, that complainant held common-law rights in the three unregistered trademarks as a result of its use of the marks. The Board then cited the European Court of Justice’s decision in BMW v. Deenik215 and held that the “spare parts” and exhaustion restrictions do not permit use of the trademark in a way that gives the impression that there is a commercial relationship between the distributor and the trademark owner. In this case, the use of the domain names identical to the trademarks gave the misleading impression that the use was authorized by the trademark owner, which was no longer the case after the expiration of the distributorship agreement. Accordingly, the Board ordered the transfer of alisun.dk, allura.dk, ambiance.dk and sunvision.dk to the complainant from its former distribution agent.216 Similarly, the Board has ordered the transfer of the domain name bmwimport.dk after finding that its registration by the importer of used BMW cars breached the Danish Trademarks Act and Marketing Practices Act. Complainant is the authorized Danish distributor of the well-known BMW trademark. Respondent registered bmwimport.dk as a portal directing Internet users to its website, hosted under the domain name autoformidleren.dk. The website’s homepage displayed, among other things, the picture of a BMW car and the text “BMW special import and styling.” Complainant sought transfer of the domain name bmwimport.dk on the grounds that it has exclusive rights to the BMW mark in Denmark under the terms of its dealership agreement and the domain name was confusingly similar to the corporate name of its subsidiary BMW Import A/S. The Board found that BMW is a well-known mark and that BMW was the dominant element of the domain name at issue. Further, the domain name was identical to the corporate name of complainant’s subsidiary. Accordingly, the Board found that the 215. ECJ Case C-63/97 [1999] ECR I-905. 216. Mercuria Beheer BV v. Dan-Sun Europe ApS, Case Nos. 334-37, DIFO Complaints Board for Domain Names decision of December 15, 2003, published at http://www.domaeneklager.dk/. Vol. 95 TMR 371 registration of bmwimport.dk breached Section 4 of the Trademarks Act and Section 5 of the Marketing Practices Act.217 ECUADOR I.B.11.a. Copyright Protection Ecuadorian legislation regarding copyright matters is based on Decision 351 of the Cartagena Agreement Commission (Common Regime on Copyrights and Related Rights) and the Intellectual Property Law of May 19, 1998. Through those instruments, the Ecuadorian State has established that authors and other rights holders of works of talent involving literature, arts or science, regardless of genre or means of expression, and regardless of their merit, will have appropriate and effective protection over their works. Specifically, the Intellectual Property Law establishes mechanisms for inspecting, overseeing and penalizing administratively and judicially anyone who infringes those rights and, consequently, for preventing and curbing any violations of the holders’ intellectual property rights. Based on the foregoing, in 2002 Mr. Joao Scognamiglio brought an action for administrative guardianship218 before the Ecuadorian administrative authorities against Sociedade Brasileira de Defensa da Tradiçao Familia e Propiedade. Mr. Scognamiglio, a Brazilian national, is the author of several works of art of a religious content registered in Brazil, Ecuador and other countries. Among those works are “Design for the Cross of Santiago” and “Ceremonial Attire or Vestments.” The respondent company, not being one of those expressly authorized by the rights holder, obtained registration in Ecuador of the mark DISEÑO DE TRAJE DE GALA that includes a design identical to the one being protected by Mr. Scognamiglio’s copyright in Ecuador. Mr. Scognamiglio brought an action for administrative guardianship to prohibit the rights derived from the registration of the mark from being used to preclude the licensee of copyrights in Ecuador from his legitimate enjoyment of copyright protection. Parallel to this, the corresponding actions were brought to obtain nullity of the registration of the mark unduly granted. Sociedade Brasileira de Defensa da Tradiçao Familia e Propiedade focused its defense on the rights acquired through registration of the mark DISEÑO DE TRAJE DE GALA219 and on 217. NIC Christiansen Gruppen v. Autoformidleren, Case No. 310, DIFO Complaints Board for Domain Names decision of June 3, 2003, published at http://www.domaeneklager.dk/. 218. Copyrights Office docket No. 013-02 dated August 2, 2002. 219. Industrial Property Office docket No. 5361-02. 372 Vol. 95 TMR certain evidence of use of the disputed mark. Nonetheless, the resolution from the administrative authority (December 23, 2002) held that a copyright is independent, compatible and cumulative— among other aspects—with any industrial property rights that might exist on the work. Therefore, in cases like this one where different rights holders with diverging interests exist for the same creation (one on the figurative work as a mark and the other on the same work by reason of copyright), it is necessary to resort to proof of the work’s pre-existence based on prior filings by Mr. Scognamiglio as its author. Because a copyright is an absolute right and because there is no evidence proving fully and convincingly that Mr. Scognamiglio is not the author, his legal entitlement was presumed and, therefore, by virtue of his right on the mark, it was resolved to prevent Sociedade Brasileira de Defensa da Tradiçao Familia e Propiedade from exercising any actions that might interfere with Mr. Scognamiglio’s copyright and on the rights of the entities authorized by him. The resolution confirmed the copyright alleged by Mr. Scognamiglio on his works and, therefore, Mr. Scognamiglio is legitimately protected for the free exercise of his copyright. However, the action of nullity220 against registration of the mark DISEÑO DE TRAJE DE GALA by Sociedade Brasileira de Defensa da Tradiçao Familia e Propiedade is still pending resolution. Hence, until a definitive pronouncement from the competent authority is issued, both rights coexist. III.A.2.b. Similarity of Marks An action for administrative guardianship is a process filed with the Ecuadorian Intellectual Property Institute (IEPI) to determine the existence of an infringement against an industrial property right and to prevent its continuation. IEPI is empowered to inspect such occurrence and to penalize it with preventive and definitive actions, such as physical seizure of goods, removal of signs and imposition of fines. The mark KIDDIE is registered in Ecuador according to certificates Nos. 2378-98 and 2379-98 to protect a large number of products comprised in International Classes 1 and 9. The owner of the mark filed an action221 for administrative guardianship against Carburos y Herramientas Carher Compañia Limitada on the ground that the latter was selling fire extinguishers manufactured in China and identified with the mark KIDDY. Since the name was extremely similar to the trademark KIDDIE and was used to identify identical products, the plaintiff 220. Intellectual Property Committee docket No. 02-194 RVM dated August 29, 2002. 221. Industrial Property Office docket No. 217-2003-JPM. Vol. 95 TMR 373 held that it necessarily created confusion and association in the market, dilution of the protected mark’s distinctive character, as well as damages. The action was based on Article 155 of Andean Community Decision No. 486. This article states that registration of a mark gives its holder the right to prevent third parties from conducting the following acts without the holder’s consent: (a) To put or place the mark or an identical or similar distinctive sign on products for which the mark has been registered, on products relating to the services for which it has been registered, or on the containers, wrappings, packages or packing crates of such products. (d) To use in commerce a sign identical or similar to the mark with respect to any products or services if such usage could bring about confusion or a risk of association with the holder of the registration. In the case of an identical sign used for identical products or services, the risk of confusion is to be presumed. (e) To manufacture labels, containers, wrappings, packaging or other materials reproducing or bearing the mark, as well as to market or to unlawfully keep those materials. In the documents submitted for its defense as well as in the letter to the holder of the mark, the defendant repeatedly admitted that he sold KIDDY fire extinguishers but that he believed this not to violate any rights due to several considerations that were not even analyzed by the authority. One of these was that the extinguishers did not bear the infringing mark. According to Resolution No. 982146 dated July 21, 2003, from the National Industrial Property Director, and confirmed with the resolution issued by the Committee on Intellectual and Industrial Property and Plant Varieties on July 29, 2004, the action for administrative guardianship was admitted, and it was ordered to definitively seize all inventory boxes bearing the mark KIDDY, while releasing the products (fire extinguishers) because they did not bear the mark. EL SALVADOR I.A.2. Assignments In April 1995, the Uruguayan company Sidela S.A. filed an application to register POXIPOL & Design to protect goods in International Class 1. The Intellectual Property Department denied the registration because the word mark POXIPOL had been registered in the name of Akapol S.A.C.I.F.I. & Agropecuaria in 1980. On appeal, the National Bureau of Registries revoked the Intellectual Property Department’s denial of registration, noting 374 Vol. 95 TMR that the word mark had been assigned by Akapol to Sidela after the date of the denial resolution.222 I.B.1. Generic Names E.I. Du Pont de Nemours and Company filed an application to register TEFLON to protect goods in International Class 21. The Intellectual Property Department denied registration based on the fact that the word TEFLON is considered a term of general use to identify a very resistant material that covers the surface of cooking devices. A registration certificate from Great Britain and Ireland, plus a list of countries where the mark is registered, were used as evidence, but the National Bureau of Registries, on appeal, confirmed the denial by the Intellectual Property Department, establishing that the word TEFLON appears in several Spanish dictionaries as the common name of a special material used to cover the surface of cooking utensils and implements.223 I.B.8.a. Similarity of Marks The Spanish company Laboratorios Menarini S.A. opposed the registration of KELAFER filed by the Guatemalan company Laboratorio y Droguería Donovan Werke A.G.S.A. to protect pharmaceuticals in International Class 5. On appeal, the National Bureau of Registries confirmed the admission of the opposition by the Intellectual Property Department because of the similarity of KELAFER and MENAFER, a mark previously filed by the Spanish company.224 I.B.9.a. No Similarity of Marks Laboratorios Rowe C. por A., a Dominican company, filed an application to register VIRIDIL for pharmaceutical products in International Class 5. The Intellectual Property Department denied registration owing to the similarity of the mark to HYBRIDIL, previously registered by Boehringer Mannheim GmbH. On appeal, however, the National Bureau of Registries revoked the denial of registration, finding no similarity between VIRIDIL and HYBRIDIL.225 222. National Bureau of Registries, Resolution dated October 30, 2003. Certification to Intellectual Property Department (Registry of Commerce) dated November 19, 2003. 223. National Bureau of Registries, Resolution dated December 15, 2003. Certification to Intellectual Property Department (Registry of Commerce) dated January 14, 2004. 224. National Bureau of Registries, Resolution dated April 29, 2004. Certification to Intellectual Property Department (Registry of Commerce) dated May 14, 2004. 225. National Bureau of Registries, Resolution dated March 31, 2004. Certification to Intellectual Property Department (Registry of Commerce) dated May 5, 2004. Vol. 95 TMR 375 I.B.12. Famous Marks The Colombian company Ladecol, S.A. filed an application to register PROTEX to protect goods in International Class 17. Colgate-Palmolive Company opposed the registration based on the fact that PROTEX is a famous and notorious mark worldwide for products in International Class 3. Registration certificates of the mark from many countries and advertisements were introduced as evidence to prove notoriety. The Intellectual Property Department denied the opposition because Ladecol, S.A. limited the products to industrial gloves. The National Bureau of Registries, on appeal, revoked the denial of the opposition, finding that PROTEX was a famous and notorious mark in El Salvador and that another, identical mark for different products would cause confusion among consumers as to the trademark’s origin.226 I.B.22. Distinctiveness Société des Produits Nestlé S.A. filed an application to register the slogan LA PASION POR EL CHOCOLATE (Spanish for THE PASSION FOR CHOCOLATE) to attract the attention of consumers to all its chocolate products. On appeal, the National Bureau of Registries confirmed the Intellectual Property Department’s denial of registration of the slogan for lack of distinctiveness.227 III.H.2. Amendments to Registrations The Swiss company Omega S.A. registered the trademark OMEGA to protect goods in International Class 14. The domicile on the certificate was Berne, Switzerland, instead of Bienne, Switzerland, and the Intellectual Property Department denied the certificate amendment because of the fact that it was not the Department’s mistake and that an amendment could be made only to the trademark or the products. The National Bureau of Registries, on appeal, revoked the denial of amendment of the certificate of the Intellectual Property Department because the power of attorney document had the domicile of Bienne, Switzerland, and a correct interpretation of the local law admits amendments to the domicile.228 226. National Bureau of Registries, Resolution dated January 6, 2004. Certification to Intellectual Property Department (Registry of Commerce) dated May 5, 2004. 227. National Bureau of Registries, Resolution dated December 3, 2003. Certification to Intellectual Property Department (Registry of Commerce) dated December 23, 2003. 228. National Bureau of Registries, Resolution dated January 6, 2004. Certification to Intellectual Property Department (Registry of Commerce) dated January 14, 2004. 376 Vol. 95 TMR ESTONIA I.B.2. Merely Descriptive Terms Unilever N.V. applied for registration of the design mark SLIM·FAST in Classes 5, 29, 30 and 32. The Patent Office granted registration of the trademark, but with a disclaimer for the word combination “Slim·Fast.” The Patent Office explained that the sign was merely descriptive, indicating the purpose of the goods.229 Unilever N.V. contested the decision of the Patent Office before the Board of Appeal of Industrial Property, arguing that its trademark did not describe but only hinted at the purpose of the goods. The complainant did not agree with the explanations of the Patent Office and instead compared SLIM·FAST to the mark in the famous BABY-DRY case, decided by the European Court of Justice.230 Its main arguments were that the word combination “Slim·Fast” was not a grammatically correct expression in English, that the trademark SLIM·FAST did not describe but only hinted at the purpose of the goods and that the dot between the words “Slim” and “Fast” was not a common punctuation mark but instead served as a design element. Having examined the case and heard the explanations of both parties, the Board of Appeal dismissed the appeal.231 This is not the final decision in this case, however, as Unilever N.V. has appealed the Board’s ruling to the Administrative Court of Tallinn. I.B.11.e. Bad Faith The enlargement in 2004 of the European Union indicated the necessity for continuing the court practice of resolving disputes concerning trademark applications filed in bad faith, as the law does not prescribe the criteria for proving bad faith. According to Article 8, Section 1.10 of the Estonian Trademark Act, a mark may not be registered as a trademark if it is identical to a trademark registered and in use in another country and if the application for registration is filed in bad faith. Pursuant to the wording of the provision, the registration application will be refused if the following criteria are present: (1) another person’s identical trademark (2) is registered and in use in another country and also in use there and (3) the applicant demonstrates bad faith at the time the application is filed. 229. Decision No. 7/M200001753, Patent Office. 230. Case C-383/99, September 20, 2001, 2001 E.C.R. I-6251. 231. Decision No. 557-o, Board of Appeal of Industrial Property, Ministry of Economic Affairs and Communications, April 21, 2004. Vol. 95 TMR 377 In Gulf International Lubricants Ltd. v. Gulf Oil Estonia AS,232 the Administrative Court of Tallinn followed the earlier decision of the District Court of Tallinn for the criteria for proving bad faith.233 It is expected that these criteria will become the rule in subsequent cases. Gulf Oil Estonia AS applied to register the word GULF and a logo for several services in Class 35, particularly the retailing and wholesaling of oil-based fuel and lubricants. Gulf International Lubricants Ltd. brought opposition proceedings before the Board of Appeal of Industrial Property, claiming that it owned a number of registrations in several countries for an identical trademark for goods in Class 4 (oil-based fuels, lubricants, etc.). It also claimed that its trademark was well known in Estonia because of the length of time it had been used in various countries (but not in Estonia) and that the application of Gulf Oil Estonia AS had been filed in bad faith. The Board of Appeal agreed with Gulf International and refused the registration.234 It held that Gulf International’s mark was well-known in Estonia and that the application had been filed in bad faith because the trademarks were identical and a board member Gulf Oil Estonia AS with links to the Netherlands should have been aware of the GULF mark and its notoriety in the Benelux countries. Gulf Oil Estonia AS appealed the decision to the Administrative Court of Tallinn, and the appeal was partially allowed. The court agreed with Gulf Oil Estonia AS that the evidence submitted by Gulf International Lubricants Ltd. did not prove the notoriety of the GULF mark and logo in Estonia at the time the application of Gulf Oil Estonia AS was filed. As for the finding that the application had been filed in bad faith, however, the court agreed with the decision of the Board of Appeal. Following the ruling of the District Court of Tallinn, the Administrative Court noted that Article 8, Section 1.10 of the Estonian Trademark Act refers only to identity of trademarks, and identity of goods or services is not relevant. As the law does not prescribe any criteria for determining bad faith in filing an application, the court held that the determination should be based on the function of the trademark and the purpose for which registration of the trademark is sought. Thus, the court concluded that an application is filed in bad faith if the applicant knows of an identical trademark belonging to another person and in use in 232. Case No. 3-237/2004, Administrative Court of Tallinn, March 31, 2004. 233. Case No. 2-3/549/2003, District Court of Tallinn, October 3, 2003. 234. Decision No. 501-o, Board of Appeal of Industrial Property, Ministry of Economic Affairs and Communications, March 12, 2003. 378 Vol. 95 TMR another country and the application is filed for the purpose of obtaining the other person’s trademark. In determining bad faith, the applicant’s intention to make use of the notoriety of another person’s mark cannot serve as a basis. The court held that Gulf International Lubricants Ltd.’s GULF mark constituted a unique and highly distinctive trademark and that it was not likely to have been copied by chance. Furthermore, given the distinctiveness and international notoriety of the trademark and the presence on Gulf Oil Estonia AS’s board of a member who should have been aware of that distinctiveness and notoriety, the court was convinced that the registration application was not filed in good faith. The court found that the applicant’s intention in registering the GULF mark in Class 35 in the name of Gulf Oil Estonia AS was to take advantage of the distinctiveness and notoriety of the other firm’s trademark in its own business interests. I.B.21. Trade Names The Administrative Court of Tallinn has ruled that Article 8 of the Paris Convention cannot be relied on directly in trademark registration disputes. Taevaraadio AS applied for registration of the trademark KISS FM for radio broadcasting, radio entertainment and production of radio programs. Helsingin Radioviestintä Oy and Helsinkin Paikallinen Radio Oy opposed the trademark registration, relying, inter alia, on Article 8 of the Paris Convention. The opponents claimed that the trademark KISS FM should not be registered, as it was an auxiliary trade name of Helsingin Paikallinen Radio Oy. The court found that Article 8 of the Paris Convention cannot be relied on directly.235 According to Article 8, 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. Professor Bodenhausen, in his guide to the application of the Paris Convention,236 concluded that although Article 8 prescribes that a trade name must be protected, it does not specify how such protection must be given. Member states are free to regulate such protection, either by special legislation, by legislation against unfair competition or by other appropriate means. 235. Case No. 3-420/2004, Administrative Court of Tallinn, June 22, 2004. 236. G. H. C. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967 (Geneva: United International Bureaux for the Protection of World Intellectual Property (BIRPI), 1968). Vol. 95 TMR 379 Therefore, the court considered that Article 8 incorporates an obligation for the states to regulate the question in their national law. According to the Estonian Commercial Code, a trade name is a name entered into the Commercial Register, and an undertaking can have only one trade name. In addition, a trade name has to include an attribute referring to the type of undertaking. The court ruled that it was clear, from the extract of the Finnish Commercial Register, that the trade name of the opponent was Helsingin Paikallinen Radio Oy. That trade name corresponded to the requirements and definition of a trade name— under Estonian law. KISS FM was an auxiliary trade name used for radio broadcasting in the Helsinki, Turu, Tampere and Oulu regions. The court concluded that because Estonian law provides that an undertaking registered in the Commercial Register cannot have an auxiliary trade name or a second trade name, it was fair and logical that the state should not grant broader protection to a foreign trade name or an auxiliary trade name than to a national trade name. EUROPEAN COMMUNITY I.B.2. Merely Descriptive Terms In KPN Nederland,237 the European Court of Justice (ECJ) ruled on a host of questions referred to it by the Dutch court in relation to Article 3(1)(c) of the European Community (EC) Trade Marks Directive238 (non-registrability of descriptive marks). The mark in question was POSTKANTOOR (“post office”), which KPN had applied to register in respect of, amongst other things, paper, postage stamps, telecommunications, technical information and advice. The key point that can be distilled out of the judgment is that where a mark consists of a number of descriptive elements, the mark itself must be considered descriptive unless there is a perceptible difference between the mark and its components such that the mark creates an impression that is sufficiently far removed from that produced by the mere combination of meanings of the separate elements of which it is composed, with the result that the word is more than the sum of its parts. If the word has acquired its own meaning, independent of its own components, it is then necessary to consider whether the word has itself become descriptive and therefore still contravenes Article 3(1)(c). The ECJ 237. KPN Nederland v. Benelux-Merkenbureau, Case No. C-363/99, February 12, 2004, [2004] ETMR 57. 238. First Council Directive 89/104/EEC of December 21, 1988. 380 Vol. 95 TMR also stated that the existence of alternative descriptive synonyms is irrelevant for the assessment of Article 3(1)(c), as is the fact that the characteristics of the goods or services the subject of the description may be commercially essential on the one hand or merely ancillary on the other. On the same day, the ECJ gave a very similar judgment in Campina239 when it stated that a neologism composed of two or more descriptive parts need not use the parts in a descriptive way as long as they could be used in such a way. Such a mark must be viewed as a whole and refused registration if any possible meaning was descriptive under Article 3(1)(c). A neologism would escape refusal only if it could be shown to produce a different impression, both aurally and visually, that was sufficiently removed from the descriptive elements. The ECJ stressed the public interest in ensuring that signs descriptive of the characteristics of goods or services should be freely available to all to use when describing those characteristics. The case concerned the application to register BIOMILD in respect of foods, including milk products. I.B.5. Personal Names The UK Trade Mark Registry refused to register the mark NICHOLS as a trade mark for foodstuffs because it was a common surname and as a result was considered to be devoid of distinctive character. The UK High Court referred the matter to the ECJ for guidance. The ECJ’s judgment broadly follows the opinion of Advocate General Colomer.240 The UK court queried what circumstances, if any, would result in a single surname’s being refused registration for being devoid of distinctive character under Article 3(1)(b) of the EC Trade Marks Directive. In particular, must or may such a mark be refused registration before it has acquired distinctive character if it is a common surname in the member state where registration is sought (or in one or more other member states)? Should national authorities take into consideration the presumed expectations of average customers in relation to those goods and services in the member state in question, considering the commonness of the surname, the nature of the goods or services and the prevalence of the use of such surnames in the relevant trade? The UK High Court went on to query the interpretation of Article 6(1)(a) of the Directive and whether it should be taken into account when considering the distinctiveness of the applied-for mark. 239. Campina Melkunie v. Benelux-Merkenbureau, Case No. C-265/00, February 12, 2004, [2004] ETMR 58. 240. Nichols v. UK Registrar of Trade Marks, Case No. C-404/02, September 16, 2004, [2004] ETMR 48 (ECJ), and 94 TMR 387 (2004) (AG Colomer opinion). Vol. 95 TMR 381 The ECJ referred to Article 2 of the Directive, which expressly states that a trade mark may consist of a personal name provided the particular name is capable of distinguishing goods or services of one undertaking from those of other undertakings. In essence the ECJ stressed that a stricter test should not be applied to these types of marks. The criteria for assessing distinctiveness of a surname as a trade mark are no different from those of other trade marks. Therefore, when assessing distinctive character, the national court should take into account the particular goods or services in respect of which the registration was applied for and the perception of the relevant consumers. Criteria such as whether the number of people having that surname listed in a directory exceeds a predetermined number, the number of undertakings providing products or services of the type covered by the trade mark application and the prevalence or otherwise of use of surnames in that particular trade should not be determinative. However, these factors may each be relevant in assessing the distinctive character of the mark on an individual basis. Further, there should not be an assumption that such marks require distinctive character acquired through use under Article 3(3) to be registrable. A refusal of registration cannot be justified by a desire to prevent advantage to the first applicant for the name, as there is no basis for such an approach provided by the Directive. The purpose of Article 6(1)(a) is to limit the rights of the mark after registration, once distinctive character has been established, for the benefit of operators with a name similar or identical to that mark. Article 6(1)(a) is, therefore, not to be taken into account for the purposes of asserting distinctive character before registration. I.B.7.b. Three-Dimensional Marks In Henkel,241 the German Bundespatentgericht referred to the ECJ three questions relating to the shape of packaging and the interpretation of distinctiveness under Article 3(1)(b) of the EC Trade Marks Directive. The ECJ gave guidance regarding the extent that national tribunals should take note of the registration or refusal of registration of similar marks in other member states. Henkel applied to register a German trade mark comprising a coloured bottle for liquid washing detergent. The ECJ held that the shape of packaging was equivalent to the description of the shape of goods in the Directive for purposes of Article 3(1)(e), and that shapes were also appropriate for consideration under Article 3(1)(c), which concerns marks “which consist exclusively of signs or 241. Henkel, Case No. C-218/01, February 12, 2004 (unreported). 382 Vol. 95 TMR indications which serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin…or other characteristics of the goods or services.” When determining distinctiveness, the ECJ reiterated the requirement that a mark must be capable of distinguishing one party’s goods from another. Referring back to its judgment in Libertel,242 the ECJ repeated its view that consumers generally do not associate the shape of goods with an indication of origin, whereas they are more likely to do so in respect of word marks or logos. However, this assertion does not appear to have been based on any evidence before the ECJ: Henkel’s survey evidence was not considered even though it indicated the opposite. In addition, the ECJ held that a national court could consider decisions made by the tribunals of other member states in relation to the registration of identical-shape trade marks for identical goods, but that such consideration was not determinative. However, it was not appropriate to do so in the case of decisions relating to similar marks for similar goods. This judgment appears to be judicial notice that in the view of the ECJ the public does not readily perceive shape marks as an indication of origin. However, as stated in the Nichols243 case, the fact that a mark relates to a surname, or in this case a shape, should not mean that it is assessed on criteria different from those for any other marks. The ECJ’s view that consumers see shape marks differently from personal names means that it will continue to be difficult to register three-dimensional shapes as trade marks. I.B.20. Color On June 24, 2004, the ECJ considered whether abstract, undelineated colour marks could be considered “signs” capable of graphical representation under Article 2 of the EC Trade Marks Directive. The German Bundespatentgericht referred a number of questions to the ECJ for a preliminary ruling.244 At issue was whether an application for registration covering a combination of colours, without contours but in shades referenced to a colour sample and to a recognised colour classification system, could satisfy conditions for constituting a trade mark under Article 2. In particular, could an abstract colour mark be considered capable of indicating origin and capable of graphical representation? Heidelberger had applied to register the colours blue and yellow, in relation to products used in the building trade, as a 242. Libertel Groep v. Benelux Trade Mark Office, Case No. C-104/01, [2003] ETMR 63. See 94 TMR 389 (2004). 243. See I.B.5. Personal Names. 244. Heidelberger Bauchemie, Case No. C-49/02, June 24, 2004, [2004] ETMR 99. Vol. 95 TMR 383 German trade mark. The application included a reproduction of the mark on a rectangular piece of paper, the upper half being coloured blue and the lower half coloured yellow. The description of the mark accompanying the application stated that “the trade mark applied for consists of the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels.” The ECJ confirmed that a combination of colours or colours by themselves in the abstract and without contours could constitute a trade mark for the purposes of Article 2. However, this was dependent upon establishing that the colours or the combination of colours constituted a mark in the context in which they were being used. Further, the application for registration needed to include a systematic arrangement associating the colours in a predetermined and uniform way. The ECJ noted that even where a colour mark can be registered in accordance with Article 2, it is still necessary for the application to comply with the other registrability requirements, in particular those under Article 3. When assessing registrability, account must be taken of all the relevant circumstances, including any prior use of the mark and the public interest in not unduly restricting the availability of colours for other traders. III.A.10. Nonuse of Trademark In proceedings relating to the revocation of a trade mark on the ground of lack of genuine use,245 the UK High Court referred to the ECJ seven questions on the interpretation of “genuine use” under Articles 10(1) and 12(1) of the EC Trade Marks Directive. The Court queried (1) what factors should be taken into account when deciding whether a mark has been put to genuine use; (2) whether the extent of use of the mark in relation to the specific goods and services for which the mark is registered should be considered; (3) if any amount of use, however small, could be sufficient provided it was made for no purpose other than commercially dealing in the goods or providing the services; (4) if not, what test should be used for determining how much use is sufficient, and whether the nature and size of the business should be taken into account; (5) whether token or sham use should be discounted from consideration (this question was subsequently withdrawn); (6) what types of use could be validly considered and whether such use must be in the course of trade; and (7) whether using trade marks subsequent to the filing of an application for revocation could be considered. 245. La Mer Technology v. Laboratoires Goemar, Case No. C-259/02, January 27, 2004, [2004] ETMR 47. 384 Vol. 95 TMR La Mer Technology wished to market toiletries and cosmetics in the UK under the mark LA MER. Laboratoires Goemar was the proprietor of two UK trade marks consisting of the words LABORATOIRES DE LA MER that were registered for goods it was marketing (including Class 3 goods for cosmetics, among which marine products). However, Laboratoires Goemar had not made very extensive use of its marks in the market, and in fact, in the five years prior to the application for revocation, it had only generated about GBP 800 from the sale of its LABORATOIRES DE LA MER products to a distributor established in Scotland, Health Scope Direct. The UK High Court held that Laboratoires Goemar’s low turnover did not mean that the trade marks had merely been used for the purpose of maintaining the trade mark registration and therefore did amount to genuine use. However, the High Court noted that Laboratoires Goemar had appointed a new distributor following the end of the five-year period from registration of the mark (the alleged period of nonuse of the trade marks) and subsequent to La Mer Technology’s revocation application. The main question in the case was whether, in these circumstances, Laboratoires Goemar’s trade marks had been put to “genuine use” pursuant to Articles 10(1) and 12(1) of the Directive. The ECJ referred to its earlier answers in the Ansul case246 in respect of questions (1) to (4) and (6) above and confirmed that genuine use of a trade mark is made when it is used to perform its essential function, namely to guarantee the identity and origin of the goods or services in question so as to create an outlet for those goods or services. Therefore, genuine use could not extend to internal use or to use made solely to preserve trade mark rights or defeat revocation applications. In assessing the use of the trade mark in question, the ECJ stated that regard should be had to all the facts and circumstances of the case, including the market and type of goods and products in question. It should also be considered whether the use was warranted in the economic sector concerned “to maintain or create a share in the market for goods and services protected by the mark.” Minimal use of a trade mark would not therefore necessarily prevent a finding of genuine use. In answering question (7) in respect of use of a mark subsequent to an application for revocation, the ECJ stressed it was for the national court to decide whether or not such use was genuine. Subsequent trade mark use is not necessarily precluded from consideration, as it may be helpful in determining whether 246. Ansul, Case No. C-40/01, [2003] ECR I-2439. Vol. 95 TMR 385 use of the mark prior to the application for revocation was genuine.247 III.F.1. Forfeiture In Bjornekulla,248 the ECJ stated that, despite the wording of some different language versions of the EC Trade Marks Directive, end user perceptions will always be relevant in determining whether a registered trade mark has become a generic term “in the trade” for the product in respect of which the mark is registered. In this case, Bjornekulla sought revocation of the mark BOSTONGURKA, alleging that it was now used as a common name for chopped pickled gherkins, as was illustrated by consumer market research surveys it had obtained. The ECJ stated that where there are intermediaries involved in distribution, both the perceptions of the final consumer and (depending on the particular characteristics of the market) the views of those dealing with the product commercially are important when assessing whether a mark has become a generic term for the particular product for which it is registered. In coming to this conclusion the ECJ noted that due consideration had to be given to the different language versions of Article 12(2)(a), some of which seemed to restrict the consideration to trade circles and some of which referred to trade circles and consumers. This decision is another interesting example of the dangers of a national court’s interpreting the Directive too literally. Although Article 12(2)(a) refers to a mark being at risk of revocation if it is a common name “in the trade,” the ECJ said that the purpose of the provision was to enable a mark that was no longer capable of fulfilling its essential function (which is to guarantee the identity of the origin of the marked goods to the consumer by enabling him, without any possibility of confusion, to distinguish the goods from others which come from another source) to be removed from the register. Consequently, consideration must be given not only to the views of those strictly “in the trade” but also to the end consumers 247. The case was remitted to the UK High Court, which held that a proprietor’s intention to use the mark in the market is in itself insufficient to lead to a finding of genuine use, where use of the mark in fact was too minimal to create or maintain a share in the market. The argument that importation of goods by the trade mark proprietor must be sufficient to establish genuine use, as such an act without consent would constitute trade mark infringement under Article 5(3), was rejected. Different objectives are served by Articles 5(3), 10(1) and 12(1). Under the latter, importation could be considered akin to internal use. On the facts, there was no evidence that the distributor had ever tried to offer the goods for sale or bring them to the notice of the general public. The trade mark registration was therefore wholly revoked for nonuse. December 21, 2004, [2004] EWHC 29960 (Ch). 248. Bjornekulla Fruktindustrier v. Procordia Food, Case No. C-371/02, April 29, 2004, [2004] ETMR 69. 386 Vol. 95 TMR of the product. A more extreme example of this purposive approach can be found in the ECJ’s decision in Davidoff v. Gofkid249 concerning Article 5(2). There, the ECJ explicitly warned that “the Directive must be interpreted not solely on the basis of its wording, but also in the light of the overall scheme and objectives of the system of which it is part.” This appears to be the first time that the ECJ has been asked to consider the problem of a previously distinctive mark’s having become generic. However, there is a fine line between using a mark in ways that will secure maximum public recognition (whether it be through trade or in consumer circles) and uses that “genericise” a mark, thereby depriving an organisation of what might be one of its key assets. III.J. Gray Marketing In its judgment in Peak Holding v. Axolin-Elinor,250 the ECJ considered the interpretation of exhaustion of rights provisions of Article 7(1) of the EC Trade Marks Directive. Peak Performance wished to prevent the sale of original clothing bearing the PEAK PERFORMANCE trade mark in Axolin-Elinor’s “Factory Outlet” stores. Peak Performance imported the clothing into the EEA and offered it for sale. The unsold stock was later sold by Peak Performance to a French undertaking, COPAD International. The contract of sale to COPAD stipulated that the items were to be put on a market outside the EEA, although up to 5 percent could be sold in France. The ECJ was asked by the Swedish court to consider whether the importation or offer for sale of the unsold goods meant that they had been “put on the market in the Community” for the purposes of Article 7(1) of the Directive such that the trade mark rights were exhausted and could not be relied upon to prevent resale within the EEA. The ECJ also considered the effect of contractual restrictions on further sales within the EEA. Prior decisions of the ECJ have protected the trade mark owner’s right to control initial marketing in the EEA of goods bearing the mark. The ECJ held that where the trade mark owner merely imports goods into the EEA, they have not been “put on the market” even if the purpose of the importation is sale in the EEA. Likewise, merely offering goods for sale to a third party does not come within the ambit of Article 7(1). However, actual sale to a third party in the EEA would exhaust a proprietor’s rights under Article 7(1) regardless of the terms imposed by the proprietor prohibiting future sale of the goods within the EEA: the goods are 249. Case No. C-292/00, January 9, 2003, [2003] ETMR 42. 250. Case No. C-16/03, November 30, 2004 (unreported). Vol. 95 TMR 387 to be regarded as “put on the market” even if the trade mark owner does not consent to their resale in the EEA. FINLAND I.B.5. Personal Names The Board of Appeal of the Finnish Patent Office annulled a decision of the National Board of Patents and Registration that had rejected the registration of the international mark OLSEN in Classes 18 and 25 by Olsen GmbH & Co. Kg.251 The National Board of Patents and Registration stated that Olsen is a surname in Finland, and therefore, the mark may give the impression that it is someone’s name. The Board of Appeal of the Patent Office held that the surname Olsen, which is used in Finland, is part of the applicant’s trade name Olsen GmbH & Co. Kg, and therefore, the applicant has the right to include the word in its trademark. The Board of Appeal of the Patent Office returned the matter to the National Board of Patents and Registration for re-examination. The Board of Appeal of the Finnish Patent Office reversed the decisions of the National Board of Patents and Registration, which had rejected the registration of the International trademarks NEIL BARRETT in Classes 3, 9, 14, 18 and 25 by Neil Barrett Barber252 and WIBERG in Classes 1, 18, 22, 29, 30 and 42 by Wiberg Besitz Gesellschaft M.B.H.253 designating Finland as both of the marks may give the impression that the mark is a person’s name. The Board of Appeal considered that the holder has the right to adopt his own name as his trademark without it giving the impression that another person’s name is used. The Board of Appeal then returned the matter to the National Board of Patents and Registration for re-examination. The Supreme Administrative Court annulled the decisions of the National Board of Patents and its Board of Appeal, which had rejected the application for registration of the trademark O.P.ANDERSON in Class 33 by V&S Vin & Sprit Aktiebolag due to the fact that the mark includes a surname used in Finland.254 251. Case 2001/T/11, The Board of Appeal of the Patent Office, December 4, 2002. 252. Case 2001/T/158, The Board of Appeal of the Patent Office, June 4, 2003. 253. Case 2001/T/153, The Board of Appeal of the Patent Office, May 5, 2003. 254. Case 1321/3/02, The Supreme Administrative Court, August 19, 2003. 388 Vol. 95 TMR The Supreme Administrative Court saw that the trademark O.P.ANDERSON could not be considered as a person’s name. The applicant had provided evidence according to which Carl Gustav Anderson had sold aquavit since 1971 under the name O.P.ANDERSON. The aquavit was named after his father who had died in 1876. Thus, the name referred to an historic person who had lived a long time ago. Also the said person was not well known in Finland. The Supreme Administrative Court stated that the applicant had also submitted as evidence a history of the company V&S Vin & Sprit AB for the years 1917-1942, which showed that the company was founded in 1917 with the purchase of Reymersholms Gamla Spritförädlings AB through which it also took over the company O.P.Anderson. Therefore, in the opinion of the Supreme Administrative Court, the company’s use of the trademark O.P.ANDERSON can be traced back to the company O.P.Anderson. I.B.8.a. Similarity of Marks The Finnish National Board of Patents and Registration and its Board of Appeal accepted the opposition filed by Partek Oyj Abp against the International trademark registration PARTEC in Classes 35 and 41 by Nürnber Messe GmbH.255 The registration was refused in Finland. The Board of Appeal of the Patent Office stated that the opposed International registration PARTEC differs from the known trademark PARTEK only by its last letter. The marks are deemed very similar, even identical by their pronunciation. The opponent’s trademark registration for the mark PARTEK covers several classes of goods and the trade name, in turn, covers many branches of industry. Therefore, the products sold under the said trademark are directed at several target groups and different marketing channels. According to the Board of Appeal, use of the mark PARTEC would result in an unjust advantage and would be harmful to the mark PARTEK. Therefore, the International trademark PARTEC is confusingly similar to the registered trademark PARTEK and the trade name Partek Oyj Abp. The Board of Appeal of the Finnish Patent Office annulled the decision of the National Board of Patents and Registration to reject the opposition filed by Benetton Group S.P.A. against the trademark registration COLOURS in Classes 9, 16, 18, 34, 41 and 42 by The London Tobacco Company Ltd. Benetton Group S.P.A. opposed the applicant’s mark COLOURS as confusingly similar to their trademark registrations 255. Case 2000/T/226, The Board of Appeal of the Patent Office, October 9, 2002. Vol. 95 TMR 389 Nos. 128446 COLORS, 206960 UNITED COLORS OF BENETTON (device), 206563 UNITED COLORS OF BENETTON (device), 111998 UNITED COLORS OF BENETTON and 200340 UNITED COLORS OF BENETTON. The Board of Appeal held the applicant’s mark to be confusingly similar to the opponent’s mark COLORS, which was registered for the same goods. However, the opponent’s mark No. 111998 UNITED COLORS OF BENETTON is not protected for the same or similar goods as the applicant’s mark, and therefore, there is no likelihood of confusion with the same. The other three UNITED COLORS OF BENETTON trademarks, both figurative and word marks, of the opponent cover the same goods as the opposed mark, but have only one word in common. The distinctiveness of the almost identical words COLOURS and COLORS is deemed weak. As a whole, the applicant’s mark COLOURS differs visually, phonetically and by its meaning so clearly from the opponent’s registered marks UNITED COLORS OF BENETTON that there is no likelihood of confusion merely on the basis of the term COLORS. Consequently, the Board of Appeal annulled the decision of the National Board of Patents and Registration solely on the basis of the opponent’s mark COLORS. I.B.8.b. Similarity of Goods/Services The Finnish National Board of Patents and Registration and its Board of Appeal rejected the application for registration of the trademark MIX MAX FLAKES in Classes 29 and 30 by Bio-Quelle Klaus Lösch Gesellschaft M.B.H.256 The mark was held confusingly similar to the earlier trademark registration MAX MIX, which is registered for the same goods. I.B.9.a. No Similarity of Marks The Board of Appeal of the Finnish Patent Office reversed the decision of the National Board of Patents and Registration, which had rejected the application for registration of the mark INTERBIZ in Classes 9 and 42 by Computer Associates Think, Inc.257 Aware of the common meaning of the words biz and business, the National Board of Patents and Registration held the applied mark to be confusingly similar to the Community Trademark registration INTERBUSINESS. According to the Board of Appeal, there is no likelihood of confusion between the mark INTERBIZ and the earlier trademark 256. Case 2001/047/T, The Board of Appeal of the Patent Office, February 26, 2003. 257. Case 2001/T/113, The Board of Appeal of the Patent Office, April 1, 2003. 390 Vol. 95 TMR INTERBUSINESS. Even if both of the marks have the same beginning INTER, the endings BUSINESS and BIZ differ both visually and phonetically from each other. Further, as the meaning of the word BIZ is not very commonly known in Finland, the marks cannot be considered to have a similar meaning. The Board of Appeal remanded the matter to the National Board of Patents and Registration for re-examination. The Board of Appeal of the Finnish Patent Office annulled a decision of the National Board of Patents and Registration that had rejected the registration of the international trademark TSELECT by Deutsche Telecom AG in respect of Classes 16, 35, 38, 42 and accepted it in Class 9.258 The National Board had held that the mark was confusingly similar to the earlier trademark registration for SELECT. The Board of Appeal stated that the common component, the word “select” is descriptive in respect of the applied goods in Class 16, as it means, “to take as a choice, to make a choice, single out.” As a whole, both marks are weak and differ from each other phonetically and visually due to the letter T. Despite the common word “select,” the international trademark cannot be deemed confusingly similar to the cited mark. The Board of Appeal returned the matter to the National Board of Patents and Registration for re-examination. The Board of Appeal of the Finnish Patent Office reversed a decision of the National Board of Patents and Registration that had rejected the registration of the international trademark CARMEL DSP (device) in Classes 9 and 42 by Infineon technologies AG in Finland.259 The National Board of Patents and Registration had held that the mark was confusingly similar to a prior trademark registrations for CARMEN. The Board of Appeal stated that despite the fact that one of the cited marks is registered in the same class, the goods of the applicant’s marks and of the cited marks are not the same or similar. Therefore, the applied mark cannot be deemed confusingly similar to the cited marks. Furthermore, the word “Carmen” of the cited marks has a commonly known meaning (Bizet’s opera and an internationally known girl’s name) so even the slightest changes to other marks are sufficient to distinguish the marks from each other. The applied for trademark is a figurative mark where the word CARMEL and the letter combination DSP are inside an oval- 258. Case 2000/T/079, The Board of Appeal of the Patent Office, January 20, 2003. 259. Case 2000/T/202, The Board of Appeal of the Patent Office, October 1, 2002. Vol. 95 TMR 391 shaped figure formed of two crescent-shaped figures. Even if the letter combination DSP is printed in smaller letters, it should be taken into account in assessing likelihood of confusion as a factor that increases differences between marks. As the word “carmel” has no commonly known meaning in the Finnish language, it should be considered a fanciful word. The words “Carmen” and “carmel” differ by their last letter, however, phonetically, the difference is minor due to weak pronunciation of the last letter. When the letter combination DSP is added to the word CARMEL together with the figurative element, the marks are clearly distinguishable. The applied for mark should be considered as a whole and, therefore, the applicant’s mark cannot be deemed confusingly similar to prior registrations of CARMEN. The Board of Appeal returned the matter to the National Board of Patents and Registration for re-examination. The Board of Appeal of the Finnish Patent Office annulled a decision of the National Board of Patents and Registration that had rejected the application for registration of the mark CORNER’S PUB in Class 42 by Merinomet Oy due to likelihood of confusion with prior trademark registrations for CORNER CAFE, CORNER PUBLIC HOUSE, PUBLIC CORNER.260 The Board of Appeal stated that the common component of the applied mark and of the cited marks, i.e., the word “corner,” is suggestive by its nature as it has among others such meanings as a position at which two lines, surfaces or edges meet and form an angle or street corner. The other components of the marks, “pub,” “café,” “public house” and “public,” are descriptive in respect of the applied for service class. Therefore, all the subject marks are weak if examined as a whole. The marks differ from each other phonetically and visually. Thus, despite the common component “corner,” the applied for mark cannot be deemed confusingly similar to the cited marks. The Board of Appeal returned the matter to the National Board of Patents and Registration for reexamination. I.B.22. Distinctiveness The Finnish National Board of Patents and Registration and its Board of Appeal rejected the application for registration of the trademark CRINOLIN by Hermes International in Classes 18 and 24.261 With only minor changes to the English language word “crinoline,” which means coarse, stiff fabric of cotton, the mark was 260. Case 2000/T/229, The Board of Appeal of the Patent Office, October 9, 2002. 261. Case 2001/T/006, The Board of Appeal of the Patent Office, December 4, 2001. 392 Vol. 95 TMR held nondistinctive as it indicates the quality and nature of the applied for goods. The Board of Appeal of the Finnish Patent Office dismissed the appeal filed against the decision of the National Board of Patents and Registration that rejected the registration of the international trademark DTI in Class 12 by Adam Opel AG.262 The mark DTI, which is also an abbreviation of the words “Distortion Transmission Impairment,” was deemed to indicate the quality, nature and purpose of use of the applied goods. According to the Board of Appeal, the abbreviation DTI or Dti (Diesel Turbo Intercooler or Diesel Turbo Injection) is commonly used in connection with different car makes and models, and because the mark thus indicates the quality, nature and purpose of the goods covered by the application, it cannot be considered distinctive. The Board of Appeal of the Finnish Patent Office reversed a decision of the National Board of Patents and Registration that rejected the registration of the international trademark MINI MILK in Class 30 by Unilever N.V.263 The National Board held that the mark was nondistinctive due to the fact that it indicates the nature, quality and purpose of use of the applied goods. The Board of Appeal of the Patent Office noted the fact that the applicant stated in its appeal that it was willing to include in the registration a disclaimer for the words MINI and MILK. The Board of Appeal stated that, even if the words “mini” and “milk” by themselves can be deemed descriptive for the applied goods “edible ice,” the applied for mark MINI MILK as a whole does not have any commonly known descriptive meaning for the subject goods. Therefore, the mark is capable of distinguishing the goods of the applicant from the goods of others and is thus distinctive and capable of registration. The Board of Appeal returned the matter to the National Board of Patents and Registration for reexamination. The Board of Appeal of the Finnish Patent Office reversed a decision of the National Board of Patents and Registration that had rejected the applications for registration of the marks GLOBALONE264 and GLOBAL ONE265 in Classes 9, 16, 36, 37 and 38 by Global One Communications Holding B.V. The National 262. Case 2000/168/T, The Board of Appeal of the Patent Office, January 20, 2003. 263. Case 2001/T/084, The Board of Appeal of the Patent Office, February 17, 2003. 264. Case 2001/T/055, The Board of Appeal of the Patent Office, February 26, 2003. 265. Case 2001/T/056, The Board of Appeal of the Patent Office, February 26, 2003. Vol. 95 TMR 393 Board of Patents and Registration had held that the applied for marks merely indicate the quality of the goods and services applied for and cannot, therefore, be held distinctive. The Board of Appeal stated that the word “globalone” or any similar word cannot be found in dictionaries of any foreign languages that are commonly known in Finland. The word can be divided into different parts from several places forming separate words with different meanings and thus, the word cannot be deemed to have one unambiguous meaning. Therefore, the mark GLOBALONE cannot be considered to merely indicate the nature and quality of the applied for goods and services, but it can be deemed suggestive. Thus, the mark is distinctive. The Board of Appeal returned the matter to the National Board of Patents and Registration for re-examination. The Board of Appeal of the Finnish Patent Office reversed a decision of the National Board of Patents and Registration that had rejected the registration of the international trademark PERNAVITAL in Classes 3, 5 and 30 by Semomed AG.266 The mark had been deemed to indicate the purpose of use in respect of Classes 5 and 30. The Board of Appeal stated that the word PERNAVITAL or any word that closely resembles it cannot be found in any dictionaries of the most commonly known languages. Thus, the word does not have an unambiguous meaning and, therefore, the mark can be held distinctive. The Board of Appeal returned the matter to the National Board of Patents and Registration for reexamination. The Board of Appeal of the Finnish Patent Office reversed a decision of the National Board of Patents and Registration that had rejected the application for registration of the mark NO 19 in Class 3 by CHANEL as nondistinctive.267 The Board of Appeal stated that a trademark may be formed solely of numbers and letters if the combination neither has meaning in the subject field of business nor is an abbreviation connected to the goods covered by the application. Generally, numbers are neither used to indicate the size and number of goods in the field of business to which the applied for goods belong, nor are they a normal way to refer to such goods or their essential qualities. Therefore, the mark is deemed distinctive. 266. Case 2000/T/224, The Board of Appeal of the Patent Office, September 10, 2002. 267. Case 2000/T/200, The Board of Appeal of the Patent Office, October 1, 2002. 394 Vol. 95 TMR The Finnish National Board of Patents and Registration and its Board of Appeal refused the registration of the mark VITA in Classes 29, 30 and 32 by Vitasoy International Holdings Limited based on the opposition filed by Compagnie Gervais Danone.268 According to the National Board of Patents and Registration, the opponent’s mark VITALINE is in fact registered for the same goods as the mark VITA, but the applicant’s mark cannot be deemed confusingly similar to the opponent’s mark. However, the opponent had shown that the applicant’s mark lacks distinctiveness as it indicates the quality of the goods (vita = white, in Swedish) and cannot thus distinguish the applicant’s goods from the corresponding goods of others. The Board of Appeal of the Finnish Patent Office reversed the decision of the National Board of Patents and Registration rejecting the registration for the International trademark BIDETTE in Classes 11, 20 and 21 by Hansgrohe AG in Finland.269 The National Board of Patents and Registration held the mark to be nondistinctive. The Board of Appeal held that the International trademark BIDETTE has no commonly known meaning and can thus be considered to be a made-up word. The mark differs significantly from the Finnish word “bidee” and the English word “bidet,” which describe the nature of the applied for goods. The average consumer cannot be assumed to connect the said words to the mark. The Board of Appeal therefore deemed the applied for mark to be distinctive and remanded the case to the National Board of Patents and Registration for re-examination. The Board of Appeal of the Finnish Patent Office annulled the decision of the National Board of Patents and Registration rejecting the registration for the International trademark BUSINESSCALL 100 in Classes 9, 16, 35, 38 and 42 by Deutsche Telecom AG in Finland due to nondistinctiveness.270 According to the Board of Appeal, the mark as a whole, in the given form, does not solely and generally describe the nature of the applied for goods and services. The Board of Appeal remanded the matter to the National Board of Patents and Registration for reexamination. The Board of Appeal of the Finnish Patent Office reversed the decision of the National Board of Patents and Registration, which had rejected the registration of the International trademark 268. Case 2001/T/069, The Board of Appeal of the Patent Office, February 26, 2003. 269. Case 2001/T/005, The Board of Appeal of the Patent Office, November 6, 2002. 270. Case 2001/T/110, The Board of Appeal of the Patent Office, April 7, 2003. Vol. 95 TMR 395 EURO-WIENER in Class 18 by Devro Plc. in Finland due to nondistinctiveness.271 According to the Board of Appeal, the mark is to be deemed distinctive as the said mark can be divided into parts that have both several meanings: EURO, which has among others such meanings as “currency unit” and “European,” and WIENER in Finnish means a “Danish pastry” and in American English “sausage,” the meaning of which is not very commonly known in Finland. The Board of Appeal thus remanded the matter to the National Board of Patents and Registration for re-examination. V.A. Domain Names The Communication Regulatory Authority’s following decisions are the first decisions published since the new Domain Name Act that took effect on September 1, 2003. Section 12, paragraphs 3 and 4 of the Act provide that a domain name can be revoked, (3) if there are reasons to suspect that it is a protected name and the registrant does not show acceptable reasons for registering the domain name, or, (4) if there are weighty reasons to suspect that the domain name is a derivative of a protected name obtained with the obvious intention to benefit from or to harm another, and the registrant cannot show acceptable reasons for registering the domain name. The Finnish Communication Regulatory Authority (FCRA) cancelled the registration for the domain name blanko.fi in the name of Dapaq Oy,272 holding that the said domain was unlawfully based on the protected trade name and trademark of a third party. The FCRA cancelled the registration for the domain name ttt.fi in the name of Tampereen Talotekniikka Oy and transferred it to TTT Technology Oy Ab.273 The said domain was held to be unlawfully based on the registered trademark TTT of TTT Technology Oy Ab. The FCRA rejected the request for the cancellation of the domain name proshop.fi filed by J&K International Oy based on their auxiliary trade name J&K Proshop.274 Undoubtedly, the 271. Case 2001/T/127, The Board of Appeal of the Patent Office, May 28, 2003. 272. Case 910/914/2003, The Finnish Communication Regulatory Authority, October 6, 2003. 273. Case 952/914/2003, The Finnish Communication Regulatory Authority, October 6, 2003. 274. Case 924/914/2003, The Finnish Communication Regulatory Authority, November 5, 2003. 396 Vol. 95 TMR domain name proshop.fi is a protected name or a derivative name, which has been obtained purely for profit purposes or for causing damage. The FCRA cancelled the registration of the domain diesel.fi in the name of Fortum Oyj.275 The domain name was unlawfully based on the registered trademark DIESEL of Diesel S.p.A. and Diesel Finland Oy. The FCRA cancelled the registration of the domain name ykk.fi granted in the name of Yrittäjien Koulutuskeskus Oy.276 The domain name was unlawfully based on the registered trademark YKK of YKK Corporation. The FCRA cancelled the registration of the domain name digibox.fi of Sofia Digital Oy and transferred it to Finnsat Oy.277 The domain name was unlawfully based on the registered trademark DIGIBOX owned by a third party. The FCRA rejected the request filed by Spacecom Technologies to cancel the domain name business.fi and transfer the same to Spacecom Technologies who had registered the auxiliary trade name www.business.fi in the trade name register.278 According to the FCRA there were no justified grounds or probable cause to suspect that the domain name was a protected name or derivative name obtained clearly for profit purposes or for causing damage. The FCRA rejected the request filed by Controller Oy Laskentakonsultointi to cancel the domain name controller.fi and transfer the same to Controller Oy Laskentakonsultointi.279 The FCRA held that there were no justified grounds to suspect that the domain name was a protected name or derivative name obtained clearly for profit purposes or for causing damage. The FCRA rejected the request filed by Finland’s Slot Machine Association (RAY) to cancel the domain name deal.fi of Joliot Oy 275. Case 879/914/2003, The Finnish Communication Regulatory Authority, November 18, 2003. 276. Case 920/914/2003, The Finnish Communication Regulatory Authority, November 18, 2003. 277. Case 936/914/2003, The Finnish Communication Regulatory Authority, November 18, 2003. 278. Case 937/914/2003, The Finnish Communication Regulatory Authority, January 30, 2004. 279. Case 913/914/2003, The Finnish Communication Regulatory Authority, January 30, 2004. Vol. 95 TMR 397 and transfer the same to RAY who is the owner of the figurative trademark DEAL.280 The FCRA deemed that there were no justified grounds or probable cause to suspect that the domain name was a protected name or derivative name obtained clearly for profit purposes or for causing damage. The FCRA rejected the request for cancellation of the domain name mamma.fi of Domain Bank Oy filed by Ohjelmatoimisto Mamma Oy.281 In the opinion of the FCRA there were no justified grounds or probable cause to suspect that the domain name was a protected name or derivative name obtained clearly for profit purposes or for causing damage. The FCRA cancelled the domain name registration moon.fi granted for Poleon Oy and allowed Kellomiehet Oy, which was the owner of the Finnish trademark MOON, to apply for the transfer of the domain name to its possession within three months from the date of notifying the decision to the parties concerned.282 According to the FCRA, there were justified grounds to suspect that the domain name was a protected name or mark. Furthermore, the holder of the domain name had not shown acceptable grounds for its rights. The FCRA cancelled the domain name petrol.fi granted to Poleon Oy and allowed, upon request by Esa Kukila, the owner of the trademark registration PETROL, Desperado Oy to apply for the transfer of the domain name into its name.283 The FCRA saw that there were justified grounds to suspect that the domain name was a protected name or mark. Furthermore, the holder of the domain name had not shown acceptable grounds for its rights. The FCRA cancelled the domain name progress.fi granted to Finnish Commuter Airlines Oy and transferred it to Progress Software Oy who was the owner of the Finnish trademark registration PROGRESS.284 According to the FCRA, there were justified grounds to suspect that the domain name was a protected 280. Case 943/914/2003, The Finnish Communication Regulatory Authority, January 30, 2004. 281. Case 951/914/2003, The Finnish Communication Regulatory Authority, March 29, 2004. 282. Case 1341/914/2003, The Finnish Communication Regulatory Authority, March 29, 2004. 283. Case 1493/914/2003, The Finnish Communication Regulatory Authority, March 29, 2004. 284. Case 945/914/2003, December 18, 2003. The Finnish Communication Regulatory Authority, 398 Vol. 95 TMR name or mark. Furthermore, the holder of the domain name had not shown acceptable grounds for its rights. The FCRA rejected the request filed by Canal D’amour Finland Oy to cancel the domain name sex.fi and transfer it to itself, whose auxiliary trade name is www.Sex.fi.285 In the opinion of the FCRA, there were no justified grounds or probable cause to suspect that the domain name was a protected name or derivative name obtained clearly for profit purposes or for causing damage. The FCRA rejected the request filed by Startex Oy, the owner of the Finnish figurative trademark registration START, to cancel the domain name start.fi and transfer the same to itself.286 The FCRA held that there were no justified grounds or probable cause to suspect that the domain name was a protected name or derivative name obtained clearly for profit purposes or for causing damage. The above decisions show how the FCRA has interpreted the Domain Name Act provisions regarding revocation of domain names. If the protected name is identical to the domain name, the complaint falls within paragraph 3 and the complainant needs merely to ask for the transfer. If the registrant does not provide acceptable reasons for registering the domain name, it will be transferred. However, if the protected name is not strictly identical to the domain name, the domain is deemed to be a derivative of the protected name and the complaint falls within paragraph 4. The requesting party must then show bad faith on behalf of the registrant in order to succeed. The term “strictly identical” in this connection appears to mean that if the protected name includes, for example, a figurative or a descriptive element, or anything else at all besides the domain name, the complainant must show bad faith on the respondent’s side in order to succeed. All such complaints have so far been rejected; in other words, complainants have not been able to show bad faith. The definition of bad faith will be the next interesting question to be answered by the FCRA’s future case law. 285. Case 1069/914/2003, The Finnish Communication Regulatory Authority, April 6, 2004. 286. Case 1116/914/2003, The Finnish Communication Regulatory Authority, March 29, 2004. Vol. 95 TMR 399 FRANCE I.B.2. Merely Descriptive Terms Having received notification from the French Intellectual Property Office (INPI) confirming its refusal to register the trademark E-SERVICE, in respect of “customer maintenance and assistance provided by video teleconference and via the Internet,” the applicant filed an appeal with the Court of Appeal of Paris to have this decision reversed. The applicant argued that, contrary to the findings of INPI,287 which had rejected the mark applied for on the ground that it consisted of descriptive terms, E-SERVICE was in fact a neologism, which was neither usual nor descriptive of the services designated. The applicant also put forward the argument that the prefix E stands for “endoscopes” and not “electronic.” The Court held that as the mark was not written in stylised letters and/or depicted in conjunction with any figurative element(s), the combination of the components E- and SERVICE would be perceived in merely a descriptive sense. Referring to a popular French dictionary,288 which defined E as the abbreviation of the English word “electronic” when used as a prefix and hyphenated, and indicating a link to the Worldwide Web (e.g., e-commerce, epub), the Court found that in the present context the E- prefix immediately referred to the Worldwide Web. The average consumer would therefore not be likely to associate this term with endoscopes. The Court of Appeal therefore confirmed the INPI’s decision and ruled that E-SERVICE, that is, the combination of the prefix E- and the suffix SERVICE (the latter being devoid of distinctive character), was descriptive of one of the characteristics of the services claimed and should therefore not be granted protection by way of trademark registration, under the provisions of Article L.711-2(b) of the French Intellectual Property Code.289 I.B.4. Geographical Names The French Intellectual Property Office (INPI) rejected an application for registration of the mark LES CADETS D’AQUITAINE. (Aquitaine is a region of France where Bordeaux 287. Karl Storz GMBH & Co. KG v. Director of the French Intellectual Property Office (INPI), September 9, 2003. 288. LE PETIT ROBERT, édition February 2001. 289. Article L.711-2(b) defines marks that lack distinctive character as “those marks or denominations which can serve to designate a characteristic of the goods or service, and notably the kind, quality, quantity, intended purpose, value, geographic origin, or epoch of production of the goods or provision of service.” 400 Vol. 95 TMR wines originate; the expression means “the younger sons of Aquitaine.”) The application covered the following goods in Class 33: “vins d’appellation d’origine provenant de la région Aquitaine” (“wines originating from the Aquitaine region”). INPI based its decision on the ground that the registration of a mark containing a geographical name, in this case the name of the region Aquitaine, was in contravention of European Union regulations, even though use of the same would not necessarily deceive the general public. The applicant appealed the decision before the Court of Appeal of Bordeaux,290 which referred a question of law to the European Court of Justice (ECJ). The ECJ ruled that the applicable Article 40 of the relevant regulation291 should be interpreted as “not being opposed to the use of a mark which includes a geographical denomination and which is destined for the commercialisation of wines even though it may lead to the erroneous supposition that this geographical indication is protected, except where there exists a real risk that the use of such mark may induce the concerned consumer to err in some way and, consequently, would affect [his or her] economic behaviour.”292 The judge should therefore apply the above interpretation whilst deciding on the merits of the case before him. The Court of Appeal, however, held that the use of the mark comprising the geographical location Aquitaine did not fall within the meaning of Article 40, and it ruled that, as such, the indication was illicit. Overturning the appellate court’s decision, the Supreme Court found that by not determining whether the mark in question was likely to “induce . . . consumer[s] to err in some way, thus affecting their economic behaviour,” the Court of Appeal of Bordeaux had given no legal basis for its decision. The case was consequently remitted to another Court of Appeal for a rehearing. I.B.8.a. Similarity of Marks Following a successful partial opposition based on the French registration of ORANGINA MOVE,293 the mark MOOVE, filed in the name of Pinault Printemps Redoute, was allowed to proceed to registration only for those goods and services that were not 290. Boire-Manoux v. Director of the French Intellectual Property Office (INPI), Court of Appeal of Bordeaux, October 26, 1998. 291. Council Regulation (EEC) No. 2392/89 of July 24, 1989 (as modified), which establishes the general regulations for the designation and presentation of wines and grapes. 292. Decision of October 24, 2002. 293. In the name of Schweppes International Ltd. Vol. 95 TMR 401 identical to those covered by the prior-registered ORANGINA MOVE.294 Unsuccessful in overturning the French Trade Mark Office’s decision following an appeal to the Court of Appeal of Paris,295 the applicant, Pinault Printemps Redoute, appealed to the Supreme Court on the basis that the Office had misapplied the provisions of Articles L.713-2 and L.713-3 of the French Intellectual Property Code. The Supreme Court296 rejected the appellate court’s finding that ORANGINA MOVE is a compound mark where the word MOVE is detachable. Further, it rejected the finding that ORANGINA is a juxtaposed term not forming a composite word together with the suffix MOVE. Lastly, having rejected the Court of Appeal’s finding that the comparison was to be made between the term MOVE on the one hand and MOOVE on the other, the Supreme Court held that the mark previously registered, ORANGINA MOVE, must be considered in its entirety when compared to the mark applied for, MOOVE. According to the Supreme Court, by not taking into consideration all the elements of the respective marks and by placing greater significance on certain differences that would likely be insignificant to the average consumer, the Court of Appeal had given no legal basis for its decision. Furthermore, in relation to the risk of confusion owing to the similar products covered by each mark, by comparing MOVE with MOOVE the appellate court had failed to make a global appreciation of the two marks and had therefore contravened the French Intellectual Property Code. The decision of the Court of Appeal of Paris was therefore declared unlawful, and the matter was sent back to another Court of Appeal for a rehearing. I.B.8.b. Similarity of Goods/Services Institut Jeanne Piaubert, the owner of a trademark registration for SKINBREAKFAST, covering, inter alia, “cosmetics and perfumeries” in International Class 3, filed an opposition to the trademark application for PETIT DEJEUNER DE LA PEAU claiming protection for similar products in Class 3. The French Intellectual Property Office (INPI) ruled that there was no risk of 294. The mark’s registration covered “telecommunications communications by computer transmission of information by communications networks and by Internet.” 295. Pinault Printemps Redoute v. Schweppes International Ltd., Court of Appeal of Paris, May 31, 2000. 296. Commercial Chamber, November 26, 2003. 402 Vol. 95 TMR confusion between the two marks at issue, and consequently it rejected the opposition.297 The opponent appealed the decision before the Court of Appeal of Paris.298 After ruling that the goods claimed under the respective marks were indeed similar, the judge proceeded with a comparison of the two marks by way of a global appreciation. The judge held that whilst the two marks were not visually or phonetically similar, they were conceptually similar, especially when one took into consideration the relevant goods concerned. More specifically, the average consumer would be likely to perceive the mark PETIT DEJEUNER DE LA PEAU as the French version of the mark SKINBREAKFAST, and consequently there was a great risk of confusion as to the origin of the goods commercialised under the respective marks. INPI’s decision was therefore overruled. I.B.9.a. No Similarity of Marks The Coca-Cola Company, owner of the trademark “Enjoy COCA-COLA,” filed an opposition against a trademark application for ENJOY in the name of Mr. Cadier and claiming protection, for inter alia, “mineral water, alcoholic and non-alcoholic beverages” in Classes 5, 32 and 33. The Court of Appeal of Paris299 found that although there was an overlap in goods, the two marks were sufficiently dissimilar to be distinguishable, thus confirming a previous decision of the French Intellectual Property Office.300 The Court of Appeal held that the distinctive and dominating element of the earlier trademark “Enjoy COCA-COLA” was the suffix COCA-COLA and not the prefix Enjoy. From a visual point of view, owing to the fact that COCA-COLA is written in capital letters and represented in a larger font, it stands out more than “Enjoy,” where only the first letter, E, is in capitals. From a conceptual viewpoint, COCA-COLA is a well-known trademark. By contrast, ENJOY is an English term, which is easily understood by the average French consumer as an invitation to consume or taste the beverage in question. Therefore, when it compared the earlier trademark “Enjoy COCA-COLA,” where the emphasis is on COCA- 297. S.A.S. Institut Jeanne Piaubert v. S.A. Matta, French Trade Mark Office (INPI), March 20, 2003. 298. S.A.S. Institut Jeanne Piaubert v. Director of the French Intellectual Property Office (INPI) & S.A. Matta, Court of Appeal of Paris, December 17, 2003. 299. Coca-Cola Co. v. Emmanuel Anaxhaoza Cadier & Decision of the Director of the French Intellectual Property Office (INPI), 4th Chamber, Section B, Court of Appeal of Paris, March 28, 2003 (Revue internationale de la propriété industrielle et artistique (RIPLIA) No. 212, 2nd Term 2003, at page 47). 300. Director of the French Intellectual Property Office (INPI), April 23, 2002. Vol. 95 TMR 403 COLA, with the later-filed mark ENJOY, the Court found that there was no risk of confusion. I.B.10. Deceptive Marks When is a label not a label? The French Intellectual Property Office (INPI)301 refused to register the trademark IP-LABEL for a wide range of goods and services relating mainly to computer software, claiming that the mark was deceptive under the provisions of Article L.711-3(c) of the French Intellectual Property Code.302 The applicant, S.A.S. IP-LABEL, appealed the decision before the Court of Appeal of Paris,303 submitting arguments to the effect that the mark applied for was indeed distinctive as it consisted of the terms IP, meaning “Internet Protocol” in English, and LABEL, which is synonymous with “tag.” The applicant contested INPI’s holding that the average consumer would confuse the mark at issue with any other label or mark designating the quality of a product or with any professional body or label relating to the Internet. The Court of Appeal rejected the applicant’s plea. It took the view that the average consumer would be likely to understand the term LABEL in the usual manner in which it is used in the French language, and therefore consider the mark applied for, IP-LABEL, to be “a mark created by a professional body and used in connection with goods to certify their origins, conditions of manufacture and quality,” rather than as a “tag,” as that term is understood in the English language. From this it followed that the public would immediately be led to believe that the goods and services claimed under the mark IP-LABEL were of a certain quality and possessed certain characteristics specifically guaranteed by a certifying body. The trademark IP-LABEL was deemed not to be capable of being viewed as an indivisible whole. Further, the Court of Appeal held that the suffix LABEL was likely to mislead the consumer as to the specific characteristics of the goods and services claimed by the applicant. Accordingly, INPI’s decision to refuse registration of the mark IP-LABEL on the ground of deceptiveness was upheld. 301. S.A.S. IP-LABEL v. Director of the French Intellectual Property Office (INPI), December 3, 2002. 302. Article L.711-3(c) states that a mark cannot be adopted as a trade mark if it “is of such a nature as to deceive the public, notably as regards the nature, quality or geographic origin of the goods or service.” 303. Court of Appeal of Paris, June 27, 2003. 404 Vol. 95 TMR III.A.2.b. Similarity of Marks The appellant, G.I.E. Charme Hotel, held the French trademark CHARMHOTEL, registered in 1989 for “hotel and catering services.” The first respondent, Miss G. Mangini, was the founder of a hotel-restaurant trading (from March 31, 1999) under the name Hotel Charme Restaurant Macon-Nord; she later transferred ownership of this establishment to the second respondent, the company Entremont Hotellerie. The act complained of consisted in Entremont’s using a neon sign displaying the words CHARME HOTEL on its business premises. Unsuccessful in its action for trademark infringement and unfair competition before the Court of First Instance of Macon, G.I.E. Charme Hotel appealed to the Court of Appeal of Dijon. In addition, it sought an injunction against further use by Entremont of either CHARMHOTEL or CHARME HOTEL. The respondent argued not only that the appellant’s claims should be dismissed and the Court of First Instance’s decision upheld but also that the appellant’s trademark, CHARMHOTEL, should be cancelled ab initio, that is, from the date of filing, on the grounds that it was generic and lacked distinctive character. The Court of Appeal, in considering whether CHARMHOTEL should be cancelled, held that the joining of the words “charme” and “hôtel” (both having the same meaning in English as they do in French) differed from the ordinary way of evoking the known term, “hôtel de charme.” This, coupled with the fact that the preposition “de” (“of”) was lacking, rendered the word combination new and fanciful, and the sign did not directly describe hotel services or indicate what types of services were offered under the mark. The CHARMHOTEL mark was, therefore, inherently distinctive in respect of the services designated. Regarding the infringement claim, the appellate court held that when the earlier mark CHARMHOTEL was compared with the words CHARME HOTEL as depicted on the neon sign, the absence of the letter “e” in the earlier mark did not render the respective marks visually distinguishable and, in any case, did not suffice to compensate for the phonetic identity. There was, therefore, a high likelihood of confusion, and consequently the Court ordered that the neon sign be removed. In addition, the Court of Appeal ordered that the respondent be prevented from using either CHARMHOTEL or CHARME HOTEL in the future. The Court did not find for G.I.E. Charme Hotel in its claim for unfair competition, however, owing to the appellant’s failure to show that it had been prejudiced by the respondents’ actions.304 304. G.I.E. Charme Hotel v. Mangini & S.A.R.L. Entremont Hotellerie, Court of Appeal of Dijon, July 8, 2003. Vol. 95 TMR 405 In 1998, the Nestlé company sought protection for a compound trademark consisting of a picture of a bar of chocolate on which were written, at the top, NESTLE and underneath it the words GRAND CHOCOLATE. At the centre of the bar were written the word ECLATS (“piece,” “flake”), and, directly underneath it, the word NOIR (“black,” “dark”). Nestlé’s trademark registration claimed protection for “chocolates and chocolate products” in International Class 30. One of Nestlé’s competitors, Lindt, was using NOIR ECLATS and LAIT ECLATS in connection with a range of chocolate products commercialised under the registered trademark EXCELLENCE. The company had sought, and obtained, protection for these marks. Nestlé commenced proceedings before the Court of First Instance of Paris305 on the grounds of trademark infringement and unfair competition, and asked that Lindt’s two trademark registrations be nullified. The Court ruled in Nestlé’s favour, holding that Lindt’s use of NOIR ECLATS and LAIT ECLATS constituted trademark infringement and was prejudicial to Nestlé, warranting also a finding of unfair competition. The Court did not declare Lindt’s registrations invalid, however. Lindt appealed this decision, arguing that when comparing the marks at issue the Court should have taken into consideration not only their similarities but also their visual and predominant phonetic differences. The company argued, further, that there was no risk of confusion, as ECLAT was synonymous with “brisure” or “morceau” (“piece” or “morsel”) and therefore not a fanciful word when used on its own and in connection with the relevant goods. As such, no one proprietor should be able to claim exclusive rights in this term. The Court of Appeal of Paris306 confirmed the holding of the Court of First Instance. In its decision, the Court stated that the term ECLAT in Nestlé’s mark, depicted on its own and in a central position, distinguished itself from the other elements of which the compound mark was made up and in fact was the most attractive element of the trademark. By contrast to its meaning in phrases such as “aux éclats de cacao” (“with pieces of cocoa”) or “aux éclats de fèves de cacao” (“with pieces of cocoa beans”), the word ECLAT in Nestlé’s mark was not descriptive of the product’s ingredients or of its essential qualities. Furthermore, and contrary to what was alleged by Lindt, the Court of Appeal ruled that ECLAT was in fact a fanciful term. It 305. S.A Société des Produits Nestlé & S.A. Nestlé France v. STE Chocolade Fabriken Lindt & Sprungli & S.A. Lindt & Sprungli (France), Court of First Instance (TGI) of Paris, July 6, 2001. 306. Court of Appeal of Paris, October 22, 2003. 406 Vol. 95 TMR found that the marks NOIR ECLATS and LAIT ECLATS, which do not conform to the usual rules of syntax, were represented on Lindt’s packaging in a manner that made them stand out. As such, the Court held, these two marks constituted distinctive elements immediately understandable by the average consumer. Consequently, there was a risk of confusion as to the origin of the respective products. Going further than the Court of First Instance, the Court of Appeal ruled that Lindt’s trademark registrations for NOIR ECLATS and LAIT ECLATS should be nullified, as Nestlé had requested. III.A.10. Nonuse of Trademark Based on its semi-figurative trademark MG, filed on April 15, 1988, the company Rover initiated proceedings on the ground of trademark infringement against the later-filed mark MG in the name of Mécano Galva. The trademark in the name of Mécano covered products identical and similar to those covered by the earlier registration. Mécano argued that as Rover had not used its trademark MG (fig.) during the five years between March 15, 1988, and March 15, 1993, this registration should be revoked on the grounds of nonuse. The Court of Appeal of Reims307 found for Mécano because Rover was unable to prove that it had used its mark MG (fig.) during the specified five-year period. Overruling the decision of the appellate court, the Supreme Court held that in not taking into account the fact that Rover had restarted its production of vehicles in 1995 and cancelling Rover’s trademark registration for MG (fig.) as of April 15, 1993, the Court of Appeal was in violation of Article L.714-4 of the French Intellectual Property Code.308 The Reims Court should have considered the five years preceding the filing of the cancellation action, and not just any five-year period. The case was consequently sent back to another Court of Appeal for a rehearing. III.A.11.a. No Similarity of Marks In 1995, Franck Le Calvez wrote a film script for a story of a young orphaned clownfish who goes in search of his parents. The script was used as the basis of a children’s book titled Pierrot, le poisson-clown, published in September 2002. In February 2003, 307. Civil Chamber, 1st Section, October 20, 2001. 308. Article L.714-4 reads: “Serious use of the trademark that started or recommenced subsequent to the five-year period stated in the previous clause is not an obstacle to said forfeiture if said use was undertaken within the three months preceding a request for forfeiture and after the owner thereof became aware of the possibility of a request for forfeiture.” Vol. 95 TMR 407 Flaven Scène, to whom Mr. Le Calvez had assigned all his rights, sought trademark protection for the Pierrot character, which, as depicted on the front cover of the book, was an orange-coloured fish with white stripes and a human-like face. At a later date Walt Disney released an animated film, also about a young clownfish who is taken away from his parents. The main character, Nemo, is depicted as a red-coloured fish with white stripes and the smile and regard of a human being. Having commenced proceedings before the Court of First Instance of Paris based on trademark and copyright infringement,309 the editor, Flaven Scène, sought an interlocutory injunction to prevent further exploitation by the defendant of the mark at issue. The judge in the injunction proceedings310 was therefore faced with the task of assessing the likelihood of confusion between the earlier figurative trademark, PIERROT, LE POISSON-CLOWN (PIERROT), and the main character of the film animation Le Monde de Nemo (NEMO), and possible infringement in order to determine whether an order for an interlocutory injunction was warranted before a decision regarding the alleged trademark and copyright infringement would issue. In order to decide whether there was a risk of confusion, the judge made a global appreciation of the two marks at issue by considering not only the similarities of the two characters but also their dissimilarities. By so doing the judge departed from accepted principles laid down in prior Court of First Instance decisions and focused more on the details of the two characters than on the overall impressions conveyed by each. Thus, instead of comparing the general colour of each of the two fishes, the judge considered the shade of colour. He found that whereas NEMO was a range of red, PIERROT was a range of orange. Likewise, the bodies of the two fishes, although similar in shape, were found to be proportionally different, and their fins were also different in shape and size—one was striped, the other was not. When assessing the likelihood of confusion in the eyes of the public, the judge established that the relevant public was children, who were regarded as sensible/wary and attentive. He concluded that the targeted public in this context would therefore be able to distinguish “its reds from its oranges.” The request for an interlocutory injunction to prevent the distribution of edited works and related products carrying the title of the film Le Monde de Nemo was provisionally rejected pending the decision in the main proceedings. 309. Decision due shortly. 310. Flaven Scène v. Walt Disney Pictures & Television, Pixar, Walt Disney Co. (France) & SNC Disney Hatchette édition, Court of First Instance (TGI) of Paris, March 12, 2004. 408 Vol. 95 TMR Mr. X, owner of the semi-figurative trademark CRAMPON, designating “cheville de fixation en matière plastique” (“plastic wall-plugs”), launched, together with his exclusive licensee, a trademark infringement action against the company Laurent. Laurent was marketing similar products using the slogan “chevilles universelles à crampons TX” (“universal wall-plugs with crampons TX”). The Court of Appeal of Versailles311 ruled in favour of Laurent, thus confirming that use of the slogan at issue containing the word “crampon” in the plural constituted trademark infringement under Article L.713-2 of the French Intellectual Property Code. The Supreme Court, however, suspended the decision of the Court of Appeal that use of the slogan “chevilles universelles à crampons TX” constituted trademark infringement of the mark CRAMPON. It held that the slogan “universal wall-plugs with crampons TX” could not be considered a mere reproduction of the trademark CRAMPON: “A sign is to be considered identical to another sign when it reproduces, without modification or addition, all the elements of the previous trademark or, when viewed as a whole, the mark at issue differs from the earlier trademark only in insignificant details bound to go unnoticed by the average consumer.” The case was therefore remitted to the Court of Appeal for a rehearing. III.A.12. Lack of Distinctiveness The Polo Lauren Co. LP (Polo Lauren) is the owner of several trademarks that include the term “polo,” including the semifigurative mark POLO and the word mark POLO RALPH LAUREN. Polo Lauren initiated trademark infringement proceedings against Mr. X, who is the owner of the trademarks POLO PASSION, POLO LIFE and POLO LINE. On appeal before the Court of Appeal of Versailles, the judge held that the term “polo” was not distinctive in respect of clothing articles, and therefore concluded that there should be no risk of confusion between POLO LIFE and POLO LINE on the one hand and Polo Lauren’s earlier mark POLO on the other, as the latter mark included a figurative element. He ruled that only the trademark POLO PASSION, in the name of Mr. X, should be cancelled.312 Not satisfied with this decision, Polo Lauren appealed to the Supreme Court in order to have the remaining two trademarks 311. Mr. X v. Société Lauren, Court of Appeal of Versailles (12th Chamber, Section 2), April 4, 2004. 312. Polo Lauren Co. LP v. Mr. X, Court of Appeal of Paris (4th Civil Chamber, Section B), October 27, 2000. Vol. 95 TMR 409 cancelled. Polo Lauren argued not only that the two marks in question were deceptive (because they were not used in connection with polo shirts”) but also that the Court of Appeal had failed to make a proper comparison of the respective marks by way of a global appreciation of all the elements. In addition, Polo Lauren argued that the term “polo” does not lose its individuality or its distinctive character when used with the term “passion,” “life” or “line,” and that, consequently, all three trademarks, POLO PASSION, POLO LIFE and POLO LINE, infringed the earlier trademark registration for POLO RALPH LAUREN. The Supreme Court held that although the marks at issue were not identical with the earlier trademarks, nor reproductions containing all the constituent elements of those earlier marks, by not considering whether, when viewed as a whole, the respective marks differed in a manner so insignificant that these differences could pass unnoticed by the eyes of the average consumer, the Court of Appeal of Versailles had not given a legal basis for its decision. The case was therefore remitted to a different Court of Appeal for a rehearing.313 III.A.18. Equitable Defenses The company SPCEA,314 having been unsuccessful in its attempt to obtain an interlocutory injunction against the alleged use by the organisation Greenpeace of its trademarks A (stylized) and A AREVA, was hopeful that the Court of First Instance of Paris315 would find the defendant liable for trademark infringement under Articles L.713-2 and L.713-3 of the French Intellectual Property Code.316 Greenpeace, a campaigning organisation whose aim is to expose environmental problems, had been reproducing on its websites www.greenpeace.fr and www.greenpeace.nz the plaintiff’s 313. Polo Lauren Co. LP v. Mr. X, Supreme Court (Commercial Chamber), March 31, 2004. 314. S.A. Société des Participations du Commissariat à L’Energie Atomique (SPCEA), trading as “AREVA.” 315. SPCEA v. Greenpeace, France & Greenpeace, New Zealand, Court of First Instance of Paris, July 9, 2004. 316. Article L.713-2 prohibits the following, “except when authorised by the proprietor of a trademark: (a) reproduction, use or affixing of a mark even followed by words such as: ‘formula,’ ‘made like,’ ‘system,’ ‘imitation,’ ‘based on,’ ‘method,’ for goods or services that are identical to those designated in the registration; (b) removal or modification of a trademark applied in its normal fashion.” Article L.713-3 prohibits the following, “except when authorised by the proprietor, if a risk of confusion in the mind of the public can arise: (a) from reproduction, use or affixing of a trademark as well as the use of a reproduced trademark in respect of goods or services that are similar to those designated in the registration; (b) copying of a trademark and use of a copied trademark in connection with goods or services that are identical or similar to those designated in the registration.” 410 Vol. 95 TMR trademarks in association with the death’s head symbol (the skull and crossbones). The websites also featured the stylised letter A, as depicted in the plaintiff’s AREVA logo, placed on a fish and the slogan STOP PLUTONIUM – L’ARRET VA DE SOI, where the letter A was stylised in the same manner as in the AREVA logo. The plaintiff argued that such use constituted infringement under Articles L.713-2 and L.713-3 and that it denigrated SPCEA’s trademarks and caused substantial damage and prejudice to the company. It argued, further, that Greenpeace’s actions were far beyond what is defined as freedom of expression under Article 1382 of the French Civil Code and that this defense should be rejected. The Court found that the use complained of on Greenpeace’s websites did not amount to an identical reproduction of the trademarks in question. Furthermore, Greenpeace’s clear denigration of the activities of SPCEA and its effect on the environment and the fact that it made no effort to hide the author of these messages, coupled with the fact that Greenpeace by its very nature does not promote or sell nuclear energy products or services, meant that there was no risk of confusion in the eyes of the consumer. The plaintiff’s claim for trademark infringement under Articles L.713-2 and L.713-3 was, therefore, dismissed. In applying Article 1382 of the French Civil Code, however, the Court ruled that Greenpeace had in fact exceeded the limits of freedom of expression and could have used other ways to illustrate its position and alert the public to what in its opinion were the possible dangers of adopting nuclear energy. The acts complained of were therefore held to be in contravention of Article 1382, and Greenpeace was ordered to pay damages and to cease use of the marks at issue. III.B.1. Passing Off Danone launched a drink under the trademark ACTIMEL317 in 1996 and a second flavour of the drink bearing the same mark in 1999. Shortly afterward, the company Bridel launched two identical drink products under the marks B’A FORCE ÉQUILIBRE and B’A FORCE VITALITÉ. Danone promptly commenced proceedings against Bridel before the Court of Appeal of Paris,318 claiming unfair competition and parasitism. The Court found that Bridel was commercialising two identical products using packaging that recaptured all the characteristic elements of the ACTIMEL product. Consequently, the appellate court upheld Danone’s claims. 317. ACTIMEL—a fermented milk–based drink. 318. Court of Appeal of Paris, January 2, 2002. Vol. 95 TMR 411 Bridel appealed this decision before the Supreme Court,319 putting forward arguments to the effect that the commercialisation of its two products did not constitute acts of unfair competition or parasitism because the plaintiff had not demonstrated that Bridel’s actions had caused actual confusion or a risk of confusion. Bridel also argued that any loss of sales or other damages suffered by Danone could be due only in part to the existence of Bridal’s products on the market. Other drink products, presented in similar packaging, were also sold in the relevant territory, and it was therefore up to Danone to pursue all companies using packaging that recaptured the various characteristic elements synonymous with the ACTIMEL drink. Bridel argued that the Court of Appeal had failed to make a proper assessment of the extent to which Bridel’s commercialisation of its products had damaged Danone. Rejecting Bridel’s appeal, the Supreme Court judge held that, “far from being content with recapturing one or two characteristic elements of the ACTIMEL packaging, Bridel had taken all the characteristic elements of the packaging, creating an illusion, in the eyes of the public, that its products were linked with those of Danone; the adoption of these characteristic elements, forcefully evocative of the ACTIMEL product, was unnecessary, and has diluted the exclusive rights attached to the elements identifying Danone’s products.” The Court of Appeal’s decision was upheld in all instances, and Bridel was ordered to pay damages to Danone. III.C. Injunctions and Damages Microsoft Corp., owner of a registration for the trademark WINDOWS, filed in 1992 and covering goods in Class 9, inter alia, “software programmes,” commenced proceedings in December 2003 against Lindows.com (and Hermitage Solution) on the grounds of trademark infringement, unfair competition and parasitism. The acts complained of consisted in the defendants’ using a number of denominations, including LINDOWS and LINDOWS OFFICE, to distinguish software products. Microsoft also sought an interlocutory injunction under Article L.716-6 of the French Intellectual Property Code320 against Lindows.com’s use of the denomination LINDOWS (in any form) on the Internet. By way of defence in the injunction proceedings, Lindows.com argued that Microsoft had allowed too much time to elapse before 319. Supreme Court, March 17, 2004. 320. L.716-6 reads: “Application for an interlocutory injunction . . . is accepted only if the action appears serious and well-founded and was initiated within a short period of time of the trade mark owner or the beneficiary of exclusive rights thereto becoming aware of the facts on which it is based.” [Emphasis added.] 412 Vol. 95 TMR launching its main action and that therefore it was now too late to obtain an injunction. Accordingly, it argued, Microsoft’s request should not be granted. Lindows.com also put forward arguments to the effect that the WINDOWS mark was generic in respect of computer goods. The defendants were able to show, by having recourse to the ongoing litigation proceedings in the United States between the two companies concerning the same trademarks, that Microsoft had been aware of their offending actions since 2002. The Court of First Instance of Paris held that Microsoft’s issuing of proceedings over a year later (i.e., in December 2003) did not constitute “a short period of time” within the meaning of Article L.716-6, and it therefore refused Microsoft’s request for an interlocutory injunction.321 Apart from Article L.716-6, no other ground was raised by Microsoft, and the judge therefore could not comment further on the alleged acts of trademark infringement, unfair competition and parasitism. III.F.5. Cancellation Mr. X is the owner of the trademarks FASHION TELEVISION and TELEVISION FASHION NETWORK, dated April 3, 1997, and 7, 1997, respectively. On April 21, 1998, Mr. X also sought protection for the trademark FASHION TV, to be used in connection with the launch of a new series of themed TV programs on fashion. When it became aware of these trademarks, Chum, a Canadian producer of TV programs dedicated to fashion and televised in a number of countries around the world, including France, sought to have the trademarks cancelled. Chum also claimed that Mr. X’s actions amounted to unfair competition and parasitism, and it requested an injunction against further use and damages. The Court of Appeal of Paris ruled in favour of Mr. X,322 and Chum consequently filed an appeal against this decision. The Supreme Court323 concluded that although the word “fashion” was not part of the everyday French language, it was understood by a large part of the French public as designating “la mode” (i.e., “fashion” in French). Chum therefore could not claim exclusive rights in the term “fashion television,” nor should Mr. X’s trademark registrations be cancelled as they were not held to have 321. Microsoft Corp. v. Lindows.com, Inc., Court of First Instance (TGI) of Paris, April 7, 2004. 322. Chum v. Mr. X & Fashion TV, Court of Appeal of Paris, May 19, 2000. 323. Chum v. Mr. X & Fashion TV, Supreme Court, January 28, 2003. Vol. 95 TMR 413 been filed in bad faith in the absence of evidence that Chum held earlier rights. The Supreme Court also dismissed Chum’s claims based on unfair competition and parasitism. It held that Chum had not shown that Mr. X was aware of the TV program emanating from Canada at the time he sought protection for the trademarks in question; on the contrary, it appeared that Chum had in fact started preparations for its program only after the launch of Mr. X’s “Fashion TV” series. The company Bardinet, owner of a trademark registration for PINA COLADA filed in 1974 and covering alcoholic beverages (except beer) in International Class 33, initiated infringement proceedings against the company Ego Fruit following Ego Fruit’s commercialisation of a beverage under the mark/slogan COCKTAIL OF PIGNA COLADA. In response, the defendant filed a cancellation action against Bardinet’s trademark registration for PINA COLADA, arguing that this term had become generic. The Court of Appeal of Paris ruled in favour of Ego Fruit in the cancellation proceedings in spite of the fact that Bardinet was able to show that it had acted in previous cases to protect its mark, which had resulted in the withdrawal of several trademarks containing, or consisting of, the mark PINA COLADA.324 Bardinet appealed the decision before the Supreme Court on the ground that cancellation should not have been ordered by the Court of Appeal, since the appellate court had recognised that Bardinet had acted to protect its trademark rights. The Supreme Court underlined in its decision that it was the responsibility of the Court of Appeal to assess any actions taken by Bardinet to protect its rights in the mark PINA COLADA and to decide whether this mark has become a generic term commonly used in the course of trade in connection with the relevant goods. In the present case, the actions taken by Bardinet to protect its trademark rights did not suffice to avoid cancellation of its trademark registration. It was found that the mark PINA COLADA was used in recipe books, on websites and on the menus in bars and restaurants to designate alcoholic cocktails; owing to Bardinet’s passive tolerance of this generic use, the Supreme Court concluded that the Court of Appeal had justly ruled that the sign has indeed become generic.325 324. Ego Fruit v. Bardinet, Court of Appeal of Paris (4th Chamber, Section B), October 19, 2001. 325. Ego Fruit v. Bardinet, Supreme Court (Commercial Chamber), April 28, 2004. 414 Vol. 95 TMR III.J. Gray Marketing The company Reebok, the proprietor of the trademarks REEBOK, VECTOR and STRIPECHECK, covering, inter alia, “footwear” in Class 25, ordered the seizure of a number of sports shoes carrying these three marks and offered for sale in a shop in France. Proceedings were brought before the Court of First Instance of Montpelier326 on the ground of trademark infringement, owing to unauthorised use of Reebok’s trademarks by the respondents. The first respondent, Transparence, had been selling in its shop outlet shoes bearing the three trademarks at issue, whilst the second respondent, Ms. Peyrical, had furnished the first respondent with the goods in question. Both respondents were held to be liable for trademark infringement under Articles L.713-2327 and L.716-1328 of the French Intellectual Property Code and were found to have committed acts amounting to unfair competition vis-à-vis Reebok and its authorised distributor. All the illicit shoes were therefore delivered up to Reebok for destruction, and both respondents were ordered to pay damages to Reebok. The respondents appealed to the Court of Appeal of Montpelier, claiming exhaustion of Reebok’s trademark rights under Article L.713-4 of the Code.329 In response to the plaintiffs’ claim of unfair competition owing to the “cut-down” sale price of the shoes, the respondents argued that there existed no distribution agreement network for authorised distributors in France and that, consequently, the respondents’ sale of the shoes on French territory did not prejudice any members of such a network. The responsibility to prove that Reebok had indeed consented to the placing of the particular shoes on the EC market fell on the respondents, which were not able to substantiate this allegation. The Court of Appeal therefore upheld the decision of the Court of First Instance on this point and confirmed that the respondents’ actions amounted to trademark infringement. However, it 326. Reebok International Ltd. & S.A. Reebok France v. S.A.R.L. Transparence & Ms. Peyrical, Court of First Instance of Narbonne, June 27, 2002. 327. Article L.713-2 forbids the following, “except when authorised by the proprietor of a trademark: (a) reproduction, use or affixing of a mark even followed by words such as: ‘formula,’ ‘made like,’ ‘system,’ ‘imitation,’ ‘based on,’ ‘method,’ as [well as] the use of a reproduced trademark for goods or services that are identical to those designated in the registration; (b) removal or modification of a trademark applied in its normal fashion.” 328. Under Article L.716-1, trespass on the rights of the trade mark owner constitutes infringement, rendering the author thereof civilly liable. Trespass on trademark rights is constituted by acts forbidden by Articles L.713-2, L.713-3 and L.713-4 of the Code. 329. Article L.713-4 states: “Rights conferred by a trademark do not permit the proprietor thereof to forbid the use of the said trademark in respect of goods that have been put on the market in the European Community or the European Free Trade Association under the mark in question by the proprietor thereof or with his consent.” Vol. 95 TMR 415 overturned the lower court’s decision in relation to the finding of unfair competition, concluding that the plaintiff had not proved that its shoes were distributed in France through an intermediary that is part of a selective distribution network and that, consequently, members of this network would have been prejudiced by the respondents’ actions. V.A. Domain Names The French sports brand and company name DECATHLON formed the basis of proceedings brought before the Court of First Instance of Paris, in which S.A. Decathlon, the owner of the trademark in question,330 sought to prevent unauthorised use of its trademark and company name on the website www.décathlon.pl. S.A. Decathlon simultaneously requested the transfer to it of the domain name, which had been registered in Poland. The website featured caricature drawings of sportsmen and included references to the consumption of alcohol. The plaintiff submitted arguments to the effect that the respondents’331 use of the website constituted trademark infringement under Article L.713-2 of the French Intellectual Property Code 332 and unlawful imitation of its mark to designate identical or similar goods under Article L.713-3.333 It claimed, further, that its mark was well known and that the respondents’ use of the mark at issue was likely to cause damage, under the provisions of Article L.713-5 of the Code.334 S.A. Decathlon also alleged misappropriation of its company name and mark, DECATHLON. 330. S.A. Decathlon, France, holder of the websites www.decathlon.com and www.decathlon.fr and various registrations for trade marks consisting of, and containing, the word DECATHLON. 331. S.A. Decathlon v. Valley SC, Tomasz, Aleksander & Tomasz, Court of First Instance of Paris, July 8, 2003. 332. Article L.713-2 forbids the following, “except when authorised by the proprietor of a trademark: (a) reproduction, use or affixing of a mark even followed by words such as: ‘formula,’ ‘made like,’ ‘system,’ ‘imitation,’ ‘based on,’ ‘method,’ as [well as] the use of a reproduced trademark for goods or services that are identical to those designated in the registration; (b) removal or modification of a trademark applied in its normal fashion.” 333. Article L.713-3 forbids the following, “except when authorised by the proprietor, if a risk of confusion in the mind of the public can arise: (a) from reproduction, use or affixing of a trademark as well as the use of a reproduced trademark in respect of goods or services that are similar to those designated in the registration; (b) copying of a trademark and use of a copied trademark in connection with goods or services that are identical or similar to those designated in the registration.” 334. Article L.713-5 reads: “The use of a trademark that enjoys a reputation for goods or services that are not similar to those designated in the registration of said trademark renders the author thereof civilly responsible if the nature of such use leads it to cause prejudice to the said proprietor or if such use constitutes unjustified beneficial usage of said mark.” 416 Vol. 95 TMR The Court held that since the respondents were not offering any goods or services for sale, there was no trademark infringement under Articles L.713-2 and L713-3. However, it found that DECATHLON is a well-known mark and that the existence of the images appearing on the website denigrating the practice of sport tarnished S.A. Decathlon’s image, which is based on the value and benefits of sports practice. This, coupled with the fact that the respondents had, prior to the bringing of the proceedings, offered to sell the domain name www.decathlon.pl to the plaintiff for the sum of 20,000 Euros, contributed to the finding that the respondents’ use of the mark was unjustified and unlawful under the provisions of Article L.713-5. The respondents were ordered to pay damages to the plaintiff and to transfer to the plaintiff, with immediate effect, the domain name and website www.decathlon.pl. Exacod, a company founded in 1998 and active in the field of inventory organisation of companies, is the proprietor of the semifigurative trademark EXACOD, dated June 3, 1999, and covering, inter alia, “computer data processing, business management and advice, computer file management and computer programming” in Classes 16, 35, 36 and 42. Exacod initiated an action based on its earlier trademark rights and earlier rights in the company name against the registration of the website www.exacod.com by L’Inventoriste for services identical or similar to those provided by the plaintiff and covered by the plaintiff’s EXACOD registration. The Court of Appeal of Paris,335 upholding the Court of First Instance’s decision, stated that the domain name was indeed phonetically similar to the plaintiff’s mark and, even though the registration of the domain name alone did not constitute trademark infringement, exploitation of the website (linked to L’Inventoriste’s website) for similar services to the protected mark did. The Court also held that the defendant’s actions were effectively depriving the plaintiff from developing its activities in its field and that this illicit misappropriation of the plaintiff’s company name amounted to unfair competition. Accordingly, the appeal by L’Inventoriste was dismissed. The French company Sneep had been trading under the name L’ARGUS and had published the French automobile magazine L'Argus de L'Automobile et des Locomotions since 1927. The company had been using the trade name L’ARGUS in a continuous manner in various contexts, including the Internet. 335. S.A. Exacod v. S.A. L’Inventoriste, Court of Appeal of Paris, May 7, 2003. Vol. 95 TMR 417 In 2000, Sneep learned that the domain name argus.fr was already registered in the name of News Morning, which was using it as a website under construction, linked to the website www.emanitoo.com, registered in the name of E Manitoo Company. News Morning and E Manitoo Company had also registered the term ARGUS as a trade name in the French Company Register. Sneep launched an action against News Morning and E Manitoo Company, requesting the transfer to it of the domain name www.argus.fr and the cancellation of the tradename ARGUS. It also requested damages for the prejudice suffered owing to the respondents’ acts. The Trade Tribunal336 rejected Sneep’s claims. It held that when E Mantoo Company registered the domain name in 2002, the term ARGUS had already lost its initial distinctive character; the term ARGUS had over the years become part of the current French language and is nowadays perceived as a generic word by the French public. The Tribunal also considered that the registration of the domain name www.argus.fr was in line with the respondents’ other activities and, owing to the difference in goods and services offered by the respective parties, there was no risk of confusion. Furthermore, the Court pointed out that ARGUS is defined in two French dictionaries as a publication providing specialised information,337 and it made reference to several earlier decisions, one being a decision of the Court of Appeal of Paris338 in which it was held that the term ARGUS did not constitute a distinctive element of the composite trademark L’ARGUS DE L’AUTOMOBILE ET DES LOCOMOTIONS (THE ARGUS OF AUTOMOBILES AND MEANS OF TRANSPORTATION). The French travel agencies Viaticum and Lutéciel are the owners of several trademarks and domain names comprising the terms BOURSE DES VOYAGES (“travel exchange”) and/or BOURSE DES VOLS (“flight exchange”). Viaticum and Lutéciel initiated proceedings against the Internet company Google (France) after Google refused to stop selling the word combinations “bourse de vol” and “bourse des voyages” as so-called metatags through its “Adwords” and “Premium Sponsorship” databases. The two travel agencies discovered that when key words relating to traveling were entered on the Google search engine, the 336. Nouvelle d’Études d’Éditions et de Publicité S.A. (Sneep) & Argus Interactive S.A. v. News Morning S.A.R.L. & E Manitoo Co. S.A.S., Trade Tribunal of Paris, 21st Chamber, April 25, 2003 (Revue Internationale de la Propriété Industrielle et Artistique (RIPLIA) No. 212, 2nd Term 2003, at page 25). 337. Larousse of 1960 and Larousse of 1965. 338. Nouvelle d’Études d’Éditions et de Publicité S.A. (Sneep) v. Editor of the Magazine Camins Magazine, March 24, 1986, 418 Vol. 95 TMR term BOURSE DE VOL or BOURSE DES VOYAGES was displayed and when clicked upon would lead to websites owned by competitors of the plaintiff companies. In ruling against Google (France), the Court of First Instance339 stated: “It is not the use of the mark in the search engine database that is illicit, but rather Google’s commercial exploitation making a profit from third party publicity services.” Google (France) was ordered by the Court to pay substantial damages to the plaintiff companies and to cease using the trademarks at issue. GERMANY I.B.4. Geographical Names The German Patent and Trademark Office refused registration of the trademark MISSOURI, the name of an American state, for goods in International Class 12, inter alia, “vehicles and parts thereof,” and for services in International Class 37, inter alia, “preparing and maintenance of vehicles.” The Office held that the MISSOURI mark had to be rejected because of a need to keep this geographical denomination available for common use under Section 8(2)2 of the German Trademark Law. Upon appeal by the applicant, the German Federal Patent Court reversed the decision of the Patent and Trademark Office and denied a need to keep the trademark MISSOURI available for common use. According to the Court, registration of geographical denominations as trademarks cannot be denied on principle, but rather must be evaluated on a case by case bases relating to the specific goods and/or services covered. In that regard, it is not sufficient to simply refer to industrial enterprises that produce the same goods as the applicant does and that are located in the respective city, region, etc., that is the subject of the trademark application. To the contrary, the examining authority must be certain that the trade circles and consumers concerned will identify the descriptive meaning of the geographical denomination. With respect to the automotive industry, the Court found that it is customary to use geographical denominations as trademarks, which are not understood as an indication as to the geographical source of the labeled products. Instead, such designations are understood in the automotive sector as mere fantasy words that transfer a certain image or flair but do not convey any information as to the source of the vehicles. 339. Viaticum & Luteciel v. Google France, Court of First Instance of Nanterre, October 13, 2003. Vol. 95 TMR 419 As a result, the German Federal Patent Court found that there was no common need to keep the word mark MISSOURI available for common use for vehicles, parts thereof and related services in the sense of Section 8(2)2 of the German Trademark Law, and therefore it lifted the decision of the German Patent and Trademark Office.340 I.B.22. Distinctiveness The German Patent and Trademark Office refused registration of the trademark FITNESS COMPANY for goods and services in International Classes 18, 25, 28 and 41, inter alia, “backpacks; sportswear, gymnastic and sporting articles [included in Class 28]; operation of a fitness studio, operation of sports facilities.” The Office held that the trademark was not distinctive because “fitness company” was a commonly descriptive term for these goods and services. Upon appeal by the applicant, the German Federal Patent Court partially rejected the decision of the Patent and Trademark Office with respect to the goods “backpacks; sportswear, gymnastic and sporting articles” in International Classes 18, 25 and 28.341 The Court held that with respect to these goods “fitness company” was not merely a descriptive term in the sense of Section 8(2)2 of the German Trademark Law. Although “fitness company” could be used generally to characterize undertakings that produce goods for sports activities, the Court nevertheless denied that a term describing a commercial undertaking is also descriptive of the products originating from such undertaking. The Court did not concur that the trade circles and consumers concerned would assume that products labeled with the trademark FITNESS COMPANY originated from a fitness studio, etc. Further, it denied that the relevant trade circles and consumers would assume that clothing articles labeled with the FITNESS COMPANY mark were designed especially for use in fitness studios. With respect to the services “operation of a fitness studio, operation of sports facilities,” however, the Court confirmed the decision of the German Patent and Trademark Office and concurred with the Office’s opinion that FITNESS COMPANY was merely descriptive of an undertaking that operates a fitness studio. An Internet search had revealed that the term “fitness company” was often used in the industry as a descriptive term in connection with fitness studios. The German Federal Patent Court 340. German Federal Patent Court, Decision of January 14, 2004—28 W (pat) 266/03 (MISSOURI) (not yet published). 341. German Federal Patent Court, Decision of February 4, 2004—32 W (pat) 393/02 (FITNESS COMPANY) (not yet published). 420 Vol. 95 TMR therefore partially refused the registration of the trademark FITNESS COMPANY for the services “operation of a fitness studio, operation of sports facilities,” in accordance with Section 8(2)2 of the German Trademark Law. Registration of the trademark MINUTES & MORE for various telecommunications goods and services in International Classes 9 and 38 was refused by the German Patent and Trademark Office. The Office held that MINUTES & MORE was not distinctive and so should be kept free for common use. Upon appeal by the applicant, the German Federal Patent Court confirmed the decision. The Court found that charges for telecommunication industry services were usually billed in relation to minutes, and that the element “& MORE” was often used in advertising to promote a comprehensive offer. Therefore, the Court assumed that MINUTES & MORE would be understood merely as a descriptive term by the relevant trade circles and consumers. As a result, the Court determined that MINUTES & MORE was devoid of any distinctive character, and held that the trademark was not registrable, in accordance with Section 8(2)1 of the German Trademark Law.342 The German Patent and Trademark Office refused registration of the trademark WELLNESS COTTON for “clothing” in International Class 25. The Office held that WELLNESS COTTON for Class 25 products was devoid of any distinctive character and had to be kept free for common use, in accordance with Sections 8(2)1 and 8(2)2 of the German Trademark Law. Upon appeal by the applicant, the German Federal Patent Court confirmed the decision of the Patent and Trademark Office. The Court determined that WELLNESS COTTON conveys only the inherent meaning that the products are manufactured with a cotton material for a “well feeling.”343 Such a descriptive term, the Court ruled, is devoid of any distinctive character and has to be kept available for common use. In addition, noted the Court, the combination of purely descriptive terms in a trademark usually results merely in a descriptive combination. Therefore, registrability cannot be assumed even if the word combination is a newly created term that cannot be identified in dictionaries, etc. 342. German Federal Patent Court, Decision of May 12, 2004—29 W (pat) 227/01 (MINUTES & MORE) (not yet published). 343. German Federal Patent Court, Decision of March 2, 2004—27 W (pat) 254/03 (WELLNESS COTTON) (not yet published). Vol. 95 TMR 421 III.A.2.b. Similarity of Marks A recurring theme in trademark similarity cases is the significance to be attributed to the situation where one of two colliding marks is a part of the other, more complex mark. Recently the German Federal Supreme Court partly confirmed and partly revised its standards for deciding this issue. In the case in question, the senior mark, CITY PLUS, was wholly integrated into the junior mark, D2–BESTCITYPLUS.344 Both trademark owners were using their marks for telephone tariffs. In general, similarity is found only if the identical component “dominates” the more complex mark. Such domination is made possible if the component is more distinctive than the rest of the mark. Descriptive or associative components are normally not dominant. By these standards, CITY PLUS would normally have to be considered a weak component because it is understood as an advantageous tariff for city connections. In this particular case, however, the owner of the CITY PLUS mark had alleged an increase of distinctiveness by notoriety. This issue had not been considered by the court of appeals, which had denied similarity of the marks. The Federal Supreme Court disagreed, stating that if the senior mark CITY PLUS had achieved a significant degree of distinctiveness, this would not only enhance its scope of protection in general but also contribute to the similarity with D2– BESTCITYPLUS, because the consumer would attribute greater importance to this component if he or she encountered it within the more complex mark of a competitor. In a different case, the German Federal Supreme Court found that the notoriety of a senior mark may also have significance for acoustic similarity insofar as it may influence the pronunciation of a junior mark.345 Similarity was found between the senior mark TONLINE and the junior mark DONLINE, because T-ONLINE is a well-known mark and because it is customary to pronounce “Online” and the preceding capital letter (“T” or “D”) separately. In another case,346 the German Federal Supreme Court dealt with the question of whether absolute grounds for refusal, such as mere descriptiveness or nondistinctiveness, can be used against the plaintiff’s mark in an infringement lawsuit. In this case, the 344. German Federal Supreme Court, Decision of March 13, 2003, MarkenR 385 (2003). 345. German German Federal Supreme Court, Decision of November 27, 2003, MarkenR 76 (2004). 346. German German Federal Supreme Court, Decision of August 28, 2003, MarkenR 32 (2004). 422 Vol. 95 TMR plaintiff, relying on its word-picture registration for KINDER (“children”) for chocolate, attacked the junior mark KINDER KRAM (“children’s stuff”), which had been registered and used for sweets. The court dismissed the complaint holding that the word KINDER should not have been registered in the first place. Under German law, as long as a mark is registered, a court is bound to its protection. However, according to Section 22 I 2 of the Trademark Act, the defendant in an infringement lawsuit may argue that the senior mark could have been revoked on the basis of absolute grounds for refusal when its own (junior) mark was published. The German Federal Supreme Court has construed the wording of this provision restrictively and has prohibited the examination of absolute grounds for refusal by the court in an infringement lawsuit, except when the motion for revocation could no longer have been brought before the German Patent and Trademark Office, which in principle is competent to deal with revocation on the basis of absolute grounds for refusal. According to Section 50 II of the Trademark Act, a motion for revocation based on absolute grounds for refusal must be dismissed if (1) the mark has been registered for more than ten years or (2) the ground for revocation does not exist any more when a decision about the motion is reached (e.g., when a mark had been wrongly registered in spite of lacking distinctiveness, but had acquired secondary meaning in the meantime). Only in such cases may the defendant rely on absolute grounds for refusal in the infringement lawsuit; in all other cases the defendant must bring its motion for revocation before the German Patent and Trademark Office. If it does so, the infringement court may suspend the litigation until the Patent and Trademark Office has rendered its decision. As regards the scope of protection to be afforded a mark targeting a consumer group with a descriptive word (in this case, KINDER = “children”), the German Federal Supreme Court made clear that this mark owed its distinctiveness only to the different colors in the words (“K” in red, “Inder” in blue). A collision with regard to the unprotected word component KINDER alone does not create danger of confusion. The word kinder as such may be protected only after acquiring secondary meaning. Because of the plainly descriptive meaning of kinder, the court would require a degree of notoriety close to 100 percent within the respective consumer circles. Danger of confusion with the junior mark KINDER KRAM was denied both with regard to the word-picture mark KINDER and with regard to the word mark KINDERSCHOKOLADE (“children’s chocolate”). In both senior marks, the word component KINDER was found to be not distinctive, and therefore could not dominate their overall impression. Vol. 95 TMR 423 III.B.7. Color In two decisions in September 2003, Farbmarkenverletzung I347 and Farbmarkenverletzung II,348 the German Federal Supreme Court dealt with the scope of protection for trademarks consisting of a specific color only. A specifically defined color called MAGENTA had been registered as a Community Trademark for telephone services, and had acquired secondary meaning in Germany. A competitor had used a very similar color as the only color component in a black-and-white advertising picture. The plaintiff had moved to prohibit the use of its color “in a trademark fashion.” The German Federal Supreme Court found this motion to be inadmissible, as there are many lawful ways of using a protected color. The limitation implied by the phrase “in a trademark fashion” is still too unspecific, and a judgment containing these words would be too vague. But in Farbmarkenverletzung II it was held permissible to move for the prohibition of an “eyecatching” use of the color MAGENTA. Consequently, the plaintiff had to include in its motions the specific advertising to which it objected. Whether the use of a specific color in advertising identifies the advertised product or service as originating from a specific company depends on the expectations of the average consumer. Normally, he or she will look at a color as a design element, not as an indication as to source. In the first case, the court found a trademark infringement because the color MAGENTA is both unusual and well known in Germany (awareness degree of 60% with all consumers of telephone services). Moreover, this color had been used as the only color in the advertising of the competitor. Still, the question whether the use of this color is a trademark infringement deserves meticulous examination of the specific advertising, including all other components. The German Federal Supreme Court also referred to the Libertel case,349 decided by the European Court of Justice (ECJ). In Libertel the ECJ had held that a color as such must generally be kept available for all competitors and that it has an inherent distinctiveness only under exceptional circumstances and only with regard to specific goods or services. Regardless, the German Federal Supreme Court did not find these restrictive standards to 347. German German Federal Supreme Court, Decision of September 4, 2003, MarkenR 62 (2004). 348. German German Federal Supreme Court, Decision of September 4, 2003, MarkenR 66 (2004). 349. German Libertel Groep BV v. Benelux-Merkenbureau, No. C-104/01, 2003 E.C.R. 13793 (ECJ May 6, 2003). 424 Vol. 95 TMR be obstacles and granted injunctions against advertising using the color MAGENTA. GREECE I.B.3. Not Merely Descriptive Terms According to the Athens Administrative Court of First Instance the word mark TECHNOLOGY THAT YIELDS,350 as well as the Greek version thereof (Η ΤΕΧΝΟΛΟΓΙΑ ΠΟΥ ΑΠΟ∆Ι∆ΕΙ),351 used by the company Pioneer Hi-Bred International, Inc. to cover goods in Class 31, has no particular meaning for the average Greek consumer and does not describe a particular good, or kind or quality of good. Thus, it cannot be considered as lacking distinguishing character. I.B.4. Geographical Names A.G. Combi B.V. (“Combi”) applied to register the trademark UNITED STEAKS OF AMERICA for meat, fish, poultry and game, meat extracts, preserved meat, fish, poultry and game in Class 29. The Administrative Trademark Committee352 rejected the application on the grounds that it describes the goods it is intended to cover and that it may cause confusion to consumers regarding the origin of the covered goods because consumers may think that the covered goods originate from the USA, whereas Combi is a Dutch company. Upon recourse before the Administrative Court of First Instance, Combi requested the reversal of the decision issued by the Administrative Trademark Committee. The Court reviewed the case353 and held that: a) The word STEAKS in the trademark under review is a foreign word, which, according to the common knowledge, has not been established in the common Greek vocabulary in such a way that it might cause confusion to Greek consumers as far as the nature of the goods is concerned b) the word AMERICA may indicate a place of origin, but the combination of the words UNITED STEAKS OF AMERICA creates a fictional and novel indication, which possesses the necessary uniqueness and c) according to Combi’s allegation, which was uncontested, the trademark is intended to cover goods of 350. Athens Administrative Court of First Instance, Decision No. 12483/2003. 351. Athens Administrative Court of First Instance, Decision No. 12482/2003. 352. Decision No. 6717/1998 of the Administrative Trademark Committee. 353. Decision (unpublished). No. 2812/2003 of the Administrative Court of First Instance Vol. 95 TMR 425 American origin and, as a result, there is no risk of confusion of consumers. Therefore, the Court reversed the decision of the Administrative Trademark Committee and accepted the trademark for registration. Metro SB–Handels AG, a Swiss corporation, filed a trademark application for the trademark ALASKA354 aimed to distinguish electrical appliances in Classes 7 and 9, used mainly for household purposes. The Administrative Trademark Committee rejected the aforementioned application and held355 that the trademark ALASKA is a geographical indication and therefore lacks distinguishing ability.356 On recourse to the Administrative Court of First Instance, however, the Committee’s decision was reversed357 and the Court found that the word ALASKA does not reflect the place where the particular goods are produced because the actual place of production is Switzerland. Under these circumstances, the Court did not consider the word ALASKA to be a geographical indication of origin.358 In addition, the Court held that the word ALASKA cannot be deemed to be misleading to the average consumer as to the origin of the products in question because the state of Alaska is not famous for producing electrical appliances and that eliminates the risk of confusion to the average consumer. Brill Manitoba S.p.A, an Italian corporation, filed an application for registration of the trademark OMINO BIANCO MARSEILLAISE FOAM359 to cover liquid detergent, used mainly for household purposes, in Class 3. The Administrative Trademark Committee rejected the application, holding360 that the OMINO BIANCO MARSEILLAISE FOAM mark was a geographical indication and therefore lacked distinguishing ability.361 354. Trademark Application No. 137468/9.7.1998. 355. Decision No. 2227/1999 of the Administrative Trademark Committee. 356. Trademark Law No. 2239/1994 Article 3, paragraph 1. 357. Decision No. 3436/2003 of the Administrative Court of First Instance issued on September 30, 2003. 358. Trademark Law No. 2239/1994 Article 3, paragraph 1. 359. Trademark Application No. 139880 (March 8, 1999). 360. Administrative Trademark Committee, Decision No. 8055/1999. 361. See Trademark Law No. 2239/1994, Article 3, paragraph 1, sections c and g. 426 Vol. 95 TMR On recourse to the Administrative Court of First Instance, the Committee’s decision was affirmed.362 The Court found that the words MARSEILLAISE FOAM did not accurately reflect the place where the particular goods were produced, and that they might mislead the consuming public into believing the product was produced in France when the actual place of production was in Italy. Under these circumstances, the Court considered the words MARSEILLAISE FOAM to be a geographical indication of origin,363 despite the plaintiff’s contention that many other companies use the same phrase on their detergent products in order to indicate the quality of the particular detergent. The Administrative Court of Appeals affirmed the decision of the Administrative Court of First Instance. The appellate court held that the writing of the word MARSEILLAISE on two different parts on the detergent’s packaging, one next to the word FOAM and one next to the words LIQUID DETERGENT WITH SOAP, could in fact mislead consumers as to the origin of the particular soap detergent.364 The Court also found that consumers were prone to deem the geographical origin of the particular product as being Marseilles, when it was, in fact, Italy. The fact that there were several similar products bearing the same type of indication on their packaging (MARSEILLAISE FOAM) had, according to the Court’s judgment, no bearing on the particular case, as each matter must be examined on its own merits. I.B.7.a. Two-Dimensional Marks Ferrero S.p.A. (“Ferrero”) applied to register a colored device trademark consisting of the two halves of an egg, the one in brown and the other in white, situated opposite each other, covering cocoa chocolate, chocolate eggs, pastry and confectionery in Class 30. The Administrative Trademark Committee partially rejected the application,365 namely as far as chocolate eggs are concerned, on the ground that the device of the divided chocolate egg describes the covered goods and, therefore, lacks distinctive character. Upon recourse before the Administrative Court of First Instance,366 the Court took into consideration that: 1) Ferrero’s trademark had already been filed since 1996 in its country of origin, Italy, as well as in various other countries in order to cover goods in Class 30 including chocolate eggs; and 2) Ferrero’s 362. Athens Administrative Court of First Instance (Three-Member), Decision No. 1123/2002. 363. See Trademark Law No. 2239/1994, Article 3, paragraph 1, sections c and g. 364. Athens Administrative Court of Appeals, Decision No. 4033/2003. 365. Decision No. 8519/1999 of the Administrative Trademark Committee. 366. Decision No. 7951/2002 of the Administrative Court of First Instance. Vol. 95 TMR 427 trademark consists of a device of a chocolate egg broken into two pieces, situated opposite each other and having a particular color composition, the outer part thereof being brown and the inner part being white. According to the Court’s rationale, this color combination causes a particular visual impression and adds distinguishing characteristics to the trademark, which are capable of defining the origin of the chocolate eggs from the company Ferrero. The Court thus reversed the decision of the Administrative Trademark Committee and allowed the trademark registration. I.B.8.a. Similarity of Marks The Administrative Trademark Committee accepted367 registration of the trademark KRISTA368 for goods in Class 25, despite the Opposition filed by Krizia SpA, an Italian company, on the ground that the application was filed in bad faith in an effort to exploit Krizia SpA’s good will for its trademark KRIZIA covering identical goods in Class 25 like clothing apparel, for men, women and children, etc., as well as its other trademarks MOODS BY KRIZIA, CRAZY KRIZIA and SPAZIO KRIZIA, covering goods in Class 3. Krizia SpA filed Recourse369 with the Administrative Court of First Instance, requesting the reversal of the Committee’s decision and the dismissal of the KRISTA trademark application. The Court granted370 Krizia SpA’s Recourse and reversed the Committee’s decision by finding that there is substantial visual and phonetic similarity between the respective trademarks, capable of causing confusion to the consuming public. By virtue of statutory371 as well as well-established precedent372 to that effect, the Court revoked the Committee’s decision. On the one hand because it held that both marks, KRIZIA and KRISTA, closely resemble each other because they consist of six capital letters, out of which the first three and the last one are identical and all letters composing the respective words are written in the exact same manner. On the other hand, the minor device, which was part of the preceding KRIZIA application, was deemed insufficient for the purposes of adequately distinguishing the respective trademarks in the eyes of the 367. Decision No.2776/1995 of the Administrative Trademark Committee. 368. Trademark Application KRISTA No. 120287/7.9.1993. 369. Recourse File No. 11615/2000. 370. Decision No. 11918/2002 of the Administrative Court of First Instance issued on September 30, 2003. 371. Trademark Law No. 2239/1994 Article 38, paragraph 7. 372. Council of State Decision No. 1082/1994. 428 Vol. 95 TMR average consumer, especially because both marks aimed to distinguish the same goods in Class 25. General Biscuit applied to register the trademark LU & Device, consisting of the word LU appearing in a black frame, which is the prolongation of a white parallelogram, in order to cover coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, breadstuffs and breadstuffs preparations, bread, biscuits, pastry, honey, syrup, pastry, baking powder, salt, mustard, pepper, vinegar, spices, ice, confectionery, chocolate and bread with honey, in Class 29. The Administrative Trademark Court of First Instance rejected the application373 on the ground that the trademark LU & Device visually and phonetically resembles the prior trademark registration LUR in the name of the Danish company Landbrugsministeriet covering goods in Class 29, thus creating risk of confusion to consumers. The case was brought to the Administrative Trademark Court of Second Instance, which confirmed same,374 and upon appeal to the Council of State, which remanded the case to the Administrative Court of Appeals.375 The Administrative Court of Appeals376 took into consideration 1) that the words LU and LUR consist of one syllable having the letters LU in common and 2) that they differ only as far as the last letter R of the trademark LUR and the black frame. Thus, the Court held that the dominant feature of the respective trademarks is the syllable LU, which renders likely the risk of confusion to consumers due to the significant phonetic and visual similarity of the two trademarks. Moreover, the Court held that the goods covered by the two trademarks are similar and they are distributed through the same stores, a fact which enhances the risk of confusion to the average consumer. I.B.9.a. No Similarity of Marks Ion AE Viomichania ke Emboria Cacao Ke Sokolatas (“Ion”) applied to register the trademark SMASH - ΣΜΑΣ,377 in order to cover various goods in classes 29, 30, 32, 33 (goods made of chocolate, sugar and similar ingredients) among which coffee, coffee substitutes, tea, sugar, breadstuffs, breadstuffs preparations and standardized foods based on maize flour, bread, biscuits, icecream, sweets, pastry, honey and chewing gum (Class 30). 373. Decision No. 7635/1981 of the Administrative Trademark Court of First Instance. 374. Decision No. 89/1991 of the Administrative Trademark Court of Second Instance. 375. Decision No. 2792/2000 of the Council of State. 376. Decision No. 3407/2002 of the Administrative Court of Appeal State (published in Epitheorisi Emporikou Dikaiou–Commercial Law Review, Volume 4 2003, 916). 377. The second word in Greek characters. Vol. 95 TMR 429 The application was partially rejected by a decision of the Administrative Trademark Committee,378 namely as far as goods in Class 30 are concerned, on the ground that the trademark SMASH - ΣΜΑΣ resembled the prior trademark registration SMACKS in the name of Kellogg Company (“Kellogg”), covering coffee, tea, sugar, cocoa, rice, tapioca, sago, coffee substitutes, breadstuffs and breadstuffs preparations, bread, biscuits, ice cream, sweets, pastry, honey, syrup, pastry, baking powder, barm, pepper, vinegar, sauces, spices and ice in Class 30. The Committee held that the two trademarks are visually and phonetically similar and that the covered goods in Class 30 are similar, thus creating risk of confusion to consumers as far as the origin of the goods from a certain company is concerned. The Administrative Court of First Instance affirmed the Committee’s decision. Upon appeal before the Court of Appeals, the Court took into consideration the fact that the two trademarks are pronounced in a different manner and that SMASH - ΣΜΑΣ consists of two words, one in Latin and the other in Greek characters and held that there is no visual and phonetic similarity between them, capable of causing confusion to consumers as far as the origin of the goods from a certain company is concerned.379 Upon appeal before the Council of State, the Court affirmed the decision of the Court of Appeals, and concluded that there is no sufficient similarity between the two trademarks simply due to the fact that they have four letters in common, out of which one is a vowel.380 In assessing the overall visual and phonetic impression respectively caused by the two trademarks, the Court found that in view of the obviously different pronunciation of the consonant endings of the two trademarks, SMASH - ΣΜΑΣ and SMACKS, they are sufficiently different, and thus not capable of causing confusion to consumers and SMASH - ΣΜΑΣ cannot be considered as an imitation of the trademark SMACKS. L’Oreal applied for registration of the word mark LONGITUDE to cover cosmetics, especially makeup products, in Class 3. The application was rejected by the Administrative Trademark Committee381 on the ground that it resembled the prior trademark registration for LATITUDE-LONGITUDE in the name of Horizon Cosmetics Inc., also covering goods in Class 3. The Committee held that the two trademarks were visually and 378. Decision No. 3288/1987 of the Administrative Trademark Committee. 379. Decision No. 4841/1991 of the Court of Appeal. 380. Decision No. 2613/2002 of the Council of State (published in the Commercial Law Review, Volume 4 2003, 914). 381. Administrative Trademark Committee, Decision No. 2957/2001. 430 Vol. 95 TMR phonetically similar and that the covered goods were similar, thus creating a risk of confusion for consumers as far as the origin of the goods from a certain company was concerned. On recourse before the Administrative Court of First Instance, the Court took into consideration the fact that L’Oreal’s trademark consists of one word, whereas the prior-registered trademark LATITUDE-LONGITUDE consists of two words, appearing one under the other, and beside the two words there is a device consisting of a compass inside a parallelogram frame. The Court held that there was no visual and phonetic similarity between the two marks under comparison capable of causing confusion for consumers as far as the origin of the goods from a certain company was concerned. Accordingly, the Court reversed the decision of the Administrative Trademark Committee and accepted the trademark LONGITUDE for registration.382 I.B.11.c. Violation of Public Order The applicant, an individual by the name Alfredo Carlo, a resident of Germany, filed a trademark application383 with the Administrative Trademark Committee for a trademark that consisted of the word CANNABIA and the device of a leaf on which the word CANNABIA was inscribed and in between the gaps created by the leaf’s edges, the following words were written: “PFAND FLASCHE AIG 5% vol. 0.31” and on the bottom of the device the following indications: “ZUTATEN: WASSER, MALZ, HANFBLUTEN, HORFEN, NATURAL PRODUCTS.” The trademark application aimed to distinguish “beer and non-alcoholic drinks” in Class 32 and “alcoholic drinks” in Class 33. The Administrative Trademark Committee rejected384 the application on the ground of violation of public morality and public order as provided for by the relevant trademark law provisions.385 Subsequent to the applicant’s recourse and review of the Committee’s decision by the Administrative Court of First Instance, the Court reversed386 the Committee’s decision because it did not agree with its rationale. The Court’s rationale was based on the following facts, which were found by the Court to be true and decisive: 382. Athens Administrative Court of First Instance, Decision No. 16113/2003. 383. Trademark Application No. 136239/6.3.1998. 384. Decision No. 2565/1999 of the Administrative Trademark Committee. 385. Trademark Law No. 2239/1994 Article 3, paragraph 1f. 386. Decision No. 3448/2003 of the Administrative Court of First Instance issued on November 18, 2003, (to be published in the Commercial Law Review, Volume 1 2004). Vol. 95 TMR 431 a) The device of the trademark in question which contained the device of a leaf on a color scheme of yellow, green, red and blue and the fictional word CANNABIA cannot be considered as making a direct or indirect reference to the drug Indian cannabis, which contains the substance tetrahydrocannabiol, since such a substance is not part of the ingredients of the goods covered by the particular trademark. b) The official report issued by the General Drug Administration of Greece, which clearly affirmed the fact that the particular goods contained no narcotic substance whatsoever. Based on the above the Court was satisfied that there was no real nexus between the particular trademark and drugs or narcotics, thus it allowed the trademark application to proceed to registration. I.B.11.d. Scandalous Mark Antonio Puig S.A. applied to register the trademark DIAVOLO for “soaps, perfumery, essential oils, cosmetics, hair lotions” in Class 3. The Administrative Trademark Committee387 rejected the application on the ground that this trademark contravenes the religious sentiment of the average person—orthodox Christian—as well as the public and religious order and, therefore, it is not acceptable for registration. Upon Recourse before the Administrative Court of First Instance, Antonio Puig S.A. requested the reversal of the decision of the Administrative Trademark Committee. The Court reviewed the case and found that:388 The Trademark DIAVOLO is intended to cover “soaps, perfumery, essential oils, cosmetics, hair lotions” in class 3, namely goods for the personal care of their target group. Within this scope, this trademark has no religious or moral character but suggests the “diabolical subtlety” by which the goods covered thereby manage to achieve the qualities promised. Therefore, the Court reversed the decision of the Administrative Trademark Committee and accepted the trademark for registration. 387. Decision No. 2823/1999 of the Administrative Trademark Committee. 388. Decision No. 3587/2003 of the Administrative Court of First Instance (published in Epitheorisi Emporikou Dikaiou–Commercial Law Review, Volume 1, 2004). 432 Vol. 95 TMR I.B.12. Famous Marks Fendt - Caravan GmbH (Fendt) applied to register the trademark FENDT CARAVAN and device to cover goods in Classes 12, 16, 18, 21, 25 and 28. The Administrative Trademark Committee rejected the application in part,389 specifically insofar as it concerned goods in Classes 18 and 25, on the ground that said trademark resembled the trademark FENDI, owned by Fendi Adele S.r.l. (Fendi), which covered, among other things, goods in Classes 18 and 25. Fendt filed recourse before the Administrative Court of First Instance for the revocation of said decision, and Fendi filed an intervention against the acceptance of Fendt’s recourse. The Court took into consideration that the House of Fendi started in 1952 and is established in its home country (Italy) as well as all over the world. Its staff consists of 380 people, and 80 percent of its production is exported, to almost every country. Fendi’s trademark has been registered in 117 countries. The firm owns 570 FENDI trademark registrations in 55 countries, covering goods in 15 classes; 270 FENDI and device trademark registrations in 34 countries; and 896 FF FENDI trademark registrations in 106 countries. Fendi owns various FENDI trademark registrations in Greece, and goods covered thereby have circulated in the Greek market since 1980. The Court’s rationale was that the trademark in Fendt’s registration application consists of the words FENDT and CARAVAN and a device, whereas Fendi’s trademark consists of the word FENDI. Although the trademarks under comparison are not identical or similar enough to cause confusion for consumers (the last letter of the FENDT trademark is the letter T and the last letter of the FENDI trademark is the letter I), in view of the fact that FENDI is a famous trademark, the Court held that the filing of the trademark application by Fendt to cover goods in Classes 18 and 25 contravened good faith. It confirmed the decision of the Administrative Trademark Committee and did not allow the trademark to register as far as goods in Classes 18 and 25 were concerned.390 Cardona Holdings Ltd (Cardona) applied to register the trademark FORMULA 1 in Greek characters (ΦΟΡΜΟΥΛΑ 1) to cover goods in Class 16 (various publications, magazines, etc.), and the Administrative Trademark Committee accepted said trademark for registration.391 Formula One Licensing B.V. 389. Administrative Trademark Committee, Decision No. 5387/2000. 390. Athens Administrative Court of First Instance, Decision No. 15894/2003. 391. Administrative Trademark Committee, Decision No. 4672/2000. Vol. 95 TMR 433 (Formula One) filed an opposition before the Administrative Trademark Committee, requesting the reversal of the decision. The Committee, after having considered the reasoning of the opposition as well as Cardona’s allegations, accepted the opposition and rejected the trademark application FORMULA 1 (in Greek characters).392 According to the Committee’s rationale, Formula One owns many trademark registrations in various countries of the world, as well as various Community Trademark registrations, all containing the distinguishing feature FORMULA and covering goods in many classes of the International (Nice) Classification, including Class 16. Said trademarks have been filed by Formula One as authorized by the FIA (Federation Internationale d’Automobile), which has been organizing the well-known FORMULA ONE car races, which last several months, since 1950. Formula One is responsible for watching, promoting and defending all the above trademarks. In view of their association with the FORMULA ONE car races, the FORMULA ONE trademarks have become marks of exceptional fame among the Greek and international public and, thus, enjoy additional protection. The Committee concluded that the trademark FORMULA 1 in Greek characters was an exact translation of one or more Formula trademarks and therefore had been filed in bad faith, as Cardona should have been aware of the existence and fame of the FORMULA trademarks. I.B.22. Distinctiveness L’Oreal applied for registration of the trademark EXPRESS MAKE UP to cover perfumery, eau de toilette, gel, bath and shower salts, cosmetics, especially creams, cleansing milks, lotions, gels and powders for the face, the body and the hands, preparations for sun protection, makeup preparations, shampoos, gels, sprays, mousse and coiffure balsams and preparations for treating the hair, hair lacquers, hair tint and decolorizing preparations, permanent and curling preparations, essential oils for personal use and dentifrices, in Class 3. The Administrative Trademark Committee accepted the above-mentioned trademark application for all covered goods except the face powders, on the ground that the words of which the trademark consists indicate the kind of covered goods (face powders) and the qualities thereof.393 On recourse before the Athens Administrative Court of First Instance, the Court reversed the decision of the Administrative 392. Administrative Trademark Committee, Decision No. 4582/2004. 393. Administrative Trademark Committee, Decision No. 5727/2000. 434 Vol. 95 TMR Trademark Committee and accepted the trademark EXPRESS MAKE UP for face powders as well.394 According to the Court’s rationale, the foreign word “makeup” has been established in the Greek language, but not with the meaning of “face powders,” whereas in combination with the word “express,” which has also been established in the Greek language with the meaning of “quick, urgent,” it creates a word trademark that is distinctive and has sufficient distinguishing character also insofar as face powders are concerned. III.A.1. Famous Marks Hermes International (Hermes), a French company known by its distinguishing title Hermes and the owner of numerous wellknown trademark registrations and applications in Greece and overseas, filed a Main Infringement Action395 against the Greek company called Aik. Bavavea–P. Kolliopoulou O.E. with the distinguishing title Casa di Hermes. This company was founded in 1996. Hermes charged that the company name infringed on Hermes’ own company name and numerous trademarks and violated the relevant provisions of the Greek Trademark Law and Unfair Competition Law. The Administrative Court of First Instance upheld the plaintiff’s contentions.396 It found that the company name Casa di Hermes (which in Italian means “House of Hermes”) was intentionally chosen by the respondent to exploit the French company’s goodwill and mislead the consuming public into assuming that there was some type of business nexus between the Greek company and the French company, or that the Greek company was the French company’s affiliate, or subsidiary. The case was further strengthened by the finding that the shape and color combination of the packaging used by the respondent for the products it sold, such as leather bags, shoes, wallets, key rings and other leather items and smoking items, was a slavish imitation of the packaging used by the plaintiff. The Court therefore issued an order enjoining the respondent from using the word “Hermes” on its own distinguishing title or in any combination as a distinguishing title, in any manner including on its store label or on any of its stationery. 394. Athens Administrative Court of First Instance, Decision No. 9836/2003. 395. File No. 98823/6008/2001 (filed July 17, 2001). 396. Athens Administrative Court of First Instance (Three-Member), Decision No. 6293/2003. Vol. 95 TMR 435 III.B.6. Configuration of Goods Honda Motor Company Limited, a Japanese company, filed actions397 against importers of benzine engines, whose configuration, shape, placement and color of parts were almost identical to those of a particular Honda engine type, GX160. The engines, which had been imported from China, were made for general use, such as for power generators and digging equipment. In pioneering decisions following three separate proceedings (two of which were brought before the Athens398 and one before the Thessaloniki399 Administrative Court of First Instance), the courts accepted Honda’s contention that the particular configuration of the specific Honda engine, its shape and placement of parts were distinctive enough to become a distinguishing feature for Honda in Greece and that consumers seeing such an engine configuration immediately associated the particular engine with Honda. The courts therefore granted three separate injunctions concerning the distinctiveness of the outer shape and shape of the parts of a benzine engine of general use marketed by Honda, and the confusion caused by other, similar engines that had almost identically copied the particular shape of the Honda engine, without copying the name Honda or any other name or trademark similar to that of Honda. The significance of these decisions is paramount, especially because, before the decisions were issued in Greece, there was limited precedent on the issue of whether the distinctiveness of goods could be based solely on their configuration, without taking into account any potential trademark infringement per se. III.J. Gray Marketing Eastman Kodak Company (Kodak), a registered New York company with headquarters in Rochester, New York, filed four petitions for injunction against four separate respondents located in the island of Crete. 400 Kodak’s legal action was based on information it had received that there was unauthorized selling of KODAK items and use of the KODAK trademark by the four individuals named as respondents, each of whom maintained stores selling cameras and related items in Crete. The KODAK items being sold by the four respondents were imported from South Africa and did not comply with the relevant 397. File No. 629/2004 (filed January 19, 2004). 398. Decision Nos. 5144/2004 and 3321/2004, respectively. 399. Decision number not available at the time of printing. 400. File Nos. 829, 827 and 838 (April 18, 03). 436 Vol. 95 TMR European Union safety standards. In addition, the technical characteristics of the particular items were aimed at a different climate, that of Europe, instead of Africa. The Cretan Court of First Instance, based in Chania, ruled that the four respondents must cease their unauthorized selling of the KODAK items and remove from their store and destroy any signs or labels, etc., bearing the name KODAK.401 This was necessary because, the Court reasoned, the average Greek consumer was likely to be misled into believing that the respondents’ business activities were somehow endorsed by Kodak and that the respondents were acting in the capacity of an affiliate or a sales representative for Kodak and their products and services were subject to Kodak’s quality control, when in fact neither of the foregoing was true. There was, therefore, an evident risk of confusion for the consuming public, which was further enhanced by the large KODAK signs affixed on all four stores owned by the respondents. V.A. Domain Names The company Google, Inc., with headquarters in California, USA, is well known even amongst “mild” Internet users, as the provider of possibly the most popular search engine on the Internet. When Google, Inc. attempted to register the domain name google.gr, in Greece, it discovered that the particular domain name was already registered to another entity, of undisclosed identity. Due to the relevant provisions of Greek legislation,402 full confidentiality can be granted to those domain name owners that opt for it. Consequently, Google, Inc. filed a petition with the Public Prosecutor in order to discover the identity of the owner of the google.gr petition was granted and it was then revealed that a limited liability company in Thessaloniki, by the name Theofilos Sagiroglou EPE had registered the domain google.gr in its name as of April 2001. Google, Inc. then immediately filed a petition for Injunction403 with the Thessaloniki Court of First Instance requesting that Respondent be enjoined from using the domain name google.gr because the risk of confusion to Internet users is evident and alleging that the registration of the particular domain name by Respondent was done in bad faith. 401. Chania Court of First Instance, Decision Nos. 2120/2003, 2121/2003, 2408/2003. 402. National Telecommunications and Post Committee Administrative Order No. 268/73. 403. Petition for Injunction File No. 17481/2003. Vol. 95 TMR 437 In a pioneering decision, the Court agreed with Google, Inc.’s claims and granted its petition,404 enjoining Sagiroglou EPE from using the particular domain name. In its rationale, the Court held that, although the registration of a domain name is much less complicated than a trademark registration, in light of the current reality of electronic business conduct, the role of the domain name has now become similar to that of a trademark or a company name and, therefore, a domain name is subject to similar legal protection. The Court took into account the numerous trademark and domain name registrations that Google, Inc. had filed throughout the world and the fact that the Google search engine is one, if not the most, popular search engine available to Internet users. Consequently, the Court held that the Internet user who visits the www.google.gr website would expect to access the well-known Google search engine and not the advertising company of Sagiroglou EPE, who was using this webpage as a platform for promoting its own company’s advertising activities. This exploitation of Google Inc.’s fame by Sagiroglou was found to be an act of unfair competition, creating a false impression to Internet users that Sagiroglou and Google have some type of business nexus when, in fact, they never did. HONG KONG I.B.2. Merely Descriptive Terms Kabushiki Kaisha Sony CP Laboratories applied to register the trade mark BEAUTY SUPPLEMENT C-WHITE for beverages, soft drinks, fruit drinks and fruit juices, whey beverages, mineral and aerated waters and other non-alcoholic drinks, syrups and other preparations for making beverages in Class 32. The Registrar of Trade Marks (“the Registrar”) determined that the mark BEAUTY SUPPLEMENT C-WHITE directly referred to the character or quality of the goods and was neither inherently adapted to distinguish under Section 9 of the Trade Marks Ordinance (Cap. 43) nor inherently capable of distinguishing under Section 10. Therefore, the mark was unacceptable for registration in both Part A and Part B of the Register. The applicant did not contest the determination regarding Part A registration, but put forward arguments that the mark qualified for registration in Part B. The applicant offered to separately disclaim the words “Beauty,” “Supplement,” “White” 404. Decision No. 27482/2003 issued on September 18, 2003 (published in Commercial Law Review, Volume 54, 2003, 907-14). 438 Vol. 95 TMR and the letter “C.” The Registrar, however, was not persuaded and maintained that the mark was unregistrable in both Part A and Part B.405 The Registrar cited the Keystone Knitting decision,406 which held that in determining whether words have a direct reference to the character or quality of goods, they are not limited to their strict grammatical significance, but are to be regarded as they would present themselves to the public at large. The Registrar found that the words “Beauty Supplement” unequivocally informed the purchaser that an attribute of the goods was that it was a beverage supplement that would enhance beauty. As for the letter “C,” it would be readily understood as referring to vitamin C. This was apparent from the label on the applicant’s goods as seen from a pamphlet produced. The first line of the label contained the words “Beauty Supplement,” the second line “C-White,” the third line “Power Vitamin C” and the fourth line “1000 mg.” The lettering of the second line was twice the size as the lettering of the first line. Below the wording was a large letter “C” and over this was superimposed the word “Vitamin.” The Registrar found from a number of websites and existing products that for some time, Vitamin C had been advanced as a skin lightening agent and an aid to health and skin beauty. Read together, the mark BEAUTY SUPPLEMENT C-WHITE was held to refer directly to the character or quality of the goods, namely, a health supplement containing Vitamin C that would have the effect of lightening the complexion and enhancing skin beauty. Under Section 9, a mark referring directly to the character or quality of goods is unregistrable in Part A unless evidence of distinctiveness is adduced. In this case, no evidence of distinctiveness was adduced. A mark referring directly to the character or quality of goods that is unregistrable under Section 9 is also generally incapable of distinguishing under Section 10. The Registrar followed the test set out in the Jeryl Lynn Trade Mark decision: “The distinction between a sign which is capable of distinguishing for the purposes of trade mark law and one which is not can be turned into a question posed in colloquial language. Does the sign indicate who the product or service came from or does it only tell the customer what the product or service is?”407 The Registrar held that there was no single feature in the mark BEAUTY SUPPLEMENT C-WHITE that indicated the origin of the goods. Instead, the entire mark indicated what the 405. The Registrar of Trade Marks, 1 August 2002 (unreported). 406. (1928) 45 RPC 421. 407. [1999] FSR 491. Vol. 95 TMR 439 goods were and their purpose. The mark was therefore unregistrable in Part B. The Registrar noted that, with time, the mark might come to be seen as a trade mark by consumers rather than a description of the goods. However, no evidence of use or other such evidence was held to have been adduced by the applicant.408 I.B.8.a. Similarity of Marks Croco Cola Company Limited applied to register the trade mark CROCO COLA for beverages in Class 32 covering beers, mineral and aerated waters, soft drinks, fruit drinks and fruit juices, syrups and other such preparations. By way of background, the Croco Cola Company Limited was a subsidiary of Crocodile Garments Limited, a clothing manufacturer and retailer in Hong Kong, as well as a member of the Lai Sun group of companies. The application was accepted by the Registrar subject to a disclaimer of the word “Cola,” but opposed by the Coca-Cola Company.409 The opponent relied on a number of earlier registrations and use of its COCA-COLA mark in Hong Kong. The Registrar identified the registration in Class 32 as the relevant one for consideration in this case. The opponent relied on Section 20(1) of the Trade Marks Ordinance (Cap. 43). Under Section 20(1), the test is whether (a) the goods claimed by the applicant are identical to or of the same description as those covered by the opponent’s registration and (b) the applicant’s mark is identical to or so nearly resembles the opponent’s mark that deception or confusion is likely to be caused. The goods claimed by the applicant were identical to the goods covered by the opponent’s registration. In comparing the applicant’s and opponent’s marks, it was not in dispute that the common element “Cola” is the generic word for a type of beverage. The Registrar accepted the applicant’s submission that the first word “Croco” in the applicant’s mark and “Coca” in the opponent’s mark were therefore the words that would remain in the average memory. It followed that in comparing the two marks, the focus should be on the first words of the parties’ marks. However, the common element “Cola” should not be ignored. The reasoning of the Coca-Cola Company of Canada v. Pepsi-Cola of Canada410 and Broadhead’s Application411 decisions was followed. 408. Unreported. This case was decided under the old Trade Marks Law, which is relevant to applications filed before 4 April 2003. 409. The Registrar of Trade Marks, 10 November 2003 (unreported). 410. (1942) 59 RPC 127. 411. (1950) 67 RPC 209. 440 Vol. 95 TMR Based on first impressions and the principle of imperfect recollection, the Registrar held that visually the two marks were similar. The Registrar applied the principle of imperfect recollection and rejected the argument that the principle should be totally discounted in light of the huge reputation of the COCACOLA mark. In other words, the Registrar rejected the argument that once a mark becomes a household word, it becomes too well known to be easily confused with others. The Registrar held that the huge reputation of the opponent and its COCA-COLA mark were irrelevant under Section 20(1) because it involved a comparison of the relevant marks based on a notional (as opposed to actual) user. It was found that the two marks are visually similar because they share a common second word COLA. The first words CROCO and COCA are of similar length. Both begin with the letter “C” and contain the letter “c” in the middle. Further, looking at all fair and normal use of the applicant’s mark, in the future, the applicant might also add a hyphen to its mark in the middle of CROCO and COLA making it even more similar to the opponent’s mark. Aurally, the marks were also held to be similar. Both CROCO and COCA are made up of two syllables. The marks were also held to be similar taking into account the principle of imperfect recollection and the fact that the buying public tends to carelessly pronounce and slur words. The Registrar found that CROCO would likely be pronounced “Krou-kou” or “Coco,” which is similar to COCA. The Registrar accepted the opponent’s submission that as English is not the mother tongue of the majority of people in Hong Kong, the letter “r” in CROCO would likely be mispronounced or not pronounced at all. On the other hand, the Registrar rejected the submission of the applicant that the buying public would pronounce CROCO in the same way as it is pronounced in the word crocodile because they would associate the CROCO COLA mark with Crocodile Garments Limited and other associated companies of the applicant. The Registrar rejected this submission because it held that the reputation and use of the marks of the applicant’s associated companies was irrelevant. The Registrar also found that because CROCO is not the formal abbreviation for the word crocodile, it would not be pronounced as such. The applicant cited a number of cases in which it was held that marks containing the word COLA and another word were not similar to the COCA-COLA mark. These included the POLA COLA,412 COALA COLA413 and KOALA KOLA414 decisions. The 412. (1992) 25 IPR 429. 413. (1991) 24 IPR 113. Vol. 95 TMR 441 Registrar held that these cases were decided on their own merits and did not assist the applicant here. In conclusion, the Registrar held that the opposition succeeded under Section 20(1). The Registrar went on to consider Section 12(1). Under Section 12(1), the opponent must first show that its mark has an established reputation in Hong Kong. It is only then that the burden of proof shifts to the applicant and the likelihood of deception is considered. As a threshold point, the Registrar found that the Coca-Cola Company did have an established reputation in Hong Kong. This was not disputed by the applicant. The Registrar also found that because the level of deception and confusion required under Section 12(1) is the same as that required under Section 20(1), the opposition similarly succeeded under Section 12(1). The Registrar also dealt with the opponent’s argument that because the applicant did not propose to use the CROCO COLA mark, it was not entitled to be registered as the proprietor of the mark under Section 13(1). The Registrar considered the words “proposed to be used.” The opponent submitted that, at the time of registration, there must be a definite and present intention to use the mark. It is not sufficient that there is a mere general intention on the part of the applicant to use the mark at some future time. The opponent relied on the decision of Ducker’s Trade Mark.415 On the other hand, the applicant submitted that, provided its claim to proprietorship was bona fide and there was a genuine intent to use the mark, the low threshold for Section 13(1) would be satisfied. The applicant further submitted that, even if it did not intend to use the CROCO COLA mark itself, the requirements under Section 13(1) would be met if it allowed its parent company, Crocodile Garments Limited, or other associated companies within the Lai Sun group to use the mark. The Registrar stated that it was unnecessary to resolve the conflict between the opponent’s and applicant’s submissions because she had already found that the opposition succeeded under Sections 12(1) and 20(1). However, she did note that factually, the Ducker case could be distinguished. The case concerned rectification proceedings and the mark had been registered solely with the intention of transferring it; in other words, there had been no bona fide intention to use.416 414. (1968) RPC 231. 415. (1928) 45 RPC 397. 416. Unreported. This case was decided under the old Trade Marks Law, which is relevant to applications filed before 4 April 2003. 442 Vol. 95 TMR I.B.9.a. No Similarity of Marks Rhino Watch Co. Ltd. applied to register the trade mark ALTINO for watches and watch parts in Class 14. The application was accepted by the Registrar, but opposed by S.A. Ancienne Fabrique Georges Piaget & Cie (“Piaget”).417 The opponent relied on its Hong Kong registration of its trade mark ALTIPLANO for cuff links made of precious metals or coated therewith, jewelry, precious stones, chronometers, watches and clocks in Class 14. The opponent also relied on a corresponding Swiss registration. Section 20(1) of the Trade Marks Ordinance (Cap. 43) (TMO) was not available as a ground for opposition because it required an earlier Hong Kong registration at the application date. The opponent’s Hong Kong registration of its ALTIPLANO mark was, in fact, registered on a later date than the applicant’s application. Sections 12(1) and 23 of the TMO were relied on. Section 12(1) requires that, as a threshold point, the opponent show that its mark has an established reputation in Hong Kong by the application date. It is only then that the burden of proof shifts to the applicant and the likelihood of deception is considered. As to the extent the opponent must show a reputation in Hong Kong, the Registrar considered that he was bound by Hunter J’s judgment in Hong Kong Caterers Ltd. v. Maxim’s Ltd.,418 which adopted what Hunter J described as the purely factual approach in Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty. Ltd.419 The Pioneer Hi-Bred Corn test looks at the awareness of the opponent’s mark in the market for the goods claimed by the applicant. The opponent failed to discharge his burden and was not able to show a sufficient awareness of the ALTIPLANO mark in Hong Kong by the application date. The Registrar found that he could attach no weight to the evidence of Hong Kong sales provided. The opponent provided only the sales figures for one year, expressed in Hong Kong dollars. This was held to be insufficient because, most importantly, it was not supported by invoices and could have represented sales from the opponent’s head office to its Hong Kong boutiques rather than to the public. There was also no breakdown of sales between those before the application date and those after and between those in relation to watches and those not so related. Further, no figures in relation to price, sales quantity or volume were provided. The Registrar described the sales figures that were provided as unhelpful and stated that it should not have been difficult for the opponent to obtain the relevant documentation from its own boutiques. 417. The Registrar of Trade Marks, 6 March 2003 (unreported). 418. [1983] HKLR 287. 419. [1979] RPC 410. Vol. 95 TMR 443 The evidence supplied in terms of advertising in Hong Kong was also held to be insufficient. The Registrar stated that the opponent did not even assert that the “enormous efforts and substantial investments made in advertising” were made in Hong Kong. Two advertisements in the magazine “Racing World” were supplied. The Registrar accepted that “Racing World” was an effective vehicle for advertising prestige watches including the opponent’s watches. However, no circulation figures were provided and the publication dates of the advertisements were handwritten, the Registrar having to take these dates on trust. The Registrar also found that the dominant impression one would gain from the advertisements is that they are for a PIAGET, rather than an ALTIPLANO watch, the ALTIPLANO mark being a secondary mark. The opponent also provided a product brochure. However, again no assertion was made that the brochure was even circulated in Hong Kong. The Registrar assumed that it was circulated in the two Piaget outlets in Hong Kong. As the Registrar had found that there had been no, or no significant, sales in Hong Kong, the Registrar stated that it could only assume that persons who had viewed the brochure were limited in number. Further, the circulation of the brochure was assumed to be limited by the fact that one of the outlets was in a hotel and, therefore, Hong Kong locals were less likely to have access to the brochure. The Registrar stressed that it was the awareness of the opponent’s mark in Hong Kong that was the relevant criteria. The Registrar then assessed the relevance of at Section 23 of the TMO that provided for opposition based on an earlier foreign registration in the country of origin of the goods. The test is whether the applicant’s mark is identical to or so nearly resembles the opponent’s mark that deception or confusion would be caused. The goods claimed by the applicant must also be identical to or of the same description as those covered by the opponent’s registration. Unlike Section 12(1), the burden of proof for Section 23 is on the opponent and the Registrar has discretion as to whether the applicant’s mark should be refused registration. The opponent need not prove that its mark has an established reputation or has been used in Hong Kong or in the country of origin, though the Registrar takes these factors into account in exercising its discretion. As the opponent relied on an earlier Swiss registration, for Section 23 to apply in this case, the opponent’s goods must have originated from Switzerland. The Registrar found that there was evidence to this effect. The evidence was in the form of one advertisement in “Racing World” where underneath “Piaget” appeared the words “Geneve 1874,” which the Registrar took to be a clear reference to Switzerland, and in the statutory declaration 444 Vol. 95 TMR filed by the opponent, the preamble stating that the opponent was a societe anonyme organized and existing under the laws of Switzerland. As for whether two marks, in general, so nearly resemble each other that confusion would be caused, the Registrar compares them by their look and sound. Here, the Registrar compared the ALTINO and ALTIPLANO marks on the basis that because the two words would have no known meaning to consumers in Hong Kong (ALTINO is an invented word and ALTIPLANO is a plateau of the Andes), consumers would more likely recognize them by their visual features. The Registrar compared the two marks as follows: 1. Both words have a European feel or look and the first and last syllables are the same. The Registrar considered these to be the strongest points of the opponent based on accepted case law that the first syllable of a word mark is generally the most important. 2. However, the length of the two words is different. The length of the opponent’s ALTIPLANO is one third longer than the applicant’s ALTINO. 3. The Registrar considered that the look of marks is affected by their sound. This is because it is a common human trait for consumers to say marks in their minds and mentally read them as they look at them. Therefore, in terms of the first impression created by the two marks, they do not resemble each other because, as consumers mentally read the two marks, ALTINO is more readily pronounceable than ALTIPLANO and is shorter. 4. As for whether the marks aurally resemble each other, the Registrar found that ALTINO should be pronounced such that the three syllables are of equal length, with stress on the second syllable, whereas ALTIPLANO should be pronounced such that the third syllable is stressed and longer. Again, this finding was made in the absence of evidence as to how the words should actually be pronounced. The Registrar found that based on the differences in the sound of the marks, on balance, consumers would not likely be confused. This is curious in light of the earlier finding that visual features play a more important role in this case, consumers being more likely to recognize the marks by their visual features. The Registrar also applied the doctrine of imperfect recollection. This assumes that consumers of reasonable intelligence and taking reasonable care have imperfect recollections of marks. The Registrar held that the ALTIPLANO mark, not appearing on the watch face or good itself and being a secondary mark associated Vol. 95 TMR 445 with the primary mark PIAGET, is unlikely to be confused by consumers with the ALTINO mark. As for whether the marks covered identical goods or goods of the same description, the Registrar found that the overlap in the item “watches” was sufficient to make the specification of goods claimed by the applicant as a whole the same as the goods covered by the opponent’s foreign registration. However, the Registrar went on to comment that watches range from the expensive to cheap and no evidence was given as to the trade channels in which the watches would be sold and as to the nature and kind of customers. Nevertheless, the Registrar held that, assuming fair and normal use of the two marks, though the opponent’s watches were currently sold exclusively through its own boutiques, in the future, the same trade channels might be used and the opponent and applicant might be in direct competition with each other. However, the Registrar was of the opinion that if a watch of the applicant was sold in the same outlets as the opponent’s and they were compared side by side, there would actually be less likelihood of confusion. The Registrar considered that the customers of the opponent would be customers who purchased for prestige, not for fun or function. To such customers, the manufacturer would be the most important factor in purchasing a watch. The Registrar also considered that it was inconceivable that the ALTIPLANO line of watches would be sold without the PIAGET mark. Therefore, it is unlikely that customers concerned with prestige would be confused. The Registrar stated that this factor alone would support the finding that the applicant’s mark was not likely to confuse. The Registrar went on to state that even if its finding that the opponent’s watches were bought for their prestige were wrong, it would exercise its discretion in rejecting the opposition. The Registrar described the intention of Section 23 as the prevention of copying of marks in Hong Kong of marks that were registered and protected in the country of origin. There was no suggestion of copying by the applicant here. In addition, the opponent had not established the reputation of the mark in Hong Kong and had not discharged its burden in proving that deception or confusion would be caused. It is noted that a new TMO (Cap. 559) has been enacted in Hong Kong and took effect on 4 April 2003. There is no Section 23 equivalent in the new TMO. However, the old Section 23 continues to apply to oppositions against applications under the old TMO that remained pending on 4 April 2003.420 420. Unreported. 446 Vol. 95 TMR Canal Jean Co. Inc. applied to register the trade mark CANAL JEAN CO. NEW YORK and Device for men’s, women’s and children’s clothing—pants, jeans, jackets, blouses, shirts, sweaters, outer jackets, coats, T-shirts, sweatshirts and footwear in Class 25. The application was accepted by the Registrar, but opposed by Canali S.P.A.421 The opponent relied on two earlier registrations and use of its trade marks CANALI and CANALI MILANO in Class 25. A preliminary issue was raised as to the admissibility of the exhibits to two statutory declarations filed by the applicant. The exhibits had not been separately notarized. The rules that governed the making of statutory declarations were Rules 106 and 107 of the then Trade Mark Rules (Cap. 43A). It is noted that the Trade Mark Rules (Cap. 43A) have been repealed and replaced by the Trade Mark Rules (Cap. 559A). The corresponding Rule 80 of Cap. 559A is similar (albeit broader) than Rules 106 and 107 of Cap. 43A. The then Trade Mark Rules (Cap. 43A) were based on similar rules in the United Kingdom. The Registrar quoted paragraph 2161 of the United Kingdom Patent Office Work Manual for the 1938 Trade Marks Act, which stated that where witnesses make declarations outside the jurisdiction and adopt the format and manner of attestation of their own country, such declarations are acceptable if the Registrar is satisfied of their worth as evidence. The Registrar is normally so satisfied if the declarations are serious statements of the witness’ evidence. In this case, the Registrar found that the exhibits were admissible. The statutory declarations had been made by a witness in the United States. In the United States, separate notarization of exhibits is not required, however, they must be authenticated. In the body of the statutory declarations, the nature and contents of each exhibit were fully described and the descriptions of the exhibits tallied with the actual exhibits attached. The Registrar held that the exhibits had been authenticated and that the statutory declarations together with the exhibits were serious statements of the witness’ evidence. The opponent relied on Section 12(1) of the Trade Marks Ordinance (Cap. 43). However, before on opponent can invoke Section 12(1), it must first establish that its marks have a sufficient reputation in Hong Kong. The applicant conceded that the opponent’s marks enjoyed such a reputation. The onus of proof then shifted to the applicant to show that if its mark was allowed to be registered, no likelihood of deception would arise. In essence, the applicant’s mark was a composite mark consisting of the words CANAL, JEAN CO. and NEW YORK 421. The Registrar of Trade Marks, 8 August 2003 (unreported). Vol. 95 TMR 447 superimposed on a black and white checkerboard pattern. The opponent’s CANALI mark was a pure word mark. In comparing the two marks, the Registrar noted that counsel for the opponent and counsel for the applicant adopted two entirely different approaches. Counsel for the opponent argued that the word CANAL was the main identifying feature of the applicant’s mark, the other elements JEAN CO. and NEW YORK being disclaimed and/or nondistinctive. On the other hand, counsel for the applicant argued that the other elements should not be ignored and that the applicant’s mark should be compared with the opponent’s as a whole. The Registrar approved of the applicant’s approach, stating that it was well-established law that marks must be compared in their entirety. Fair weight and importance must be attached to the points of resemblance and points of dissimilarity, but the ultimate solution was to be arrived at by judging the general effect of the respective wholes.422 The Registrar further noted that, when considering whether marks are similar, disclaimed elements should neither be ignored nor given less significance than they deserve after due allowance has been made for the degree to which they are nondistinctive of the relevant goods or services.423 Based on first impressions and the principle of imperfect recollection, the Registrar held that visually, the two marks were not similar. This was particularly so because the applicant’s mark was a composite mark, the overall arrangement of which was distinctive, whereas the opponent’s mark was a pure word mark. The Registrar also looked at the ideas conveyed by the marks. The Registrar accepted submissions that the word “Canal” is an English word with a known meaning, whereas “Canali” is an Italian word, as well as a surname. Although the two words share the same meaning (the word canal means artificial waterway and canali means channel), the Registrar held that CANALI would not convey any known meaning to the purchasing public in Hong Kong. Where one word has a known meaning and the other does not, it is generally accepted that the two words are more readily distinguishable from each other, and this was held to be the case here. In light of the differences between the two marks, the Registrar rejected submissions by the opponent that the applicant’s mark would be seen as a sister mark of the opponent’s, or that the applicant and opponent would be seen as associated. The Registrar also discussed the aural differences in the marks. The Registrar found that the two marks would be referred 422. Clark v. Sharp (1898) 15 RPC 141. 423. Granada Trade Mark (1979) RPC 303. 448 Vol. 95 TMR to differently. The opponent’s mark would be referred to as CANALI. On the other hand, the applicant’s mark would not simply be referred to as “CANAL,” but rather CANAL JEAN CO. or CANAL JEAN CO. & Checkerboard Design. This was because the words CANAL and JEAN CO. were equally prominent and because the checkerboard device retained its distinctiveness and identity and was not diminished by the presence of the words. The Registrar went on to hold that even if the finding that the marks would be referred to differently was wrong, the two words “Canali” and “Canal” sounded different. One word has three syllables, the other two. Although both words would be pronounced with an emphasis on the second syllable, the second syllable “nal” in “Canali” would be pronounced with a long “nal,” whereas the second syllable “al” in “Canal” would be pronounced with a shorter “el” sound. The Registrar noted that in any event, any aural differences or similarities in the two marks were not so important in this case because both the applicant’s and opponent’s goods, being ready made clothing, were purchased by self selection over the counter, rather than ordered orally. In comparing the goods of the opponent and applicant, the Registrar, after considering all normal and fair use of the marks on the goods, held that the goods were of the same description. The opponent gave evidence that its goods were high fashion and/or formal wear for men, which were sold through high-end department stores, such as Lane Crawford in Hong Kong. On the other hand, the applicant had not used the CANAL JEAN CO. NEW YORK mark in Hong Kong, but gave evidence that in the United States the mark had been used on popular clothing for children and young men and women, which were sold through midto low-range street clothing stores. The Registrar held that although presently, the opponent’s and applicant’s goods were not in direct competition, assuming all normal and fair use, in the future, there was nothing in the specifications to preclude the opponent and applicant selling the same goods using the same trade channels. In conclusion, the Registrar held that though the goods of the applicant and opponent were of the same description, there were considerable visual, conceptual and aural differences in the marks. There was, therefore, no real tangible risk that the purchasing public would be deceived and confused into believing or wondering whether the goods came from the same source and no likelihood of deception and confusion. The same reasoning and conclusion were held to apply to the opponent’s CANALI MILANO mark. The Registrar noted that the CANALI MILANO mark was even more readily distinguishable from the applicant’s mark in that the public would more easily Vol. 95 TMR 449 recognize that the opponent’s goods came from Italy and the applicant’s from the United States. Also based on Section 12(1), the opponent submitted that the applicant’s mark is likely to be deceptive if it was used on clothing other than jeans or clothing made of denim (jean material). The reasoning was that the applicant’s CANAL JEAN CO. NEW YORK mark conveyed the impression that the applicant sold jeans or jean material products. The Registrar rejected the submission. The Registrar followed the reasoning of the GALVALLOY decision.424 In the GALVALLOY case, the applicant for removal sought to have the GALVALLOY mark expunged on the ground that it would be likely to deceive if not used on goods that were alloys. In the present case, the Registrar held that purchasers of ready-made clothing would not analyze carefully the meaning of the word JEAN in the applicant’s mark. They would therefore realize that they were dealing with a trade mark and that not all products of the applicant were jeans or made of denim. Further, the Registrar referred to the ORWOOLA decision.425 In that case, the ORWOOLA mark, being a misspelling of the words “all wool,” was held to be likely to deceive when used on goods not wholly made of wool. The decision was distinguished on the basis that the ORWOOLA mark was comprised of a single element, whereas JEAN was one of various elements in the applicant’s mark. Further, the word ORWOOLA, comprising the sole element of the mark, was a non-registrable word in itself, being descriptive when used on goods made wholly of wool. It is noted that the word JEAN would also be descriptive and nonregistrable if used on jeans or denim products. However, it was one of various elements in the applicant’s mark and the applicant had disclaimed it. The opponent also sought to rely on Section 20(1). Under Section 20(1), a mark can be opposed on the basis that it is deceptively or confusingly similar to an earlier registered mark. As the level of deception or confusion required under Section 20(1) is the same as that required under Section 12(1), the Registrar held that the opponent also failed under Section 20(1).426 I.B.12. Famous Marks Croco Cola Company Limited applied to register the trade mark CROCO COLA for beverages in Class 32 covering beers, mineral and aerated waters, soft drinks, fruit drinks and fruit 424. [1963] RPC 34. 425. (1910) 1 Ch 130. 426. Unreported. This case was decided under the old Trade Marks Law, which is relevant to applications filed before 4 April 2003. 450 Vol. 95 TMR juices, syrups and other such preparations. The Registrar considered the issue of similarity and famous marks in this case. For a full discussion of this case, see Section I.B.8.a. Similarity of Marks, supra. I.B.13. First to Apply Versus First to Use Chen Hung Chi trading as Suntex International Co. applied to register the trade mark CHRISTIAN DANIEL for quartz analog watches, liquid crystal display watches, parts of watches, clocks and parts of clocks in Class 14 on 30 August 1999 (“the application date”). The application was accepted by the Registrar, but opposed by Lam Hau Kwan trading as Amona Enterprise Co.427 The opponent applied to register the CHRISTIAN DANIEL mark for goods in Class 14 in 2000. The opponent submitted under Section 13(1) of the Trade Marks Ordinance (Cap. 43) that it was the proprietor of the mark. The Registrar held that to succeed under Section 13(1), the opponent must show that the marks and goods in question are identical or virtually identical. The Registrar further held that, where there has been use, the proprietor is the first to use and any supporting evidence is pivotal. The opponent claimed that it had designed and first used the CHRISTIAN DANIEL mark in early 1995. The applicant claimed that it first used the CHRISTIAN DANIEL mark in early 1998. The opponent produced evidence of use in the form of sales invoices on which appeared the abbreviations “CD” or “C Case.” The Registrar found from these invoices that the unit price of “CD” and “C Case” items varied greatly and appeared to fluctuate in a matter of weeks or even days. The Registrar held that the price range was too great to infer that it was due to different models being priced differently; it could only be inferred that “CD” and “C Case” were each abbreviations for different marks. The Registrar noted that the opponent itself gave evidence that there were several marks that bore the short form “CD.” The opponent also produced faxed production notices from Wing Fat (HK) Holding Limited, one of its manufacturers. Again, on the notices, reference was only made to “CD” items, not the CHRISTIAN DANIEL mark. The Registrar found that the date mechanically printed by the fax machine read 4 January 1998, which was a date before the application date. However, on the notices themselves, the date of order was stated as 20 September 1999 and the date of delivery as 7 October 1999. The Registrar found that the 4 January 1998 fax transmission date was highly suspect. 427. The Registrar of Trade Marks, 21 August 2003 (unreported). Vol. 95 TMR 451 Photographs showing the CHRISTIAN DANIEL mark applied to watches produced by the opponent were further held to be of no consequence because no indication was given as to when the photographs were taken. The Registrar concluded that none of the evidence established an association between “CD” and the CHRISTIAN DANIEL mark, let alone an association between “C Case” and the CHRISTIAN DANIEL mark. Therefore, the opponent did not establish use of an identical or virtually identical mark prior to the application date and the opposition failed under Section 13(1). The opponent also relied on Section 12(1). Under Section 12(1), the opponent must first show that it has a sufficient reputation in Hong Kong by the application date before the onus shifts to the applicant and the likelihood of deception is considered. The Registrar held that the opponent had not discharged its burden and shown a sufficient reputation in Hong Kong by the application date. This was because no other relevant evidence was produced but evidence of sales of “CD” and “C Case” items, which as found under Section 13(1), did not necessarily show sales of goods bearing the CHRISTIAN DANIEL mark and, thus, a reputation in the mark.428 ICELAND I.A.1.b. Quality and Quantity of Use The Registrar published International Trade Mark Registration No. 731 291, AUDIOVOX (word), in the name of Intertrace S.L., for telephones and telephone accessories in Class 9 and telecommunications in Class 38, in the official gazette, open for opposition. The international filing date was March 15, 2000. AUDIOVOX Corp. filed an opposition to the mark’s registration on the basis of its use of the trademark AUDIOVOX in Iceland since 1995, in particular for the sale of mobile phones, and on the grounds of protection of its corporate name under the Paris Convention. The opposition was rejected by the Registrar, as AUDIOVOX Corp. produced no evidence regarding use of its mark at the time of the filing of Intertrace’s registration, or of registration or use of its company name in Iceland. AUDIOVOX Corp. appealed the Registrar’s decision. The Appeal Board reversed, finding that sufficient use was established since 550 phones were sold between December 1995 and July 1997 and a further four phones were sold between October 1999 and December 1999. The Appeal Board noted that already-sold phones might still 428. Unreported. This case was decided under the old Trade Marks Law, which is relevant to applications filed before 4 April 2003. 452 Vol. 95 TMR be in use and some might even still be available from retailers in the first half of 2000. The Appeal Board also ruled that AUDIOVOX Corp.’s corporate name was protected.429 I.B.2. Merely Descriptive Terms Michelin & Cie appealed the Registrar’s decision to refuse registration of its word mark HI-CONTROL for tires and similar goods in Class 12. The Appeal Board confirmed the Registrar’s decision, noting that the quality and texture of tires have an impact on a vehicle’s control. The expression HI-CONTROL was therefore considered descriptive for the goods in question. The word HI was considered by the Appeal Board as a short form for HIGH, and the use of the hyphen did not add to the distinctiveness of the mark.430 I.B.8.a. Similarity of Marks The Registrar refused registration of URBAN DEFENCE (words), in the name of Urban Decay Cosmetics for goods in Class 3 on the ground of confusing similarity with prior-registered trademarks URBAN SURVIVAL (words) and URBAN ACTIVE (words), both registered for similar goods in Class 3. Urban Decay Cosmetics appealed the Registrar’s decision. The Appeal Board stated that the word URBAN was not descriptive for the goods in question and could be considered a strong mark for those goods. On the other hand, the Board considered the latter part of the mark weak and not sufficiently distinctive and pointed out that consumers would think that all of the marks belonged to the same product line. The Registrar’s decision was thus confirmed.431 The Registrar published International Registration No. 735 653 CAMUS, in the name of Camus “La Grande Marque,” for goods in Class 34, in the official gazette, open for opposition. Reemtsma Cigarettenfabrikken Gesellschaft MBH filed an opposition, claiming confusing similarity with its prior-registered trademark CAMPUS in Class 34. The Registrar confirmed similarity of goods and argued that the marks are visually somewhat similar. Phonetically, although the pronunciation of the two marks might be different in French, the Icelandic 429. Audiovox Corp. v. Intertrace S.L., Appeal Board decision of 10 July 2004, http:// www.els.is/focal/webguard.nsf/key2/appeal3-2002.html/$File/2002-3%20AUDIOVOX%20.pdf. 430. Michelin & Cie v. Registrar, Appeal Board decision of 14 January 2004, http://www.els.is/focal/webguard.nsf/key2/appeal3-2003.html/$File/2003-3%20HI-CONTROL.pdf. 431. Urban Decay Cosmetics LLC v. Registrar, Appeal Board decision of 26 March 2004, http://www.els.is/focal/webguard.nsf/key2/appeal9-2003.html/$File/2003-9%20URBAN% 20DEFENCE.pdf. Vol. 95 TMR 453 pronunciation of the marks was relatively similar.432 The Registrar therefore upheld the opposition and refused registration to the mark CAMUS. I.B.9.a. No Similarity of Marks The Registrar published registration of CANAL DIGITAL (words & device), in the name of Canal Digital Norge A/S, for services in Classes 38 and 41, in the official gazette, open for opposition. Canal+ (société anonyme) filed an opposition, claiming confusing similarity with its prior-registered trademarks CANAL+ (word & device) in Classes 9, 16, 25, 28, 35 and 41, and CANAL SATELLITE (words & device) in Classes 9, 16, 38 and 41. The Registrar confirmed similarity of goods and services but rejected the opposition, arguing that the word CANAL, having strong reference to the English word channel, was descriptive for the most essential services in question, i.e., television, radio and wireless communications, thus conferring very limited protection to this part of the mark.433 The Registrar published registration of LEIFTRA (word), in the name of Pharmaco hf, for goods in Class 5, in the official gazette, open for opposition. Bayer Aktiengesellschaft filed an opposition to the registration on the basis of confusing similarity with its prior registered trademark LEVITRA (word), Int. Reg. 744 146, in Class 5. The Registrar confirmed similarity of goods. However, the Registrar did not apply a rule established by the Supreme Court, which provides for increased resemblance between trademarks for prescription drugs, as in this case there was no evidence of the goods being sold on prescription. The Registrar found that there was not much similarity in the pronunciation and not too much visual resemblance and thus rejected the opposition.434 The Registrar published registration of PROCALYX (word), in the name of Alcon Inc., for eye medication in Class 5, in the official gazette, open for opposition. Alza Corporation filed an opposition to 432. Reemtsma Cigarettenfabrikken Gesellschaft MBH v. CAMUS “LA GRANDE MARQUE,” Registrar decision of 10 September 2003, ELS Tíðindi, 9/03, http://www.els.is/focal/webguard.nsf/key2/20urdskurdur2003.html/$File/CAMUS%20202003.pdf. 433. CANAL+ (société anonyme) v. Canal Digital Norge A/S, Registrar decision of 11 November 2003, ELS Tíðindi, issue 12/2003, http://www.els.is/focal/webguard.nsf/key2/ 25urdskurdur2003.html/$File/CANAL%20DIGITAL%2025-2003.pdf. 434. Bayer Aktiengesellschaft v. Pharmaco hf., Registrar decision of 7 April 2004, ELS Tíðindi, issue 4/2004, http://www.els.is/focal/webguard.nsf/key2/20urdskurdur2003.html/ $File/CAMUS%2020-2003.pdf. 454 Vol. 95 TMR the registration on the basis of its prior registered trademark CAELYX (word), for drugs for cancer treatment in Class 5. The Registrar confirmed similarity of goods. Although there was no evidence that PROCALYX would be subject to sale by prescription, the Registrar applied the rule laid down by the Supreme Court that increased resemblance is acceptable between two trademarks for drugs when both are sold by prescription. The opposition was thus rejected.435 II.F. International Issues The Registrar published International Trade Mark Registration No. 798 530, MTN MONEY TRANSFER NORDIC (words & device), for services in Class 36, in the official gazette, open for opposition. Uno Money Transfers, S.A. filed an opposition to the mark’s registration on the basis of two European CTM registrations, UNO MONEY TRANSFERS, No. 22 56 320, and UNO, No. 22 56 321 both for services in Class 36. The opposition was rejected on ground that no rights are granted by Iceland to CTM registrations and that no rights had been acquired by opponent for its marks in Iceland through use.436 III.B.1. Passing Off The new owner of an ice cream shop terminated a distribution agreement with ice cream manufacturer KJÖRÍS, which since 1987 had supplied ice cream to the shop. No name was displayed on the shop, so the main identification of the shop to the public was in the shop’s advertising signs, the KJÖRÍS trademark, a blue oval shape with the word KJÖRÍS in white letters, displayed in a large format in the windows and on a marquis over the entrance and in a smaller format inside the shop. After termination of the distribution agreement, the new owner modified the signs by erasing the word KJÖRÍS and putting the words “Since 1987” in its place. KJÖRÍS filed for an injunction, which was granted and subsequently confirmed in court on the ground of passing-off. The judge also found that the use of the altered mark constituted an infringement of the KJÖRÍS trademark. KJÖRÍS’ claim for damages was nonetheless dismissed.437 435. ALZA Corp. v. Alcon Inc., Registrar decision of 13 February 2004, ELS Tíðindi, Issue 2/04, http://www.els.is/focal/webguard.nsf/key2/4urdskurdur.html/$File/ PROCALYX %20%204-2004.pdf. 436. Uno Money Transfers v. Money Transfer Nordic AB, Registrar decision of 12 May 2004, ELS Tíðindi, issue 5/2004, http://www.els.is/focal/webguard.nsf/key2/ 13urdskurdur2004.html/$File/MTN-2004.pdf. 437. Kjörís ehf. v. Ísboxið ehf., Reykjavík District Court judgement of 26 February 2004, unpublished. Vol. 95 TMR 455 V.A. Domain Names In August 1999, the agent for MAZDA Motor Corp. applied for the domain name mazda.is. The application was refused in September because evidence of the trademark registration in the name of the applicant was missing. In October 1999, the domain name mazda.is was allocated to an informal MAZDA fan club. In March 2003, the agent, on behalf of MAZDA Motor Corp., demanded that the fan club relinquish the domain name. The fan club refused. In the subsequent court action, the fan club referred to the plaintiff’s lengthy inaction. In response, the agent reported that he had, upon refusal, notified the Icelandic Domain Name Authority (INTIS) in September 1999 that he would provide formal authorization from MAZDA Motor Corp. for a renewed application for the domain name and claimed that no urgent action had been needed as the domain name had been inactive from the beginning. For this reason, the judge accepted that he had not forfeited his right to contest the allocation of the domain name to the fan club. On the basis of MAZDA Motor Corp.’s registered MAZDA trademark, albeit stylized, and established use through the sale of 5,000 MAZDA vehicles over the years, though sales in recent years had been weak, the judge found that the MAZDA trademark rights, as described, precluded the defendant from keeping the domain name. The defendant was thus ordered to cancel the domain name.438 INDONESIA III.A.2.b. Similarity of Marks In ESSO v. ASSO,439 Exxon Mobil Corp. (EMC), the plaintiff in this case, is the owner and user of the registered mark ESSO for products in International Classes 4 and 11. On 25 July 2003, the Trademark Office (TMO) issued PT. Kharisma Gemilang Wahana (KGW) a registration certificate for the mark ASSO for motor vehicle accessories and parts in Class 12, including starters, transmission gears, radiators, pistons and reflectors. According to EMC, the TMO should reject KGW’s ASSO trademark in Class 12, which has the same pronunciation as the ESSO trademark. EMC argued that the public would associate the defendant with the plaintiff and will falsely believe that the defendant’s products either originate from the plaintiff or there is 438. Mazda Motor Corp. v. Mazda Fan Club, Reykjavik District Court judgement of 16 January 2004, unpublished. 439. Commercial Court of the Central 22/Merek/2004/PN.Niaga/JKT.PST, 14 July 2004. Jakarta District Court, Case No. 456 Vol. 95 TMR at least a business relationship. The plaintiff is of the opinion that without the inspiration of its well-known ESSO trademark, the defendant would never have filed the ASSO trademark. KGW denied and rejected all of EMC’s arguments as they are the owner and the first registrant of the ASSO trademark, No. 544156 dated 25 July 2003, for goods in Class 12. KGW acknowledged EMC’s ESSO mark, No. 373656 of 16 May 1996, for goods in Class 4 and No. 466639 of 14 April 1998, for goods in Class 11. However, KGW argued that it is crystal clear that the marks of EMC and KGW are not the same at all based on the meaning of the words and the kind of goods they cover. Therefore, KGW argued that EMC’s claim is frivolous. According to the TMO, the co-defendant, EMC's claim is not clear (obscure libel) because the legal grounds of its claim are incorrect, namely the data in the records of the TMO indicate that the registration No. 466639 is for the trademark MP3.COM in the name of MP3.Com, Inc. in the United States and not for ESSO. Therefore, the plaintiff’s claim is considered obscure. On the basic similarities claimed by the EMC, there is no prohibition for an individual or entity to file an application for the same trademark as long as it is for different kinds of goods. In Article 6 para. 1 letter a, an application must be rejected by the TMO if the mark has similarities in whole or in part with an earlier registered mark for the same kinds of goods or services. EMC claims that its mark is well known. Therefore, EMC is obliged to prove that the mark concerned is well known. According to Article 6 para. 1 letter b of Trademark Law No. 15 of 2001, this can be proven based on public opinion, a reputation as a wellknown mark, promotional campaigns, registration in several countries and survey results made by an independent institution. EMC also claimed that KGW filed its trademark in bad faith. Therefore, EMC must prove that the mark concerned is filed in bad faith according to Article 4 para. 1 of Trademark Law No. 15 of 2001. The plaintiff must evaluate whether or not the registrant filed the mark in bad faith based on the fame of the plaintiff's mark, or the fact that the mark can create unfair competition or mislead consumers. The case was decided by the Commercial Court in favour of KGW. The Commercial Court agreed with the TMO’s arguments that the EMC’s claim was obscure as the legal ground to file this cancellation based on the ESSO mark, No. 466639, which was not in accordance with the data at the TMO because this register number actually refered to the mark MP3.COM of MP3.Com, Inc. in the United States and not the mark ESSO. In addition, the facts that EMC amended its claim and corrected the registration No. 446639 in their counter-plea clearly showed that EMC was not consistent with its own arguments and therefore the claim by EMC Vol. 95 TMR 457 could not be justified because the revision was made in the counter-plea and not as it should be before the reply of the defendant was submitted to the Court. Therefore, the TMO’s argument that EMC’s claim was obscure had a legal basis, and this claim was rejected. The Supreme Court, however, rejected the Commercial Court's judgment and ruled in favour of EMC. The Supreme Court reasoned that the Trier of Fact has wrongfully given judgment in favour of KGW. The Supreme Court rejected KGW’s argument as too narrow that revising the registration number during the counter-plea was late according to civil procedure and should not be accepted. The Supreme Court found that the ESSO trademark is a well-known mark in its home country and also in other countries as seen from the evidence. The use of the word ASSO as a trademark by KGW was based on bad faith as this word is similar in pronunciation and sound to the ESSO mark of EMC. By using the mark ASSO, KGW was cashing in on EMC’s well-known ESSO mark. The Supreme Court also based its finding on previous Supreme Court decisions where a trademark was found to have similarities with another mark in shape, composition or sound. Furthermore, the Supreme Court held that Indonesia must maintain International relations and respect trademarks from foreigners. In this Supreme Court judgment the following can be noted. The well-known mark ESSO was recognized not only in EMC’s home country but also in other countries, including Indonesia. The trademark ASSO was considered to have similarities to and may be compared with the ESSO trademark even though they covered different classes of goods. The Commercial Court’s judgment to reject EMC’s claim because revision was forwarded in the counterplea and not earlier before the defendant’s reply according to civil procedure is considered too narrow a view. III.F.5. Cancellation In the FOREVER FRIENDS & Teddy Bear logo case,440 the plaintiff, Hallmark Cards Plc. in England (Hallmark) is the owner and user of the registered mark FOREVER FRIENDS & Teddy Bear logo in several classes as follows: • FOREVER FRIENDS trademark No. 526114 in Class 6, dated 31 December 2002; No. 526203 in Class 28, dated 3 January 2003; No. 548450 in Class 21, dated 17 September 2003; 440. Commercial Court of the Central Jakarta No.15/MEREK/2004/PN.NIAGA.JKT.PST, 13 April 2004. District Court, Case 458 Vol. 95 TMR Teddy Bear logo No. 542498 in Class 16, dated 9 July 2003 and No. 542497 in Class 28, dated 9 July 2003; • FOREVER FRIENDS and FOREVER FRIENDS & Teddy Bear logo still pending under Agenda No. D00-2002 01001-01007 in Class 20, dated 17 January 2002 and Agenda No. D00-2003 24175-24378 in Class 16, dated 8 September 2003. Hallmark has used and registered the FOREVER FRIENDS & Teddy Bear logo in many countries all over the world since 1987. Through continuous use and promotion, its logo has become a wellknown trademark. The TMO as the co-defendant registered the trademark FOREVER FRIENDS & Teddy Bear logo for goods in Class 16 under No. 400605 dated 20 October 1997, in the name of the other defendant, Mr. Hendrawan. This application was filed in 1995. Hallmark strongly objected to the registration of FOREVER FRIENDS & Teddy Bear logo trademark No. 400605 in Class 16 by Mr. Hendrawan based on basic similarities in the font and type of goods in Class 16 as well as bad faith on the part of Mr. Hendrawan in registering the FOREVER FRIENDS & Teddy Bear logo mark using the same label as Hallmark’s well-known mark. Hallmark also argued that based on Article 68 para. 1 and Article 69 para. 2 of Trademark Law No. 15 of 2001, Hallmark as the owner of a well-known mark has the right to file a cancellation action of Mr. Hendrawan’s registered trademark without any time constraints because these provisions incorporate Article 6 para. 3 of the Paris Convention, which states, “No time limit shall be fixed for seeking the cancellation of the marks registered in bad faith.” Mr. Hendrawan raised the following procedural arguments: (i) The trademark cancellation claim had no legal grounds because Hallmark must have a registered FOREVER FRIENDS & Teddy Bear logo in Class 16 or evidence that it had a trademark application that was still pending at the TMO. However, in this case the pending mark under Agenda No. D00-2003 24175-24378 in Class 16, dated 8 September 2003, was rejected based on Mr. Hendrawan’s mark FOREVER FRIENDS & Teddy Bear logo for Class 16 under No. 400605, dated 20 October 1997. (ii) The time to file a cancellation claim had expired. According to Article 69 para. 1 of the Trademark Law No. 15 of Year 2001, a cancellation claim can be filed within five years from the registration date of the mark. Mr. Hendrawan filed his mark No. 400605, dated 20 October 1997, but Hallmark’s claim was filed on 13 April 2004, which is seven years after Mr. Hendrawan’s mark • Vol. 95 TMR 459 registration in 1997. This means that the time for cancellation had expired. (iii) According to Article 69 para. 2 of the Trademark Law No. 15 of Year 2001, a cancellation claim can be filed without limitation of time if the trademark is against morality, public order, decency or bad faith. Such claim should be filed by the public prosecutor, consumer’s institution or religious institution as the concerned parties. (iv) The Paris Convention of 1967 as an International Agreement cannot be used as a legal ground to cancel a registered mark based on Trademark Law No. 21 of Year 2001, which is a national law. (v) The claim is not clear and cannot be understood (obscure complaint) because Hallmark claims that its trademark FOREVER FRIENDS & Teddy Bear logo is a well-known trademark without providing strong and convincing evidence and filed the claim after the expiration to file the cancellation claim. Mr. Hendrawan raised the following substantive arguments: (i) Based on Article 3 of the Trademark Law No. 15 of Year 2001, the “first to file” system adopted where the first to file is considered by law as the trademark owner and obtains protection according to law, in this case Mr. Hendrawan is considered the trademark owner and because he was the first to register the mark. (ii) The TMO should actually reject the Hallmark trademarks under Nos. 526114, 526203, 548450, 542498 and 542497, filed after Mr. Hendrawan’s trademark No. 400605 dated 20 October 1997. (iii) Hallmark claimed that both marks were for the same products and that the marks had basic similarities with each other, namely the FOREVER FRIENDS & Teddy Bear logo. However, according to Mr. Hendrawan, in reality, it was possible to distinguish between the two products. (iv) Hallmark could not prove that the FOREVER FRIENDS & Teddy Bear logo was a well-known mark as there was no strong convincing evidence on this claim. (v) Mr. Hendrawan was the original owner of the trademark FOREVER FRIENDS & Teddy Bear logo under No. 400605, dated 20 October 1997, because he had filed the mark earlier and this mark had been accepted by the TMO. Therefore, Mr. Hendrawan did not act in bad faith because the TMO could only accept a trademark given the following conditions: 460 Vol. 95 TMR a. does not have similarities in the list of goods protected; b. is not a well-known mark; c. is not filed in bad-faith. The TMO raised the following substantive arguments: (i) The products protected by both marks were different kinds of goods. Hallmark registered the mark for keychains, children’s luxurious toys, plates, bowls, dishes, drink glasses, bookmarks, calendars, files, posters, stickers, note boxes and greeting cards with envelopes. Whereas Mr. Hendrawan registered his mark for tissue and toilet paper, wrapping paper, newspapers, magazines, books, pencils, ballpoint pens and cards. According to Article 6, para. 1 of the Trademark Law, registration of a similar trademark is not prohibited as long as the goods protected are different. (ii) According to Article 6 para. 1b, a mark is considered well known not only because the mark is registered in several countries but also because there is a continuous and substantial promotional campaign and investment in several countries. If the evidence is insufficient, the Commercial Court can instruct an autonomous institution to make a survey to obtain a conclusion whether or not a mark is well known. Therefore, the criteria for a well-known mark are: (a) general knowledge of the public of the well-known mark; (b) high reputation of the well-known mark; (c) wide promotions; (d) registration in several countries; (e) survey results of an independent institution showing that the mark is well known. In this case, Hallmark failed to provide evidence that proved that the trademark FOREVER FRIENDS & Teddy Bear logo was a well-known mark. (iii) According to Trademark Law No. 15 of Year 2001, only applicants in good faith can obtain registration for their trademark applications. It was not relevant to consider that Mr. Hendrawan filed the mark in bad faith as Mr. Hendrawan fulfilled the formal requirements after substantive examination. After the mark was published in the Trademark Journal, there was no objection filed by Hallmark. Hallmark then, in bad faith, filed a cancellation action against Mr. Hendrawan’s trademark. The Panel of Judges of the Commercial Court rejected Mr. Hendrawan’s argument that Hallmark could not be considered a concerned party in order to file the cancellation claim without time Vol. 95 TMR 461 limitation under Article 69 para. 2 of Trademark Law No. 15 of Year 2001. The Panel of Judges accepted Mr. Hendrawan’s argument that the time to file the cancellation case had expired according to Article 69 para. 1 of Trademark Law No. 15 of year 2001. The cancellation claim should have been filed within five years of the registration date of 20 October 1997, whereas the cancellation claim was filed on 13 April 2003. The Panel further reasoned that Hallmark could not prove that the trademark FOREVER FRIENDS & Teddy Bear logo was a well-known mark based on the following: (i) To be considered a well-known mark, Hallmark should have registered the mark in or before 1995, the year the conflicting trademark registration was filed. (ii) Before 1995, the owner of the FOREVER FRIENDS & Teddy Bear logo was The Andrew Brownsword Collection and not Hallmark. These marks were registered under the name of The Andrew Brownsword Collection before 1995 in Australia for Class 16, Denmark in 1993 for Classes 16, 21 and 28, France in 1993 for Classes 9, 14, 16, 20, 21 and 28, Germany in Classes 16 and 28, Hong Kong in 1995 for Class 16. Hallmark did not mention its connection with The Andrew Brownsword Collection in the claims. (iii) Although Hallmark had registered the FOREVER FRIENDS & Teddy Bear logo after the year 1995 in several countries, namely Croatia in 2002 for Class 18, Estonia in 2000 for Classes 16, 21 and 28, Korea in 2003 for Classes 12, 16, 18, 24 and 25, Latvia in 1999 for Classes 16, 21 and 28, China in 1997 for Class 16, Mr. Hendrawan had evidence that he had registered his mark FOREVER FRIENDS & Teddy Bear logo in Indonesia in 1997 before Hallmark’s filing of the mark. Hallmark also could not prove that they were the first to file the mark at the TMO in Indonesia. (iv) Hallmark also could not prove that its trademark was generally known by the public as Hallmark did not mention specifically when and where the products (greeting cards and wrapping paper) were widely sold and therefore Hallmark’s FOREVER FRIENDS & Teddy Bear logo did not fulfill the criteria of a well-known mark. Thus, Hallmark’s cancellation claim against Mr. Hendrawan of imitating and trying to take advantage of the FOREVER FRIENDS & Teddy Bear logo trademark’s popularity was not fulfilled. 462 Vol. 95 TMR (v) Mr. Hendrawan had registered his FOREVER FRIENDS & Teddy Bear logo under No. 400605, dated 20 October 1997, in good faith. In conclusion, the Commercial Court decided the case in favor of the defendant, Mr. Hendrawan and ordered Hallmark to pay court fees. IRAN I.B.8.a. Similarity of Marks A Chinese company located in one of the free zones of Iran filed an application for registration of the trademark “JORDAN & silhouette of a basketball player” in International Class 25. Nike Corporation filed an administrative opposition against the defendant’s trademark application and simultaneously, in order to comply with Iranian law, filed two applications, for the word mark JORDAN and for the design mark “Silhouette of a basketball player,” in Class 25. Plaintiff Nike filed a petition with the court against defendant Chinese firm and requested the rejection of the defendant’s trademark application. The court issued a verdict in favor of the opponent. It found that Nike's registration of the trademarks abroad and their continued use, had been well documented before the court and, therefore, the opponent had priority rights over the defendant’s application. The court ordered the Iranian Industrial Property Office to refuse the defendant’s trademark application and proceed with registration of the plaintiff’s trademark applications in Iran.441 IRELAND I.B.2. Merely Descriptive Terms The Irish Patents Office has held that the mark CRUNCHY FRIES is a term that any manufacturer of potato- or corn-based snacks might legitimately wish to describe any such goods in the nature of potato sticks.442 Golden Wonder Limited applied for registration of CRUNCHY FRIES in respect of the following goods in Classes 29 and 30: 441. Case No. 839/3/81, Verdict No. 252 (June 13, 2003). Confirmation of the verdict was granted on June 29, 2004. 442. Unreported decision of the Controller of Patents, Designs & Trade Marks, July 27, 2004. Vol. 95 TMR • 463 Class 29: Potato crisps, potato products in the form of snack foods; potato based snack foods; instant meals; prepared meals; nuts and mixtures of nuts and dried fruits; snack foods; preparations for making instant snack meals. Class 30: Snack foods; instant meals; prepared meals; flour and cereal based foods; popcorn; coated nuts; biscuits; preparations for making instant snack meals. The mark was accepted and advertised for opposition purposes on December 1, 1999. An Irish snack food company, Tayto Limited, filed opposition on the ground that the mark was merely descriptive and devoid of distinctive character. Tayto claimed in its evidence that CRUNCHY and FRIES were words that other traders might legitimately require to use to describe fried snack foods that are crunchy and that registration of the mark would be an obstacle to competitors’ using the term as a description of their goods. The opponent exhibited sample packaging showing how it used the words CRUNCHY and FRIES in a descriptive manner. Exhibited wrappers included products named and branded KING FRENCH FRIES and TAYTO CHIPSTICKS—CRUNCHY POTATO AND CORN STICKS. Tayto claimed that the word “fries” is an abbreviation of “French Fries” and is commonly used in the trade to describe potato chips or potato crisps. The applicant in reply accepted that the term “fries” is an abbreviation of “French Fries,” which refers to fried strips of potato; but it submitted that there is no evidence of widespread use of the word “fries” in relation to packaged snack foods, and it claimed that the term would not be required as a description of such goods by other manufacturers. Even though the application covered a range of goods in Classes 29 and 30, the Controller of Patents, Designs and Trade Marks considered the question of distinctive character in the context that the opponent’s objection was directed to goods that may be categorized as packaged potato- or corn-based snacks. The Controller found that the mark was not devoid of distinctive character in relation to such goods443 but held that the combination of the adjective “crunchy” and the noun “fries” was not arranged in any unusual manner and that the combination CRUNCHY FRIES is the normal way of describing fries that are crunchy. The opposition was upheld in respect of the following goods: “potato crisps, potato products in the form of snack foods, potato based snack foods and snack foods in the nature of potato or corn based snacks.” • 443. Compare Procter & Gamble Co. v. OHIM, Case C-383/99, 2001 E.C.R. I-6251 (BABY-DRY). 464 Vol. 95 TMR I.B.9.b. No Similarity of Goods/Services The opponent, Boyne Valley Foods Limited, is the proprietor of Irish trademark registration No. B125544, KITCHEN MATE, in Class 21 in respect of “cleaning sponges with both abrasive and non-abrasive sides for household cleaning purposes.” Kelly Hunter Limited (the applicant) filed two applications for registration of the word KITCHENMATE in respect of the following goods in Classes 8 and 21: • Class 8: Cutlery, forks and spoons; tongs; vegetable shredders and slicers. Class 21: Small domestic containers (not of precious metals or coated therewith); cutting boards for use in the kitchen; tableware; salad bowls; kitchen utensils; soup bowls; sieves. The applications were accepted and advertised in the Patents Office Journal of August 10, 1994. Boyne opposed the published applications on the grounds of likelihood of confusion and deception arising from its preexisting reputation in the trademark KITCHEN MATE. It filed evidence of sales of 3.5 million sponges bearing the mark KITCHEN MATE in Ireland since January 1988. The exhibited sample packaging bears the mark KITCHEN MATE together with the word KILLEEN and the slogan FLY THROUGH THE WASHING UP. The applicant denied that the mark applied for was identical to the opponent’s mark or that the goods were similar. It filed evidence of use of the mark KITCHENMATE in Ireland since September 1989 in relation to “spoons, boards and other related products.” The opponent disputed the evidence of use filed and claimed that a survey conducted in 1995 failed to find any of the applicant’s products in all major retail outlets. In refusing the opposition the Controller noted the applicant’s argument that the marks were not quite identical, but accepted that the differences were very minor and attached no significance to them.444 The Controller held, further, that the respective goods were dissimilar, being different in their nature, composition and purpose. The goods, the Controller stated, did not compete with each other in the marketplace and were not complementary of each other in use. While the opponent made much of the fact that the respective goods were retailed through the same supermarkets, the Controller pointed out that one could find a wide array of very different goods in such outlets. Furthermore, while the respective goods had the same end-users and were all used in kitchens, they • 444. Unreported decision of the Controller of Patents, Designs & Trade Marks, March 5, 2004. Vol. 95 TMR 465 were not goods that the ordinary consumer would regard as similar or expect to have a common commercial origin. The Controller regarded the semidescriptive nature of the opponent’s mark as significant in the assessment of whether the use of the applicant’s mark was likely to cause confusion. In the Controller’s opinion, a person who was familiar with the opponent’s mark as used on its goods and who subsequently encountered the applicant’s mark on its goods might well be reminded of the opponent’s goods, but that was as far as it went. The Controller did not think that such a person was likely seriously to wonder whether the KITCHENMATE cutlery, utensils, chopping boards, etc., had the same commercial origin as the KITCHEN MATE cleaning sponges. Rather, the Controller took the view that the consumer was much more likely to conclude that two unrelated undertakings independently came up with the same highly allusive trademark for their respective kitchen products. The decision has been appealed to the High Court. I.B.12. Famous Marks The well-known jeweller Tiffany & Co. opposed registration of the mark TIFANY by Emballages Mixtes et Plastiques in Class 16 for “Paper, cardboard, articles of paper or of cardboard, (not included in other classes); printed matter, books, brochures” following publication of the mark in the Patents Office Journal of June 28, 1995. The opponent is the proprietor of a number of trademark registrations for the marks TIFFANY and TIFFANY & CO. for goods in Classes 3, 14 and 21. Tiffany claimed that its marks were among the most famous in the world for jewellery, engraved stationery, watches, high-quality cutlery, crystal bowls, chinaware and other products. The opponent’s evidence included claims that Tiffany had traded for more than 150 years in items of stationery, including high-quality engraved cards, envelopes and paper. The applicant submitted evidence of use of the mark TIFANY in Ireland since 1983 on disposable paper or plastic plates and cups as well as serviettes, although such goods were not covered by the application filed. The applicant also exhibited the results of a search of the Irish Register showing a number of existing registrations of marks consisting of or containing the word TIFFANY that have been registered in the name of proprietors other than the opponent. The respective marks, the Controller held, were so similar as to be almost identical. The Controller accepted that the opponent has a reputation under its marks in relation to stationery and held that use of the mark TIFANY by the applicant in respect of the goods applied for would be likely to be taken by the relevant 466 Vol. 95 TMR consumers as an indication that the goods in question were those of the opponent or were offered under its authority. The opponent’s registration of TIFFANY & CO. under No. 112084 covered “all goods included in Class 21” and therefore included disposable tableware of the type traded in by the applicant. The Controller found deception or confusion was likely if the applicant used the mark TIFANY on paper table napkins.445 I.B.13. First to Apply Versus First to Use A Swiss company, Manufacture Des Montres Jaguar S.A., sought registration of the word JAGUAR in Class 14 in respect of “watches and parts thereof.” The application was advertised as accepted in the Patents Office Journal of September 22, 1993. Opposition was lodged by the British companies Jaguar Cars Limited and The Jaguar Collection Limited. The former company is the proprietor of the trademarks JAGUAR and a device of a jaguar in respect of high-quality products, including motor vehicles, articles of sports clothing, games, playthings, gymnastic and sporting articles, spectacles, sunglasses, spectacle frames, articles of leather or imitation leather, bags, handbags, purses and watches. The latter company has responsibility for the marketing and sale of nonautomotive products under the JAGUAR trademarks. The opponents claimed that because of their international reputation in the JAGUAR trademarks, use of the mark by the applicant would be likely to deceive or cause confusion and lead to the applicant’s goods’ being passed off as those of the opponents. The opponents filed extensive evidence of use of the JAGUAR marks on cars and nonautomotive products, including watches, clocks, items of clothing, umbrellas, picnic baskets, jewelry, leather goods and travel goods. The applicant claimed succession in title from an entity called Fabrique d’Horologerie Sindaco S.A., which had secured a registration of the trademark JAGUAR in relation to watches in Switzerland in 1945. The opponents disputed the validity of the applicant’s claim to be the successor in title of the original proprietor of the 1945 Swiss registration of the trademark JAGUAR in respect of watches. Much of the evidence filed by both sides related to proceedings in Switzerland in which the validity of the legal transfer of title was put in issue. In Switzerland, the criminal proceedings in respect of an alleged fraud for interference with legal transfer documents have been dismissed. The hearing officer took the view that the 445. Unreported decision of the Controller of Patents, Designs & Trade Marks, April 20, 2004. Vol. 95 TMR 467 evidence filed by the parties did not prove conclusively that the transfer of title was invalid under Swiss law. However, this was not the end of the matter, and the opponents submitted an alternative argument for refusal of the application on the ground that the applicant was not the proprietor of the mark. The argument was based on the long-established principle that the owner of a mark is the party that first uses it in the jurisdiction.446 The opponents’ claim to proprietorship by virtue of first user in the jurisdiction was based on evidence that three watches, one of which was given gratis, were dispatched to an Irish distributor of JAGUAR motorcars. The Controller dismissed the evidence as flimsy and not evidence that goods bearing the mark had been put on the market in Ireland in such a way as to have come to the notice of the public generally or even of a very small subset, that is, all those who bought JAGUAR cars. In order for a claim to proprietorship of a mark based on use to succeed, the Controller stated, the use must be genuine use of the mark as a trademark and must be more than mere token use. The Controller also dismissed the opponents’ objection that the applicant’s use of the mark JAGUAR in relation to watches was likely to lead to confusion, having regard to their existing reputation under the mark JAGUAR in Ireland in relation to motorcars. In reaching the decision, the Controller allowed for the fact that there had been a practice of brand extension in the motor industry to goods such as watches, but distinguished the opponents’ marks, being an ordinary English word, from those of some of their competitors, such as MERCEDES-BENZ or BMW. The Controller noted that the names of animals, indeed the names of big cats, are quite commonly used as trademarks for a wide variety of goods: for example, PUMA sportswear, TIGER beer and LION chocolate bars; however, the Controller could not imagine a MERCEDES BENZ or BMW watch being taken as anything other than a product of, or related to, the car manufacturer of that name. A JAGUAR watch was a different matter. The Controller accepted that the average consumer, on encountering the trademark, was likely to be reminded of the motorcar and that it was possible that he or she might think that there was a connection between the car manufacturer and the watch manufacturer. Whether that was likely, however, was not certain, and the Controller concluded that it was not sufficiently likely to warrant refusal of the application.447 446. See Montex Holdings Ltd. v. Controller of Patents, Designs & Trade Marks, 2000 1 I.R. 577 (Ir. H. Ct.). 447. Unreported decision of the Controller of Patents, Designs & Trade Marks, March 5, 2004. 468 Vol. 95 TMR ISRAEL I.B.7.b. Three-Dimensional Marks The question discussed in August Storck KG v. ALFA INTOIT Food Products Ltd.448 was whether a trademark registration can prevent others from using the design of the goods themselves, which is covered by the registered trademark. Storck is a German company that produces and markets TOFFIFEE, a chocolate-caramel candy shaped like an acorn. The plaintiff wished to register the shape of the candy as a trademark. ALFA INTOIT claimed that the candy’s shape could not be registered as a trademark, as a trademark can be registered only with regard to goods and not for actual goods. It claimed, further, that the design of the candy was generic, consisting of “simple lines” popular in the candy industry, and therefore was not unique. The defendant charged that the plaintiff acted in bad faith in attempting to register the design of the candy (i.e., the shape) as a trademark. Storck countered that ALFA INTOIT tried to bypass the regulations and demands of the Designs Registrar, which probably would not have allowed the defendant to register the product, as the candy was famous in Israel before the application for its registration. The court ruled that trademark protection was granted to the graphic shape that was presented in the trademark registration application, whereas the trademark served its owners as a “flag.” Viewing the trademark as a means to protect the exclusive production of the candy, said the court, was unacceptable. The judge ruled that the protection afforded to the registered trademark could not be broadened to include the product itself. Therefore, registration of the mark with regard to the candy could not prevent the production and marketing of acorn-shaped candy that was not protected by the trademark. A few months after this court ruling, on August 17, 2004, the Trademark Registrar issued regulations with regard to the registration of three-dimensional figures. The Registrar asserted that in light of the increase of applications to register threedimensional figures (such as bottles, containers and capsules), which apparently were intended to bypass the demands for registering designs, there was a need for clear instructions that would resolve this matter. The general rule is that a three-dimensional figure should be protected by way of a registered design mark. However, threedimensional figures will be registered only in special cases, subject to two conditions: 448. C.F. 2191/03 (unpublished). Vol. 95 TMR 469 1. the figure for which registration is requested is used to mark the goods and identify their origin; and 2. the figure has acquired secondary meaning. III.A.1. Famous Marks Both court rulings and Registrar’s decisions were given on the issue of famous marks in the past year. Sections 46(a) and 46(b) of the Trade Marks Ordinance, 1972, which was enacted after Israel entered the TRIPS Agreement, were discussed in these rulings. These sections reinforce instructions regarding the unique right of a famous and well-known trademark proprietor to use its trademark.449 In V&S Vin & Sprit Aktiebolag v. Absolute Shoes Ltd.,450 the judge asserted that the protection given to a well-known and famous trademark needed to be narrowed. He raised the concern that broadening the protection afforded to a well-known and famous mark to include descriptions other than the one for which the mark was registered would harm freedom of trade and occupation. Noting that there was a need for caution when applying Sections 46(a) and 46(b) of the Trade Marks Ordinance, the judge stated that it would be appropriate to limit the expansion of the exclusive right to use a well-known trademark to areas close to the field for which the trademark was registered. Only when there was a clear indication that customers or potential customers would be confused by the similarity between the goods indicated by the famous and well-known trademark and the infringer’s goods could the famous mark be protected with respect to other descriptions. When the fields of products were distant from each other, there was no place to apply the expansion of Sections 46(a) and 46(b). In this case the defendant was in the footwear industry. The judge ruled that it was not likely that the customers or potential customers of the proprietor of the famous and well-known trademark ABSOLUT Vodka could be confused by the similarity between the names of the defendant’s shoe stores and the trademark proprietor’s vodka. 449. Section 46(a) reads: “A well-known trademark, even if not registered, will enable the trademark proprietor to use the mark exclusively with regard to the goods in which the mark is recognizable with, or with regard to goods of the same description.” Section 46(b) reads: “A registered well-known trademark will enable its proprietor to use the mark exclusively also for goods that are not of the same description, if the use of the mark by anyone who is not its proprietor might indicate that there is a relation between the above goods and the registered mark proprietor, and that the owner of the registered trademark might be affected as a result of this use.” 450. C.F. 1431/03 (unpublished). 470 Vol. 95 TMR In Pentax SRL v. Asahi Kogaku Kogyo Kabushiki Kaisha,451 the trademark PENTAX was acknowledged as a well-known and famous mark. The Registrar mentioned the ABSOLUT ruling and referred to the judge’s opinion in that case. He agreed that there was a need to narrow the application of Sections 46(a) and 46(b) to cases where the application of the registered and well-known trademark was in an adjacent area and when there was a concern that clients or potential clients of the proprietor of the registered mark could be confused into thinking that the business of the applicant was related to that of the registered mark’s proprietor. The Registrar stated, however, that each case should be examined separately according to its facts. III.B.4. Advertising The Supreme Court’s ruling in Alonial Ltd. et al. v. Ariel McDonald452 is extremely thorough and deals with several main issues in the intellectual property field. This case dealt with basketball player Ariel McDonald’s right to use his name in a commercial for Burger King. Cases such as this one, where a trademark is infringed without likelihood of confusion, are not “typical” cases of trademark infringement. In the “typical” case, an infringement will be acknowledged only if the trademark proprietor proves that there is a likelihood of consumer confusion. The court will disregard the Trade Marks Ordinance’s demand for likelihood of confusion where the infringer shows that there is no relation between its products and those of the trademark proprietor but the infringer attempts to obtain an improper benefit of some kind solely by mentioning the other trademark. As a general rule, the court will not bypass the Ordinance’s instructions with regard to likelihood of confusion. If, however, the court does decide to forgo this demand, it is required to weigh the opposing values and decide whether it is appropriate to overlook the clear language of the Trade Marks Ordinance. Israeli law does not permit use of a competitor’s mark for comparative advertisement. In this case, use of the McDONALD’S trademark was made in order to assert that Burger King is better than McDonald’s without presenting any factual data on which to base that assertion, as customary in commercial advertisements. In fact, Burger King wished to devalue the competitor and not truly to compare the products. Thus, when in the commercial Ariel McDonald said, “Listen to McDonald—Burger King is the one,” he 451. Opposition to registration of trademark No. 93261 (PENTAX). 452. C.A. 8483/02 (unpublished). Vol. 95 TMR 471 debased and humiliated the McDONALD’S trademark. This constituted a “reverse” use of the trademark by the infringer. In a “reverse” use, the infringer wishes not to benefit from the mark’s reputation but, rather, to alienate himself and the consumers from the trademark proprietor and its products. In this case, however, the reversal did not diminish the infringement. This was not a commercial advertisement. If the commercial includes a factual comparison of the competitors’ services, there is room to consider the authorization of a comparative advertisement that mentions the competitor’s trademark. Furthermore, the necessity of balancing conflicting interests means that the defense of a person’s right to use his or her name is not absolute, but only relative. There is a need to restrict the defense given to a person who uses his or her name while harming another’s trademark. The right to use the name is conditional in that the use being done is in good faith. In this case, Ariel McDonald’s use of his name while advertising Burger King was a sophisticated use of the McDONALD’S trademark. McDonald wished to exploit his identity and name for profit. However, this use was made in bad faith, and therefore it constituted an unjust use of a trademark. ITALY III.A.1. Famous Marks In Montblanc Simplo GmbH v. Sepia Products Inc. and Sire S.r.l., the plaintiff was the renowned luxury goods company Montblanc Simplo GmbH, owner of the famous Montblanc Star device mark consisting of a six-point rounded white star, registered and used for over 80 years to distinguish, inter alia, its high-end writing instruments. Sepia Products Inc. registered and, along with its Italian importer and distributor Sire S.r.l., used a composite mark consisting of a similar rounded star device and the word GENIUS to distinguish identical writing instruments. Montblanc filed a trademark infringement action with the Court of Milan seeking (i) the cancellation of Sepia’s registered composite mark on the basis of Montblanc’s prior registrations, (ii) an injunction against the defendants’ use of their mark on their products and (iii) an award for damages for the infringement of Montblanc’s trademark rights. The Court of Milan granted the remedies requested by Montblanc on the ground that Sepia’s trademark infringed Montblanc’s trademark rights on the famous Montblanc Star 472 Vol. 95 TMR device mark, irrespective of any likelihood of confusion.453 More precisely, the Court held that, contrary to the previous, incorrect interpretation of the law, the provisions of the Italian Trademark Act that give a wider protection to famous marks454 are to be equally applied to cases involving identical or similar goods or services as to ones involving dissimilar goods or services.455 Consequently, the famous Montblanc Star device mark was to afford protection against the use by Sepia and Sire of a similar device mark on identical goods because such use took unfair advantage of, and was detrimental to, the distinctive character and repute of the Montblanc Star device mark. III.A.2.b. Similarity of Marks In Salvatore Ferragamo Italia S.p.A. v. Calzature Carpan S.p.A., the plaintiff was the renowned luxury goods company, owner of the famous FERRAGAMO and SALVATORE FERRAGAMO trademarks. Calzature Carpan started using the trademarks FERRAZZANO and F.LLI FERRAZZANO on footwear in a graphic form identical with that used by Ferragamo for its marks. Ferragamo filed a trademark infringement action with the Court of Florence, but the trial court clamorously held that no likelihood of confusion existed between the trademarks and dismissed Ferragamo’s suit.456 On appeal, the Court of Appeal of Florence reversed the trial court’s decision, holding that the trial court had erred, inter alia, in evaluating the existence of a likelihood of confusion between the parties’ trademarks.457 More precisely, the Court of Appeal reiterated the Italian trademark law principle by which the existence of a likelihood of confusion between two trademarks must be examined under a “global” and “comprehensive” perspective and not under a mere “analytical” one, as the trial 453. Montblanc Simplo GmbH v. Sepia Products Inc. and Sire S.r.l., Court of First Instance of Milan, decision of August 5, 2003 (unpublished). 454. Article 1.1.c) Italian Trademark Act, which implements Article 5.2 EEC Directive to Approximate the Laws of the Member States Relating to Trademarks (EEC Trademark Directive), provides that a trademark owner has the right to exclude others from using “a sign identical with or similar to a mark registered for 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.” 455. The Court cited and followed the European Court of Justice’s decision of January 9, 2003, in Case C-292/00 Davidoff & Cie S.A., Zino Davidoff S.A. v. Gofkid Ltd., www.curia.eu.int. 456. Salvatore Ferragamo Italia S.p.A. v. Calzature Carpan S.p.A., Court of First Instance of Florence, decision of July 19, 2001 (unpublished). 457. Salvatore Ferragamo Italia S.p.A. v. Calzature Carpan S.p.A., Court of Appeal of Florence, decision of March 11, 2004 (unpublished). Vol. 95 TMR 473 court had erroneously done. In other words, the trial court should not have evaluated the risk of confusion between Ferragamo’s and Carpan’s marks by examining each single element separately, but should have instead weighed all the relevant elements—the sight, sound and meaning elements—together as a whole. Moreover, the Court of Appeal held that the trial court did not afford Ferragamo’s trademarks the adequate protection granted by Italian law to strong marks. In particular, recent Supreme Court decisions have consistently held that when a mark is strong, as is the case for Ferragamo’s marks, variations to such mark, even if considerable and original, are not sufficient to avoid a finding of likelihood of confusion if they leave intact the “ideological nucleus” of the said mark. Accordingly, the Court of Appeal, following the trend in Italian case law, held that, since the two marks at issue were markedly similar both phonetically and graphically, and since the differences portrayed by Carpan’s trademarks left intact the “ideological nucleus” of Ferragamo’s marks, the trial court had erred in not finding the marks confusingly similar. The Court of Appeal further granted the remedies requested by Ferragamo, namely, the injunctive order against Carpan and the award of damages and legal costs and fees to Ferragamo. Similarly, in Emanuel Ungaro S.A. v. Raffaele Ungaro, the Court of Reggio Emilia held that the defendant’s mark U RAFFAELE UNGARO was confusingly similar to the plaintiff’s famous mark UNGARO.458 Following the leading trend set out in the Ferragamo case above, the Court found that, although the defendant’s trademark comprised a figurative element—namely, a shield with a rhomboidal background and a five-point crown, within which the letter U was displayed—this element was only a formal difference and was not sufficiently distinctive within the overall representation of the trademark. Therefore, the “ideological nucleus” of Emanuel Ungaro’s trademark was entirely reproduced in Mr. Ungaro’s mark. The Court of Reggio Emilia, therefore, declared the defendant’s Italian and International registrations for the mark U RAFFAELE UNGARO to be void and, finding trademark infringement, granted Emanuel Ungaro the injunctive remedy against Mr. Ungaro, as well as, inter alia, an award for damages and the publication of the decision. 458. Emanuel Ungaro S.A. v. Raffaele Ungaro, Court of First Instance of Reggio Emilia, decision of January 23, 2004 (unpublished). 474 Vol. 95 TMR III.A.11.b. No Similarity of Goods/Services Centrale S.p.A., owner of the registered trademarks FREEPORT and FREE-PORT, and Freeport S.r.l., the distributor of the products bearing the said trademarks, filed a trademark infringement suit against Freeport s.c.r.l. for, inter alia, the use of the service mark FREEPORT. While the plaintiffs used the trademark FREEPORT to distinguish clothing articles sold to the public at large, the defendant used the service mark FREEPORT to distinguish its “shopping club,” where a wide variety of products were sold only to the co-operative’s members. The trademark infringement claim was dismissed by the Court of First Instance of Varese,459 whose decision was later upheld by the Court of Appeal of Milan,460 on the ground that there existed no likelihood of confusion due to the differences between the plaintiffs’ goods and the defendant’s services. The plaintiffs appealed the decision to the Supreme Court, which, ultimately, upheld the lower courts’ decisions in relation to the trademark infringement claim.461 In essence, the Supreme Court held that, as a general rule, there can be no risk of confusion between a trademark and a service mark unless the service mark is used in such a manner as to induce the consumer to believe that the same mark also distinguishes the product. The Supreme Court stated that, in this case, the lower courts were correct in not finding a similarity between the goods and services at issue because the two uses of the mark not only related to a different geographical area but concerned, on the one side, the offering for sale of clothing articles to the public at large and, on the other side, the offering for sale of products of varying nature solely to the members of the cooperative. Therefore, the Supreme Court held that the lower courts correctly excluded the existence of any risk of confusion between the plaintiffs’ products and the defendant’s services because a consumer could not have been induced to believe that the defendant’s activities could be somehow related to the plaintiffs’ products. III.A.12. Lack of Distinctiveness The Italian Supreme Court, in Dama S.p.A. v. Benetton Group S.p.A., affirmed that a composite mark, when made up of nondistinctive elements that as a whole make it distinctive, cannot be 459. Court of First Instance of Varese, decision of July 9, 1998 (unpublished). 460. Court of Appeal of Milan, decision of March 3, 2000 (unpublished). 461. Freeport S.r.l. v. Freeport s.c.r.l., Supreme Court, decision of July 17, 2003, published in Il Foro Italiano, February 2004, No. 11. Vol. 95 TMR 475 infringed if only one of the non-distinctive elements is reproduced.462 Its ruling upheld the previous decision by the Milan Court of Appeal. In this case, Dama had brought a trademark infringement action against Benetton claiming that Benetton’s trademark COLORS and its other COLORS-formative marks infringed its prior composite trademarks, which consisted of three stylized roses under two bands creating a rectangle within which is the word COLORS. Following the Court of Milan’s decision in favor of Dama, Benetton appealed and the Court of Appeal of Milan set aside the trial court’s decision. Dama then appealed and the Supreme Court held that the Court of Appeal correctly ruled Benetton had not infringed Dama’s marks. In fact, the Court of Appeal had found that Dama’s trademarks were composite trademarks made up of single, merely descriptive elements, that only as a whole constituted a distinctive trademark.463 In particular, the word element COLORS alone was to be considered merely descriptive in the field of clothing and fashion in general because it is commonly used in the industry to refer to colored products. Because it lacked the necessary distinctiveness, it could not constitute the core of Dama’s composite trademarks. Consequently, Benetton’s use of the mark COLORS without the other elements of Dama’s trademarks could not constitute an infringement. Only the copying of all the nondistinctive elements, which as a whole could be considered a distinctive trademark, would have constituted trademark infringement. III.K. Counterfeiting Issues The Court of San Remo recently sentenced Mr. Giuseppe Magliano and his sister, Ms. Vanessa Magliano, to one and a half years imprisonment and 500 Euros in fines for receiving, detaining and offering for sale products bearing counterfeit trademarks.464 Giuseppe and Vanessa Magliano were found to possess and offer for sale a number of goods bearing counterfeit trademarks of, inter alia, the famous fashion houses Chanel, Hermès and Dolce & Gabbana. They were therefore charged with the crime of detaining and offering for sale goods bearing counterfeit marks under Article 462. Dama S.p.A. v. Benetton Group S.p.A., Supreme Court, decision of April 20, 2004 (unpublished). 463. Benetton Group S.p.A. v. Dama S.p.A., Court of Appeal of Milan, decision of March 16, 2001, published in Giur. ann. dir. ind., 2001, n. 4273. 464. Court of San Remo, Division of Ventimiglia, decision of May 12, 2004 (unpublished). 476 Vol. 95 TMR 474 Criminal Code,465 and with the crime of fencing, i.e., willfully receiving things originating from a crime, under Article 648 Criminal Code.466 By finding the defendants guilty under both Articles 474 and 648 of the Criminal Code, the Court of San Remo expressly cited and applied a recent ruling of the Supreme Court that settled that these two crimes can concur because they require different elements for criminal liability.467 III.M. Licensing Issues In La Vinicola Broni S.p.A. v. Casa Vinicola Calatrasi S.p.A., La Vinicola Broni appealed a preliminary injunctive order granted by the Court of Voghera to Casa Vinicola Calatrasi in an action brought on the basis of the Community trademark D’ISTINTO.468 Appellant claimed that the Court erred in granting the order because appellee was merely the exclusive licensee of the Community trademark D’ISTINTO, owned by the U.K. company BRL Hardy Europe Limited, and, as such, had no standing to bring injunctive proceedings in relation to the Community trademark. The Appeal Panel of the Court of Voghera admitted appellant’s appeal and reversed the Court’s injunctive order.469 In doing so, the Appeal Panel applied Article 22.3 of the EC Community Trademark Regulation, which encounters no equivalent in either the EEC Trademark Directive or the Italian Trademark Act, according to which a licensee may institute an infringement action in relation to a Community trademark only with the prior consent of the Community trademark owner. In the absence of such consent, an exclusive licensee may nonetheless independently bring such proceedings if the trademark owner, after having been given formal notice, does not himself bring infringement proceedings within an appropriate period. Article 22.3 also 465. Article 474 of the Criminal Code provides that “anyone . . . who introduces in the territory of the State for subsequent sale, or holds in order to sell or offers for sale, or otherwise puts in the stream of commerce . . . industrial products bearing counterfeit or altered national or foreign trademarks . . . shall be punished with imprisonment up to two years and a fine up to Italian Lira four million.” 466. Article 648 of the Criminal Code provides that “anyone . . . who, in order to procure a profit for himself or others, purchases, receives or conceals money or things originating from any crime . . . shall be punished with imprisonment from two to eight years and a fine of Italian Lira one to twenty million.” 467. Supreme Court, Unified Divisions, decision of June 7, 2001, reported in 93 TMR 684 (2003). 468. Court of First Instance of Voghera, order of February 28, 2003 (unpublished). 469. Court of First Instance of Voghera, Appeal Panel, order of April 10, 2003 (unpublished). Vol. 95 TMR 477 specifies that its provisions do not prejudice the provisions of the applicable license agreement. Therefore, in the case before the Court, given that the appellee had not obtained the Community trademark owner’s consent to bring injunctive proceedings in relation to the said Community trademark, had not given formal notice to the trademark owner of its intent to bring such proceedings, nor had it attempted to “reach an agreement” with the trademark owner to bring infringement proceedings, as required by the exclusive license agreement, the Appeal Panel held that it had no standing to bring such action. V.A. Domain Names In Società Vaionline v. Rapolla, the plaintiff had registered various domain names, consisting of the names of small Italian towns, to develop websites where geographical references, news, links and other geopolitical information on such towns were provided. One of these domain names was rapolla.it, where Rapolla is the name of a city in southern Italy. The defendant, Mr. Diego Rapolla, obtained the reassignment of the domain name rapolla.it on the basis of his rights in his surname, through the mandatory arbitration procedure provided by the Italian Domain Name Registration Authority. Società Vaionline then filed an action before the Court of Naples seeking a declaratory judgment as to the validity of its original registration of the domain name rapolla.it, on the ground that it did not infringe Mr. Rapolla’s rights in his surname. The Court of Naples first reiterated the established principle that when a domain name is registered and used for commercial purposes, its adoption and use are subject to the applicable trademark laws due to the domain name’s indisputable trademark function.470 Turning to the case before it, the Court first found that, in applying the principles of trademark law relating to the adoption of personal names,471 the plaintiff’s initial registration of rapolla.it did not infringe Mr. Rapolla’s rights in his surname because (i) such registration did not harm Mr. Rapolla’s reputation, credit or dignity, nor (ii) was Mr. Rapolla’s name the least well known, 470. Court of First Instance of Naples, decision of March 13, 2003, published in Il Foro Italiano, November 2003, No. 11. 471. Article 21 Italian Trademark Act provides: 2. Personal names that differ from the applicant's name may be registered as marks by the applicant provided that their use does not harm the reputation, credit or dignity of those who are entitled to bear such names. . . . 3. If well-known, the following may be registered as marks only by those entitled to them . . . : personal names. . . . 478 Vol. 95 TMR which conversely would have afforded Mr. Rapolla an extensive protection against third parties’ adoption of his name. Nonetheless, the Court rejected the plaintiff’s request for a declaration of validity of its original registration. The Court held that, since domain names used for commercial purposes are subject to the applicable trademark laws, if a domain name does not comply with the requirements for trademark validity, its registration is equally null. Consequently, because the domain name at issue corresponded to the name of an Italian town and was used to provide information on such town, i.e., was a merely geographically descriptive term, its registration was prohibited by the Italian Trademark Act.472 JAPAN I.B.5. Personal Names On October 22, 1998, the plaintiff filed a trademark application for LEONARD KAMHOUT for precious metals, umbrellas, clothing and the like. Leonard Kamhout is the name of an American chaser and designer of silver accessories. Under Article 4, Item 1, Paragraph 8 of the Trademark Law, trademarks containing the name, professional name or pen name of another person are not registrable except where the consent of the person concerned has been obtained. On January 26, 1999, the applicant submitted a consent of Mr. Leonard Kamhout to the Patent Office, but on May 25, 2000, Mr. Kamhout submitted to the Patent Office a copy of a letter that he had originally sent to the applicant to inform the latter of the withdrawal of his previous consent. The Patent Office rejected the trademark application under Article 4, Item 1, Paragraph 8. The Tokyo High Court affirmed the decision of the Patent Office, stating that at the time the decision on registrability was made, the consent of Mr. Leonard Kamhout did not exist. The applicant appealed the case to the Supreme Court, but the appeal was dismissed.473 472. Article 18.1 provides: . . . the following may not be the subject of a trade mark registration: . . . b) signs consisting exclusively of generic denominations of goods or services or descriptive indications relating thereto, such as signs which may serve, in trade, as a designation of the . . . geographic origin . . . of the product or service. 473. Supreme Court, Decision No. 2003 (gyo-hi) 265 of June 8, 2004, Supreme Court Home Page. Vol. 95 TMR 479 III.A.5. Fair Use In 2000, the plaintiff registered the trademark BROTHER for a wide range of goods, including “telecommunication machines and apparatus” in International Class 9 and “ink ribbons” in Class16. The defendant, Dainiku Inc., produced and sold ink ribbons with the mark FOR BROTHER or BROTHER YO (meaning “for brother” in Japanese) to co-defendant Ohmdenki Inc., and Ohmdenki sold these ink ribbons to the public. The plaintiff sued the defendants for injunctive relief and damages, alleging infringement of its trademark. The Tokyo District Court dismissed the suit, stating that it was common practice to indicate on boxes what kinds of printing machines were adaptable for the ink ribbons in the boxes in order to prevent users from making mistakes, and that the defendants were using these marks simply to show that these ink ribbons were compatible with facsimiles produced by the plaintiff. After considering all the above factors, the Court determined that the defendants were not using the marks in question as “trademarks” under the Trademark Law.474 III.B.1. Passing Off The appellant, Riso Kagaku Kogyo Inc., which produced and sold printing machines, printing ink, etc., had registered the trademark RISO and two other trademarks. Initially, the appellees, Takken Corp. Inc. and Corona Giken Kogyo Inc., sold ink bottles filled with printing ink manufactured by the appellant and bearing the appellant’s trademarks. Thereafter, however, the appellees bought empty ink bottles from the users of the appellant’s printing ink and, after cleaning them, filled the bottles with their own printing ink and sold them without deleting the appellant’s trademarks. The appellant filed suit, claiming that the appellees were infringing its trademark rights by selling ink bottles filled with the appellees’ ink but bearing the appellant’s trademarks, and thereby causing customers to be confused as to the origin of the goods. The suit was dismissed by the Tokyo District Court, which held that the appellees’ sale of the printing ink did not constitute “use of a trademark” under the Trademark Law because the registered trademarks had already been placed on the ink bottles when the appellant filled them with ink and thus there was no relationship between the trademarks and the ink. 474. Tokyo District Court, Decision No. 2003 (wa) 29488 of June 23, 2004, Supreme Court Home Page. 480 Vol. 95 TMR However, the Tokyo High Court reversed the Tokyo District Court’s ruling and ordered that there be injunctive relief and damages to be paid by the appellees. The Court ruled that, all things considered, it was obvious that the appellees’ sale of the ink was causing traders and consumers to be misled into believing that the ink in the ink bottles bearing the appellant’s trademarks was produced by the appellant, and so the trademarks were functioning as an indication of the origin of the ink. The Tokyo High Court further held that the appellees’ sale of the ink fell under “use of a trademark” and thus infringed the trademark rights of the appellant.475 Plaintiffs Advance Magazine Publishers and Nikkei Condenast Ltd. published the American fashion magazine Vogue. Defendant Propasuto Inc. was in the business of selling mansions named “La Vogue Minami Aoyama” (in Japanese katakana), located in South Aoyama. The plaintiffs filed suit for injunctive relief and damages based on the Prevention of Unfair Competition Law. The Tokyo District Court approved the suit, stating that mansions are considered to be “goods” under the Prevention of Unfair Competition Law because they will be handled on the market and their origin can be recognized by their indication. In addition, the Court found that there was a close relationship between the magazine of the plaintiffs and the mansions of the defendant, finding that fashion magazines and architecture have become related to each other, and thus the magazine had contained special stories about architecture, while the defendant labeled its mansions “designer’s mansions” and traded on their elegance and fashionableness. The amount of damages was calculated based on a license fee rate of five percent of the total monetary value of the mansions.476 III.F.1. Forfeiture The plaintiff was the owner of the registered trademark KELME for footwear and the like. The defendant was the only regular sole agent of the Avadin group, which handled famous KELME goods and sponsored professional athletes and professional sports teams under the trademark KELME all around the world. 475. Tokyo High Court, Decision No. 2003 (ne) 889 of March 4, 2004, Supreme Court Home Page. 476. Tokyo District Court, Decision No. 2003 (wa) 27434 of July 2, 2004, Supreme Court Home Page. Vol. 95 TMR 481 At one time the plaintiff had imported KELME goods from KELME Exportacion Inc., one of the sister companies of the Avadin group, but it was forced to stop importing said goods because it had ordered KELME goods from a factory in China without Avadin’s permission. The plaintiff filed suit for injunctive relief, claiming that the defendant was infringing its trademark rights by importing footwear bearing the KELME trademark. The defendant asserted that the plaintiff’s suit should be dismissed, owing to the plaintiff’s abuse of its trademark rights, which originally belonged to the Avadin group. The Court ruled that the plaintiff took over the trademark registered by K.K. Taisei with the unjust intention of blocking KELME goods bearing the famous KELME mark from being imported into Japan and hence being the only distributor of goods bearing trademarks similar to the KELME mark in Japan. In addition, it held that the defendant was the sole agent in Japan of the Avadin group and that the defendant’s goods were KELME goods imported from the Avadin group. Based on these holdings the Court dismissed the suit as an abuse of rights.477 III.J. Gray Marketing The plaintiff, a German company, had registered the trademark PUMA with Puma device and two other similar trademarks for various bags. The defendant, Relax Inc., had been importing into Japan and selling small Boston bags, flight bags, small shoulder bags, denim Boston bags, etc., bearing marks that were substantially the same as the plaintiff’s. The plaintiff filed suit, asking for compensation for damages and that the defendant be required to publish an apology in a newspaper, based on Articles 38(2) and 39 of the Trademark Law. In reply, the defendant claimed that the importing of its goods would be justified as a parallel importation of genuine goods, because the defendant bought these goods from Aron Inc, a company which in turn purchased the goods from the plaintiff’s exclusive trademark licensee in Korea. The defendant further claimed that its acts were neither done in bad faith nor negligent. The Court noted that to justify parallel importation of genuine goods, it was necessary that (1) the trademark on the goods must be put on legally by the owners of the trademark rights or those who had a license from the owners in a foreign country; (2) the trademark should indicate the same origin in terms of legal structure, such as parent and subsidiary or sister relationship, or 477. Tokyo District Court, Decision No. 2002 (wa) 6884 of July 30, 2003. 482 Vol. 95 TMR financial relationship, such as capital tie-up, in both the country of origin and the foreign country; and (3) there should be no qualitative difference between the original goods and the goods to be imported, because the owner of the trademark in the country of importation could control the quality of the goods directly or indirectly. In the case at issue, the Court held that the owner of the trademark in Korea did not put the marks on the defendant’s goods legally, and the defendant’s act therefore could not be justified as a parallel importation of original, genuine goods. The Court also ruled that the presumption of negligence could not be overturned in this case.478 JORDAN I.B.2. Merely Descriptive Terms The Registrar accepted the notices of opposition filed by PepsiCo Inc. against the applications for the registration of the following trademarks, published for opposition in the name of Halawani Industrial Co.: CHEESE BALLS in Arabic,479 in Class 29; BARBECUE,480 in Class 30; CHEDDAR CHEESE,481 in Class 29; SALSA CHIPS,482 in Class 30; CHILI CHIPS,483 in Class 29. The Registrar’s decisions were based on the fact that the opposed trademarks were found to lack distinctiveness and to be descriptive of the goods. 478. Tokyo District Court, Decision No. 2002 (wa) 28242 of December 18, 2003, Supreme Court Home Page. 479. Application No. 51036, published in Official Gazette Supplement No. 211, dated August 12, 1999, at page 334; PepsiCo Inc., an American company, v. Halawani Industrial Co., a Jordanian company, Registrar’s Decision No. TM/51036/8948, dated May 27, 2003 (unpublished). 480. Application No. 51772, published in Official Gazette Supplement No. 216, dated December 20, 1999, at page 307; PepsiCo Inc., an American company, v. Halawani Industrial Co., a Jordanian company, Registrar’s Decision No. TM/51772/8921, dated September 2, 2003 (unpublished). 481. Application No. 51113, published in Official Gazette Supplement No. 212, dated August 31, 1999, at page 276; PepsiCo Inc., an American company, v. Halawani Industrial Co., a Jordanian company, Registrar’s Decision No. TM/51113/8921, dated May 27, 2003 (unpublished). 482. Application No. 47106, published in Official Gazette Supplement No. 216, dated December 20, 1999, at page 146; PepsiCo Inc., an American company, v. Halawani Industrial Co., a Jordanian company, Registrar’s Decision No. TM/47106/8066, dated July 20, 2003 (unpublished). 483. Application No. 51773, published in Official Gazette Supplement No. 214, dated October 16, 1994, at page 309; PepsiCo Inc., an American company, v. Halawani Industrial Co., a Jordanian company, Registrar’s Decision No. TM/51774/10677, dated July 15, 2003 (unpublished). Vol. 95 TMR 483 The Registrar accepted the notice of opposition filed by PepsiCo Inc. against the registration of the trademark CRISPY CHIPS484 in Class 29, published for opposition in the name of Saudi Dairy & Foodstuff Co. The Registrar’s decision was based on the fact that the opposed trademark was found to lack distinctiveness and to be descriptive of the goods. I.B.7. Device and Design Marks Notices of opposition were filed against the registration of two device marks in Classes 29 and 30 in the name of PepsiCo.485 The notices of opposition were based on the fact that the devices are common and cannot be registered in the name of any person. The Registrar of Trademarks decided that the submitted devices are not common and are distinctive, and therefore rejected the notices of opposition.486 Design 1 Design 2 I.B.8.a. Similarity of Marks The Registrar of Trademarks accepted the notices of opposition submitted by Time Warner Entertainment Company 484. Application No. 49793, published in Official Gazette Supplement No. 207, dated March 23, 1999, at page 315; PepsiCo Inc. v. Saudi Dairy & Foodstuff Co., a Saudi company, Registrar’s Decision No. TM/49793/10657, dated June 15, 2003 (unpublished). 485. Trademark Nos. 51014, 51015, 51058 and 510594, published in Official Gazette No. 211, dated August 12, 1999, at pages 329, 330, 384 and 385. 486. Halawani Industrial Co., a Jordanian company, v. PepsiCo, Inc., an American company, Registrar’s Decision Nos. TM/51014/11414, dated June 24, 2003, TM/51015/17134, dated September 4, 2003, TM/51058/11417, dated June 24, 2003, and TM/51059/17170, dated September 4, 2003. 484 Vol. 95 TMR (Time Warner), owner of the famous trademark TWEETY,487 against the registration of the trademarks TWEETY and TWEENY in Arabic in Class 29.488 The Registrar’s decisions were based on the fact that both TWEETY and the trademarks in Arabic are similar to an extent that public confusion is possible. In his decision the Registrar mentioned the fact that TWEETY is the name of the famous cartoon character.489 [TWEETY] [TWEENY] Similarly, the Registrar accepted the notices of opposition submitted by Time Warner Entertainment Co. L.P, owner of the famous trademark TWEETY,490 against the registration of the trademark TWEETY and TWEETY Device in Class 30.491 487. Registration Nos. 41589, 41597 and 41601 in Classes 9, 16 and 28, published in Official Gazette No. 180, dated September 25, 1996; Registration Nos. 40057 and 40058 in Classes 29 and 25, published in Official Gazette No. 174, dated April 25, 1996. 488. Application Nos. 51769 and 51780 in Class 29, published in Official Gazette Supplement No. 214, dated October 16, 1999, at pages 305 and 315. 489. Warner Entertainment Co. L.P., an American company, v. Halawani Industrial Co., a Jordanian company, Registrar’s Decision Nos. TM/51769/10522, dated June 12, 2003, and TM/51780/11141, dated June 23, 2003 (unpublished). 490. Registration Nos. 41589, 41597 and 41601 in Classes 9, 16 and 28, published in Official Gazette No. 180, dated September 25, 1996; Registration Nos. 40057 and 40058 in Classes 29 and 25, published in Official Gazette No. 174, dated April 25, 1996 491. Application No. 54626 in Class 30, published in Official Gazette No. 223, dated July 4, 2000, at page 342. Vol. 95 TMR 485 The Registrar’s decision was based on the fact that both trademarks are sufficiently similar that public confusion is possible. In his decision the Registrar mentioned the fact that TWEETY is a famous trademark and is the name of the famous cartoon character.492 The Registrar of Trademarks also accepted the notices of opposition submitted by Warner Entertainment Co. L.P, owner of the famous trademark TWEETY,493 against the registration of the trademark SWEETY in Class 30.494 Finally, the Registrar accepted the notice of opposition submitted by Time Warner, owner of the famous trademark TWEETY,495 against the registration of the trademark TWEETY’S NURSERY in Class 5.496 492. Warner Entertainment Co. L.P., an American company, v. Abu Nassar & Abu Khalaf Co., a Jordanian company, Registrar’s Decision No. TM/54626, dated March 19, 2003. 493. Registration Nos. 41589, 41597 and 41601 in Classes 9, 16 and 28, published in Official Gazette Nos 180, dated September 25, 1996; Registration Nos. 40057 and 40058 in Classes 29 and 25, published in Official Gazette No. 174, dated April 25, 1996. 494. Application No. 58579 in Class 29, published in Official Gazette Supplement No. 214, dated October 16, 1999, at page 369. 495. Registration Nos. 41589, 41597 and 41601 in Classes 9, 16 and 28, published in Official Gazette No. 180, dated September 25, 1996; Registration Nos. 40057 and 40058 in Classes 29 and 25, published in Official Gazette No. 174, dated April 25, 1996. 496. Application No. 48788 in Class 5, published in Official Gazette No. 205, dated January 9, 1999, at page 61. 486 Vol. 95 TMR The Registrar accepted the notice of opposition filed by Leo Pharmaceutical Products Ltd. against the application for the registration of the trademark FUSID497 published for opposition in the name of Hayat Pharmaceutical Industries. The Registrar’s decision affirmed that the opposed trademark resembled the famous trademark FUCIDIN498 and that, as the owner of the trademarks FUCIDIN, FUCICORT and FUCITHALMIC, Leo Pharmaceutical Products Ltd. had the priority of using the prefix FUCI-.499 The Registrar accepted the notice of opposition filed by Charaffedine Industrial Laboratories, owner of the trademark SILVANA, against the application for the registration of the trademark SILVANA500 in Class 3, published for opposition in the name of Yosef Abu Ajamieh & Partners Co. The Registrar’s decision was based on the fact that the trademark SILVANA was being used and had been registered in several countries for a long period of time and that the registration thereof in the name of an unauthorized party would cause public confusion.501 The fact that the trademark was not registered in Jordan did not affect the case. The registration of the opposed trademark SILVANA was proven to be in bad faith, as the applicant company had visited the opposing company and asked to be appointed as its commercial agent in Jordan. The Registrar accepted the notices of opposition filed by the Savola Company, owner of the trademarks SAFIA502 and AFIA503 in Class 29, against the applications for the registration of the 497. Application No. 52201, published in Official Gazette Supplement No. 215, dated November 21, 1999, at page 113. 498. Registration No. 20198, published in Official Gazette Supplement No. 80, dated October 5, 1986. 499. Leo Pharmaceutical Products Ltd., a Danish company, v. Hayat Pharmaceutical Industries, a Jordanian company, Registrar’s Decision No. TM/52201/16791, dated September 1, 2003 (unpublished). 500. Application No. 53801, published in Official Gazette Supplement No. 220, dated May 7, 2000, at page 3. 501. Charaffedine Industrial Laboratories, a Lebanese company, v. Yosef Abu Ajamieh & Partners Co., a Jordanian company, Registrar’s Decision No. TM/53801/20471, dated October 15, 2003 (unpublished). 502. Registration No. 28274 in Class 29, published in Official Gazette Supplement No. 123, dated March 16, 1991; Registration No. 28277 in Class 32, published in Official Gazette Supplement No. 124, dated June 29, 1991. 503. Registration No. 46392 in Class 29, published in Official Gazette Supplement No. 198, dated March 25, 1998, at page 138; Registration No. 21130 in Class 30, published in Official Gazette Supplement No. 83, dated February 5, 1987, at page 194; Registration No. 25389 in Class 31, published in Official Gazette Supplement No. 99, dated August 15, 1988, at page 206. Vol. 95 TMR 487 trademark SAFI in both Arabic and English504 in Class 29, published for opposition in the name of Arab International Food & Oil Processing Co. The Registrar’s decisions were based on the fact that the trademarks concerned were similar to the extent that public confusion was possible.505 I.B.8.c. Conflict Between Trademarks and Corporate Names The Registrar of Trademarks rejected the notices of opposition submitted against the registration of the trademark BURGER KING and Device in both Arabic and Latin characters and in Classes 29 and 30506 by Mohammed Abu-Shamot, owner of the trade name Burger King in Arabic (i.e., Malek Al-Hamburger).507 The Registrar’s decisions were based on the fact that no conflict between both the trade name registration and the trademark registrations is expected.508 The fact that BURGER KING is a famous mark was also mentioned in the decision. On appeal the High Court of Justice affirmed the Registrar’s decision.509 504. Application Nos. 45218 and 45219, published in Official Gazette Supplement No. 193, dated November 10, 1997; Application Nos. 46179 and 46180, published in Official Gazette Supplement No. 197, dated February 21, 1998, at pages 127 and 129, respectively. 505. Savola Co., a Saudi company, v. Arab International Food & Oil Processing Co., AFICO, a Jordanian company, Registrar’s Decision Nos. TM/45218/11776 and TM/45219/11784, dated June 29, 2003 (unpublished); Savola Co., a Saudi company, v. Arab International Food & Oil Processing Co., AFICO, a Jordanian company, Registrar’s Decision Nos. TM/46180/10570 and TM/46179/10571, dated June 12, 2003 (unpublished). 506. Application Nos. 52935 and 52934 in Classes 29 and 30, published in Official Gazette No. 216, dated December 20, 1994, at pages 262 and 239; Application Nos. 54522 and 54101, published in Official Gazette No. 222, dated June 4, 2000, at pages 364 and 251. 507. Trading No. 15045, dated November 22, 1978; Trading No. 26895, dated November 5, 1989. 508. Mohammed Abu-Shamot, a Jordanian citizen, v. Burger King Corp., an American company, Registrar’s Decision Nos. TM/52935/9335, TM/52934/93335, and TM/54522/9336, dated June 2, 2003, and Registrar’s Decision No. TM/54101/20199, dated October 11, 2003. This decision was not appealed. 509. High Court of Justice, Decision Nos. 7, 9 and 10, Case Nos. 300/2003, 298/2003 and 301/2003, respectively, dated December 8, 2003. 488 Vol. 95 TMR I.B.9.a. No Similarity of Marks The Registrar of Trademarks accepted the notice of opposition filed against the registration of the word mark ADENAFIL510 in Class 5, published for opposition in the name of a Jordanian company. The notice of opposition was based on the similarity between ADENAFIL and the prior-registered trademark DENAFIL511 in Class 5. On appeal the High Court of Justice reversed the Registrar’s decision and decided that both trademarks are not similar enough to cause confusion for professional people, such as doctors and pharmacists.512 Beecham Group Ltd., owner of the famous trademark AMOXIL513 in Class 5, which is registered and has been extensively used in Jordan, filed a notice of opposition against the 510. Application No. 52941 in Class 5, published in Official Gazette No. 216, dated December 20, 1999, at page 68. 511. Registration No. 48909 for DENAFIL in Class 5, published in Official Gazette No. 205, dated January 9, 1999 at page 89. 512. PFIZER INC, an American company, v. Advanced Pharmaceutical Industries, a Jordanian company, Registrar’s Decision No. TM/52941/22143, dated November 9, 2003 (unpublished). High Court of Justice, Decision No. 20, Case No. 79/2004, dated April 25, 2004. 513. Registration No. 12400, published in Official Gazette No. 50, dated February 20, 1977. Vol. 95 TMR 489 application for the registration of the trademark PHARMOXIL514 in Class 5, published for opposition in the name of International Pharmaceutical & Chemical Mfg. Co., Ltd. The Registrar rejected the notice of opposition and decided that the similarity between the trademarks concerned would not lead to confusion, as the people dealing with pharmaceutical products are professional people and cannot be confused easily.515 The Registrar did not consider the point of unfair competition. Beecham Group Ltd., owner of the famous trademark AMOXIL516 in Class 5, which is registered and has been extensively used in Jordan, filed a notice of opposition against the application for the registration of the trademark AMOXIRAM517 in Class 5, published for opposition in the name of Ram Pharmaceutical Industries Co., Ltd. The Registrar rejected the notice of opposition and decided that the similarity between the trademarks concerned would not lead to confusion, as the people dealing with pharmaceutical products are professional people and cannot be confused easily.518 The Registrar did not consider the point of unfair competition. Pfizer, Inc., owner of the famous trademark VIAGRA519 in Class 5, which is registered and has been extensively used in Jordan, filed a notice of opposition against the application for the registration of the trademark VIGRO520 in Class 5, published for opposition in the name of Ram Pharmaceutical Industries Co., Ltd.. The Registrar rejected the notice of opposition and decided that the similarity between the trademarks concerned would not lead to confusion, as the people dealing with pharmaceutical 514. Application No. 42825, published in Official Gazette Supplement No. 184, dated December 30, 1996, at page 46. 515. Beecham Group Ltd., a British company, v. International Pharmaceutical & Chemical Mfg. Co., Ltd., a Jordanian company, Registrar’s Decision No. TM/42825/20203, dated October 11, 2003 (unpublished). 516. Registration No. 12400, published in Official Gazette No. 50, dated February 20, 1977. 517. Application No. 50221, published in Official Gazette Supplement No. 208, dated April 18, 1999, at page 107. 518. Beecham Group Ltd., a British company, v. Ram Pharmaceutical Industries Co., Ltd., a Jordanian company, Registrar’s Decision No. TM/50221/20468, dated October 15, 2003 (unpublished). 519. Registration No. 48910, published in Official Gazette Supplement No. 205, dated January 9, 1999. 520. Application No. 52709, published in Official Gazette Supplement No. 213, dated September 25, 1999, at page 125. 490 Vol. 95 TMR products are professional people and cannot be confused easily.521 The Registrar did not consider the point of unfair competition. The Registrar rejected the notice of opposition filed by Hero, owner of the famous trademark HERO,522 against the application for the registration of the trademark HELLO523 in Class 32, published for opposition in the name of Gulf Food Products Co. The Registrar’s decision was based on the fact that the trademarks concerned were not similar to the extent that public confusion was possible.524 The Registrar rejected the notice of opposition filed by DC Comics against the application for the registration of the trademark ALWATWAT525 in Arabic, which is the Arabic translation of the word BAT in English, published for opposition in the name of Halawani Industrial Co. The Registrar’s decision was based on the fact that the famous trademark was known as BATMAN526 in its transliterated form and not BAT in its translation form only, and therefore public confusion was not possible.527 On appeal, the High Court of Justice affirmed the Registrar’s decision.528 521. Pfizer, Inc., an American company, v. Ram Pharmaceutical Industries Co., Ltd., a Jordanian company, Registrar’s Decision No. TM/52709/20845, dated October 20, 2003 (unpublished). 522. Registration No. 30213 in Class 5, published in Official Gazette Supplement No. 133, dated December 15, 1992; Registration No. 19219 in Class 29, published in Official Gazette Supplement No. 76, dated March 10, 1985; Registration No. 19211 in Class 30, published in Official Gazette Supplement No. 76, dated March 10, 1985; Registration No. 19212 in Class 32, published in Official Gazette Supplement No. 76, dated March 10, 1985. 523. Application No. 53819, published in Official Gazette Supplement No. 220, dated May 7, 2000, at page 255. 524. Hero, a Swiss company, v. Gulf Food Products Co., a Jordanian company, Registrar’s Decision No. 53819/16317, dated August 26, 2003 (unpublished). 525. Application No. 51768, published in Official Gazette Supplement No. 214, dated October 16, 1999, at page 304. 526. Registration No. 17996, published in Official Gazette Supplement No. 72, dated June 30, 1983; Registration Nos. 42509, 42519 and 42884, published in Official Gazette Supplement No. 183, dated December 15, 1996. 527. DC Comics, an American company, v. Halawani Industrial Co., a Jordanian company, Registrar’s Decision No. TM/51768/18831, dated September 25, 2003 (unpublished). 528. Case No. 461/2003, High Court of Justice, Decision No. 47, dated November 30, 2003 (unpublished). Vol. 95 TMR 491 I.B.12. Famous Marks Halawani Industrial Co. filed notices of opposition against the applications for the registration of the trademark FRITO-LAY529 in Classes 29 and 30, which were filed as both word marks and word & device marks, published for opposition in the name of PepsiCo Inc. Halawani claimed that it was the owner of the trademarks FRITOS and LAYS. The Registrar rejected the notices of opposition, finding that PepsiCo Inc. was the owner of the famous trademarks FRITO-LAY in several countries of the world and thus was entitled to protection.530 PepsiCo Inc. filed notices of opposition against the applications for the registration of the trademark FRITOS531 in Classes 29 and 30, published for opposition in the name of Halawani Industrial Co. The Registrar accepted the notices of opposition, finding that PepsiCo Inc. was the owner of the famous trademark FRITOS in several countries of the world and therefore was entitled to register said trademark in its name.532 Halawani Industrial Co. filed notices of opposition against the applications for the registration of the trademark LAY’S533 in Class 30, which were filed as both word marks and word & device marks, published for opposition in the name of PepsiCo Inc. Halawani claimed that it was the owner of the trademark LAY’S. The Registrar rejected the notices of opposition, finding that PepsiCo Inc., was the owner of the famous trademark LAY’S in 529. Application Nos. 53177 and 53178, published in Official Gazette Supplement No. 217, dated February 23, 2000, at pages 199 and 234, respectively; Application Nos. 55491 and 55492, published in Official Gazette Supplement No. 225, dated October 12, 2000, at pages 330 and 301, respectively. 530. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American company, Registrar’s Decision Nos. TM/53177/11189, TM/53178/11188, TM/55491/11178 and TM/55492/11193, dated June 22, 2003 (unpublished). 531. Application No. 49456, published in Official Gazette Supplement No. 206, dated February 3, 1999, at page 287; Application No. 50967, published in Official Gazette Supplement No. 211, dated August 12, 1999, at page 368. 532. PepsiCo Inc., an American company, v. Halawani Industrial Company, a Jordanian company, Registrar’s Decision Nos. TM/49456/11774, dated June 29, 2003, and TM/50967/11303, dated June 23, 2003 (unpublished). 533. Application Nos. 50975 and 50976, published in Official Gazette Supplement No. 211, dated August 12, 1999, at pages 372 and 373, respectively. 492 Vol. 95 TMR several countries of the world and therefore was entitled to register said trademark in its name.534 Procter & Gamble Co. filed a notice of opposition against the application for the registration of the trademark ALWAYS535 in Class 3, published for opposition in the name of Anwar Sinjab Est. The Registrar accepted the notice of opposition, finding that Procter & Gamble was the owner of the famous trademark ALWAYS536 in Classes 5, 16 and 25 in several countries of the world, including Jordan, and therefore the registration thereof in the name of an unauthorized party would lead to public confusion and unfair competition even if applied in a different class.537 The Registrar accepted the notice of opposition filed by Rotana Video & Audio Visual Publicity & Advertising Co. against the application for the registration of the trademark ROTANA & R Device538 in Class 16, published for opposition in the name of Suhair Karoot Est. The Registrar’s decision was based on the fact that the Registrar was convinced from the submitted documents that the trademark ROTANA & R Device was a famous trademark and that the registration thereof in the name of an unauthorized party would lead to public confusion.539 The Registrar rejected the notice of opposition filed by Halawani Industrial Co. against the application for the registration of the trademark TAZOS540 in Class 30, published for opposition in the name of PepsiCo Inc. Halawani claimed that it was the owner of trademark TAZOS. 534. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American company, Registrar’s Decision Nos. TM/50975/9627, dated June 4, 2004, and TM/50976/10680, dated June 15, 2004 (unpublished). 535. Application No. 54118, published in Official Gazette Supplement No. 222, dated June 4, 2000, at page 18. 536. Registration Nos. 57166 and 57167, published in Official Gazette Supplement No. 231, dated June 20, 2001. 537. Procter & Gamble Co., an American company, v. Anwar Sinjab Est., a Jordanian establishment, Registrar’s Decision No. TM/54118/20532, dated November 16, 2003 (unpublished). 538. Application No. 46739, published in Official Gazette Supplement No. 199, dated April 28, 1998, at page 85. 539. Rotana Video & Audio Visual Publicity & Advertising Co., a Saudi company, v. Suhair Karoot Est., a Jordanian establishment, Registrar’s Decision No. TM/46739/17446, dated September 10, 2003 (unpublished). 540. Application No. 50978, published in Official Gazette Supplement No. 211, dated August 12, 1999, at page 375. Vol. 95 TMR 493 The Registrar’s decision was based on the fact that the submitted evidence proved that the trademark TAZOS had been owned by PepsiCo for a long time.541 On appeal, the High Court of Justice affirmed the Registrar’s decision.542 PepsiCo Inc. filed notices of opposition against the applications for the registration of the trademark TAZO Labels543 in Class 29, published for opposition in the name of Halawani Industrial Co. for chips. The Registrar accepted the notices of opposition, as the Registrar was convinced that PepsiCo was the owner of the trademark TAZO and therefore was entitled to register and use said trademark in Jordan.544 On appeal, the High Court of Justice affirmed the Registrar’s decision and confirmed that the registration of this trademark by an unauthorized party would cause unfair competition and public confusion.545 The Registrar rejected the notices of opposition filed by Halawani Industrial Co. against the applications for the registration of the trademark QUAVERS546 in Classes 29 and 30, published for opposition in the name of PepsiCo Inc. The Registrar’s decisions were based on the fact that PepsiCo submitted convincing evidence that it was the owner of the trademark QUAVERS and that said trademark was a famous trademark.547 541. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American company, Registrar’s Decision No. TM/50978/11307, dated June 24, 2003 (unpublished). 542. Case No. 309/2003, High Court of Justice, Decision No. 43, dated November 20, 2003 (unpublished). 543. Application Nos. 50866–50869, published in Official Gazette Supplement No. 211, dated August 12, 1999, at pages 311–14. 544. PepsiCo Inc., an American company, v. Halawani Industrial Co., a Jordanian company, Registrar’s Decision Nos. TM/50866/1129, TM/50867/11144 and TM/50868/11143, dated June 22, 2003 (unpublished); Registrar’s Decision No. TM/50869/1215, dated July 2, 2003 (unpublished). 545. Case Nos. 305/2003, 282/2003, 304/2003 and 323/2003, High Court of Justice, Decision Nos. 41, 42, 44 and 37, respectively, dated November 20, 2003 (unpublished). 546. Application No. 50970, published in Official Gazette Supplement No. 211, dated August 12, 1999, at page 324 (Class 29); Application No. 50963, published in Official Gazette Supplement No. 211, dated August 12, 1999, at page 366 (Class 30). 547. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American company, Registrar’s Decision Nos. TM/50970/11418 and TM/50963/11305, dated June 24, 2003 (unpublished). 494 Vol. 95 TMR The Registrar rejected the notices of opposition filed by Halawani Industrial Co. against the applications for the registration of the trademark DORITOS & Device548 in Class 30, published for opposition in the name of PepsiCo Inc. The Registrar’s decisions were based on the fact that PepsiCo submitted convincing evidence that it was the owner of the trademark DORITOS and that said trademark was a famous trademark.549 The Registrar rejected the notices of opposition submitted by Halawani Industrial Co. against the applications for the registration of the trademark CHEETOS & Device550 in Classes 29 and 30, published for opposition in the name of PepsiCo Inc. The Registrar’s decisions were based on the fact that PepsiCo submitted convincing evidence that it was the owner of the trademark CHEETOS and that said trademark was a famous trademark.551 PepsiCo Inc. filed notices of opposition against the applications for the registration of the trademark RUFFLES552 in Classes 29 and 30, published for opposition in the name of Halawani Industrial Co. for chips. The Registrar accepted the notices of opposition, as the Registrar was convinced that PepsiCo was the owner of the famous trademark RUFFLES and therefore was entitled to register and use said trademark in Jordan.553 548. Application Nos. 50961 and 50966, published in Official Gazette Supplement No. 211, dated August 12, 1999, at pages 367 and 365, respectively. 549. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American company, Registrar’s Decision Nos. TM/50961/11304 and TM/50966/11308, dated June 23, 2003 (unpublished). 550. Application No. 50974, published in Official Gazette Supplement No. 211, dated August 12, 1999, at page 371 (Class 29); Application No. 50964, published in Official Gazette Supplement No. 211, dated August 12, 1999, at page 323 (Class 30). 551. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American company, Registrar’s Decision Nos. TM/50974/10855 and TM/50964/10856, dated June 16, 2003 (unpublished). 552. Application No. 49455, published in Official Gazette Supplement No. 206, dated February 3, 1999, at page 286 (Class 29); Application No. 50977, published in Official Gazette Supplement No. 211, dated August 12, 1999, at page 374 (Class 30). 553. PepsiCo Inc., an American company, v. Halawani Industrial Co., a Jordanian company, Registrar’s Decision Nos. TM/49455/11774 and TM/50977/11302, dated June 23, 2003 (unpublished). Vol. 95 TMR 495 III.A.1. Famous Marks The Registrar accepted the notices of cancellation filed by PepsiCo Inc. against the registration of the trademark TAZO554 in Classes 29 and 30, registered in the name of Halawani Industrial Co. The Registrar’s decisions were based on the fact that the submitted evidence proved that the trademark TAZO had been owned and used by PepsiCo for a long time.555 On appeal, the High Court of Justice affirmed the Registrar’s decisions.556 The Registrar accepted the notice of cancellation filed by PepsiCo Inc. against the registration of the trademark PAZO557 in Class 30, registered in the name of Halawani Industrial Co. The Registrar’s decision was based on the fact that the submitted evidence proved that the trademark TAZO had been owned and used by PepsiCo for a long time and that the trademarks PAZO and TAZO were confusingly similar.558 On appeal, the High Court of Justice affirmed the Registrar’s decision.559 III.A.2.b. Similarity of Marks The Registrar accepted the notice of cancellation filed by Dolorgiet GmbH & Co. KG, owner of the trademark DOLOGIT560 in Class 5, against the registration of the trademark DOLCET561 in 554. Application No. 54704, published in Official Gazette Supplement No. 223, dated July 4, 2000, at page 309 (Class 29); Application No. 47720, published in Official Gazette Supplement No. 201, dated June 28, 1998, at page 196 (Class 30). 555. PepsiCo Inc., an American company, v. Halawani Industrial Co., a Jordanian company, Registrar’s Decision No. TM/54704/12143, dated July 2, 2003 (Class 29) (unpublished); Registrar’s Decision No. TM/47720/10573, dated June 12, 2003 (Class 30) (unpublished). 556. Case No. 262/2003, High Court of Justice, Decision No. 38, dated November 20, 2003 (Class 29) (unpublished); Case No. 381/2003, High Court of Justice, Decision No. 39, dated November 20, 2003 (Class 30) (unpublished). 557. Application No. 49750, published in Official Gazette Supplement No. 207, dated August 12, 1999, at page 302. 558. PepsiCo Inc., an American company, v Halawani Industrial Co., a Jordanian company, Registrar’s Decision No. TM/49750/11207, dated June 22, 2003 (unpublished). 559. Case No. 372/2003, High Court of Justice, Decision No. 40, dated November 20, 2003 (unpublished). 560. Registration No. 20087, published in Official Gazette Supplement No. 79, dated April 5, 1986. 561. Registration No. 44377, published in Official Gazette Supplement No. 190, dated August 14, 1997. 496 Vol. 95 TMR Class 5, registered in the name of Ram Pharmaceutical Industries Co., Ltd. The Registrar’s decision was based on the fact that the trademarks concerned were similar to the extent that public confusion was possible.562 The Registrar accepted the notice of cancellation filed by Carter-Wallace Inc., owner of the trademark PEARL DROPS SMOKERS563 in Class 3, against the registration of the trademark PEARL DROPS564 in Class 3, registered in the name of Houbara Factory for Cosmetics. The Registrar’s decision was based on the fact that the trademarks concerned were similar to the extent that public confusion was possible.565 III.A.10. Nonuse of Trademark The Registrar accepted the cancellation action based on nonuse filed by ITT Trademark & Trade GmbH against the registration of the trademark ITT in Class 9, registered in the name of ITT Corp.566 The Registrar’s decision was based on the fact that the company that filed the cancellation action was an aggrieved party and that the trademark owner did not submit any proof of use.567 III.A.11.a. No Similarity of Marks SmithKline & French Laboratories Ltd., owner of the famous trademark DYAZIDE568 in Class 5, which is registered and has been extensively used in Jordan, filed a notice of cancellation 562. Dolorgiet GmbH & Co. KG, a German company, v. Ram Pharmaceutical Industries Co., Ltd., a Jordanian company, Registrar’s Decision No. TM/44377/18082, dated September 17, 2003 (unpublished). 563. Registration No. 39322, published in Official Gazette Supplement No. 172, dated February 25, 1996, at page 15. 564. Registration No. 44352, published in Official Gazette Supplement No. 190, dated August 14, 1997, at page 24. 565. Carter-Wallace Inc., an American company, v. Houbara Factory for Cosmetics, a Jordanian company, Registrar’s Decision No. TM/44352/10678, dated June 15, 2003 (unpublished). 566. Registration No. 22595, published in Official Gazette Supplement No. 89, dated April 20, 1987. 567. ITT Trademark & Trade GmbH, a German company, v. ITT Corp., an American company, Registrar’s Decision No. TM/22596/21458, dated October 28, 2003 (unpublished). 568. Registration No. 13171, published in Official Gazette Supplement No. 51, dated July 30, 1977. Vol. 95 TMR 497 against the registration of the trademark DIABREZIDE569 in Class 5, registered in the name of L. Molleni & C., dei Fratelli Alitti Societa Di Esercizio S.P.A. The Registrar rejected the notice of cancellation and decided that the similarity between the trademarks concerned would not lead to confusion, as the people dealing with pharmaceutical products are professional people and cannot be confused easily.570 The Registrar did not consider the point of unfair competition. III.F.5. Cancellation The Registrar accepted the cancellation action filed by Arroces Y Cereals against the registration of the trademark LAPERDIZ & Device571 in Class 30, registered in the name of a Jordanian firm, Mahmoud Shaban & Sons Co., that used to be the Spanish company’s local commercial agent in Jordan. The Registrar accepted the cancellation action, confirming that it appeared from the submitted evidence that Arroces Y Cereals was the owner of said trademark and that its prior agent registered the same in its own name in bad faith.572 On appeal, the High Court of Justice affirmed the Registrar’s decision.573 MAURITIUS III.A.1. Famous Marks The Polo/Lauren Company, LP (Polo) applied for an interlocutory injunction against three respondents,574 restraining and prohibiting them from, inter alia, manufacturing and selling products bearing the POLO mark and marks incorporating POLO, all of which had been registered in Mauritius. In addition, Polo sought an interlocutory injunction restraining the respondents 569. Registration No. 38649, published in Official Gazette Supplement No. 169, dated December 20, 1996. 570. SmithKline & French Laboratories Ltd., a British company, v. L. Molleni & C., dei Fratelli Alitti Societa Di Esercizio S.P.A., an Italian company, Registrar’s Decision No. TM/38649/20204, dated October 11, 2003 (unpublished). 571. Registration No. 43642, published in Official Gazette Supplement No. 188, dated June 5, 1997, at page 114. 572. Arroces Y Cereals, a Spanish company, v. Mahmoud Shaban & Sons Co., a Jordanian company, Registrar’s Decision No. TM/43642/20467, dated October 15, 2002 (unpublished). 573. Case No. 14/2004, High Court of Justice, Decision No. 17, dated March 16, 2004 (unpublished). 574. The Polo/Lauren Co., LP v. Regent Ltd., Mr. Hitendranath Beegoo & Mr. Kreshna Ramasawmy, 2004 SCJ45, 25 February 2004. 498 Vol. 95 TMR from manufacturing and selling products bearing the registered trademark POLO in association with the words “by RALPH LAUREN” or any other words. Polo had not registered the trademark RALPH LAUREN at the time of bringing this application. As Polo is the registered proprietor of the various POLO marks, the court, as expected, granted the injunction against the three respondents in respect of those trademarks. The more interesting aspect of the case concerned the court’s consideration of whether an injunction should be granted against the respondents in respect of their use of the trademark POLO in association with the words “by RALPH LAUREN.” Although Polo had not sought an injunction in respect of use of the trademark RALPH LAUREN per se, the court nevertheless considered Polo’s rights to the trademark RALPH LAUREN, concluding that the respondents’ use of the trademark RALPH LAUREN constituted an infringement of Polo’s rights. The court found that the use of the trademark RALPH LAUREN, on its own or together with the registered POLO trademark, constituted an infringement of the provisions of the Protection Against Unfair Practices (Industrial Property Rights) Act 2002. In particular, the court found that RALPH LAUREN was a well-known mark and, although it was not registered in the name of Polo, use of that trademark by the respondents constituted an unfair practice that was likely to cause confusion and damage Polo’s reputation and goodwill. Despite the fact that there was very little evidence of use of the trademark RALPH LAUREN by Polo in Mauritius itself, the court decided that Polo had acquired a reputation and goodwill, in respect of its trademark RALPH LAUREN, that were internationally well known. Moreover, the court found that the respondents, as professionals in the textile industry, could not have been unaware of the trademark RALPH LAUREN. This decision is tangible proof that the provisions of the Patent, Industrial Design and Trade Marks Act 2002, as well as the Protection Against Unfair Practices (Industrial Property Rights) Act 2002, are being rigorously applied by the courts. MEXICO II.B. Identification of Goods or Services In accordance with Article 93 of the Mexican Law of Industrial Property (LPI),575 trademarks will be registered in connection with particular products or services according to the classification established in the regulations to said law. Any doubts in regard to 575. Ley de la Propiedad Industrial. Vol. 95 TMR 499 the class to which a product or service belongs will be finally resolved by the Mexican Institute of Industrial Property (IMPI).576 The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, adopted in 1957, has been in force in Mexico since 2001. In a resolution issued in November 2002, the Federal Court for Tax and Administrative Affairs (TFJFA)577 ruled that because, in the matter at issue, the registered trademark, for goods in International Class 16, covered disposable diapers and within the alphabetical list of goods of the Nice Classification Class 16 refers to diapers made of cellulose paper of unique use and disposable, it was clear that said class did not distinguish whether the diapers were to be used for hygienic purposes for incontinent adults or for babies. The TFJFA therefore held that if the owner of the trademark proved the use of the mark for any type of disposable diapers, it could be deduced that the registration was used within the terms for which it was granted, that is, covering disposable diapers, as in Class 16 it is not specified whether the diapers are manufactured for adults or babies.578 III.A.2.b. Similarity of Marks In order to determine the distinctive character of a trademark, the IMPI takes into account all the factors characterizing the mark, namely, its graphic, phonetic and ideological elements. In May 2002, the TFJFA ruled that, with regard to trademark registration, the ideological contents are of great importance when deciding whether there is confusion between two or more trademarks. According to the resolution, if the ideological aspects of the trademarks being compared are the same, the confusion arising between them is inevitable, despite the fact that their similarities could be graphic or phonetic. Confusion may be caused by drawings that resemble each other, a word and a drawing, words with opposed meanings or the inclusion in the trademark of the name of the product sought to be distinguished. Of all of these types the one that refers to words and drawings is the most important, because of the fact that if the symbol or design of a mark is the graphic representation of an idea 576. Instituto Mexicano de la Propiedad Industrial. 577. Tribunal Federal de Justicia Fiscal y Administrativa. 578. Proceeding No. 10831/01-17-05-4/407/02-PL-07-04. Resolved by the plenary meeting of the Superior Court of the Federal Court for Tax and Administrative Affairs, in session of November 18, 2002, by unanimity of 9 votes. Magistrate Silvia Eugenia Díaz Vega. Secretary María Elda Hernández Bautista. Resolution approved in session of November 18, 2002. 500 Vol. 95 TMR it will undoubtedly cause confusion with a word or words that designate the same idea of the other trademark subject to analysis. Therefore, trademarks that evoke a thing or a quality protect not only their expression but also the drawing or symbol that can graphically represent them. Otherwise, a person or company could easily infringe the rights of a trademark owner by obtaining a registration for symbols or words that refer to the thing or quality contained in the word mark already registered, which would cause confusion among consumers.579 NEW ZEALAND I.B.13. First to Apply Versus First to Use In International Resource (1999) Ltd. v. Aqua-Life 1983 Ltd.,580 the Assistant Commissioner of Trade Marks allowed an opposition to the registration of a stylised version of the trade mark ECH20. Aqua-Life 1983 Ltd. (the opponent) successfully argued that it had a prior claim to the proprietorship of the trade mark. This decision is significant because the Assistant Commissioner held that, notwithstanding the opponent not having commercially used an identical mark, the opponent’s preparations to use substantiated its claim to proprietorship. On 30 July 2002, the opponent instructed its (then) attorneys to apply to register the trade mark ECH20. At the time, a plain text version of the trade mark ECH20 was already registered in the name of International Resource Ltd. for various beverages in International Class 32. On 2 August 2002, the opponent’s attorneys wrote to the attorneys on record for the registration enquiring whether the registration had been assigned to a third party because International Resource Ltd. had been struck off the Register of Companies in 1997. The opponent applied to register ECH20 on 19 August 2002, and then applied to remove the prior ECH20 registration on the grounds of non-use. This registration was subsequently removed from the Register of Trade Marks. In the meantime, on 15 August 2002, International Resource Ltd. (the applicant) applied to register a stylised version of the trade mark ECH20 in International Class 32 for essentially the same goods as its prior ECH20 registration. On 21 August 2002, the applicant requested that its name be changed to International 579. Proceeding No. 15038/01-17-11-8. Resolved by the Eleventh Regional Metropolitan Court of the Federal Court for Tax and Administrative Affairs on May 7, 2002, by unanimity of votes. Magistrate Gustavo Arturo Esquivel Vázquez. Secretary Eunice Ortigosa Vélez. 580. (17 May 2004) IPONZ T9/2004, Assistant Commissioner Hastie. Vol. 95 TMR 501 Resource (1999) Limited. This request was granted by the Commissioner of Trade Marks. In the opposition hearing, the opponent essentially relied on the ground that the applicant was not entitled to claim to be the true proprietor of the mark, because the application was not made in good faith or, alternatively, the applicant did not have a sufficiently definite intention to use the mark. The opponent also argued that it was the first to use and/or assert ownership of the mark under Section 26(1) of the Trade Marks Act 1953. On the issue of bad faith, the Assistant Commissioner accepted that “. . . there is an inherent difficulty in establishing the applicant did not have the requisite intention to use, given that the facts are, to a large extent, uniquely within its knowledge.” The Assistant Commissioner held that no inference could be drawn on the facts that the application was made in bad faith, and therefore the opposition failed on this ground. In considering the issue of prior use, the Assistant Commissioner reviewed a number of Australian581 and New Zealand582 cases, and commented that the consistent approach from the cases was that they drew a distinction between use and mere preliminary discussions preceding use. At common law, the proprietor of a trade mark is the first person to use the mark in New Zealand.583 It was accepted by the applicant that there may be use of a trade mark in the sense required by the Trade Marks Act (that is, to distinguish the opponent’s goods from the goods of others) even before the commercial launch of the product or service with which the mark is associated. That was the case here, because the opponent had not actually used the trade mark ECH20 prior to the application date (15 August 2002). The opponent argued that it had an existing (genuine) intention to use the trade mark in relation to the relevant goods, and this was sufficient for it to claim proprietorship of the mark. The opponent filed evidence that showed that it had briefed a graphic design company in June 2002 to create a brand for the opponent to use in relation to a new bottled water product. At a presentation to the opponent on 23 July 2002, the brand ECH20 was one of three initial recommendations. As part of the design process, an Internet search was done to see whether or not anyone 581. Moorgate Tobacco Co. Ltd. v. Phillip Morris Ltd., (1984) 156 CLR 414; Settef S.p.A. v. Riv-Ovland Marble Co. (Vic) Pty Ltd., (1987) 10 IPR 402; Buying Systems (Australia) Pty Ltd. v. Studio SRL, (1995) 30 IPR 517; Malibu Boats West, Inc. v. Catanese, (2000) 51 IPR 134; Woolly Bull Enterprises Pty Ltd. v. Reynolds, (2001) 51 IPR 149. 582. Effem Foods Ltd. v. Tip Top Investments Ltd., (22 November 2000) Unreported, High Court, Auckland CL21/00, Williams J. 583. See Phillip Morris (NZ) v. Liggett & Myer Tobacco, (1978) NZIPR 195; Pioneer HiBred Corn Company v. Hy-Line Chicks Pty Ltd., [1979] 2 N.Z.L.R. 50. 502 Vol. 95 TMR was using ECH20 (or the other brands that had been developed). That search did not reveal anyone else using ECH20 in New Zealand. In late July 2002, the opponent decided that it would use the ECH20 brand in relation to its new product, and had instructed its (then) attorneys on 30 July to apply to register the trade mark. The opponent had also worked on, and settled, the distribution channels for the new product, and how and to whom it would be marketed. The Assistant Commissioner held that the evidence established sufficient use of the trade mark by the opponent prior to 15 August 2002, and that the use substantiated its claim to proprietorship. The opponent had a fixed and existing intention to use the mark, and the steps taken by the opponent, including the significant step of choosing a mark in relation to the relevant goods, took the matter beyond the preliminary stage. The opponent “had committed itself to using the mark” and “all that remained to be done was to actually bottle and sell the new product.” I.B.20. Color In Effem Foods Ltd. v. Unilever PLC and Bluebird Foods Ltd.,584 the Assistant Commissioner of Trade Marks allowed an opposition by two parties against the registration of the colour orange as a trade mark in International Class 30 for “rice.” This decision is significant because the Assistant Commissioner confirmed that in order for colour marks consisting of a single basic colour to be registrable as a trade mark a very substantial level of factual distinctiveness, obtained through use, is required. Effem Foods Ltd. (the applicant) originally described the precise colour for which protection was sought by referring to an example attached to the application itself. The Intellectual Property Office of New Zealand (IPONZ) later adopted a policy requiring colours to be defined by reference to a standard colourindexing scheme, such as the Pantone system. The applicant sought to change its description of the colour to a range covered by several Pantone reference numbers. IPONZ refused to accept this change. At the opposition hearing the applicant reluctantly agreed to describe its colour as Pantone No. 021C, which was allegedly closest to the representation of its mark. Unilever PLC and Bluebird Foods Ltd. (the opponents) opposed the application on the grounds that the colour mark did not satisfy the definition of a trade mark under Section 2 of the Trade Marks Act 1953 (the Act), and that it was not registrable under Sections 14 and 15 of the Act. 584. (26 November 2003) IPONZ T43/2003, Assistant Commissioner Walden. Vol. 95 TMR 503 To fall within the definition of a trade mark in the Act, the alleged mark must be capable of graphic representation, and capable of distinguishing the applicant’s goods from those of other traders. As the applicant did not specify how the colour was to be applied to the goods, the Assistant Commissioner considered the mark in relation to the goods (rice) in a broad way including in relation to the packaging, promotional material and rice itself. The Assistant Commissioner noted that single colours have inherently low distinctiveness and that the shade of orange in this case was a common shade. Consequently, the mark was at the lower end of the “spectrum of distinctiveness” but was not completely generic to rice, or habitually associated with it. The mark, therefore, fell within the definition of a trade mark in the Act. The Assistant Commissioner then considered the registrability of the mark. The key issue for determining a colour mark’s inherent capability of distinguishing was whether or not other traders were likely, in the ordinary course of their business and without improper motive, to want to use the same or similar colour mark on or in connection with their goods. The opponents’ evidence showed that other traders wished to use, and had used, various shades of orange in relation to rice without any improper motive. Given the low level of inherent distinctiveness, a substantial level of factual distinctiveness, through use by the applicant, was required to establish registrability. The evidence failed to establish the necessary distinctiveness. NIGERIA II.E. Forum Conflicts In Ayman Enterprises Ltd. v. Akuma Industries Ltd.,585 the Supreme Court held that where a trademark is not registered the proper court to hear a passing-off action is the High Court of a state and not the Federal High Court. When a mark is registered, a passing-off action (or any other action for infringement) may be brought only in the Federal High Court. This decision means that previous practice must be reviewed. Previously, when an application for registration was pending, the better view was that a passing-off action should be commenced in the Federal High Court. Courts had long held that when a registration issued during the pendency of an action, the registration could be relied on in the action as by law it was effective retroactively. Subsequent to the Ayman decision, courts have taken the view that when a registration has not issued the Federal High Court is, ab initio, incompetent to hear any passing585. Supreme Court, 20 June 2003, reported at [2003] 13 NWLR 22. 504 Vol. 95 TMR off action. Consequently, many cases pending in the Federal High Court at the time Ayman was decided have had to be discontinued. It seems that in reaching its decision the Supreme Court overlooked a little-announced piece of legislation, s.2 of the Federal High Court (Amendment) Decree No. 60 of 1991, which had the effect of extending the jurisdiction of the Federal High Court to common-law passing off (for which trademark registration is not an element). In the circumstances, a number of appeals are coursing their way up in the hope that the Supreme Court will at some point have the opportunity to reconsider its decision in Ayman in the light of the overlooked legislation. III.A.12. Lack of Distinctiveness In Ferodo Ltd. v. Ibeto Industries Ltd., the appellant, who was the proprietor of the trademark FERODO for brake linings, instituted an action against the respondent for infringement. Evidence at the trial had shown that the trademark registered by the appellant consisted of the word FERODO and a checkered stripe device in the colors red, black and white. The respondent sold its goods in red packaging. The respondent denied the allegation of infringement. It argued that its trademarks UNION and UNION SUPA were distinctly different from the appellant’s trademark FERODO. The trial court took the view that the appellant’s trademark was essentially the word FERODO in spite of the accompanying stripe device and that the respondent’s trademarks were not similar to the appellant’s notwithstanding similarities in package coloring. The Court of Appeal dismissed the appeal.586 It held that when a name, graphic representation or any word is registered as a trademark with an accompanying device, it cannot be assumed that the device is part of the trademark. The Supreme Court,587 in upholding the lower court’s decision, held that in the absence of distinctiveness the appellant could not claim exclusive right to the getup notwithstanding its being part of the registered trademark. The Court relied on Section 9(1)(e) of the Trade Marks Act,588 which provides that only a distinctive device is registrable. 586. Reported at 92 TMR 469 (2002). 587. Supreme Court, 6 February 2004, reported at [2004] 16 WRN 1. 588. Laws of the Federation of Nigeria 1990, Chapter 436. Vol. 95 TMR 505 NORWAY III.A.2.b. Similarity of Marks On September 3, 2004, the Gulating Appeal Court prohibited the Norwegian company Autofil Norge AS from using the word AUTOFIL in its marketing. The plaintiff, NRK (the Norwegian Broadcasting Corporation), had used the word AUTOFIL extensively for a number of years as a name of a TV series about motor vehicles, and had registered AUTOFIL as a trademark in International Classes 16, 38 and 41. The Appeal Court found that AUTOFIL was also established by extensive use as a trademark connected with cars and motor vehicles, and that the mark and its owner enjoyed protection outside Classes 16, 38 and 41 on account of its obvious association with motor vehicles and motoring activities. NRK’s use was found to have occurred throughout Norway, and NRK was also regarded as having interests that justified the City Court’s previous granting of a preliminary injunction. In addition to ceasing the use of AUTOFIL in its marketing activities, the defendant was also ordered to change its company name, so that it no longer would contain the word AUTOFIL. The plaintiff was awarded costs for the Appeal Court.589 The Norwegian company Rørleggervakta AS (Plumber Guard Inc.) was granted a preliminary injunction against Plumber Guard Oslo Ludvigsen (a sole trader), prohibiting Mr. Ludvigsen’s use of the words PLUMBER GUARD based on the plaintiff’s established trademark rights after 37 years of continuous use. Even though the trademark as such was regarded by the court as being rather descriptive, and thus enjoying limited protection, the strong use of the mark, as well as the documented risk of confusion between the parties’ activities, convinced the Oslo City Court to issue, on November 24, 2004, a decision against the defendant. The plaintiff was awarded full costs.590 III.A.10. Nonuse of Trademark The trademark TRIPP TRAPP has been registered under the Nice classification in Class 20 for “furniture, including chairs.” The mark has been used only for a certain type of chair, mainly for children, but the chair is adjustable so that the child until fully grown may use it. 589. Published Lovdata LG 2004-36841. 590. Published Lovdata TOSLO-2004-16346. 506 Vol. 95 TMR The case had previously been heard by the Oslo City Court,591 which on October 2, 2002, had ruled in favor of the plaintiff, Trip Trap Denmark AS, finding that adequate trademark use by the defendant, the Norwegian firm Stokke Gruppen AS, had not taken place because the City Court determined that chairs for children differ from chairs for adults. The defendant appealed. On November 12, 2003, the Borgarting Lagmannsrett (a regional Appeal Court) reversed the decision, finding that trademark use was indeed present and that there was no reason to distinguish between chairs for adults and chairs for children. Further, the Appeal Court found that the trademark, when used on a chair, also satisfied the user requirement for the item “furniture.”592 III.C. Injunctions and Damages The German carmaker BMW (Bayerische Motoren Werke AG) filed suit in Oslo City Court against the Norwegian company Cellus Norge AS for alleged trademark infringement, as well as for compensation for economic losses. Cellus Norge AS sells cellular phone services in the form of logo messages to be transmitted via cell phones, including also the plaintiff’s trademark BMW & Device. However, as the defendant had immediately ceased its sale of services after a warning letter had been issued by BMW and had offered to pay NOK 20,000 (approximately US $3,000), and the court found Cellus Norge AS’s activity to be beneficial for BMW, the court refused BMW’s additional claim for NOK 30,000 (approximately US $5,000) in damages. Each party had to cover its own legal costs. The decision was made by Oslo City Court on July 2, 2004.593 III.J. Gray Marketing On June 4, 2004, the Norwegian Høyesterett (Supreme Court) upheld, for the most part, the Borgarting Appeal Court’s decision to prohibit the Norwegian company Paranova AS (a subsidiary of Paranova-Gruppen A/S, Denmark) from using a number of trademarks owned by companies in the Merck group (Merck & Co., Inc., Merck Sharp & Dohme B.V. and MSD Norge AS).594 The case dealt primarily with a parallel importer’s repackaging of pharmaceuticals. In particular, the Supreme 591. Published Lovdata TOSLO-2001-11200. 592. Published Lovdata LB-2003-00364. 593. Published Lovdata TOSLO-2004-09059. 594. See 93 TMR 708-09 (2003). Vol. 95 TMR 507 Court’s decision dealt with the question of whether the parallel importer had the right to use certain graphic elements of the plaintiff’s trademarks. Prior to making its decision, the Supreme Court had obtained an advisory opinion from the EFTA (European Free Trade Area) Court on the interpretation of Article 7(2) of the EU Trade Marks Directive concerning the possible need for repackaging in relation to exhaustion of rights according to the Trade Marks Directive. Merck’s appeal was lost, as the Supreme Court decided that Paranova was justified in adding graphic elements in the process of repackaging. The Appeal Court’s judgment concerning Paranova’s compensation to the plaintiff was lowered to NOK 2 million (approximately US $300,000). Paranova AS had to pay the plaintiff’s costs for the case before the Oslo City Court, whereas most of the costs for the Appeal Court were shared. For the Supreme Court, the plaintiffs jointly had to cover Paranova’s legal costs in the amount of NOK 2,102,880 (approximately US $300,000).595 V.A. Domain Names The Norwegian company Volvo Personbiler Norge AS, a subsidiary of the Swedish car maker Volvo, filed suit against a Norwegian citizen, Mr. O. B. G. Hoppestad, for trademark infringement caused by the defendant’s use of the domain name volvoimport.no. On October 7, 2004, the Norwegian Supreme Court upheld the decision handed down by the Appeal Court, as the word element “volvoimport” was found to represent an obvious infringement of the plaintiff’s famous trademark VOLVO. Under the circumstances the use of the domain name by the parallel importer, Mr. Hoppestad, was found to be unreasonable, and Volvo’s trademark rights were found not to have been exhausted in the course of trade. The defendant’s use of the domain name volvoimport.no was prohibited, and the plaintiff was awarded costs for the Supreme Court.596 The Norwegian company Ergoline AS requested a preliminary injunction before the Oslo City Court in order to prohibit the defendant, Offitek AS, another Norwegian company, from using the domain name ergoline.no or similar domain names containing the word ergoline. 595. Published Lovdata HR-2004-00981-A. 596. Published Lovdata HR-2004-016701-A. 508 Vol. 95 TMR On August 18, 2003, the Oslo City Court decided in favor of the defendant and ordered Ergoline to pay the court costs. Ergoline AS filed an appeal before the Borgarting Appeal Court concerning the order to pay the defendant’s costs. The Appeal Court, in upholding the Oslo City Court’s decision on November 24, 2003, confirmed that Offitek had infringed upon neither Ergoline trademark nor its company name.597 The Norwegian company finn.no AS filed for a preliminary injunction against Nettfinn AS for trademark infringement relating to confusion between the two parties’ domain names, finn.no and nettfinn.no. On October 31, 2003, the Borgarting Appeal Court confirmed the Oslo City Court’s previous negation of the presence of trademark infringement. The Appeal Court found that the element “finn” of the domain name finn.no had low distinctiveness (“finn” translates into “find” in English). The Appeal Court stated that although the Trademarks Act covers conflicts between trademarks and domain names (finn.no AS had registered the trademark FINN), this was not sufficient to prevent the defendant from using nettfinn.no, owing to the court’s finding that the two words were sufficiently different from one another. Further, nettfinn.no was used for goods and services other than those covered by finn.no AS’s use and registration. Costs were not awarded to either party. Two judges voted in favour of this decision, whereas the third judge found that risk of confusion existed and that the defendant’s use of nettfinn.no infringed on the plaintiff’s rights.598 On continued appeal, the Norwegian Supreme Court on July 2, 2004, referred the case back to the Borgarting Appeal Court, with instructions to consider also the plaintiff’s submissions regarding unfair marketing practices from the owner of nettfinn.no. However, the Appeal Court again decided against finn.no AS. The Appeal Court’s previous decision was upheld on April 29, 2004.599 On April 28, 2003, the Borgarting Appeal Court upheld the Indre Follo Tingrett’s (District Court’s) decision to prohibit the Norwegian company Haralds Printershop AS from using the domain name hpshop.no according to a request for a preliminary 597. Published Lovdata LB-2003-09956. 598. Published Lovdata LB-2003-20042. 599. Published Lovdata LB-2004-10163 and HR-2004-01169-U. Vol. 95 TMR 509 injunction filed by Hewlett Packard Company’s (HPC’s) Norwegian subsidiary.600 The Appeal Court found that the Trademark Act also covers use and registration of domain names. The word mark HP was determined to be strongly established by use in the Norwegian market for HPC. Risk of confusion for a not insignificant number of potential customers was found to exist. The Appeal Court regarded registration of the domain name in the Norwegian domain name registry by Haralds Printershop AS as having no importance with respect to the question of whether trademark infringement existed.601 PANAMA I.B.1. Generic Names Cuba Libre Products, S.A. filed registration petitions for CUBA LIBRE & Design for products in Classes 29, 30, 32, 33 and 34. Bacardi & Company Ltd., opposed, alleging that the trademarks were generic for products in all the requested classes. The applicant argued that the fact that it had obtained a previous registration for CUBA LIBRE ORIGINAL FORMULA & Design for products in Class 33 as of March 6, 1992, which was renewed on March 6, 2002, for ten more years, evidenced that its trademarks did not fall in the prohibition, and therefore the new registrations ought to be granted. The applicant had filed evidence of registration in other countries, as well as evidence of intensive and extended use. The Court considered the registrations in Classes 29, 30, 32 and 34 deceiving and the registration in Class 33 generic. As to evidence of registrations in other countries, the superior level court established that these are not enough to disregard genericism. In connection with evidence of intensive use in local and international commerce and extended use, the Court found that these alone did not evidence acquired distinctiveness and suggested that additional evidence was missing. The Court, however, did not go further to establish what other evidence would clearly demonstrate secondary meaning, though it is clear that, according to the Court, intensive use for an extended period of time would help build the secondary meaning allegation. The Third Superior Court, on appeal, rejected applicant’s secondary meaning claim for products in Class 33. The Court considered CUBA LIBRE a generic name as it is the common name 600. See 94 TMR 472-73 (2004). 601. Published Lovdata LB-2002-02410. 510 Vol. 95 TMR for an alcoholic beverage made with rum, lemon and cola. The ruling of the first level court was modified in part, allowing the registration of CUBA LIBRE for products in Classes 29, 30, 32 and 34, and confirmed in part, denying the registration of CUBA LIBRE for products in Class 33. In connection with the protection of the statute of limitation argued against by the plaintiff for existing registrations, the court was clear in establishing that the genericism of the trademark was evidence of the applicant’s lack of good faith in obtaining the registration and that the protection granted by the statute of limitation provision could not be extended as the provision expressly excludes registrations obtained with a lack of good faith. The decision, therefore, implies that bad faith needs to be shown in specific circumstances. It also opens the possibility for contesting, by means of cancellation suits, trademarks protected under statute of limitation provisions, a course seldom undertaken. As very few cases have been tried on the grounds of secondary meaning, a determination of the Court as to what would demonstrate secondary meaning would have a positive effect on future cases.602 I.B.8.a. Similarity of Marks The Third Superior Court reversed the previous holding that denied the contempt of likelihood of confusion between SINTRAX of the plaintiff Merck KgaA and SINTAB of Laboratorios Maver, Ltda., both for products in Class 5. As a result, the Court established that the root or particle of a trademark could be regarded as generic not only when the root implies the chemical composition of the product but also when there is a generalized use of a word root in a significant number of trademarks of different owners. In doing so, the Court went further to establish that 34 examples of trademarks with the initial syllable “SINT” were enough to demonstrate significant use whereas it found the rule of six examples, established by an author cited by the Court, was not enough to establish genericism of the syllable in the pharmaceutical industry. The Court did not determine what would be the required minimum number of trademarks sharing the same root to demonstrate significant use in the pharmaceutical industry. The findings of the Court further distance itself from its previous criterion that genericism could only be established where parts of a trademark suggested a chemical composition or specific use of the product. 602. Bacardi & Co., Ltd. v. Cuba Libre Products, S.A., Third Superior Court, December 5, 2004. Vol. 95 TMR 511 Notwithstanding the above, the Court rendered a holding of likelihood of confusion in favor of the plaintiff. The Court held considered the differences between the last syllables were not enough for diminishing likelihood of confusion because the trademarks not only shared the same prefix but also the same number of syllables and word extension.603 PARAGUAY III.B. Unfair Competition The Colombian firm Productora Tabacalera de Colombia S.A. filed a complaint before the Judge of First Instance in Civil and Commercial Matters against the local firm Productora Tabacalera Comercial S.R.L. to cancel the defendant’s trade name PROTABACO at the Commerce Public Registry based on unfair competition, considering that both firms had similar trade names and exactly the same abbreviation, PROTABACO. The Judge of First Instance upheld the complaint, and therefore the local firm’s trade name PROTABACO was cancelled at the Commerce Public Registry. Productora Tabacalera Comercial S.R.L. appealed the Judge’s resolution. The Appellate Chamber affirmed the decision issued by the Judge of First Instance.604 The decision issued by the Appellate Chamber was based on the Washington Convention of 1929, of which Paraguay and Colombia are members. In the appeal, the defendant had argued that the cancelled trade name was legally registered in the Commerce Public Registry and that Productora Tabacalera de Colombia S.A. did not prove the economic damage supposedly caused by the registration of the defendant’s trade name. The Appellate Chamber expressed that the legal registration of the trade name at the Commerce Public Registry did not protect said trade name from being cancelled when it was similar or identical to another trade name or a prior registered one. Furthermore, in regard to the supposed economic damage justification, the Appellate Chamber stated that this was not an important and valid point, so it did not take this argument into serious consideration. It said the plaintiff could claim economic damage in an independent and further judicial action. The Appellate Chamber’s decision is important because it sets jurisprudence on the matter that in an illegal registration of a 603. Merck KgaA v. Laboratorios Maver, Ltda., Third Superior Court, January 19, 2004. 604. Productora Tabacalera de Colombia S.A. v. Productora Tabacalera Comercial S.R.L., Decision No. 33 of the Appellate Chamber, dated March 17, 2003. 512 Vol. 95 TMR trade name, economic damage does not need to be proven in order to obtain the cancellation of said trade name. III.F.3. Nullity Philip Morris Brasil S.A. filed a nullity action against the trademark registration for MUSTANG, in Class 34, owned by the Colombian firm Productora Tabacalera de Colombia S.A. in Paraguay. The arguments filed in this case were that the registration of MUSTANG was granted to Productora Tabacalera in 1994 in Paraguay and by that date Philip Morris Brasil S.A. was already the owner of the trademark MUSTANG in Brazil. The plaintiff argued that MUSTANG was a notorious trademark in Class 34. Productora Tabacalera argued that it was the owner of the trademark MUSTANG in Colombia and that when it applied for the trademark in Paraguay it was only exercising its effective rights. It also stated that MUSTANG was a notorious trademark in Colombia based on its use of the mark. The Judge of First Instance in Civil and Commercial Matters stated that it was demonstrated that both parties were the owners of the same trademark, MUSTANG, for cigarettes in their respective countries, and that therefore the decisive element necessary to resolve the conflict in Paraguay was a determination of whether Philip Morris’ trademark had prior rights over the defendant’s trademark registered in Paraguay. The Judge made a comparison of the lists filed by the parties, wherein were mentioned all registrations of the trademark MUSTANG in the respective countries. The prior registration of MUSTANG in the name of Productora Tabacalera in Colombia dated from 1973, while the registration of MUSTANG in Brazil in the name of Philip Morris dated from 1975. Given the above arguments, it was demonstrated that the prior registration of the trademark MUSTANG was owned by the defendant. Therefore, the Judge rejected the complaint filed by Philip Morris.605 Philip Morris has appealed the Judge’s decision. This decision is important because it establishes the rules for resolving situations where an applicant’s trademark has prior rights in a country over an identical trademark of another owner that is registered in a different country and where both trademarks are notorious. 605. Philip Morris Brasil S.A. v. Productora Tabacalera de Colombia S.A., Decision No. 560 of the Judge of First Instance in Civil and Commercial Matters, dated July 27, 2004. Vol. 95 TMR 513 PERU I.B.9.b. No Similarity of Goods/Services Unilever N.V. applied for registration of its trademark MINI MILK CRAYOLA for products in International Class 30. The application was opposed by Binney & Smith Inc. based on the existence of the registered trademark CRAYOLA, covering products in Classes 16, 25 and 28. In its decision,606 the Court of INDECOPI (National Institute for the Defense of Competition and Protection of Intellectual Property) stated that to determine whether two products are related, to the extent of causing confusion among consumers if they are identified by similar trademarks, it is necessary to consider the complementary character of their physical nature or purpose, their similar channels of distribution or promotion and the type of consumer to which they are directed. These bases of comparison are tacitly included in Decision 486 of the Andean Community, and are consistent with different interpretations made by the Andean Court of Justice. For example, in one case, the Court has held that there will be a competitive connection between the products if, among other things, (1) they have similar distribution channels, (2) they use identical or similar advertising means, (3) they have a certain relation or connection, (4) they are interchangeable and (5) they have the same purpose.607 In the case mentioned above, the Court of INDECOPI concluded that the products in Class 30 (ice creams, confectionery and related products) were not sufficiently related to and did not have a competitive connection with the products in Class 16 (stationery, in which are comprised wax pencils known as crayons), Class 25 (clothing) and Class 28 (playthings and decorations, etc.). The Court found that the insufficient relation between the products in question was due to four factors: 1. The different nature or purpose of the products. “Icecreams, water ice, ices, frozen confectionery and other elements for the preparation of said products have diet purposes, whereas clay for modelling and compounds, and the pencils (crayons) have educational and entertainment purposes; clothing, footwear, headgear and clothes in general have as [their] purpose to keep people warm and protected, and games and playthings have amusement and entertainment purposes.” 606. Court of INDECOPI, Resolution No. 700-2004/TPI-INDECOPI, August 10, 2004, File No. 154286-2002. 607. Andean Court of Justice, Proceeding No. 5-IP-2002 (February 20, 2002), [2002] ACCJ 7. 514 Vol. 95 TMR 2. The different distribution channels of the products. “The products that the mark applied for registration intends to distinguish are mostly sold in grocery stores, ice-cream stores, restaurants [and] ice-cream vendor’s carts, whereas the products that distinguish the registered trademarks are mostly sold in bookstores and bazaars, boutiques and department stores and toy stores and department stores. Although the products in controversy can be found in supermarkets, they are arranged in different sections.” 3. The fact that the products are not substitutes (interchangeable). 4. The fact that the products are not used for the same purpose. Moreover, the Court dismissed the supporting argument of the opponent, namely that the products to which the trademark CRAYOLA referred had the same type of consumers and, consequently, the same entertainment purpose, if one took into consideration the fact that the applicant intended to distinguish ice creams presented in a novel shape (crayon shape). The Court found that the ice creams and frozen confectionery intended to be distinguished by the mark for which registration was sought were destined for a consumer public of all ages, whereas the elements for preparing said products—which the mark also intended to distinguish—were destined for a specialized consumer (people who manufacture ice creams or frozen confectionery). It observed that “in the case of products that distinguish registered trademarks . . . clays for modelling and compounds, and pencils (crayons) are destined for students and artists; clothing, footwear, headgear and clothes in general are destined for a general consumer public; and games and playthings are destined for both children and adults.” The Court noted that “[p]rintings obtained from [the] Internet and from catalogues prove the existence of companies specialized in products for babies and/or children, which activity includes several areas such as diet, clothing and playthings. These are products exclusively destined for a certain sector of consumers; nevertheless, the same does not occur in the present case, since the products distinguished by the signs in conflict are not exclusively destined for [the] same sector of consumers.” In this way, it clearly established that ice creams are not products mostly destined for children and that, probably, this is the reason why companies oriented toward the children sector have not expanded their activities to include the marketing of said products. It is important to emphasize that the Court of INDECOPI, which confirmed the criterion set forth by the first administrative instance, did not consider the argument of the opponent regarding Vol. 95 TMR 515 the supposed way in which the products (ice creams) would be sold (reproducing a crayon form). The Court tacitly recognized that the question of relation and competitive connection of the products has to be judged according to the products for which protection is requested and that are distinguished by the trademark opposed, without considering the particular way in which they can be presented or sold, a factual circumstance that is clearly beyond the confusion problem between the marks. It also recognized that, in this case, there were no graphic or visual similarities between the trademarks CRAYOLA and MINI MILK CRAYOLA because of their different extension and their different sequence of vowels and consonants. As this case demonstrates, in order to determine whether there exists the risk of indirect confusion between two marks (i.e., confusion with respect to the origin of the products covered), it is essential to compare the products and consider whether they are similar or different. Specifically, it must be determined whether the products are sufficiently related and/or competitively connected. PHILIPPINES III.A.2.b. Similarity of Marks Petitioner McDonald’s Corp.’s trademark BIG MAC for its double-decker hamburger sandwich has been in the market since September 1981 and was registered on July 18, 1985. On October 21, 1988, respondent L.C. Big Mak Burger, Inc. applied for the registration of BIG MAK for its hamburger sandwiches. This prompted McDonald’s to file a case for infringement and unfair competition. In this case,608 the Supreme Court made an analysis of the presence of the following elements needed to establish infringement, namely, (1) the validity of the plaintiff’s mark; (2) the plaintiff’s ownership of the mark; and (3) the use of the mark or its colorable imitation by the alleged infringer, resulting in likelihood of confusion. With regard to the first element, the Court considered BIG MAC as falling under the class of fanciful or arbitrary marks because it bears no logical relation to the actual characteristics of the product it represents, which makes it highly distinctive and therefore valid. With respect to the second element, the Court held that an earlier registration of BIG MAK on March 31, 1979, by a third 608. McDonald’s Corp. & McGeorge Food Industries Inc. v. C.C. Big Mak Burger, Inc., et al., G.R. No. 143993, promulgated August 18, 2004, by the Supreme Court. 516 Vol. 95 TMR party was later assigned by said party to petitioner, while another earlier registration (June 24, 1983) by yet another third party was registered only on the Supplemental Register, which is not even prima facie evidence of the validity of the registrant’s exclusive right to use the mark on the goods specified in the certificate. As far as the third element is concerned, the Court said that there was both confusion of goods (product confusion) and confusion of business (source or origin confusion). As to the first type of confusion, the Court rejected the respondents’ arguments that BIG MAC is used only on the petitioners’ double-decker hamburgers while BIG MAK is used not only on hamburgers but also on other products, such as siopao, noodles and pizza. The Court also rejected the respondent’s argument that the packaging and presentation of the goods covered by the two trademarks are different by reasoning that the two marks are used on the same product—hamburgers—and that use of BIG MAK on nonhamburger food products cannot likewise be excused. Otherwise, registered marks will lose their protection under the law, as the non-hamburger food products may be considered to fall within the normal potential expansion of business of the registered mark. With respect to source or origin confusion, the Court gave no weight to the respondents’ contention that BIG MAK caters mainly to the low-income group while BIG MAC is patronized by middleand upper-income groups. In fact, the Court reasoned that the lowincome group may be led to believe that BIG MAK hamburgers are the low-end hamburgers marketed by the petitioners and that the respondents would then benefit by associating their low-end hamburgers with the petitioners’ high-end BIG MAC hamburgers. All of these factors lead to a finding of likelihood of confusion in the identity of business. The Supreme Court, in finding that likelihood of confusion between the marks exists, said that the dominancy test, rather than the holistic test, should be applied to this case. BIG MAK sounds exactly the same as BIG MAC. The first word in BIG MAK is exactly the same as in BIG MAC. The first two letters of MAK are the same as those in MAC, and the third letter, “k,” is the equivalent in Filipino of the letter “c” and is pronounced in the same manner. The aural and visual identity of the two marks, as far as the Court is concerned, prevails over the supposed differences in the overall presentation of the two marks as they appear on the goods with their labels and packaging. The Court also considered the fact that the respondents were not able to explain sufficiently how and why they chose BIG MAK for their hamburger, and in the absence of proof that respondents’ choice was due to honest mistake or accident, the Court, in light of the goodwill and reputation of BIG MAC, ascribed that choice to an intention to ride on the popularity of BIG MAC. Vol. 95 TMR 517 With regard to the claim of unfair competition, the Supreme Court considered the dissimilarities in the packaging (styrofoam box for BIG MAC as opposed to plastic wrapper for BIG MAK) and the script style and color combinations of the two marks as minor compared to the almost identical words and exactly the same pronunciation of the two competing marks. The Court pointed out that Section 29(a) of the trademark law, Republic Act No. 166, governing unfair competition, expressly provides that the similarity in the general appearance of the goods may be in the “devices or words” used on the wrappings. In this case, said the Court, the words are almost the same. As to the requirement of Section 29(a) that the defendant give “his goods the general appearance of goods of another manufacturer,” the Court held that if the respondents used BIG MAK on egg sandwiches instead of hamburger sandwiches, their use of BIG MAK will not give their goods the general appearance of the petitioners’ BIG MAC hamburgers. In such case, there will be only trademark infringement but no unfair competition. The absence of a notice to the public that BIG MAK hamburgers are products of L.C. Big Mak Burger, Inc. on their plastic wrappers was considered by the Court as showing the respondents’ intent to deceive the public and as supportive of the Court’s holding that the respondents were guilty of unfair competition. III.A.3. Prior User In Mighty Corp. & La Campana Fabrica de Tabaco, Inc. v. E. & J. Gallo Winery & Andresons Group, Inc.,609 the petitioners sought the reversal of the decision of the Court of Appeals ruling that they were liable for trademark infringement and unfair competition for using the trademark GALLO for cigarettes despite the respondents’ GALLO wine trademark, which was registered on November 16, 1971. The Supreme Court upheld the petitioners’ position, stating that under the trademark law then in effect, Republic Act No. 166, actual commercial use was the basis for acquiring trademark ownership because the petitioners started using the mark in 1973 whereas the respondents’ use did not begin until July 9, 1981, even though their mark was registered in 1971. Moreover, the Supreme Court held that wines and cigarettes are not identical or competing products, thus rejecting the applicability of the concept of “related goods” to the case because they are not so related that the public may be deceived or misled as to their manufacturer or source. In reaching this conclusion, the Supreme Court considered several factors employed by it in previous similar cases, namely, (1) the business (and its location) 609. G.R. No. 154342, promulgated July 14, 2004 by the Supreme Court. 518 Vol. 95 TMR to which the goods belong; (2) the class of product to which the goods belong; (3) the products’ quality, quantity or size, including the nature of the package, wrapper or container; (4) the nature and cost of the articles; (5) the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality; (6) the purpose of the goods; (7) whether the article is bought for immediate consumption, that is, day-to-day household items; (8) the fields of manufacture; (9) the conditions under which the article is purchased; and (10) the channels of trade through which the goods flow, how they are distributed, marketed, displayed and sold. In applying the entire range of factors enumerated above, the Court held that the usual purchaser of the products involved is not likely to be confused. The Supreme Court also rejected the applicability of Article 6bis of the Paris Convention, holding that wines and cigarettes are neither the same, identical, similar nor related goods, which is a required element under the Convention. As for the claim of unfair competition, the Supreme Court held that it had no basis because there was no attempt by the petitioners to pass off their cigarettes as products of the respondents, and it was not established that the buying public was likely to be deceived. PORTUGAL I.B.4. Geographical Names Água do Fastio–Comércio e Engarrafamento de Águas Minerais, SA (Fastio) appealed to the Court against the decision of the Portuguese Industrial Property Office (IPO) granting protection to the trademark GERÊS & Device,610 filed by Empresa de Águas do Cabril, Lda (Cabril), on the basis of its mark ÁGUA DO FASTIO GERÊS & Device.611 Fastio argued that Cabril’s mark has as its distinctive element the word GERÊS, which is included in Fastio’s mark and is an indication of the origin of the mineral water commercialised by Fastio. Cabril argued that its mark is composed of both word and device elements and that Fastio’s mark is also composed of word and device elements, the preponderant one of which is the word FASTIO, and that the remaining words (ÁGUA and GERÊS) are of public domain, to which no exclusive rights can be claimed. 610. Application No. 321.892, GERÊS & Device, intended for “table waters,” in the name of Empresa de Águas do Cabril, Lda. 611. Registration No. 215.128, ÁGUA DO FASTIO GERÊS & Device, covering “mineral and medicinal water,” in the name of Água do Fastio–Comér. e Eng. de Águas Min., S.A. Vol. 95 TMR 519 Empresa das Águas do Gerês, SA (Empresa) also appealed to the Court against the grant of GERÊS & Device, arguing that Empresa first started as Empreza das Águas do Gerez (this name is written nowadays Gerês) in the nineteenth century, having applied for the registration of its name of establishment— EMPREZA DAS ÁGUAS DO GEREZ—in 1897,612 and that the distinctive element of its company name and name of establishment is the word GERÊS. Cabril replied by arguing that its mark is composed of both word and device elements and that Empresa’s company name is composed of words of public domain, to which the appellant cannot claim exclusive rights. The Court decided that, as a whole, Cabril’s GERÊS & Device mark is distinctive, although it is composed of generic, usual, descriptive and weak elements, namely the word GERÊS in a special lettering—(which is the name of the mountain where the mineral water has its source), the words água de nascente (“fountain water”) and the device of a mountain, all of them inserted in a mosaic panel. Thus, regarding Fastio’s mark ÁGUA DO FASTIO GERÊS & Device and Cabril’s GERÊS & Device mark, the Court ruled that both marks are composed of both word and device elements and that the preponderant element of the appellant’s mark is the word FASTIO. Furthermore, the expression GERÊS cannot be of exclusive use by any party, as it is an indication of the origin of the products and can, therefore, be used and registered in combination with other marks, but cannot be, per se, opposable to other marks that contain it. Regarding Empresa’s company name and name of establishment EMPREZA DAS ÁGUAS DO GEREZ (GERÊS), the Court decided that the predominant element or distinctive part of Empresa’s company name and name of establishment is the word GERÊS. The activity of Empresa (i.e., operation of water fountains in Gerês), for which the name of establishment EMPREZA DAS ÁGUAS DO GERÊS has been granted, is similar to the products covered by Cabril’s mark (i.e., table mineral water). The Court further decided that, despite the fact that in Cabril’s mark the word GERÊS is accompanied by other device elements, in the case of the company name and name of establishment, the preponderant element is Gerês, which is also descriptive, bearing in mind Empresa’s activity. The Court concluded that, despite the fact that the word GERÊS is not preponderant in Cabril’s mark, it is part of the mark and is recognizable and associated with Empresa’s trade name, 612. Registration No. 17905 (formerly 302), EMPREZA DAS AGUAS DO GEREZ, filed on 11 September 1897, and granted on 11 September 1898. 520 Vol. 95 TMR protected since 1908, which could give rise to acts of unfair competition. This may happen regardless of Cabril’s intention. Thus, the Court revoked the IPO’s decision granting protection to GERÊS & Device.613 I.B.7.b. Three-Dimensional Marks Unilever, NV appealed to the Court against the decision of the IPO refusing protection to its three-dimensional mark614 on the ground of lack of distinctiveness. The Court declared that the mark in question does not consist of a shape necessary to any of the products for which the mark is intended, does not consist of the usual shape of such products, does not consist of a technically necessary shape and does not increase the value of the products for which it is intended. The Court therefore decided that there are no absolute grounds for refusal and that this mark is distinctive.615 I.B.8. Likelihood of Confusion GN2–Produções e Gestão Artística, Lda (GN2) opposed at the IPO the trademark application for D’ARRASAR,616 on the grounds of priority of its mark D’ARRASAR617 and identity of the marks and services designated by both marks. The applicants replied by arguing that their mark is earlier, as they started to use it six months prior to the filing of GN2’s application, that is, on 8 February 1999. The applicants also claimed the copyright of the word element D’ARRASAR. The IPO acknowledged the priority rights deriving from the use six months prior to the filing of the application, as provided for under Article 171 No. 1 of the Portuguese Industrial Property 613. Application No. 321.892, GERÊS & Device, intended for “table waters,” in the name of Empresa de Águas do Cabril, Lda. 614. Application No. 346.545, device (three-dimensional), intended for “detergents; preparations and substances, all for laundry use; fabric conditioning preparations, cleaning, polishing, scouring and abrasive preparations; preparations for dishwashing purposes; fabric softeners; bleaching preparations; stain removing preparations; deodorizing and freshening preparations for use on clothing and textiles; soaps for brightening textiles; hand washing preparations; laundry starch; tissues impregnated with preparations and substances for cleaning and polishing; sachets and sheets for perfuming fabrics; and potpourri.” The mark consists of a flattened oval shape. 615. Trade Court, Bulletin No. 9/2004, dated 30 September 2004, at page 3147. 616. Application No. 336.898, intended for “music group” in Class 41 and applied for by Jorge Fernando dos Santos Capinha Marques Rosa and Carlos Manuel Godinho Coincas, filed on 5 May 1999. 617. Registration No. 336.811, covering “cultural activities, music group” in Class 41, in the name of GN2-Produção e Gestão Artística, Lda, filed on 30 April 1999, and granted on 19 March 2001. Vol. 95 TMR 521 Code. However, the applicants did not mention or claim such prior use when filing the application. Furthermore, the applicants had transferred the copyright to GN2 and, while the contract involved was revoked, this happened only after the filing of both applications; furthermore, the transfer contract provided for the non-revocation of the same and stated that the copyright would always pertain to GN2. Thus, as the priority claimed by the applicant could not be accepted, the IPO, in view of the similarity of the services covered by the marks in conflict and the identity of their word elements, refused the protection of the applicants’ mark.618 I.B.8.c. Conflict Between Trademarks and Corporate Names BMC Software, Inc. (appellant) appealed to the Low Court against the refusal of its trademark BMCSOFTWARE & Device619 by the IPO, because of prior registrations for the trademark BMC & Device,620 the BMC logo621 and the name of establishment BMC– Bulhosa & Mendes, Computadores, Lda (appellee).622 The appellant argued that the company name BMC Software, Inc. was used in the United States since 1980 and is one of the biggest manufacturers of software. When the appellee filed its logo and mark, it was aware that the appellant had been carrying out its activity in Portugal since 1998. The appellant’s trade name enjoys protection in Portugal, conferred by Article 8 of the Paris Convention,623 and the appellee’s mark and logo should not have been granted protection, as they constitute an imitation of the appellant’s well-known mark BMCSOFTWARE. 618. Industrial Property Bulletin No. 3/2001, dated 29 June 2001. 619. Application No. 348.855, BMCSOFTWARE & Device, intended for “computer programs and software,” filed by BMCSoftware, Inc., on 4 August 2000. 620. Registration No. 335.193, BMC & Device, covering “Hardware installation, maintenance, repair and assistance” in Class 37 and “Computer programming and computer software” in Class 42, filed by BMC–Bulhosa & Mendes, Computadores, Lda on 11 February 1999, and granted on 10 August 1999. 621. Logo No. 1704, BMC & Device, filed by BMC–Bulhosa & Mendes, Computadores, Lda. on 11 February 1999, and granted on 10 August 1999. Logos are intended to identify the company/corporation and are formed by word elements combined or not with a device, which identifies the company/corporation (it usually is the distinctive sign by which the company is known or wants to be known). 622. Name of Establishment No. 44.687, BMC, filed by BMC–Bulhosa & Mendes, Computadores, Lda. on 13 February 2001, and granted on 10 December 2001. Names of establishments are intended to identify the premises, the physical place where the company/corporation has its activity, and are formed by a word element. 623. Article 8 reads: “The trade name will be protected in all the countries of the Union irrespective of its registration and whether it is or not part of a trade or service mark.” 522 Vol. 95 TMR The appellee replied by arguing that the refusal of the appellant’s mark should be maintained on the basis of its prior rights, and that the appellant has no legal protection whatsoever in Portugal, as it is not registered with the Portuguese National Register of Companies (RNPC). The Low Court maintained the refusal decision of the IPO and the appellant further appealed to the High Court. The High Court acknowledged that the interpretation of Article 8 has been diverse and has given rise to contradictory jurisprudence, and that it is thus difficult to define the contents of protection given by said article. The High Court then followed the interpretation of Professor Oliveira Ascensão which states that Article 8 does not confer a priority to the registration but allows the non-registration of the trade name involved. Thus, the High Court ruled that the prior use made by the appellant in the United States does not confer priority to its mark in respect of appellee’s mark and that refusal of BMCSOFTWARE should be maintained.624 III.A.1. Famous Marks Renova–Fábrica de Papel do Almonda, SA (Renova), appealed to the Court against the use of the mark PÉROLA, on the basis of its various registrations for the trademark RENOVA, arguing that the later mark is confusingly similar to the prior mark, it is intended for the same products and causes error or confusion among consumers, giving rise to acts of unfair competition. Furthermore, Renova argued that economically the appellee caused it damages, for its marks lost distinctive character and the appellee benefited at the cost of Renova. The appellee replied by arguing that it had ceased to use the products referred to by Renova. The Court acknowledged that Renova is the owner of several Portuguese registrations and one Community registration for the mark RENOVA, with a special type of lettering and device, some of which claim the colours white and blue. The Court also agreed that this mark is used on Renova’s products and that it is a well-known mark. Furthermore, it is a leading trademark in the market of hygienic paper, pocket tissues, paper napkins, facial tissues and kitchen paper rolls, which are sold all over Portugal. 624. Industrial Property Bulletin No. 7/2004, dated 30 July 2004, at page 2421. Vol. 95 TMR 523 Regarding the appellee—Industrias de Papel Coelhos, Lda— the Court acknowledged that it manufactures and sells paper products, namely hygienic paper, napkins and kitchen paper rolls, and that at least since 1999 it has been using on some of its products a label bearing the mark PÉROLA, in a special type of lettering in the colour white, inserted in a blue rectangle (with the exception of the pocket tissues on which the blue background is not used). The mark PÉROLA is not registered. The Court cited the opinion of Bédarride, who considers that the imitation should be assessed by the similarity that results from the whole of the elements that constitute the mark and not by the dissimilarities that may offer several details, when analyzed separately. In view of the above, the Court decided that the mark PÉROLA is confusingly similar to the RENOVA mark, despite the 524 Vol. 95 TMR fact that the respective word elements per se are perfectly distinguishable and have different meanings.625 In fact, the appellee’s mark contains the exact same type of lettering used for RENOVA, with the same colors, resulting in an identical graphic and chromatic component, displayed on the same place as Renova’s products. The remaining elements used by the appellee are displayed at a secondary level, in a reduced size and on the side or back of the packaging. Thus, the use made by the appellee of the mark PÉROLA has been damaging to the RENOVA mark. The conduct of the appellee constitutes unfair competition as the appellee benefits from the well-known status of the mark RENOVA to sell its own products, as well as from the financial investments made by Renova to promote and disseminate its mark and to associate it with quality products. The Court thus decided that the appellee should cease the use of the mark PÉROLA in the form described above or in any other form similar to the mark RENOVA. Regarding the claim that the appellee has benefited economically at the cost of Renova, the Court considered that all three requirements had been met: the existence of enrichment obtained at the cost of a third party and without justification. However, due to lack of sufficient elements, the Court was unable to quantify the compensation to be paid to Renova and decided that it should be calculated later in a subsequent executive action. Finally, regarding the claim of the damage caused by the appellee by weakening the distinctive character of the mark RENOVA, the Court also considered this claim proven. Due to the lack of sufficient elements to define such compensation, the Court ruled that these damages should be calculated later in a subsequent executive action. PUERTO RICO II.D.1. Jurisdiction/Authority Gerardo Abascal II (Abascal) filed for the registration of OLD HAVANA in International Class 33. After publication, Havana Club Holding, S.A. (Havana) filed an opposition, citing its registration for HAVANA CLUB in the same classification. The Trademark Office denied the application, but failed to give Abascal notice of the denial the same day the decision was filed and entered. Ultimately, notice went out by mail ten days later. 625. Court of Commerce of Lisbon 2º Juizo, File No. 38/2002. Vol. 95 TMR 525 Following receipt of the ruling, Abascal asked the Trademark Office to reconsider and to vacate the denial. Havana moved for dismissal of the motion, claiming that Abascal failed to file in time, that is, within 15 days from the date the denial was entered. The Trademark Office found for Havana and dismissed Abascal’s motion. Abascal then went to the Circuit Court of Appeals. Havana sought dismissal of the appeal for lack of jurisdiction, arguing that Abascal’s late motion for reconsideration did not stop the time to appeal, and that as a result the decision had become final. The Circuit Court reversed and remanded the case to the Trademark Office with instructions to consider Abascal’s motion on the merits. The court held that while the time to ask for reconsideration generally is computed from the date the decision is filed and entered, the delay in mailing actual notice substantially impaired Abascal’s right to seek reconsideration.626 Lowenbrau, A.G., the famous German brewer, is one of the 14 sponsors of the renowned OKTOBERFEST, the annual music, food and beer festival that originated in 1810 in Munich, Bavaria, and is now celebrated in many places throughout the world. Lowenbrau applied and got the necessary approvals for an OKTOBERFEST 2000 celebration in San Juan, Puerto Rico. When the festivities were about to begin, however, the permits were revoked. Government officials explained that Event Marketing and Management, Inc. (EMMI) owned a registration for OKTOBERFEST in International Class 41 and claimed the exclusive right to use the designation. Thereupon Lowenbrau brought suit against EMMI before the Court of First Instance for damages and for an order to compel the Trademark Office to cancel the registration. Lowenbrau argued that OKTOBERFEST is generic and that the Trademark Office had acted ultra vires, claiming that the law does not allow for the registration of words in the public domain. The complaint was ultimately dismissed with prejudice by the Court for Lowenbrau’s failure to prosecute diligently. Lowenbrau then filed a petition for cancellation before the Trademark Office, repeating the same arguments that were raised in the lawsuit. In response, EMMI sustained the validity of the registration, arguing that OKTOBERFEST is a German word that means nothing to the vast majority of the Spanish-speaking people of Puerto Rico, and that in any event the petition for cancellation was precluded by res judicata. 626. Havana Club Holding, S.A. v. Gerardo Abascal II, 2004 PR App. LEXIS 69 (P.R. Ct. App. Feb. 18, 2004). 526 Vol. 95 TMR The Trademark Office embraced EMMI’s position, dismissed the petition on the basis of res judicata and refused to cancel the registration. On appeal the Circuit Court of Appeals reversed, holding that res judicata requires, among other elements, that judgment in the first lawsuit be entered by a court of competent jurisdiction. Under the Trademark Act, jurisdiction to decide any issue relative to the cancellation of a registration rests only with the Trademark Office. Therefore, the defense of res judicata was not available, because the Court of First Instance was not a court of competent jurisdiction. REPUBLIC OF SOUTH AFRICA III.F.6. Dilution In Laugh It Off Promotions CC v. South African Breweries International (Finance) BV,627 the appellant, Laugh It Off Promotions, had produced and sold T-shirts employing the general layout and colours of respondent South African Breweries’ (SAB’s) registered marks for a beer label, but with a different message. Specifically, SAB’s trade mark BLACK LABEL, used in relation to Carling Black Label beer, was replaced by BLACK LABOUR, while its slogan AMERICA’S LUSTY, LIVELY BEER—BREWED IN SOUTH AFRICA was replaced by AFRICA’S LUSTY, LIVELY EXPLOITATION SINCE 1652—NO REGARD GIVEN WORLDWIDE. The Supreme Court of Appeal traced the origins of the antidilution doctrine, referring in particular to the law in the United States, the United Kingdom and Europe; the Court stressed, however, that while reliance would be placed on foreign case law, it must be understood that such was done principally in order to illustrate or compare, and that the outcome in those cases would not necessarily have been the same had they been decided under South African legislation and in a South African social context. The infringement alleged by SAB involved dilution of its trade mark rights through tarnishment—that is, acting in a manner detrimental to the reputation of SAB’s mark. In considering the meaning of the word “detrimental,” the court stated that it was inconceivable that any detriment could suffice. It is implicit, said the Court, that the detriment, in order to be actionable, has to be unfair, in the sense that the relief sought may not unfairly or unduly encroach on the rights of others—including the freedom of expression. A further qualification is that the law, as a general proposition, concerns itself with matters of substance only, and, 627. Case No. 242/2003, [2004] JOL 12940 (SCA Sept. 16, 2004). Vol. 95 TMR 527 accordingly, insubstantial prejudice to the trade mark owner is not enough. Since neither freedom of expression nor trade mark rights are absolute, the Court found it necessary to consider how they should be balanced. In determining whether Laugh It Off’s use on T-shirts of BLACK LABOUR together with slogans, such as AFRICA’S LUSTY, LIVELY EXPLOITATION, was likely to take unfair advantage of or be detrimental to the distinctive character or repute of SAB’s registered marks BLACK LABEL and AMERICA’S LUSTY, LIVELY BEER, the Court considered the interpretation of the message not only through the eyes of the typical purchaser of such T-shirts but also through the eyes of those who are perforce exposed to the purchaser’s attire. The Court accepted the trade mark proprietor’s submission that the message conveyed was that since time immemorial SAB had exploited and still was exploiting black labour; that it had, or should have, a feeling of guilt; and that SAB could not care less. It found that the message was likely to create in the mind of consumers a particularly unwholesome, unsavoury or degrading association with the registered marks, and that anyone who saw Laugh It Off’s T-shirt would not be able thereafter to disassociate it from SAB’s trade marks. The Court rejected the appellant’s argument, which stated that there was no detriment because the respondent had not established that there had been a loss of sales of its beers as a result of the T-shirt sales. It stressed that Section 34(1)(c) of the South African Trade Marks Act does not require proof of actual loss, but only the likelihood of loss. The requirement in South Africa is, accordingly, different from the corresponding requirement of actual loss under the U.S. Federal Trademark Dilution Act, as established in Moseley v. V Secret Catalogue, Inc.628 The Court also stressed that the prohibited use must be “in the course of trade,” which accords with the position in the United States and the European Community, and that, significantly, it must be in relation to goods or services. In considering the actual use made by the appellant, the Court took into account the predatory intent, stressing that T-shirts are primarily a marketable commodity and not only a communication medium. The Court was influenced by the fact that Laugh It Off was in the business of marketing clothing, and that using well-known marks for the marketing of its goods was the whole basis of its commercial existence. Having found that the message on the T-shirt was materially detrimental to the repute of the registered trade mark, the Court 628. 537 U.S. 418 (2003). 528 Vol. 95 TMR considered the question of whether freedom of expression constituted justification. Again taking into account the aforementioned predatory intent, it found that while many cases of parody constituting fair comment could be justified, parody per se was not a defence against trade mark infringement, and purely derisory parody of a mark should not be entitled to protection. Accordingly, the Court held that Laugh It Off’s reliance on freedom of expression was misplaced. The Court therefore granted an injunction and legal costs against Laugh It Off. SOUTH KOREA I.B.6. Letters and Numbers On August 27, 2004, the Patent Court of Korea rendered a decision supporting a 1995 decision in which the Supreme Court of Korea629 held that two numbers in a mark can be the gist of that mark in determining the similarity of marks for purposes of excluding others from registering the same two numbers as a mark. Generally, Korean trademark practice does not recognize any mark consisting of one or two number or letter combinations. The appellant in this case asserted that its mark, 76 (subject mark), in Class 18, which includes mountain climbing bags, business card holders, wallets, briefcases, traveling bags, umbrellas, etc., should be distinguished from the Philadelphia Professional Basketball mark 76ERS in Basketball Device (cited mark), in Class 27, which includes sneakers, boots, shoelaces, umbrellas, canes, etc., because (1) the conflicting numbers in the cited mark consisted of only two simple numbers lacking distinctiveness of their own and therefore should not be considered the gist of the mark; (2) as the number in the cited mark further consisted of ERS, the number 76 and the letters ERS were not separable but, rather, created a new term to reference members of the Philadelphia team known collectively as “the 76ers”; and (3) as the cited mark had established its own well-known status, there should not be any confusion as to the source of goods. Further, the appellant asserted the well-known status of its mark. The Patent Court began its opinion by stating that the gist of the cited mark should be the number 76, because 76 is the only boldfaced part of the mark. The Court supported the earlier decision by the Supreme Court by stating that although any mark consisting of two numbers can lack distinctiveness to be registered as a mark, when it is combined with others, as in the case of the cited mark, the mark can have its own distinctiveness as a whole. 629. Supreme Court of Korea, Decision No. 94 HU 1070, March 17, 1995. Vol. 95 TMR 529 Regarding the well-known status of the cited mark and the subject mark, the Patent Court held that neither party had established its well-known status among ordinary or average consumers in Korea. It will be interesting to see how broadly this concept reaches and whether the 76 in the cited mark will be enforced against subject marks that include a device or letters. SPAIN I.B.1. Generic Names In 2000, the Spanish Patent and Trademark Office rejected the oppositions filed by Loctite Corp. on the basis of its famous trademark SUPERGLUE (registered in Spain since 1981 for glue in International Class 1 and adhesive material for stationery in Class 16) against the trademark applications for SUPER GLUE QUILOSA in these same classes. Surprisingly, the Patent and Trademark Office based its decision on the argument that “superglue” was a generic term, even though it had previously been registered as a trademark. Loctite appealed this decision before the High Court of Justice of Madrid, which accepted the appeal.630 Loctite had denied that the trademark SUPERGLUE was generic on the ground of the reputation it had attained in Spain. In addition, Loctite demonstrated that the other party already owned registrations for the trademark QUILOSA for the same goods, which proved to Loctite that the other party’s intention was to secure a registration that would enable it to obtain rights in the trademark SUPERGLUE, thus misappropriating the reputation of this mark in the Spanish market. The High Court of Justice of Madrid ruled in favour of Loctite on all counts, rejecting the registration of the trademarks SUPER GLUE QUILOSA and ordering the Patent and Trademark Office to expunge them from the register. II.D.3. Improper Pleadings In 1997, the owners of various ROSCOLINA Spanish trademarks (registered in 1988) lodged an infringement action against the company Roscolina S.L., established in 1990 and recorded at the Companies Registry that same year. The defendant argued the action was time-barred, in that more than five years had passed since it had duly registered its company name (which in Spain is published in the Official Gazette of the Companies Registry). The defendant claimed that the action could have been 630. High Court of Justice of Madrid, Contentious-Administrative, decision dated March 22, 2004. 530 Vol. 95 TMR brought on the publication date of the establishment of the company with the name Roscolina S.L. The plaintiffs, owners of prior registrations for ROSCOLINA, argued that although the defendant established its company in 1990 it did not begin using the company name in the course of trade until 1994, which should have been the starting date for the five-year prescription period. The Court of First Instance agreed with the defendant and duly rejected the complaint. The owners of the ROSCOLINA marks appealed this decision before the Provincial Court, which overturned the ruling of the Court of First Instance on the ground that the starting date for the five-year prescription period was the date on which Roscolina S.L. began using its company name in the course of trade. This decision was in turn appealed by Roscolina S.L. The Supreme Court upheld the decision of the Provincial Court and ordered Roscolina S.L. to change its company name and cease all use of the term ROSCOLINA.631 This is an important judgment in relation to the required term for bringing legal actions on grounds of infringement of trademark rights. Article 39 of the former statute, the Spanish Trademark Act of 1988 (which, given the date these proceedings began, governed this dispute), established that “civil actions for infringement of trademark rights shall be statute-barred after five years, counted from the day on which they could have been brought.” The case law laid down in this judgment still applies, as Article 45.1 of the current Spanish Trademark Act of 2001 is identical to Article 39 of the former act. SWEDEN I.B.5. Personal Names On June 22, 1999, the Swedish Patent Office rejected an application for the mark HUMMEL in respect of beer in International Class 32, as the word exists as a surname in Sweden. The applicant, Årc Bryggeri AB, had not shown any authorization to use the surname in the mark, nor did the word have any known secondary meaning. On appeal to the Swedish Court of Patent Appeals, the applicant argued that its mark had been used extensively since 1989 for beer on the Swedish market. It argued that “hummel” exists in the Swedish language, meaning “mountain” or “hill” as well as a certain musical instrument, and that the word can be easily associated with beer, as “hummel” is a variant of “humle,” meaning hops, an ingredient in beer. 631. Supreme Court, Civil, decision dated July 14, 2004. Aranzadi Ref. No. 2004/4678. Vol. 95 TMR 531 By a margin of three votes to two, the Court of Patent Appeals, in plenary session, dismissed the appeal.632 The judges who upheld the Patent Office’s rejection stated the following reasons for their decision. First, the surname Hummel exists for around 100 persons in Sweden, and the applicant had not produced any authorisation to use this name as a trademark. Second, the argument that “hummel” means mountain or hill was not given any weight, nor was the fact that the word also can refer to an ancient musical stringed instrument, a meaning that is, in any case, hardly familiar to a large number of the buying public. Third, the applicant had not shown that the linguistic connection to “humle” was known to any reasonable degree. Last, the applicant had not proved that the mark had been used to a considerable extent: the two surveys filed had been conducted on too small a selection of people. In their minority opinion, the two dissenting judges stated that surname rights are now generally given considerably preferential treatment over trademarks compared to what is stipulated in the Surnames Act. In addition, the committee preparing amendments to the Trademarks Act has proposed a more generous interpretation of escape clauses regarding surname obstacles to trademark registration and use. The word “hummel” exists both as a separate word and as part of a name, as, for example, the hills Totthummeln and Mörvikshummeln in Åre, where the applicant is domiciled. The linguistic relation between “hummel” and “humle” is easily understood in connection with beer. There is also Hummelhonung, the title of a well-known book published in 1995 by a Swedish Academy author, which has received great publicity. This judgment illustrates the biased situation still existing in Sweden regarding the conflict between surnames and trademarks. It is hoped, however, that within a few years the issue of surnames in trademark registration and use will be subject to a more realistic handling as a result of the proposed amendments to the Trademarks Act. SWITZERLAND I.B.2. Merely Descriptive Terms The Federal Commission of Appeals held that the word mark FITNESS cannot be registered for goods in Classes 29, 30 and 632. Case No. 98-512, Court of Patent Appeals, September 16, 2003. See also Case No. 99-311, Court of Patent Appeals, October 30, 2003 (dismissing appeal of Patent Office’s rejection of HUMMELORIGINAL). 532 Vol. 95 TMR 32.633 The Commission decided that the element FITNESS is directly descriptive of the claimed goods. The average consumer can easily recognize the descriptive characteristics and expects to buy goods that improve one’s physical well-being. Similarly, it was held that the word mark WE KEEP OUR PROMISES, for goods in Classes 3 and 5, lacks distinctiveness and must be kept free for public use.634 According to the Commission, the consumer recognizes the slogan WE KEEP OUR PROMISES as a product claim without any distinctiveness. In addition, it must be kept free for use by all competitors. The Commission held that the trademark GRIMSEL STROM for producing and trading electricity cannot be protected. Grimsel is a well-known mountain region in Switzerland where electricity is produced, and Strom means electricity. According to the Commission,635 the trademark cannot be regarded as distinctive and, in addition, contains a geographic indication. The word marks SMARTMODULE and SMARTCORE may be new and unusual word combinations. The Commission nevertheless decided636 that SMARTMODULE and SMARTCORE are descriptive for computer hardware and software. The word mark SWISS BUSINESS HUB, for services in Classes 35, 36 and 42, may be a new word creation, but nevertheless it is easily understood without reference to one’s imagination or special thoughts. For this reason, the Commission confirmed the Federal Institute of Intellectual Property’s rejection of the trademark application. The fact that single, similar marks had previously been registered did not confer the right to register in a subsequent case.637 I.B.3. Not Merely Descriptive Terms The word mark FITMORE for goods in Classes 5 and 10 is an unusual juxtaposition of the words fit and more. The Federal 633. Decision of the Federal Commission of Appeals, sic! 10/2003, 800 FITNESS. 634. Decision of the Federal Commission of Appeals, sic! 10/2003, 802 WE KEEP OUR PROMISES. 635. Decision of the Federal Commission of Appeals, sic! 3/2004, 216 GRIMSEL STROM. 636. Decision of the Federal Commission of Appeals, sic! 3/2004, 220 SMARTMODULE, SMARTCORE. 637. Decision of the Federal Commission of Appeals, sic! 7/8/2004, 573 SWISS BUSINESS HUB. Vol. 95 TMR 533 Commission of Appeals held638 that the terms FIT and MORE were well known by the average Swiss consumer. The combination, which is different from the grammatically proper term “more fit,” is strong enough to afford registration. The Federal Institute of Intellectual Property had rejected the word mark SILK-WRITER for goods in Class 16, including writing instruments. The Commission, however, ruled that SILK-WRITER was not an existing English word but a new creation. Even though new creations can be descriptive, the Commission found that this trademark did not directly describe the writing instruments but only alluded to a certain quality of the goods. Therefore, the trademark was admitted to registration.639 I.B.7.b. Three-Dimensional Marks Toothpaste lines (three-dimensional) cannot be protected as trademarks if they do not vary from the usual and expected form of toothpaste. According to the Federal Commission of Appeals,640 use of different colors does not render the trademark distinctive. The Commission did take into consideration that the same trademark was granted protection in other countries, but decided that it was not bound by such decisions. The Commission overturned the decision of the Federal Institute of Intellectual Property and allowed registration of a three-dimensional trademark for ice cream and ice cream cake. The trademark claimed protection for specific colours (white, beige, various brown tones). According to the Commission, it was essential to judge the trademark in the combination of all elements. While single elements of the trademark were simply for decoration purposes, the combination of all, especially the various layers, was specific and original enough to allow registration. In addition, there was no reason to keep this specific form, shape and colour combination free for competition.641 The issue of registrability of LEGO-BRICKS also kept Swiss courts busy. The design of the interlocking bricks is registered as a three-dimensional trademark with the Federal Institute of Intellectual Property. Claimant requested cancellation of this trademark on the basis that it was not registrable. The Zurich 638. Decision of the Federal Commission of Appeals, sic! 1/2004, 27 FITMORE. 639. Decision of the Federal Commission of Appeals, sic! 6/2004, 503 SILK-WRITER. 640. Decision of the Federal ZAHNPASTASTRAENGE (3D). Commission of Appeals, sic! 10/2003, 804 641. Decision of the Federal Commission of Appeals, sic! 6/2004, 502 EISTORTE (3D). 534 Vol. 95 TMR Commercial Court ruled in favour of the claimant on December 17, 2002, and Lego appealed. The Federal Supreme Court overturned the Zurich Commercial Court’s decision and remanded the case for a new judgement. Under Swiss law, there is specific wording for threedimensional marks (Art. 2 Lit. b). Specifically, trademarks cannot be registered if they consist of forms that are the essence of the goods or that are functional. The Supreme Court held that Lego’s very specific form of bricks was not the essence of toy bricks as such and that the technical details of the bricks were not technically necessary to obtain the function of connecting the bricks. Other forms of bricks could produce the same result. On the other hand, the Supreme Court held that the specific brick form was the result of a specific technical characteristic, namely, the interlocking nature of the bricks. Therefore, the trademark had no distinctiveness per se, but (as it did not fall under the specific rule of Art. 2 Lit. b) it was open to registration if it acquired distinctiveness through use. The Supreme Court sent the matter back to the Commercial Court for a ruling on acquired distinctiveness.642 I.B.8.b. Similarity of Goods/Services A prior trademark with a figurative letter K claims protection for goods in Class 19, namely “panels, pipes and profile elements made of various plastics.” A later trademark with a stylized K claimed protection for “plastic” in Class 17. The Federal Commission of Appeals643 decided that there was a similarity of goods. The decision held that the claimed goods in Class 19 could also be made of or contain plastics that were protected under the later mark. This was likely, especially for construction purposes, and therefore the goods were held to be similar. In the case involving the mark CARTOON NETWORK, the Commission decided that there is similarity among goods in Classes 25 and 18 because diversification in the fashion industry (e.g., bags and shoes) has become a rather standard marketing procedure.644 642. Decision of the Federal Supreme Court, sic! 11/2003, 892 LEGO III (3D). 643. Decision of the Federal Commission of Appeals, sic! 5/2004, 419 K (fig.) et al./K (fig.). 644. Decision of the Federal Commission of Appeals, sic! 11/2003, 906 CARTOON/CARTOON NETWORK. See also discussion of this case under II.G. Evidence. Vol. 95 TMR 535 I.B.9.a. No Similarity of Marks According to the Federal Commission of Appeals,645 the later trademark OH! JOHN RAY is not confusingly similar to Ô DE LANCÔME, even for identical products. In the overall impression, the element OH! is understood as an exclamation, whereas the element Ô is read or understood either as eau (French for water) or as a reference to the same letter in the word LANCÔME. Furthermore, in the overall impression, the two trademarks are dominated by LANCÔME and JOHN RAY, and, for this reason, there is no risk of confusion. The trademarks HEXAL and INFANRIX HEXA were held not to be confusingly similar, even though they claim protection for identical goods. The element HEX (A) comes from the Greek hex, meaning “six”; it is a frequent prefix for chemical goods and preparations. For this reason, the element HEX, in itself, was held not to be characteristic of the prior trademark. It is a weak element, and as such is not strong enough to create a danger of confusion.646 I.B.9.b. No Similarity of Goods/Services The Federal Commission of Appeals decided647 that for the two similar marks ED & Device and ED ENERGIEDIENST & Device, the goods and services were different enough to allow coexistence. The prior mark claimed protection for electric goods in Classes 7, 9 and 11. The later mark claimed protection for services in Class 35 in relation to management in connection with electricity and utility matters, distribution of energy and water in Class 39, production of energy in Class 40 and technical planning in energyrelated fields in Class 42. The decision reiterated the principle that goods and services can be similar. In this case, however, the two industries were too different. The average consumer does not expect the sophisticated management and technical services claimed by the later mark to be rendered by the same businesses that sell everyday electric goods, such as lamps and appliances. The Commission also decided that there is no similarity between plastic foils for wrapping and packaging and unprocessed 645. Decision of the Federal Commission of Appeals, sic! 1/2004, 29 Ô DE LANCÔME/OH! JOHN RAY. 646. Decision of the HEXAL/INFANRIX HEXA. Federal Commission of Appeals, sic! 7/8/2004, 575 647. Decision of the Federal Commission of Appeals, sic! 3/2004, 235 ED (fig.)/ED EnergieDienst (fig.). 536 Vol. 95 TMR plastic.648 The later identical mark RESINEX must claim protection for goods clearly different from those protected by the prior mark in order to avoid a risk of confusion. According to the Commission, raw material is similar to the final product if the raw material’s quality has—from the consumer’s point of view—an essential importance for the final product’s quality. However, this is not the case for plastic as the raw material used to produce plastic foils. II.G. Evidence In the case involving the mark CARTOON NETWORK,649 the Federal Commission of Appeals had to decide procedural issues regarding evidence of use. The Commission has held in the past that evidence in the form of links on a website is basically insufficient to establish use. However, in the CARTOON NETWORK case, these links were sufficient, in regard to the overall impression, as prima facie evidence, to establish use of the trademark CARTOON. III.A.2.b. Similarity of Marks The president of District Court VIII Bern-Laupen decided that the trademarks PHYTOTHERAPIE FNH, AYURVEDA-MEDIZIN FNH, TRADITIONELLE CHINESISCHE MEDIZIN FNH, KLASSISCHE HOMÖOPATHIE FNH, TIBETISCHE MEDIZIN FNH and ALLGEMEINE NATURHEILKUNDE FNH were confusingly similar to the prior trademark FMH. The trademark FMH is registered for the Swiss Medical Doctor’s Association for various services in Classes 41 and 42. The later marks with the element FNH were registered in the name of the Alternative Doctors’ Association of Switzerland. The Court held in preliminary injunction proceedings650 that the trademarks were similar. While the overall impression was dissimilar, the decisive elements FNH and FMH were phonetically and visually close enough to pose a risk of confusion. 648. Decision of RESINEX/RESINEX. the Federal Commission of Appeals, sic! 5/2004, 418 649. Decision of the Federal Commission of Appeals, sic! 11/2003, 906 CARTOON/CARTOON NETWORK. See also discussion of this case under I.B.8.b. Similarity of Goods/Services. 650. President of the District Court VIII Bern-Laupen of June 11, 2003, sic! 1/2004, 31 FMH/FNH. Vol. 95 TMR 537 III.A.8. Infringement of Unregistered Trademarks Claimant had been using the word mark TRIPP TRAPP for children’s seats in Switzerland since 1973. However, TRIPP TRAPP was not filed by the claimant until 1999. Claimant asked for an injunction against defendant, who had been using the trademark TRIP TRAP for garden furniture in Switzerland since 1996. Among a wide range of discussions regarding claims, counterclaims, valid use and other concerns, the key issue was whether the claimant’s mark TRIPP TRAPP was a valid unregistered, notorious trademark. In Switzerland, registration and not use creates the trademark right. As an exception to this principle, unregistered notorious (or well-known) trademarks are recognized under Articles 3 and 6bis of the Paris Convention and Article 16 of the TRIPS Agreement. The Federal Supreme Court decided that recognition of a wellknown unregistered trademark was a clear exception to the firstto-file principle in Switzerland, and therefore a high threshold had to be met. Under normal circumstances, at least 50 percent of those in one relevant circle of commerce have to know the trademark and attribute it to a specific company. In this case, the Supreme Court accepted the argument that TRIPP TRAPP was a notorious trademark.651 III.A.10. Nonuse of Trademark In a landmark case, the Federal Supreme Court established new rules for the period for taking up use for International Registrations under the Madrid Agreement if the basic trademark is under attack. International Registration 663349 FOCUS claimed protection in a number of countries, including Switzerland. It was filed on the basis of a German trademark, FOCUS, registered on May 23, 1996. Under normal circumstances, the grace period for taking up use for International Registrations with protection in Switzerland starts either (a) 12 months (for the Madrid Agreement) or 18 months (for the Madrid Protocol) after extension of the trademark to Switzerland, or (b) the moment that a provisional refusal has been withdrawn. If, however, the basic registration (in this case, in Germany) is under attack (e.g., in an opposition procedure) and the attack was initiated within the fiveyear dependency period for the International Registration according to Article 6 Section 3 of the Madrid Agreement, the attack on the basic registration will be a valid reason and excuse for nonuse of the trademark in Switzerland. According to the Supreme Court, with respect to taking up use of a trademark in 651. Decision of the Federal Supreme Court, sic! 5/2004, 407 TRIPP TRAPP III. 538 Vol. 95 TMR foreign countries, a trademark owner must have the option of waiting, as long as fate of the basic trademark in the home country (here, Germany) is not secured. On a practical note, this means that for every nonuse attack against an International Registration in Switzerland, a full status report for the basic trademark (i.e., the basic national registration) must be obtained in order to calculate the nonuse period.652 SYRIA III.A.2.b. Similarity of Marks The American company Polo Ralph Lauren Corporation duly registered the trademark POLO together with a design of a horse rider playing polo under No. 22250 on July 18, 1972, and duly renewed the same, to cover soaps, essential oils and cosmetics in Class 3. Certain Syrian citizens, namely Mohamad, Amar, Imad and Abdulrahman Al-Habbal Co., registered the trademark POLO under No. 55681 on Aug. 30, 1995, to cover cleaning preparations and other such products in Class 3. Legal action was initiated by the American company for imitation of its trademark POLO & Design. The civil Court of First Instance issued the following decision: 1. To cancel and delete the registration of the trademark pertaining to Mohamad, Amar, Imad and Abdulrahman AlHabbal Co., and to delete the trademark from the Register of the second defendant regarding the materials of cleaning, soap and cosmetics (Class 3) only. 2. To order the defendants Mohamad, Amar, Imad and Abdulrahman Al-Habbal Co. to pay to the plaintiff the amount of 50,000 Syrian Pounds (U.S. $1,000). 3. To order the defendants to pay duties and expenses, and to exempt the Department of Commercial & Industrial Property Protection in the Ministry of Supply from paying such duties being it a public organization. The judgment was issued in public on November 2, 2002, and is subject to appeal. III.K. Counterfeiting Issues The American company Eastman Kodak Company, a wellknown company in the field of photography, duly registered two trademarks in Syria, namely ROYAL under No. 64720 and Triangle Design, to cover cameras, film and photographic 652. Decision of the Federal Supreme Court, sic! 7/8/2004, 580 FOCUS. Vol. 95 TMR 539 equipment in Classes 1, 9, 16 and 40. A Syrian citizen named Makardis Minasian was dealing in counterfeit film cartridge bearing the trademarks ROYAL and Triangle design. The American Company then initiated legal action against him for imitation and counterfeiting of its film cartridges. The criminal Court of First Instance issued the following decision: 1. Seizure of the infringing products; 2. Obligation of the defendant to pay 200,000 Syrian Pounds (U.S. $4,000). The decision is subject to appeal. TAIWAN I.B.9.a. No Similarity of Marks Sung-Tien Co., Ltd. applied to register the disputed mark VALENTINO RUDY for goods in Class 25 and successfully obtained registration of the mark. The plaintiff, Valentino Globe B.V. (“Valentino”), brought an invalidation action against the mark based on its famous trademark VALENTINO pursuant to Paragraphs 7 and 12 of Article 37 of the pre-amended Trademark Law. The invalidation action was dismissed by the Intellectual Property Office (IPO) and the Ministry of Economic Affairs (MOEA) in the first and second instances, respectively. Valentino appealed to the Taipei High Administrative Court against the decisions. Article 37, Paragraph 7 of the pre-amended Trademark Law sets out that a mark that is identical with or similar to another person's famous mark, thus creating a risk of confusion on the part of the public, cannot be registered. Paragraph 12 of the same provides that a mark that is identical with or similar to a registered trademark of another person, designated for the same or similar goods, cannot be registered either. Thus, the main issue for the Court to decide in this case was whether the two marks were sufficiently similar so that the disputed mark should be invalidated based on the above provisions of the law. The Court held that there was no sufficient similarity between the disputed mark VALENTINO RUDY and the plaintiff's mark VALENTINO, and made the following findings: 1. The appearances of the marks are distinguishable from each other. The disputed mark comprised two words, VALENTINO and RUDY, in handwriting style, while the plaintiff's mark was simply VALENTINO, in block letters. Although the two marks both contained the word VALENTINO, it did not make them indistinguishable from each other. The number of words each mark 540 Vol. 95 TMR contains, the complexity of the design of the marks and their writing styles were all different. Therefore, there was no likelihood of confusion in the eyes of the average consumers if the marks were to be viewed separately by the consumers at different times and places. 2. VALENTINO is a common surname in Italy. Over the years, there were also other registrations of marks for goods in all sorts of classes, having the word VALENTINO as a part of the marks. Thus, it cannot be said that registration of the disputed mark would give rise to the possibility of misleading the consumers to believe that such products were produced by the plaintiff. 3. The fact that the two marks were not similar and have coexisted in the market for a long period of time inevitably led to the conclusion that Paragraphs 7 and 12 of Article 37 of the Trademark Law did not apply in the present case. The plaintiff had failed to provide evidence of actual confusion as to the origin of the products or confusion caused to the relevant consumers in the market. Thus, the registration of the disputed mark should not be invalidated by claiming the above provisions. 4. The previous opposition decisions of other jurisdictions or the IPO's other decisions mentioned by the plaintiff in its argument could not be relied on to support this current case as the legal systems and cultures of each country are different, the designs of the marks are not the same and the examination of trademark cases should always be decided on a case-by-case basis. Accordingly, the Court affirmed the earlier decisions of the IPO and the MOEA and dismissed the appeal based on the above findings.653 I-Art Corporation applied to register the trademark STEREO 3D INSIDE (device) for goods in Class 9. The plaintiff, Intel Corporation (Intel), opposed the application based on its famous trademarks INTEL INSIDE (word) & INTEL INSIDE (word & device). The opposition, however, was dismissed by the IPO and the dismissal was affirmed by the MOEA on the administrative appeal. Intel appealed to the Taipei High Administrative Court against the decision of the MOEA. The law upon which the opposition was based, Paragraph 7 of Article 37 of the pre-amended Trademark Law, provides that a mark that is identical or similar to another person's famous mark, thus causing the public to confuse or misidentify it, cannot be 653. 91-Su-Chi No. 4308, Taipei High Administrative Court, November 19, 2003. Vol. 95 TMR 541 registered. However, the Court emphasized that the law would apply only if sufficient similarity between the marks could be established. Therefore, the issue before the Court was whether the disputed mark was sufficiently similar to the marks of Intel, so that Intel's similarity claim could succeed based on such provision. In reaching its decision, the Court rejected the plaintiff's arguments claiming that INSIDE was the dominant element of the disputed mark, that the disputed mark was a simple design following the typical format of "[word] INSIDE" invented by the plaintiff and, thus, such a mark would be highly associated with the plaintiff's marks, especially the most famous one INTEL INSIDE. The Court found that the disputed mark was actually a quite complex design, comprised of three stylized words, STEREO, 3D and INSIDE. Among those words, the most prominent and memorable word was found to be 3D, while INSIDE was regarded as a non-dominant element of the mark. By applying the test of whether the consumers would be likely to confuse or misidentify the mark with that of the plaintiff if the marks were to be viewed separately at different times and places, the Court found that the overall impression created by the disputed mark was significantly different from that of the plaintiff's marks. Based on the above findings, the Court affirmed the earlier decisions of the IPO and the MOEA by holding that the disputed mark STEREO 3D INSIDE was not similar to the marks of Intel, and thus, Article 37, Paragraph 7 of the pre-amended Trademark Law did not apply in this case. The appeal was, therefore, dismissed.654 III.F.5. Cancellation The plaintiff, Tradelink International Pty. Ltd., applied to register the trademark AQUAQUEEN & Chinese characters for goods in Class 32 on May 4, 1995. The IPO initially granted registration of the mark under Reg. No. 731324. But later, an examiner of the IPO brought an invalidation action against the mark on the ground that the registration was in violation of Article 36 of the pre-amended Trademark Law. Article 36 of the pre-amended Trademark Law provides that when two or more persons apply separately for registration of an identical or similar trademark, designated for the same or similar goods, the applicant who first files the application shall be granted registration. As the application date of a cited mark AQUAQUEEN & Device was earlier than that of the subject mark, the IPO canceled the registration of the subject mark by finding that the subject mark and the cited mark, having the same English word 654. 91-Su-Chi No. 3227, Taipei High Administrative Court, September 3, 2003. 542 Vol. 95 TMR AQUAQUEEN in their bodies, were designated for the same or similar goods, and if viewed separately at different times and places, would create a likelihood of confusion on the part of the public. The plaintiff appealed against the cancellation. On appeal to the Supreme Administrative Court, the plaintiff contended that because the cited mark was subsequently canceled by the IPO for non-use on April 18, 2001, the material facts on which the original decision was based had changed. Therefore, the decision should be canceled and a new judgment in favor of the plaintiff entered. The Court rejected such claim and held that in considering an invalidation action the law and facts to be taken into account should be those at the time of registration, even if the law or the facts changed after the decision. Furthermore, according to Article 33 of the pre-amended Trademark Law, where a decision canceling the right of exclusive use of a trademark is final, such right shall become invalid only from the date of the cancellation decision, not from the date of registration. Therefore, the Court affirmed the earlier decisions and dismissed the appeal.655 THAILAND III.M. Licensing Issues The case reported below involved the question of a local licensee’s standing to join the licensor as a co-plaintiff in prosecuting an action for trademark infringement. The license agreement between licensee and licensor had not been registered, as required under Section 68 of the Trademark Act. In Government v. Unique Shoes Co., Ltd.,656 the Thai Dika (Supreme) Court rejected the appeal petition filed by the coplaintiff, United Sport (Thailand) Co., Ltd., the Thai licensee of Brook Sport, Inc., owing to the co-plaintiff’s lack of standing. The facts of this case involve criminal charges filed by the Public Prosecutor against Unique Shoes Co., Ltd. for (1) offering for sale and (2) possession for sale of shoes bearing a forged trademark. The registered trademark owner was Brook Sport, which had licensed the right to the use of its mark to its licensee United Sport. During the criminal trial, United Sport filed a motion to join as a co-plaintiff. The IP&IT Court granted the motion. At the close of the trial, the Court dismissed the charges based on insufficiency of evidence presented by the prosecution. United Sport filed an appeal with the Dika Court, which ruled that it was necessary to determine whether United Sport had the 655. 90-Pan-Chi No. 1701, The Supreme Administrative Court, September 24, 2001. 656. Dika Court No. 10873/2546/Date April 26, 2004, published by Information System Service of the Intellectual Property and International Trade Court. Vol. 95 TMR 543 right to join as a co-plaintiff and whether United Sport had standing to file an appeal, particularly when the prosecutor did not file an appeal. Based on the facts and evidence submitted, the Dika Court found that United Sport was not the rightful owner of the registered mark that was being copied, and that the license agreement between United Sport and Brook Sport had not been registered with the Department of Intellectual Property, as mandated by the Thai Trademark Act. As the license agreement between United Sport and Brook Sport was not registered, the license agreement was actually considered null and void because it was not in the form prescribed by Thai law. In this respect, United Sport was not a lawful injured party with rights to file suit against Unique Shoes and, thus, had no right to join as a co-plaintiff. The IP&IT Court’s decision to allow Unique Sport to join as a co-plaintiff was erroneous. The Dika Court declined to hear the appeal, and thereby dismissed the petition. The unstated inference from this decision is that if the license agreement had been duly registered the licensee would have had the right to join the action as a co-plaintiff and prosecute the offender for trademark infringement. TURKEY I.B.3. Not Merely Descriptive Terms An action was instituted against the Turkish Patent Institute (TPI) for withdrawal of the refusal of registration of the plaintiff’s trademark, composed of the words SAFMAYA and SANAYI A.S. and a traditional cooking device. The grounds for the TPI’s decision were that the word SAFMAYA (PUREYEAST) was descriptive for the goods “yeast” according to Article 6/a of the former Trademarks Act (Decree-Law No. 551)657 and that the trademark was confusingly similar to the trademark SAF, registered for identical goods in the name of another registrant. The plaintiff claimed that its trademark was not descriptive for the goods “yeast” when evaluated as a whole. The court of first instance accepted the plaintiff’s claims and ordered the cancellation of the refusal decision.658 657. Article 6/a reads: “Trademarks whose principal elements consist of signs and inscriptions indicating exclusively the kind, type, characteristics/quality, quantity, [geographical] origin, intended purpose [of use] and time [of production] . . . shall not be registered as a trademark.” 658. Safmaya Sanayi A.Ş. v. Turkish Patent Institute, Case No. 2000/1485, Decision No. 2000/1521 (1st Administrative Court of Ankara December 22, 2000). 544 Vol. 95 TMR Upon the TPI’s appeal the Council of State (High Administrative Court of Appeal) upheld the lower court’s decision on the grounds that the conditions for overturning such decision, set forth in Article 49 of the Administrative Procedural Law, had not been met and that the ruling of the court of first instance was justified.659 I.B.7.b. Three-Dimensional Marks Beaute Prestige International brought an action against the Turkish Patent Institute (TPI) seeking the withdrawal of the TPI’s administrative decision refusing the registration of the plaintiff’s three-dimensional international trademark, consisting of bottle device packaging. The TPI had based its refusal on the ground that the bottle device did not have the characteristic of distinctiveness of a trademark, as specified in Article 5 of Decree-Law No. 556 (Decree-Law for Protection of Trademarks). The plaintiff argued that the bottle device had a distinctive character permitting its registration as a trademark because, the plaintiff claimed, the device was an original design, consisting of two transparent parts, that gave the impression that there was a red object in it and because the spraying head of the bottle was located in the tap, which was set on the top of the bottle in an original way. The TPI asserted that the trademark should not be considered distinctive in the sense of Articles 5 and 7(a) of Decree-Law No. 556 because the bottle device showed no originality or distinctiveness, as it was an ordinary bottle. Following the favorable conclusions of the expert’s report and considering the trademark in the sense of Article 5 of Decree-Law No. 556, the Court held that the bottle was a three-dimensional device. It gave the impression that an object was hanging in the sphere that had two transparent parts, and, on the top of the upper part, it had a cylinder-shaped neck with designs in light orange, dark orange, gray and white. Further, the Court determined that the bottle device trademark had been registered since August 21, 2000, as a national trademark in its home country and since February 20, 2001, as a Community Trade Mark, and that moreover it had been registered in Paris Convention signatory countries. The Court ruled that the bottle device was not an ordinary design for a bottle, as asserted by the defendant; that the trademark had been registered and marketed in the plaintiff’s home country and other European countries; and therefore that it 659. Case No. 2001/581, Decision No. 2003/1040 (High Administrative Court of Appeal March 20, 2003). Vol. 95 TMR 545 had gained distinctiveness through use. In addition, the Court, having examined ex officio the trademark in the sense of Article 7(e) of Decree-Law No. 556,660 ruled that because the goods in International Classes 3, 14 and 33 that will be marketed in the bottle are cosmetic products mostly for women, and because either such goods do not have any effect on the shape of the bottle or the shape of the bottle is not conditioned by the necessity of obtaining a given technical result in respect of the products contained in it, the three-dimensional bottle device as applied for was registrable as a trademark in the sense of Article 5 of Decree-Law No. 556. On these grounds the Court ruled that the administrative decision of refusal should be withdrawn and allowed the application to proceed to registration.661 III.A.2.b. Similarity of Marks In an action for trademark infringement GAP Inc. sought the cancellation of the defendants’ trademark registrations for GAP on grounds of similarity to the plaintiff’s well-known trademark GAP, and the determination and stopping of unfair competition and its effects. The plaintiff claimed that it is one of the most renowned companies in the world in the field of ready wear, in view of its turnover, quality and chain of stores; that its trademark GAP is registered in many countries around the world; and that the trademark is also registered in Turkey, where it is under protection according to Article 6bis of the Paris Convention and Article 7, paragraph (i) of Decree-Law No. 556, and is in accordance with the Turkish Code of Commerce because the word GAP is a distinctive element of the plaintiff’s trade name. GAP Inc. argued that the registration of the word GAP by the defendants constituted infringement of the plaintiff’s trade name and trademark, the defendants having registered the word GAP or having filed an application therefor. Further, the plaintiff argued, in view of the fact that its trade name and trademark are well known worldwide, that it manufactures its product range in Turkey via contract manufacturing and that the defendants are active in the field of textile manufacturing, it is not possible that the defendants do not know about the plaintiff’s GAP trademark. On the contrary, the plaintiff asserted, the defendants are ill- 660. Article 7(e) reads: “[S]igns containing the shape of the product which results from the nature of the product, which is necessary to obtain a technical result or which gives substantial value to the product [shall not be registered as a trademark].” 661. Beaute Prestige International v. Turkish Patent Institute, Case No. 2004/164, Decision No. 2004/50 ((Specialized) Court of Ankara for Intellectual and Industrial Property Rights March 23, 2002). 546 Vol. 95 TMR willed, as the word GAP used by the defendants in their trademarks is identical with the plaintiff’s GAP trademark. Accordingly, the plaintiff requested that such acts be recognized as constituting infringement of its well-known trademark and trade name and an act of unfair competition; the plaintiff asked for the cancellation of the defendants’ trademark registrations because the defendants had no right to such registrations, and for the cancellation and abandonment of the defendants’ trademarks. The court of first instance, partially accepting the plaintiff’s claims, ruled for the cancellation of the defendants’ trademark registrations but refused to rule for the exclusion of the word GAP from the trade names of the defendants.662 Two of the defendants, Gap Güneydoğu Tekstil Sanayi Ve Tic. A.Ş. and Gap Güneydoğu Anadolu Pazarlama Ve Tarim Ürünleri Ve Tic. A.Ş., appealed. Besides lodging objections to the procedure, one of the appellants claimed that it had no intention to make its GAP trademark notorious. The appellant asserted that the word GAP was also the abbreviation for Turkey’s Güneydoğu Anadolu Project (South Eastern Anatolia Project), and that this was well known both in Turkey and around the world; that it had activity in the city of Gaziantep, which is located in this region; that it had registered the abbreviation GAP as its trade name and trademark; and that during this period GAP Inc.’s trademark did not possess the quality of notoriety and was not registered in the country. If the foreign trademark was known publicly in Turkey, the appellant argued, GAP, Inc. could benefit from Article 6bis of the Paris Convention. Accordingly, the appellant requested rejection of the case, stating that the wording GAP was well known not because of the trademark GAP or the trade activity of GAP Inc. but because of the name of the project for the development of the Güneydoğu Anadolu region (South Eastern Anatolia region). The Supreme Court upheld the decision of the court of first instance, which became finalized for defendant Gap Güneydoğu Anadolu Pazarlama Ve Tarim Ürünleri Ve Tic. A.Ş.663 Defendant Gap Güneydoğu Tekstil Sanayi Ve Tic. A.Ş. further appealed to the Supreme Court for reconsideration on formal grounds of failure of proper notification of the decision. The Supreme Court overturned the decision and remanded the case for further hearing.664 The lower court partially accepted the claims of GAP Inc. in light of the previous final decisions with regard to the 662. GAP Inc. v. Gap Güneydoğu Tekstil Sanayi Ve Tic. A.Ş., et al., Case No. 1998/179, Decision No. 2000/248 (2d Commercial Court of Istanbul June 16, 2000). 663. Case No. 2001/5479, Decision No. 2001/7121 (11th Civil Chamber of the Supreme Court September 24, 2001). 664. Case No. 2004/11395, Decision No. 2002/920 (11th Civil Chamber of the Supreme Court February 5, 2002). Vol. 95 TMR 547 other defendants and decided to cancel the entry in official records of the trademark registration in the name of the appellant. It rejected, however, the plaintiff’s request relating to the use of the word GAP, together with differing elements, by the defendants in their trade names, as that did not constitute infringement of the plaintiff’s trade name.665 In a different case, plaintiff General Biscuits Belgie sought to stop the use by the defendant of the mark PRENS on grounds of similarity with its well-known trademark PRINCE, which had been registered since 1956 (i.e., before the organization of WIPO), arguing that the defendant’s use constituted an infringement of the plaintiff’s mark and an act of unfair competition. Plaintiff requested compensation of moral damages and destruction of the equipment and machinery used to produce the defendant’s infringing products. It voluntarily waived its claims regarding compensation of material damages. The court of first instance, initially accepting in part the plaintiff’s claims, held that the trademark PRINCE was well known and that the defendant’s use of its mark PRENS infringed the plaintiff’s trademark and constituted an act of unfair competition. It refused to rule, however, for compensation for moral damages and for destruction of the equipment and machinery used to produce the infringing products as well as the promotional material.666 The Supreme Court overturned the lower court’s decision on moral damages.667 It found that, as the defendant’s acts were considered to constitute infringement of the plaintiff’s trademark and unfair competition according to Article 62 of Decree-Law No. 556 and Article 58 of the Turkish Commercial Code, an appropriate amount should be allowed as compensation for moral damages. Adhering to the Supreme Court’s ruling, the court of first instance ordered the payment by the defendant of 250 million Turkish lira to the plaintiff, together with the rediscount interest applying as of the date of institution of the court action.668 As the lower court’s decision regarding trademark infringement, unfair competition and determination of the notoriety of the plaintiff’s 665. Case No. 2002/671, Decision No. 2003/588 ((Specialized) Court of Istanbul for Intellectual and Industrial Property Rights October 23, 2003). 666. General Biscuits Belgie v. Karsa Bisküvi Ve Gida Sanayi Tic. Ltd., Case No. 1999/148, Decision No. 2000/203 (2d Commercial Court of Beyoğlu/Istanbul June 7, 2000). 667. Case No. 2000/9741, Decision No. 2001/888 (11th Civil Chamber of the Supreme Court February 6, 2001). 668. Case No. 2003/719, Decision No. 2003/554 ((Specialized) Court of Istanbul for Intellectual and Industrial Property Rights October 14, 2003). 548 Vol. 95 TMR trademark had already been finalized, no further ruling was issued in those matters. General Biscuits Belgie also brought an action for cancellation of the defendant’s trademarks BİFA SUPER PRENS, BİFA PENBE PRENS and BİFA SÜTLÜ PRENS on grounds of similarity with its well-known trademarks CHOCO PRINCE and PRINCE FOURRE, and for stopping trademark infringement and unfair competition. The plaintiff claimed that the trademarks PRINCE, CHOCO PRINCE and PRINCE FOURRE have been registered in their home countries since 1955 and the latter two in Turkey since 1976; that its trademarks have been marketed throughout the world since 1926; and that these marks are well known and as such enjoy protection per Articles 7(i) and 42(a) of Decree-Law No. 556 and Article 6bis of the Paris Convention. Consequently, the plaintiff claimed, the defendant, operating in the same field, registered in bad faith its trademarks including the word PRENS as an essential component in respect of goods identical to those covered by the plaintiff’s well-known trademarks including PRINCE. The defendant countered that it had registered its trademark in 1984 in good faith, and therefore that even if the reputation of the plaintiff’s trademark were accepted, according to Article 42(a) of Decree-Law No. 556 a court action on such basis should have been filed within five years of the registration date of the defendant’s trademark; that the plaintiff should have known of the defendant’s trademark as it had been in use for 16 years; and that therefore the time period for instituting such action had lapsed. Further, the defendant claimed that the essential and distinguishing element of its trademarks is not PRENS but BİFA; that the plaintiff’s trademarks do not consist solely of the word PRINCE; that a trademark cannot be considered as well known without a decision by the TPI (Turkish Patent Institute) in that regard; and that the plaintiff had not opposed the defendant’s trademark application, even though it had a prior registration. On such grounds, the defendant argued, the plaintiff’s claims should be rejected. The Court ruled that, in the light of the evidence gathered and the expert’s report, the reputation of the plaintiff’s PRINCE trademarks had not been sufficiently evidenced. It found, however, that the word PRENS in the defendant’s marks was phonetically similar to PRINCE in the plaintiff’s marks, and that such similarity would lead to confusion between the trademarks. Because the infringement was continuing, the defendant’s objections regarding the five-year deadline for instituting the court action were held unjustified. The Court further held that, owing to the fact that the TPI was not a party to the action as filed, the Vol. 95 TMR 549 plaintiff’s claims regarding notoriety were not taken into consideration. Viewing with favor the plaintiff’s other claims, the Court ordered the partial cancellation of the defendant’s registrations by the exclusion therefrom of the word PRENS, while refusing to recognize the notoriety of the plaintiff’s trademarks and the plaintiff’s unfair competition claim.669 The Supreme Court rejected the defendant’s appeal on the ground that such appeal was not justified according to the content of the file, the evidence and the evaluation thereof.670 In Red Bull GmbH v. Orbital Kimya Ve Gid A Sanayi Ticaret A.Ş., the plaintiff instituted an action for cancellation of the defendant’s registered trademark POWER BALL ENERGY DRINK + Bull Device (No. 206842) on grounds of trademark infringement and unfair competition. The plaintiff claimed that the drink bearing its trademark RED BULL was produced and marketed throughout the world; that said trademark was registered in 80 countries and, since 1995, in Turkey; and that the trademark was well known. It claimed, further, that a court action had been instituted between it and the defendant; that the defendant’s trademark POWER BULL was confusingly similar to the plaintiff’s RED BULL trademark; and that the defendant’s use of the POWER BULL mark on identical goods constituted trademark infringement and gave the impression that there was a business relationship between the plaintiff and the defendant. Therefore, the plaintiff sought cancellation of the defendant’s trademark registration, compensation of material damages and stopping of both the infringement of its trademark and trade name and unfair competition. In reply, the defendant argued that the court action, prosecuted before the 5th Commercial Court of Istanbul, concerned the trademark POWER BULL, whereas its trademark was POWER BALL; that those two marks are not connected in writing and semantically; that there are many trademarks in the United States that include the word BULL used together with such words as “cola”; and that its products were not similar as to weight, size, color, shape and design of the packaging. The defendant claimed, further, that consumers would not confuse the products, owing to the price difference thereof. 669. General Biscuits Belgie v. Bifa Bisküvi Ve Gida Sanayi A.Ş., Case No. 2002/82, Decision No. 2003/215 ((Specialized) Court of Istanbul for Intellectual and Industrial Property Rights May 6, 2003). 670. Case No. 2003/9301, Decision No. 2004/4298 (11th Civil Chamber of the Supreme Court April 20, 2004). 550 Vol. 95 TMR The expert’s report ordered by the Court concluded that the color composition and design pattern of the defendant’s product packaging led to confusion and constituted parasitary competition in the sense of Article 57/b.5 of the Turkish Code of Commerce regarding the unfair competition and that the use of a priorly registered trademark and the use of a well-known nonregistered trademark for identical or similar goods or services are, respectively, a ground for refusal and a ground for cancellation according to Article 42 of Decree-Law No. 556. On such grounds, the expert’s report concluded that the defendant’s trademark should be partially cancelled by the exclusion therefrom of the word BALL and the “Bull Device,” so that the trademark would consist of the word POWER only. The Court, accepting the plaintiff’s claims in the light of the evidence gathered and following the conclusions of the favorable expert’s report, ordered the cancellation of the defendant’s trademark registration in its entirety. Further, it ordered the defendant to stop its act of unfair competition, stop the production and distribution of goods carrying the subject trademark and their sale within the country or for exportation and pay 1 billion Turkish liras as moral compensation. In addition, the Court ordered the confiscation and, where necessary, the destruction of the goods bearing the subject trademark; of all packaging, boxes and printed materials used in the production thereof; and of printed paper carrying the cancelled trademark, including invoices and all promotional material.671 Finally, the Court ordered the publication of the ruling in one of the largest newspapers with nationwide distribution. III.A.10. Nonuse of Trademark Upon the refusal of its application for ROUTE 66 in International Class 34, plaintiff requested the partial cancellation for nonuse of the earlier ROUTE 66 registration in Class 34 (No. 96/013518) cited against it.672 Plaintiff asserted that it is known for producing and marketing tobacco products throughout the world; that its application had been rejected because of the existence of the defendant’s trademark registration; and that the defendant, operating in the field of manufacturing leather and ready-to-wear clothing and goods, was not using its trademark on the goods of 671. Red Bull GmbH v. Orbital Kimya Ve Gid A Sanayi Ticaret A.Ş., Case No. 2001/970, Decision No. 2004/79 ((Specialized) Court of Istanbul for Intellectual and Industrial Property Rights February 26, 2004). 672. Van Nelle Tebek Nederland BV v. Um-Ka Deri Imalati Ve Konfeksiyon Sanayi Ve Tic. Ltd. Şti., Case No. 2003/24, Decision No. 2004/292 ((Specialized) 1st Court of Istanbul for Intellectual and Industrial Property Rights May 13, 2004). Vol. 95 TMR 551 interest for the plaintiff, namely, “tobacco, products for tobacco users,” and that therefore, according to Article 14 of Decree-Law No. 556,673 the goods “tobacco and products for tobacco users” should be excluded from the specification of defendant’s trademark registration for nonuse. The defendant objected that the action was not well grounded, that the plaintiff was ill-willed and that the action should be rejected. As the defendant did not timely file with the Court evidence showing the serious and uninterrupted use of the trademark ROUTE 66 in respect of goods in Class 34, the Court accepted the plaintiff’s claims and ordered the partial cancellation of the defendant’s trademark in accordance with Article 14 by the exclusion therefrom of the goods in Class 34. As the defendant did not appeal, the decision is finalized. UNITED KINGDOM I.B.4. Geographical Names In Miguel Torres S.A. v. Cantine Mezzacorona S.C.A.R.L., the applicant was an Italian wine producer based near the town of Mezzocorona. Its wine labels bore a word & device mark with the name MEZZACORONA and a picture of a half crown (the Italian meaning of the word). Torres also produced wine, some of which was sold under marks that included pictures of crowns and the word CORONAS. Torres opposed registration of the applicant’s mark under the EU (European Union) regulation laying down rules for the description and presentation of wines from specific regions. The relevant regulation set out mandatory information that must be printed on the labels of such wines, including the name of the region of origin. It also set out supplementary information that might appear on the label; this included brand names. Further provisions of the regulation allowed the continuation of use of a registered trade mark identical to the name of the geographical region, provided the products were entitled to use the description. At the court of first instance the judge concluded that the word MEZZACORONA was both a brand name and a geographical name and that the applicant was entitled to use it.674 The opponent appealed. 673. Article 14 reads: “If, within a period of five years following the registration, the trademark has not been put to use without a justifiable reason or if the use has been suspended during an uninterrupted period of five years, the trademark shall be repealed.” 674. [2003] E.W.H.C. 3359. 552 Vol. 95 TMR The Court of Appeal upheld the decision that the mark was a trade mark. It concluded that there was nothing in the regulation to suggest that a trade mark that contained or consisted of a geographical name that was not otherwise regulated by European Community (EC) provisions should be prohibited.675 I.B.5. Personal Names In E.I. Du Pont de Nemours & Co. v. S.T. Dupont, S.T. Dupont (STD) opposed the registration of E.I. Du Pont’s (EIDPs) mark DU PONT on the ground that it was not distinctive enough and subsequently sought to rely on the fact that the registration was incapable of being distinctive because DU PONT (whether as one or two words) was a common French surname. The Court of Appeal found that in relation to the first appeal the judge had no good reason to reverse the hearing officer’s decision and thereby refuse EIDP’s application to register.676 On the question of whether the DU PONT mark was capable of distinguishing EIDP’s goods, the appellate court ruled that the fact that the name Dupont appeared 800 times in the Paris telephone directory was not conclusive. There was evidence that DU PONT had become distinctive through use in relation to EIDP’s fabrics and yarns. It had the capacity to distinguish these types of goods, and there was no reason why that capacity would be lost if it was applied to clothes connected with EIDP. The hearing officer had therefore been correct to find that registration was not contrary to Section 10 of the Trade Marks Act 1938. STD’s objection under Section 11 that there would be a risk of confusion to members of the public was also not made out, as its use of its mark had started after the mark DU PONT had become distinctive as regards EIDP’s fabrics and EIDP’s use of that mark in connection with menswear was sufficiently distinct from STD’s use and unlikely to cause confusion. As STD’s application to register S.T. DUPONT was liable to be prevented by the law of passing off, the court refused registration of STD’s mark under Section 5(4) of the Trade Marks Act 1994. I.B.8.a. Similarity of Marks In Coco de Mer Ltd. v. Chanel Ltd.,677 the applicant applied to register the mark COCO DE MER & Device in a number of 675. [2003] E.W.C.A. Civ. 1861. 676. [2003] E.W.C.A. Civ. 1368. For a full discussion of the case, see I.B.22. Distinctiveness. 677. [2004] E.W.H.C. 992 (Ch.). Vol. 95 TMR 553 classes, including Class 3 (perfumery and cosmetics) and Class 18 (travelling bags). The application was opposed by Chanel, which had registrations for the mark COCO in relation to both perfume and fashion accessories. Chanel’s opposition was based on Section 5(2)(b) of the Trade Marks Act 1994, which provides that a mark shall not be registered if (1) it is similar to an earlier mark, (2) it is to be registered for identical or similar goods or services and (3) there exists a likelihood of confusion. The opposition succeeded in the Trade Marks Registry, and the applicant appealed. The High Court dismissed the appeal. It found that the average consumer would not understand what the phrase and device in the COCO DE MER mark described (the fruit of a rare species of palm tree growing in the Seychelles), and that therefore the significance of the mark depended largely on its impact as an invented phrase. The most eye-catching word was COCO, and the consumer’s lack of understanding of the meaning of the full phrase also diminished the ability of the words DE MER to control the impact of COCO. The High Court did not have to accord each part of the mark the same weight or significance; the case law was clear that the court had to appreciate the mark globally, and part of this would be determining the distinctive features of the mark. Given that the mark applied for was proposed to be used on identical goods, the likelihood of confusion centred on the degree of similarity between the two marks, with regard to their distinctive characteristics. As they shared a key word, the question therefore was whether other factors were likely to rule out confusion, which the presence of COCO in both marks might otherwise produce if they were used on identical types of goods. The judge found that the additional words and the device were not likely to be sufficient to negate the effect of the key word COCO and that the average consumer might well assume an economic link between the two products. The challenge to the hearing officer’s conclusions failed. I.B.11.e. Bad Faith In Inter Lotto (UK) Ltd. v. Camelot Group plc, both parties ran lotteries. The National Lottery Commission ran the National Lottery through the defendant, whereas the claimant operated lotteries in public houses under the registered trade mark HOTSPOT. In July 2001, Inter Lotto chose the name HOTPICK to describe a feature of HOTSPOT in which numbers could be randomly generated; it began promoting the feature, in conjunction with HOTSPOT, one month later, and started using it in November 2001. Meanwhile, in August 2001, Camelot had chosen an almost identical name, HOTPICKS, for a planned new lottery game; in October 2001, it applied for registration of the HOTPICKS mark, although it did not launch a game under that name until July 2002. 554 Vol. 95 TMR Camelot’s application for registration of HOTPICKS was opposed in November 2002 by Inter Lotto, which argued that Camelot’s application had been made in bad faith because Camelot was aware of Inter Lotto’s use of the name. In January 2003, Inter Lotto brought proceedings against Camelot in the High Court that included a claim of passing off. The trade mark application was stayed pending determination of the High Court proceedings. If Camelot’s trade mark application were successful, the mark would be deemed registered with effect from the date of application, that is, October 2001. Therefore, Camelot claimed that it should, for the purposes of the proceedings, be treated as benefiting from a trade mark registration that conferred on it a superior right that overrode Inter Lotto’s common-law passing-off rights. The High Court was called on to decide, as a preliminary issue, the relevant date at which Inter Lotto’s reputation and goodwill should be assessed for the purposes of the passing-off claim. Camelot argued that its alleged superior right meant that the relevant date was October 17, 2001, the date of Camelot’s application for registration. Inter Lotto accepted that if this date were correct, it would be difficult for it to show sufficient goodwill to succeed in a claim of passing off. However, it maintained, and the court agreed, that the right date was July 7, 2002, the date on which Camelot launched a game under its HOTPICKS mark.678 Camelot appealed this preliminary finding. The Court of Appeal dismissed the appeal.679 Section 2(2) of the Trade Marks Act 1994 expressly provided that the statute did not affect the law of passing off. Although Section 5(4) did give special recognition and protection to rights acquired by use before the date of an application for registration, there was no equivalent recognition of the possibility of superior rights’ being acquired by use after the date of an application. The natural implication might be that such subsequent use was to be disregarded; however, in light of Section 2(2), that interpretation was precluded, and the judgment of the court of first instance was upheld. Inter Lotto subsequently abandoned its opposition to the Camelot’s trade mark application, and consequently, in August 2003, Camelot’s mark proceeded to registration. The following month, Camelot commenced trade mark infringement proceedings, and Inter Lotto counterclaimed for revocation and a declaration of invalidity. Inter Lotto applied to amend its Particulars of Objection to plead that Camelot’s mark was invalidly registered, in breach of Section 3(6) of the Trade Marks Act 1994, because it had been 678. [2003] E.W.H.C. 1256 (Ch.), [2003] 3 All E.R. 191. See also, III.B.1. Passing Off. 679. [2003] E.W.C.A. Civ. 1132, [2003] 4 All E.R. 575. Vol. 95 TMR 555 registered in bad faith, as up to the date of registration Camelot was aware that Inter Lotto was using the HOTPICK mark and of Inter Lotto’s rights in HOTSPOT. Camelot opposed the application on the basis that for purposes of Section 3(6) the relevant date was the date of application for registration, not the date of registration. The court dismissed Inter Lotto’s application.680 Section 3 of the statute was concerned with the absolute grounds for refusal of registration. Subsection 6 was in unqualified form, and its language, requiring that an “application” have been “filed” in bad faith, was a reference to the application for registration filed in the Registry. Therefore, the relevant date for testing bad faith was the date of filing of the application for registration. I.B.22. Distinctiveness EIDP applied to register the trademark DU PONT in relation to menswear. STD opposed the registration under Sections 9 and 10 of the Trade Marks Act 1938 on the ground that the mark was not distinctive enough, and subsequently sought to rely on the fact that the registration was incapable of being distinctive because DU PONT (whether as one or two words) was a common French surname. STD also alleged that it had used the name Dupont for a long time in relation to clothes and that the registration would be likely to deceive and cause confusion and therefore should not be permitted under Section 11. The hearing officer dismissed the opposition, and STD appealed. The judge allowed STD to argue the point in relation to the surname and concluded that it had a good case on the basis that Dupont was a common surname. Further, the judge found that the risk of confusion to the public had been made out, and therefore he allowed STD’s appeal against the dismissal of its opposition. In the second appeal, STD had applied to register the mark S.T. DUPONT. EIDP opposed the application on the basis that use of the mark by STD would amount to passing off. The opposition was upheld, and STD appealed. The judge allowed the appeal. EIDP appealed against both decisions. The Court of Appeal found that in relation to the first appeal the judge had no good reason to reverse the hearing officer’s decision and thereby refuse EIDP’s application to register. The fact that the name Dupont appeared 800 times in the Paris telephone directory was not conclusive on the question of whether the mark DU PONT was capable of distinguishing EIDP’s goods. 680. [2004] R.P.C. 42 (Ch.), (Patten, J.). The decision is dated February 25, 2004. 556 Vol. 95 TMR There was evidence that DU PONT had become distinctive through use in relation to EIDP’s fabrics and yarns. It had the capacity to distinguish in respect of those articles, and there was no reason why that capacity would be lost if the mark were applied to clothes connected with EIDP. The hearing officer had therefore been correct to find that registration was not contrary to Section 10 of the Trade Marks Act 1938. STD’s objection under Section 11, that there would be a risk of confusion to members of the public, was also not made out, as its use of its mark had started after the mark DU PONT had become distinctive with respect to EIDP’s fabrics and use of that mark by EIDP in relation to menswear was sufficiently distinct from STD’s use and unlikely to cause confusion. In respect of STD’s application to register S.T. DUPONT, the court held that such application would be liable to be prevented by the law of passing off, and registration was therefore refused under Section 5(4) of the Trade Marks Act 1994.681 In Société des Produits Nestlé SA v. Mars UK Ltd.,682 in 1995 Nestlé had applied to register the mark HAVE A BREAK in Class 30 for confectionery. The application was opposed by Mars and the opposition upheld by the hearing officer, who held that the mark was devoid of distinctive character under Section 3(1)(b) of the Trade Marks Act 1994 on the basis that the words would be understood simply as an origin-neutral invitation to consume a snack. He held, further, that the words had not acquired distinctive character under the proviso to Section 3(1) of the statute because the mark HAVE A BREAK had been used not by itself as a brand name for any Nestlé product but always as part of the phrase “Have a break, have a KitKat.” The decision of the hearing officer was affirmed by the judge on appeal, and Nestlé appealed. The Court of Appeal upheld the earlier decision that the mark applied for was not inherently distinctive and that it could be registered only if acquired distinctiveness could be shown in accordance with Section 3(1). The issue of the construction of Section 3(1) was one of Community law, however, as that section derived from the Trade Marks Directive and was similarly used in the CTMark Regulation.683 Its interpretation was thus of far-reaching importance in the EC as a whole, and accordingly the Court of 681. E.I. Du Pont de Nemours & Co. v. S.T. Dupont, [2003] E.W.C.A. Civ. 1368. See also, I.B.5. Personal Names. 682. [2003] E.W.C.A. Civ. 1072. 683. First Council Directive 89/104/EEC; Council Regulation (EC) No. 40/94. Vol. 95 TMR 557 Appeal referred to the ECJ a question of whether distinctiveness may be acquired by a mark in consequence of its use as part of, or in conjunction with, another mark. II.E. Forum Conflicts In Apple Corps Ltd. v. Apple Computer Inc.,684 the defendant applied to set aside the service of proceedings outside the jurisdiction in trade mark proceedings brought by the claimant. The claimant was a well-known record company formed by the Beatles; the defendant was a well-known producer of computers and software. Both parties traded under the name APPLE. The claimant claimed that the defendant had broken an agreement, made in 1991, that regulated the use of their respective marks in various areas of activity, following the settlement of English trade mark proceedings. The alleged breaches resulted from the defendant’s launch of a Web-based music store that allowed members of the public to download songs over the Internet. The claimant was granted permission under Civil Procedure Rule 6.20 to serve proceedings outside the jurisdiction on the grounds that the agreement was governed by English law, that it was made in England and that the defendant threatened a breach of contract within the jurisdiction that would entitle the claimant to an injunction to restrain it. When the agreement had been made, neither party wished to accept the other’s jurisdiction or governing law, and the agreement was silent on both. In addition, neither party wished to give the other an advantage in terms of where the agreement was finalised, so copies had been signed by each party in its home jurisdiction (England and California, respectively) and completion was arranged by telephone. The court dismissed the defendant’s application. The evidence did not enable a clear view to be taken. Each party argued that completion consisted of an offer by the other side followed by its acceptance in its own jurisdiction. Each party’s case was equally likely, and on that basis the claimant had a good, arguable case for saying that acceptance was received, and the contract made, in England. The agreement was essentially a negative one, with each party promising to refrain from doing acts in certain areas. Therefore, this was not a case in which the characteristic performance of the contract could be determined for purposes of the Rome Convention. Instead, the court had to ascertain the country with which the contract was more closely connected. Taking a broad approach, there was some, but not much, connection with California, and the 684. [2004] E.W.H.C. 768 (Ch.). 558 Vol. 95 TMR closer connection was with England. In particular, one of the factors in favour of England was that the agreement was part of an overall settlement of English litigation. III.A.2.b. Similarity of Marks In Compass Publishing BV v. Compass Logistics Ltd.,685 the claimant was part of a group of companies engaged in worldwide business consultancy. It owned a number of registered trade marks for the word COMPASS, used by all of its group companies throughout the world. These included two UK registered trade marks, filed in 1988 and 1996, respectively, and a Community Trade Mark (CTM). In 1995, the defendant, which offered management consultancy services, changed its name to Compass Logistics International Ltd.; in 2000, it made a further change, to Compass Logistics Ltd. The claimant sued for infringement of its three marks. The defendant denied infringement, and counterclaimed for revocation and a declaration of invalidity of the marks. Looking at infringement of the CTM, the claimant argued that the defendant infringed the mark in its use both of COMPASS LOGISTICS and of COMPASS, as it often used the word singly to refer to its business. The court accepted that use of the word COMPASS alone was deliberate and not accidental and that the defendant had infringed the CTM under Article 9(1)(a) of the CTM Regulation686 by that use. The court went on to consider whether the use of COMPASS LOGISTICS also infringed the CTM. The claimant argued that COMPASS LOGISTICS was also identical to its CTM, but the court disagreed. Case law from the European Court of Justice (ECJ) established that a sign is to be treated as identical to a mark only where it reproduces, without any modification or addition, all the elements of the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by the average consumer. On the facts, the differences between the signs were apparent and would be identified without difficulty or prior coaching by members of the public, and therefore the claim for infringement under Article 9(1)(a) for use of COMPASS LOGISTICS failed. However, infringement was established under Article 9(1)(b). Whilst no actual confusion could be shown, the court held there could be little doubt that a likelihood of confusion existed. On the challenge to the validity of the CTM, the defendant argued that by the filing date of the CTM it had acquired valuable and protectable goodwill for the use of COMPASS LOGISTICS for 685. [2004] E.W.H.C. 520 (Ch.). See also, III.F.5. Cancellation. 686. Council Regulation (EC) No. 40/94. Vol. 95 TMR 559 consultancy services relating to logistics. The specification for the CTM’s services would include consultancy services relating to logistics. The defendant argued that had the claimant wanted to use its mark for such services the defendant could have prevented it from doing so by means of a successful passing-off action and that the CTM should be declared invalid under Article 8(4). Article 8(4) provides for refusal of registration of a mark if it is opposed by the proprietor of a “non-registered trade mark.” The court accepted that this would include vested rights that could be enforced under the law of passing off. However, the defendant failed to show that it satisfied the further requirements of Article 8(4)—that is, that it was the proprietor of a “sign used in the course of trade of more than a mere local significance.” The court held that a mark should be considered to have mere local significance if its geographical spread was restricted to substantially less than the whole of the EU and if from the perspective of the EC market for the services in question the mark was of little significance. On the evidence, the defendant’s reputation was small and localised. In relation to an attack on the 1996 UK mark, however, the defendant was successful in having the mark declared invalid to the extent that it covered logistics consultancy services in the United Kingdom, as Section 5(4)(a) of the Trade Marks Act 1994 (the equivalent of Article 8(4) of the CTM Regulation) does not impose a requirement for the unregistered right to have more than mere local significance. The claimant in H Young (Operations) Ltd. v. Medici Ltd.687 was the successor in title to a company called Animal Ltd., which in turn was successor in title to a business started by two surfers. Young owned the registered trade mark ANIMAL in Class 25 for clothing, footwear, headgear, baseball caps, sweatshirts and Tshirts. The mark was used on women’s clothing aimed at people under 30 who had an association with surfing. When defendant Medici Ltd. began importing a range of ladies wear, aimed at those over 30, under the mark ANIMALE, Young sued for infringement of its mark. Medici denied infringement and brought a counterclaim for partial revocation of Young’s mark. Young made out a case for likelihood of confusion between the marks, and its claim for infringement succeeded. 687. [2003] E.W.H.C. 1589 (Ch.). See also, III.A.10. Nonuse of Trademark. 560 Vol. 95 TMR III.A.5. Fair Use Reed Executive plc et al. v. Reed Business Information Ltd. et al.688 concerned an action for trade-mark infringement and passing off. In the appeal from the court of first instance’s finding in favour of the claimant, one of the issues that fell for consideration was whether the use of the word REED in invisible metatags could constitute infringement or passing off. As far as infringement under Article 5(1)(a) of the Trade Marks Directive689 was concerned, the judge reserved his opinion. He expressed doubts, however, that metatag and reserved-term use could count as use of a trade mark at all. Even if it could, he questioned whether it was trade mark infringement where metatags were concerned. III.A.10. Nonuse of Trademark In H Young (Operations) Ltd. v. Medici Ltd.,690 the claimant owned the registered mark ANIMAL in Class 25 for clothing, footwear, headgear, baseball caps, sweatshirts and T-shirts. The mark was used on women’s clothing aimed at people under 30 and having a surf connection. The claimant sued for infringement of its mark when the defendant began importing a range of ladies wear aimed at people over 30 under the mark ANIMALE. In reply, the defendant denied infringement and counterclaimed for partial revocation of the claimant’s mark on the ground of nonuse under Section 46(1)(b) of the Trade Marks Act 1994. The defendant argued that although the claimant had proved use of its mark over a range of garments during the relevant five-year period, all the goods in question were aimed at those who wanted to project a surfer image, and that the mark should be partially revoked by limiting it to “casual surf type wear for women aged under 30.” The High Court held that it was required to determine how the average consumer would describe the products on which the proprietor had used its mark. It did not accept that surf-type goods were significantly distinct in commercial terms to justify a partial revocation, nor could the mark be limited to goods for young adults. Neither of these was a distinction that the ordinary consumer would make if asked to give a fair description of the goods in connection with which the mark had been used. “Clothing” was a fair description, and the claim for partial revocation failed. 688. [2004] E.W.C.A. Civ. 159. For a full discussion of the case, see III.A.11.a. No Similarity of Marks. See also, III.B.1. Passing Off; III.C. Injunctions and Damages. 689. First Council Directive 89/104/EEC. 690. [2003] E.W.H.C. 1589 (Ch.). See also, III.A.2.b. Similarity of Marks. Vol. 95 TMR 561 III.A.11.a. No Similarity of Marks In Reed Executive plc et al. v. Reed Business Information Ltd. et al.,691 the claimant had carried on business as an employment agency for more than 40 years and had a registration for the trade mark REED for “employment agency services included in Class 35.” In 1995, Reed Executive began to use the Internet as a business tool, and by early 1996 it was advertising job vacancies on its website, www.reed.co.uk. The defendants were member of a multinational publishing group that published a range of magazines and journals, some of which included job advertisements. In 1999, Reed Business launched a dedicated jobs-related website, www.totaljobs.com. The website went through a number of versions, but it consistently featured two logos incorporating the word REED as well as using that word in invisible metatags. Reed Executive sued for trade-mark infringement and passing off based on Reed Business’s use of the word REED as part of (1) its logos in early versions of its website and (2) the copyright notice on its website. At the court of first instance, the judge held that there was infringement under Section 10(2) of the Trade Marks Act 1994 and possibly also under Section 10(1), that there was an actionable passing off and that the defendants could not take advantage of the own name defence in respect of either claim. Reed Business accepted that the use of its logos in early versions of its website amounted to trade-mark infringement and passing off. Such logos had subsequently been removed. However, it appealed the decisions in respect of its other uses of the word REED, particularly in its copyright notice. Reed Executive cross-appealed the finding that the use of “Reed Business Information” on invoices, press releases, etc., did not amount to trade-mark infringement and passing off. The Court of Appeal allowed the partial appeal by Reed Business. Considering whether there was infringement under Article 5(1)(a) of the Trade Marks Directive692 (on which the Trade Marks Act 1994 is based), which requires use of an identical mark on identical goods or services, Lord Justice Jacob considered first whether the marks in question were identical. He considered that the marks used by Reed Business was REED BUSINESS INFORMATION; comparing this to Reed Executive’s mark REED, he found that the marks were not identical and that the additional words BUSINESS INFORMATION would not go unnoticed by the average consumer. Furthermore, the service offered on the 691. [2004] E.W.C.A. Civ. 159. See also, III.A.5. Fair Use; III.B.1. Passing Off; III.C. Injunctions and Damages. 692. First Council Directive 89/104/EEC. 562 Vol. 95 TMR appellant’s website did not amount to “employment agency services” as per the respondent’s website, so there was no identity of services either. Proceeding on the basis that confusion between the similar marks and services was required, he held that there was no direct evidence to indicate this, and so a case for trademark infringement in respect of the copyright notice was not made out. Turning to the question of infringement under Article 5(1)(b), which requires a likelihood of confusion and which the trial judge had equated with the test to be applied in a passing-off action, the Court of Appeal pointed out that the tests are in fact different. In a trade-mark infringement case the court must assume that the mark has been in use and has developed a reputation and goodwill, whereas in a passing-off action this is for the claimant to prove. When a trade mark has been used on a substantial scale, that use can be factored into the level of distinctiveness that the mark has achieved. In trade-mark infringement, likelihood of confusion is assessed by reference to the average consumer, but in passing off the focus is on a substantial proportion of the public. Nevertheless, in the end such considerations were found to “come to the same thing,” and Lord Justice Jacob felt that the judge in both situations is essentially “forming an overall (‘global’) assessment as to whether there is likely to be significant consumer confusion.” Where a case concerns a descriptive mark, the court felt that small differences may suffice to avoid confusion. This is particularly relevant where marks are common surnames. On the facts the court found that there was no direct evidence indicating any confusion and no infringement under Article 5(1)(b). Despite finding that there was no trade-mark infringement, the court went on to consider the application of the own name defence. In relation to infringement, the court confirmed that the defence is available to companies as well as private individuals and that it may be used even if there is some actual confusion with the registered trade mark, albeit the amount of confusion that can be tolerated is a question of degree. On the facts, Reed Business had used its name in accordance with honest business practices in order to demonstrate corporate ownership of the site. The remaining issues between the parties centred on the use of pop-up banner advertisements and the use of metatags, and whether these constituted use of a trade mark. In relation to the first issue, Reed Business used sponsored search terms with the Internet search engine YAHOO!. When the terms “recruitment,” “job” and “reed” were searched for by a user, they triggered the appearance of a banner advertisement for the www.totaljobs.com website. The Court of Appeal disagreed that this constituted trademark infringement, finding it fanciful that people would connect Vol. 95 TMR 563 the banner (which made no reference to the word REED) to Reed Executive. In relation to use of the word REED in invisible metatags, the court found that there was no misrepresentation and no passing off or trade-mark infringement. Similarly, as far as Article 5(1)(b) trade-mark infringement was concerned, there was no confusion, so there could be no infringement. When discussing metatags, Lord Justice Jacob stated that “causing a site to appear in a search result, without more, does not suggest any connection with anyone else.” Lastly, turning to the enquiry as to damages, the court criticised the trial judge’s view that the “user” principle should apply in circumstances where the mark concerned is one that would not be available for commercial use. This part of the case was remitted to the judge for further consideration, however, in the light of the amended declarations that had been made. III.A.17. Descriptive Use Claimant Electrocoin Automatics Ltd. manufactured gaming machines conventionally referred to as “fruit machines.” It had used the symbols BAR, X and O on the reels and in the win tables of its machines. Electrocoin also sold machines under the name OXO and had U.K. and Community registrations for the marks BAR-X and OXO. Defendant Coinworld Ltd. marketed two fruit machines under the names BEAR X and BIG BEN and used the symbols BAR, X and O on those machines. Electrocoin sued for infringement of its marks BAR-X and OXO. Coinworld argued that the registrations should be declared invalid under Section 3(1) of the Trade Marks Act 1994 and Article 3.1 of the Trade Marks Directive as they were (1) signs that cannot constitute a trade mark; (2) marks that were devoid of any distinctive character; (3) marks that consisted exclusively of signs or indications designating the kind, quality, quantity, intended purpose or other characteristics of the goods or services; and (4) marks that consisted exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade. On the evidence, the court concluded that the marks were valid but not infringed. The court was satisfied that the symbols on the reels had been used in accordance with honest practices in industrial or commercial matters simply as integers of the games played on the defendant’s machines and thus simply as indications of alignment of the reels. Coinworld therefore was entitled to rely on Article 6.1(b) of the Directive.693 693. Electrocoin Automatics Ltd v. Coinworld Ltd., [2004] E.W.H.C. 1498 (Ch.). 564 Vol. 95 TMR III.B.1. Passing Off In Inter Lotto (UK) Ltd. v. Camelot Group plc,694 the Court of Appeal held that Section 2(2) of the Trade Marks Act 1994 expressly provides that the statute does not affect the law of passing off. Although Section 5(4) did give special recognition and protection to rights acquired by use before the date of an application for registration, there was no equivalent recognition of the possibility that superior rights could be acquired by use after the date of an application. The natural implication might be that such subsequent use was to be disregarded; in light of Section 2(2), however, that interpretation was precluded, and the court of first instance’s judgment was upheld. In Sir Robert McAlpine Ltd. v. Alfred McAlpine plc,695 the claimant company was established by Robert McAlpine in 1869. By 1935, it was being run by his sons, Alfred, William and Malcolm, who agreed to split the business. Alfred established a new company, A Limited (the defendant), which would trade in the North West, the West Midlands and North Wales, while the existing company, RM (the claimant), would operate elsewhere. The geographical split ended by agreement in 1983, and they continued to operate in parallel. RM’s business was principally construction, whereas that of A Limited included a significant proportion of civil engineering. The two companies operated on the basis of an informal understanding that they should distinguish between themselves by using the appropriate forename (Robert or Alfred). In 2001, A Limited began a re-branding exercise, dropped ALFRED from the brand and from the public faces of the company and adopted a new logo, which was simply the word MCALPINE in stylised form. RM sued for passing off on the basis that A Limited’s use of the name McAlpine without any distinguishing features was a misrepresentation that the services were those of, or associated with, RM or, alternatively, a misrepresentation that there was only one owner of the reputation and goodwill attaching to the McAlpine name. The claim succeeded. On the evidence, the word MCALPINE was capable of being a reference to the activities of RM in one of the fields in which the activities of the two companies overlapped. However, use of the name by A Limited in relation to activities outside the joint sphere would not give rise to a misrepresentation and would not amount to passing off. 694. [2003] E.W.H.C. 1256 (Ch.), [2003] 3 All E.R. 191. For a full discussion of the case, see I.B.11.e. Bad Faith. 695. [2004] E.W.H.C. 630 (Ch.). Vol. 95 TMR 565 A Limited had argued that the relevant public consisted of professionals in the construction market, who would be unlikely to be confused because they knew of the existence of the two companies. The judge accepted that whilst mere confusion was not sufficient, on the facts he found that there was a misrepresentation. The fact that this was corrected later did not remove the initial misrepresentation. As regards to the general public, when they saw new signs and logos, even those who knew that there were two companies would be encouraged to believe that there was only one MCALPINE, and that would constitute a misrepresentation. Whilst no quantifiable damage had yet occurred, the judge accepted that RM was likely to suffer damage. He cited the case of Irvine v. Talksport,696 in which the judge had referred to a third party’s “squatting” on the claimant’s goodwill. The judge held that the same principle could be applied in the present case, albeit that it was one of joint ownership of goodwill, where a more appropriate metaphor would be “elbowing out” or “moving over” the other party. Neither joint owner was entitled to elbow the other aside by using the name to describe its own business in a way that suggested the exclusion of the other. In Reed Executive plc et al. v. Reed Business Information Ltd. et al.,697 the claimant sued for trade-mark infringement and passing off based on the appellants’ use of the word REED as part of (1) its logos in early versions of its website and (2) the copyright notice on its website. At the court of first instance the judge held, inter alia, that there was an actionable passing off and that the defendants could not take advantage of the own name defence in respect of either claim. Reed Business accepted that the use of its logos in early versions of its website amounted to trade-mark infringement and passing off. Such logos had subsequently been removed. However, it appealed the decisions in respect of its other uses of the word REED, particularly in its copyright notice. Reed Executive cross-appealed the finding that use of “Reed Business Information” on invoices, press releases, etc., did not amount to trade-mark infringement and passing off. The Court of Appeal allowed the partial appeal by Reed Business. Despite finding that there was no trade-mark infringement, the court considered the application of the own name defence. In the context of a passing-off action, the court stated that the defence was a narrow one. The test is whether the name was 696. [2002] E.W.H.C. 367. 697. [2004] E.W.C.A. Civ. 159. For a full discussion of the case, see III.A.11.a. No Similarity of Marks. See also, III.A.5. Fair Use; III.C. Injunctions and Damages. 566 Vol. 95 TMR being used honestly; if it is in fact causing deception and is known to do so, then the use cannot be honest. On the facts, Reed Business had used its name in accordance with honest business practices in order to demonstrate corporate ownership of the website. In relation to use of the word REED in invisible metatags, the court found that there was no misrepresentation and no passing off or trade-mark infringement. In relation to the passing-off issue, the evidence showed that Reed Executive’s result appeared below Reed Business’s results, and therefore no one was likely to be misled. This was irrespective of whether the search engine made the metatag visible. III.C. Injunctions and Damages In Reed Executive plc et al. v. Reed Business Information Ltd. et al.,698 in a second judgment relating to damages, the judge stated that any case in which the claimant could not show loss of sales or loss of business was to be approached on the “user” basis and that the court should undertake a determination of how much the defendant should have to pay for the use it had made of the mark. On appeal, turning to the enquiry as to damages, the court criticised the trial judge’s view that the “user” principle should apply in circumstances where the mark concerned is one that would not be available for commercial use. This part of the case was remitted to the judge for further consideration in the light of the amended declarations that had been made. III.D.2. Criminal Actions In R v. Hafeez Sheikh, Saqeb Sheikh & Junaid Sheikhz,699 the defendants were found guilty in the Crown Court on charges of using a trade mark without authority, in violation of Sections 92(1)(b) and 92(1)(c) of the Trade Marks Act 1994. They had been found in possession of a variety of counterfeit goods bearing wellknown brands such as Nokia, Gucci, BMW and Manchester United Football Club. The defendants pleaded guilty, and the Crown subsequently served a restraint order indicating that it would pursue confiscation proceedings. At that point the defendants applied to vacate their guilty plea. The applications were refused. The defendants appealed to the Court of Appeal, claiming that they should be allowed to change their plea, as no warning had 698. Id. For a full discussion of the case, see III.A.11.a. No Similarity of Marks. See also, III.A.5. Fair Use; III.B.1. Passing Off. 699. [2004] E.W.C.A. (Crim.) 492. Vol. 95 TMR 567 been given to them of the possibility of confiscation proceedings. It appears from the judgment that up to £11 million could be at stake. The court dismissed the appeals. Whilst the court retained the discretion to allow a guilty plea to be withdrawn where to refuse to do so would be unjust, this was to be reserved for cases where there was a doubt that the plea represented a genuine acknowledgement of guilt. In the present case, the defendants had been properly advised as to the nature of the offences and had, by their pleas, freely confessed their guilt. The only matter of which they had not been informed was the possibility of confiscation proceedings’ taking place, and that could have no bearing upon their acceptance of guilt. III.F.5. Cancellation In Compass Publishing BV v. Compass Logistics Ltd.,700 the defendant was successful in having the 1996 COMPASS mark, registered in the United Kingdom, declared invalid to the extent that it covered logistics consultancy services in the United Kingdom, as Section 5(4)(a) of the Trade Marks Act 1994 (the equivalent of Article 8(4) of the CTM Regulation)701 does not require that the unregistered right have more than mere local significance. III.J. Gray Marketing In Glaxo Group Ltd. v. Dowelhurst Ltd. & Taylor,702 the claimant comprised a number of large pharmaceutical manufacturers and the defendants were parallel importers of trade-marked pharmaceuticals produced by the claimants. The defendants procured genuine pharmaceuticals from other EU member states for import into the United Kingdom. However, because the packaging and information leaflets were not suitable for the UK market, the defendants carried out a number of activities, including the following: • Re-boxing—the contents of the foreign boxes were placed in new boxes with new information leaflets. • De-branding—the new boxes used the generic name of the drug and not the manufacturer’s trade mark. 700. [2004] E.W.H.C. 520 (Ch.). For a full discussion of the case, see III.A.2.b. Similarity of Marks. 701. Council Regulation (EC) No. 40/94. 702. [2004] E.W.C.A. Civ. 290. 568 Vol. 95 TMR Co-branding—the new boxes showed both the manufacturer’s trade mark and the getup of the importer. • Stickering—the defendants merely stuck appropriate labels on top of an original foreign-language box. In all cases the defendants included a statement that the goods had been procured in the EU and were repackaged by the importer. The claimant sued for trade mark infringement. Under Article 7(1) of the Trade Marks Directive,703 a trade mark proprietor may not prohibit use of his mark in relation to goods that have been put on the market in the European Economic Area by the proprietor or with his consent. Article 7(2) provides an exception where there are legitimate reasons for opposing further commercialisation of the goods, especially where their condition is changed or impaired after they have been put on the market. This provision has generated a significant amount of case law which had suggested that a parallel importer could only repackage goods and reapply a trade mark where (1) this was “necessary,” (2) there was no effect on the original condition of the product, (3) there was clear identification of the manufacturer and importer, (4) there was nondamaging presentation and (5) prior notice had been given to the trade mark owner.704 At the court of first instance705 the judge found that there was widespread and substantial resistance to over-stickered boxes, with the result that re-boxing was necessary for the defendants to obtain access to the UK market. A reference was made to the ECJ, which held that a proprietor could object to parallel importation only where it was necessary to protect the specific subject matter of his rights and that repackaging was deemed to be prejudicial and must be done as unobtrusively as possible. Replacement packaging was accepted as necessary because without it effective access to the market concerned was hindered, given that consumers were resistant to relabelled products. When the case returned to the High Court, the trial judge found that although the defendants were entitled to re-box and to use stickers, the cobranding and de-branding were objectionable because they did not respect the legitimate interests of the trade mark proprietor. Both parties appealed. The Court of Appeal held that the issue required further clarification from the ECJ but indicated that it was inclined to • 703. First Council Directive 89/104/EEC. 704. Bristol-Myers Squibb v. Paranova A/S, Joined Cases C-427/93, C-429/93 and C436/93, [1996] E.C.R. I-3457. 705. Judgment was given in February 2000. Vol. 95 TMR 569 overrule the trial judge on the issue of re-boxing. The trial judge had interpreted the ECJ’s judgment to mean that repackaging was presumed to be prejudicial to the trade mark, so that even if reboxing was necessary it must respect the legitimate interests of the trade mark owner and be as unobtrusive from the trade mark point of view as possible. This led him to believe that only packaging that imitates the original packaging or that is very plain and depicts nothing more than the claimant’s mark is acceptable. The defendants argued that all they had to show was that re-boxing was necessary and that the necessity test did not extend to the details of the manner of repackaging. Lord Justice Jacob accepted the defendants’ arguments but finally deferred judgment on the form of the re-boxing and stickering because he considered that despite years of case law the position was still not free from doubt. Decisions from other national courts within the EU showed varying approaches to repackaging and further guidance on the form of co-branding, de-branding and stickering was required. A further reference was made to the ECJ. URUGUAY I.B.12. Famous Marks Nextel Communications, Inc., owner of trademark NEXTEL, filed an opposition with the Trademark Office seeking the dismissal of an application for NEXTEL presented by the Uruguayan company Nextelco Ltda. in International Classes 9 and 38. Nextel Communications, Inc. based its action primarily on the worldwide notoriety and fame of its NEXTEL trademark and on the allegation that the applicant had engaged in unfair competition by attempting to register a mark identical to one of its own. In addition, it claimed that the legal regulations that protect trade names applied to this case. In support of its position, Nextel Communications, Inc. furnished abundant material evidencing its registration and use of the mark NEXTEL, which preceded Nextelco Ltda.’s application by many years, and illustrating the trade name’s international notoriety and the widespread renown of the company. Based on an objection raised by the legal department of the PTO concerning the formalities with which foreign documents must comply in order to be accepted as evidence, the Trademark Office decided to dismiss Nextel Communications, Inc.’s petition, thus granting the contested application.706 This decision was, in turn, appealed by the opposing company while it began the process of correcting the formal defects that the PTO’s legal department 706. Resolution of the Trademark Office, October 26, 2001. 570 Vol. 95 TMR had observed in the documents presented. In addition, new evidence was submitted, mainly consisting of original materials showing the notoriety of NEXTEL. As a result of this course of action, the Trademark Office decided to reverse its prior decision and dismiss Nextelco Ltda.’s application.707 This new decision was based on an opinion that the PTO’s legal department formed after considering the supplemental documentation submitted. It concluded that the expression “Nextel” is the trade name of the petitioning party and that its use in the market dates back to at least 1988; that Nextel Communications, Inc. operates primarily in the field of telecommunications (Class 38) and related equipment (Class 9); and that the formal defects in most of the evidence had been corrected. Moreover, it found that while several of the foreign applications were made after the application for the current registration, others were made on earlier dates, as were the United States applications. These earlier applications include Brazil, February 1997; Argentina, August 1995; the European Union, April 1996; and Mexico, March 1994. The legal department further stressed that although some of the new publications incorporated as evidence refer to a later date, others are from at least two or three years prior to the contested application. Based on this material, it also concluded that, following a partnership entered into with the company MCI, Nextel Communications had advanced enormously in the field of wireless network communications, thus gaining renown in the business. In addition, the PTO’s legal department pointed out that this performance, which earned the company increasing recognition, is also backed by the application for and granting of numerous registrations in dates around 1997. Moreover, it acknowledged the valuable services rendered by the appellant, which because of their nature, transcend national limits and are present on an international level. Lastly, it stressed that regardless of the fact that the inclusion of “tel” is a customary practice among companies operating in this business, the mark applied for by the local company is identical to the trade name and trademark used by the U.S. company. Anyone with experience in the field of trademarks would find it difficult to believe that the mark was conceived or created by the national company, especially considering that the applicant operates in the field of telecommunications and must necessarily have some awareness of the trademarks used in this area and the companies that conduct similar business activities, in particular, those operating in neighboring countries. 707. Resolution of the Trademark Office, February 21, 2003. Vol. 95 TMR 571 ExxonMobil Oil Corporation, owner of the trademark MOBIL and its variants, filed two oppositions with the Trademark Office seeking the dismissal of the applications for T-MOBIL (label) presented by the German company Deutsche Telekom AG in International Classes 9, 16, 36, 37, 38, 41 and 42. ExxonMobil Oil Corporation based its action primarily on the worldwide notoriety and fame of its MOBIL trademark, the prior use and reputation of said mark and the trade name MOBIL used by ExxonMobil in Uruguay and around the world, as well as on a number of prior registrations of the mark MOBIL and its variants in Uruguay in International Classes 1, 2 and 4. The PTO decided to dismiss ExxonMobil Oil Corporation’s petition and grant the contested applications.708 These decisions were based on an opinion issued by the PTO’s legal department, which concluded that the notoriety of the trademark MOBIL is associated with goods in International Class 2 and as such is limited to the products protected under that class. This opinion further stated that, if trademark MOBIL were a renowned mark, the protection would extend beyond the limits of that International Class, but that it did not consider the mark to be renowned. These resolutions were, in turn, appealed by the opposing company, but the Board of Appeals in Trademark Matters confirmed the PTO’s prior rulings based on the same arguments.709 ExxonMobil Oil Corporation then decided to file two final claims before the High Administrative Court, which is the highest body in Uruguay with jurisdiction over administrative decisions issued by governmental bodies. Through these claims, ExxonMobil sought the annulment of the Trademark Office resolutions granting the applications for T-MOBIL (label). In support of its position, the appellant furnished abundant materials evidencing its registration and use of the mark MOBIL and its variants, which preceded Deutsche Telekom AG’s applications by many years, and illustrating the trade name’s international notoriety and the widespread renown of the company. The Court’s Judges accepted ExxonMobil Oil Corporation’s claims and ruled in favor of annulling the contested decisions.710 The Judges stressed in their rulings that the plaintiff is justified in its claims because it is evident that the conflicting marks are not different enough to coexist in the same market, neither from a graphic nor from a phonetic viewpoint. Moreover, while conceding that the registered word mark MOBIL only covers “corrosion 708. Resolutions of the Trademark Office, January 10, 2000, and February 8, 2000. 709. Resolutions of the Board of Appeals in Trademark Matters, September 19, 2000, and November 23, 2000. 710. Rulings of the High Administrative Court, February 24, 2003, and March 26, 2003. 572 Vol. 95 TMR protection products” in International Class 2, and thus by virtue of the specialty principle the action brought by the plaintiff would not be acceptable, the Judges understood that the plaintiff did not base its oppositions to the new registrations merely on the existence of the mark MOBIL for International Class 2 products. The appellant, the Judges indicated, also based its claims on the fact that it has various other marks registered both in this country and abroad containing the word MOBIL as an integral part thereof, thus turning the term in question into a well-known mark. The Judges also found that, notwithstanding the existence of these other marks, it would be impossible not to acknowledge the notoriety of the mark MOBIL, even without the need to register it. They asserted that the importance of protection of well-known marks in international trade relations implies an exception to the territorial principle and even to registration as an essential requirement for establishing protection of the mark. They added that under Article 6bis of the Paris Convention, the States Party are bound to prohibit the registration of a mark that constitutes a reproduction, imitation or translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country. Such prohibition also applies “when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.” The Judges concluded that this is undoubtedly the case in these proceedings because the only difference between the conflicting marks is the letter “T.” A difference of one letter makes the new mark scarcely distinctive or new, and such a minor difference is overshadowed by the main and essential term constituting this mark that has been famous worldwide for many years. Therefore, and as it is impossible not to acknowledge that MOBIL is a well-known mark, both nationally and internationally, the risk of confusion cannot be ignored because consumers could reasonably be led to think that the products or services have the same origin and quality. Lastly, in the Court’s opinion, the word MOBIL is part of the trade name ExxonMobil Oil Corporation, which is yet another obstacle to the registration of the mark T-MOBIL. In fact, the resemblance of the mark T-MOBIL to the plaintiff’s trade name is obvious, thus increasing the risk of confusion, especially if the effects of a well-known name are taken into account. Vol. 95 TMR 573 VENEZUELA I.B.3. Not Merely Descriptive Terms The Patent and Trademark Office denied711 registration to PREPAGO DIGITAL, filed by Telecomunicaciones Movilnet for services in National Class 35,712 on the ground that it was merely descriptive of the services covered, namely advertising; management of commercial business and business administration services. In its opinion PREPAGO DIGITAL was within the prohibition of Article 82(d) of Decision 344 of the Commission of the Andean Community,713 regarding registration of trademarks consisting of a sign or indication useful in commerce to designate the type, quality, quantity, destination, value, origin, time of production and other data, characteristic or information relating to the products or services for which the trademark will be used. The applicant requested review of this decision before the Industrial Property Registrar. It argued that this trademark did not necessarily have to be used to distinguish digital prepaid services, as indicated in its meaning, and therefore it should be allowed registration because the services claimed did not have a close relation to the meaning of the mark’s words. The Registrar rejected the previous decision on the ground that the mark was not descriptive of the services listed and consequently would not generate confusion among consumers as the meaning evoked in the Spanish language by the words PREPAGO DIGITAL and consumers’ general understanding of that meaning did not closely relate to the services offered by the applicant.714 I.B.9.a. No Similarity of Marks In Coca-Cola Co. v. Hit de Venezuela, S.A.,715 the Political and Administrative Chamber of the Supreme Tribunal of Justice ordered the invalidation of the Ministry resolution716 upholding the Industrial Property Registrar’s decision717 that denied registration 711. Resolution No. 0907, dated August 27, 1999; published in Industrial Property Bulletin No. 434, Volume 2, dated October 15, 1999. 712. Trademark Application No. I-98-18,233. 713. Decision 344 was subsequently superseded by Decision 486, dated September 14, 2000 (Common Intellectual Property Regime). 714. Resolution 0007, dated January 4, 2004; published in Industrial Property Bulletin No. 462, Volume 3, dated February 13, 2004. 715. Political and Administrative Chamber of the Supreme Tribunal of Justice, Decision No. 514, dated April 3, 2001. 716. Secretary of Development, Resolution No. 774, dated April 7, 1992; published in Industrial Property Bulletin No. 375, Volume 2, dated October 15, 1993. 717. Industrial Property Registrar, Resolution No. 1,677, dated April 13, 1989; published in Industrial Property Bulletin No. 360, dated September 15, 1991. 574 Vol. 95 TMR to the mark HI-C for the protection of natural and artificial mineral and gaseous water and other nonalcoholic beverages, syrup, in National Class 45, based on its similarities to the registered mark HIT & Design,718 in the same class and for like products. Coca-Cola maintained its claim on the ground that HIT & Design was a complex mark, and therefore all its possible confusing elements with HI-C had to be analyzed as a unit rather than separating and isolating each one of them. In addition, CocaCola asserted that HI-C was, in fact, an extension of its old identical registration for food, vegetable and fruit beverages, registered since 1958.719 Finally, Coca-Cola contended that these two marks had coexisted in peace for over 30 years and therefore there was no reason to deny registration to HI-C. In reply, Hit de Venezuela argued that registration of HI-C would violate Sections 11 and 12 of Article 33 of the Industrial Property Law of 1956, which forbid registration of marks so confusingly similar to a registered trademark that they might deceive consumers. In this decision the Tribunal defined the concept of complex marks. Also, it cited some previous court opinions regarding the method that must be followed by the competent authority when evaluating the likelihood of confusion between confusingly similar trademarks. Thus, a complex mark is such as puts together several nominative or nominative and graphic elements that as a whole will comprise a unitary, complex and undividable group, which makes the mark a unique sign that differentiates analogous products. In regard to the evaluation of confusingly similar trademarks, the Tribunal held as follows. (1) Likelihood of confusion must be evident and not the result of the separate analysis of each one of the elements comprising the mark; therefore, confusion should result from a judgment taken upon a simple sight or listening. This test must also evaluate the impact that might produce the element or elements that, because they stand out within the group, will comprise the characteristic figurative and/or phonetic unique image the consumer will remember. (2) Designs and complex marks must be judged as a group, and not by evaluating their elements in an isolated way. (3) The accentuation must be considered to ascertain the differences without making it, by itself, a judgment element. Hence, there may coexist word marks with some identical syllables, when the other syllables composing the word and its accentuation differ to the point that any possible confusion is prevented. (4) It is necessary to assess the list of goods and/or services identified with the mark, 718. Registration No. F-21,027, dated June 29, 1949. 719. Registration No. F-33,448, 1958. Vol. 95 TMR 575 whether they are within the same class, its structure and its commercial environment. III.F.3. Nullity Productos S.A.S, C.V., as owner of a registration for CHEESE TRIS,720 requested that the Industrial Property Registrar declare the nullity of the trademark CHEESE TRON & Design,721 for confectionery, sweets, cookies and snacks in International Class 30, originally applied for by and registered in the name of Industrial Amapola, C.A., but later on transferred to Productos Alimenticios Agropack, C.A. The petitioner contended that in granting registration to CHEESE TRON & Design the Registrar did not consider that the mark could be misleading as to the origin, nature or quality of the products, nor the fact that CHEESE TRIS, also in Class 30, was already registered and thus enjoyed a priority right in accordance with Articles 82(h) and 83(a) of Decision 344. In answer to this petition, Productos Alimenticios Agropak contended that the notification of this nullity proceeding, which was to Industrial Amapola, C.A., was invalid and without any effect, as that firm was no longer the legal owner of CHEESE TRON & Design. Before reviewing the priority between these registrations and the likeness of the products covered by each of them, the Registrar considered that, as provided by Articles 19 and 20 of the Organic Law for Administrative Procedure and by the general opinion of administrative bodies and the courts, an important distinction had been established in the occurrence of certain facts of influence upon the validity or nullity of the administration acts, being of such character as to make it absolute or of a minor grade that only are a cause to its annulment. Further, it developed the opinion that there are certain facts or infractions of a minor nature or mere or trifling irregularities in the formality of the administrative act, which are referred to as irrelevant or inoperative since they do not lead to annulment or to total or absolute invalidation. Thus, since Article 30 of the Organic Law for Administrative Procedure sets economy, efficiency, celerity and impartiality as the governing principles of the administration, the Registrar decided that the main purpose of the notification was accomplished in this case, as the new owner of the mark voluntarily appeared and filed such defenses as it believed useful, and therefore there was no reason to invalidate the notification. After examination of the priority 720. Trademark Registration No. P-198,611, dated August 6, 1997. 721. Trademark Application No. I-93-11,494. 576 Vol. 95 TMR between both applications and the likeness between the products, the Registrar ordered the nullity of CHEESE TRON & Design.722 VIETNAM I.B.3. Not Merely Descriptive Terms Firmenich SA, a Swiss company, filed an international application for the mark MASK-IT! covering “essential oils” in International Class 3 and “flavourings (other than essential oils) for foodstuffs, beverages, pharmaceutical products and mouth-care products” in Class 30. This application also designated Vietnam. The Vietnamese National Office of Intellectual Property (NOIP)723 refused to grant protection for MASK-IT! in Vietnam on the basis that the mark was descriptive of the products. Firmenich, through its IP agent in Vietnam, lodged an appeal724 against the NOIP’s refusal, principally based on the following grounds: 1. The applied-for products do not relate to facial masks but instead relate to essential oils and flavourings added to cosmetics and beautification products. Therefore, the word “Mask” and the mark as a whole are not descriptive of the applied-for products in Classes 3 and 30. 2. The applied-for products are essential oils and flavourings, which are ingredients to enhance and improve the taste of the original products in which they are incorporated and not to mask the taste, as claimed by the NOIP. Having considered Firmenich’s arguments, the NOIP accepted that the mark MASK-IT! did not directly describe the applied-for products in Classes 3 and 30.725 Consequently, MASK-IT! was granted protection in Vietnam on October 13, 2004. 722. Resolution No. 1,666, dated October 11, 2003; published in Industrial Property Bulletin No. 461, Volume 3, dated December 19, 2003, at 303−09. 723. Under Decree No. 54/2003/ND-CP of the Government, which became effective on June 21, 2003, the National Office of Industrial Property was renamed the National Office of Intellectual Property. 724. No. KN-2004-00300. 725. See Letter No. 1756/TTKN. Vol. 95 TMR 577 TABLE OF MARKS A ............................................................... 409 A AREVA ................................................. 409 A PERFECT BLEND OF SCIENCE AND NATURE .................................... 318 ABSOLUT ................................................ 469 ACTIMEL................................................. 410 ADENAFIL .............................................. 488 AFIA ......................................................... 486 AFRICA’S LUSTY, LIVELY EXPLOITATION SINCE 1652—NO REGARD GIVEN WORLDWIDE....... 526 ÁGUA DO FASTIO GERÊS.................... 518 ALASKA................................................... 425 ALISUN ................................................... 369 ALIVIO..................................................... 297 ALIVIO WATERBEDS............................ 297 ALLGEMEINE NATURHEILKUNDE FNH ..................................................... 536 ALL-ROUND ORKEST MELROSE ....... 302 ALLURA................................................... 369 ALTINO ................................................... 442 ALTIPLANO ............................................ 442 ALWATWAT ............................................ 490 ALWAYS .................................................. 492 AMERICA’S LUSTY, LIVELY BEER—BREWED IN SOUTH AFRICA ............................................... 526 AMOXIL ................................................... 488 AMOXIRAM............................................. 489 ANIMAL................................................... 559 ANIMALE ................................................ 559 APPLE...................................................... 333 AQUAQUEEN ......................................... 541 ARGUS ..................................................... 417 ARTHUZICO ........................................... 305 ASSO ........................................................ 455 AUDIOVOX.............................................. 451 AUTOFIL ................................................. 505 AXXON..................................................... 276 AYURVEDA-MEDIZIN FNH ................. 536 B’A FORCE ÉQUILIBRE........................ 410 B’A FORCE VITALITÉ ........................... 410 BAILEY’S ................................................. 313 BANCO 1 – PHONE TICKETS .............. 304 BANK24 ................................................... 367 BARBECUE ............................................. 482 BARBIE.................................................... 314 BARBIE’S................................................. 314 BARBRA .................................................. 360 BAR-X....................................................... 563 BATMAN.................................................. 490 BAXTER................................................... 344 BAZZER ................................................... 344 BBDENT .................................................. 358 BCBG ....................................................... 362 BEAUTY SUPPLEMENT C-WHITE ..... 437 BEST CANADIAN MOTOR INNS ......... 310 BEST OF NATURE—BEST OF SCIENCE ............................................ 318 BEST WESTERN .................................... 309 BI DEXATON .......................................... 359 BIDETTE ................................................. 394 BİFA PENBE PRENS ............................. 548 BİFA SUPER PRENS ............................. 548 BİFA SÜTLÜ PRENS ............................. 548 BIG MAC.................................................. 516 BIG MAK ................................................. 515 BIOFORMA ............................................. 360 BIOMILD ................................................. 380 BLACK LABEL ....................................... 526 BLUETOOTH .......................................... 332 BMCSOFTWARE .................................... 521 BMW ................................................ 370, 467 BODUM ................................................... 365 BOSS ........................................................ 289 BOSTON MARKET................................. 322 BOSTON PIZZA ...................................... 322 BOSTONGURKA .................................... 385 BOURSE DES VOLS .............................. 417 BOURSE DES VOYAGES ...................... 417 BR............................................................. 368 BROTHER ............................................... 478 BROTHER YO ......................................... 479 BRÜHL .................................................... 293 BUDWEISER BÜRGERBRÄU............... 289 BUGS BUNNY ........................................ 334 BURGER KING....................................... 487 BUSINESSCALL 100.............................. 394 CAELYX................................................... 454 CAMPUS.................................................. 452 CAMUS .................................................... 452 CANAL DIGITAL .................................... 453 CANAL JEAN CO. NEW YORK ............ 446 CANAL+................................................... 453 CANALI ................................................... 446 CANALI MILANO................................... 446 CANNABIA.............................................. 430 CARMEL DSP ......................................... 390 CARMEN ................................................. 390 CARTOON NETWORK................... 534, 536 CENTRO-HOTELS ................................. 295 CHARME HOTEL ................................... 404 CHARMHOTEL....................................... 404 CHDTV..................................................... 340 CHEDDAR CHEESE .............................. 482 CHEESE BALLS ..................................... 482 CHEESE TRIS......................................... 575 CHEESE TRON....................................... 575 CHEETOS................................................ 494 CHILI CHIPS .......................................... 482 CHIONG YAO JIANG............................. 332 CHOCO PRINCE..................................... 548 578 CHRISTIAN DANIEL ............................. 450 CITY PLUS .............................................. 421 COALA COLA.......................................... 440 COCA-COLA ............................................ 402 COCKTAIL OF PIGNA COLADA .......... 413 COCO DE MER ....................................... 552 COLD FILTERED ICE DRAFT BEER BUDWEISER ...................................... 359 COLORS................................................... 475 COLOURS................................................ 388 COMBUSTICKET ................................... 304 COMPASS........................................ 558, 567 COMPASS LOGISTICS .......................... 558 CORNER CAFE....................................... 391 CORNER PUBLIC HOUSE .................... 391 CORNER’S PUB ...................................... 391 CORONAS ............................................... 551 CRAMPON............................................... 408 CRAYOLA ................................................ 513 CRAZY KRIZIA ....................................... 427 CREATEAM............................................. 369 CRINOLIN ............................................... 391 CRISPY CHIPS ....................................... 483 CROCO COLA ......................................... 439 CRUNCHY FRIES................................... 462 CUBA LIBRE........................................... 509 CUBA LIBRE ORIGINAL FORMULA .. 509 D’ARRASAR............................................. 520 D’ISTINTO............................................... 476 D2–BESTCITYPLUS .............................. 421 DANCEHILL ........................................... 298 DANCEVALLEY ..................................... 298 DANIEL ................................................... 322 DEAL........................................................ 397 DECATHLON .......................................... 415 DELISTER ............................................... 351 DENAFIL ................................................. 488 DERMALUB ............................................ 349 DEUTSCHE BANK24 ............................. 367 DEXA NEUROBION............................... 359 DEXEL ..................................................... 360 DI KA ....................................................... 333 DIABREZIDE .......................................... 497 DIAVOLO................................................. 431 DIESEL .................................................... 396 DIGIBOX.................................................. 396 DISEÑO DE TRAJE DE GALA.............. 371 DOLCET .................................................. 495 DOLOGIT................................................. 495 DONLINE ................................................ 421 DORITOS ................................................. 494 DRAKKAR ............................................... 326 DRAKKAR NOIR .................................... 325 DU PONT......................................... 552, 555 DUXIL ...................................................... 360 DYAZIDE ................................................. 496 ECH20....................................................... 500 ED............................................................. 535 ED ENERGIEDIENST............................ 535 EF ............................................................. 272 Vol. 95 TMR EINSTEIN ............................................... 324 EL CORRECAMINOS............................. 328 EL TACO.................................................. 296 ELLE ........................................................ 362 EMPREZA DAS ÁGUAS DO GEREZ .... 519 ERFURT .................................................. 286 ERFURT–RAUHFASER......................... 286 E-SERVICE ............................................. 399 ESSO ........................................................ 455 ESTEE LAUDER..................................... 336 EURO-WIENER ...................................... 395 EVANATURA .......................................... 277 EVAX........................................................ 359 EXACOD .................................................. 416 EXPRESS MAKE UP .............................. 433 EXPRESSIONS FROM HALLMARK .... 323 EXXON..................................................... 276 F.LLI FERRAZZANO.............................. 472 FASHION TELEVISION ........................ 412 FASHION TV........................................... 412 FEMALE TREASURE ............................ 296 FENDI...................................................... 432 FENDT CARAVAN ................................. 432 FERODO .................................................. 504 FERRAGAMO.......................................... 472 FERRAZZANO ........................................ 472 FINN ........................................................ 508 FITMORE ................................................ 532 FITNESS.................................................. 531 FITNESS COMPANY ............................. 419 FLY THROUGH THE WASHING UP ... 464 FOCUS ..................................................... 537 FOR BROTHER....................................... 479 FOREVER FRIENDS.............................. 457 FREEPORT.............................................. 474 FREE-PORT ............................................ 474 FRITO-LAY.............................................. 491 FRITOS ............................................ 359, 491 FROSTED NUTS..................................... 358 FUCICORT .............................................. 486 FUCIDIN ................................................. 486 FUCITHALMIC....................................... 486 FUSID ...................................................... 486 FV ............................................................. 279 FV GARANTIA TOTAL .......................... 279 GALLO ..................................................... 517 GALVALLOY ........................................... 449 GAP .......................................................... 546 GEORGE, ZHUANG JI........................... 340 GERÊS ..................................................... 518 GLOBAL ONE ......................................... 392 GLOBALONE .......................................... 392 GRAN SIDRA REAL ............................... 277 GRANUFLEX .......................................... 303 GRIMSEL STROM .................................. 532 GULF ....................................................... 377 HAPPIDOG.............................................. 356 HAPPY DOG............................................ 356 HARPER’S BAZAAR ............................... 362 HARRODS ............................................... 350 Vol. 95 TMR HAVANA CLUB ...................................... 524 HAVE A BREAK ..................................... 556 HELENA RUBINSTEIN......................... 330 HELLO ..................................................... 490 HERO ....................................................... 490 HERSHEY’S KISSES.............................. 348 HEXAL ..................................................... 535 HI-C.......................................................... 574 HI-CONTROL .......................................... 452 HIT ........................................................... 574 HOLIDAY CARS ..................................... 303 HOLOXAN ............................................... 343 HOTEL VILLA KUNTERBUNT ............ 292 HOTPICK................................................. 553 HOTPICKS .............................................. 553 HOTSPOT ................................................ 553 HUMMEL ................................................ 530 HYBRIDIL ............................................... 374 INET......................................................... 293 INFANRIX HEXA ................................... 535 INTEL INSIDE........................................ 540 INTERBIZ................................................ 389 INTERBUSINESS................................... 389 IP-LABEL ................................................ 403 ITT............................................................ 496 JAGUAR................................................... 466 JAMES BOND ......................................... 280 JAMES BONDI........................................ 280 JOIE DE VIVRE ...................................... 305 JORDAN .................................................. 462 KELAFER ................................................ 374 KELME .................................................... 480 KENT FRESH ......................................... 274 KIDDIE .................................................... 372 KIDDY...................................................... 372 KINDER ................................................... 422 KINDER KRAM ...................................... 422 KINDER SOFTY ..................................... 362 KINDERSCHOKOLADE ........................ 422 KING FRENCH FRIES........................... 463 KISS COOL.............................................. 348 KISS FM .................................................. 378 KITCHEN MATE .................................... 464 KITCHENMATE ..................................... 464 KJÖRÍS .................................................... 454 KLASSISCHE HOMÖOPATHIE FNH .. 536 KLEINER FEIGLING............................. 288 KLEINER FRECHDACHS ..................... 288 KOALA KOLA ......................................... 440 KODAK .................................................... 435 KRISTA .................................................... 427 KRIZIA ..................................................... 427 KUAI KE .................................................. 338 L’ARGUS.................................................. 416 L’ARGUS DE L’AUTOMOBILE ET DES LOCOMOTIONS ........................ 417 LA MER ................................................... 384 LA PASION POR EL CHOCOLATE ...... 375 LABORATOIRES DE LA MER .............. 384 579 “LADY DIANA– KÖNIGIN DER HERZEN” DAS MUSICAL................. 287 LAIT ECLATS ......................................... 405 LAPERDIZ ............................................... 497 LATITUDE-LONGITUDE ...................... 429 LAY’S ....................................................... 491 LAYS ........................................................ 491 LEGO-BRICKS........................................ 533 LEIFTRA.................................................. 453 LEONARD KAMHOUT .......................... 478 LES BOUTIQUE CLIQUOT................... 319 LES CADETS D’AQUITAINE ................ 399 LEVITRA ................................................. 453 LEX NET.................................................. 290 LEXIS....................................................... 290 LINDOWS................................................ 411 LINDOWS OFFICE ................................ 411 LINUX...................................................... 299 LION ........................................................ 467 LISTERINE ............................................. 351 LONGITUDE........................................... 429 LOOKS LIKE GRASS . . . FEELS LIKE GRASS . . . PLAYS LIKE GRASS ................................................. 357 LOXAN..................................................... 343 LUBRIDERM........................................... 349 M&M MINIS............................................ 365 MAGENTA............................................... 423 MALIBU................................................... 301 MANPOWER ........................................... 291 MANTRA ................................................. 369 MARIE CLAIRE ...................................... 362 MASK-IT!................................................. 576 MASTERTICKET.................................... 304 MAX MIX ................................................. 389 MAZDA .................................................... 455 MCALPINE.............................................. 564 McDONALD’S.................................. 300, 470 McSMART................................................ 300 MEDICON ............................................... 367 MEDICONNECT..................................... 367 MEGA 5.................................................... 289 MELROSE ............................................... 302 MENAFER............................................... 374 MENG TE JIAO ...................................... 337 MERCEDES............................................. 301 MERCEDES-BENZ ......................... 301, 467 MEZZACORONA..................................... 551 MICROSOFT ........................................... 298 MICROSOOF........................................... 298 MINI MILK.............................................. 392 MINI MILK CRAYOLA .......................... 513 MINUTES & MORE................................ 420 MISSOURI............................................... 418 MIX MAX FLAKES ................................. 389 MOBIL ..................................................... 571 MONTAGUT............................................ 337 MOODS BY KRIZIA................................ 427 MOON ...................................................... 397 580 MOOVE .................................................... 400 MP3.COM ................................................ 456 MTN MONEY TRANSFER NORDIC .... 454 MUPPET .................................................. 329 MUSTANG............................................... 512 MUSTEK.................................................. 335 NATURA .................................................. 277 NEIL BARRETT...................................... 387 NENEDENT ............................................ 358 NEW KUAI KE........................................ 338 NEXTEL................................................... 569 NICHOLS................................................. 380 NO 19 ....................................................... 393 NOIR ECLATS ........................................ 405 NOVARTIS .............................................. 360 NOVASIL ................................................. 360 NUTRAVITE............................................ 318 NUTRILITE ............................................. 317 Ô DE LANCÔME..................................... 535 O.P.ANDERSON ..................................... 387 OH! JOHN RAY....................................... 535 OKTOBERFEST...................................... 525 OLD HAVANA......................................... 524 OLDENBURGER .................................... 355 OMEGA ............................................ 289, 375 OMINO BIANCO MARSEILLAISE FOAM .................................................. 425 ORANGINA MOVE ................................. 400 ORWOOLA............................................... 449 OXO .......................................................... 563 PAMELA GRANT VOLUMATIC ........... 330 PAMPERS................................................ 361 PARADISE LEGENDS TORPEDOES ... 283 PARTEC ................................................... 388 PARTEK................................................... 388 PASSION PARADISE ON EARTH ........ 339 PAZO ........................................................ 495 PEAK PERFORMANCE ......................... 386 PEARL DROPS........................................ 496 PEARL DROPS SMOKERS.................... 496 PENTAX................................................... 470 PERNAVITAL ......................................... 393 PÉROLA................................................... 522 PETIT DEJEUNER DE LA PEAU......... 401 PETROL ................................................... 397 PHARMOXIL ........................................... 489 PHYTOTHERAPIE FNH ........................ 536 PIAGET.................................................... 443 PIERRE CARDIN.................................... 331 PIERROT, LE POISSON-CLOWN......... 407 PINA COLADA ........................................ 413 PLUMBER GUARD ................................ 505 POLA COLA ............................................ 440 POLO........................................ 408, 497, 538 POLO LIFE.............................................. 408 POLO LINE ............................................. 408 POLO PASSION ...................................... 408 POLO RALPH LAUREN......................... 408 POSTKANTOOR ..................................... 379 POWER BALL ENERGY DRINK .......... 549 Vol. 95 TMR POWER BULL......................................... 549 POXIPOL ................................................. 373 PRENS ..................................................... 547 PREPAGO DIGITAL............................... 573 PRINCE ................................................... 547 PRINCE FOURRE .................................. 548 PRO PAC.................................................. 275 PROCALYX...................................... 453, 454 PROGRESS.............................................. 397 PRO-PLAN............................................... 275 PROTABACO........................................... 511 PROTEX................................................... 375 PUBLIC CORNER .................................. 391 PUMA............................................... 467, 481 PUMS ....................................................... 361 PURO CUERO......................................... 358 QINGMAN ............................................... 338 QUAVERS................................................ 493 QUESIFRITOS ........................................ 359 QUILMES ................................................ 279 RADETZKY ............................................. 292 RALPH LAUREN .................................... 498 RAN TIAN ............................................... 338 REAL........................................................ 277 REAL EXPRESSION .............................. 323 RED BULL............................................... 549 REEBOK .................................................. 414 REED ....................................................... 561 REED BUSINESS INFORMATION ...... 561 RENOVA.................................................. 522 RESINEX ................................................. 536 RISO ......................................................... 479 ROAD RUNNER...................................... 328 ROCK ICE................................................ 359 ROSCOLINA............................................ 529 ROTANA .................................................. 492 ROUTE 66................................................ 550 ROYAL ..................................................... 538 RUFFLES ................................................ 494 SAF........................................................... 543 SAFIA....................................................... 486 SALSA CHIPS ......................................... 482 SALVATORE FERRAGAMO.................. 472 SAVOIR VIVRE....................................... 305 SEARA ..................................................... 306 SELECT ................................................... 390 SHENZHOU ............................................ 334 SHOWCASE ............................................ 308 SIGRA ...................................................... 297 SILK-WRITER......................................... 533 SILVANA ................................................. 486 SINTAB.................................................... 510 SINTRAX ................................................. 510 SIR WILLIAM WALLACE...................... 341 SKINBREAKFAST.................................. 401 SKY RADIO P5........................................ 366 SLIM·FAST.............................................. 376 SMACKS .................................................. 429 SMARTCORE .......................................... 532 SMARTIES ...................................... 286, 365 Vol. 95 TMR SMARTMODULE.................................... 532 SMASH - ΣΜΑΣ ....................................... 428 SNS........................................................... 299 SPAZIO KRIZIA ...................................... 427 SPORTS ILLUSTRATED ....................... 327 SPORTS ILLUSTRATED SWIMSUIT... 326 STARBUCKS COFFEE........................... 345 STARBURST ........................................... 345 STEREO 3D INSIDE .............................. 540 STOP PLUTONIUM – L’ARRET VA DE SOI................................................. 410 STREAMSERVE...................................... 354 STRIPECHECK....................................... 414 SUNVISION ............................................ 369 SUPER GLUE QUILOSA ....................... 529 SUPERGLUE........................................... 529 SURFERS ................................................ 301 SWEETY .................................................. 485 SWISS BUSINESS HUB ........................ 532 TALALAY................................................. 290 TAYTO CHIPSTICKS—CRUNCHY POTATO AND CORN STICKS .......... 463 TAZO ........................................................ 495 TAZOS...................................................... 492 TEFLON................................................... 374 TELEVISION FASHION NETWORK ... 412 TERO REAL ............................................ 277 THE RITZ-CARLTON............................. 329 THORPEDO............................................. 283 TIBETISCHE MEDIZIN FNH ............... 536 TICKET.................................................... 304 TIFANY.................................................... 465 TIFFANY ................................................. 465 TIFFANY & CO ....................................... 465 TIGER ...................................................... 467 T-MOBIL.................................................. 571 TOFFIFEE ............................................... 468 T-ONLINE ............................................... 421 TORPEDOES........................................... 283 TRADITIONELLE CHINESISCHE MEDIZIN FNH ................................... 536 TRÉSOR................................................... 296 TRIP TRAP .............................................. 537 TRIPP TRAPP ......................................... 537 581 T-SELECT................................................ 390 TTT........................................................... 395 TU BA GE ................................................ 334 TWEENY ................................................. 484 TWEETY .................................................. 483 TWEETY’S NURSERY ........................... 485 U RAFFAELE UNGARO ........................ 473 UNGARO ................................................. 473 UNION ..................................................... 504 UNION SUPA.......................................... 504 UNITED COLORS OF BENETTON ...... 389 UNITED STEAKS OF AMERICA.......... 424 UNO ......................................................... 454 UNO MONEY TRANSFERS .................. 454 URBAN ACTIVE ..................................... 452 URBAN DEFENCE................................. 452 URBAN SURVIVAL................................ 452 VALENTINO ........................................... 539 VALENTINO RUDY ............................... 539 VARESE................................................... 307 VECTOR .................................................. 414 VEGA ....................................................... 346 VEUVE CLICQUOT................................ 319 VIAGRA ........................................... 297, 489 VIGRO...................................................... 489 VILLA KUNTERBUNT .......................... 292 VIRIDIL ................................................... 374 VISION CENTER SUDAMERICA......... 325 VITA ......................................................... 394 VITALINE................................................ 394 VIVRE ...................................................... 305 VOGUE .................................................... 362 VOLUMATIC........................................... 330 VOLVO..................................................... 507 WE KEEP OUR PROMISES .................. 532 WEGA ...................................................... 346 WELLNESS COTTON ............................ 420 WIBERG .................................................. 387 WINDOWS....................................... 299, 411 WINNER TACO....................................... 296 X.ACTO .................................................... 360 YKK .......................................................... 396 Η ΤΕΧΝΟΛΟΓΙΑ ΠΟΥ ΑΠΟ∆Ι∆ΕΙ ........ 424 ΦΟΡΜΟΥΛΑ 1......................................... 432 R T TTAB – E-Learning June 6 – 26, 2005 Gain confidence in appearing before the Trademark Trial and Appeal Board (TTAB). INTA’s customized Internet-based learning presents an efficient and cost-effective way to learn about successfully advocating before the TTAB. This course is presented in a practical three-part syllabus: Session 1 – Overview of TTAB Proceedings and Strategic Considerations Session 2 – Pre-Trial Procedures for Inter Partes Proceedings Session 3 – Trial Practice and Settlement The course is for attorneys seeking greater knowledge and understanding of TTAB, as well as advanced paralegals and other trademark administrators and professionals. Top reasons to register: • • • • • Learn techniques to prepare your case Increase your success record before the TTAB Avoid costly travel and lodging expenses Experience education from your home or office at your convenience Earn CLE credits Visit www.inta.org/events/e-learning.html to learn more about the convenience of our e-learning courses. Also look for: Advanced TTAB Roundtables Meet colleagues at this interactive and convenient lunchtime discussion held in numerous cities throughout the United States. July 11 – 22, 2005 Visit www.inta.org/events to register and for more information.
