ECTA Bulletin June 2015

ECTA Bulletin June 2015
ECTA Bulletin
CONTENT
Introduction of the President
3
ECTA News
4
Commitee News:
Committee Section
6
Results of the public consultation on geographical indication
protection for non-agricultural products
8
Interviews:
Florent Gevers
10
Sylvia Harding
12
ECTA New members
13
Articles:
Trademark ‘right to use’ abolished
14
Micrus Endovascular LLC Vs DELTA –Case T-218/12
15
Similarity of retail services and the traded goods
16
Uhudler: the unknown story of a special wine
17
New Filing Fee Structure at the USPTO
18
Cases:
Seloger.com, Paris Court of Appeal, Pole 5,First Chamber,
October 14th, 2014, Janny B. / Pressimo on Line et A Se Loger.com
19
Redflag for Red bull’s colour marks
20
Sweden Supreme Court Judgement No. T 301-12/ Layher vs. Mon.Zon
21
Fenty & others (“Rihanna”) vs Arcadia Group Brands Limited & other (“Topshop”)
22
German Federal Supreme Court: Protection of abstract color mark
(September 18, 2014 – Case I ZR 228/12 –Yellow Dictionaries).
23
Ciao Rino!
24
GossIP
25
Editorial Board
26
2 I ECTA Bulletin
INTRODUCTION
OF THE PRESIDENT
“Why another Bulletin?” many of you might ask
this question to yourselves, having this first issue
of ECTA’s Bulletin in your hands. You will say: “I
already read so many publications and I get all
my information via various other media, why
another one?”
But please think twice. Do you really know
about relevant case law in other jurisdictions
apart from your own? Do you really know about
the activities of ECTA’s Committees and all the
various topics and venues of ECTA’s workshops
and seminars, which are free of charge for members? Have you had the opportunity by now to
read a professional and academic evaluation of
EU and national case law on an international basis? Do you really get practical first-hand information about changes in EU trade mark practise
and law on a regular basis? Do you know about
other ECTA members, their careers and how
they can help you advising you or your clients?
Do you know what the ECTA Management really does? Have you had the chance so far to get all
the above for free, just because you are an ECTA
member? Yes? Then you may put this issue aside.
Otherwise, I encourage you to read further:
ECTA has always concentrated in the past on
those trade mark, design and related issues
F. Peter Müller
President
where the interests of the members are and has
refrained from taking a position on matters in
which there is no common viewpoint. By doing
so, ECTA has always been one of the few associations where all viewpoints may be voiced and
discussed and where also minority opinions
come to light. This bulletin will help us in exchanging these viewpoints on a more profound
basis and everyone is encouraged to contribute
with her or his opinion.
The extensive work carried out by the Association so far, following the above guidelines,
combined with the high degree of professionalism and recognized technical capabilities of its
members, has established ECTA at the highest
level and has allowed the Association to achieve
the status of a recognized expert spokesman on
all questions related to the protection and use of
trade marks, designs and domain names and related rights, such as copyrights or unfair competition, in and throughout the European Union.
As such the ECTA Bulletin will help us; institutionalizing our exchange of opinions and information as well as letting us know about changes
of law and practises in jurisdictions of our members, some personal news about ECTA members
and information about the management and
their policies. This will be the only printed version. All other versions will be published online
and will be available on the member section of
the new ECTA website.
Apart from the members of the publication
committee, I would like to express my special
thanks and gratitude to the Chair and Vice
Chair of such committee, Hande Hançer from
Gün + Partners, Turkey, and Craig A. Bailey
from Corsearch, Belgium, as well as Daniela
Derksen, our Legal Communicator and Bárbara
Diaz Alaminos, our Manager Legal Affairs, for
making all this possible and for their hard
and dedicated work over the past year or so.
I encourage all interested ECTA members to
vividly participate in making this Bulletin a real
mirror of all the expertise and knowledge we
have among our members and an enjoyable
lecture, at the same time.
F. Peter Müller
President
ECTA Bulletin I 3
ECTA News
The ECTA news section compiles some of the
major ECTA news of this year.
3.ECTA’S NEW WEBSITE
LAUNCH
You may find detailed information and may
follow the developments via ECTA’s Newsletters at: http://www.ecta.org/publications/
ECTA is pleased to announce the launch of its
new website.
newsletters
1. ECTA’S STRATEGIC PLAN
2014-2020
ECTA’s Council and Committee meetings were
successfully held on 23 and 24 October 2014,
in Tallinn.
ECTA’s Strategic Plan 2014-2020 was approved
by ECTA’s Council. The Strategic Plan has been
developed by 5 teams of Council Members and
members of the Management Committee in
collaboration with the President, F. Peter Müller,
and structured in 5 main areas, namely:
„„Develop Membership Benefits (DMB) /
Aurélia Marie and Pierre Kihn
„„Broaden ECTA`s Expertise (BEE) /
Ruta Olmane and Mladen Vukmir
„„Reinforce External Partnerships (REP) /
Raluca Vasilescu and Andrew Ratza
„„Strengthen the Internal Organization (SIO) /
Fabio Angelini and Max Oker-Blom
„„Broaden Financial Basis (BFB) / Frank Jorgensen and Sozos-Christos Theodoulou
2. ECTA-WIPO LINK
COMMITTEE
The ECTA-WIPO Link Committee was created
and approved during the last Autumn Council
meeting. The new ECTA Committee will cooperate together with WIPO on relevant issues of
common interest for ECTA and WIPO, such as
the Madrid and the Hague systems, the Standing
Committee on trade marks, or the Lisbon Treaty.
The Committee is composed of representatives
from each ECTA Committee. In this regard,
ECTA is pleased to announce that the ECTAWIPO Link Committee will be formed by the
following ECTA members:
Chair
F. Peter Müller, DE
Vice
Judit Lantos, HU
Secretary
Bárbara Díaz Alaminos, Es
4 I ECTA Bulletin
The new website has been modernised in
many aspects and can now also be viewed on
smartphones and tablets. Many features have
been categorised by colour, and navigation and
searches should now be much easier and user-friendly.
We invite you to access ECTA’s new website at
www.ecta.org
4. ECTA ROUND TABLE ON
3D PRINTING AND IP
RIGHTS– UPDATE ON THE
TRADE MARK LEGISLATIVE
PACKAGE
On 11 March 2015, ECTA held a round table on
3D printing and Intellectual Property rights and
an update on the trade mark legislative package.
The round table was started with the opening
remarks, by Sozos- Christos Theodoulou, ECTA
Second Vice Presi-dent. After the opening, the
first speaker, Dr. Michael Konig, Deputy Head of
Unit, Industrial Property, DG GROW- Internal
Market, Industry, Entrepreneurship and SMEs,
updated the delegates on the Trade Mark
Legislative Package.
The second speaker, Benjamin Denayer, Senior
Business Developer Additive Manufacturing,
SIRRIS, spoke on 3D printing and Additive Manufacturing.
This was followed by a presentation of the
second speaker, Rosa Ballardini, Assistant
Professor of the department of Commercial Law
of Hanken School of Economics, who delivered
a presentation on 3D printing and Patents.
The last speaker, Carla van Steenbergen, Legal
Counsel of Materialise, explained 3D printing
from a Design and Copyright point of view.
Lastly, the closing remarks were given by Dr. Max
Oker-Blom, ECTA Secretary General.
The presentations of the round table are available within ECTA web site.
5. ECTA’S COMMENTS TO
THE EU TRADE MARK
LEGISLATIVE REFORM
On 21 April 2015, subsequent to intensive negotiations, the European Parliament together with
the European Council have reached an agreement with the Commission during an inter-institutional discussion on the trade mark reform
package.
The trade mark package aims to upgrade,
streamline and modernize the current trade
mark legislation in furtherance of making Union
trade mark registration systems more accessible and efficient for businesses by having legal
security, lower costs and complexity, increased
speed and greater predictability.
The provisional agreement states amongst others that:
1. 5%-10% of OHIM revenue will be ‘offset’ to
national offices;
2. Funding for cooperation projects is set to be
15 % of the yearly revenue of OHIM;
3. A reduced level of fee is to be paid by applicant and proprietors of trade marks.
The provisional agreement still requires to be
formally confirmed by the European Parliament
Legal Affairs Committee and the Council before
being put to a vote in the European Parliament.
The formal confirmation is expected to happen
in September 2015.
ECTA has been following the trade mark reform
since the Commission had presented the proposals for the reform on April 2013.
Anti-Counterfeiting
Committee
Nathalie Ruffin, FR
Florian Schwab, DE
(substitute)
Design Committee
Mrs. Renate Pouw, NL
Mr. Niccolò Ferreti
(substitute)
Geographical
Indications
Committee
Boris Osgnach, IT
Elio de Tullio, IT
(substitute)
Harmonization
Committee
Tobias Dolde, Es
Robert Flury, CH
(substitute)
Law Committee
Myrtha Hurtado Rivas, CH
Donald Schnyder, CH
(substitute)
Membership&
Disciplinary
Committee
Asfaneh Bauer, SE
Aurélia Marie, FR
(substitute)
Professional Affairs
Committee
Francesco Fabio, CH
Franc Enghardt, NL
(substitute)
Publication
Committee
Alessandro Masetti IT,
Hande Hancer, TR
(substitute)
Internet
Committee
Flip Petillon, BE
Jonathan Agmon, IL
(substitute)
ECTA Bulletin
ECTA has within these years been involved in sending its advice, comments and joint statements with
regards to the trade mark reform. Several of these
documents can be found through the following
links (you can also find them at our ecta website
under position papers: www.ecta.org):
„„Utilization of the OHIM surplus
„„ECTA’s comments on the proposals, of 18
July 2014, for a Regulation and Directive on
the Community Trade Mark
„„Joint paper from BUSINESSEUROPE, AIM,
ECTA, ICC-BASCAP,INTA and MARQUES:
European Trade Mark Package
„„ECTA comments on the Draft Report by the
Committee on Legal Affairs on the proposal
for a Regulation of the European Parliament
and of the Council amending Council Regulation (EC) No 207/2009 on the Community
trade mark (CTM Regulation) and the proposal for a Directive of the European Parliament and of the Council to approximate the
laws of the Member States relating to trade
marks (recast) (Directive)
„„Reform of the European Trade Mark system
– ECTA’s comments on the Proposal for a
Regulation of the European Parliament and
of the Council amending Council Regulation
(EC) No 207/2009 on the Community trade
mark and on the Proposal for amending Directive 2008/95/EC to approximate the laws
of the Member States relating to trade marks
„„Reform of the European Trade Mark system
– ECTA’s preliminary comments on the
Proposal for a Regulation of the European
Parliament and of the Council amending
Council Regulation (EC) No 207/2009
on the Community trade mark1 and on
the Proposal for amending the Directive
2008/95/EC to approximate the laws of the
Member States relating to trade marks
„„Goods in transit: Protection of well-known
trade marks - Letter to Commissioner Michel
Barnier
ECTA would like to thank all members of the
ECTA Committees who have been working
together on the trade mark legislative package
and appreciates greatly all the work which has
been done to secure for a high quality European
Trade Mark system.
6. ECTA’S SUBMISSIONS
TO THE EUROPEAN
COMMISSION
ON PROPOSED
‘STANDARDIZED
PACKAGING’ LEGISLATION
ECTA has been following the developments
on legislative proposals for ‘plain packaging’
and has previously expressed serious concerns
about the effects of such proposals or laws on
trade mark rights.
In this regard, ECTA sent its comments to the
EU Commission, following the notifications
from Ireland and the United Kingdom to the EU
Commission on their intention to implement
plain packaging measures for tobacco products.
ECTA’s comments on the proposed UK Standardized packaging are available at: http://
www.ecta.org/position-papers/detail/ecta-submission-to-european-commission-on-proposed-uk-standardized-packagin.
ECTA’s comments on the proposed Ireland
“Standardized Packaging” Legislation are available at: http://www.ecta.org/position-papers/
detail/ecta-submission-on-proposed-ireland-standardized-packaging-legislation.
7. ECTA PARTICIPATION IN
OFFICIAL MEETINGS
ECTA, through its members, Management
Committee, and employees, frequently participates in relevant meetings held in Brussels
and all over Europe where intellectual property
rights issues of interest to our members and Association are discussed.
Reports of these meetings are made available to
ECTA members through its website.
Information on some of these meetings can be
found below.
„„ECTA DELEGATION MET THE EUROPEAN
INSTITUTIONS
ECTA meetings with EU Officials in Brussels
are organized, amongst others, on the occasion of the Management Committee meetings held in Brussels three times a year.
In this regard, on 11 December 2014,
ECTA President Peter Müller together
with Secretary General Max Okerblom,
First Vice-President Ruta Olmane, Second
Vice-President Sozos-Christos Theodoulou,
and the Manager Legal Affairs Bárbara Díaz
Alaminos met in Brussels with the European Union Institutions.
Meetings were held with Mr. Jessen, Head of
Unit of Public Procurement and Intellectual
Property at DG TRADE, Mrs. Jorna Kerstin,
Director of the Intellectual Property
Directorate of the European Commission,
Mrs. Wikström who is the chair in the
Committee on Petitions, and Mr. Harrby,
Legal Counselor in the permanent
representation of Sweden to the EU.
„„ECTA-OHIM LINK COMMITTEE MEETING
On 27 February 2015, OHIM and ECTA held
their bilateral meeting at the OHIM offices
in Alicante, Spain. The meeting was attended by representatives from ECTA and the
OHIM, among others, the President of the
OHIM António Campinos.
The meeting was a good opportunity to
discuss matters of mutual concern and to
further cooperate between ECTA and the
OHIM.
„„WIPO 15TH SESSION OF THE COMMITTEE ON DEVELOPMENT AND INTELLECTUAL PROPERTY
On 20 and 21 April 2015, the 15th session
of the Committee on Development and
Intellectual Property was held by WIPO
in Geneva. Julien Scicluna, member of the
WIPO-Link Committee, attended the meeting on behalf of ECTA.
„„DIRECTOR GENERAL’S MEETING WITH
NGOS
On 21 April 2015, the Director General’s
meeting with NGOs was held in Geneva.
F. Peter Müller, ECTA President, and Niccolò
Ferreti, member of the ECTA-WIPO Link
Committee, attended the meeting on
behalf of ECTA.
„„EU OBSERVATORY PUBLIC SECTOR REPRESENTATIVES MEETING
On 29 April, Bárbara Díaz Alaminos (ECTA
Manager Legal Affairs) and Annick Mottet
(members of the ECTA Anti-Counterfeiting
Committee), attended the EU Observatory
Private Sector Representatives meeting.
ECTA Bulletin I 5
ECTA News. Committee Section
ECTA Committee Chairs have provided a short
report of their activity.
Register: Part E, Section 5: Licenses; and Register:
Part E, Section 8: Interlocutory Revision. by both parties and the results of these talks
might become public before next summer.
1. LAW COMMITTEE:
The LC’s comments were then assembled with
the other comments offered by other Committees and the whole ECTA’s document was then
remitted to the relevant Knowledge Circles of the
Office for consideration. Subsequently, following
the consultation process, the updated Guidelines
will be submitted to the OHIM Administrative
Board at their next meeting in order for the
President to adopt them in June 2015 and, once
adopted, the Guidelines will enter into force on
August 1, 2015 translated into the other official
EU languages. More or less, at that time the LC
will be then reviewing the new draft Work Package 1-2016 of the Guidelines, revision of the Work
Package 1-2015 which entered into force on February 1, 2015. A busy summer is ahead.
Further, the Committee has almost finished
three projects: The first one to be published is
on “Adwords”. It is a Questionnaire on the National position on Adwords after the European
Court of Justice’s decisions. The purpose is to
understand how National Courts decide on
these issues and to see if the situation in the European Member States is or is not harmonized.
The Law Committee (LC) members have been
quite busy in the first months of 2015.
The most important task which the LC had to
take care of was the review and submission of
comments with regards to the OHIM Guidelines
Work Package 2, 2015. It has now been a couple
of years that OHIM has implemented an open
and cyclical process of review of its Guidelines,
split into two separate ‘work packages’. Basically,
On August 1, 2014, Work Package 2-2014 of
the Guidelines came into force. OHIM thus
undertook a review of such a text to reflect
possible changes in practices mainly as result of
Court of Justice’s case law. The draft Guidelines
of Work Package 2-2015 were published
on OHIM’s website and ECTA (as well as all
other major NGOs) were invited to offer their
comments within a certain deadline. The LC was
tasked with reviewing the following chapters:
Examination: B1. Proceedings; Examination:
B4 AG; Opposition: Part 0: Introduction;
Opposition: Part 3: Trade mark filed by an
Agent; Opposition: Part 5: Trade mark with
reputation; Cancellation: Part D, Section 2:
Cancellation substantive provisions; Register:
Part E, Section 3: Changes in an application or
registration; Register: Part E, Section 4: Transfer;
6 I ECTA Bulletin
By Fabio Angelini (Committee Chair)
2. INTERNET COMMITTEE
The Internet Committee is involved in quite a few
projects and also in a strategic plan with EURid.
ECTA is now a Member of EURid Strategic
Committee. In this position we played a “trait
d’union” in getting EURid and OHIM at the
same table to discuss important and mutually
important plans between these two European
Bodies. Our role was recognized to be crucial
The second one is a Survey on Service Providers Liability in Europe. This Survey has passed
through several updating due to the recurrent
changes in the National Court’s Jurisprudence
on the issue. It would offer a fragmented scenario that still exists in Europe on this matter.
Thirdly we have the Social and Media project
which, amongst other issues, is working on notification forms and addresses of different platforms and social fora in order to take the right
“ad hoc measures” to fight cyber squatting on
platforms such as Ebay, Google, Facebook et al.
We have also particularly focused on the New
gTLDS and their relevant changes and developments that currently occur. A summary shall
follow on this issue.
Future projects may involve “Internet of
Things” and “Internet Architecture” i.e. subject
ECTA Bulletin
matters on the future of the Internet and its
World Governance. By Marie-Emmanuelle Haas (Committee Chair)
and Massimo Cimoli (Committee vice Chair)
3, PROFESSIONAL AFFAIRS
COMMITTEE
The Professional Affairs Committee (PAC) has
been involved in a number of projects and
with 10 assigned “Task Managers”.
Some of these projects are discussed or being
realized in cooperation with the “Harmonization Committee” such as the comparison of
client/attorney privilege and confidentiality in
different EU countries, investigating the practice and enforcement for reimbursing costs
based on decisions of OHIM and studying the
requirements to be recognized as a qualified
trade mark professional and the use of the
term “Trade Mark Attorney”.
Other projects included gathering information
on the kind of unsolicited mails for “payment”
that are being received by CTM owners, the
legal basis of actions available in the different
countries and the existence and effectiveness
of action plans. Following the OHIM Anti-Fraud Network Meeting held in Alicante
it appeared that the action plan prepared by
OHIM was not sufficient and a new plan is to
be prepared which the PAC will be monitoring.
Two other (related) ongoing projects include
the monitoring of the IPR Helpdesk of OHIM
and the various trade mark and design consulting services being provided by national and
regional IP offices at an increased frequency.
Concerns include the subsidized provision of
free services without acceptance of responsibility and the offering of specific advice. It has been
observed that the Nordic and Western areas of
the European Union have seen a considerable
increase in these services while the increase and
impact is more limited in other regions.
Finally, the PAC continues to contribute to the
ECTA Award for students and professionals by
helping to identify the list of IP schools and institutes and volunteering to read and assess the
papers submitted by the contestants.
By Péter Lukácsi (Committee Chair)
4. GEOGRAPHICAL INDICATIONS
COMMITTEE
Early in 2015, the Geographical Indications
Committee (GI) prepared a new position pa-
per on the issue of “comparable goods”. This is
the second contribution of ECTA in this area,
and its purpose is to establish a consistent
and appropriate practice for the examination
of trade marks that may infringe geographical
indications. This paper was submitted to the
OHIM and discussed with the management of
OHIM in February 2015, in the framework of
the annual ECTA-OHIM meeting.
Also earlier this year, our vice chair attended a
conference organized by the European Commission in Brussels on the issue of geographical
indications for hand crafted products. The EU
legislator is expected to issue a new GI scheme
in this field, and of course our committee is
very attentive to this process. Further details
will be provided to the attendees to the Hamburg Conference.
As of March, the Committee has been
working on a project regarding quality marks
(certification or guaranty marks): indeed, the
erratic case law of the Boards of Appeal of
OHIM make it impossible for the owners of
these trade marks to adopt a filing strategy.
In the end, we intend to submit a letter to the
President of OHIM to address this issue.
Lastly, in May a member of our committee
will attend the Diplomatic Conference on
the revision of the Lisbon Agreement on the
registration of Appellations of Origin, in Geneva.
This is of course a very relevant development
in the field of geographical indications, as it is
expected that thanks to this revision the system
will become more successful.
By Benjamin Fontaine (Committee Chair)
5. PUBLICATIONS COMMITTEE
Starting from Tallinn Meeting in October 2014,
the Publications Committee has been working
on reinstituting the ECTA Bulletin and we hope
that you enjoy reading our very first issue of
this new publication.
The ECTA Bulletin, which had already been
published by ECTA for several years in the
past, aims to become one of the continuous
publications of the organization containing
various sections including case-law reports,
articles, updates from individual countries as
well as news from ECTA and its Committees.
In addition to this, you will find interviews
with legendary names in IP, in-house counsels
and the new members of ECTA. In our new
and unique “GossIP” you will find news about
fellow members of ECTA which will help you
know more about our ECTA Family.
By Hande Hançer (Committee Chair) and Craig
A. Bailey (Committee vice Chair)
6. DESIGN COMMITTEE
The Design Committee currently has 16 ongoing projects covering several matters notably
related to design prosecution and enforcement. We would like to highlight the following
projects:
An assessment of the overall impression of
designs by courts/offices includes the preparation of a study aiming to have a guideline documents which will summarize the tendencies
of courts and offices as regards the analysis of
the overall impression of designs. The Design
Committee believes that such paper could be
useful notably for the anticipation of possible
scenarios in the context of the enforcement of
design rights.
We are working to obtain a position paper regarding Filing Strategies having the character
of a report as well as a consultation paper for
practitioners and users.
We are taking an Overview of enforcement
of design rights in non-EU-countries with the
purpose to create an effective and useful guide
regarding the enforcement of design rights in
non-EU-countries; notably for custom authorities and the stakeholders.
There is also Border Measures with regard
to Design Rights; producing a paper with
an overview on the most important issues
regarding border measures together with
practical examples. A simple and practical
guideline document will be relevant for the
applications for customs actions concerning
design rights.
We continue to closely follow the developments of the Design Law Treaty within WIPO’s
Standing Committee on the Law of Trademarks, Industrial Designs and Geographical
Indications. The main goal is the approval of a
recommendation to the WIPO General Assembly to convene a diplomatic conference for the
adoption of such treaty.
The Design Committee understands that
Copyright and the cumulative protection
under design law is an important matter
to discuss based on a comparative study of
different jurisdictions. Finally, a position
paper regarding Spare Parts is being
prepared.
By António Andrade (Committee Chair)
ECTA Bulletin I 7
ECTA News. Committee Section
RESULTS OF THE PUBLIC
CONSULTATION ON GEOGRAPHICAL
INDICATION PROTECTION FOR
NON-AGRICULTURAL PRODUCTS
Edith Van den Eede,
Vice-Chair of ECTA GI Committee,
Praxi Intellectual Property - Rome
Introduction
The Conference “Geographical indication (GI)
protection for non-agricultural products: What
do we learn from the public consultation? What’s
next?” on the results of the public consultation
on GI protection for non-agricultural products
was organised by the European Commission (Intellectual Property Unit team of DG GROWTH)
and held in Brussels on the 19th of January 2015.
The conference, attended by ECTA, was set up
to present and discuss the overall trends resulting from the consultation on the Green Paper
“Making the most out of Europe’s traditional
know-how, a possible extension of GI protection of the European Union to non-agricultural
products”, to which ECTA submitted its contribution in October last year.
The number of replies (136) received on the
public consultation indicates a strong interest
in the matter. Almost 60% of the replies came
from producers and associations and organisations representing producers. Furthermore, 18
EU-Member States or their authorities replied
to the consultation. Overall, responses came
from 21 EU-Member States (the UK, France,
Italy and Spain being the top 4 EU countries
contributing) and 6 non-EU-Member States.
The majority of replies were in favour of improving the current protection status of GIs for
non-agricultural products. The points triggering
the most comments were the need for action
at all, the necessity for sector-specific rules, the
nature of the link to the territory and how the
monitoring/enforcement of the product specifications of such GIs should ideally work.
Need for action
Most respondents (almost 70%) believe that the
current protection is insufficient. Generally,
consumers are deemed to be confused about
products’ origin. Increasing protection would
8 I ECTA Bulletin
enhance security and make the EU more attractive to third countries’ consumers and partners. In addition, it is believed that an increased
protection would enhance the enforceability
of rights and, at the same time, decrease losses
stemming from counterfeiting.
As a consequence, in the view of the majority of
the participating stakeholders, EU-wide GI protection could increase legal security and allow
better joint action against infringements, while
limiting imitators. Furthermore, competitors
would be protected against an over-reach of GIs
by providing clear rules e.g. on product specifications. The majority feel that the system would,
in any event, not interfere with free trade if put
in place properly.
According to a minority of stakeholders, however, there is no need for action since producers
can already rely on the national protections and
the trade mark system (and that, although the
system would be optional, they may feel compelled to join it and invest in its maintenance).
Harmonisation of national laws
versus unitary EU system
While there is a consensus that in any event
the system should be user-friendly and transparent, 60% of the respondents would prefer
the creation of a unitary EU protection system while only 5% are in favour of the mere
harmonisation of the national laws on this
point. More replies supported not maintaining
national systems in parallel to a new EU system
(34% versus 24.3%).
On the notion of GIs
The majority of participating stakeholders are in
favour of including non-geographical names
associated with a given place, provided that
strict and cautiously defined rules are given
and that their implementation is carefully controlled.
With reference to the definition of the products, the cross-cutting approach appears to be
preferred. There seems to be a consensus that no
exclusions should be allowed, to avoid the risk
of a WTO challenge. However, there was an interesting suggestion to exclude products whose
production or use would be contrary to public
order or morality, national or EU legislation and
international treaties (e.g. ivory carvings).
Eligibility criteria
In general, stakeholders advocate a strong link
to the place of origin. There is some support for
two kinds of links, but also a fear that two different links might confuse consumers (references
were made to the Report of the European Court
of Auditors of 2011, highlighting consumers’
confusion due to excessive labelling in Europe).
Also, a new link has been suggested, in particular
a loose link which would range from products
whose raw materials come from a specific area
to products with a link more focused on locally
developed know-how.
With reference to the quality and product
specification, it is clear that there should be an
objectively defined quality benchmark. Many
commented however that the definition of
the quality benchmark should be left to producers or competent local authorities. There
is also support for checking the characteristics
during the whole protection period of the GI.
It was agreed upon that the minimum requirements of the product specification and that either quality, reputation or other characteristics
should be needed (so as to be in conformity
with the TRIPS agreement). Some stakeholders
would prefer to add conditions related to transportation and storage.
On the scope of protection
The majority of stakeholders appear to be in favour of a high level of protection as provided
in the agricultural field, including an “ex officio
ECTA Bulletin
protection” which would require the competent national authorities to intervene. However,
some stakeholders argue that the current protection for agricultural products goes too far.
Procedural aspects
A clear majority (over 70%) of the replying
stakeholders appear to be in favour of the granting of GI protection through a registration process. The main argument is the legal certainty;
also, public availability through a register is held
to assist in discouraging imitators.
The majority is in favour of involving national
expertise in the registration procedure. Strict
deadlines should be imposed to avoid lengthy
proceedings.
Also, from the responses it is clear that there
should be an objection procedure during the
registration process, which should also be open
to third countries.
Fees and period of registration
A more controversial issue is the possible
fees. Most stakeholders are in favour of the
payment of a fee as long as costs are not too
high, so as not to exclude SMEs. 52% are in
favour of an unlimited duration of protection
with a possibility of cancellation (e.g. when
the product does not comply with the
protection requirements or the corresponding
specifications).
Relationship between GIs and
Trade Marks
Most stakeholders appear to be in favour of
following the EU agricultural GI system in
place. It is felt that there is no need to
differentiate between agricultural and
non-agricultural products.
In light of the public aspect of GI protection,
many stakeholders therefore insist that
under certain circumstances (as under the
agricultural GI system in place), the GI should
prevail over a trademark; however, co-existence
should be possible.
Enforcement / monitoring
A majority of stakeholders is in favour of a
combination of a private and public system.
In particular, it is believed that GI protection
should be granted by an independent and
(preferably public) authority, while during the
products’ life the controls should be affected by
authorized private bodies, but with an ex officio
support for the enforcement of the GI rights.
A detailed report on the conference and
a formal summary will be made available
on the European Commission’s website:
http://e c .euro p a .eu/inter nal_market/
consultations/2014/geo-indications-non-agri/
index_en.htm).
ECTA Bulletin I 9
ECTA Interviews
INTERVIEW: Florent Gevers
Florent Gevers:
‘‘Three Strikes and
You’re In!’’
Florent as a family man
If you had to describe Florent in one word, it
would be “FAMILY”. Florent is, indeed, all about
Family.
The home he is living is the one of his parents.
Entering this house you straight can feel this
atmosphere and you would start wishing you
were one of his 16 grandkids who get to play in
the yard and run around the halls on rainy days.
His sense of family and pride in being a grandfather are confirmed when he takes you upstairs
to view his “Family Tree” which is a painting
more than 2 meters high and starts with his
great grandfather up to recent births.
Founded in 1898 by his grandfather (Jacques),
The Gevers Company became an authoritative
name in Belgium for Intellectual Property matters. Even through two major wars that forced
the Gevers family to operate from abroad
(Jacques took the business to Holland in 1914
and Vincent, Florent’s father, lived in France,
Portugal and England during WWII). The Gevers
Company continued to thrive and grow into
one of Europe’s premier agencies.
The Gevers’ family comes from a special group
of Belgians whose mother-tongue is French, but
lives in Flemish cities like Antwerp or Ghent.
This community tends to be influential in business and the arts as shown by one of Florent’s
ancestors Marie Gevers, a known writer of
bucolic poetry who was encouraged by Emile
Verhaeren. Her poetry reflected her love of the
simple, country life and she was the first woman
to be elected to the “Académie Royale de Langue
et de Littérature Françaises de Belgique” (Royal
Academy of French Language and Literature in
Belgium) in 1938. In 1960, she was awarded the
grand quinquennial Prize for French Literature
(reference Wikipedia).
Florent was not one to set on his laurels and
simply reap the benefits of being a Gevers. Everyone I spoke with described him as passionate, focused, demanding of himself and those
around him, a person with strong beliefs and
very loyal to those who acquired his trust.
Before taking a position of any importance in
the firm conditions were set requiring family
10 I ECTA Bulletin
members to have higher and multiple degrees
and to study and work abroad. Florent studied
at the University of Strasbourg, one of the first
European universities with a specialty for Intellectual Property. He went on to become qualified as both a Patent and Trademark attorney
and practiced actively in both areas. One of the
many accomplishments he mentions with pride
is the status of The Gevers Company in both
patents and trademarks and how they gave
equal importance to these two areas of IP law.
Evolving businesses at the
primary stage
Florent Gevers has been very influential to many
developments in the world of IP. One of his
most visible accomplishments was the founding
of CompuMark. Vincent Gevers (his father) believed in the creation of advanced strategies to
conduct trademark searches. Florent, along with
his brother Jacques, began to take these ideas and
give them form. New search capabilities were developed and plans were made to sell searches to
fellow professionals in the field. It became apparent that doing this as Gevers would be difficult
so they created a new enterprise to facilitate this
new endeavor and CompuMark was born.
Florent remembers those early days fondly.
Trademark lawyers embraced this new approach to searching and he talked about punch-
cards and microfilm. There was an immense
amount of manual work applied to the creation
of the databases and search strategies would be
adapted with more understanding and as case
law would dictate.
Early clients of CompuMark were from France,
Germany and The Netherlands and the available
databases included Belgium, The Netherlands,
Luxembourg, The Federal Republic of Germany
and France. More registries were added and Rik
Moeremans, an early employee of CompuMark,
recalled the decision to hold the first Roundtables in the United Kingdom in Sheffield as a
testament to the silver industry and some of the
first uses of trademarks known to man. Florent
was never one to overlook history.
Today, CompuMark remains one of the premier
providers of trademark searching and watching and, as part of Thomson Reuters, is known
around the world for their service to the field of
Intellectual Property.
Another project in which Florent was
instrumental was in the creation of a single
trademark system for the Benelux. Belgium,
Luxembourg and The Netherlands first started
to join forces in 1944 when they signed a joint
customs agreement (Belgium and Luxembourg
previously had an agreement). In 1958, following
the signing of the Treaty of Rome in 1957, the
ECTA Bulletin
Benelux Treaty of Economic Union was signed.
It was generally accepted these three, small
countries believed a unified Europe might
weaken their spectrum of influence spurring
them to form their own agreement.
In 1962, the Benelux Convention on Trademarks
was signed and this was followed by the Benelux
Convention on Designs in 1966. Florent was a
driving force behind these agreements and the
subsequent filing of the first Benelux trademarks
in 1971. He, together with other members of the
legal community, believed the idea of a unified
trademark system was a logical step following
the economic union and pushed for the creation of the Benelux Trademark Office. Not so
coincidentally, the first trademark searches of
the new office were done by CompuMark.
Joining ECTA and expanding
business
ECTA established its roots in 1980 and Florent
Gevers was there from the beginning. It became
Florent’s IP family where his wife Marie-Rose
(endearingly called Mimi) accompanied him
on all occasions. A small group of visionaries
believed an organization dedicated to European Community trademark issues was needed as
Europe became more integrated. Eric Wenman
(founder and 1st president), Martin Tierney, Jean
Charrière, Günther Peters, Fabrizio de Benedetti,
João Pereira da Cruz and David Tatham were all
part of this and would all serve as ECTA President over the coming years. Florent became
widely appreciated and respected for his work
as Secretary General and his energy and passion
were one of the reasons for the growth and success of the organization.
When the eventual start of OHIM and the CTM
came about in the mid 1990’s professionals in
many of the smaller countries started to consider how their markets would be impacted. Florent and Jacques Gevers came to the conclusion
that the number of Benelux marks filed from
abroad would fall drastically. With little confidence that they could fill the void through domestic applications they began to consider how
they could entice large international clients to
continue filing through Gevers.
Looking at the regulations and filing requirements it became apparent that countries with
a language not among the 5 base languages had
an interesting advantage. By filing a CTM with
Dutch (Flemish) as a primary language and English as the second choice a firm could virtually
guarantee that legal matters would always be
handled in English. With strong English capabilities among the Gevers’ staff and this plan a
series of seminars were planned in the USA.
Jean Pire, a motivated and connected member
of their team, met with more than 500 firms and
companies in less than a 2-year period.
The result of this strategy was staggering. In
the first years, Bureau Gevers filed 3 times more
CTM marks on behalf of their clients than any
other firm. The totals were so impressive that
the firm won the 1997 Export Award from
the Belgian Royal Family and the firm remains
among the leaders every year since.
The Gevers Company might be a beneficiary of
the system, but Florent is also a very big fan of
the CTM Regulations. He describes Alexander
von Mühlendahl as “the author of one of the
best-written laws in the European Union”.
Nonetheless, he continues to disagree with
the concept of use in one country constituting
use in all countries and has authored pieces
regarding the Onel decision among others that
address this issue.
He remains fascinated in case law and has been
published numerous times addressing different decisions. I recall him approaching me years ago after
the “Baby Dry” decision when he had the idea of a
title to get the attention of Americans. Alluding
to their national sport of baseball he came up
with “Three Strikes and You’re In!” referring to
the numerous refusals Baby Dry withstood before finally getting approval. It was pretty clever.
He continues to be published, and was recently a co-author to “The Future Prospects for Intellectual Property in the EU: 2012-2022” with
Emmanuel Cornu (Simont Braun, Brussels) with
whom he also shares involvement for “Revue
de Droit Intellectuel-L’Ingénieur-conseil”, an IP
publication in Belgium. He has spent the last
25 years as chairman of a special governmental
advisory board for IP in Belgium and has done
extensive work with AIPPI.
the world completed the answers relating to
their respective countries to create the first
interactive database on these matters. From
1995 to 2010 E-Mark was a primary resource for
trademark attorneys throughout Europe and
North America.
There are a few specific areas that Florent has taken unique interest. He has a lot of appreciation
for WIPO and was present at the signing of the
Madrid Protocol…even meeting the King of Spain
at the time. This broadens to a special interest in
geographical indicators and he referred to the Appellations of Origin as an “Ugly Duckling” and proceeded to describe the difficult relationship these
have with trademarks. He has spoken extensively
on the subject receiving invitations from as far as
Australia to lecture on the matter.
Like most people who have been busy all their
lives, retirement hasn’t changed him much.
Florent is an active member of the Rotary
Club and participates and coordinates special
programs providing food to the needy. Much
of his work is locally based…giving back to the
community that has treated him and his family
so well over the years. He celebrated his 50th
wedding anniversary to Marie-Rose (Mimi) in
2011 by going to Morocco with all 5 of their
children and families.
When asked about his reflections on his years
working in IP Florent took a minute to gather his
thoughts. 50+ years are impossible to generalize
into a few comments. He then expressed how
fortunate he has been to work in trademarks.
He considers the “real world” feel of the trademark business to be an exciting element and the
people in our business, although competitive,
appear to work in a much friendlier and more
ethical way than in many other areas of business.
He is clearly proud of being a part of this sector
and of his contributions to its progression.
Then he put another log on the fire.
One, special, unaccredited publication was
his creation of the E-Mark questionnaire. The
Gevers family formed a new company in the
1980’s to serve the data and information needs
of their IP agency. Much like the CompuMark
experience, Intellectual Property Network
(“IPN” and later known as EDITAL which eventually joined with Corsearch and is the employer
of the writer) started developing products that
were useful not only for The Gevers Company,
but other firms as well. One special product was
E-Mark; a unique resource of worldwide trademark law and practice formed into a questionnaire of 31 Chapters covering every aspect of
protection. Florent created this intricate questionnaire and his friends and colleagues around
By Craig A. Bailey
Senior Business Development Account Manager
Corsearch Europe | Wolters Kluwer Corporate
Legal Services
With special acknowledgement to Sandrine
Peters for her contributions.
ECTA Bulletin I 11
ECTA Interviews
INTERVIEW: Sylvie Harding
Sylvie Harding:
“A cœur vaillant rien
d’impossible”
(For a valiant heart
nothing is impossible)
First encounter
I met Sylvie a few years ago, and we immediately got along very well. How could it be different
when you know Sylvie: curious, courageous, passionate, demanding but open-minded, who loves
the multi-cultural environment, and especially
her fellow IP colleagues from around the globe?
For those who do not know her, a short resume of her background and career will help
you better understand what a formidable
woman she is. Sylvie has a double background
of management and intellectual property
at the French Universities of Dauphine and
Pantheon-Assas. She started her professional
career in the pharmaceutical industry at Servier before leaving France for the United States
where she lived with her husband and family
(her two daughters were toddlers at that time)
for several years. Unable to work there due to
the US work regulations, she became a volunteer in helping the creation of Welcome services for non-US resident expatriates. This experience encouraged Sylvie and motivated her
to work in an international environment. After
four years outside France, Sylvie re-invented herself professionally and resumed her IP
studies where she obtained a Doctorate (DEA).
Joining ECTA and expanding
business
It was quite natural that on her return to France,
she got involved within ECTA to exchange with
colleagues from around the globe, continue
learning and stay up-to-date on advanced
subjects relating to IP.
ECTA’s conviviality and the quality of
its members, the topics, exchanges and
events were key to Sylvie’s involvement
in the association and a real boost to her
professional career. Very active at ECTA since
her membership registration in 1998, Sylvie
enjoyed taking part to ECTA Committees,
like the Internet, the Harmonization, the
Membership Committees, and since 2007 the
12 I ECTA Bulletin
Anti-Counterfeiting Committee despite her
role as In-house lawyer at Chanel being also
very demanding. Always very active, she was
specifically delighted to organize the 2007
ECTA Conference in Deauville, which required
skills, team spirit and personal commitment,
but what an extraordinary experience!
She also enjoyed taking part to the discussion
and excitement around topics that could
change and give rise to significant case law
(like the IP Translator decision) or modify the
legal framework (like the new EU Regulation
608/2013 on customs enforcement of
intellectual property rights).
Sylvie likes challenges and is indeed always trying to stay ahead of new challenges, like the ever-changing counterfeiting landscape and the
rise of counterfeiting issues due to the proliferation of goods on the Internet, use of e-commerce and the development of social media.
For Sylvie, facilitating industry cooperation
with administrative and law enforcement
bodies is key to building effective mechanisms
against counterfeiting networks (e.g. building
partnership, developing powerful enforcement
database), address the digital challenges and
solve the IP issues that the Industry faces today.
As such, Sylvie strongly believes that ECTA
has a significant role to play for developing
and advocating the Industry members and
ECTA’s positions with national, regional or
international instances, raising awareness,
assessing proposed regulations and statutes,
and addressing Industry concerns. ECTA has
also a responsibility towards the young lawyers
and students who must continue investing in
the association and bring their youth, liveliness
and digital knowledge, which are essential
in order for ECTA to strive for greatness and
continue to offer quality representation in
roundtables, workshops and conferences.
Advocacy and tutoring are the next challenges
that ECTA would need to nurture and develop.
Be sure that Sylvie is more than ready to roll up
her sleeves with her ECTA friends to help ECTA
proceed to the next level.
By Karine
Disdier-Mikus
ECTA Bulletin
ECTA NEW MEMBERS INTERVIEW
ECTA would like to welcome its new members.
In this context, the Publications Committee recently distributed a questionnaire to those who
joined in the last two years which revealed some
interesting things about our members.
The new ECTA Members represent fascinating
individuals: very dedicated to his or her job
while at work, but also extremely enthusiastic
about enjoying spare time by writing, listening
to music, doing sport and travelling.
Jaeyeon Ju of Kyeol IP & LAW Firm (Republic of Korea) says “My travelling begins with the
preparation to travel with my children. And after
coming back home, our family makes a little book
with photos and pamphlets which we got from
the travelling spot”. Well, you will never know,
sooner or later you may have the opportunity to
share your experiences with other ECTA Members too….stay tuned!
While trademarks are the focus of most of their
practices, New Ecta Members may see themselves working with patents or other law related
sectors, such as International Trade Law, Commercial Law, Tax Law or Real Estate Law, as in
the case of Dr. Tamás Kocsis M. of Kocsis &
Szénássy Ügyvédi Iroda/Law Firm (Hungary).
interaction with the members from many
countries since it brings together persons
and companies including attorneys, lawyers
practicing in industry and private practice,
advisors, agents and all others who can be
considered specialist practitioners in these areas.
Moreover, talking about goals to go along with
ECTA Membership, Jeroen Muyldermans of Altius CVBA (Belgium) is also clear on that “Since
my interests aside trade marks also extend to designs, a right which I feel does not get the attention
it deserves by the industry and legal practitioners,
I would like to join the design committee, inter
alia to study and promote the array of legal possibilities offered by design rights”. Contribution to
ECTA through the involvement in a committee
is very much appreciated: it can be tough sometimes, but incredibly valuable!
ECTA maintains contact with the Eurid, the
European Commission, the European Council,
the European Parliament, the OLAF, the national Patent and Trade Mark Offices, WIPO as
well as the OHIM. New ECTA Members have
been asked what would they do that might be
different if they were OHIM President for a day.
There were suggestions on possible initiatives
to increase awareness on trade mark protection as in the case of Ernest Schuch of Schuch
IP (New Zealand) “(I would) organize a high
profile public event in a capital city that draws
attention to the value of brand recognition in
our everyday life and how it effects our decision-making from the foodstuffs we purchase to
the electronic devices we use”.
We again welcome our newest ECTA
Members and thank them for all their
valuable contribution.
Prepared by: Irma Spagnulo
Merico legal
[email protected]
However, there is also some that may see themselves doing something completely different such
as “studying or teaching history or being a cook in
a Chinese restaurant” as is the case of Jonas Shi of
China Ipwell International Law Firm (China).
New members are very often introduced by colleagues or by word-of-mouth. But it must also be
remembered that, in order to strengthen the cooperation and exchange with academics, ECTA
decided to grant awards to individuals who have
written an article or an essay of importance for
the development of European Trade Mark law,
as it is the case of Leonardo Machado Pontes
of CEIPI (France) “The CEIPI announced the ECTA
Reward for the student category and I wrote an
article and won the prize”. Well done!
New members have clear ideas on the value
of their ECTA Membership, which of course
helps in receiving updates and information on
IP practice through the ECTA website, but also
through flash newsletters, the publication of law
books, the organization of workshops, as well
as annual conferences in different countries
of the European Union. In addition, ECTA
Membership gives also the possibility to enjoy
ECTA Bulletin I 13
ECTA Articles
Author: Ignacio Temiño Abril
Abogados,Madrid, Spain
[email protected]
Trademark “right
to use” abolished
Spain harmonizing trade mark
practice with the European Union
Spain has finally harmonized its trade mark
practice with the European Union regarding
a very conflicting issue: the right of use arising
from a trademark registration. According to the
Spanish Trademark Act (art. 34), the trademark
registration grants its holder the right to use it
and to exclude others from using it without his
consent.
This duplicity of rights, granting positive and
negative faculties to any registrant has been used
as a “safe harbor” for some applicants seeking
for immunity on certain trademark uses, which
under normal circumstances would amount
to a clear trademark violation. The Spanish
Courts, providing a broad interpretation of the
aforementioned provision of our Trademark
Act, have traditionally granted that immunity to those infringers obtaining a registration
posterior to a plaintiff enforcing its rights. Indeed, the Courts previously required the cancellation of the trademark registration held by the
infringer. This requirement increased the costs
and delayed the enforcement considerably.
DENSO Case
Now, following the judgment of the Spanish Supreme Court dated October 14th, 2014
(“DENSO” case) this practice has been abolished. The reason of this new doctrine, according to the words of the Court, is the ruling of
the EU Court of Justice in the Fédération Cynologique Internationale case (C-561/11, February 21st, 2013), which must be respected in
order to harmonize the Spanish system with
the Community practice.
14 I ECTA Bulletin
In the DENSO case, the conflict involved a
German and a Spanish corporation, which
had a long commercial relationship, including
share ownership of the Spanish by the German
company.
The Spanish company had registered in Spain in
1944 the word mark “Denso”, this registration and
its use was implicitly authorized by the plaintiff
until 2013, when the commercial relationship
between the two companies ended. The main
infringement action filed by Denso Holding
GmbH & Co. on the basis of its prior international
registrations covering Spain was rejected by
the Mercantile Court of Barcelona, as well as
the subsequent appeal. The courts decisions
for the rejection were actually based upon Art.
34 of the Spanish Trademark Act, according
to its interpretation by the Spanish Supreme
Court: the plaintiff did not pursue a nullity of
the defendant’s registration before initiating the
infringement action.
We should remember that this doctrine was
not new for the ECJ since a similar reasoning
was applied on February 16th, 2012 on a design
dispute (Case C-488/10, Celaya Emparanza y
Galdos Internacional), however, the Spanish
Supreme Court had not officially abolished its
interpretation of art. 34 in the Trademark field.
Verifier: Rosalia Ballester
Attorney at Law
Managing Partner
Ballester IP, Alicante, Spain
[email protected]
ECTA Bulletin
Micrus Endovascular LLC Vs DELTA –Case T-218/12
DELTA seeking registration
By judgement of the General Court (GC) issued on the 10th September, 2014, a CTM
application composed of the word DELTA,
sought for registration by Micrus Endovascular
LLC to designate “Medical and surgical devices,
namely, microcoils used for endovascular surgery for the treatment of aneurysms” in Class
10, was finally refused after a long opposition
period initiated by Laboratórios Delta, Lda., on
the 6th October, 2008.
The Opponent
The opponent has opposed national trademarks essentially composed of the same word
DELTA (although in the following version:
“DELTA PORTUGAL”), registered to designate
in Class 5 “Pharmaceutical products”.
Concerning the relevant public and its level of
attention it is worth mentioning that the GC
considered that irrespective of whether the
goods referred to in the trade mark application
are used by “professionals in endovascular
surgery” or solely by “brain surgeons”, it should
be noted that, in either case, the public is highly
specialized, particularly in the treatment of
aneurysms, and is particularly well informed
and attentive. Regardless, since it could not be
excluded in this case that the relevant public,
composed of highly specialized surgeons, may in
certain circumstances use the “pharmaceutical
products” protected by the earlier trade mark,
especially if deemed necessary before, during
or after a surgical procedure upon examination
of the relevant patient, to administer those
pharmaceutical products at issue, it was
necessary to take that public into consideration
when assessing the likelihood of confusion
between the marks at issue.
Comparison between goods
As for the comparison between the
goods in question, the GC sustained that,
notwithstanding the different nature of the
goods in question and the fact that there are
differences between their distribution channels,
by reason of their similar commercial origins
and complementary nature, the goods at issue
were – at least to a certain extent – similar for
the purposes of Article 8(1)(b) of Regulation No.
207/2009. The GC did not see any differences
between the trade marks in question, and
concluded that there is nothing in the graphics
of the earlier Portuguese trade mark , viewed
as a whole - “DELTA PORTUGAL”- that could
be regarded as being of such significance as to
give rise to remarkable differences between that
mark and the applied for mark.
João Paulo Mioludo
Lawyer Associate
CMS Rui Pena & Arnaut
[email protected]
Likelihood of confusion
On the global assessment of the likelihood of
confusion, the GC sustained that where the
signs in question are identical or highly similar
it must held that, closely following the rule set
out in GEORGIO BERVERLY HILLS, the different
factors to be taken into account are interdependent. The GC stated that the Board of Appeal
did not err in concluding that the possibility of
a likelihood of confusion between the marks at
issue cannot be excluded, notwithstanding the
high level of attention of the particularly specialized relevant public concerned.
ECTA Bulletin I 15
ECTA Articles
Similarity of retail services and the traded goods
Author: Karin Stumpf
Mag.phil.German Patent Attorney European
Trademark and Design Attorney Stumpf
Patentanwälte PartGmbB,
Stuttgart, Germany
[email protected]
Similarity of goods and services
The question whether goods and services are
to be considered as similar when evaluating
the likelihood of confusion of trademarks is
problematic in view of their basic differences.
The production and distribution of “physical”
products differs basically from the rendering of
“incorporeal” services. Only under special circumstances, such a similarity is confirmed by
the trademark authorities.
Case Law
According to settled case law of the OHIM and
the European Courts, the similarity of retail services with goods and the traded goods is generally confirmed.
According to a Judgment of 24 September 2008
in re T-116/06 (The O-Store), the European
Court concluded as follows:
(57) It is indisputable that those services and
goods display similarities, having regard to the
fact that they are complementary and that those
services are generally offered in the same places as
those where the goods are offered for sale.
This finding was confirmed by the Judgement
of the European Court of 15 February 2011 in
re T-213/09 (Norma / Yorma’s). The retail services with respect to foodstuff claimed by the
trade mark YORMA´S have been held similar
to foodstuff, since they are to be seen as supplemental due to their close connection. The Court
held that services rendered within the scope of
retail are in particular the selection, bringing
together and display of various goods, enabling
customers to purchase them. The retail service
would be useless without the goods covered by
16 I ECTA Bulletin
the earlier mark. There is a close connection between said goods and the retail services.
In its Judgement of 14 May 2013 in re T-249/11
(Sanco, S. A. / OHIM [Marsalman, S.L.), the
European Court argued in favour of a similarity
from the viewpoint of goods/services complementing one another between i.a. “wholesale
and retail trade in all sorts of foodstuffs” on the
one hand and “meat, poultry and game as well
as live animals” on the other hand. The appeal
lodged by the OHIM was recently dismissed by
the European Court of Justice in its judgement
of 08 May 2014 (C- 411/13 P).
Germany
At the time when this issue started to be relevant, the German authorities had serious concerns regarding the confirmation of a similarity
between retail services and the traded goods,
arguing that the close connection and the fact
that the services and goods are “complementary” would not be sufficient to confirm a similarity. According to the Office, this would lead to
a too large extension of the scope of similarity.
In its decision of 31 October 2013 in re I ZR
49/12 (Otto Cap), the German Federal Court
of Justice (FCJ) has thoroughly discussed the
relationship between the goods in class 25
‘articles of clothing’ etc. and the retail services
related thereto. It came to the conclusion that
the retail services and the traded goods are to
be considered as similar, because large trading
houses in this field of activity often distribute
goods with their own trademarks in addition
to selling third-party goods (see also FCJ decision of 14 April 2011 in re I ZR 41/08 (Peek &
Cloppenburg II)). What essentially matters is
the prevailing commercial practice in the goods
sector and services sector in question that shape
the public’s opinion, and not whether the plaintiff also markets products under its own brand
in this sector, according to the FCJ.
The German Federal Patent Court followed this
legal opinion in various decisions (e.g. recent
decision dated March 25, 2015 in re 29 W (pat)
532/12, MELVITA / MEVIDA, still unpublished)
and confirms a likelihood of confusion in such
cases, provided that the trademarks at issue are
highly similar, and that the earlier trademark enjoys at least an average degree of distinctiveness.
In this particular case, retail services with cosmetics and cosmetic products have been held similar.
Verifier: Dr. Kerstin Gründig-Schnelle
Attorney, Lichtenstein Körner & Partner,
Stuttgart, Germany
[email protected]
ECTA Bulletin
Uhudler: the unknown story of a special wine
Authors: Sozos- Christos Theodoulou
and Lisa Lederer
Verifier: Dr. Rainer Beetz
Few wines are as intrinsically tied to cultural
tradition and identity as is the “Uhudler” of the
Austrian region of Südburgenland to its inhabitants. Uhudler, which has a particular taste, is
usually made of red grapes, which give the wine
a tender rosé to brick-red complexion; more
rarely, it is pressed from white grapes and has a
light yellow to straw-yellow colour.
When the phylloxera, a grapevine louse introduced from the US, destroyed vineyards
throughout Europe and reached Austria in
1870, wine growers tried to find means against
this pest. The most effective way proved to be
growing American vines, because of their phylloxera resistant quality, or crossing them with
European vines. However, wine pressed from
these varieties tasted different from the “noble”
wine the Europeans were used to and therefore
did not appeal to the population. A similar case
to Uhudler is “Cévennes” in France.
In the course of the twentieth century, Uhudler
was brought into discredit. Accusations against
inter-specific crossings (“Direktträger”) were
raised, claiming their wine constituted a health
risk due to its high content of methanol and fusel
oils, produced during fermentation. In 1985, a
general interdiction of putting Uhudler on the
market was eventually introduced. A few years
later, in 1992, an amendment introduced Uhudler
back into the Austrian Wine Law. However,
it was only permitted to sell the wine in the
municipality of the producer, within the region
of Südburgenland. According to current EU and
Austrian legislation, the main vine varieties used
to make Uhudler are temporarily authorized until
2030, after which their future - and, consequently,
the future of Uhudler - remains uncertain.
What is the Intellectual Property protection
of Uhudler, if any? Well, to start with, there
are just five relevant national trademarks in
Austria, out of which two have ended. From
the rest three, two belong to private wineries
and only one (!) is owned by the association
“Freunde des Uhudler” (“friends of Uhudler”).
Although this mark is individual, a quality
control of the produced wine, on the bottles
of which the mark is placed, is conducted by
an independent jury. A worrying factor is that,
in the list of goods of one of the privatelyowned marks, the word “Uhudler” is used in
a generic way. With regard to domain names,
the situation is not better: all main generic
TLDs, encompassing the word “Uhudler” as a
whole, belong to private wineries and not to an
organization of the producers.
The Austrian legislation provides for PDO (Protected Designation of Origin) protection of its
wines, under the DAC (Districtus Austriae Controllatus) sign, but Uhudler does not fall under
this category. As to plant variety protection, it
is rather irrelevant in the case of vines making
the Uhudler, since these are directly produced
vines by nature, the human intervention being
very limited. Further, the varieties are far from
being new…
In our opinion, while fighting for the permanent
authorization of the vine varieties of Uhudler
before the appropriate fora, the organized producers should, at the same time, better manage the Intellectual Property protection of this
wine. A collective or certification (where available) trademark would be a safer way towards
the future, as it would also guarantee a more
controlled domain name policy. Additionally,
a form of geographical indication protection
would be recommended, so as to put the product on the tourist and export map.
ECTA Bulletin I 17
ECTA Articles
ECTA Bulletin
New Filing Fee Structure at the USPTO
Author: Peter Spies
Dineff Trade Mark Law Limited
[email protected]
Reduced trade mark fees USPTO
On January 17, 2015, the United States Patent
and Trademark Office (USPTO) reduced certain
trademark fees and introduced a new TEAS Reduced Fee (TEAS RF) filing option.
TEAS Reduced Fee (TEAS RF) is a new application filing option with a fee of $275 per class
of goods/services, which promotes electronic
communication and application processing
while giving applicants more flexibility in identifying their goods and/or services.
TEAS PLUS
The TEAS Plus initial application fee was reduced by US$ 50.00 to US$ 225.00 and continues to offer the lowest filing fee option for new
applications on the Principal Register. TEAS Plus
filings have the strictest requirements. In addition to the minimum filing requirements, TEAS
Plus applications must include the following at
the time the application is filed:
„„The filing fee for all classes listed in the application;
„„An identification of goods and/or services
taken directly from the USPTO Trademark
ID Manual;
„„Certain mark-related information, if applicable, e.g., translation statement regarding
non-English wording, color claim and description for marks featuring color;
„„A correspondence e-mail address and authorization for the USPTO to send e-mail
correspondence concerning the application
throughout the application process.
Also, TEAS Plus applicants must agree to electronically file, through TEAS, certain application-related submissions that may be filed
18 I ECTA Bulletin
during the application process, such as voluntary amendments and responses to Office
actions. An applicant who files a TEAS Plus
application but does not satisfy the relevant
requirements will be required to submit an additional processing fee of $50 per class of goods
or services.
TEAS Reduced Fee (TEAS RF)
The TEAS RF filing option is a new filing
option that carries a filing fee of $275 per
class of goods and/or services and requires the
applicant to:
(1) provide an e-mail address and authorize
the USPTO to send e-mail correspondence
concerning the application throughout
the application process, and
(2) agree to electronically file, through TEAS,
certain application-related submissions
that may be filed during the application
process, such as voluntary amendments
and responses to Office actions.
The key difference to TEAS Plus applications is
that TEAS RF applicants do not need to select
an identification of goods and/or services from
the Trademark ID Manual or satisfy the other
TEAS Plus requirements noted above at the
time of filing. An applicant who files a TEAS
RF application but does not satisfy the relevant
requirements will be required to submit an additional processing fee of $50 per class of goods
or services.
TEAS Regular
The TEAS Regular filing option has a filing fee
of $325 per class. TEAS Regular applicants are
not required to comply with the additional requirements of TEAS Plus or TEAS RF, but are
nonetheless encouraged to provide an e-mail
address for USPTO correspondence and use
TEAS to electronically file application-related
submissions to the USPTO.
Renewal
The fee to electronically renew a trademark
registration was reduced by $100, to $300 per
class of goods/services.
ECTA Cases
Seloger.com, Paris Court of Appeal, Pole 5,
First Chamber, October 14th, 2014, Janny B. /
Pressimo on Line et A Se Loger.com
Verifier: Armelle Chrétien-Bié,
cabinet Germain & Maureau Lyon, France
[email protected]
Trademark distinctiveness:
French authorities are taking
a tougher stance
French authorities have been known to be relatively lenient when it comes to assessing the
distinctive character of trade marks, compared
to some of its European counterparts and to the
tough stance sometimes taken by the Community Trade Mark office.
However, this time may be over as shown in
this recent decision from the Paris Court of
Appeal.
The Claimant edits the website www.seloger.
com, one of the most popular estate agency
advertising websites in France and owns several
French word and device marks that contain the
terms « SE LOGER », which means « to find accommodation ».
It brought proceedings against the Defendant
on the grounds of trade mark infringement
and unfair competition for using « se loger pas
cher », « se loger moins cher» and « se loger
immo »1 as trading and domain names to offer
estate agent services.
Author: Noélie Carron
Cabinet Plasseraud, Lyon, France
[email protected]
marks containing descriptive terms to lack distinctiveness unless the device element is highly
distinctive in itself.
The Paris Court of Appeal considered the marks
SeLoger, SeLoger, SeLoger.com and SeLoger.
com as being inherently devoid of distinctiveness in relation to estate agency services.
Nevertheless, the Court upheld the validity
of the trade marks SeLoger.com and SeLoger.
com because the Claimant was able to prove
that at the time of filing, both marks had acquired distinctiveness in France for estate
agency services as they had been used and promoted intensely for over 15 years.
In this assessment, the presence of the “.com” is
considered generic for commonly designating a
top level internet address and this is in line with
Community case law.
In order to demonstrate this, the Claimant
provided survey evidence that reflected 87%
of brand recognition and evidence showing it
to be the most visited estate website in France.
As far as the device marks are concerned, the
Court’s decision may be considered severe but
is consistent with the recent position taken
by French authorities to consider composite
This evidence of distinctiveness enabled the
Claimant to save two of its marks. But the
Court did not recognize the existence of a
likelihood confusion despite the proximity of
the signs and the identity of the compared services. Consequently all claims were dismissed.
In reaching this conclusion, the Court took into
account the high level of attention of the relevant consumer for the concerned services, the
absence of distinctiveness of « se loger » and the
generic character of “.com”. On this basis, it was
held that the respective marks cannot involve a
likelihood of confusion for the consumer.
This position may appear uncharacteristically
harsh but it is in line with several recent French
decisions on the delicate interplay between inherent distinctive character and acquired secondary meaning.
It confirms that inherently weak marks are
judged more strictly by French authorities; as
a result, the owners of well-known trademarks
may fail to stop cyber-squatting if their mark
lacks distinctiveness ab initio.
_____
1 Find cheap accommodation, find cheaper accommodation, find accommodation estate agency
ECTA Bulletin I 19
ECTA Cases
Red flag for Red Bull’s colour marks
Verifier: Patricia McGovern
DFMG – Ireland
[email protected]
New development in the
requirements for protection of
colour combinations?
2. In addition, as set out by the General Court in
Seven Towns6, the overall description of the mark
cannot be ambiguous or contradictory.
In Libertel1, the Court of Justice of the European
Union (“CJEU”) confirmed the possibility of
trade mark protection for a colour per se. A
few years later, the CJEU delivered Heidelberger2,
which explained the requirements for the
registration of colour combinations. Ever since,
trade mark protection, either for a single colour
or for a combination of colours, has been highly
desirable for many commercial enterprises.
The above has been intentionally limited to the
requirement of being graphically represented.
Indeed, this is only the first obstacle in
obtaining a trade mark registration for a colour
or a combination of colours per se. In the
last decade or so this requirement has been
rather uncontroversial as the majority of cases
have instead been decided on the subject of
distinctiveness. The latest decisions7 from the
First Board of Appeal at the OHIM regarding the
invalidation of two of Red Bull GmbH’s (“Red
Bull”) trade mark registrations are therefore
interesting as they differ from the majority.
Before these CJEU judgments, it was doubtful
whether or not colours per se fulfilled the requirement of being graphically represented as
set out in Article 2 of the Trade Marks Directive3
(which corresponds to Article 4 CTMR4). It was
not until Sieckmann5 that it was finally resolved
that so-called unconventional trade marks had
their place in the registry.
As regards to colours, the above mentioned
judgments set out that colour per se can
indeed constitute a trade mark provided that
it can be represented graphically in a way that
is clear, precise, self-contained, easily accessible,
intelligible, durable and objective.
For a colour combination to fulfil the requirement in Article 2, the application for registration
needs to include a systematic arrangement associating the colours concerned in a predetermined
and uniform way. The mere juxtaposition of two
or more colours, without shape or contours, or a
reference to two or more colours ‘in every conceivable form’ does not fulfil the criteria in Article
1. Judgment of 6 May 2003, C-104/01
2. Judgment of 24 June 2006 C-49/02
3. Directive 2008/95/EC of 22/10/2008 to
approximate the laws of the Member States
relating to trade marks
4. Council Regulation (EC) No. 207/2009 of 26th
February 2009 on the Community Trade Mark
20 I ECTA Bulletin
In December 2014, the First Board of Appeal
upheld the invalidation of two of Red Bull’s
trade mark registrations for the following colour
marks
.
The registrations were both in relation to ‘energy
drinks’ in Class 32 and were registered based on
acquired distinctiveness. Apart from defining the
colours used, the marks had the following descriptions: ‘The two colours will be applied in equal
proportions and juxtaposed to each other’ and
’The ratio of the colours is approximately 50%50%’. The marks were invalidated on the basis of
Article 7(1)(a) CTMR in conjunction with Article
4 CTMR, i.e. that the trade marks did not fulfil the
requirements of graphical representation.
The Board based its reasoning on the fact that
the sign in combination with the attached descriptions was not sufficiently precise to fulfil
5. Judgment of 12 December 2002, C-273/00
6. Judgment of 14 June 2012, T-293/10
7. Decisions of the First Board of Appeal of
2 December 2014, R 2036/2013-1 and R
2037/2013-1
8. Cases pending before the General Court T-101/15
and T-102/15
Author: David Leffler
Synch Law – Sweden
[email protected]
the requirements as set out by the CJEU in the
above mentioned cases. Red Bull argued that
the sign itself defines the mark as consisting of
the colour blue on the left hand and the colour
silver on the right hand side (‘what you see is
what you get’). The Board disagreed with this
statement noting that, in the case of combination of colours per se, the description of the
sign forms an integral part of the sign. Given the
scope of protection which this choice of category of mark encompasses, an explicit description
is required. In these cases, the mere indication
of a ratio of colours and their juxtaposition allowed for the arrangement of the two colours
in numerous different combinations, thus not
in a predetermined and uniform way. Therefore,
depending on how the colours were arranged,
the average consumer could not repeat with
certainty the experience of a purchase.
Consequently, the appeals were dismissed and
the findings of the Cancellation Division were
confirmed. The decisions have since been appealed to the General Court.8
These decisions of the First Board of Appeal are
interesting as they highlight the importance of
the trade mark’s description when applying for
colour combinations per se. It should be noted
that a total of four different Red Bull registrations
were invalidated by the Cancellation Division9
and Red Bull appealed two of them.10 As one of
the trade marks invalidated was applied for in
2002, these decisions might also be of concern
for current holders of registered colour trade
marks consisting of a combination of colours.
Further clarification from the General Court is
therefore welcome. 11
9. The two other cancelled trade marks are reg. nos.
3075819 (invalidated) and 4381554 (invalidated).
10.There is also a revocation action pending before
the Fifth Board of Appeal (Reg.no 4381471 Case
R 1629/2014-5) against the colour mark with the
description ‘Protection is claimed for the colours
ECTA Bulletin
Sweden Supreme Court Judgement No. T 301-12/ Layher vs. Mon.Zon
photo in the course of its business and compensation for the use of the trademark. Layher argued that Mon.Zon’s use creates an impression
of a commercial relationship between the companies, and that this damages or could damage
the functions of the trademark.
The Supreme Court’s arguments
and assessment
Author: Malin Thunberg McCann Zacco
[email protected]
The company Layher AB (Layher) holds a
license to the registered trademark LAYHER
covering i.a. scaffolding. The company Mon.Zon
Aktiebolag (Mon.Zon) is a competitor to Layher
in the scaffolding business.
Mon.Zon has used one photo in its 60 page
product catalogues in the years 2007-2009
showing a close up image of a scaffolding section.
The scaffolding system is composed of various
poles marked with stickers, one of which is a
red sticker with the text “LAYHER” and the
others with the text “mon.zon” in colours blue
and yellow. The scaffolding poles from the two
companies can be used together as part of their
respective scaffolding systems.
Layher argued that that Mon.Zon’s use constitutes trademark infringement and claimed that
Mon.Zon should be prohibited from using the
The exclusive right to a trademark entails a right
for the right’s holder to prevent any third party
from using without consent, in the course of
trade, a mark which is identical to the registered
mark also in relation to products and services,
so-called double identity. However, if use is
necessary to indicate the purpose of the product,
i.a. as a component or spare part, this cannot be
prohibited, provided that the third party’s use is
consistent with good business practice.
The Court of Justice in the European Union has
in a series of cases stated that the trademark
owner can prevent unauthorised third party use
of a trademark in cases of double identity, if said
use damages or can damage any of the trademark’s functions, such as the function of indicating the commercial origin of a product. Such
damage can arise if there is a risk that a normally
informed and reasonably attentive person perceives that there is a material connection between the origins of the products, or a commercial connection between the trademark owner
and the party who has used the trademark.
The Supreme Court held that it is obvious that
the product catalogue originates from Mon.Zon
and that it is the company’s own products that
are marketed therein.
The photo referred to is relatively small, and
any normally informed average purchaser of
the products, taking into account that such
a person has considerable knowledge of this
market, that there is a limited number of suppliers of these products and that it is possible
and permitted to mix components to the scaffolding systems from different suppliers, going
through the catalogue would naturally interpret
the photo to indicate that the scaffolding poles
from the two companies are compatible. Mon.
Zon’s use therefore creates no damage or risk for
damage to the trademark’s function as indication of commercial origin.
Layher’s claims that Mon.Zon should be prohibited from using the photo under penalty of fine
and compensation were therefore dismissed by
the Supreme Court.
Verifier: Carl Wendt
AB Electrolux
ECTA Bulletin I 21
ECTA Cases
Fenty & others (“Rihanna”) vs
Arcadia Group Brands Limited & other (“Topshop”)
in her business activities and Topshop’s use of her
image amounted to a misrepresentation causing
people to be deceived into buying the t-shirt because they believed it was approved by the singer.
Author: Clare Mann, Partner
Dehns
London, UK
[email protected]
On 22 January 2015, the Court of Appeal of
England and Wales issued its decision in Fenty
& others (“Rihanna”) vs Arcadia Group Brands
Limited & other (“Topshop”) ([2015] EWCA Civ
3). This marked the culmination of a matter
which had commenced in 2012 when the wellknown clothing retailer Topshop started to sell a
t-shirt bearing an image of the pop star Rihanna.
The image came from a photograph taken
during Rihanna’s video shoot for her Talk that
Talk album.
The independent photographer had licensed
Topshop to use the image but Rihanna, who had
not herself consented to that use, issued proceedings against Topshop claiming that the unauthorised use constituted passing off. Rihanna
claimed that purchasers of the t-shirt would
mistakenly believe that it was endorsed by her.
At this point, it should be mentioned that ‘image rights’ per se are not protected under English law. Celebrities have no automatic right
to prevent use of their image on merchandise
items. Instead, they must rely on other causes
of action, for example copyright infringement,
breach of contract or passing off. The law of
passing off protects goodwill and is intended to
prevent a person passing off (misrepresenting)
his goods or services as those of another.
At first instance, the High Court found in favour of Rihanna. The Judge considered all of the
circumstances and decided that Rihanna had
proved herself to be a “style icon” with goodwill
22 I ECTA Bulletin
The Court of Appeal upheld the High Court’s
decision. It was maintained that, owing to the
particular circumstances of the case, Topshop’s
use of Rihanna’s image constituted passing off
and, consequently, the singer was entitled to
prevent that use. Certain factors were considered
to be highly relevant – Rihanna’s recognised
position as a fashion leader, Topshop’s previous
collaborations with Rihanna (most notably, a
competition in which the prize was a shopping
trip with the singer at Topshop’s flagship store),
the fact that the image appearing on Topshop’s
t-shirt was striking and that similar images,
taken at the same video shoot, had appeared
on Rihanna’s album (which would be known by
her fans). Without these, the decision could well
have been very different and, indeed, one of the
Appeal Judges stated that the case was “close to
the borderline”.
The message to be taken from this case is that,
although English law does not allow celebrities
to prevent any use of their images (and this
seems unlikely to change in the foreseeable
future), in certain circumstances the law of
passing off is sufficiently flexible to enable
prevention of particular images. While the
writer does not believe that this case will open
the floodgates to a deluge of such claims, the
comments of the High Court and the Court
of Appeal will no doubt be of great interest to
celebrities seeking to protect their image.
Verifier: Maggie Ramage
Edwin Coe LLP
ECTA Bulletin
German Federal Supreme Court: Protection of abstract color mark
(September 18, 2014 – Case I ZR 228/12 –Yellow Dictionaries).
Author: Pascal Böhner
Attorney-at-Law, Certified IP Lawyer
BARDEHLE PAGENBERG
[email protected]
Since the 1950s, German publisher Langenscheidt markets dictionaries in the following
yellow color:

This color is registered as a German trademark
for “printed bilingual dictionaries”, on the basis
of acquired distinctiveness.
Rosetta Stone offered a language-learning software using a specific yellow color, such as below:
alone as an indication as to the origin. Nevertheless, where the public got used to a certain practice
in the field of industry, using colors as an identifier,
the color alone can serve as a trademark. In the
case at hand, the Court acknowledged that not
only Langenscheidt, but also its main competitor
always used a specific (green) color.
Risk of confusion
The Court further held that the goods at issue
were highly similar because dictionaries are an
important mean for learning a language, and
thus complementary products to language
learning software.
Langenscheidt sued Rosetta Stone for infringement of its yellow color trademark. The German
Federal Supreme Court confirmed the infringement, based on the following considerations:
Use as a trade mark
The Court reiterated its (rather reluctant) caselaw on non-traditional trademarks that use “as a
trademark” can be found only in exceptional cases,
because the public is not used to perceive a color
Verifier: Julia Blind
KLEINER Rechtsanwälte
Stuttgart Office
[email protected]
As regards the distinctiveness of Langenscheidt’s
mark, the Court took into account that it was
used for decades and had achieved a high level
of awareness amongst customers (over 50%).
However, the court also made it very clear that
the degree of distinctiveness and, consequently,
the scope of protection of the mark, always have
to be defined by the court deciding on the infringement, even regarding marks registered on
the basis of acquired distinctiveness.
Finally, the signs at issue were considered
highly similar. The Court only took the respective colors into account, although both parties had always used the color with additional
elements (word marks etc.). Because the relevant public, in relation to the particular field
of industry, is used to perceive a color as an
indication as to the origin. Therefore, the colour serves as an independent, “second mark”,
in addition to the other elements. The Court
had well noted the slightly different color
shades of the mark and the attacked packaging (yellow/orange vs. bright yellow), but still
found that consumers, having an imperfect
recollection, are unable to remember specific
color shades. Therefore, the colors were held
to be highly similar.
Summary
i. The Court, which is usually quite reluctant
concerning the protection of non-traditional marks, affirms protection if there is a
corresponding practice to use those marks
as an indication as to the origin in the particular field of industry.
ii. If so, these marks can be protected per se,
leaving aside other distinctive elements.
iii. Registration of a mark for acquired distinctiveness does not automatically lead to
an enhanced level of distinctiveness; the
scope of protection is to be determined
by the court deciding on the infringement.
ECTA Bulletin I 23
ECTA Cases
ECTA Bulletin
Author: Irma Spagnulo
Merico legal
[email protected]
CIAO RINO!
For those nostalgic of the singer with an
indefinite number of hats, sense of humor,
nonsense-words songs and a very peculiar
rough voice, it was probably a jump back into
the past to read an Italian decision about
something related to him. The singer’s name is
Rino Gaetano, who tragically died more than
thirty years ago, while he was still extremely
young. From the date of his death, his fans have
been going (and actually still go) to visit his
tomb leaving messages to him, which usually
start with “Ciao Rino..”, “Hello Rino”.
And our story starts here. The two parties
involved in the case and relative decision of
the Court of Cassation, No. 2671/15, of 11
February 2015, are Mrs. Anna Gaetano, Rino
Gaetano’s sister, and Mr. Alessandro D’Orazio,
a singer. After Mr. Rino Gaetano’s death, CIAO
RINO became the name of the band, in which
Mr. D’Orazio performed Rino Gaetano’s music
and songs in Rome and in a limited territory
around Rome, with the consent and approval
of Rino Gaetano’s sister. Back in the early years
of 2000, on 29 March 2001, Mrs. Anna Getano
filed an application in Italy for the registration
of a figurative mark for CIAO RINO for, among
others, services relating to a music band,
amusement, etc.
As often happens, the business relationship
between Mrs. Gaetano and the band and, in
particular, with Mr. D’Orazio deteriorated,
so that Mrs. Gaetano decided that the band
could not use CIAO RINO anymore and in
2004 sued Mr. D’Orazio, the frontman of the
band CIAO RINO. The plaintiff requested the
Court to confirm her ownership of the mark
and to ascertain the infringement of the mark
24 I ECTA Bulletin
by the defendant (for the sake of completeness,
the plaintiff also complained that some
changes made by the CIAO NINO band were
detrimental to the honor and reputation of the
artist and asked the Court to apply the peculiar
provision according to which, to adopt a
famous name as a trademark, you need to have
received consent; this claim was dismissed).
The District Court, the Court of Appeal of
Rome and recently also the Court of Cassation
took the same position in their decisions. In
particular, they recognized the rights of Mrs.
Gaetano on CIAO RINO but also indicated
that the defendant could afford the prior use
defense, thanks to having successfully proven
the local three years prior use of CIAO RINO
by the defendant’s band before the filing of
the plaintiff mark. It would be well to add that
under the Italian law, when a prior local use is
Verifier: Lorenzo Litta
De Simone & Partners
[email protected]
recognized, the consequence is that the first
user may continue using its mark, even if with
the same extent of its prior use (in the case
at issue, i.e. locally) and this use may not be
contested. Consequently, at least in a limited
territory, the owner of a registered mark may
have to coexist with another mark, as in the
present case.
ECTA GossIP
GossIP
With a successful special Gazette on
the OHIM last year, and as part of
the ECTA’s Publications Committee
duties, we are glad to announce the
launch of the ECTA GossIP!
The ECTA GossIP will be used to share
news from fellow IP members and colleagues.
Do you have news you would like to
see published in a future bulletin?
Please contact our GossIP Editor
Mr. Firas Qumsieh at firas@qumsieh.
com with details and just maybe your
announcement can go out to all our
ECTA community!
News on the go!
Change of name for Cypriot firm
An enthusiastic ECTA member, Mr. Mario
De Justo Bailey (Spanish) has recently joined
Herrero & Asociados in their head office in
Madrid. Mr. Bailey, who is an Official Agent of
Industrial Property in Spain and a Professional
Representative before the OHIM, is a law
graduate from the Universidad Autónoma
de Madrid in 1992. He also holds a L.L.M.
Intellectual Property from John Marshall Law
School from Chicago and is a member of the
Bar Association of Madrid.
Mr.
Sozos-Christos
Chr.
Theodoulou
(Partner in The Law Offices of Dr. Christos
A. Theodoulou), announced the change of their
Cypriot firm to The Law Offices of Dr. Christos
A. Theodoulou LLC as of 1 January 2015.
The firm was founded on 1961 by Dr. Christos
A. Theodoulou K.St.J. in Larnaca, Cyprus, and
is specialising in Intellectual Property practice,
while also dealing with general law matters.
Mario started his professional career on 1995
with a twenty years of experience he joins
Herrero & Asociados early 2015.
In Memoriam: Christa Heubusch
We have to join our colleagues from SONN &
PARTNER with their grief for the loss of Christa
Heubusch. Christa was a beloved ECTA member personally known by many.
Christa graduated as a translator and interpreter in English and French languages at the
Vienna University, after which she started
working as an interpreter in the U.S. Embassy
in Austria. In 1967 she joined the Patent Attorney’s firm of Gustav Wolfram. There she first
did translations in the patent and contractual
fields – she used to translate and formulate the
patents from German to English language for
perusal purposes. She also often accompanied
her boss during business trips to the US to do
interpretation during negotiations.
Christa gradually started to focus on trade
marks, eventually joining Wolfram’s trade
marks department.
With the merger of Wolfram’s firm with SONN
& PARTNER in 1992, Christa joined SONN’s
trademark department and focused on trademark work. Her high skills in English and French
were, of course, a huge asset towards her new
job. She loved her work and continued, after
having reached the retirement age, to work
part-time for SONN & PARTNER until 2013.
Due to her warm and open personality, Christa
found many friends around the world during
her travels to international conferences. In her
personal life, she was very social and loved to
meet friends and people, she was passionate
about theater and classical and also loved skiing and other sportive activities.
ECTA Bulletin I 25
Editorial Board
PREPARED BY ECTA PUBLICATIONS COMMITTEE
INTERVIEWS
Chair
Hande Hançer
GÜN & PARTNERS
[email protected]
Vice Chair
Craig A. Bailey
Corsearch Europe | Wolters Kluwer Corporate
Legal Services
[email protected]
Secretary
Alessandro Massetti
AKRAN
[email protected] GossIP
Firas Qumsieh
NJQ & Associates
[email protected]
ECTA MANAGER LEGAL AFFAIRS
Bárbara Díaz Alaminos
[email protected]
ARTICLES
Peter Spies
DINEFF TRADEMARK LAW LIMITED
[email protected]
ECTA LEGAL COMMUNICATOR
Daniela Derksen
[email protected]
CASE LAW
Christian Bolduc
Smart & Biggar/Fetherstonhaugh
[email protected]
26 I ECTA Bulletin
Craig A. Bailey
Corsearch Europe | Wolters Kluwer Corporate
Legal Services
[email protected]
ECTA takes great pleasure in inviting you to attend
the 35th ECTA Annual Conference which will take place in
Dubrovnik, Croatia from 22-25 June 2016.
Rogue Waves and Crosswinds:
Trademarks in Motion
Save the date: 22-25 June 2016
ECTA Bulletin I 27
ECTA Bulletin June 2015