annual review - International Trademark Association

Transcription

annual review - International Trademark Association
®
Official Journal of the International Trademark Association
ANNUAL REVIEW
The Twelfth Annual
International Review of
Trademark Jurisprudence
Vol. 95
March-April, 2005
No. 2
Vol. 95, No. 2
®
THE TRADEMARK REPORTER
Pages 267 to 581
March-April, 2005
INTERNATIONAL TRADEMARK ASSOCIATION
Representing the Trademark Community since 1878
655 Third Avenue, New York, NY 10017-5617
Telephone: +1 (212) 768-9887
email: tmr@inta.org
Facsimile: +1 (212) 768-7796
OFFICERS OF THE ASSOCIATION
ANNE GUNDELFINGER ............................................................................................................. President
PAUL W. REIDL ............................................................................................................... President Elect
RHONDA STEELE .............................................................................................................. Vice President
DEE ANN WELDON-WILSON ............................................................................................ Vice President
RICHARD HEATH ...................................................................................................................... Secretary
SCOTT E. THOMPSON ...............................................................................................................Treasurer
ALAN C. DREWSEN.....................................................................................................Executive Director
EDITORIAL BOARD
SANDRA EDELMAN, Editor-in-Chief
ROBERT M. KUNSTADT, International Articles Editor
LANNING G. BRYER, International Articles Editor
PIER LUIGI RONCAGLIA, International Articles Editor
CLIFFORD W. BROWNING, United States Articles Editor
SHERRI FELT DRATFIELD, United States Articles Editor
JONATHAN MOSKIN, United States Articles Editor
BENJAMIN Y. AGRESS
RAYMOND G. AREAUX
ALLEN J. BADEN
WILLIAM G. BARBER
MARTIN J. BERAN
DANIEL R. BERESKIN
CHRISTOPHER P. BUSSERT
MICHAEL CANTWELL
THOMAS L. CASAGRANDE
ROSEMARIE CHRISTOFOLO
LAURENCE P. COLTON
PATRICK CONCANNON
JOHN M. CONE
RUTH CORBIN
BARTH DE ROSA
CHRIS DEJARDIN
WENDY DIAZ
JOAN L. DILLON
JON A. DORF
TILA M. DUHAIME
JONATHAN M. EISENBERG
CATE ELSTEN
THEOPHILUS I. EMUWA
DANA A. FERESTIEN
GERALD L. FORD
GREGORY FRANTZ
EILEEN KING GILLIS
CHRISTOPHER GLANCY
DANIEL C. GLAZER
ELENA GRIMME
STACY GROSSMAN
FRED W. HATHAWAY
CHRISTY L.E. HUBBARD
JAMES HUMANN
SCOTT KAREFF
IMAN KARKHANEHCHI
BRUCE P. KELLER
FARRUKH I. KHAN
EDWARD G. LANCE IV
BINGHAM B. LEVERICH
KWAN-TAO LI
CARMEN LICHTENSTEIN
THAD G. LONG
MARIE LUSSIER
KEVIN MACKINNON
MICHELLE MANCINO MARSH
DOUGLAS N. MASTERS
JONATHAN D. MATKOWSKY
JOHN GARY MAYNARD
J. THOMAS MCCARTHY
KATHLEEN E. MCCARTHY
ANTONY J. MCSHANE
GABRIEL R. MENESES
CHRISTOPHER MICHELETTI
C. JOE MILLER
KAREN A. MONROE
MARIA K. NELSON
REGINA A. O'BRIEN
SALVATORE ORLANDO
JOHN PEACOCK
DEBORAH PECKHAM
ANTHONY M. PRENOL
H. JONATHAN REDWAY
MAURIZIO SARPI
DARREN W. SAUNDERS
ERIC P. SCHROEDER
MARK J. SEVER
ALEX SIMONSON
SUSAN A. SLATER
BARRY I. SLOTNICK
RANDY S. SPRINGER
JAMES STRONSKI
JAMES L. VANA
JOHN THOMAS WARLICK
MICHAEL J. WEBER
CONRAD WEINMANN
JORDAN S. WEINSTEIN
JOSEPH J. WEISSMAN
JOHN L. WELCH
SUSAN NEUBERGER WELLER
THOMAS WETTERMANN
PETER E. WILD
ERIN WILLIAMS
DOUGLAS R. WOLF
BARRY JOSEPH YEN
RANDI MUSTELLO, Managing Editor
JOHN MORALES, Assistant Editor
Advisory Board—Former Editors
MILES J. ALEXANDER
WILLIAM M. BORCHARD
ANTHONY L. FLETCHER
ARTHUR J. GREENBAUM
WERNER JANSSEN, JR.
CHARLOTTE JONES
THEODORE C. MAX
VINCENT N. PALLADINO
JOHN B. PEGRAM
ALLAN S. PILSON
ROBERT L. RASKOPF
PASQUALE A. RAZZANO
SUSAN REISS
HOWARD J. SHIRE
JERRE B. SWANN
STEVEN M. WEINBERG
ALLAN ZELNICK
The views expressed in The Trademark Reporter7 are those of the individual authors. The Trademark
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TRADEMARK REPORTER7
1.
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®
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Copyright 2005, by the International Trademark Association
All Rights Reserved
Vol. 95
March-April, 2005
No. 2
TABLE OF CONTENTS
ARTICLES AND REPORTS
ANNUAL REVIEW
The Twelfth Annual International Review of
Trademark Jurisprudence
Editor’s Note ...................................................................................267
Part I. Acquisition of Rights and Registrability .............................. *
A.
Acquisition of Rights ................................................................... *
1. Bases for Acquisition ........................................................... *
a. Functionality .................................................................. *
b. Quality and Quantity of Use .............................280, 451
c. Appropriation of a Trademark ...................................... *
2. Assignments.............................................................272, 373
3. Licenses ............................................................................331
4. Protection for a Non-Renewed Trademark......................... *
5. Bankruptcy...............................................................273, 308
B.
Registrability............................................................................... *
1. Generic Names.................................304, 332, 374, 509, 529
2. Merely Descriptive Terms ......309, 354, 358, 376, 379, 399,
437, 452, 462, 482, 531
3. Not Merely Descriptive Terms .......................274, 424, 532,
543, 573, 576
(continued on next page)
* The headings followed by an asterisk denote that there were no cases reported in
this subject/topic.
This issue of THE TRADEMARK REPORTER® (TMR) should be cited as 95 TMR ___ (2005).
4.
5.
6.
7.
Geographical Names........286, 355, 399, 418, 424, 518, 551
Personal Names .......305, 324, 341, 380, 387, 478, 530, 552
Letters and Numbers.......................................................528
Device and Design Marks................................................483
a. Two-Dimensional Marks ...................................286, 426
b. Three-Dimensional Marks........286, 311, 342, 365, 381,
468, 520, 533, 544
8. Likelihood of Confusion ......................................................520
a. Similarity of Marks...........275, 305, 325, 333, 343, 356,
358, 360, 374, 388, 400, 427,
439, 452, 462, 483, 510, 552
b. Similarity of Goods/Services......................389, 401, 534
c. Conflict Between Trademarks and Corporate
Names.........................................................275, 487, 521
9. No Likelihood of Confusion ................................................. *
a. No Similarity of Marks .............277, 283, 348, 359, 374,
389, 402, 428, 442, 453,
488, 535, 539, 573
b. No Similarity of Goods/Services ........313, 464, 513, 535
10. Deceptive Marks................................................................403
11. Other Objectionable Features ............................................. *
a. Copyright Protection..................................296, 334, 371
b. Official Names............................................................334
c. Violation of Public Order ...........................................430
d. Scandalous Mark .......................................................431
e. Bad Faith....................................................296, 376, 553
12. Famous Marks ................................314, 328, 349, 362, 375,
432, 449, 465, 491, 569
13. First to Apply Versus First to Use.................297, 335, 450,
466, 500
14. House Marks ........................................................................ *
15. Foreign Registrations .......................................................... *
16. Trade Dress .......................................................................... *
17. Disclaimers........................................................................... *
18. Joint Ownership...............................................................336
19. Slogans .............................................................................357
20. Color .........................................................................382, 502
21. Trade Names............................................................336, 378
22. Distinctiveness.................287, 315, 375, 391, 419, 433, 555
23. Official and Certified Marks ...........................................287
24. Service Marks ...................................................................... *
25. Sound Marks ........................................................................ *
(continued on next page)
26. Detriment/Unfair Advantage .............................................. *
27. Scent Marks ......................................................................... *
Part II. Procedural Matters .............................................................. *
A.
Formalities for Acceptable Filings ............................................. *
B.
Identification of Goods or Services.........................................498
C.
Disclaimers and Consents .......................................................... *
D. Appellate Procedure.................................................................... *
1. Jurisdiction/Authority .............................................287, 524
2. Who May Appeal? ................................................................ *
3. Improper Pleadings .........................................................529
E.
Forum Conflicts...............................................288, 330, 503, 557
F.
International Issues........................................................316, 454
G. Evidence...................................................................................536
Part III. Post-Registration Issues..................................................... *
A.
Infringement and Defenses ........................................................ *
1. Famous Marks .................337, 434, 469, 471, 495, 497, 522
2. Likelihood of Confusion
a. Similarity of Goods/Services.......................................... *
b. Similarity of Marks...........288, 297, 306, 338, 351, 366,
372, 404, 421, 455, 472, 495, 499,
505, 515, 536, 538, 545, 558
3. Prior User.........................................................................517
4. Disclaimers........................................................................... *
5. Fair Use....................................................................478, 560
6. International Conventions .................................................. *
7. Symbols ................................................................................ *
8. Infringement of Unregistered Trademarks ............353, 537
9. Standing ............................................................................... *
10. Nonuse of Trademark .....................277, 289, 366, 383, 406,
496, 505, 537, 550, 560
11. No Likelihood of Confusion ................................................. *
a. No Similarity of Marks ......289, 317, 367, 406, 496, 561
(continued on next page)
12.
13.
14.
15.
16.
17.
18.
19.
20.
21.
22.
23.
24.
25.
b. No Similarity of Goods/Services ........299, 319, 367, 474
Lack of Distinctiveness....................290, 300, 408, 474, 504
File Wrapper ........................................................................ *
Parody .................................................................................. *
Deceptive Use...................................................................301
Absence of Willful Intent.................................................320
Descriptive Use ........................................................340, 563
Equitable Defenses ..........................................................409
Family of Marks................................................................... *
Guarantee ............................................................................ *
Staying of Court Action ....................................................... *
Trade Dress ......................................................................321
Abuse of Process................................................................... *
Personal Names ................................................................... *
Geographical Indications.................................................307
B.
Unfair Competition .................................................................511
1. Passing Off .......................................321, 410, 454, 479, 564
2. Character Marks.................................................................. *
3. Statutory Issues................................................................... *
4. Advertising...............................................................279, 470
5. Compensation ...................................................................... *
6. Configuration of Goods ............................................301, 435
7. Color .................................................................................423
8. Slavish Imitation ................................................................. *
C.
Injunctions and Damages ...............................279, 411, 506, 566
D. Seizures ....................................................................................... *
1. Civil Actions ......................................................................... *
2. Criminal Actions ..............................................................566
E.
Valuation and Tax Treatment.................................................... *
F.
Loss of Trademark Rights .......................................................... *
1. Forfeiture .........................................................308, 385, 480
2. Lapsing of Registration ....................................................... *
3. Nullity ......................................................290, 302, 512, 575
4. Attachment of Trademark................................................... *
5. Cancellation .............290, 322, 340, 412, 457, 497, 541, 567
6. Dilution ............................................................................526
(continued on next page)
G. Post-Registration Evidence of Use and Renewals.................362
H. Amendments................................................................................ *
1. Amendments to Marks ........................................................ *
2. Amendments to Registrations.........................................375
I.
Trademark Agent in a Litigation ............................................... *
J.
Gray Marketing...............................386, 414, 435, 481, 506, 567
K. Counterfeiting Issues......................................................475, 538
L.
Opposition/Cancellation Procedure................................292, 303
M. Licensing Issues ..............................................293, 323, 476, 542
N. Counsel, Conflicts........................................................................ *
Part IV. Personality Rights............................................................... *
Part V. Internet Issues ..................................................................... *
A.
Domain Names .......................................293, 303, 363, 368, 395,
415, 436, 455, 477, 507
Table of Marks ................................................................................577
(continued on next page)
COUNTRY INDEX
Argentina ............................... 272
Australia................................. 280
Austria.................................... 286
Benelux................................... 296
Brazil ...................................... 304
Canada ................................... 308
Chile........................................ 324
China ...................................... 331
Colombia................................. 341
Community Trademark......... 354
Costa Rica............................... 358
Czech Republic....................... 360
Denmark................................. 365
Ecuador .................................. 371
El Salvador............................. 373
Estonia.................................... 376
European Community ........... 379
Finland ................................... 387
France..................................... 399
Germany................................. 418
Greece ..................................... 424
Hong Kong.............................. 437
Iceland .................................... 451
Indonesia ................................ 455
Iran ......................................... 462
Ireland .................................... 462
Israel....................................... 468
Italy ........................................ 471
Japan...................................... 478
Jordan .................................... 482
Mauritius ............................... 497
Mexico .................................... 498
New Zealand.......................... 500
Nigeria ................................... 503
Norway................................... 505
Panama .................................. 509
Paraguay................................ 511
Peru ........................................ 513
Philippines ............................. 515
Portugal ................................. 518
Puerto Rico ............................ 524
Republic of South Africa ....... 526
South Korea ........................... 528
Spain ...................................... 529
Sweden ................................... 530
Switzerland............................ 531
Syria ....................................... 538
Taiwan ................................... 539
Thailand................................. 542
Turkey.................................... 543
United Kingdom .................... 551
Uruguay ................................. 569
Venezuela............................... 573
Vietnam.................................. 576
®
ANNUAL REVIEW
THE TWELFTH ANNUAL
INTERNATIONAL REVIEW OF
TRADEMARK JURISPRUDENCE
Editor’s Note
The TMR wishes to welcome you to the Twelfth Annual
International Review of Trademark Jurisprudence.
This edition of the Review was edited by a Task Force of the
TMR co-chaired by Rosemarie Christofolo and Pier Luigi
Roncaglia, who were assisted by Christy Hubbard, a member of
the TMR Editorial Board, John Morales, TMR Assistant Editor,
Joel Bromberg, Editor, and Randi Mustello, TMR Managing
Editor.
As was the case last year, the Review is organized in
alphabetical country order with each country divided by subject
and topic. Also, for Table of Contents continuity, if a particular
subject or topic is not covered in this edition, it will be so noted on
the Table of Contents by an asterisk (*).
The Editorial Board wishes to thank not only those who have
contributed, but also those who continue to monitor developments
in their jurisdictions.
Vol. 95 TMR
267
268
Vol. 95 TMR
Contributors are listed below. Due to the increase in multiple
jurisdiction coverage, all jurisdictions covered are listed for each
contributor.
Jurisdiction
Name
Firm
Address
Africa (majority)
of the
continent) and
Channel
Islands
(Guernsey
and Jersey)
Wayne Meiring
Spoor and Fisher
Jersey
St. Helier, Jersey
Andorra
Manuel Pujadas
Asturgo, Mateu &
Associates
Andorra la Vella,
Principality of
Andorra
Anguilla
Tira Greene
Kenneth Porter
Keithley Lake &
Assoc.
Anguilla, British West
Indies
Argentina
Iris V. Quadrio
Marval, O’Farrell &
Mairal
Buenos Aires,
Argentina
Australia and
Papua New
Guinea
Trevor Stevens
Davies Collison Cave
Sydney, Australia
Austria
Peter Israiloff
Barger, Piso &
Partner
Vienna, Austria
Benelux
Peter Ch. Hendriks
Merkenbureau
Hendriks & Co.
B.V.
Bussum, Netherlands
Bermuda
Donna M. Pilgrim
Conyers, Dill &
Pearman
Hamilton, Bermuda
Brazil
Valdir Rocha
Patrícia Gouvêa
Veirano Advogados
Associados
Rio de Janeiro, Brazil
Canada
Christopher C. Hale
Blake, Cassels &
Graydon
Ridout & Maybee
Toronto, Canada
Paul Tackaberry
Toronto, Canada
Chile
Rodrigo Velasco
Alessandri &
Compañia
Santiago, Chile
China, People’s
Republic of
Hailing Zhang
China Patent Agent
(HK) Ltd.
Wanchai, Hong Kong
Colombia
Germán Cavelier
Natalia Tobón
Cavelier Abogados
Bogota, Colombia
Community
Trademark
Elaine Rowley
Marks & Clerk
London, England
Costa Rica
Denise Garnier
Gonzalez-Uribe
San Jose, Costa Rica
Cuba
J. Sanchelima
Sanchelima &
Associates, P.A.
Miami, Florida
Czech Republic
Thomas E. Mudd
Zeiner & Zeiner
Prague, Czech
Republic
Vol. 95 TMR
269
Jurisdiction
Name
Firm
Address
Denmark
Peter Gustav Olson
Plesner Svane
Grønborg
Copenhagen,
Denmark
Dominican
Republic
Orlando Jorge Mera
Patricia Villegas
Jorge Mera &
Villegas
Santo Domingo,
Dominican Republic
Ecuador
Maria Cecilia
Romoleroux
Corral & Rosales
Quito, Ecuador
Egypt
Nazeeh A. Elias
A. Sadek Elias Law
Office
Cairo, Egypt
El Salvador
Edy Guadalupe
Portal de Velasco
Portal & Asociados
San Salvador, El
Salvador
Estonia
Jüri Käosaar
Kaie Puur
Käosaar & Co.
Tartu, Estonia
European
Community
Adam N. Cooke
Wragge & Co.
London, England
Finland
Seija Saaristo
Benjon Oy
Helsinki, Finland
France and
French
Territories
(DOM and
TOM)
Marc-Roger Hirsch
Cabinet Hirsch
Paris, France
Germany
Kay-Uwe Jonas
Linklaters
Oppenhoff &
Rädler
Lichtenstein,
Köerner &
Partners
Cologne, Germany
Carmen Lichtenstein
Stuttgart, Germany
Ghana
Nii Arday Wontumi
Aélex
Accra, Ghana
Greece
Helen
Papaconstantinou
Maria Athanassiadou
Eleni Lappa
Theodorides &
Papaconstantinou
Athens, Greece
Guatemala
Analucia Carrillo
Carrillo y Asociados
Guatamala City,
Guatamala
Gulf States
(Kuwait,
Saudi Arabia,
United Arab
Emirates and
Yemen),
Bahrain,
Oman and
Qatar
M. Farrukh Irfan
Khan
United Trademark &
Patent Services
Lahore, Pakistan
Honduras
Ricardo Anibal Mejia
Bufete Mejia &
Asociados
San Pedro Sula,
Honduras
270
Vol. 95 TMR
Jurisdiction
Name
Firm
Address
Hong Kong,
Cambodia,
Laos and
Macao
Barry J. Yen
So Keung Yip & Sin
Central Hong Kong
Iceland
Skúli Th. Fjeldsted
Fjeldsted, Blöndal &
Fjeldsted
Reykjavik, Iceland
India, Bhutan
and Nepal
Amar Raj Lall
Lall Lahiri &
Salhotra
Gurgaon, India
Indonesia
Erna L. Kusoy
Hadiputranto,
Hadinoto &
Partners
Jakarta, Indonesia
Iran
Alireza Laghaee
Dr. Ali Laghaee &
Associates
Tehran, Iran
Ireland
Brenda O’Regan
Neil McVeigh
F.R. Kelly & Co.
Dublin, Ireland
Israel
Shlomo Cohen
Dr. Shlomo Cohen &
Co.
Tel-Aviv, Israel
Italy and San
Marino
Pier Luigi Roncaglia
Gabriele Lazzeretti
Societá Italiana
Brevetti
Florence, Italy
Jamaica
Anne-Marie C. White
Feanny
Livingston,
Alexander & Levy
Kingston, Jamaica
Japan
Kazuko Matsuo
Nakamura &
Partners
Tokyo, Japan
Jordan
Mazen K. Dajani
Ghaida’ M. Ala’
Eddein
Saba & Co.
Amman, Jordan
Latvia and
Lithuania
Marius Jakulis
Jason
A.A.A. Baltic Service
Company
Vilnius, Lithuania
Malaysia and
Singapore
Ponnampalam
Sivakumar
P. Sivakumar & Co.
Singapore
Malta and Gazo
Richard Camilleri
Antoine Camilleri
Mamo TCV
Advocates
Valletta, Malta
Mexico
Antonio Belaunzaran
Luis Schmidt
Olivares & Cia.
Mexico City, Mexico
New Zealand
John B. Hackett
Richard Griffin
A J Park
Auckland, New
Zealand
Nicaragua
Guy Jose BendanaGuerrero
Guy Jose BendanaGuerrero
Managua, Nicaragua
Nigeria
Theophilus I.
Emuwa
Aélex
Lagos, Nigeria
Norway
Egil Lassen
Actio Lassen AS
Bergen, Norway
Pakistan and
Bangladesh
Hasan Irfan Khan
United Trademark &
Patent Services
Lahore, Pakistan
Vol. 95 TMR
271
Jurisdiction
Name
Firm
Address
Panama
Nadia Pedreschi de
Halman
Pedreschi &
Pedreschi
Panama City,
Panama
Paraguay
Gladys E. Bareiro de
Modica
Bareiro Modica &
Asociados
Asuncion, Paraguay
Peru
Jose Barreda
Micaela Mujica
Barreda Moller
Lima, Peru
Philippines
Rogelio Nicandro
Romulo, Malanta,
Bonaventura,
Sayoc & De Los
Angeles
Manila, Philippines
Portugal
Rosario Cruz Garcia
Nuno Cruz
J. Pereira da Cruz,
S.A.
Lisbon, Portugal
Puerto Rico
Federico CalafLegrand
Reichard & Calaf
San Juan, Puerto Rico
Republic of
South Africa,
Botswana,
Lesotho,
Namibia,
Swaziland
and Zambia
Charles E. Webster
Spoor and Fisher
Pretoria, Republic of
South Africa
Russian
Federation
Eugene A. Arievich
Baker & McKenzie
Moscow, Russia CIS
South Korea
Junghoon Kenneth Oh
Central
International Law
Firm
Seoul, Korea
Spain
Pablo GonzalezBueno
Elzaburu S.A.
Madrid, Spain
St. Kitts-Nevis
Lindsay F.P. Grant
Veira, Grant &
Associates
Basseterre, St. Kitts
Sweden
Bengt Nihlmark
B. Nihlmark AB
Stockholm, Sweden
Switzerland
Peter E. Wild
Wild Schnyder AG
Zurich, Switzerland
Syria
Ibrahim A. Tarazi
Saba & Co.
Damascus, Syria
Taiwan
Kwan-Tao Li
C.V. Chen
Lee and Li
Taipei, Taiwan
Thailand
Parichart Jaravigit
Edward J. Kelly
Tilleke & Gibbins
Bangkok, Thailand
Turkey
M.N. Aydin Deris
Deris Patents &
Trademarks
Agency Ltd.
Istanbul, Turkey
United Kingdom
Matthew Harris
Norton Rose
London, England
Uruguay
Juan A. Pittaluga
Juan A. Pittaluga &
Associates
Montevideo, Uruguay
Venezuela
Rafael A. Marquez
Losada
Marquez & Marquez
Abogados
Caracas, Venezuela
Vietnam
Nguyen Tran Bat
Investconsult Group
Hanoi, Vietnam
272
Vol. 95 TMR
ARGENTINA
I.A.2. Assignments
Escada A.G. (Escada) filed trademark applications in Classes
18 and 25 for a design consisting of two stylized and opposite
letters “E.” These classes generally cover a variety of handbags,
purses and clothing, The company EF S.R.L. (EF) opposed the
applications on the basis of its trademark EF. Escada filed a court
action requesting the withdrawal of the oppositions.
When filing the bill of complaint, Escada (1) informed the
Court that the opposing trademarks had been assigned from EF to
Icticola Argentina S.A. (Icticola) and that the latter had ratified
the opposition at the Trademark Office, and (2) summoned Icticola
as co-defendant.
EF stated that it nevertheless had a legitimate interest in
opposing Escada’s applications, because Icticola had licensed the
assigned trademarks to EF. It introduced further arguments in
support of the opposition, alleging that Escada’s design was also
confusingly similar to EF’s trade name and de facto trademark.
The Judge of First Instance admitted the complaint and ruled
that the trademarks were not confusingly similar. This decision
was appealed by EF, the current licensee—but not by Icticola, the
current owner—of the trademarks.
On appeal, the Federal Court of Appeals upheld the decision1
on the ground that Icticola, the owner of the trademarks, who
primarily has the legitimate interest in opposing the registration
of a trademark, had not challenged the Court of First Instance’s
decision.
However, since EF had brought the appeal, the appellate court
had to render its decision. The Court identified two issues:
1. On the one hand, the Court clearly stated that, as
Icticola’s licensee, EF held no further right than licensor and
that since Icticola had consented to the Court of First
Instance’s decision, EF had no right to question that decision
on the basis of the confusing similarity of the marks in
conflict.
2. On the other hand, since EF had introduced additional
arguments as the basis of the opposition—which arguments
were different from Icticola’s—the Court of Appeals considered
those arguments before making a final decision and affirming
the Court of First Instance’s ruling.
1. Escada A.G. v. EF S.R.L., Federal Court of Appeals, Division II, Case 3.926/97,
decided on March 16, 2004 (unpublished).
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This decision is particularly interesting because the appellate
court decided to examine additional grounds for opposition raised
by a party that was no longer an opponent (as it had assigned the
marks on which the opposition was based to a third party) and
ruled that the assignment of the opposing trademark does not
necessarily prevent the assignor—which in this case was also a
licensee—from filing additional arguments in support of its
opposition.
I.A.5. Bankruptcy
Sancor Cooperativas Unidas Ltda. (Sancor) filed a trademark
application that was opposed by Ghelco S.A.I.C.A. (Ghelco). In the
absence of a friendly settlement, Sancor filed a court action
seeking the withdrawal of the opposition. During the trial, Ghelco
informed the Court that it had gone bankrupt, and the judge
ordered that the case be sent to the Commercial Court in charge of
the bankruptcy proceedings for future handling, in accordance
with Section 132 of the Insolvency and Bankruptcy Law.2
Sancor appealed the decision, but the Federal Court of Appeals
upheld it.3
The appellate court ruled that it was clear that this opposition
case involved monetary issues and therefore fell within the
provisions of Section 132 of the Insolvency and Bankruptcy Law.
The Court also decided that the defendant’s consent to continue
the prosecution of the lawsuit before the Federal Court of Appeals
had no effect, as the provisions of the Bankruptcy and Insolvency
Law affect the public interest.
In local practice, parties have refused to submit opposition
cases to the jurisdiction of the Commercial Courts, as Commercial
Judges are not specialized in trademark matters and tend to defer
judgments. In addition, because the receiver and the creditor’s
committee in the bankruptcy action also become parties to the
trademark lawsuit, proceedings usually become more complex.
This practice was confirmed by Asociación Argentina de
Adventistas del Séptimo Día v. Fibas SACIA,4 in which the
2. Section 132 provides: “The declaration of bankruptcy causes the court hearing the
bankruptcy proceedings to have competent jurisdiction over all the legal actions brought against
the bankrupt involving monetary rights, except for any condemnation suits, and those involving
family matters. The prosecution of the actions outside the court's regular jurisdiction is
suspended upon the issue of a final bankruptcy decree against the defendant; until such time,
they are prosecuted with the receiver's participation, without it being possible to carry out any
acts of forced execution.”
3. Sancor Cooperativas Unidas Ltda. v. Ghelco S.A.I.C.A., Federal Court of Appeals,
Division III, Case 8.248/01, decided on May 27, 2004 (unpublished).
4. Asociación Argentina de Adventistas del Séptimo Día v. Fibas SACIA, Argentine
Supreme Court, decided on November 17, 1994, 317 Fallos 1635, [1995-III] J.A. 85.
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Supreme Court ruled that, despite the existence of bankruptcy
proceedings, the Federal Courts of Appeals had jurisdiction to hear
opposition cases because those cases—contrary to the situation in
cancellation and infringement proceedings—do not involve
monetary issues that could affect creditors’ interests.
At present, two of the three divisions of the Federal Court of
Appeals have changed their criteria and held that if an opponent
files for bankruptcy, the trademark conflict—even an opposition
case—must be sent to the Commercial Court hearing the
bankruptcy proceedings.
This decision is in line with the latest rulings of the Federal
Courts of Appeals that any trademark matter filed against a party
facing insolvency or bankruptcy proceedings should be heard by
the Commercial Judge handling those proceedings.
I.B.3. Not Merely Descriptive Terms
British American Tobacco Brands Inc. (BAT) filed a trademark
application to register KENT FRESH (label) to cover all goods in
Class 34, which includes tobacco and tobacco products. Massalin
Particulares S.A. (Massalin) opposed the application on the basis
of descriptiveness (Sections 2a), 2b) and 3d) of the Argentine
Trademark Law).5 BAT filed a court action seeking the withdrawal
of Massalin’s opposition.
The First Instance Judge admitted the complaint and declared
the opposition ill founded.
Massalin appealed the decision because, in its opinion, the
term FRESH is descriptive and may lead consumers to error as to
the nature and characteristics of the product involved.
The Federal Court of Appeals upheld the decision6 and ruled
that FRESH is not a descriptive but a suggestive term and, as
such, it can enjoy trademark protection. The Court of Appeals
mentioned that the Argentine Trademark Law does not prohibit
the registration of suggestive terms, especially when they are
accompanied by fanciful terms that give distinctiveness to the
5. Section 2 of Trademark Law 22.362 provides: “The following are not considered as
trademarks, nor are they capable of registration: a) Names, words and signs which
constitute the necessary or usual designation of the product or service, or which are
descriptive of its nature, function, qualities or other characteristics; b) Names, words,
advertising signs and phrases that have passed into general use prior to the application for
registration thereof; . . .”
Section 3 of Trademark Law 22.362 provides: “The following can not be registered: ...
d) trademarks which may lead consumers to error as to the nature, properties, merit,
quality, manufacturing methods, purpose, origin, price or other characteristics of the
products or services; . . .”
6. British American Tobacco Brands Inc. v. Massalin Particulares S.A., Federal Court
of Appeals, Division I, Case 5.706/98, decided on December 4, 2003.
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trademark, as in the present case. The appellate court also stated
that an adjective is capable of registration if it does not constitute
the necessary or usual designation of the product.
I.B.8.a. Similarity of Marks
Midwestern Pet Foods Inc. (Midwestern) filed a trademark
application to register PRO PAC to cover all goods in Class 31,
which includes dog food. Ralston Purina Company (Ralston)
opposed the application based on the likelihood of confusion with
their trademark PRO-PLAN registered in the same class.
The First Instance Judge dismissed the complaint filed by
Midwestern and ruled that PRO PAC was confusingly similar to
PRO-PLAN.
Midwestern appealed the decision on the basis of the following
arguments: (1) the term PRO is of common use in the class; (2)
both marks are used in connection with pet food; (3) both marks
coexist in several countries; and (4) the same conflict was decided
in France and the Trademark Office authorized the coexistence of
both marks for being clearly distinguishable.
The Federal Court of Appeals upheld the decision.7 Although
the appellate court did not deny the applicant the possibility to use
the term PRO, as it considered such term of common use in the
class, the Court ruled that the applicant should have added
another term to the mark to make it distinguishable from other
registered trademarks containing the term PRO. The appellate
court also mentioned that despite PRO PAC being registered in
several countries and both PRO PAC and PRO-PLAN coexisting in
the United States, this does not have a direct impact on the
resolution of the case nor does it mean that coexistence should also
be admitted in Argentina as the Argentine Trademark Law adopts
the principle of territoriality. Moreover, it was neither alleged nor
proven that the mark in conflict was famous or well known.
I.B.8.c. Conflict Between
Trademarks and Corporate Names
Exxon Corporation (Exxon) filed a complaint against Axxon
Electric S.A. (Axxon) and requested that Axxon cease use of its
corporate name and change it to another non-confusingly similar
name on the basis of Exxon’s preexisting trademark registrations
and trade name in Argentina.
Though Axxon was primarily engaged in the sale of electric
and electronic applicances and products for the distrubiton of
7. Midwestern Pet Foods, Inc. v. Ralston Purina Company, Federal Court of Appeals,
Division III, Case 3.375/00, decided on July 15, 2003.
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electric energy, its corporate purpose, which was published in the
Official Gazette, was very broad and included, inter alia, activities
relative to oil and gas. When the incorporation was published in
the Official Gazzette, Exxon sent a cease-and-desist letter to Axxon
objecting to its corporate name and requesting that use of such
name be discontinued, arguing Axxon’s activities in the electric
field were related to the energy-related petroleum products and
services covered by Exxon’s trademarks.
The cease-and-desist letter was unanswered and Exxon
instituted court proceedings. Axxon answered the complaint
stating that the matter had become statute-barred in line with the
provisions of Section 29 of the Argentine Trademark Law8 and
argued that its company name was not confusingly similar to
Exxon’s trademarks and trade name. Exxon countered that,
according to Section 3986 of the Argentine Civil Code,9 the ceaseand-desist letter sent to Axxon had suspended the one-year term
prescribed in the Argentine Trademark Law.
The First Instance Judge considered that the cease-and-desist
letter sent by Exxon had suspended the term to file the court
action, and admitted the complaint on the grounds of the
likelihood of confusion between AXXON and EXXON.
Defendant appealed the decision on the basis of the following
arguments: (1) the statute of limitations cannot be suspended
through the sending of a cease-and-desist letter; (2) the
comparison should have been made between Axxon Electric S.A.
and Exxon Corporation and not merely between AXXON and
EXXON; (3) Axxon’s activities are not related to Exxon’s business;
and (4) Exxon had not objected to Axxon’s name at the time the
company was incorporated and registered at the Registry of
Companies nor was any objection filed by the Registry of
Companies.
The Federal Court of Appeals upheld the decision10 and ruled
that: (1) the cease-and-desist letter had suspended the right of
action for one year in line with the provisions of Section 3986 of
the Argentine Civil Code; (2) terms such as “Corporation” or
8. According to Section 29 of Trademark Law 22.362, trade names or company names
may be opposed within one year counted: (i) as of the date such trade name is first publicly
used, or (ii) as of date claimant becomes aware of the use of such name.
9. Section 3986 of the Argentine Civil Code provides: “The statute of limitations is
interrupted by an action against the possessor or debtor, even when brought before a judge
not of competent jurisdiction, and even when it is void on account of a formal defect or
because the plaintiff did not have the legal capacity to sue. The statute of limitations is also
suspended, for one time only, by the declaration of the debtor’s default made by any
trustworthy means. This suspension will only be valid for one year or for the shorter term
that may correspond to the statute of limitations.”
10. Exxon Corporation v. Axxon Electric S.A., Federal Court of Appeals, Division III,
Case 6.943/00, decided on September 2, 2003.
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“Electric” or acronyms identifying the type of company, such as,
S.A. or S.R.L. are generic and carry no weight in the test for
confusing similarity; therefore, the comparison had to be focused
on EXXON and AXXON, which the court considered to be
confusingly similar; (3) there was an overlapping between the
goods/services covered by Exxon’s marks and Axxon’s business;
and (4) the failure to challenge Axxon’s name by the Registry of
Companies at the time of incorporation does not affect Exxon’s
right to object to it in accordance with the provisions of Sections 27
to 29 of the Argentine Trademark Law,11 as corporate names can
be objected to not only on the basis of another corporate name but
also on the grounds of a registered trademark.
I.B.9.a. No Similarity of Marks
Boehringer Ingelheim International GMBH (Boehringer) filed
a trademark application to register EVANATURA to cover all
goods in Classes 5 and 30, which include home health care
products and foods. Aceitera General Deheza S.A. (Deheza)
opposed the applications on the basis of its trademarks NATURA
registered in the same classes. Boehringer filed a court action
seeking the withdrawal of Deheza’s opposition.
The First Instance Judge admitted the complaint.
On appeal, the Federal Court of Appeals upheld the decision12
on the ground that NATURA is of common use in Classes 5 and 30,
and therefore Deheza’s trademarks were weak. The appellate court
also stated that the term EVA in Boehringer’s mark constitutes a
distinctive element that makes such mark different from Deheza’s
trademark, and concluded that both trademarks can coexist
without any risk of confusion.
III.A.10. Nonuse of Trademark
Saenz Briones y Cia. S.A. (Saenz Briones), owner of several
marks for GRAN SIDRA REAL and REAL in International Class
33, which covers alcoholic beverages, filed a cancellation action for
nonuse against the trademark TERO REAL, owned by Goyenechea
S.A. (Goyenechea) in International Class 33.
Saenz Briones alleged that the TERO REAL mark had not
been used within five years prior to the commencement of the
11. Section 27 of Trademark Law 22.362 provides: “The name or sign used to designate
an activity, whether for profit or not, constitutes a property for the purposes of this law.”
Section 28 of Trademark Law 22.362 provides: “Ownership of a trade name is
acquired through use thereof and only in relation to the activity for which it is used, and
shall not be confusingly similar with preexisting trade names for the same activity.”
12. Boehringer Ingelheim International GMBH v. Aceitera General Deheza S.A.,
Federal Court of Appeals, Division I, Case 3.413/98, decided on October 7, 2003.
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action, as required by the Argentine Trademark Law. Goyenechea
argued that the plaintiff had no legitimate interest in requesting
the cancellation action for nonuse and mentioned that its mark
had been registered since 1950. Goyenechea also stated that Saenz
Briones’ oldest registration dated back to 1974, and therefore the
marks at issue had coexisted for the past 25 years.
The Judge of First Instance dismissed the cancellation. Saenz
Briones appealed based on the following arguments: (1) it had
proved that the defendant had not had large enough sales of TERO
REAL products to comply with the use requirement established by
the Argentine Trademark Law; and (2) Saenz Briones had a
legitimate interest in filing a cancellation action for nonuse, as the
defendant was a competitor and the plaintiff’s marks, GRAN
SIDRA REAL and REAL, were well-known marks and deserved
protection against dilution.
The Federal Court of Appeals admitted that the marks were
not confusingly similar (this was not a matter at issue) and found
that the plaintiff had a legitimate interest in seeking cancellation
for nonuse, as the TERO REAL mark could blur the
distinctiveness of its marks.13
However, the appellate court ultimately upheld the dismissal,
finding the accountant expert’s report proved that there had been
sales of the products identified with the defendant’s mark during
the questioned period. In this respect, even though Saenz Briones
argued that Goyenechea had made little use of the mark, the court
ruled that the Argentine Trademark Law was flexible with respect
to the extent of use expected in order to avoid the lapsing of a
trademark and that in evaluating use the exchange, sale and other
manner of disposition of goods should also be taken into
consideration.
The fact that the volume of sales had been poor was not
construed by the Court as supporting the argument that the
defendant’s intention was to breach the law. Rather, the Court
ruled that the existence of sales implied that there must have been
other forms of use of the mark, such as its inclusion in price lists
and invoices.
This case is significant because it broadens the parameters
measuring the extent of use necessary to prevent a mark from
being cancelled for nonuse, which has always been a debatable
issue. In addition, it is the first case in which a court has ruled
that the possibility of dilution justifies the genuine interest of a
trademark owner in having a competitor’s registration cancelled
13. Saenz Briones y Cia. S.A. v. Goyenechea S.A., Federal Court of Appeals, Division I,
Case 8-434/99, decided on February 17, 2004 (unpublished).
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for nonuse, when such registration weakens the distinctive power
of the owner’s trademark.
III.B.4. Advertising
Cervecería y Maltería Quilmes S.A.I.C.A. y G. (Quilmes) filed
a petition for an injunction against Cervecería Argentina S.A.
Isenbeck (Isenbeck), requesting that the Court order Isenbeck to
cease the unauthorized use of the trademark QUILMES in
advertisements comparing both companies’ products. Quilmes
based the petition on the provisions of Article 50 of the TRIPS
Agreement.
Although there are no specific rules that apply to comparative
advertising, so far the Federal Courts have accepted comparative
advertising only if (1) the comparison is not made on false facts, (2)
the comparison is not aimed to take advantage of the prestige of
the compared mark and (3) there is no tarnishment of the
compared mark.
The Judge of First Instance granted the injunctive relief and
ordered Isenbeck to cease the unauthorized use of the QUILMES
mark in any manner.14 The Judge ruled prima facie, that Isenbeck
would not have obtained authorization from Quilmes to use its
trademark, and that it was reasonable to conclude, from the
evidence presented in Court, that Isenbeck was trying to persuade
consumers of the superiority of its products over those of Quilmes.
The Judge also held that if comparative advertising is
intended to cause confusion among consumers and to discredit
third parties’ marks, as appeared to be the case here, the
advertising is unlawful.
Isenbeck has appealed this decision.
III.C. Injunctions and Damages
FV S.A. (FV) is the owner, among other registrations, of the
trademark FV and design covering sanitary wares in Class 11. FV
also filed applications for FV GARANTIA TOTAL and label design
in Classes 11 and 37.
Upon discovering competitors using a similar mark, FV filed a
petition for an injunction on the basis of the provisions of Article
50 of the TRIPs Agreement and requested the competitors, Videsur
S.A. and Artica S.A., cease the use of the infringing label design
that was confusingly similar to the FV GARANTIA TOTAL (label)
trademark application.
14. Cervecería y Maltería Quilmes S.A.I.C.A. y G. v. C.A.S.A. Isenbeck, Court of First
Instance No. 6, decided on June 8, 2004, L.L. 15/6/04, 7.
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The First Instance Judge dismissed FV’s petition on the
ground that the requirements to grant an injunction were not
fulfilled because FV’s applications had not yet been registered and
that, therefore, there was no infringement of trademark rights.
FV appealed the decision and argued that (1) the defendants
were using a confusingly similar label design in the promotion and
sale of sanitary wares; (2) even though the opposing trademark
applications had not been granted, FV had been using them since
1997; and (3) the applications contain the FV trademark, which
had already been registered in several classes.
The Federal Court of Appeals revoked the first instance
decision and granted the injunction15 considering that, at this
provisional stage, the defendants’ label design appeared to be a
copy of the FV GARANTIA TOTAL label design. The appellate
court also mentioned that FV is the owner of the registration FV
and design, and even though FV’s applications had not yet been
granted, it must be recognized that FV is the owner of a de facto
trademark. Therefore, the fact that the law only authorizes owners
of registered marks to apply for injunctions does not mean that the
owner of a de facto trademark may not apply for injunctive relief,
especially when a competitor is infringing its rights.
AUSTRALIA
I.A.1.b. Quality and Quantity of Use
Resource Capital Australasia Pty Ltd. (the applicant) applied
to register the trade mark JAMES BONDI for entertainment
services. That application was opposed by Danjaq LLC (the
opponent), which claimed ownership of the well-known JAMES
BOND character.
Attempts by the opponent to serve documents at the
applicant’s principal place of business and registered office
revealed that the applicant could not be located at that address,
that the telephone had been disconnected and that there was no
current telephone listing for the applicant. The applicant’s post
office box address was also cancelled. Further enquiries conducted
on behalf of the opponent established that the applicant had made
numerous trade mark applications for marks that resembled trade
marks owned by other persons. It was also established that the
sole director, company secretary and shareholder of the applicant
company was an individual named Marcus Stephen Boland.
The opponent’s submissions included references to a recently
concluded Federal Court action involving the same corporation,
15. FV S.A. v. Videsur S.A. et al., Federal Court of Appeals, Division I, Case 8.726/03,
decided on October 2, 2003.
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with Mr. Boland being the sole director and secretary of the
corporation. In those proceedings, the judge had found that Mr.
Boland’s corporation had a history of cybersquatting—that is,
registering Internet domain names for pecuniary advantage. Mr.
Boland was, in the judge’s words, “a far from impressive witness
. . . (who) clearly has no great regard for the truth.” In the present
proceedings, the Hearing Officer accepted that there were strong
parallels between the applicant’s conduct in seeking to register the
trade mark JAMES BONDI, and other trade marks, and its
behaviour in registering the domain names at issue in the Federal
Court proceedings.
The principal ground of opposition advanced on behalf of the
opponent was that the applicant did not intend to use the trade
mark JAMES BONDI,16 however the opponent had not expressly
mentioned this ground in its notice of opposition.
As a preliminary matter the Hearing Officer referred to the
discretionary power of the Registrar to refuse to register a trade
mark even if the grounds of opposition have not been established.
The Hearing Officer accepted that as a public official the Registrar
must be concerned with the public interest. That interest could be
harmed by the wrongful registration of a trade mark that, during
the opposition proceedings, is revealed clearly not to qualify for
registration but in respect of which the reason for that
disqualification was not one of the grounds stated in the notice of
opposition. However, the Hearing Officer was prepared to exercise
the Registrar’s discretion in allowing the opponent to rely on that
ground.
In considering the opponent’s evidence and submissions, the
Hearing Officer considered each of the following issues in
determining whether the applicant possessed the requisite
intention to use the trade mark:
1. The applicant’s trading activities. These activities
included the limited business conducted by the applicant, the
breadth of the applicant’s claims as to both goods and services
in respect of which the applicant intended to use the trade
mark and the Federal Court’s assessment of the applicant’s
sole director and shareholder. Based on this information the
Hearing Officer drew an inference that the applicant did not
have the capacity or means to use the trade mark and that the
applicant’s expression of intention to use the mark was illfounded.
2. Other trade mark applications made by the applicant.
The applicant had made 22 trade mark applications and had
shown no interest in actively prosecuting those applications.
16. Danjaq LLC v. Resource Capital Australasia Pty Ltd, (2004) AIPC 91-984.
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3. Cybersquatting. When the applicant’s demonstrated
behaviour in relation to cybersquatting was juxtaposed with
its pattern of trade mark applications, the Hearing Officer was
prepared to draw a further adverse inference, namely that the
applicant sought trade mark registrations to sell such
registrations, in the same manner that it had sought to sell
domain names to their rightful owners, or that the applicant
sought to traffic in trade mark registrations rather than to use
the trade marks in trade.
4. Address for service. The applicant provided a postal
address for service that was inaccurate and had not attempted
to rectify that situation. The physical business address of the
applicant was, according to ASIC (Australian Securities and
Investments Commission) records, false at the time that the
trade mark application was made. These circumstances,
coupled with any of the other circumstances referred to by the
Hearing Officer under the headings Trading Activities, Trade
Marks’ History and Cybersquatting, gave rise to an inference
that the applicant had attempted in some way to insulate
itself from the repercussions of its behaviour. However, the
Hearing Officer emphasized that this was not necessarily a
matter that reflected on the applicant’s intention to use the
trade mark.
Having concluded these considerations, the Hearing Officer
was then required to determine whether such inferences were
enough to establish the relevant ground of opposition. According to
the Hearing Officer, quite clear inferences could be separately or
collectively drawn from the evidence that the applicant did not
intend to use the trade mark. The evidence from which these
inferences were drawn was unchallenged and unrebutted by the
applicant, which could have readily addressed such inferences in
its own evidence. The Hearing Officer found that the opponent’s
evidence was cogent, relevant and drawn from the records of the
ASIC, the Federal Court and the Trade Marks Office. That
evidence had a high provenance and credibility in a situation
where slight evidence should suffice to shift the onus onto the
applicant. The Hearing Officer therefore accepted the inferences in
the opponent’s evidence and was satisfied that the applicant did
not intend to use the trade mark. The trade mark therefore was
refused.
Oppositions based on an applicant’s lack of intention to use
are seldom successful in Australia. This is due largely to the onus
on the opponent of adequately establishing the absence of an
intention to use. The present case goes some way to bringing
together several threads that might be helpful for opponents
seeking to substantiate a claim that the applicant does not intend
to use the trade mark sought to be registered.
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I.B.9.a. No Similarity of Marks
Thorpedo Enterprises Pty Ltd. applied to register the trade
mark THORPEDO in respect of 13 classes of goods and services,
including clothing under Class 25 and a wide range of sporting
articles and games under Class 28. The word THORPEDO was a
nickname for Ian Thorpe, the well-known Australian swimmer.
Following acceptance of the trade mark, an opposition to the mark
was filed by Torpedoes Sportswear Pty Ltd. (Sportswear). At the
hearing of the opposition before the Registrar of Trade Marks,
Sportswear relied on several grounds of opposition, including that
the applicant’s trade mark was deceptively similar to prior existing
trade marks owned by the opponent. For purposes of that ground
of opposition Sportswear relied on its registrations for the trade
mark PARADISE LEGENDS TORPEDOES for all goods under
Class 28 and the trade mark TORPEDOES (with stylised letter T)
for clothing, including headgear and footwear, under Class 25.
The Registrar concluded that the trade mark THORPEDO was
neither substantially identical with nor deceptively similar to
Sportswear’s registered trade marks. The opposition failed for that
reason, and it also failed on the other grounds relied upon by the
opponent.
An interesting, albeit unsuccessful, argument was put to the
Registrar by Sportswear—that a connotation exists in the word
THORPEDO such that its use by the applicant company on the
specified goods and services would be likely to deceive unless such
use were endorsed by Ian Thorpe himself. On behalf of Sportswear
it was contended that any connection between Ian Thorpe and
Thorpedo Enterprises Pty Ltd. was tenuous and unsubstantiated.
Furthermore, there was no evidence that Ian Thorpe had
consented to or authorised the use of the word THORPEDO as a
trade mark. It appears that this argument failed as a result of the
Registrar’s discerning a sufficient connection between Thorpedo
Enterprises and Ian Thorpe such that Thorpe was found to be the
ultimate beneficiary of the commercial dealings conducted by
Thorpedo Enterprises Pty Ltd.
Sportswear appealed against the Registrar’s decision to the
Federal Court of Australia.17 The appeal was heard by Judge
Bennett in the Federal Court (New South Wales District Registry).
In relation to the nature of trade mark appeal proceedings, Judge
Bennett expressed the view that the scheme of appeals in
opposition proceedings under the Patents Act is applicable to
appeals in opposition proceedings under the Trade Marks Act. This
led to the conclusion that Sportswear’s opposition should be upheld
17. Torpedoes Sportswear Pty Ltd. v. Thorpedo Enterprises Pty Ltd., (2003) 59 IPR 318.
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only if the Court were satisfied that the trade mark clearly should
not be registered.
According to the judge, there was no evidence that the word
THORPEDO had been used as a trade mark prior to the
application by Thorpedo Enterprises Pty Ltd. to register the trade
mark. There was also no evidence of any actual confusion between
the word THORPEDO and Sportswear’s trade marks.
The principal ground of appeal was that the trade mark
sought to be registered was deceptively similar to the appellant’s
prior registration for the trade mark TORPEDOES with stylised
letter T. In relation to the issue of substantial identity, the judge
stated that the totality of the characteristics of the marks should
be taken into account. According to the judge, the T device and the
stylisation of that device within the trade mark TORPEDOES
were essential features in Sportswear’s trade mark. Those features
resulted in significant differences between the appellant’s trade
mark and the word THORPEDO and gave rise to a total
impression of dissimilarity. The judge concluded that compared
side by side the trade marks were not substantially identical.
In relation to the issue of deceptive similarity, the judge
referred to the likelihood of confusion as being “at the nub of
Sportswear’s contention,” having regard to the visual and aural
similarities. It was accepted that the onus was on Sportswear to
establish deception or confusion, and it was also conceded that if
the judge were unsatisfied or unsure as to whether confusion was
likely to emerge, the onus would not be satisfied and the trade
mark THORPEDO should then proceed to registration.
The judge provided a summary of the relevant principles
drawn from well-known and regularly cited cases. In applying
those principles the judge emphasized that much depends on the
words themselves, their origins and meanings and the surrounding
circumstances of their use. Each comparison further depends on
matters such as the pronunciation of the words and the categories
of goods to which the marks are to be applied. Included in the
principles summarised by the judge was the principle that where
an element of a trade mark has a degree of notoriety or familiarity
it would be artificial to separate out the physical features of the
mark from the viewer’s perception of them. The question of
resemblance, said the judge, is about how the mark is perceived.
No evidence of actual deception or of the manner in which
potential buyers would refer to the goods was tendered.
In her decision the judge concluded that the visual impression
of the marks was different. Even if the typeface and the joinder of
the letters in the word TORPEDOES were disregarded, the T
device conveyed an impression of dissimilarity. Aurally, the “th”
functions in ordinary use as a different letter and different sound
from “t,” and the presence of the “es” not only adds to the end of
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the word but also serves to shift to some extent the emphasis on
the syllables of TORPEDOES compared to THORPEDO. For these
reasons the judge was not persuaded that the words themselves
were aurally sufficiently similar to cause confusion.
A further factor likely to avoid confusion as to the origin of the
goods was the evidence that established a linkage between the
word THORPEDO and Ian Thorpe. According to the judge, that
linkage would reasonably extend to the minds of customers for
sporting goods and clothing. On that basis the judge was of the
view that it was unlikely that customers would attribute a
TORPEDOES origin to goods bearing the THORPEDO mark,
especially given that the test is not one of mere probability of
confusion but one of real, tangible danger.
Taking into account the visual and aural characteristics of the
marks, the judge concluded that Sportswear had not established
deceptive similarity, even accounting for imperfect recollection.
Furthermore, the judge was not satisfied that there existed a
likelihood of deception of confusion.
Under the heading “reverse confusion” the judge considered
whether the relevant section of the Trade Marks Act mandated a
consideration that, by reason of the reputation of the opposed
mark (the THORPEDO mark), purchasers of the goods with the
registered mark (the T device mark) might be caused to wonder
whether the source of those goods was Thorpe or Thorpedo
Enterprises Pty Ltd. According to the judge the answer was no.
Under that section, reputation is relevant only as a circumstance
to be taken into account in considering deceptive similarity.
The appellant also relied on a further ground of opposition
based on its prior reputation in the word TORPEDOES alone.
For purposes of establishing its prior reputation under the
relevant ground of opposition, Sportswear sought to rely on its
common-law rights in that word. However, given the aural and
visual differences between the words TORPEDOES and
THORPEDO, the judge was of the view that Sportswear had not
established that the marks were deceptively similar. Even if the
words were deceptively similar, the judge found that Sportswear
had failed to establish the degree of reputation required under the
Act. This ground of appeal, therefore, also failed.
In conclusion, the judge was not satisfied that any of the
grounds of opposition had been made out, and the appeal was
dismissed.
In addition to the detailed discussion of deceptive similarity,
the judgement includes a discussion of the meaning of substantial
identity. Many decisions under the relevant sections of the Act do
not canvass the assessment of substantial identity in any detail. In
the present case, the judge sets out a useful analysis of the
characteristics of the trade marks to be taken into account in
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making the appropriate side-by-side comparison. The judgement
also puts into context the role of reputation, or notoriety, in
relation to any assessment of deceptive similarity—that is, that
reputation is an appropriate circumstance to be taken into account
in considering deceptive similarity under the Act.
AUSTRIA
I.B.4. Geographical Names
Protection for the international word-device marks ERFURT
and ERFURT–RAUHFASER (raised fabric) was refused in
Austria. In the absence of an impressive figurative part, the worddevice mark presents itself as a mere word mark to the customer.
Moreover, the name of the German industrial town Erfurt is
understood as a reference to the geographical origin, particularly
since a “new meaning” of the geographical designation was not
proven and, therefore, distinctiveness was not obtained.18
I.B.7.a. Two-Dimensional Marks
An argument against registration based on lack of
distinctiveness of a combined word-device mark for food and
beverages consisting of the slogan “Plus, wir bieten mehr” (“Plus,
we offer more”) accompanied by an illustration of various fruits,
cheese and skewers remained unsuccessful. The Supreme Patent
and Trademark Board held that the general impression is crucial,
whereas a dissecting approach is not permitted. Even if some of
the parts of a mark taken alone may not be protectable, a
combined word-device mark can be registrable if parts are
designated graphically, resulting in a figurative effect, which was
accepted for the present case.19
I.B.7.b. Three-Dimensional Marks
An international, three-dimensional mark consisting of a tubeshaped container (for storing chocolate dragees) with printed
coloured lenses (in the shape of dragees known under the name of
SMARTIES) on its outside was finally granted protection in
Austria by the Administrative Court after the Patent Office barred
a registration. Protection was granted because it cannot be denied
that the coloured lenses printed on the above mentioned tubeshaped container are capable of indicating to the customer the
18. Administrative Court, September 24, 2003, Zl. 2001/04/0020 and 0021 (Bm 13 and
14/98)—Pbl 2004, 19.
19. Supreme Patent and Trademark Board, June 11, 2003, Om 3/03 (Nm 149/94 and
Nm 150/94)—Pbl 2004, 6.
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287
origin of the product dressed in such a way, and therefore,
distinctiveness can be assumed.20
I.B.22. Distinctiveness
Regarding the IR-Trademark “LADY DIANA– KÖNIGIN DER
HERZEN” DAS MUSICAL (“Lady Diana—Queen of Hearts” The
Musical), registered in Class 9 (records, cassettes, CDs, etc.) and
Class 41 (shows, musicals, operettas, etc.), it was decided that
protection in Austria could only be granted after proving acquired
distinctiveness. This was based on the ground that not only
appearance but also the theme, i.e., the content, is an essential
feature and characteristic of the product or performance. The mark
in question leaves, however, a priori no room to be regarded as
distinctive of an enterprise.21
I.B.23. Official and Certified Marks
A sign, used for cosmetic products, leather goods and clothing,
consisting of a blue circle and a ring of yellow stars with the letters
ITC and the words International Trade Consulting in the centre
has been denied registration as a trademark based on the fact that
a yellow ring of stars on a blue background is the emblem of the
European Council. Therefore, the sign includes a component that
is similar to that emblem. For this reason, registration as a
trademark would have only been possible after proving
entitlement for use of the sign.22
II.D.1. Jurisdiction/Authority
After a judgement for costs of the Supreme Patent and
Trademark Board in second and last instance in a nullification
procedure, which had been ended because of the abandonment of
the trademark, one of the two parties filed an appeal at the
Constitutional Court, whereas admissibility of such an appeal was
under dispute.
The Constitutional Court stated that, since decisions of the
Supreme Patent and Trademark Board may not be nullified or
amended in an administrative procedure, the appeal is admissible.
In the present case the appeal was nevertheless unsubstantiated
20. Administrative Court, April 23, 2003, Zl. 2001/04/01/05 (Bm 7/98)—Pbl 2004, 16.
21. Austrian Patent Office (Appeal Division), March 22, 2001, Bm 27/2000 (IR
1219/99)—Pbl 2003, 108.
22. Austrian Patent Office (appeal division), April 10, 2003, Bm (15/02)—Pbl 2003, 161.
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because the constitutional right to hold personal property was not
infringed by an unreasonable interpretation of the law.23
II.E. Forum Conflicts
In the course of an action for injunction, involving Austrian
marks as well as Community Trademarks, the Austrian Supreme
Court stated for the first time that it—but not the European Court
of Justice—is competent to decide upon remedies against decisions
of the (national) Community Court of the second instance, i.e.,
Oberlandesgericht Wien (Upper District Court of Vienna),
concerning the infringement of a Community Trademark.24
In order to recover outstanding debt from a foreign (Czech)
company, the credit company sued the debtor in Austria based on
the fact that the debtor owns an international trademark that is
also valid in Austria. While the action was in limine dismissed by
the courts of first and second instance (Commercial Court of
Vienna, Upper District Court of Vienna), the request was
eventually affirmed by the Supreme Court based on the following
grounds. The international trademark is a domestic asset,
corresponding (in the present case) to about 20% of the value of
litigation, therefore, domestic jurisdiction exists. The selection of
the court depends on the location of the Austrian Patent Office
because the latter may influence existence, continuance and scope
of the trademark in Austria. Therefore, the suit was rightly filed
with the Commercial Court of Vienna.25
III.A.2.b. Similarity of Marks
A proceeding for preliminary injunction involved an older word
mark KLEINER FEIGLING (little coward) and a word-device
mark KLEINER FEIGLING (with an illustration of a pair of eyes
on a dark background looking to the right) and the use of the
younger word mark KLEINER FRECHDACHS (little cheeky
monkey) and the word-device mark KLEINER FRECHDACHS
(with an illustration of a manikin on a dark background whose
eyes are looking to the right). The trademarks were competing in
the market, both being used for fig liqueur with vodka. The owner
of the younger trademark was also using the slogan “Sei kein
Feigling, trink kleiner Frechdachs!” (“Don’t be a coward, drink
little cheeky monkey!”).
23. Constitutional Court, February 26, 2001, B 1177/00 (Supreme Austrian Patent and
Trademark Board, March 29, 2000, Om 6/99)—ÖBl 2003, 153.
24. Supreme Court, January 21, 2003, 4 Ob 185/02p—ÖBl 2003, 186.
25. Supreme Court, July 8, 2003, 4 Ob 128/03g—ÖBl 2004, 31.
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289
The preliminary injunction was granted by the Supreme Court
on the following grounds: Aside from the adjective klein (little), the
average consumer would retain a vague recollection of a character
trait that begins with the letter “F” and a pair of eyes on a dark
background. Considering that the younger trademark also
contains a character trait of two syllables that begin with the
letter “F” and an illustration that is largely similar to the older
word-device mark, danger of confusion can be assumed. Moreover,
the use of the word Feigling (coward) coining the older trademark
in the advertising slogan was deemed to be an unauthorized use of
the older trademark.26
III.A.10. Nonuse of Trademark
In a cancellation action pursued by Hugo Boss AG based on
nonuse against the word mark BOSS for cigarettes, the trademark
owner justified the nonuse of the trademark by the fact that it had
been at odds with Hugo Boss AG for a long time, and that the
adversary had repeatedly threatened the owner so that a launch of
the product in Austria would have to be carried out with all due
caution. This reasoning was not regarded as a justification of
nonuse by the Supreme Patent and Trademark Board because the
owner was aware of the risks regarding this registration from the
beginning: Basically a nonuse can only be justified by facts that lie
outside of the sphere of influence of the owner.27
The Austrian Trademark BUDWEISER BÜRGERBRÄU for
beers brewed in Budweis (Czech Republic) was cancelled upon
request on the basis of nonuse because the total beer imported was
7.5 hectolitres in 2000 and, therefore, was not regarded as a
serious use of the trademark in Austria compared to the total beer
turnout of about 200,000 hectolitres of the company for the same
year.28
III.A.11.a. No Similarity of Marks
The owner of the world famous trademark OMEGA (including
the capital Greek letter Ω), registered for watches, took action
against the younger word-device mark MEGA 5, also registered for
watches, but remained unsuccessful. The Supreme Patent and
Trademark Board stated that the term “Mega” used for watches
26. Supreme Court, January 21, 2003, 4 Ob 273/02d—ÖBl 2003, 182.
27. Supreme Patent and Trademark Board, March 12, 2003, Om 14/02 (Nm 49/99)—
Pbl 2003, 171.
28. Supreme Patent and Trademark Board, March 12, 2003, Om 15/02 (Nm 33/00)—
Pbl 2003, 174.
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was to be considered a relative fanciful term, having
distinctiveness. In addition, MEGA 5 was not considered
confusingly similar to OMEGA because MEGA as part of OMEGA
was not regarded as the main element, but only understood as a
part of the word. Moreover, OMEGA does not include a digit and
differs from MEGA 5 with respect to sound as well as meaning.29
III.A.12. Lack of Distinctiveness
Numerous design marks, basically consisting of multicoloured,
uniquely curved pasta/gel chords, have been contested in a
combined procedure based on lack of distinctiveness. These marks
were registered in International Class 3, covering goods such as
laundry preparations and laundry bleach but including
dentrifrices and mouthwashes. Ultimately, the marks have been
cancelled only with regard to dentrifrices because the trademarks
have been judged as a depiction of the actual appearance of the
goods. For the remaining goods of International Class 3, the
Supreme Patent and Trademark Board held that, due to peculiar
characteristics and distinctive traits, the marks can be understood
by the market as an indication of the operational origin of the
goods.30
III.F.3. Nullity
The international trademark, TALALAY, registered since
1993 among other goods for filling material and mattresses made
of latex, has been declared invalid in the territory of the Republic
of Austria upon request because, at the time of the priority date of
the trademark, the name TALALAY had long since been a generic
term for a manufacturing process for latex foam and therefore
lacked distinctiveness.31
III.F.5. Cancellation
In 1995, a device trademark LEX NET was registered for a
number of services, among others for education and electronic data
processing services. A cancellation action was initiated by the
holder of an older registration for LEXIS, registered for education
facilities, computers, research, etc. The LEX NET applicant raised
objections including that the registered holder of the LEXIS
29. Supreme Patent and Trademark Board, July 10, 2002, Om 2/02 (Nm 144/96,
145/96)—Pbl 2003, 88.
30. Supreme Patent and Trademark Board, April 23, 2003, Om 5/02 (Nm 42-46/97
etc.)—Pbl 2003, 176.
31. Austrian Patent Office (Nullity Division), June 25, 2003, Nm 15/2000—Pbl 2003,
187.
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291
trademark, a company, had never existed, i.e., neither at the time
of the trademark application nor at the time of the cancellation
request, which also constitutes a reason for cancellation. However,
in the course of the proceedings it turned out that at least one of
the persons who had intended to found a company at the time of
the trademark application is still engaged in a business that—
according to the provisions of a former regulation—could provide
the services of the trademark LEX NET. Consequently, this person
was considered to be passively legitimized. Because the device
mark LEX NET was not regarded to be confusingly similar to the
word mark LEXIS, the trademark register was bound to register
this single person as the trademark owner of the prevailing
trademark LEX NET.32
In a cancellation action against MANPOWER trademarks
based on nonuse, the Supreme Patent and Trademark Board
discussed among other things whether the use of the sign on
classic promotional articles (such as pocket diaries and ball-point
pens) is deemed as use of a trademark for the service “provision of
personel.” As opposed to goods, a designation of the origin of
services cannot be achieved by a direct, physical link between the
mark and the services. Rather, the legally relevant use of a service
mark consists in a mental connection established by the trade
concerned, assigning a service to a particular company. This
mental connection is created by rendering the service in such a
way that it is obvious for the customer that the service was
furnished under the trademark. In the present case, the Supreme
Patent and Trademark Board held that the use on advertising
material qualifies as a use of the trademark.33
An entrepreneur whose grandfather obtained permission to
use the name Radetzky by the great-grandson of the legendary
Austrian Field Marshal, Joseph Wenzel Graf Radetzky, uses the
designation “Radetzky Weingut” (Radetzky Winery) and also owns
numerous word and word-device marks for alcoholic beverages,
which include the name Radetzky.
The great-great-grandson of Graf Radetzky cofounded
Radetzky Weinhandelsgesellschaft mit Beschränkter Haftung
(“Radetzky Wine Trade Limited”) in 1983 and obtained
trademarks for wine, champagne, etc., although he was aware of
the older rights granted otherwise by his father. In a cancellation
request against his younger trademarks by the above-mentioned
32. Austrian Patent and Trademark Board, December 11, 2002, Om 11/02 (Nm
163/96)—Pbl 2003, 76.
33. Supreme Patent and Trademark Board, December 11, 2002, Om 13/02 (Nm 210/97
to Nm 212/97)—Pbl 2003, 99.
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entrepreneur, based on confusing similarity of the trademarks to
his older trademarks and company name, the great-greatgrandson justified himself with reference to his right of name and
also claimed forfeiture, particularly because he had been in contact
with the appellant who was well aware of the younger trademarks.
However, he remained unsuccessful because it was rightly held
that the appellant has a derivative right to use the name Radetzky
and, therefore, owns older valid trademarks with which the
younger trademarks were deemed confusingly similar due to the
distinctive part RADETZKY. Furthermore, the older business
designation was also deemed to be a basis for cancellation of the
younger marks. Regarding the claimed forfeiture, it was held that
acquiescence is present only if, upon consideration of all facts, the
behaviour of the owner of an older right clearly indicates that he
will likely not take action against a younger trademark within a
period of five years, starting from the day the owner gained
knowledge of the use of the younger trademark. The presumption
of acquiescence is excluded if a warning was given within that
timeframe. Therefore, despite the authorized use of his name for
his company, the opponent should have obtained the applicant’s
permission prior to the registration of the challenged trademarks.
However, this was not the case.34
Based on the use of the establishment’s designation VILLA
KUNTERBUNT for a restaurant since 1993, the owner achieved
the cancellation of the trademark HOTEL VILLA KUNTERBUNT,
registered in 1995 for the services “temporary accommodation;
services for providing food and drinks.” This ruling was issued
because, in a conflict of property rights, priority is crucial because
the opposing designations are virtually identical and the services
of a café/restaurant are identical to “services for providing food and
drinks” and similar to “temporary accommodation.”35
III.L. Opposition/Cancellation Procedure
The cancellation request against a trademark was delivered by
the Austrian Patent Office to the foreign, French-speaking owner
of the mark but was forwarded in its enterprise to the clerk only
after the term for filing a reply had expired. The petition for
restitution was granted in spite of the applicant’s objections on the
following ground: both misplacing and forgetting a postal item as
well as communication, organisational or actual failures by the
34. Austrian Patent Office, Nullity Division, March 6, 2003, Nm 72/97 to 75/97—Pbl
2003, 114.
35. Supreme Patent and Trademark Board, April 9, 2003, Om 1/03 (Nm 264/99)—Pbl
2003, 185.
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293
defaulting party that resulted in a party not gaining knowledge of
a legally effective delivery without (gross) fault on its part,
therefore suffering legal prejudice, are circumstances that in the
event of mere slight negligence can still lead to restitution. A
minor error does not hinder the restitution. A minor error is
assumed if a mistake is committed that could also be made on
occasion by a diligent person. For parties not versed in the law, no
severe standards shall be set in judging the lack of diligence that
leads to default.36
III.M. Licensing Issues
In an infringement suit where the nonexclusive licensee of the
word mark BRÜHL successfully opposed the use of the same name
in a combined word-device mark by a competitor, the Supreme
Court again37 had to consider the right of action of a licensee.
Whereas hitherto it was clear that the exclusive licensee is entitled
to take action against infringements of trademark rights by third
parties, the Supreme Court now held that also the nonexclusive
licensee is entitled to sue, provided that he was authorized to do so
by the licensor.38
V.A. Domain Names
A company founded in 1999, using the designation INET in its
company name and also having this designation registered as a
trademark for Internet technology services, filed a cease and desist
action against a software company that had possessed the domain
inet.at since 1997, but did not use it actively to maintain contact
with its clients. As the defendant was able to prove that it had
used its domain (or email address, respectively) after its
registration at least for redistributing emails received from its
clients, this was regarded as reasonable distinctive use. Due to the
priority of the domain have over the registration of the company
and the trademark, the plaintiff did not succeed.39
The Austrian Company AMS Auto - und Motoren - Service
GmbH, registered since 1975 and engaged in the field of motor
vehicle mechanics, registered the domain ams.at in July 2001. In
1994, a public service company, whose name Arbeitsmarktservice
(“job market service”) was abbreviated AMS, was established by
36. Supreme Patent and Trademark Board, September 25, 2002, Om 12/02 (Nm
19/00)—Pbl 2003, 74.
37. Reported at 93 TMR 529 (2003).
38. Supreme Court, October 15, 2002 4 Ob 209/02t—ÖBl 2003, 87.
39. Supreme Court, August 20, 2002, 4 Ob 101/02k—ÖBl 2003, 180.
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federal law, assigned to execute the labour policy of the federal
government. It owned the word-device mark AMS since 1996 and
runs a websiteams.or.at. The public company demanded cease and
desist and assignation of the domain ams.at from the defendant,
claiming that AMS would possess outstanding distinctiveness, and
therefore, a consideration of interests in favour of the plaintiff
would have to be taken. However, the action was ultimately
dismissed by the Supreme Court. The court reasoned that the
defendant’s right to the name of the defendant was of older priority
than the trademark rights of the plaintiff. In addition, the interest
of the plaintiff to be in possession of the domain name ams.at was,
in spite of its prominence, not to be judged considerably more
important than the interest of the adversary in using its website in
the future for doing business. With this ruling, the Supreme Court
for the first time addressed the issue of under which circumstances
even the authorized use of a name can be unlawful. In conclusion,
it held that unlawfulness is to be assumed when the interest is
deemed significantly less valuable than the interest of a person or
entity with the same name to use that name without restriction.40
On the occasion of a legal dispute concerning the use of the
toponym “Adnet” (a tourist hamlet community in the Austrian
federal state of Salzburg) by a local private individual in his
domain adnet.at the, Supreme Court had the opportunity to make
some groundbreaking statements.
The registration of a toponym connected with the top-level
domain “.at,” as well as with “.com” or “.org,” does not constitute a
challenge of the right of the owner of the name (i.e., the
community). A presumption of name only interferes with the rights
of the owner of the name if it violates the worthy interests of the
owner, i.e., if the unauthorized use of the name leads to a
confusion of attribution. In the case of domains, not only the
domain name but also the content is critical because the risk of
confusion can be precluded by a clarifying notice (as it was in the
present case). A violation of other legitimate interests of the owner
of the name (i.e., the community) can be assumed in case of a
conflict of interests. However, such a conflict was denied in this
case because the private individual referred on his webpage to the
homepage of the community and generally served the interests of
the community, particularly to make a positive impression to
foster tourism. Therefore, a unity of interests existed.41
40. Supreme Court, November 5, 2002, 4 Ob 207/02y—ÖBl 2003, 140.
41. Supreme Court, May 20, 2003, 4 Ob 47/03w—ÖBl 2003, 271.
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As part of a marketing concept, a hotel operator planned to
run several hotels under the common name CENTRO-HOTELS,
and therefore, registered the domain centro-hotels.com in 1998. In
1999, another corporation was founded under the chosen name of
Centro-Hotel, which in 2000 applied for a corresponding
trademark, started operation of a hotel and got the domain centrohotel.at. Although the latter company has the later priority
regarding the firm’s name, the trademark, the name of the
establishment and the domain, it requested, in a preliminary
injunction proceeding, the cessation of the use of the older domain
centro-hotel.com based on a consideration of interests, claiming
that at the time of filing the lawsuit the defendant was still
running only one hotel. However, the action finally proved
unsuccessful. The Supreme Court held that the interests of the
plaintiff, being the owner of the domain centro-hotel.at, are not
deemed considerably more valuable than the interests of the
defendant so that injunctive relief based on the right to the name
was not justified. Even under the concept of “stocking” of rights on
considerable reasons it was not justified to ban the defendant from
using the designation “centro-hotel” because his marketing concept
might still prove successful. Also, deception of the trades concerned
was ruled out by the Supreme Court. It conceded that the trade
concerned is well aware of the fact that each domain name can
only be granted once, and therefore, meaningful Internet
addresses may not be available in an unlimited amount. Thus, the
mere use of the disputed domain name cannot be seen as
deceptive.42
The media company RTL, well known in Austria and in the
surrounding countries, successfully took action against an
advertising specialist, demanding cessation of use and consent to
cancellation of the domain name rtl.at, having earlier priority and
consisting of the latter’s initials. The Supreme Court held that the
defendant’s pseudonym “rtl” or “r.t.l.” has a name function and is,
therefore, protected like a name. However, the necessary
consideration of interests was made in favour of the media group
that had achieved a valuable reputation worthy of protection. The
defendant was expected to use his full name for his Internet
presentation. Furthermore, in a groundbreaking remark, the
Supreme Court held that neither the net designation (i.e., www)
nor a top-level domain (i.e., .at or .com) are relevant for
distinguishing names. The second-level domain is the decisive
42. Supreme Court, May 20, 2003, 4 Ob 103/03f—ÖBl 2003, 241.
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component in determining the general impression of a domain
name.43
BENELUX
I.B.11.a. Copyright Protection
While denying the similarity between the trademarks
TRÉSOR (which translates to “treasure”) and FEMALE
TREASURE, the Court of Appeal in Bois-le-Duc, in a landmark
decision, ruled that the composition of TRÉSOR perfume enjoyed
copyright protection, and it enjoined the FEMALE TREASURE
product.44 Kecofa’s FEMALE TREASURE perfume contained 24 of
the 26 olfactory components contained in Lancôme’s TRÉSOR. The
chance that this was accidental was computed as being the same
as for winning the lotto every day during an entire century. This
was considered sufficient proof that FEMALE TREASURE was
infringing the TRÉSOR copyright.
I.B.11.e. Bad Faith
The Benelux Court of Justice has rendered a decision in
Unilever N.V. v. Arctic N.V.45 From 1997 onward, Unilever
successfully marketed an ice cream product under the name of
WINNER TACO. The product is sold in the form of a taco. In early
1999, Arctic started marketing a similarly shaped ice cream under
the trademark EL TACO, after clearing with the Trademarks
Registry that Unilever had not registered the WINNER TACO
shape. Following Arctic’s introduction of its competing product,
Unilever registered its shape of the ice cream as a trademark. The
matter before the Benelux Court of Justice concerned the question
whether that registration by Unilever was done in bad faith,
considering that Unilever knew, at that moment in time, that
Arctic was already using a similar shape. The Benelux Court of
Justice ruled that under the given circumstances there was no bad
faith. The Court considered that the mere knowledge of use by
Arctic within Benelux, of which Unilever was aware at the time of
filing the application, did not constitute an act of bad faith in itself,
given that Unilever had used its mark well prior to Arctic.
43. Supreme Court, March 25, 2003, 4 Ob 42/03k—ÖBl 2004,35.
44. Lancôme Parfums et Beauté et cie S.N.C. v. Kecofa B.V., Court of Appeal, Bois-leDuc, June 8, 2004, IER 73 (2004), NJ 515 (2004).
45. Benelux Court of Justice, June 25, 2004 (not published). The decision in this case at
the court of first instance was discussed at 92 TMR 271 (2002).
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I.B.13. First to Apply Versus First to Use
Sogni d’Oro Trading B.V., the plaintiff in this case, is a trader
in waterbeds. The firm alleges that it developed the trade name
ALIVIO for these goods. On May 15, 2003, Sogni d’Oro registered
ALIVIO WATERBEDS as a trading style with the Netherlands
Chamber of Commerce. A week thereafter, the defendant,
Baltimore Waterbedden B.V.—likewise a waterbed supplier—
registered ALIVIO as a trademark with the Benelux Trademarks
Office in International Classes 10, 20 and 35. The plaintiff claimed
that the defendant’s registration had been done in bad faith,
arguing that Baltimore knew or should have known about Sogni
d’Oro’s use of ALIVIO WATERBEDS as a trading style prior to
Baltimore’s registration of ALIVIO. The President of the District
Court of Leeuwarden rejected the claim on the ground that the
plaintiff could not substantiate it.46 Even worse for the plaintiff,
the President stated that its use of ALIVIO WATERBEDS
constituted an infringement of the defendant’s legitimately
registered trademark ALIVIO, and consequently Sogni d’Oro was
ordered to cease and desist in the use of its trading style. This case
is yet another warning not to rely upon the use of a trading style
but, if possible, to register it as a trademark, even when there may
be doubt that the name is being used as such.
III.A.2.b. Similarity of Marks
Plaintiff Pfizer Inc. is the owner of various Benelux and CTM
trademark registrations for the word VIAGRA, as well as for the
specific figurative element of the drug sold under that name. In
Benelux VIAGRA is a prescription drug only. Defendant Alpha
Pharmaceuticals B.V. sells blue-colored, hexagonally shaped pills
under the trademark SIGRA as a sexual stimulant. These are sold
through the Internet and so-called smart shops. The District Court
of Zutphen held that there was indeed auditive, visual and
conceptual similarity between both marks. Interestingly, the court
found that as VIAGRA is a prescription drug, the general public
had only an imperfect recollection of the shape of the product. As
the choice of the color blue and the hexagonal form was
unnecessary to the proper functioning of the product, these aspects
also were held to infringe the plaintiff’s rights, and the court
enjoined any use of a product under the name SIGRA in a form
consisting of blue hexagonal tablets.47
46. Sogni d’Oro Trading B.V., a.k.a. Alivio Waterbeds v. A.I. Baltimore Waterbedden
B.V., President of the District Court, Leeuwarden, August 28, 2003 (not published).
47. Pfizer, Inc., v. Alpha Pharmaceuticals B.V., District Court, Zutphen, March 24,
2004, NJF 352 (2004).
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In the same case, the Netherlands licensee of the plaintiff had
joined in its action against the defendant. However, this is possible
only with the explicit approval of the trademark owner. The fact
that the trademark owner was a co-plaintiff in the same matter
could not be held to contain such approval. As a result, the
licensee’s claims were rejected.
Dance Valley B.V. v. Stichting Musicon Tilburg concerned a
Community Trade Mark (CTM) registration for DANCEVALLEY,
invoked against the use of the defendant’s mark DANCEHILL.48
The defendant claimed that the opposing mark lacked
distinctiveness. The President of the District Court of Tilburg held
that, as the plaintiff’s mark had been registered by the European
Trademarks Office after a thorough and critical examination and
the defendant had not filed a cancellation action, the registration
must be considered valid. Subsequently, the use of the defendant’s
mark was enjoined. This case is a reminder that it is advisable to
re-counter summary actions based on descriptive CTM
registrations with the filing of a cancellation action.
According to the President of the District Court of Zwolle, the
defendant, Mr. Nijkerk, did not infringe plaintiff Microsoft’s
trademark rights by reserving the alphanumeric telephone
numbers 0800-MICROSO and 0900-MICROSO. The numbers were
not intended to be used in commerce and consequently could not
constitute an infringement. Nijkerk pointed out his intention to
use the name MICROSOOF in relation to his commercial activities
and, therefore, claimed the domain name microsoof.nl. The
President did not qualify this as having infringed Microsoft’s
trademark rights either. On appeal, the Court of Appeal in
Arnhem partly reversed the President’s decision and ruled that the
use in commerce of MICROSOOF did indeed constitute an
infringement of the plaintiff’s trademark rights.49 Microsoft failed,
however, to convince the appellate court that Nijkerk’s reservation
of the alphanumeric telephone numbers infringed its trademark
rights. By simply reserving numbers corresponding to a
trademark, therefore, one should not be found to have taken unfair
advantage of or caused damage to the reputation of the owner. As
long as Nijkerk does not use names identical or similar to the
MICROSOFT mark, no problems should arise.
48. Dance Valley B.V. v. Stichting Musicon Tilburg, President of the District Court,
Tilburg, January 30, 2004, IER 48 (2004).
49. Microsoft B.V. v. Wouter Nijkerk, a.k.a. Omega, Court of Appeal, Arnhem,
March 23, 2004, IER 38 (2004).
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In SNS Reaal Groep NV v. SNS Group plc, the President of
the District Court of Bois-le-Duc had ruled that the plaintiff’s
registrations of its SNS marks in Class 35 had partially lapsed as
a result of nonuse and that the defendant had a valid reason for
the use of its trading style SNS Group plc in Benelux because it
was legally established in the UK, its home country.50 The plaintiff
is a well-known bank in Benelux. The defendant uses its name in
respect of public relations services.
On appeal, the President’s judgment was overturned. The
Court of Appeal in Bois-le-Duc assumed likelihood of confusion,
taking into account that the plaintiff’s service marks for banks
have a well-established reputation in Benelux. In addition, a
market research report revealed that a third of the public
associated the defendant’s mark with the plaintiff. As a result,
SNS Group was ordered to cease and desist in the use of its trade
name and trademark containing the word element SNS.51
After having initiated summary proceedings before the
Finnish court in Helsinki, which admitted its claim, Microsoft
Corp. asked the President of the District Court of Amsterdam to
order Lindows.com, Inc. to cease and desist in the use of its signs
LindowsOS and Lindows.com in Benelux.52 Lindows.com, Inc. is an
American software company that markets operating systems
under the name LindowsOS. This operating system is equally
compatible with both LINUX and WINDOWS software. The
President ruled that although the defendant correctly alleged that
it was entitled to make use of the WINDOWS trademark to
indicate the destination of its products, this did not imply that
Lindows.com could use the WINDOWS mark, albeit in altered
form, in the name of its own products. In this sense, Lindows.com
took unfair advantage of the distinctive character and reputation
of the WINDOWS trademark. Because LindowsOS and
WINDOWS are used for identical or at least similar goods, that
made it likely that the visual and auditive similarity would
confuse the average informed, cautious and observant consumer.
III.A.11.b. No Similarity of Goods/Services
The plaintiff in this case, McDonald’s, is the owner of various
Benelux trademarks containing the prefix Mc-. With the exception
50. SNS Reaal Groep N.V. v. SNS Group plc, President of the District Court, Bois-leDuc, May 22, 2003, IER 71 (2003). See the discussion at 94 TMR 311-12 (2004).
51. SNS Reaal Groep N.V. v. SNS Group plc, Court of Appeal, Bois-le-Duc, October 14,
2003, IER 11 (2004).
52. Microsoft Corp. v. Lindows.com, Inc., President of the District Court, Amsterdam,
January 29, 2004, IER 47 (2004).
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of the trademark McDONALD’S, the suffix of most of these marks
refers to a specific fast food product or generic indication (e.g.,
McDONUT, McSHAKE, McSNACK). The defendant, Mr. F.
Schaap, has registered the trademark McSMART with the Benelux
Trademarks Office for so-called “smart products,” such as herbs
and mushrooms, which are considered illegal drugs in many
jurisdictions. The Regional Court in Utrecht found that although
the goods for which both trademarks were registered were meant
for human consumption, McSMART products were offered mainly
in stores or through the Internet, while McDonald’s used
restaurant outlets. Furthermore, McDonald’s main interest lay in
the fast food market, whereas the McSMART mark focused on the
alternative drug market, which served a quite different type of
specific consumers. As a result, the court ruled, these goods were
considered dissimilar. The court also held that although there was
a certain relationship between both marks—notably the use of the
prefix Mc-—the similarity was not sufficient to cause risk of
association. Noting that there are various registrations by third
parties in Benelux for trademarks containing the prefix Mc-, the
court ruled that the mere fact that the defendant used his mark for
specific food products did not in itself constitute a breach of the
plaintiff’s trademark rights, as it was unlikely that the public
would associate McSMART with fast food products. As a result, the
plaintiff’s claims were dismissed.53 Surprisingly, the fact that
“smart products,” might provide a negative association with the
famous McDONALD’S trademarks apparently was not made an
issue in this case.
III.A.12. Lack of Distinctiveness
Plaintiff Gratiz.nl Internet Diensten (Gratiz.nl) provides a
Web page—gratiz.nl—that contains links to free products and
services. Gratiz.nl has registered the word mark www.gratiZ.nl
with the Benelux Trademarks Office. Defendant Matrix B.V.
provides similar services under the domain name gratis.nl. The
Groningen District Court ruled that the www.gratiZ.nl trademark
did not have any distinctiveness and consequently declared its
registration void. This was upheld by the Court of Appeal in
Leeuwarden, which also expressly confirmed that the plaintiff’s
trademark registration was void on the grounds of descriptiveness
of the dominant element “gratiZ.”54
53. McDonald’s International Property Co. Ltd. v. F. Schaap, Regional Court, Utrecht,
April 14, 2004 (unpublished).
54. E. Scholtens, d.b.a. Gratiz.nl Internet Diensten v. Matrix B.V., Court of Appeal,
Leeuwarden, July 23, 2003 (not published).
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III.A.15. Deceptive Use
M.J. van Meeteren, the defendant in this case55 trades in new
and used automobiles of the trademark MERCEDES-BENZ.
However, he is not a member of the dealer organization of
DaimlerChrysler AG, owner of the MERCEDES trademark. The
defendant has, inter alia, claimed the domain name
vanmeeterenmercedes.nl. The MERCEDES trademark is
frequently used on his site. In conformity with case law of the
European Court of Justice,56 the District Court of Breda ruled that
the use of a brand for cars by an enterprise that is not a member of
the dealer organization of the trademark owner was allowed only
insofar as this use did not give the impression that a certain
relationship existed between the enterprise and the trademark
owner. In more practical terms, the court held that van Meeteren
was entitled to use the MERCEDES trademark to indicate the
goods in which he trades and to inform the public that he is a
specialist in the field of MERCEDES automobiles. The defendant
used the trademark, however, as a part of his secondary trading
style, viz., Van Meeteren Mercedes and Van Meeteren MercedesBenz. This specific use of the trademark, as well as the use of the
domain name vanmeeterenmercedes.nl, was found to be an
indication of the enterprise rather then an indication of the goods
sold under the trademark. The public might, consequently, have
the erroneous impression that there was a relationship between
the defendant and DaimlerChrysler AG. Use of both the trading
style and the domain name, therefore, was subsequently enjoined.
III.B.6. Configuration of Goods
The plaintiff, Distillers & Vintners Amsterdam B.V. (UDV), is
the owner of various Benelux trademark registrations for the
trademark MALIBU, as well as for a design mark comprising a
two-dimensional reproduction of a non-transparent white bottle
with a brown cap. MALIBU has become well known in Benelux for
a rum-based coconut liqueur. The defendant, Koninklijke
Cooymans B.V., has been selling a similar coconut liqueur under
the trademark SURFERS in Benelux since 1987. From 1994
onward SURFERS had also been marketed in a white, nontransparent bottle with a brown cap. In the first instance, the
District Court of Breda dismissed the plaintiff’s infringement
claim and ruled that there was no likelihood of confusion in the
55. DaimlerChrysler AG v. M.J. van Meeteren d.b.a. Handelsonderneming M. van
Meeteren, District Court, Breda, January 14, 2004, IER 46 (2004).
56. See e.g., ECJ, February 23, 1999 (NJ 134 (2001)), and September 25, 2000 (NJ 245
(2001)).
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mere use of a white bottle with a brown cap for an identical
liqueur. The District Court held that the white, non-transparent
bottle with a brown cap was not distinctive and ordered
cancellation of plaintiff’s corresponding registration.
The Court of Appeal in Bois-le-Duc, in reversing the District
Court’s ruling, held the bottles to be confusingly similar and,
moreover, ruled that the two-dimensional registration of the
MALIBU bottle could indeed result in protection of its threedimensional shape.57 The plaintiff could, therefore, object against
the use of the defendant’s three-dimensional bottle on the basis of
its registration for a two-dimensional bottle. In addition, the Court
of Appeal rejected the defense that the MALIBU bottle trademark
was not used per se but rather was used exclusively in
combination with a MALIBU label and that consequently there
was no proper use of the mark as registered. The appellate court
held that such combined use also implied use of the mark as
registered. Despite the fact that the SURFERS bottle had been
used for a number of years in many markets, the Court of Appeal
rejected the defendant’s claim that UDV had acquiesced in the use
of the bottle, and even ordered that all profits made by the use of
the bottle be surrendered to UDV. This decision should serve as a
caution to the users of brands not to rely too much on the rule of
acquiescence and also as advice to trademark owners to at least
send a letter of objection to the owner of a later, similar mark,
even if the matter is not at that point brought before the court.58
III.F.3. Nullity
MELROSE is the name of a music group. The name had
originally been introduced into the group by the defendant. The
partners of the group had signed a partnership deed, which
expressly stipulated that members could resign at any time by
simply informing the others. It also stated that in case of
resignation the remaining members had the right to take over the
assets of the partnership, including the trade name. The defendant
registered the trademark ALL-ROUND ORKEST MELROSE (“AllRound Orchestra Melrose”) with the Benelux Trademarks Office in
International Classes 9 and 41 in his own name in 2000, three
years after the partnership was formed. The plaintiffs claimed that
as the defendant had resigned from the partnership he should not
57. Distillers & Vintners Amsterdam B.V. v. Koninklijke Cooymans B.V., Court of
Appeal, Bois-le-Duc, July 29, 2003, IER 9 (2004).
58. Under Article 14bis of the Uniform Benelux Trademarks Law the holder of a senior
trademark can no longer object to the use of a junior registered trademark if he has
knowingly acquiesced in the use thereof during five consecutive years, unless the junior
mark was registered in bad faith.
Vol. 95 TMR
303
make further use of the name MELROSE and his trademark ALLROUND ORKEST MELROSE. The President of the Groningen
District Court ruled that the name MELROSE belonged to the
partnership, being the defendant’s contribution at the time of its
foundation.59 All rights to this trade name had been surrendered at
that time. With regard to the defendant’s trademark registration,
the President ruled that it had been obtained in bad faith. Such a
registration cannot be ordered cancelled in summary proceedings,
but the President could and did enjoin any use thereof by the
defendant.
III.L. Opposition/Cancellation Procedure
Granuband B.V, the defendant in the case at the court of first
instance, had summoned the plaintiff, Granuflex Ipari Es
Keresdemi Kft (Granuflex), before the President of the District
Court of Bois-le-Duc in summary proceedings to object to the
alleged infringement of Granuband’s Community Trade Mark
GRANUFLEX. The President admitted the claim by default of
Granuflex. Granuflex opposed the decision, and appealed. The
President, however, ruled that the objection was inadmissible, as
the plaintiff’s claims were not based on the correct legal grounds.
Granuflex had not mentioned or alleged the terms Community
Trade Mark and Community Trade Mark Regulation. As the
claims should be based on the latter, the fact that the plaintiff did
in fact invoke some articles of the Benelux Trademarks Act was
considered irrelevant.60
V.A. Domain Names
The plaintiff is the owner of the Benelux trademark HOLIDAY
CARS & Device in respect of car rental services and also owns the
domain name holidaycars.nl. Prior to the plaintiff’s trademark
registration, the defendant had claimed the domain name
holidaycar.nl, which offers identical services. In summary
proceedings61 the President of the District Court of The Hague
held that the plaintiff’s trademark registration, in proceedings on
the merits, most probably would be considered void, owing to lack
of distinctive character.62 The President ruled, further, that even if
HOLIDAY CARS would in time have acquired a certain level of
59. President of the District Court, Groningen, March 9, 2004 (not published).
60. Granuband B.V. v. Granuflex Ipari Es Keresdemi Kft, President of the District
Court, Bois-le-Duc, October 14, 2003, and May 25, 2004 (unpublished).
61. Sunset Holidays B.V. v. Sunny Cars Aktiengesellschaft, President of the District
Court, The Hague, October 3, 2003, IER 24 (2004).
62. A trademark registration cannot be cancelled in summary proceedings.
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distinctiveness through use, this would not automatically imply
that the defendant infringed the plaintiff’s trademark rights by
registering and using the domain name holidaycar.nl. As the terms
holiday and car were purely descriptive for the services rendered,
the plaintiff could not object to the use thereof by third parties to
designate the character of their services. Neither did the use of
metatags containing the words HOLIDAYCAR, HOLIDAY CARS
and HOLIDAYCARS infringe the plaintiff’s trademark rights. The
outcome could be different only if the mark had become
established. This judgment is yet another caution to trademark
owners that descriptive marks may be the easiest but not the best
choice after all.
BRAZIL
I.B.1. Generic Names
The Brazilian Patent and Trademark Office (PTO) rejected an
application (No. 821282050) to register the trademark
MASTERTICKET, in Class 36, in the name of MasterCard
International Incorporated (MasterCard), based on likelihood of
confusion.63 The PTO indicated as anticipations several
registrations owned by the ACCOR Group (ACCOR), all for
trademarks incorporating the expression “ticket,” covering various
services.
MasterCard appealed the decision, arguing that “ticket” per se
was a word in common use that described a pass given to
consumers for use in various types of activities, such as food and
transportation. It also argued that ACCOR, owner of the
anticipations, was not entitled to exclusive use of the expression
“ticket,” and that the existence of other trademarks containing the
same expression, such as COMBUSTICKET, TICKET and BANCO
1 – PHONE TICKETS, would allow the coexistence of the marks in
conflict.
The PTO sustained the appeal and, consequently, reversed its
decision and allowed the application for MASTERTICKET to
proceed to registration.64
The final fees were paid, the granting decision was published65
and the Certificate of Registration of the trademark was issued.
63. Decision published in Official Bulletin No. 1606, of October 16, 2001.
64. Decision published in Official Bulletin No. 1730, of March 2, 2004.
65. Decision published in Official Bulletin No. 1741, of May 18, 2004.
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305
I.B.5. Personal Names
The Brazilian PTO published application No. 820241504, for
the trademark ARTHUZICO, in the old Brazilian Class 37.25, in
the name of Alessandro Provenzano Vassalo, for opposition
purposes by third parties.66
The well-known Brazilian former soccer player nicknamed
Zico, who is now a soccer coach in Japan, filed an opposition
arguing the nonregistrability of the ARTHUZICO mark based on
Article 124, Item XVI of the Brazilian Industrial Property Law,
which states that famous stage names or nicknames, without the
consent of the respective owners, their heirs or their successors,
cannot be registered as trademarks.
The PTO then published a notice rejecting the application for
the trademark ARTHUZICO,67 citing as the basis for its decision
the arguments set forth in the Brazilian former soccer player’s
opposition.
I.B.8.a. Similarity of Marks
The Brazilian PTO rejected an application to register the
trademark VIVRE,68 in the old Brazilian Class 25, Items 10, 20
and 60, for clothing and clothing accessories for common use,
clothing and clothing accessories for use in sports, and travel
articles, in the name of Arpel Confecções Ltda. (Arpel).
The PTO’s decision was based on likelihood of confusion, with
the trademark applications for SAVOIR VIVRE69 and JOIE DE
VIVRE70 being cited as an impediment to the registration of the
trademark VIVRE.
Arpel appealed the PTO’s decision with the courts,71 seeking
registration of its mark on the ground that the trademarks were
composed of different elements, which made them sufficiently
distinctive to coexist in the Brazilian market.
Following an unfavorable lower court decision, the applicant
appealed to the Regional Federal Court of Appeals of the Second
Region, which affirmed the lower court’s decision72 on the ground
that the coexistence of the marks could cause confusion among
consumers as the marks in question identify the same products.
66. Decision published in Official Bulletin No. 1414, of January 27, 1998.
67. Decision published in Official Bulletin No. 1719, of December 16, 2003.
68. Application No. 811.007.510.
69. Application No. 815.811.632.
70. Application No. 816.372.470.
71. Civil Action No. 92.02.13117-1.
72. Decision published in Official Gazette of June 15, 2004.
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III.A.2.b. Similarity of Marks
Seara Indústria e Comércio de Produtos Agropecuários Ltda.
filed a lawsuit73 against Bunge Alimentos S.A. and the Brazilian
PTO before the 28th Federal Court of Rio de Janeiro, seeking the
annulment of the PTO’s rejection of its applications to register
trademarks, all containing the expression “SEARA,”74 which
applications were rejected in view of the previous existence of the
defendant Bunge Alimentos’ trademark registrations for the mark
SEARA, granted for the same and similar classes.75
The plaintiff argued that it had IP rights in the expression
“SEARA,” taking into consideration its priority rights in its
corporate name, containing the word “SEARA” (the company was
founded in 1973). In addition, the plaintiff alleged priority
regarding its first trademark application for the mark SEARA
(filed with the PTO in 1986).
The plaintiff’s main argument, however, was that Bunge
Alimentos became the owner of the registrations for the SEARA
mark only in 1990, when the PTO published the assignment of
these trademark registrations by Seara Indústrial S.A. to the
defendant.
Rebutting these allegations, the defendant demonstrated to
the Federal Court that, in reality, it had the previously mentioned
priority rights, owing to the fact that its corporate name—
containing the word “SEARA”—preceded that of the plaintiff.
(Bunge Alimentos was founded in 1956; its first corporate name
was Frigorífico Seara S.A., which company was incorporated by
the defendant a few years later.)
As regards the applications (as well as the registrations), the
defendant demonstrated to the Federal Court that its first
application for the SEARA mark was filed in 1958 (its registration
was granted in 1962) and that, since then, the trademark SEARA
had been protected—prohibiting, therefore, its misappropriation
by third parties—independently of when the assignment to the
defendant was recorded by the PTO. Bunge Alimentos affirmed
73. Protocol No. 94.004.28251.
74. Applications No.: 812835158, in Class 33; 815538618, in Class 31; 816937362, in
Class 32; 816937389, in Class 10; 816937400, in Class 21; 816937427, in Class 21;
816937443, in Class 29; 816937460, in Class 30; 816937486, in Class 33; 816937508, in
Class 29; 815371870, in Class 29; 816558019, in Class 32; 816937370, in Class 32;
816937397, in Class 10; 816937419, in Class 29; 816937435, in Class 29; 816937451, in
Class 29; 816937478, in Class 32; 816937494, in Class 33; 816946620, in Class 40; and
812835166, in Class 30 (this last application was cancelled after an appeal filed by the
defendant was sustained).
75. Nos. 002735857, in Class 29; 811216853, in Class 21; 811882888, in Class 29;
811882845, in Class 22; 814891160, in Class 32; etc.
Vol. 95 TMR
307
that both parties commercialize the same kind of products, which
may cause confusion in consumers’ minds.
The PTO stated that the plaintiff’s requests should not be
granted, in view of defendant Bunge Alimentos’ prior trademark
rights and the similarity of the products commercialized by the
parties, and also mentioned the possible confusion by the
consumers.
The Federal Court rejected the plaintiff’s requests, based on
the arguments and facts exposed by Bunge Alimentos and the PTO
in their defense motions.76 The Court also noted that both
companies competed in the same market segment, and therefore
the trademarks used by them could mislead consumers.
The plaintiff filed an appeal77 with the Regional Federal Court
of Appeals of the Second Region against the lower court decision,
which was affirmed on the same grounds.78 The plaintiff did not
file any appeal against the decision rendered by the Court of
Appeal.
III.A.25. Geographical Indications
Brasilcom Comércio e Representação Ltda. (Brasilcom) filed a
lawsuit79 against Varese Indústria e Comércio de Calçados e
Bolsas Ltda. (Varese) and the Brazilian PTO seeking to cancel
Registration No. 608345741, for the trademark VARESE, in the
old Brazilian Class 25.10, for clothes and clothing accessories for
common use, owned by Varese.
Even though Brasilcom does not own any trademark
containing the expression VARESE, it based its arguments on the
ground that Varese is the name of an Italian city, well known for
its leather products, and that geographical indications are not
registrable as marks according to the applicable legislation.
Defendant Varese filed counterarguments alleging that
consumers did not know about the existence of the cited Italian
city or about its leather products’ notoriety. Therefore, Varese
argued, it did not take any advantage by having the city’s name as
its registered mark.
The Federal Court rejected the plaintiff’s allegations,80
arguing that this Italian city was unknown to ordinary consumers.
Brasilcom lodged an appeal against the lower court’s decision
with the Regional Federal Court of Appeals of the Second Region,81
76. Decision published in Official Gazette of May 10, 1996.
77. Protocol No. 96.02.37369-5.
78. Decision published in Official Gazette of May 26, 2004.
79. Civil Action No. 96.02.36782-2.
80. Decision published in Official Gazette of September 26, 1996.
81. Appellate Review No. 96.02.36782-2.
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taking the same line of argument as that set forth in the initial
complaint. The Federal Court of Appeals rejected the plaintiff’s
pleadings and ordered the maintenance of the registration for the
trademark VARESE.82
III.F.1. Forfeiture
An administrative forfeiture action based on nonuse was filed
by National Amusements, Inc.83 against the trademark
registration (No. 815423543) for SHOWCASE, in the old Brazilian
Class 41.20/40, owned by Cataratas Iguaçu Showcase Promoções e
Eventos Culturais.
As the registrant did not file counterarguments against the
forfeiture action, the Brazilian PTO published its decision
canceling the cited registration.84
When the legal term for lodging an appeal against the decision
ended without such appeal being lodged, the PTO declared the
referred registration extinct under the terms of Article 142, Item
III of the Brazilian Industrial Property Law.85
CANADA
I.A.5. Bankruptcy
A group of franchisees of Telemark Inc. used the trademark
SHOWCASE and other trademarks under license, in association
with retail stores. Telemark attempted to terminate the
underlying premises leases and franchise agreements and
repossessed some franchisees’ premises. The franchisees sued
Telemark for breach of its obligations under the franchise
agreement and of Ontario franchise laws.86 They obtained an
injunction returning the seized premises and requiring Telemark
to continue to service the franchisees. Very shortly thereafter,
Telemark made an assignment in bankruptcy. Having notice of the
franchisees’ claims, Osiris Inc. sought to purchase Telemark’s
trademarks free and clear of liabilities, but it was required to
expressly waive that disclaimer in order to obtain court approval of
its purchase. Notwithstanding that requirement, Osiris then
sought an injunction requiring the franchisees to cease use of the
marks.87
82. Decision published in Official Gazette of May 17, 2004.
83. Official Bulletin No. 1362, of January 7, 1997.
84. Decision published in Official Bulletin No. 1416, of February 10, 1998.
85. Decision published in Official Bulletin No. 1709, of October 7, 2003.
86. Arthur Wishart Act (Franchise Disclosure), 2000, S.O. 2000, Ch. 3.
87. Osiris Inc. v. 1444707 Ontario Ltd., [2004] 30 C.P.R. (4th) 154 (Ont. S.C.J.).
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309
To assess whether an interlocutory injunction should be
granted, the court considered whether there was a serious issue to
be tried, whether the plaintiff would be irreparably harmed by the
defendant’s activity and whether the balance of convenience
favored the plaintiff. Here, the court accepted that there was a
serious issue to be tried, but it emphasized the importance of the
unresolved claims of the defendant against Telemark. In the view
of the court, any potential harm to Osiris could be compensated in
damages. Finally, because the franchised businesses depended
significantly on the trademarks, and given the unresolved claims
against Telemark, the balance of convenience favoured the
defendants. The motion for an injunction was denied.
Purchasers of trademarks should always carefully review the
nature and status of existing license and franchise agreements,
and any outstanding claims thereunder. This case emphasizes that
the purchaser may be subject to liabilities, or at least debts
incurred by a bankrupt predecessor-in-title.
I.B.2. Merely Descriptive Terms
In Best Canadian Motor Inns Ltd. v. Best Western
International, Inc.,88 the Federal Court may have significantly
raised the bar for the registrability of design marks the dominant
feature of which is text that, when sounded, is clearly descriptive
of the associated goods or services. As a result, the Trade-marks
Office has issued a draft practice notice that would formally adopt
the reasoning in this case.
Best Western was opposing Best Canadian’s application to
register a design mark for hotel and restaurant services consisting
of the following elements (from top to bottom): (1) a horizontal line
broken by a stylized 11-point maple leaf; (2) BEST on top of
CANADIAN, both in large type; (3) a second horizontal line; and
(4) the words MOTOR INNS in small type distinct from that used
for BEST and CANADIAN. Best Canadian had disclaimed BEST,
CANADIAN, MOTOR and INNS, and the maple leaf. In addition
to an allegation of confusion with its BEST WESTERN marks,
Best Western argued that Best Canadian’s design mark was
unregistrable pursuant to Section 12(1)(b) of the Trade-marks
Act.89
88.
[2004] 30 C.P.R. (4th) 481 (F.C.).
89. Trade-marks Act, R.S.C. 1985, ch. T-13, § 12(1)(b) (“a trade-mark is registrable if it
is not . . . whether depicted, written or sounded, either clearly descriptive or deceptively
misdescriptive in the English or French language of the character or quality of the wares or
services in association with which it is used or proposed to be used . . . ”).
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The Trade-marks Opposition Board90 had disagreed with Best
Canadian’s submission that even if the words BEST, CANADIAN,
MOTOR and INNS were clearly descriptive, the design mark was
still registrable in view of the other design components. The
Opposition Board noted that the maple leaf had been disclaimed
and could not be distinctive.91 The other design features (i.e.,
horizontal lines and the fact that BEST CANADIAN appeared in
lettering that was larger than and a different style from MOTOR
INNS) were considered insufficient to render the mark registrable.
The Opposition Board formed the view that the applied-for mark
would be sounded by reference only to the words incorporated
within the mark (BEST CANADIAN MOTOR INNS). Then,
focusing on Section 12(1)(b), particularly the words “depicted,
written or sounded,” the Opposition Board concluded that these
constituted three separate tests to be met. Because the applied-for
mark was descriptive when sounded, it was deemed unregistrable.
Best Canadian filed additional evidence on appeal, namely the
affidavit of a branding expert. He opined that it was wrong to
ignore the design features of the Best Canadian logo in attempting
to understand the impression it created. The court found that the
expert was “simply wrong” to the extent he was implying that the
Registrar ignored the design features of the mark. Whether the
Registrar reached a conclusion different from that advocated by an
appellant’s expert was not the test for determining whether new
evidence was material. As no new material evidence had been
submitted on appeal, the appropriate standard of review was
reasonableness simpliciter; the court was not entitled to come to its
own conclusion as to the correctness of the Registrar’s decision.
Here, it was clear that the Registrar had put his mind to the
relevant issues prior to refusing registration.
This decision reflects a deviation from previous practice,
where “depicted,” “written” and “sounded” were not considered
either conjunctively or disjunctively, but rather were referenced in
a single analysis of the overall impact of the mark. As noted above,
and notwithstanding the apparent split in the Federal Court, the
Trade-marks Office has reacted, circulating a draft practice notice.
According to the draft notice, if an examiner determined that a
mark had clearly descriptive or deceptively misdescriptive words
that were its dominant feature, the application would be rejected.
The Best Canadian case may have changed the landscape for
many marks previously thought to be registrable. For any design
90.
[2002] 23 C.P.R. (4th) 110 (T.M.O.B.).
91. The 11-point maple leaf depicted on the Canadian flag is considered a prohibited
mark under Section 9(1)(e) of the Trade-marks Act. However, it may be incorporated in a
trademark provided a disclaimer is entered and certain other conditions are met. Order-inCounsel P.C. 1965, 1623.
Vol. 95 TMR
311
mark incorporating descriptive words, applicants may have to
consider whether the mark contains design elements that are
important enough to preclude the characterisation of the
descriptive words as dominant. If not, the applicant may have to
look for other arguments to support registrability—for example,
that the words when sounded together are not clearly descriptive
or deceptively misdescriptive.
This decision may also expose existing registrations to
challenge, but it is difficult to know how judges in the Federal
Court will react, given the apparent split between two members of
the court on this point.
I.B.7.b. Three-Dimensional Marks
In WCC Containers Sales Ltd. v. Haul-All Equipment Ltd.,92
the court considered an application to expunge Haul-All’s
distinguishing guise trademark registration for the shape of an
animal-proof garbage can. The court was required to consider both
the doctrine of functionality in relation to trademarks and the
relationship between trademarks and industrial designs.
Haul-All obtained an industrial design registration for a
garbage can design. The registration expired in 1994. In 1996, a
Canadian government agency invited tenders for the supply of
bear-proof garbage containers for a national park. The tender
required the containers to be built in accordance with a specific
design, which displayed the characteristics of Haul-All’s container.
The successful bidder was a predecessor-in-title to WCC.
In 1997, a different Canadian government agency invited
tenders for the supply of animal-proof refuse containers for
another national park. By this time, Haul-All had filed an
application to register the shape of its container as a
distinguishing guise trademark. Upon learning of the tender,
Haul-All requested expedited examination of its application, and
the registration issued quickly thereafter. A few days later, HaulAll informed the second government agency of its new trademark
registration. Haul-All was ultimately awarded the contract even
though WCC tendered a lower bid.
A few weeks later, a request for tender was issued by a third
government agency. It required that the containers be built in
accordance with a specified design depicted in photographs
showing the containers built by WCC’s predecessor-in-title under
its earlier contract, and specifically provided that the container
“must be on an angle as per photo illustration” of WCC's container.
Haul-All threatened to sue the agency for inducing trademark
infringement if the contract were awarded to anyone other than
92.
[2003] 28 C.P.R. (4th) 173 (F.C.T.D.).
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Haul-All. Again, while WCC presented the lower bid, the contract
was awarded to Haul-All.
WCC applied to expunge Haul-All’s distinguishing guise
registration on several grounds, including the following:
1. Haul-All had breached an implied promise, made when it
registered the shape of the containers under the Industrial
Design Act,93 to dedicate the design to the public after the
expiry of its design registration; and
2. The trademark was functional and the registration
prohibited because it was likely to unreasonably limit the
development of the art or industry for these containers.
On the first point, WCC argued that by implication the
industrial design registrant dedicates the design to the public
following its expiry, and that to allow a distinguishing guise
registration for the same design was contrary to the legislative
intent under the Industrial Design Act of the grant of a limited
monopoly.
The interaction between trademark and industrial design law
had previously received judicial attention in Canada. In W.J.
Hughes & Sons “Cornflower” Ltd. v. Moriawiec,94 the court had
opined that an industrial design registration was not necessarily
fatal to registration of the same design or pattern as a trademark;
however, in that case, the court did not have to decide the point.
In WCC, the court noted that neither the Trade-marks Act nor
the Industrial Design Act contains a provision prohibiting
registration, as a trademark, of a design that was the subject of an
expired industrial design registration. By contrast, the Copyright
Act removes some design-bearing useful articles from the benefit of
copyright protection,95 limiting the owner to industrial design
protection.
The court concluded that Parliament did not intend to
explicitly limit the overlapping of industrial design and trademark
protection in the same way as it had done for industrial design and
copyright protection.
The second issue was functionality. Pursuant to the Trademarks Act, a distinguishing guise is registrable only if it has been
so used in Canada as to have become distinctive at the date of
filing of the application for its registration, and if the exclusive use
by the applicant of the distinguishing guise is not likely
unreasonably to limit the development of any art or industry.96
93. R.S.C. 1985, ch. I-9.
94.
[1970] 62 C.P.R. 21 (Ex. Ct.).
95. Copyright Act, R.S.C. 1985, ch. C-42, § 64.
96. Trade-marks Act, R.S.C. 1985, ch. T-13, § 13.
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313
Reviewing case law dealing with functionality, including
Remington Rand Corp. v. Philips Electronics N.V.,97 the court
noted that while a distinguishing guise may possess a functional
element or component, something that goes beyond distinguishing
the wares of its owner to the functional structure of the wares is
not a trademark.
The court found that the sloped design of Haul-All’s product
facilitated the functionality of the garbage container by, for
example, impeding access by small animals and facilitating
removal of bagged garbage. More significantly, however, the court
noted that the request for tender from the third government
agency specified the design features of Haul-All’s containers. The
court concluded that the third government agency required the
refuse container to be on an angle like Haul-All’s container for a
utilitarian or functional reason.
The court also considered whether Haul-All’s distinguishing
guise was likely unreasonably to limit the development of any art
or industry. Haul-All argued that the registration did not prohibit
WCC or anyone else from developing its own line of containers that
had the same functional benefits as Haul-All’s container. The court
rejected this argument; that WCC was free to propose its own
design did not address the fact that Haul-All had created a market
for such garbage containers and that registration of the container
design as a trademark restrained others from manufacturing in
that part of the market. Having found that the third government
agency specified Haul-All’s design for a functional, not aesthetic,
purpose, the court concluded that Haul-All had used its trademark
registration to limit the development of the art or industry.
The key holding in this decision is that the existence or expiry
of an industrial design registration does not preclude trademark
protection for the same design. The decision also suggests that
where the design of a product becomes the de facto standard that
the relevant market expects for the product, particularly when
specified by a government agency, a distinguishing guise
trademark registration for that design may be unavailable.
I.B.9.b. No Similarity of Goods/Services
Gestion A.D.L. applied to register BAILEY’S & Design for use
with tobacco products. R & A Bailey & Co. opposed the application
based on its use of BAILEY’S in association with a cream liqueur.
In trying to establish confusion, the opponent put forward
evidence of the “affinity” between the marketing of tobacco
products and alcohol products. Reference was made to the
significant amount of advertising of liquors in publications devoted
97.
[1995] 64 C.P.R. (3d) 467 (F.C.A.).
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to tobacco products, and several samples of such advertisements
were produced. The opponent also noted the number of tobacco
products that are flavoured with spirits and wines, and submitted
copies of receipts for purchases of samples of such products.
However, no evidence of the extent of the distribution of the
smoking-related magazines in Canada was provided, nor was there
any evidence that R & A Bailey itself advertised or intended to
advertise in such publications. The Trade-marks Opposition Board
found only a “very minor association” between the parties’
respective wares.
Based on an analysis of all of the relevant factors, the
opposition was ultimately rejected.98 Failure of the opponent to
establish an overlap between the parties’ wares was not
determinative, but it was obviously relevant.
I.B.12. Famous Marks
In Mattel, Inc. v. 3894207 Canada Inc.,99 the Federal Court,
Trial Division, affirmed the Trade-marks Opposition Board’s
rejection100 of Mattel’s opposition to an application to register
BARBIE’S & Design for restaurant services. Mattel had argued
that such mark was likely to be confused with Mattel’s BARBIE
mark for dolls. On appeal, Mattel filed additional evidence,
including a survey in which the participants were given no
information about the applicant’s business; anyone familiar with
the applicant’s business was excluded from the sample.
The court found that Mattel’s mark enjoyed a very extensive
worldwide reputation in association with dolls. However, the
notoriety of a mark was only one factor to be considered; if such
fame could prevent all other uses of the mark, the fundamental
concept of granting a trademark in association with certain goods
would be rendered meaningless. Here, the nature of the goods,
services and businesses “could not have been more different.”
While Mattel’s dolls were targeted at 3- to 11-year-old girls, the
applicant’s restaurants catered to an adult clientele. There was
nothing about the restaurants that was suggestive of toys, dolls or
childhood. It was “difficult to imagine that an individual would
show up at one of the applicant’s restaurants intending to buy
dolls.” The consideration of future events and possibilities of
diversification (1) was properly restricted to the potential
expansion of existing operations and (2) should not include
speculation as to diversification into entirely new ventures,
98. R & A Bailey & Co. v. Gestion A.D.L., [2003] 29 C.P.R. (4th) 391 (T.M.O.B.).
99. [2004] 30 C.P.R. (4th) 456 (F.C.T.D.), appeal to Federal Court of Appeal filed (File
No. A-99-04).
100.
[2002] 23 C.P.R. (4th) 395 (T.M.O.B.).
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315
involving new kinds of goods, services or businesses. Mattel’s
survey was deemed to have taken place “in a vacuum” and given
no weight except to establish that Mattel’s mark was well known,
a conclusion that had been reached at first instance.
The court’s requirement that surveys include (or at least not
exclude) customers of the applicant is consistent with previous
cases.101 The court explicitly relied upon the decision of the Federal
Court of Appeal in United Artists Corp. v. Pink Panther Beauty
Corp.102
I.B.22. Distinctiveness
The decision in Novopharm Ltd. v. AstraZeneca AB103 dealt
with pill designs. AstraZeneca applied for registration of two
trademarks for use with felodipine, a drug used to treat
hypertension. One design consisted of a pink color tied to the
entire visible surface of the tablet; the other consisted of a redbrown color applied to the entire visible surface of a tablet.
Novopharm opposed the applications. The Trade-marks Opposition
Board rejected the oppositions on the ground that there was
insufficient detail provided in the Statements of Opposition to
enable
AstraZeneca
to
respond
to
allegations
of
nondistinctiveness.104
On appeal, both decisions were upheld.105 New evidence had
been filed on appeal, but it was given little weight by the court.
The standard of review was, therefore, reasonableness, rather than
mere correctness.
A further appeal was taken by AstraZeneca to the Federal
Court of Appeal.106 It held the Opposition Board had erred by
failing to have reference to the opponent’s evidence, which would
have cured any deficiency in the Statement of Opposition. The first
appellate court was also found to have erred. The additional
evidence filed on appeal had a material effect on the analysis;
therefore, the court should have set the standard for review as
correctness, rather than reasonableness. The Federal Court of
Appeal remitted the matter to the Federal Court, Trial Division,
for a determination on the merits.
The central question was whether either of the marks was
distinctive. A mark can be distinctive either if it is adapted so as to
101. See, e.g., Walt Disney Productions v. Fantasyland Hotel Inc., [1994] 56 C.P.R. (3d)
129 (Alta. Q.B.).
102.
[1998] 80 C.P.R. (3d) 247 (F.C.A.).
103.
[2003] 28 C.P.R. (4th) 129 (F.C.T.D.).
104.
[1999] 1 C.P.R. (4th) 397, 403 (T.M.O.B.).
105.
[2001] 13 C.P.R. (4th) 61 (F.C.T.D.).
106.
[2002] 21 C.P.R. (4th) 289 (F.C.A.).
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distinguish, that is, the mark is inherently distinctive, or if it
actually distinguishes the owner’s products, that is, the mark has
acquired distinctiveness or a secondary meaning.
AstraZeneca submitted that the elements of color and shape in
each of the two marks made the marks inherently distinctive;
AstraZeneca noted that these elements were arbitrary and
contended that an arbitrary mark is inherently distinctive. The
court took the view that the colors and the shape of the tablets
were not unique or unusual. It contrasted these with a coined
word, which it held would be inherently distinctive. The court
appeared to reject the proposition that an arbitrary mark is
inherently distinctive. The court’s approach on this issue reflected
the approach of the Federal Court of Appeal in another matter
involving the same two parties.107
As of the date of the opposition, AstraZeneca had used the redbrown mark, but not the pink mark, and so AstraZeneca could
allege acquired distinctiveness only with respect to the red-brown
mark. The court held that the red-brown mark had not acquired
distinctiveness. The court first considered the issue of the relevant
market. The court’s conclusion on this point was not particularly
clear, but the court accepted as relevant evidence of several redbrown pills used in association with other pharmaceuticals in
Canada. The court also concluded from the evidence before it that
pharmacists identified tablets primarily by Drug Identification
Numbering, “markings” (presumably, word marks) and package
labeling; tablet color and shape were secondary. AstraZeneca had
conceded that physicians had limited reference to color and shape.
There was no overt analysis of the effect of color and shape on
patients, although potential for patient confusion is indisputably
relevant.108
This latest decision is consistent with many others in setting
high barriers for pharmaceutical companies to overcome in order
to establish that pill designs are distinctive.
II.F. International Issues
In Pro Swing Inc. v. ELTA Golf Inc.,109 the issue was the
extent to which a Canadian court would enforce a foreign
judgment embodying equitable remedies. Pro Swing sued ELTA in
a U.S. court, alleging trademark infringement and related causes
of action in relation to trademarks for golf equipment. The parties
107. AstraZeneca AB v. Novopharm Ltd., [2003] 24 C.P.R. (4th) 326 (F.C.A.),
summarized at 94 TMR 321 (2004). The mark in question was the color yellow as applied to
the entire surface of a tablet of felodipine.
108. CIBA-Geigy Canada Ltd. v. Apotex Inc., [1992] 44 C.P.R. (3d) 289 (S.C.C.).
109.
[2003] 30 C.P.R. (4th) 165 (Ont. S.C.J.).
Vol. 95 TMR
317
entered into a settlement agreement dealing with issues in the
United States and elsewhere; the court issued a consent decree
enjoining ELTA from using the marks. Several years later, Pro
Swing learned ELTA was infringing; Pro Swing launched civil
contempt proceedings and obtained an order for delivery up of
offending materials and certain accounting information intended
to permit the calculation of a damage award. ELTA did not
respond to the contempt proceedings or provide the required
information, and Pro Swing commenced proceedings in Ontario,110
where ELTA’s principal offices were located.
ELTA contended that the U.S. court orders were not
enforceable in Canada, as they were not final judgments, nor for a
fixed sum of money, and that additionally the contempt order was
quasi-criminal, and therefore subject to a long-established bar
against enforcement of foreign penal laws.
The court considered recent case law in this area.111 The court
concluded that the historic common-law requirement that a foreign
judgment be for a fixed sum may still be generally appropriate, but
that the courts had to consider what was appropriate on a case-bycase basis. Here, the parties had consented to a decree, applicable
extraterritorially. Moreover, the settlement agreement set out an
agreed factual matrix. In those circumstances, the court
determined that it should enforce the terms of the consent decree.
The court also held that substance should dominate over form in
determining whether a consent order should be enforced. Here, the
order flowed from an action between private parties, and was
restitutionary in nature. The court had concerns regarding the
issue of finality, but it determined that certain aspects of the
order, including those requiring an accounting, and the names of
ELTA’s suppliers and purchasers did not offend the requirement
for finality, and were severable from the balance of the order.
The decision shows that Canadian courts are willing to enforce
foreign judgments in appropriate circumstances, but highlights
that many barriers remain.
III.A.11.a. No Similarity of Marks
In Alticor Inc. v. Nutravite Pharmaceuticals Inc.,112 the
Federal Court, Trial Division, found no likelihood of confusion
between NUTRILITE (which Alticor had used for over 50 years in
110. Pro Swing Inc. v. ELTA Golf Inc., [2003] 30 C.P.R. (4th) 165 (Ont. S.C.J.).
111. Morguard Investments Ltd. v. De Savoye, [1990] 76 D.L.R. (4th) 256 (S.C.C.); Hunt
v. T&N plc, [1993] 109 D.L.R. (4th) 16 (S.C.C.); Uniforêt Pâte Port-Cartier Inc. v. Zerotech
Technologies Inc., [1998] 50 B.C.L.R. (3d) 359 (B.C.S.C.).
112. [2004] 31 C.P.R. (4th) 12 (F.C.T.D.). Alticor has appealed this decision to the
Federal Court of Appeal (File No. A-143-04).
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association with nutritional supplements sold via a multilevel
marketing network of independent business operators) and
NUTRAVITE (which Nutravite had used since 1992 in association
with nutritional supplements sold at retail). Alticor had also used
the slogan BEST OF NATURE—BEST OF SCIENCE since 1998.
In 1997, Nutravite’s application to register its mark based on use
since 1992 was successfully opposed113 by Alticor on the primary
basis of a likelihood of confusion with Alticor’s NUTRILITE mark,
which was registered in 1952. Alticor accused Nutravite of
trademark infringement, as well as passing off based on
Nutravite’s use of the slogan A PERFECT BLEND OF SCIENCE
AND NATURE, which ceased in 1999. Nutravite tendered
evidence of 81 third party marks comprising the prefix NUTR for
health-related products (including 38 such marks for vitamin,
mineral or herbal supplements).
Nutravite’s defense included an allegation that Alticor’s
registration for NUTRILITE was invalid on the basis that the
mark was unregistrable owing to descriptiveness. Alticor’s founder
adopted NUTRILITE after reading a 1928 scientific article that
defined “nutrilites” as “vitamin-like substances which in small
amounts function in the nutrition of organisms.” However, the
court declined to cancel Alticor’s registration because Nutravite
was unable to show that in 1952 (when Alticor’s registration
issued) Canadian consumers knew “nutrilite” to have such a
meaning.
Alticor urged the court to give significant weight to the Trademarks Opposition Board’s 1997 finding of confusion; the court
refused to do so, noting that, in this action, the burden of proof was
reversed and the evidence was significantly different. Despite
concluding that the parties’ marks were similar in sound and
appearance, the court was led by a number of mitigating
circumstances to conclude that use of the parties’ marks was
unlikely to cause confusion in the marketplace:
1. Given the large number of NUTR health products in the
marketplace (including vitamin pills, nutritional bars and
hair care products), the court had “no difficulty” concluding
that consumers were able to distinguish such products on
the basis of small differences in the associated marks.
2. While Alticor’s registration was not restricted to any
particular channels of trade, it did not follow that confusion
must be assessed on the basis that Alticor was “free to
operate in any way open to it.” In fact, there was no
evidence that Alticor’s product would ever be sold in retail
outlets, and there were substantial barriers in this regard.
113.
[1997] 84 C.P.R. (3d) 276 (T.M.O.B.).
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319
3. It was “almost a certainty” that purchasers would know
Alticor’s product was only sold through its multilevel
marketing program and not in stores. While the relevant
issue was “likelihood of confusion” and not “actual
confusion,” the court was entitled to draw an adverse
inference when there was no evidence of actual confusion
despite extensive concurrent use.
4. Alticor’s survey evidence was insufficient to counter such an
inference. While the credentials of Alticor’s survey expert
were “exemplary,” Alticor’s survey was deficient in that it
(a) did not consider the first impression on respondents who
claimed to have no knowledge of the NUTRAVITE product;
(b) did not include all independent business operators in
Quebec; and (c) was very limited in scope, being carried out
exclusively by telephone.
By using A PERFECT BLEND OF SCIENCE AND NATURE
NUTRILITE, Nutravite had not passed itself off as Alticor. The
court considered the following factors:
5. Nutravite’s use of the phrase was limited to one television
commercial and one magazine advertisement. It never
appeared on bottles or containers.
6. Alticor’s use of BEST OF NATURE—BEST OF SCIENCE
was not a prominent part of its NUTRILITE marketing.
The phrase appeared in small print on the side of the
bottles and did not always conform exactly to the
trademark.
The court was not inclined to intervene when Alticor could
“not bother to reproduce its mark consistently and prominently.”
III.A.11.b. No Similarity of Goods/Services
In Veuve Clicquot Ponsardi v. Les Boutiques Cliquot,114 the
Federal Court of Appeal affirmed the Trial Division’s dismissal115
of Veuve’s action for trademark infringement, passing off and
depreciation of goodwill, primarily on the basis that the parties’
marks were not confusing. For over 100 years, Veuve had used
VEUVE CLICQUOT in association with champagne. Boutique
operated a women’s apparel store in association with LES
BOUTIQUE CLIQUOT.
The Federal Court of Appeal found that the trial judge did not
unduly emphasize (a) the differences between the parties’ goods
114. [2004] F.C.A. 164 (F.C.A.); summarized at 94 TMR 324 (2004). Veuve Cliquot has been
granted leave to appeal this decision to the Supreme Court of Canada (File No. 30398).
115.
[2003] 28 C.P.R. (4th) 520 (F.C.T.D.), summarized at 94 TMR 324 (2004).
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and services, (b) the promotional nature of Veuve’s distribution of
clothing or (c) the speculative nature of Veuve’s plans to expand
into clothing. In the view of the Federal Court of Appeal, the trial
judge correctly understood the rule laid down in United Artists
Corp. v. Pink Panther Beauty Corp.,116 namely that there can be no
likelihood of confusion absent a link between the parties’ goods
and services. The trial judge was justified in rejecting Veuve’s
attempts to extend the protection of its mark by relying on its
future possible use when its current use was restricted to
champagne. The emphasis on Veuve’s intentions and business
plans was due to its litigation strategy, and to deficiencies in its
evidence. Boutique had not violated Section 22 for at least two
reasons: (1) Boutique was using CLIQUOT, as opposed to Veuve’s
mark CLICQUOT; and (2) Veuve failed to establish that
Boutique’s activities were likely to diminish the value associated
with Veuve’s mark.
III.A.16. Absence of Willful Intent
In Tommy Hilfiger Licensing, Inc. v. International Clothiers
Inc.,117 the Federal Court of Appeal considered whether a plaintiff
in a trademark infringement action must show the defendant
intended to use the objectionable mark as a trademark. Clothiers
sold shirts featuring a crest that was “very similar” to Hilfiger’s
Crest Design. The trial judge made the following findings of fact:
(1) Hilfiger’s mark had acquired distinctiveness by reason of its
continuous use in the marketplace for at least ten years; (2)
Clothiers’ crest was placed on the breast of its shirts, as with
Hilfiger’s shirts; (3) Clothiers had no involvement in the creation of
the crest featured on its shirts; (4) there was no evidence that
Clothiers had used the mark as a trademark; and (5) Clothiers was
aware of the common practice of affixing a logo on the breast of a
shirt, independently of a brand name, for the purpose of indicating
source. Notwithstanding these findings, the trial judge interpreted
Section 2 of the Trade-marks Act as requiring proof that a
defendant intended to use its mark for the purpose of
distinguishing its wares from those of others.118 According to the
Court of Appeal, the trial judge erred. Rather, the crucial question
was: Irrespective of its intentions, had Clothiers used the crest to
(a) denote the origin of the shirts or (b) serve the purpose of so
116.
[1998] 80 C.P.R. (3d) 247 (F.C.A.).
117.
[2004] 32 C.P.R. (4th) 289 (F.C.A.), rev’g [2003] 29 C.P.R. (4th) 39 (F.C.T.D.).
118. Section 2 defines “trade-mark” as “a mark that is used by a person for the purpose
of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired
or performed by him from those manufactured, sold, leased, hired or performed by
others. . . .” R.S.C. 1985, ch. T-13, § 2 (emphasis added).
Vol. 95 TMR
321
indicating origin? There “could not be much doubt” that Clothiers
had so used its crest, considering the trial judge’s finding that
Hilfiger’s Crest Design was already distinctive. The finding of
distinctiveness constituted a finding that Clothiers’ crest would be
recognized by the public as an indication that the garments
associated with the design were those of Hilfiger. This was “so
obviously the case” that the trial judge easily came to the
conclusion that Clothiers had breached Section 7(b) by passing off
its goods as those of Hilfiger. Whether Clothiers intended to use its
mark for the purpose of indicating origin was irrelevant, as, in
fact, the design served that purpose.
III.A.22. Trade Dress
The Supreme Court of Canada granted leave to appeal in
Kirkbi AG v. Ritvik Holdings Inc.119
III.B.1. Passing Off
Passing off was the cause of action in Atkinson & Yates
Boatbuilders Ltd. v. Hanlon.120 A&Y introduced a boat design that
was quite different from most of the then-current competitive
designs. The design was marketed quite widely and successfully
for ten years. One of A&Y’s distributors advised A&Y that Hanlon
was offering to sell a boat with the identical hull design, but under
a different name.
A&Y called evidence from (1) the employee who created the
hull design, describing how the plaintiff’s design differed from
others available at the time of introduction of the plaintiff’s boat
into the market; (2) a naval architect, who characterized the hull
as the distinguishing feature of any boat and testified that while
he had never applied for any patent, copyright or trademark for
any of his designs, international custom in the trade dictated that
no one would use another person’s design without permission; and
(3) the distributor, who indicated that the moment he saw
Hanlon’s boat he recognized the design as A&Y’s design. There
was evidence that Hanlon had copied third party products. Also,
evidence at trial showed that Hanlon had misled the court as to
the number of boats he produced using the disputed design, in an
affidavit filed in related interlocutory proceedings.
The court concluded that a boat hull design could be
distinctive of its owner, and that in this case the plaintiff’s hull
design constituted a distinctive get-up. The finding of a
119. [2003] 26 C.P.R. (4th) 1 (F.C.A.), summarized at 94 TMR 325 (2004); Supreme
Court File No. 29956.
120.
[2003] 27 C.P.R. (4th) (Nfld. S.C. (T.D.)).
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misrepresentation was based primarily on the similarity of the
designs; the court also noted that evidence of copying, and of other
activities such as Hanlon’s targeting of a customer who had placed
a classified advertisement for the purchase of one of A&Y’s boats,
supported a conclusion of misrepresentation. A&Y obtained an
injunction, an order for destruction of Hanlon’s hull mold and an
award of damages and costs.
This case affirms that passing off is a viable cause of action
against copycat product designs. Defenses will likely include
functionality.121
III.F.5. Cancellation
The Federal Court of Appeal has upheld122 the Trial Division’s
decision123 in Boston Pizza International Inc. v. Boston Market
Corp., which involved Boston Pizza’s allegations that Boston
Market’s use of BOSTON MARKET for restaurant services
infringed Boston Pizza’s registrations for BOSTON PIZZA, also for
restaurant services. The trial judge had denied Boston Pizza’s
request for summary dismissal of Boston Market’s counterclaim
for cancellation of Boston Pizza’s registrations for BOSTON PIZZA
owing to loss of distinctiveness caused by common use of “Boston”;
the trial judge concluded that there was a genuine issue for trial,
considering deficiencies in (1) Boston Market’s evidence of third
party use of “Boston” and (2) Boston Pizza’s survey evidence aimed
at showing its mark was distinctive.
In a brief ruling, the Court of Appeal declined to interfere with
the discretion exercised by the trial judge to refer the matter for
trial. However, the court noted that the trial judge may have
intended to foreclose a determination at trial based on issue
estoppel. The Court of Appeal was “not at all satisfied that issue
estoppel may not apply.” Accordingly, it was open for (1) the
parties to address issue estoppel at trial and (2) the trial judge to
consider the question should it be raised.
In Cassels Brock & Blackwell LLP v. Montorsi Francesco E
Figli-S.p.A.,124 the registrant owned the trademark DANIEL &
Design for San Daniele ham. The registrant was assigned the
registration in 1994. The registrant had not used the mark since
acquisition, and in response to a Section 45 notice issued on
January 15, 2001, could not offer evidence of use within three
121. See WCC Containers Sales v. Haul-All Equipment, [2003] 28 C.P.R. (4th) 173
(F.C.T.D.).
122.
[2004] 32 C.P.R. (4th) 455 (F.C.A.).
123.
[2003] 27 C.P.R. (4th) 455 (F.C.T.D.), summarized at 94 TMR 330 (2004).
124.
[2003] 29 C.P.R. (4th) 106 (Trade-marks Hearing Officer).
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323
years of that date, but provided evidence of what were asserted to
be special circumstances justifying nonuse. San Daniele was
recognized as a denomination of origin in 1996. San Daniele ham
could be sold only by members of a recognized consortium (the
registrant was a member). Pursuant to a 1998 agreement between
the European Community and the government of Canada, each
consortium member had to meet certain manufacturing
requirements, and the Italian government had to implement a
certification process. The registrant had made the necessary
changes to its manufacturing facilities, but not all other members
had done so; moreover, the Italian government certification
process had not been implemented.
The hearing officer concluded, based on the evidence, that the
registrant had taken what steps it could, and that the registrant’s
ability to sell San Daniele ham in Canada (and thereby use the
DANIEL & Design mark) was impeded by the need for other
consortium members and government entities to take certain
actions, all of which were beyond the registrant’s control. The
hearing officer concluded that the situation constituted special
circumstances justifying nonuse. However, he felt that certain
aspects of the registrant’s evidence were unclear, and decided to
issue a further Section 45 notice simultaneously with issuance of
the decision.
In prior decisions, special circumstances generally have been
found to exist where legislative or regulatory changes required a
manufacturer to take action, such as reformulation of a product. In
this case, the actions of private third parties were relevant, but the
wider context was nevertheless a need to respond to actions of
government (here, including a foreign government).
III.M. Licensing Issues
A recent decision of the Trade-marks Opposition Board
confirms the need for adequate evidence regarding existence of a
license. Hallmark Cards sought to register the trademark
EXPRESSIONS FROM HALLMARK & Design for greeting cards,
gift wrap and related wares. The application was later assigned to
William E. Coutts Co., Hallmark Cards’ Canadian subsidiary.
Hudson’s Bay Company opposed the application125 on the ground of
confusion with its trademark REAL EXPRESSION for similar
goods and other EXPRESSION marks for other goods. The
application was rejected.
The licensing issue arose from the applicant’s evidence of use.
Some sample products bore the name Hallmark Cards, but no
125. Governor & Company of Adventurers of England Trading into Hudson’s Bay v.
Hallmark Cards, [2003] 30 C.P.R. (4th) 231 (T.M.O.B.).
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reference to the applicant William E. Coutts. The applicant
explained that it was a wholly owned subsidiary of Hallmark
Cards, and that Hallmark Cards exercised control of trademark
use through “communications on a regular basis at all levels
through the corporate structure and by regular visits to and from
the corporate head office. . . .” A copy of a “Corporate Brand
Identity Standards Manual” was produced. Not surprisingly, the
Opposition Board found that this evidence of corporate control by
the parent did not constitute any evidence whatsoever of a license
from the subsidiary to the parent.
At a minimum, Hallmark Cards emphasizes the need to show
that control is exercised by the trademark owner, particularly
where the trademark user is the owner’s parent, which would
ordinarily not be subject to control by the subsidiary for corporate
purposes.
CHILE
I.B.5. Personal Names
Ms. Lorena Leonelli filed a trademark application for
EINSTEIN, covering a commercial establishment for the purchase
and sale of all types of products in International Classes 16, 20, 25
and 28. In Chile, commercial and industrial establishments are
considered as separate national classes.
An opposition was filed by the Hebrew University of
Jerusalem on the grounds that the mark in question was the name
of a historical character who died less than 50 years ago and that
Albert Einstein’s heirs had not given the applicant their consent to
use the name EINSTEIN. In this respect, it is necessary to point
out that the Chilean Trademark Law does not permit the
registration of names of historical characters who have been dead
less than 50 years without the express consent of the character’s
heirs.126
The Head of the Department of Industrial Property ruled in
favor of the Hebrew University of Jerusalem, finding that the
applied-for trademark could induce consumers to errors or
mistakes. The decision stated that the EINSTEIN mark had been
filed by a person different from Albert Einstein’s legitimate heirs,
and this would therefore undoubtedly induce consumers to error
with respect to the business origin of the products covered by the
trademark.
The decision went on to state that even though the provision of
the Chilean Trademark Law cited in these proceedings requires a
clear and precise individualization of a person, that is, both the
126. Article 20 Letter c) of Law 19.039.
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first name and the last name, the fame and notoriety of the word
EINSTEIN with respect to Albert Einstein made inevitable the
association of the last name with the complete name of the
character. Therefore, the trademark had to be rejected, as 50 years
had not yet elapsed since Albert Einstein’s death.127
I.B.8.a. Similarity of Marks
Multiopticas Chile S.A. filed a trademark application for
VISION CENTER SUDAMERICA, covering a commercial
establishment for the purchase and sale of all products in
International Class 9.
An opposition was lodged by Manuel Valente, who claimed
that the application lacked novelty and was generic for the
applied-for coverage. A second opposition was filed by Topsa
Productos Opticos S.A. on the same grounds as the first opposition.
Finally, a third opposition was filed by Rotter & Krauss S.A.
Optica on the ground that the application was similar to the
trademark VISION, protected by several registrations, covering
commercial establishments related to Class 9 products.
The Head of the Department of Industrial Property rejected
both the first and the second oppositions, as he found that the
applied-for trademark neither lacked novelty nor was generic.
However, he ruled in favor of the third opposer, finding that the
trademarks in question were similar enough to be an obstacle to
their peaceful coexistence within the marketplace. The decision
stated that the first and most important and relevant element of
the application was the word VISION, which was clearly identical,
both graphically and phonetically, to the registered trademark
VISION. The addition of the words CENTER and SUDAMERICA
did not make the applied-for trademark any less identical, and
that led the Head of the Department of Industrial Property to
suppose that in the event that the marks were to coexist in the
market they would induce consumers to all types of errors or
confusion, especially with respect to the business origin of the
products covered by the application. The application was,
therefore, rejected for registration.128
Cohama S.A. filed a trademark application for DRAKKAR
NOIR, covering products in Class 25, which includes clothing. An
opposition was duly filed by Parfums Guy Laroche, owner of the
127. Lorena Patricia Leonelli v. Hebrew University of Jerusalem, Decision No. 127566,
issued by the Head of the Department of Industrial Property, November 14, 2003.
128. Multiópticas Chile S.A. v. Manuel Francisco Valente Docaser, Topsa Productos
Opticos S.A. & Rotter & Krauss S.A. Optica, Decision No. 126759, issued by the Head of the
Department of Industrial Property, October 3, 2003.
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famous and notorious trademark DRAKKAR, covering products in
Class 3, which includes cosmetics and cologne.
The Head of the Department of Industrial Property ruled in
favor of the opposer, noting in his decision that although the scope
of coverage of the application was different from that of the
registered trademark, the mark DRAKKAR was renowned; as such
it had had an important presence in the market for many years
now, and consequently was known by the public in general, both in
Chile and abroad. He noted, further, that the principal element of
the applied-for trademark was identical to the principal element of
the mark registered by Parfums Guy Laroche. The fact that the
elements POUR HOMME were replaced by the word NOIR in the
label in question was not enough to give the applied-for trademark
sufficient distinctiveness and individuality by comparison with the
prior-registered trademark.
The decision went on to add that the design of the letters in
the applied-for label was identical to that used in the opposer’s
mark and the geometrical figure used as a background for the
applied-for label was noticeably similar to the one used in the
opposer’s design. These factors led the Head of the Department of
Industrial Property to conclude that if the application were
granted it would undoubtedly be the cause of all types of errors
and confusion among consumers, especially with respect to the
business origin of the products covered by the application.
In this decision the prestige of the trademark DRAKKAR was
recognized as a public and notorious fact, especially with respect to
Class 3 products; this had been acknowledged by the Department
in a previous decision. The Head of the Department of Industrial
Property concluded that, on the basis of the documentation filed in
these opposition proceedings, the design of Cohama’s mark was not
a mere coincidence but, rather, a clear imitation of a famous and
notorious trademark belonging to Parfums Guy Laroche; this was
especially evident when one compared the applicant’s mark and
the mark already registered by the opposer, as the two were
similar not only with respect to their wording but also with respect
to their design. That constituted a breach of the laws regarding
unfair competition and trade ethics. Therefore, the application was
rejected.129
Mr. Rodolfo Garrido filed two trademark applications for
SPORTS
ILLUSTRATED
SWIMSUIT,
one
covering
“communication services, namely, radio phonic, telex, radio
broadcasting and television, broadcasting of programs by radio or
129. Cohama S.A. v. Parfums Guy Laroche, Decision No. 129138, issued by the Head of
the Department of Industrial Property, April 20, 2004.
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television” in Class 38 and the other covering “filming on video,
recreation, entertainment and the organization of cultural events
and sports competitions; discotheques” in Class 41.
Oppositions were duly lodged by Time Inc., based on its
trademark registration for SPORTS ILLUSTRATED covering
products in Class 9 and on foreign registrations covering products
in Classes 9 and 16 and services in Class 41. The opposer also cited
the fact that for many years it has produced a special edition of its
magazine, called SPORTS ILLUSTRATED SWIMSUIT, that is
widely sold around the world, as well as a special video referring
specifically to the photographic sessions by means of which the
special swimsuit edition is prepared.
The Head of the Department of Industrial Property ruled in
favor of the opposer with respect to both applications, having
concluded that the similarities between the registered trademark
SPORTS ILLUSTRATED and the applied-for trademark SPORTS
ILLUSTRATED SWIMSUIT would prevent their healthy
coexistence in the marketplace. He noted in his decision that when
the trademarks were compared one could see that the SPORTS
ILLUSTRATED SWIMSUIT mark coincided in its two first
elements, in the same order and sequence, with the SPORTS
ILLUSTRATED trademark, which was profusely registered
around the world, particularly in Chile, in different classes. He
found that the inclusion of the word SWIMSUIT was insufficient to
create a new trademark with its own identity and that from a
phonetic point of view the trademarks were confusingly similar.
Secondly, the Head of the Department of Industrial Property
found that the opposer had clearly proven with the documentation
filed—copies of the SPORTS ILLUSTRATED SWIMSUIT
magazine, pages printed from several websites, etc.—that the
SPORTS ILLUSTRATED SWIMSUIT magazine actually exists,
and that information relating to the videos taken at the
photographic sessions of said magazine was sold separately by the
opposer. Also, with the auditing reports and additional
documentation it provided, Time Inc. had proved that its
trademark was famous and notorious.
Lastly, the filing in the opposition proceedings of copies of the
different registrations of the SPORTS ILLUSTRATED trademark
in various countries, covering products and services in all classes,
clearly proved that Time Inc. was the owner of said mark not only
in Chile but in the United States, Costa Rica, the Dominican
Republic, the European Union and numerous other jurisdictions,
and that the mark covered both products in Classes 16 and 9 and
“online information services regarding sports,” among other
services. In view of the above, and taking into consideration the
existence of numerous trademark registrations belonging to the
opposer in Chile and abroad, in different classes, the Head of the
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Department of Industrial Property was led to conclude that if the
applied-for mark were granted it would undoubtedly result in all
types of errors or confusion, especially with respect to the business
origin of the applicant and the coverages of the applications.
Therefore, the two applications for registration were rejected.130
I.B.12. Famous Marks
Mr. Alfonso Campos filed a trademark application for EL
CORRECAMINOS, covering products in International Class 33,
among which are alcoholic beverages. An opposition was lodged by
Time Warner Entertainment Company, L.P. on the ground that
the word CORRECAMINOS is simply the Spanish translation of
the famous and notorious trademark ROAD RUNNER, which is
associated with the cartoon bearing the same name. Time Warner
claimed that ROAD RUNNER was a renowned trademark and
therefore that it transcended the international classification
system; in addition, the opposer cited numerous trademark
registrations in Chile both for CORRECAMINOS and for ROAD
RUNNER. (Time Warner Entertainment Company, L.P. does not
have any trademark registrations for either CORRECAMINOS or
ROAD RUNNER for products in Class 33, however.) In addition,
the opposer claimed that the applied-for trademark would induce
consumers, especially children, to confusion.
The Head of the Department of Industrial Property ruled in
favor of the opposer, finding that the trademarks in conflict were
extremely similar and that consequently they would be unable to
coexist in the market. His decision specifically noted that when the
trademarks were compared it was obvious that the principal and
most distinguishing element of the applied-for trademark
coincided in all of its letters, in the same order and sequence, with
the opposer’s registered trademark CORRECAMINOS. The
inclusion of the word EL was insufficient to create a novel mark,
with a proper identity and physiognomy, and from a phonetic point
of view the trademarks could still be easily confused.
In addition, the Head of the Department of Industrial
Property found that Time Warner’s mark was a famous
trademark, in both languages, both in Chile and around the world
and in fact had been so since long before the trademark application
was filed, as established by previous decisions issued by the
Trademark Office. This fact, and the existence of several
trademark registrations belonging to Time Warner in Chile,
covering products in several classes, led to the conclusion that if
130. Rodolfo Félix Garrido Cisternas v. Time Inc., Decision Nos. 129349 and 129579,
issued by the Head of the Department of Industrial Property, May 12, 2004, and June 11,
2004, respectively.
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329
the trademark application were granted the applied-for mark
would undoubtedly induce consumers to all sorts of errors or
confusion, especially with respect to the business origin of the
company and the kinds of products covered by the mark.
Therefore, the application was finally rejected.131
Prodesa S.A. filed a trademark application for MUPPET,
covering products in Classes 5, 16 and 25. An opposition was filed
by the Jim Henson Company (Henson), based on the trademark
MUPPET, which had been created, used and registered by the
opposer around the world to cover, among other things, products in
those three classes. Henson also claimed that, in view of the
notoriety of its trademark, the application contravened the
principles of unfair competition and trade ethics, in addition to
Article 6bis of the Paris Convention.
The Head of the Department of Industrial Property ruled in
favor of the opposer, taking into account the documentation filed
by Henson and not objected to by the applicant, especially the
certificates of registration proving the existence of numerous
registrations for the MUPPET mark in Australia, Brazil, Canada
and Germany, among other countries, for products in Classes 16
and 25. Said documents clearly proved that Henson was the
creator of the trademark MUPPET. In addition, the other evidence
filed by the opposer, such as videos, books and clothing articles, in
which the MUPPET mark is clearly shown, allowed Henson to
prove the fame and notoriety of the mark, in accordance with
Article 6bis of the Paris Convention.
The decision noted that the marks in question were clearly
identical, and that the applied-for mark did not include any
element or segment that might make it different from Henson’s
trademark. In addition, the Head of the Department of Industrial
Property concluded that if a famous and notorious trademark were
granted to a third party that was not the opposer, it would result
in all types of errors and confusion among consumers with respect
to the real origin of the manufacturer and of the products protected
by the trademark. The application was, therefore, rejected.132
Mr. Sergio Dughman filed a trademark application for THE
RITZ-CARLTON, covering products in International Class 25. An
opposition was duly lodged by Ritz-Carlton Hotel Co., LLC, based
on its trademark registration for THE RITZ-CARLTON covering
Class 43 services in Chile, in addition to foreign registrations for
131. Alfonso Alfredo Campos Morales v. Time Warner Entertainment Co., L.P., Decision
No. 126022, issued by the Head of the Department of Industrial Property, August 29, 2003.
132. Prodesa S.A. v. Jim Henson Co., Decision No. 126718, issued by the Head of the
Department of Industrial Property, October 3, 2003.
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the trademark THE RITZ-CARLTON covering products in Class
25.
The Head of the Department of Industrial Property ruled in
favor of the opposer. He indicated that in light of the abundant
evidence filed in these opposition proceedings proving that the
trademark THE RITZ-CARLTON was already registered for Class
25 products, the fame and notoriety of said mark and the fact that
the marks in conflict were identical, the opposition was sustained,
as it would not be possible for the two trademarks to coexist
adequately in the market because consumers would be induced to
error or mistake with respect to both the business origin of the
products and the quality and type of products being covered by the
trademark. Consequently, the applied-for trademark was rejected
for registration.133
II.E. Forum Conflicts
Laboratorio City S.A. filed a trademark application for the
mark PAMELA GRANT VOLUMATIC, covering products in
International Class 3. An opposition was filed by Helena
Rubinstein S.A. based on its Chilean trademark registration for
VOLUMATIC, also covering Class 3 products.
The Head of the Department of Industrial Property ruled in
favor of the opposer. His decision noted that the third element of
the applied-for trademark plainly coincided with, and could easily
be confused with, Helena Rubinstein’s registered trademark, and
that one could therefore suppose that if the trademarks were to
coexist in the market it would lead to errors and confusion among
consumers, particularly with respect to the business origin of the
products protected by the mark.134
Subsequently, the applicant filed an appeal before the Second
Instance Industrial Property Court, which revoked the first
instance decision by a vote of two to one.
Helena Rubinstein proceeded to file a complaint at the Chilean
Supreme Court against the two judges who had rejected the
opposition. The Supreme Court ruled in favor of the opposer. It
held that in this case the two judges committed fault or grave
abuse in issuing their decision in view of the seniority of the
VOLUMATIC mark and the fame and notoriety of the trademark
HELENA RUBINSTEIN, bases cited by the dissenting judge
133. Sergio Dughman Abud v. Ritz-Carlton Hotel Co., LLC, Decision No. 130494, issued
by the Head of the Department of Industrial Property, September 3, 2004.
134. Laboratorio City S.A. v. Helena Rubinstein S.A., Decision No. 109536, issued by the
Head of the Department of Industrial Property, May 15, 2001.
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below.135 In addition, the Supreme Court took into account the fact
that the opposer had invented the word VOLUMATIC and that
said expression had no meaning in any language. Consequently, it
found that the applicant was clearly and unlawfully trying to use
an intellectual creation belonging to a competitor.
The Supreme Court’s decision went on to state that it was
extremely easy to confuse the two marks in question, both from a
visual and from a phonetic point of view. Consequently, if the
marks were to coexist in the marketplace, they would inevitably
produce confusion and would induce the consumer public to error.
In view of the aforementioned arguments, the Supreme Court
concluded that it was substantial error for the second instance
decision to allow the registration of PAMELA GRANT
VOLUMATIC.
The case before the Supreme Court was decided by a vote of
three to two, the minority opinion stating that the case history did
not lead to the conclusion that in their ruling the judges against
whom the complaint was filed had engaged in conduct of which the
law disapproved and that would need to be curbed or corrected by
means of the Supreme Court’s disciplinary powers.136
It must be pointed out that in the last eight years the Chilean
Supreme Court has very exceptionally heard any complaints filed
with respect to trademark matters, on the same ground as that set
forth in the Supreme Court’s minority opinion referred to above.
CHINA
I.A.3. Licenses
The French fashion house Pierre Cardin has sued its exlicensee and its manufacturer in Nanjing for unpaid royalties and
damages resulting from trademark infringement.137
Defendant Nanjing Zhengfang Group was at one time the
plaintiff’s licensee. In July 1998 the two parties signed an
agreement allowing Zhengfang to use the mark PIERRE CARDIN
on Chinese-made children’s shoes and socks until the end of 2001.
A further license agreement, signed in 1999, allowed the
defendant’s use of the mark on children’s clothing until the end of
2002. The total royalties for the two agreements were US
$940,000; of that amount, the plaintiff asserts that the defendant
still owes US $869,500 (equivalent to 7,210,000 yuan). What is
135. Case No. 962-2001, decision issued by the Industrial Property Appeals Court, April
22, 2004.
136. Case No. 1556-04, decision issued by the Chilean Supreme Court, June 23, 2004.
137. Yi Shui, “Pierre Cardin Seeks 9,530,000 Yuan Damages in Nanjing,” China
Intellectual Property News, July 17, 2004, at 2.
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worse, Zhengfang, without Cardin’s authorization, sublicensed codefendant Qiuzhiniao Industrial Company to manufacture
children’s shoes and clothes bearing the mark. The plaintiff states
that the defendant has caused it loss in the amount of US $280,000
and that it has filed the lawsuit for recovery of 9,530,000 yuan in
total for past royalties and damages.
The Nanjing Intermediate People’s Court has accepted the
case, which is expected to be tried with much publicity.
I.B.1. Generic Names
In 2004, after the Chinese Trademark Office approved and
published a trademark application for CHIONG YAO JIANG
(meaning “fairy drinks”) for wine, brandy and fruit wine in
International Class 33 by Yantai Zhangyu Group, Inc. in Yantai
City, Shandong Province, Weilong Wine Co. Ltd., also in Yantai,
filed an opposition against the registration of the mark.
The opponent viewed the term CHIONG YAO JIANG as a
generic name for one of the major raw materials for white wine.
Weilong argued that using the name as a trademark on wine made
of the same raw material violated the Chinese Trademark Law. It
argued, moreover, that the term would be misrepresentative, and
therefore mislead consumers, if it were used on wine in whose
manufacture the raw material was not a major component.138
Weilong submitted some authoritative publications and books
in the wine industry to prove that CHIONG YAO JIANG is the
name of a variety of grape from which white wine is made. It is up
to the Trademark Office to decide whether the term can be
registered as a trademark for wine products.
The Beijing No. 1 Intermediate People’s Court recently
dismissed an appeal by the applicant of BLUETOOTH to register
the term as a trademark.139 The Trademark Review and
Adjudication Board ruled that the mark, as a generic term for a
standard for telecommunication technology to support real-time
phone communication and data communication between bluetooth
equipment, was not registrable. The applicant appealed to the
court but failed to submit evidence to prove that the term has been
used in China as a trademark. It is not clear whether the
applicant, a U.S. company, has decided on a further appeal.
138. Zhen Dean, “Registration of CHIONG YAO JIANG Questioned and Opposed,”
China Intellectual Property News, Apr. 20, 2004, at S9.
139. Xue Hongsheng, “‘Bluetooth’ Technology Cannot Be Exclusive,” China Industry &
Commerce News, June 24, 2004, at 1.
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Publication of another mark, DI KA in Chinese (meaning “low
calorie”), has caused concern among people in the food industry.
On May 26, 2004, Sichuan Blue Sword Group (Blue Sword), an
established beverage company, opposed the mark after it was
published, on the ground that the term is generic for low-calorie
food.140
The applicant for registration of the mark is Anhui Sincere
Food Co., Ltd. (Sincere). Sincere’s application passed examination
and was published on March 21, 2004. If no oppositions were filed
within three months, the mark would be registered. Blue Sword
argued that once the term was registered as a trademark, other
food companies could not use it in advertising their low-calorie
products, such as low-calorie strawberries, low-calorie chocolate,
low-calorie beverages, etc. Monopoly of such a popular term by one
company, Blue Sword argued, is detrimental to fair competition.
The opponent also pointed out that food products bearing the DI
KA mark do not necessarily have low calories, and therefore
registration of the term as a trademark was likely to permit the
registrant to mislead the public.
The opposition is pending and will probably be decided in
favor of the opponent.
I.B.8.a. Similarity of Marks
On June 16, 2004, the Beijing No. 1 Intermediate People’s
Court rendered a decision on Apple Computer’s appeal regarding
registrability of its APPLE design mark for clothing products in
International Class 25.141
The company’s application to register the mark in China in
Class 25 was rejected by the Chinese Trademark Office on the
basis of an existing registration of an APPLE design mark for
leather accessories by a local company in Guangdong. Although
Apple Computer’s design mark shows an apple with a bite in it and
the cited design shows a complete apple, the court agreed with the
Chinese Trademark Office that the two marks were confusingly
similar conceptually and phonetically and the goods designated
were related. To prevent possible customer confusion, registration
of the APPLE design mark in Class 25 by Apple Computer was
denied.
140. “Dispute over Application of Trademark ‘DI KA,’” China Intellectual Property
News, June 3, 2004, at 3.
141. Fan Hongping, “‘Dented Apple’ Could Not Be Registered for Clothing,” China
Industry & Commerce News, June 24, 2004, at 1.
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I.B.11.a. Copyright Protection
In 2003, Warner Bros. failed in its attempt to cancel two
registrations for TU BA GE in Chinese characters (translation and
transliteration of BUGS BUNNY) for cookies and instant noodles
in International Class 30 and for nonalcoholic beverages in Class
32.142
The owner of the two registrations is a businessman in
Shandong who owns a small food and beverage company. His birth
year animal symbol is the rabbit, and he was aware of TU BA GE
in Chinese characters, the nonofficial translation of BUGS
BUNNY when the cartoon was first shown in China. He registered
the mark on January 14, 1998.
The next year, Warner Bros. filed cancellation actions against
the two registrations, claiming that BUGS BUNNY, as the main
character in its BUGS BUNNY cartoon since the 1940s, should
enjoy copyright protection and not be registered as a trademark by
others.
Mr. Wang, the registrant, rebutted, stating that the 50-year
copyright protection term for BUGS BUNNY under the Berne
Convention had expired and that therefore he was free to register
the mark. Moreover, he argued, the mark consists only of three
Chinese characters, which cannot be considered copyrightable
works by Warner Bros.
The Trademark Review and Adjudication Board agreed that
Warner Bros. owns copyright over the image of BUGS BUNNY
and the cartoon works but does not enjoy copyright over the
Chinese characters of TU BA GE. Therefore, the two registrations
were maintained.
People have had different reactions to the decision. Some view
it as a success for small companies in China and have hailed their
increasing awareness of trademark rights and value. Others think
Mr. Wang’s acts are dangerous and are suspicious of his intention
to ride on the goodwill of well-known IP rights. New legislation
may be necessary to prevent similar cases in the future.
I.B.11.b. Official Names
With the successful launch of Shenzhou (meaning “magic
land,” a nickname for China) No. 5 spaceship, use of the term
SHENZHOU has spread quickly in China.
Many people, especially quick-minded merchants, wish to take
advantage of the brand recognition effect of the term. Several new
142. “Domestic Rabbit Prevails over Foreign Rabbit, Suspicious of Riding on Other’s
Good Will,” Trademark World, Jan. 9, 2003, at 1.
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applications to register the term as a trademark in various classes
have been filed with the Chinese Trademark Office.143
Whether the term is registrable is now a heatedly discussed
topic among legal scholars and practitioners. Some view the
Shenzhou No. 5 spaceship as an important national project, with
anything related thereto belonging to the state, or to the Shenzhou
or Shen Wu (transliteration and abbreviation of Shenzhou No. 5)
project team. They argue that the term is similar to the Olympic
symbol, which can be registered only by specific parties and not by
individuals or private companies for their personal and commercial
use. Others find the term a concocted one that is registrable. It will
be interesting to see how the Chinese Trademark Office decides
the issue.
I.B.13. First to Apply Versus First to Use
On May 24, 2004, Hongyou Science and Technology Co. Ltd.
sued the Trademark Review and Adjudication Board (TRAB) in
Beijing No. 1 Intermediate People’s Court regarding approval of
registration of the trademark MUSTEK for computer and
peripheral devices in Class 9. Hongyou claimed that the applicant
had violated Article 31 of the Chinese Trademark Law and tried to
register another person’s known mark through unfair means.
Hongyou asserted that it had prior rights based on its use of the
mark on scanners.144
The TRAB stated that to satisfy Article 31 one has to prove
that (1) the mark is already known in the territory covered by the
Chinese Trademark Law and (2) the applicant has acquired the
registration through illicit acts. Hongyou failed to prove either of
these elements with sufficient evidence. Almost all of the evidence
Hongyou submitted covered only territories outside of mainland
China or was dated after the applicant’s application was filed.
Only an advertisement in Computer World, dated July 7, 1993,
complied with the formality requirement, and this was not
sufficient to prove that Hongyou’s mark had acquired recognition
in mainland China. On the other hand, the applicant submitted
evidence, which Hongyou failed to rebut, to prove its first use of
the mark in Taiwan. Based on the evidence and arguments
submitted, the TRAB viewed it as proper for the applicant to apply
for registration of a mark it first created and used in China.
Both parties, as well as people interested in the case, are
waiting for the court’s ruling.
143. “Successful Launch of Shenzhou No. 5 Space Ship Prompts Competition to Register
the Term as a Mark,” China Intellectual Property News, Apr. 20, 2004, at 1.
144. Liu Guodong, “How to Determine Prior Use, ‘MUSTEK’ Case Was Tried in Beijing,”
Trademark World, June 3, 2004.
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I.B.18. Joint Ownership
Recently, the French company Lacoste settled a 14-year
trademark dispute with Hong Kong Crocodile Ltd., and both
parties signed an agreement regarding the coexistence of the
crocodile design marks in mainland China.145
This result is the best expected by many and is a win-win
solution for both parties. Each of the two companies separately
created and used a crocodile design mark for goods in
International Class 25. Lacoste, of course, was the first one in the
world to make the crocodile design mark famous for its clothing
products and accessories, and the company had registered it in
China. However, it was the Hong Kong company that first used
and registered a similar crocodile design mark for goods in the
same class in other countries in Asia. The two designs differ only
in the direction of the head of the crocodile.
For years, a bitter legal battle was carried on between the two
companies. It was widely reported and watched by people in the
field. Aside from the dispute as to who has the right to use and
register the crocodile design mark in China, both faced increasing
infringement of their crocodile design mark by third parties. Now
that they have settled the dispute, the two companies will join
efforts to fight infringement of their design marks and prevent
unauthorized use of the marks by others.
This resolution of this matter has opened up a new alternative
strategy for protection of famous marks.
I.B.21. Trade Names
Guangzhou Estee Lauder Cosmetics, Inc. is a company
registered in Guangzhou in August 2000. Its main products are
cosmetics and hair care products.146
The Guangzhou company, without authorization or knowledge
of the owner of the trademark ESTEE LAUDER, used the mark in
its trade name. Moreover, it produced and sold products that are
confusingly similar to or the same as those manufactured by the
famous cosmetics company. In its advertisements and product
brochures the Guangzhou company claimed that it had relied on a
famous international brand and expanded it in China.
The State Administration of Industry and Commerce sent an
investigation team to Guangzhou to investigate the matter. It
found that the Guangzhou company’s unauthorized use of the
145. Ma Hailin, “What Dispute over Crocodile Mark Reminds Us,” China Intellectual
Property News, Apr. 20, 2004, at 10.
146. “Guangzhou Estee Lauder Co. Severely Penalized for False Advertising and
Unauthorized Use of World Famous Mark as Trade Name,” China Intellectual Property
News, Apr. 17, 2004, at 1.
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mark, which had been registered in China by its U.S. owner,
constituted trademark infringement. The enforcement agents
seized 12,170 copies of advertisements and brochures bearing the
mark.
The investigation team found that this was a typical
infringement case where the infringer had blatantly copied the
trademark owner’s mark. Accordingly, the Administration of
Industry and Commerce of Guangzhou immediately ordered the
local company to change its trade name and delete ESTEE
LAUDER in Chinese and not to use any similar words in its trade
name. In addition, it imposed a fine of up to 200,000 yuan.
III.A.1. Famous Marks
A flower design with a red flower and green stem is a design
mark for the famous clothing brand MONTAGUT and its Chinese
equivalent MENG TE JIAO. In recent years, the owner of the
mark has found that there are several infringing designs in the
market in China that either have an extra petal added or have
several leaves deleted.147 To ordinary customers, these designs are
confusingly similar with the authentic MONTAGUT design mark.
After a market investigation, the owner of the real
MONTAGUT design, a French company, sued two local clothing
companies in Guangdong Province, Guangzhou Mr. Meng Jiao
Trading Co. Ltd. and Guangzhou Mr. Meng Jiao Clothing Co. Ltd.,
in Beijing Second People’s Court. The court heard the case on May
18, 2004.148
The plaintiff claimed that it registered MONTAGUT, MENG
TE JIAO and the design mark with the Chinese Trademark Office
for clothing, footwear and headgear in International Class 25, and
that these registrations were valid. It asserted that its clothing
products bearing the above marks have been on sale in China and
enjoy a good reputation. The defendants, as the general agents for
Meng Te Jiao (HK) Development Co. Ltd., have offered for sale
MENG TE JIAO clothing products, using the MENG TE JIAO
mark and a flower design mark similar to the plaintiff’s flower
design mark. The plaintiff claimed that the defendants’ action
constituted unfair competition and infringement of its trademark
rights.
In reply, the defendants denied that the sample infringing
clothing products were theirs and claimed that the plaintiff’s
marks were not distinctive and thus should not enjoy exclusive
protection.
147. “‘MENG TE JIAO’ and ‘MR. MENG TE JIAO’ in Court,” China Intellectual
Property News, May 29, 2004, at 2.
148. Id.
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The court, after conducting a close to three hours’ hearing of
the matter, is expected to make a decision soon.
III.A.2.b. Similarity of Marks
Hainan Asia Pharmaceutical Group owns the trademark
KUAI KE for its flu medicine. With increasing recognition of the
KUAI KE mark by Chinese customers, products bearing marks
similar to KUAI KE have started to appear on the market in
China.149
To stop the infringement, Hainan Asia Pharmaceutical Group
retained counsel to take legal action against the medicine NEW
KUAI KE, manufactured by Jilin Pharmaceutical Co. Ltd. At first
glance, the medicine products bearing these two marks appear
similar. However, Jilin Pharmaceutical actually has no
relationship with Hainan Asia Pharmaceutical. Therefore, the
quality of its products is not monitored or guaranteed by the owner
of the KUAI KE mark. According to Article 52 of the Chinese
Trademark Law, use of a mark identical or similar to another
person’s registered mark without authorization is an infringement
of the other party’s trademark right and should be stopped. In this
case, local agents from the Administration of Industry and
Commerce seized more than 166 cases of the infringing products,
worth more than 130,000 yuan.
On September 22, 2003, the Jiangsu Qingman Group filed a
complaint with the Administration of Industry and Commerce in
Shuyang County, Jiangsu Province, for trademark infringement.
The company found that shirts offered for sale on the local market
bore the company’s trademark QINGMAN.150
It turned out that the QINGMAN shirts offered for sale in
Shuyang were put on sale by Shanghai Qingman Clothing and
Accessory Co. Ltd. At the time of the complaint, a total of 114
shirts were on sale, of which nine had been sold, for 582 yuan.
Shanghai Qingman had registered its own mark RAN TIAN
for shirts and did use it on the shirts sold. However, it used words,
letters and designs similar to those of the registered mark
QINGMAN and repeatedly used the word QINGMAN on the
packaging of the shirts. Jiangsu Qingman claimed that the
repeated use of QINGMAN constituted infringement of its
registered trademark and requested that the enforcement agency
seize the infringing shirts.
149. Wen Bing et al., “‘KUAI KE’ Fights ‘NEW KUAI KE’,” China Intellectual Property
News, July 17, 2004, at 3.
150. Chi Muo, “Dispute Between Real QINGMAN and Fake QINGMAN,” Trademark
World, May 27, 2004.
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The Shuyang Administration of Industry and Commerce found
that Shanghai Qingman’s use of the term, which is also part of its
trade name, infringed upon Jiangsu Qingman’s trademark rights
in the word and should be stopped. Although the Shanghai
company used its own registered mark RAN TIAN on the shirts in
dispute, the form of the mark used differed significantly from the
mark as registered, and the word QINGMAN shown on the
package of those shirts was confusingly similar to the registered
trademark QINGMAN owned by the Jiangsu company.
The Administration of Industry and Commerce ruled that the
Shanghai company was guilty of trademark infringement and
fined the company 8,000 yuan, in addition to confiscating the 105
infringing shirts.
In November 2003, Paradise on Earth Night Club in Shanghai
changed its trade name to Shanghai Paradise on Earth
Entertainment Co. Ltd., as per a preliminary injunction order
issued by the No. 2 Intermediate People’s Court in Shanghai.151
The plaintiff, Beijing Chang Qing Tai Restaurant and
Entertainment Co. Ltd. (Chang Qing Tai), sued the Shanghai
company for service mark infringement and requested a
preliminary injunction against use of the mark by the defendant in
its business.
Chang Qing Tai acquired registration of PASSION PARADISE
ON EARTH for services for nightclubs, entertainment, etc., in
1999 and since then has used the mark in running the PARADISE
ON EARTH nightclub in the Great Wall Hotel in Beijing. The
plaintiff claimed that since July 2003 the Shanghai company had
used PARADISE ON EARTH neon postings in its nightclubs and
had printed that mark on business cards for its staff members.
Chang Qing Tai alleged service mark infringement and applied for
a preliminary injunction against use of the mark by the Shanghai
company. It also sued the defendant for service mark infringement
in Shanghai.
The court found the Shanghai company’s trade name
confusingly similar to Chang Qing Tai’s registered service mark.
The defendant’s conspicuous use of the plaintiff’s mark in services
similar to the plaintiff’s, the court found, was likely to cause
customer confusion and constituted service mark infringement. As
the plaintiff’s request was reasonable and complied with the law,
the court granted a preliminary injunction order, with which the
defendant complied by changing its trade name.
151. “Court Issued Preliminary Injunction, ‘Paradise on Earth’ Changed Name in
Shanghai,” China Intellectual Property News, Nov. 25, 2003, at 6.
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This case is one of those where both parties are Chinese
companies. It shows that now not only foreign companies but also
Chinese domestic firms have started to appreciate the power of
trademarks and are willing to seek effective legal remedies to
protect their legal rights over these valuable symbols.
The defendant claimed that it did not intentionally infringe
upon the plaintiff’s trademark. Since Shanghai Paradise on Earth
Entertainment Co. Ltd. had registered PARADISE ON EARTH
with the government in Shanghai, it will continue to use that as its
trade name. Meanwhile, it has removed the neon lights in dispute.
III.A.17. Descriptive Use
Xiahua Electronics is a Chinese company that owns a
registration for the trademark CHDTV for high-definition
television. In August 2003, Xiahua sued Changhong, another
major television manufacturer in China, claiming unauthorized
use and infringement of its mark by the latter. Changhong
responded immediately, stating that its use of the mark was not
trademark use and that the lawsuit by Xiahua was brought only
for the purpose of promoting Xiahua’s products.152
Within a month, the State Administration of Industry and
Commerce issued a decision, finding that Changhong’s use of
HDTV on its product label was a proper, non-trademark use and
thus did not infringe upon Xiahua’s trademark rights. Although
Xiahua had registered CHDTV as its trademark, the mark is a
weak one that enjoys only limited protection, as the acronym
HDTV must be available for use by companies in the industry in
advertising their products in fair competition.
III.F.5. Cancellation
The Trademark Review and Adjudication Board (TRAB)
recently dismissed a nonuse cancellation action filed by Wal-Mart
against the Chinese trademark registration for GEORGE,
ZHUANG JI in Chinese characters & Design in International
Class 25. This was the first cancellation action filed by a foreign
company against a trademark registration owned by a local
company in the Wenzhou area for clothing products since China
joined the World Trade Organization.153
Wal-Mart claimed that the owner of the registration, Zhuang
Ji Group, did not use the mark during the period 2001 to 2003.
152. “Regulate Trademark Protection to Improve Market Quality,” China Intellectual
Property News, Apr. 20, 2004, at 6.
153. “Result of Trademark Dispute Between Wal-Mart and Wenzhou Company, Zhuang
Ji Mark Still Valid,” China Intellectual Property News, June 3, 2004, at 2.
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According to the Chinese Trademark Law, any registration that
has not been used for three consecutive years should be cancelled.
Zhuang Ji Group submitted use evidence as well as other
documents to prove its ownership of the mark. It also retained
legal counsel to respond to the cancellation action. The TRAB
decided that the registrant’s reply and supporting documents were
sufficient to maintain the registration, and Wal-Mart’s request
was dismissed.
Sources said Wal-Mart had earlier filed an application to
register the mark GEORGE for clothing products in Class 25 in
China. Now Zhuang Ji Group has filed an opposition against WalMart’s application, claiming that the applied-for mark is
confusingly similar to its trademark GEORGE, ZHUANG JI &
Design. The two parties have switched their positions. Nobody can
predict who the final winner will be.
COLOMBIA
I.B.5. Personal Names
In August 2004, a final decision was issued refusing the
registration of the name mark SIR WILLIAM WALLACE, covering
alcoholic beverages (except beer) in International Class 33, on the
ground that it was misleading.
In the first stage, the Trademark Office had refused the
registration, indicating that as the applied-for mark referred to a
Scottish character, it would suggest to consumers that the
products come from Scotland, a country that is famous for the
production and quality of its whiskies, and thus could mislead
consumers.154
The applicant appealed. The Superintendent of Industry and
Commerce, in confirming the misleading nature of the mark, cited
the following grounds:
The mark designates a historical character deemed a hero in
Scotland, and for this reason the consumers will associate the
character [with] the geographical location. Scotland, the
country indirectly designated by the mark, is known
worldwide for the production and commercialization of topquality whisky, but the products to be covered by the mark did
not come from a Scottish producer.
The Superintendent concluded that, when they viewed the
mark, consumers would associate the mark, the products and a
place of production, so they would reasonably be induced into
assuming a geographical origin different from the actual origin of
154. Resolution No. 4601, February 27, 2004.
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the product, which would be a distortion of reality. That, in turn,
would affect consumers’ right of free choice, as well as the
conditions of competition in the market. Therefore, the
Superintendent affirmed the Trademark Office’s refusal of
registration for SIR WILLIAM WALLACE.155
I.B.7.b. Three-Dimensional Marks
A three-dimensional trademark is a mark occupying three
dimensions in a space (height, width and depth). If the mark in
question does not occupy a space but is contained in a physical
volume element, it is not deemed three-dimensional.
The definition of this term was so explained by the Andean
Court of Justice in a pre-judicial interpretation requested by the
Council of State of Colombia in the context of a nullity action filed
by Nintendo of America Inc. against the decision of the
Superintendency of Industry and Commerce156 to refuse the
registration of the shape of its device, commonly known as
Nintendo, in International Class 9 as a three-dimensional
trademark.157
The Nintendo device is a rectangle placed on a rounded vertex
in whose interior several geometrical figures appear (two
rectangles at the top side, one inside the other; one cross to the
left; two adjacent circles to the right; and two small ovals centered
at the bottom) and a series of parallel lines close to the rounded
vertex.
The Court explained that the shape of products usually
corresponds to their wrapping or container—that is, all that
covers, wraps or contains a product, and its container. A container
is understood to be any receptacle intended to hold liquid or
gaseous products or products that, lacking a shape when in their
natural state, take the shape of the thing that contains them.
Containers comprise bottles, boxes, cases, cans, packaging—in
sum, anything with a volume or showing a form other than the
simple form of two-dimensional marks.
The purpose of the prohibition, found in most legislative codes,
against registration of a commonly used product shape as a
trademark is to prevent the creation of a monopoly of shapes that
155. Resolution No. 21105, August 30, 2004.
156. Resolution No. 13486, August 18, 1994.
157. Class 9—Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus
and instruments; apparatus and instruments for conducting, switching, transforming,
accumulating, regulating or controlling electricity; apparatus for recording, transmission or
reproduction of sound or images; magnetic data carriers, recording discs; automatic vending
machines and mechanisms for coin-operated apparatus; cash registers, calculating
machines, data processing equipment and computers; fire-extinguishing apparatus.
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other traders would need.158 If a shape imposed by the nature or
industrial function of a product could be monopolized in perpetuity
through trademark registration, free access of competitors to the
market would be blocked, as they would not be able to
manufacture or distribute their products.
Applying the Court’s pronouncement, the Council of State
ruled that the shape of the game device known as Nintendo could
not be registered as a three-dimensional trademark because it did
not have a sufficiently distinctive fanciful, suggestive or arbitrary
shape that would make it different from the usual form of video
games.159
I.B.8.a. Similarity of Marks
The corporation Tecnoquímicas S.A. applied for the
registration of the trademark LOXAN for pharmaceutical,
veterinary and hygiene products; diet substances for medical use;
products for destroying vermin; fungicides; and herbicides, all in
International Class 5. In the first stage, the Colombian Trademark
Office allowed this registration and declared ungrounded an
opposition filed by the corporation Asta Medica Aktiengesellschaft
(Asta) based on its trademark HOLOXAN.160 Asta filed for legal
remedies and obtained revocation of the decision issued in the first
stage, thus preventing the registration of the trademark
LOXAN.161 Tecnoquímicas filed a nullity action against this new
decision before the Council of State, arguing that there were more
differences than similarities between the trademarks. The Council
of State requested a pre-judicial interpretation from the Andean
Court of Justice.
The Court ruled that for a word to be registered as a
trademark it must comply with the requirements of distinctiveness
and perceptibility and be able to be represented graphically. It also
indicated that the marks must be compared based on their
phonetic, graphical and conceptual elements, keeping in mind that
consumers do not separate these elements, but perceive the
trademark as a whole. Finally, the Court affirmed that when it
comes to pharmaceutical trademarks, the risks to human health
158. Andean Court of Justice, Proceeding No. 31-IP-2003 (June 18, 2003), [2003] ACCJ
65.
159. Nintendo of America Inc. v. Superintendency of Industry & Commerce, Council of
State, File 6790, August 6, 2004 (not yet published).
160. Resolution No. 11394, June 23, 1999.
161. Resolution No. 17250, August 30, 1999.
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posed by the sale of a product that is similar to another product
already registered must be taken into account.162
Applying this interpretation to the matter at hand, the
Council of State determined that, as HOLOXAN covers a product
for cancer and LOXAN covers a product for urinary infections, a
mistake could certainly pose a risk for the consumer. Indeed,
consumers could confuse the marks given their undeniable
graphical and phonetic similarity and because, in Colombia,
medicines are easily sold without a medical prescription. The
Council of State supported the position of the Andean Court,
holding that when the products involved are pharmaceuticals the
comparison of the trademarks must be more stringent, given that
human health is also involved.
As a result, the Council of State’s ruling was that the decision
to refuse the registration of LOXAN, as made by the Trademark
Office, was valid.163
Mr. Libardo Rivera applied for the registration of the
trademark BAZZER & Design, covering dresses, footwear and
headwear in International Class 25. The design is similar to an
oval figure with blue, yellow and orange background, and the word
BAZZER is written in the middle.
The corporation Stanton & Cia S.A. opposed this registration
based on its trademark BAXTER, previously registered and
covering products in Class 25. The Trademark Office refused Mr.
Rivera’s application on the ground of similarity of marks.164
Mr. Rivera filed a nullity action against this decision before
the Council of State, which requested a pre-judicial interpretation
of the relevant Andean Community provision from the Andean
Court of Justice.
The Court ruled that only those marks that are perceivable,
are sufficiently distinctive and can be graphically represented are
eligible for registration. Also, it ruled that those marks that are
identical, or so similar to marks previously registered by third
parties that they could induce consumers into error, are not
eligible for registration.165
The Council of State applied this ruling to the case at hand
and determined that there were graphical, orthographical and
phonetic similarities, as the intermediate consonants in each mark
162. Andean Court of Justice, Proceeding No. 91-IP-2003 (October 8, 2003), [2003] ACCJ
112.
163. Tecnoquímicas S.A. v. Asta Medica Aktiengesellschaft, Council of State, File 6159,
February 26, 2004 (not yet published).
164. Resolution No. 16173, August 18, 1999.
165. Andean Court of Justice, Proceeding No. 5-IP-2002 (February 20, 2002), [2002]
ACCJ 7.
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(XT and ZZ) were not sufficient to differentiate the marks from
each other. Likewise, it determined that the nominative element
prevailed in both trademarks, and that the similar impression they
made when considered by consumers was likely to cause confusion.
Therefore, having concluded that the marks showed sufficient
visual, conceptual and orthographical similarities to cause likely
consumer confusion, the Council of State ruled that the Trademark
Office’s decision to refuse the registration of the trademark
BAZZER was valid.166
Starbucks Corporation applied for the registration of the mark
STARBUCKS COFFEE & Design, which consists of a circle within
which there is the shape of a woman wearing a crown, and the
expression STARBUCKS COFFEE written around the circle. This
mark was applied for to cover products in International Class 30.
The Trademark Office refused the registration, deeming that its
word part was orthographically and phonetically similar to
STARBURST, a mark registered in Class 30 by Mars Incorporated,
for which reason it could induce the public into error.167
Given the refusal of the registration, Starbucks filed a nullity
action against this decision before the Council of State. In the
complaint, the corporation asked this body to take into account the
worldwide trademark coexistence agreement entered into by the
parties, which agreement had allowed these trademarks to coexist
peacefully in the market for several years.
The Council of State requested a pre-judicial interpretation of
the Andean Community provision from the Andean Court of
Justice. The Court ruled that only those marks that are
perceivable, are sufficiently distinctive and can be graphically
represented are eligible for registration. It ruled, further, that
those marks that are identical, or so similar to marks previously
registered by third parties that they could induce consumers into
error, are not eligible for registration. It concluded by stating that,
in fact, coexistence agreements do not generate rights, do not have
any legal relevance in terms of exempting a mark from the
registrability study and do not render inapplicable the analysis of
confusability made by the examiner.168
The Council of State applied this interpretation to the case at
hand, and established that there certainly were phonetic and
visual similarities between the marks STARBUCKS COFFEE and
STARBURST that could confuse consumers, even more so because
166. Stanton & Cia. S.A. v. Libardo Rivera, Council of State, File 6653-01, January 22,
2004 (not yet published).
167. Resolution No. 16520, August 31, 1995.
168. Andean Court of Justice, Proceeding No. 79-IP-2003 (September 16, 2003), [2003]
ACCJ 100.
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they cover products belonging to the same class. It clarified that,
although STARBUCKS COFFEE was a combined mark, that is,
formed by both a graphic element and a nominative element, the
prevailing element was the word.
Regarding the coexistence of the trademarks, the Council of
State deemed that the similarity existing between the marks and
the consequent risk for consumers were so evident that the
companies owning the marks had to enter into an agreement that
would allow their coexistence in the market.
Given the above, the Council of State ruled that the decision to
refuse the registration of the mark STARBUCKS COFFEE, as
made by the Trademark Office, was valid.169
In Colombia, trademark coexistence agreements—instruments
that traders execute to commercialize products or merchandise
covered by similar or identical trademarks—must meet the
following requirements:
1. Existence of registrations for identical trademarks in the
Subregion;
2. Existence of an agreement between the parties;
3. Adoption by the parties of measures intended to prevent
confusion among consumers, and clear information about
the origin of the products or services;
4. Recordal of the agreement before the national competent
office; and
5. Observance of provisions concerning commercial practices
and promotion of competition.
Failure to meet any one of these requirements implies
inapplicability of the agreement.
This principle was enunciated by the Council of State in its
decision resolving a nullity action brought by Sony Kabushiki
Kaisha (Sony Corporation) against the refusal of the Trademark
Office to register the trademark WEGA & Design.170 The
trademark had been applied for to cover television sets, projectors
and products comprised in International Class 9.
The Council of State upheld the decision of the Trademark
Office for two reasons. First, it deemed that WEGA was
confusingly similar to VEGA, a trademark previously registered in
Class 9 in the name of Vega Grieshaber KG. Second, it deemed
that the coexistence agreement executed by these two companies
did not contemplate the measures required to prevent confusion.
169. Starbucks Corp. v. Mars Inc., Council of State, File 7062, February 19, 2004 (not yet
published).
170. Resolution No. 08409, April 27, 2000.
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347
Specifically, the Council of State indicated that, in order to
prevent confusion, Vega Grieshaber KG should have undertaken
under the agreement to limit the Class 9 products, both those it
currently produced and those it would produce in the future, for
which it would use its registered trademark VEGA.171 The Council
of State, in resolving this action, applied the pre-judicial
interpretation that the Andean Court of Justice had been asked to
hand down for this particular case.172 It determined that the
execution of the coexistence agreement did not make automatic the
registration of the trademark applied for—that the purpose of
trademark legislation, which is to guarantee protection to the
consumer public, may not be forgotten.
Coexistence agreements have two limitations:
1. The parties must adopt measures under the agreement
for preventing confusion among consumers as to the
origin of the products.
2. The agreement is subordinated to the power the
trademark office in each country has to refuse the
registration of one of the trademarks if it deems that
consumers could be confused.
Such was the explanation of the Council of State when it decided
to refuse the registration of the trademark STARBUCKS and the
application of a coexistence agreement signed by its owner,
Starbucks Corporation, with Mars Incorporated, the owner of the
trademark STARBURST.173 In the agreement, Starbucks
undertakes to refrain from using its trademarks with respect to
fruit candies and confectionary products, while Mars undertakes to
refrain from using its mark with respect to coffee, cocoa, espressos,
coffee substitutes and coffee beverages, and also to respect certain
limitations as to the places where these products are sold.
The Council of State applied the pre-judicial interpretation
delivered by the Andean Court of Justice, which had determined
that STARBUCKS and STARBURST were similar because they
begin with the syllable STAR, followed by the phoneme BU.174
Also, even though the trademarks end in different consonants
(CKS versus RST), the truth, according to the Council of State, is
171. Sony Kabushiki Kaisha v. Vega Grieshaber KG, Council of State, File 6903,
August 23, 2004 (not yet published).
172. Andean Court of Justice, Proceeding No. 85-IP-2003 (October 1, 2003), [2003] ACCJ
107.
173. Starbucks Corp. v. Mars Inc., Council of State, File 7063, August 20, 2004 (not yet
published).
174. Andean Court of Justice, Proceeding No. 104-IP-2002 (December 4, 2002), [2002]
ACCJ 118.
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that this little difference lacks differentiating capacity, since the
ending is a weak part when considered with respect to the whole,
the order of the common elements of the whole and the vowels in
the initial syllable.
This ruling may have a strong impact on the business world,
as Starbucks, whose trademark is one of the most recalled marks
in the world, has not been able to open markets in some of the
Andean Community countries for this same reason.
I.B.9.a. No Similarity of Marks
Kraft Foods Inc. applied for the registration of the trademark
KISS COOL for products in International Class 30. Hershey Foods
Corporation S.A. opposed this registration based on its word
trademark HERSHEY’S KISSES, previously registered also for
products in Class 30.
The Trademark Office declared the opposition ungrounded,
and allowed the registration of KISS COOL in Class 30 as applied
for by Kraft, deeming that the trademarks were not confusing and
did not show similarities that could induce the public into error.
Hershey filed a nullity action against this decision before the
Council of State, which requested a pre-judicial interpretation of
the relevant Andean Community provision from the Andean Court
of Justice.
The Court ruled that those marks that are identical, or so
similar to marks previously registered by third parties that they
could induce the consumers into error, are not eligible for
registration. Also, those words in another language whose use
becomes prevalent in Colombia should be treated as local
expressions, as their meaning is known in Spanish owing to their
frequent use.175
The Council of State, applying this interpretation to the case
at hand, concluded that the trademarks involved, when
appreciated as a whole and successively, produced an impression
different from the impression their elements would produce
separately, thus preventing confusion. In addition, it concluded
that the word KISS, which is known by the general public because
of its meaning, has been used so much in Colombia as a
designation for certain candies, chocolates and flour products that
such use has deprived the word of its own distinctiveness (the
dilution phenomenon).
Consequently, the Council of State did not find a true risk of
confusion in graphic, phonetic or ideological terms between
175. Andean Court of Justice, Proceeding No. 63-IP-2002 (August 28, 2002), [2002] ACCJ
75.
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349
HERSHEY’S KISSES and KISS COOL, and it deemed valid
Kraft’s registration.176
I.B.12. Famous Marks
Warner-Lambert Company, owner of the trademark
LUBRIDERM, filed a nullity action before the Council of State
against the decision of the Trademark Office to allow the
registration of the trademark DERMALUB, alleging that the two
trademarks were confusingly similar and, additionally, that
LUBRIDERM was a well-known trademark.
Because Nobel Farmaceutica S.A. had applied to register its
mark DERMALUB in 1992, to cover pharmaceutical, veterinary
and sanitary products in International Class 5, the first problem
that the Andean Court of Justice faced in giving a pre-judicial
interpretation in this case was the application of law over time.
Since that year, industrial property has been regulated in the
Andean Community by several decisions;177 to some of the parties
to the proceeding, therefore, it was not clear which was the
applicable law.
The conclusion reached and stated by the Court was that, in
cases where the law has changed, the Andean Community
legislation that was in force when the application to register was
filed is the one to be applied when judging the legality of national
administrative acts.
With respect to the issue of the well-known character of the
LUBRIDERM trademark alleged by Warner-Lambert, the Court
first explained that special protection granted to a well-known
trademark with respect to the product or service that is its subject
matter is extended—in the event of risk of confusion with a mark
reproducing, imitating, translating or transcribing it, whether
totally or partially—regardless of the class to which the product or
service may belong or the country where the trademark may have
been registered, as the purpose is to prevent undue use and the
damage that registration of a similar mark could cause to the
distinctive capacity or the reputation of the well-known
trademark.
The Andean Court added that the well-known character of a
trademark is a matter of facts that must be proved sufficiently,
based on, among other criteria, the extent to which the trademark
is known, diffused and advertised; its years of existence and
176. Kraft Foods Inc. v. Hershey Foods Corp., Council of State, File 5449-01, February
19, 2004 (not yet published).
177. Commission of the Andean Community, Decisions 313, 344, 486.
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continued use; and the production and marketing analyses of the
products covered by the trademark.178
The Council of State applied this interpretation and decided
the case by refusing the claims of the plaintiff. Among other
things, the Council of State ruled, first, that Warner-Lambert did
not prove sufficiently the well-known character of its trademark,
and, second, that LUBRIDERM and DERMALUB were not
confusable, as from the visual, orthographical and phonetic points
of view they were perceived differently by consumers because of
their spelling and pronunciation.179
The company Harrods Limited asked the Council of State to
decree the nullity of the resolution by which the Trademark Office
granted the registration of the trademark HARRODS in favor of
Harrods (Buenos Aires) Limited for products in International
Class 9 (scientific, nautical, geodesic and other instruments and
apparatuses). In the opinion of Harrods Limited, the registration
for HARRODS owned by Harrods (Buenos Aires) Limited was null
for the following reasons:
1. The existence of the prior registration for the trademark
HARRODS (mixed), for products in Class 28 (games,
gymnastic items, decorations, etc.), in the name of Harrods
Limited;
2. The well-known character of the HARRODS trademark;
and
3. The existence of the commercial name Harrods prior to the
registration application for the trademark HARRODS by
Harrods (Buenos Aires) Limited.
Comparing the previously registered trademark HARRODS
owned by Harrods Limited and the applied-for trademark
HARRODS owned by Harrods (Buenos Aires) Limited, the Council
of State concluded that it was not necessary to implement a
further analysis to establish that the two trademarks were
identical. It then explained that in the Andean Community the
existence of two identical trademarks for identifying different
products is possible unless one of them is a well-known trademark,
because that situation could induce consumers to error with regard
to the origin of the products.
The Council of State went on to analyze whether HARRODS
was a well-known trademark. It began by analyzing the history of
the expression HARRODS as a distinctive mark, and found that it
178. Andean Court of Justice, Proceeding No. 86-IP-2003 (October 8, 2003), [2003] ACCJ
114.
179. Warner-Lambert Co. v. Nobel Farmaceutica S.A., Council of State, File 05394, July
21, 2004 (not yet published).
Vol. 95 TMR
351
started in 1849, when a food store with that name was opened in
London, England. In 1889, the firm became a limited liability
company and changed its name to Harrods Limited. The store
began making sales by catalog, both at the national and at the
international level, and it now sells an ample scope of products,
such as cosmetics, jewels, clothing, food and books, that bear the
HARRODS mark. The mark is registered in more than 40
countries of the world, among them Colombia.
In addition, the Council of State found that Harrods Limited
invests approximately £2.3 million a year in advertising and that
its products have been the object of advertising campaigns in
magazines in the Americas, including Colombia, as well as in
Europe. Consequently, the Council of State concluded that
HARRODS complied with the requirements for being considered a
well-known trademark.
Based on the foregoing, the Council of State declared the
nullity of the registration of the HARRODS trademark that had
been granted in favor of Harrods (Buenos Aires) Limited.180
III.A.2.b. Similarity of Marks
Warner-Lambert Company sought the nullification of the
Trademark Office’s resolution granting the registration of the
trademark DELISTER in favor of Laboratorios Lister S.A. to cover
products in International Class 3.181 In the opinion of WarnerLambert, DELISTER was similar to its well-known trademark
LISTERINE, registered in Colombia for products in Classes 3 and
5.
The Council of State asked the Andean Court of Justice for a
pre-judicial interpretation regarding this case. The Court decided
as follows:
1. Regarding law conflict in time. As the resolution that
granted the trademark registration was issued in 1996
and since then the Andean Community legislation has
changed, the first discussion was regarding the law
applicable to the case. The Court ruled that the
substantial norm in force at the moment of filing the
application for registration of a mark as a trademark is
the one applicable to deciding on the granting or refusal of
the registration, as well as regarding any refutation,
either administrative or judicial.
180. Harrods Ltd. v. Harrods (Buenos Aires) Ltd., Council of State, File 1-8303, October
22, 2004 (not yet published).
181. Resolution No. 9107, March 22, 1996.
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2.
Comparison of nominative trademarks. As the marks to
compare, namely, DELISTER and LISTERINE, are
nominative, the Court held that the comparison should
have taken into account all the syllables and letters
forming the words in the conflicting trademarks.
The Andean Court added that two marks are similar when the
tonic syllable occupies the same position in the two denominations
being compared and is identical or very difficult to distinguish.
Inside a word, the tonic syllable is the one pronounced with more
strength. For example, in the word candelabro, the tonic syllable
would be “la.” The other syllables carry no accent and thus are
called atonic syllables. In this example, the atonic syllables would
be “can,” “de” and “bro.”
3. Derived trademark. With regard to the discussion of
trademarks derived from the mark LISTERINE, the
Court had the following findings:
a. The derived trademark gives its legal owner the
power to use the trademark, including nonsubstantial variations, and said fact does not
decrease its protection.
b. The legal owner of a derived trademark can file new
registration
applications
regarding
marks
constituting derivations of an already-protected
trademark.
c. Even with regard to a previously registered derived
trademark, however, the legal owner is not entitled
to have exclusive rights to the particles, prefixes and
suffixes, roots or terminations, either common,
necessary or usual, because they belong to the public
domain, and exclusiveness would create a monopoly
on the use of the particles necessary for the
identification of certain products or services for the
benefit of a few.
4. Well-known trademarks. As Warner-Lambert alleged the
well-known character of its trademark LISTERINE, the
Court reminded the company of the doctrine criteria
generally used for deciding whether a trademark is well
known:
a. Whether extensive advertising has made the
trademark known to a high percentage of the
general population.
b. Whether the mark enjoys extensive use and
acceptance by a large number of consumers.
c. Whether the mark enjoys an outstanding reputation
in the corresponding industrial or commercial field.
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353
d.
Whether mention of the mark elicits in the public a
direct association with the product or service
identified. 182
Adopting all these remarks of the Court, the Council of State
proceeded to decide this specific case. In doing this, it compared
the two marks from the phonetic, spelling and conceptual points of
view, and concluded that they shared several similarities.
DELISTER and LISTERINE contain the expression LISTER and
share the same vowels, “I” and “E,” even though in a different
order. The only difference is the initial “DE” of DELISTER and the
final “INE” of LISTERINE.
The Council of State went on to analyze the topic of wellknown character, according to the guidelines set by the Andean
Court of Justice. It concluded that LISTERINE, registered by
Warner-Lambert in Colombia and in 88 other countries of the
world, was a well-known trademark.
Because both DELISTER and LISTERINE covered products
belonging to Class 3 and LISTERINE was a well-known trademark
within the scope of the products for oral hygiene, the Council of
State concluded that there was an undeniable risk of confusion for
consumers, and therefore it declared the nullity of the trademark
DELISTER.183
III.A.8. Infringement of Unregistered Trademarks
Even if the packaging, flier, label and logotype of a product are
clearly a forgery, the author of the forgery may not be charged for
trademark and patent usurpation unless it is proved that the
trademark was registered.
That was the determination of the Supreme Court of Justice of
Colombia when it revoked a decision handed down by a criminal
judge and court declaring guilty a man who had been found at
home preparing a powdered soap that he would then pack in
plastic bags imitating the trademark FAB of the corporation
Colgate-Palmolive Corporation.184
In Colombia, whoever fraudulently uses “a trade name,
emblem, mark, label, drawing, or tag, or a patent or industrial,
commercial or agricultural model ‘legally protected’” may be
punished with imprisonment under Article 236 of the Criminal
Code. The lower court deemed that the fact that FAB was a wellknown trademark and its manufacturer a multinational company
182. Andean Court of Justice, Proceeding No. 30-IP-2004 (May 19, 2004), [2004] ACCJ
53.
183. Warner-Lambert Co. v. Laboratorios Lister S.A., Council of State, File 20020012701, September 9, 2004 (not yet published).
184. Supreme Court of Justice, Case No. 17.702, July 21, 2004.
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widely known in Colombia was sufficient for the mark to meet the
“legally protected” requirement. Consequently, the judge held that,
as the soap of Colgate-Palmolive was a primary commodity in
common and daily use, a whole community would be deceived if
the sale of forged products were allowed.
The Supreme Court, however, ruled that these reasons were
not sufficient to protect a trademark in Colombia. It stated that in
Colombia, as in the other countries of the Andean Community
(Venezuela, Ecuador, Peru and Bolivia), the protection afforded a
trademark, whether famous or not, derives from its registration,
which is the act that grants title in the trademark.185
The Supreme Court clarified that, even though the well-known
character of a mark translates into wide knowledge of the product
by consumers, well-known trademarks are to be protected against
unauthorized use in the Andean Community only if they have been
registered.186 It held, further, that the knowledge of a fact by a
judge does not constitute evidence of said fact, and the well-known
character of a trademark must be demonstrated with evidence.
Although experts in international law have criticized this
ruling because the Supreme Court of Justice did not request an
opinion from the Andean Court of Justice—which is mandatory in
proceedings referring to the validity of a trademark—the truth is
that there is a lesson to learn in this case: in the Andean
Community all trademarks must be registered.
COMMUNITY TRADEMARK
I.B.2. Merely Descriptive Terms
Streamserve,
Inc.
applied
to
register
the
mark
STREAMSERVE for goods in Classes 9 and 16, largely relating to
computing. The application was refused under Articles 7(1)(b) and
(c) of Council Regulation No. 40/94 on the grounds that the mark
was made up of two English words without any additional unusual
or innovative element, that it was descriptive of the intended use
of the goods concerned, in this case a technique for transferring
digital data from a server enabling them to be processed as a
steady and continuous stream.
The Second Board of Appeal upheld the refusal and the
applicant appealed to the Court of First Instance. The objection
was maintained and the application refused.
The Court stated that Article 7(1)(c) pursued an aim in the
public interest, namely that the signs and indications referred to
185. Commission of the Andean Community, Decision 486 (Common Intellectual
Property Regime), Article 134, September 14, 2000.
186. Commission of the Andean Community, Decision 486, Article 225.
Vol. 95 TMR
355
in that provision should not be reserved to one undertaking alone
by reason of their being registered as a mark, but can be freely
used by all. In the present case, the applicant’s goods were
targeted at average English-speaking consumers who used the
Internet and were interested in its audiovisual aspect. From the
viewpoint of the relevant public, there was a sufficiently direct and
specific relation between the sign and the goods for which
registration was sought.
The mark was made up of the noun, stream, and the verb,
serve, that were not unusual for the consumers concerned. The
word, streamserve, referred to a technique for transferring digital
data from a server. This technique did not merely constitute a field
in which the goods were applied, but rather one of their specific
functions.187
I.B.4. Geographical Names
Nordmilch eG applied to register the mark OLDENBURGER
for a range of goods in Classes 29, 30 and 32, many of which were
made with or contained milk. Objection was raised under Articles
7(1)(c) on the grounds that the term Oldenburg designated the
principal town of the region of Weser-Ems in the Land of
Niedersachsen and a town of the same name in the Land of
Schleswig-Holstein in Germany. Goods of the kind covered by the
application were manufactured in the district of Weser-Ems.
The applicant denied that the mark was composed,
exclusively, of an indication which, taken alone, designated or
could designate the geographical origin of the goods. It submitted
that the mark indicates a male personalized form or a male
inhabitant of the town of Oldenburg. The case law stemming from
the judgement in Windsurfing Chiemsee in joined Cases C-108/97
and C-109/97 was not relevant as the mark is OLDENBURGER
and not OLDENBURG.
OHIM considered that the adjectival form of a place name
clearly falls within the scope of Article 7(1)(c), which does not
prohibit the registrations of geographical names but rather the
registration of indications that may serve to designate
geographical origin. The applicant’s appeal to the Board of Appeal
was rejected and a further appeal was made to the Court of First
Instance.
The Court of First Instance upheld the objection and the
refusal of the application. The Office had rightly argued that the
other conceivable meanings were so absurd as to be unacceptable.
The word in question was commonly used in the sector for the
187. Streamserve, Inc. v. OHIM – Judgement of the Court of First Instance in Case C150/02P – 5 February 2004.
356
Vol. 95 TMR
goods concerned. The adjectival form was customary in German to
construct designations of origin or geographical indications.
With regard to the goods, such as fish, for which it had not
been established whether the geographical area evoked by the sign
is well known or not, it is reasonable to assume that those goods
will in the future be associated with the word in question in the
minds of the relevant persons.188
I.B.8.a. Similarity of Marks
Interquell GmbH applied to register a mark consisting of the
words HAPPY DOG and device elements for “foodstuffs for dogs.”
The application was opposed by SCA Nutrition Limited under
Article 8(1)(b) of Council Regulation No. 40/94 on the basis of the
similarity of the mark to the word mark HAPPIDOG and a
composite word and device mark, featuring the word HAPPIDOG
registered in the United Kingdom for foodstuffs for dogs.
The opposition was allowed and the applicant appealed. The
appeal was dismissed by the Second Board of Appeal referring to
the strong conceptual and visual similarities between the
conflicting marks. The applicant appealed to the Court of First
Instance submitting that, when used for foodstuffs for dogs, the
expression HAPPY DOG is descriptive in that it designates the
quality and intended use of those foodstuffs. The expression
indicates that the foodstuffs are composed in such a healthy and
tasty way that, after having eaten them, the dog will be in good
health and therefore happy. The applicant contended that the
opponent was only able to obtain registration of its word mark in
the United Kingdom by modifying the word HAPPY to HAPPI and
joining the terms so as to create a grammatically incorrect
expression. The applicant argued that the protection afforded to
such a mark is limited solely to cases of a likelihood of confusion
with identical signs.
The Court held that it was clear from Article 8(1)(b) that all
properly registered marks are protected not only in the case of
identity but also in the case of similarity between the earlier mark
and the sign claimed and between the goods or services concerned.
The marks at issue have the same conceptual content. As
regards the visual comparison, the word component HAPPY DOG
predominates in the applied for mark. Given the conceptual
similarity and the phonetic identity of the word elements, the
visual differences between the signs are incapable of ruling out a
likelihood of confusion on the part of the public.
188. Nordmilch eG v. OHIM – Judgement of the Court of First Instance in Case T295/01 – 15 October 2003.
Vol. 95 TMR
357
Even if the combination HAPPY DOG could be regarded as
descriptive when used in relation to dog food and, consequently,
the earlier word mark were to be regarded as being distinctive only
to a small degree, it must be understood that the factors relevant
to the assessment of the likelihood of confusion are
interdependent. The fact that the goods concerned are identical
and that there is a high degree of similarity between the marks is
sufficient for a finding that such a likelihood of confusion exists.
The applicant argued that, under Article 12 of Council
Regulation No. 40/94, the protection enjoyed by the earlier mark
did not prohibit use by competitors of descriptive terms such as
“happy dog.” Article 12 of Council Regulation No. 40/94 concerns
the limitations on the right conferred by a Community trademark
on its proprietor. Article 12 may be relied upon as a defense by an
alleged infringer. However, account cannot be taken of Article 12
during the procedure for registration of a mark because it does not,
as the applicant has argued, entitle third parties to use terms
designating the character or quality of the goods as a trademark
but merely ensures that they may use them in a descriptive
manner, in accordance with honest practices of the trade.189
I.B.19. Slogans
Fieldturf, Inc. applied to register the mark LOOKS LIKE
GRASS . . . FEELS LIKE GRASS . . . PLAYS LIKE GRASS for
synthetic surfacing for the playing of sports including soccer,
football and lacrosse and for services to install such surfacing. The
Examiner found the mark applied for was exclusively composed of
a very simple slogan devoid of any distinctive character and,
therefore, not capable of registration pursuant to Article 7(1)(b) of
Council Regulation No. 40/94. The rhetorical flourish, emphatic
sound and symmetrical form, which were claimed, were not
sufficient to confer any distinctiveness on the mark. The fact that
the mark was registered in the United States was not a sufficient
reason to conclude that the mark was distinctive.
The Board of Appeal maintained the refusal. The applicant
appealed to the Court of First Instance. The applicant argued that
the mark applied for had a vague, multiple meaning. PLAYS LIKE
GRASS, in particular, was not a common construction and
suggested something that plays in the same way that grass plays.
The Court rejected the appeal. Registration of a mark,
consisting of signs or indications that are also used as advertising
slogans, indications of quality or incitements to purchase the goods
or services is not excluded as such by virtue of such use. However,
189. Interquell GmbH v. OHIM – Judgement of the Court of First Instance in Case T20/02 – 31 March 2004.
358
Vol. 95 TMR
an advertising slogan is only registrable if it may be perceived
immediately as an indication of the commercial origin of the goods
or services in question.
The mark suggested the following clear and direct meaning:
“Has the same appearance as grass . . . [p]roduces the same
sensation as grass . . . [i]s as suitable for playing on as grass.” The
mark, therefore, directly informs the relevant public that the goods
applied for have qualities similar to those of natural grass.
The mark was found to have no particular rhetorical flourish,
poetic character or rhythm. Even if the mark had been found to
produce such effects, they would be very diffuse and would not
induce the relevant consumer to see in the mark anything other
than a promotional formula applicable to synthetic surfaces in
general and not therefore capable of designating the origin of those
goods.190
COSTA RICA
I.B.2. Merely Descriptive Terms
The trademark PURO CUERO (Spanish for PURE LEATHER)
in Class 20 in the name of PURO CUERO S.A. was denied
registration on the ground that it was merely a descriptive term
for the goods (mainly home and office furniture) intended to be
distinguished by the trademark.191
The trademark FROSTED NUTS & Design in Class 29 was
denied registration on the ground of its being descriptive of the
products it was intended to protect. The resolution was appealed
and was confirmed by the Tribunal.192
I.B.8.a. Similarity of Marks
Laboratorio Maver of Chile filed for the trademark BBDENT
in Class 5. The filing was opposed by Dentinox Gesellschaft für
pharmazeutische Präparate Lenk & Schuppan on the basis of the
previous registration of the trademark NENEDENT in Class 5.
Because of the phonetic similarity of the trademarks and the fact
that both were intended to protect Class 5 products, the Tribunal
found that the similarity was evident and could lead to the
190. Fieldturf Inc. v. OHIM – Judgement of the Court of First Instance against the
decision of the First Board of Appeal on 31 March 2004 in Case T-216/02.
191. Tribunal Superior Contencioso Section 3, Resolution No. 387-2003, San Jose, Costa
Rica, December 18, 2003.
192. Tribunal Superior Contencioso Section 3, Resolution No. 388-2003, San Jose, Costa
Rica, December 18, 2003.
Vol. 95 TMR
359
confusion of consumers. Registration of BBDENT was, therefore,
denied.193
The trademark EVAX in the name of Fustery S.A. in Class 5
was denied registration by the Costa Rica Trademark Office based
on the previous registration of IVAX in the same class. On appeal,
the Tribunal found that the similarity was enough to confuse the
public, and confirmed the resolution.194
In the matter of the filed trademark QUESIFRITOS in the
name of Alimentos S.A. and the opposing registered trademark
FRITOS in the name of Pepsico, Inc., it was evident that there was
a complete reproduction of the registered trademark FRITOS, even
though there were other elements in the filed trademark, such as
the words “delicious,” “tasty,” etc., and other graphic elements. The
placement and size of the main word, QUESIFRITOS, were
enough evidence for the Tribunal to conclude that the central part
of the filed trademark was that word and no other; when, in
addition, the similarities in color between the two trademarks
were considered, there was likelihood of confusion. Therefore,
registration was denied.195
I.B.9.a. No Similarity of Marks
Between the filed trademark BI DEXATON in the name of
Fide S.A. and the opposing registered trademark DEXA
NEUROBION in the name of Merck A.G., both in Class 5, there
were enough different elements that would not allow confusion of
the trademarks.196
Between the filed trademark ROCK ICE & Design in the name
of Florida Ice and Farm S.A. and the opposing registered
trademark COLD FILTERED ICE DRAFT BEER BUDWEISER
and design in the name of Anheuser Busch Inc., there was no
possibility of confusion. The Tribunal ruled that although both
marks protect the same kind of products, there were enough
elements to distinguish them properly, and they could coexist.197
193. Tribunal Superior Contencioso Section 3, Resolution No. 383-2003, San Jose, Costa
Rica, December 18, 2003.
194. Tribunal Superior Contencioso Section 3, Resolution No. 386-2003, San Jose, Costa
Rica, December 18, 2003.
195. Tribunal Superior Contencioso Section 3, Resolution No. 71-2004, San Jose, Costa
Rica, March 26, 2004.
196. Tribunal Superior Contencioso Section 3, Resolution No. 202-2004, San Jose, Costa
Rica, July 8, 2004.
197. Tribunal Superior Contencioso Section 3, Resolution No. 135-2004, San Jose, Costa
Rica, May 21, 2004.
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Between the filed trademark DEXEL in the name of Fide S.A.
and the opposing registered trademark DUXIL in the name of
BIOFORMA of France, not only for pharmaceutical products but
for very different areas, one pediatric and the other cardiovascular
purposes, the marks could be easily distinguished and could
coexist.198
Between the filed trademark X.ACTO & Design in the name of
Pruebas Modernas S.A. and the opposing registered trademark
ACTO in the name of Takeda Chemical Industries Ltd., both in
Class 5, there were enough differences for the marks to coexist.199
Between the filed trademark NOVASIL in the name of Global
Farma S.A. and the opposing registered trademark NOVARTIS,
both in Class 5, the differences were enough to allow
coexistence.200
CZECH REPUBLIC
I.B.8.a. Similarity of Marks
An application for registration of the denomination BARBRA
(combined) was refused on the basis of an opposition filed by the
owner of the older trademark registration BARBIE.
The Czech Office of Industrial Property (the “Office”) in its
decision stated that the denomination BARBRA is confusingly
similar to the trademark BARBIE from the visual, phonetic and
semantic points of view. The Office was of the opinion that the
combination of letters B-A-R-B represents the dominant part of
both compared denominations. Thus, the fact that the initial four
letters of the denominations BARBIE and BARBRA are identical
results in confusing similarity from the visual and phonetic
perspectives. In the opinion of the Office, the fact that the last two
letters of the compared denominations were different was not
sufficient to minimize potential confusion of similar products
bearing these marks. Finally, the Office stated that both
denominations derived from the female name, Barbara, and thus
198. Tribunal Superior Contencioso Section 3, Resolution No. 134-2004, San Jose, Costa
Rica, May 21, 2004.
199. Tribunal Superior Contencioso Section 3, Resolution No. 109-2004, San Jose, Costa
Rica, April 30, 2004.
200. Tribunal Superior Contencioso Section 3, Resolution No. 4-2004, San Jose, Costa
Rica, January 16, 2004.
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361
they can also be seen as being confusingly similar from a semantic
point of view.201
An application for registration of the denomination PUMS
(combined) was refused on the basis of an opposition filed by the
owner of the older trademark registration PAMPERS (combined).
The contested denomination PUMS:
The trademark Pampers:
In its decision, the Czech Industrial Property Office stated
that it is obvious that the word elements PUMS and PAMPERS
are different as regards visual and phonetic similarity and that the
graphic elements used in the compared denominations are not
identical. However, the contested denomination PUMS used
graphic elements that were organized into a similar overall
composition and were similar in the technique of their design and
symbolism to those used on the PAMPERS trademark. The word
PUMS uses the first, middle and last consonants of the word
PAMPERS and, in spite of the use of a different vowel, it could be
seen as an abbreviation.
201. Decision of the Office of Industrial Property No. O-183760 / October 15, 2003.
362
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The Czech Industrial Property Office concluded that the
contested denomination PUMS was confusingly similar to the
trademark registration for PAMPERS because the symbolic
meaning created by the compared denominations evokes a similar
impression. Therefore, consumers could presume that it is another
trademark with an abbreviated word element that belongs to a
chain of trademarks of the same entrepreneur.202
I.B.12. Famous Marks
An Appeals Panel of the Czech Office of Industrial Property
upheld a first instance decision that refused registration of the
trademark BCBG on the basis of an opposition filed by the holder
of non-Czech registrations for the denomination BCBG who
claimed that its trademark was well known under Article 6bis of
the Paris Convention.
The Appeals Panel stated that the opposing party’s BCBG
trademarks should be considered well-known trademarks despite
the fact that knowledge of the trademarks among general
consumers was limited because they were used for luxury goods.
The Appeals Panel stated that it is important to examine the wellknown character of a trademark from the point of view of the
relevant consumers. In this case, the relevant group would be
consumers of luxury clothing and individuals involved in fashion
and the fashion industry.
Additionally, the Office recognized evidence of fame in the
form of advertisements and articles in non-Czech language
editions of fashion magazines such as ELLE, HARPER’S BAZAAR,
MARIE CLAIRE, VOGUE, together with articles and
advertisements appearing on the Internet, satellite and cable
television. The fact that these are available on the Czech market,
even in limited numbers, was sufficient to establish the fame of the
BCBG trademarks, taking into consideration that the relevant
consumer group for luxury fashion products is narrower than that
for products of everyday use.203
III.G. Post-Registration Evidence of
Use and Renewals
The petitioner sought to cancel the trademark KINDER
SOFTY on the ground that the trademark had not been used in the
Czech Republic for at least five years before institution of the
proceedings for its cancellation.
202. No. O-170912, Decision of the Office of Industrial Property (published April 1,
2003).
203. Decision of the Office of Industrial Property No. O-175740 / July 23, 2003.
Vol. 95 TMR
363
The owner of the trademark argued in response to the
cancellation action that products bearing the KINDER SOFTY
trademark were commonly distributed in the Czech Republic
through a related Czech company. This statement was supported
by evidence in the form of invoices issued in the relevant period,
photographs of the products bearing the trademark and a copy of
an agreement on authorized use between the owner of the
trademark and the related Czech company.
The Office rejected the petition for cancellation, stating that
under the Trademark Act a trademark may be cancelled on the
ground of nonuse only when the Office properly determines that
the trademark has not been used in the Czech Republic for at least
five years before institution of the cancellation action and if the
owner of the trademark does not properly explain the failure to use
the trademark at issue. The Office concluded that use of a
trademark by a third party with the owner’s consent will be
considered as proper use even if the agreement is not a registered
license agreement. The Office stated that the aim of the nonuse
cancellation provision is to prevent accumulation in the
Trademark Registry of trademarks that are not actually used by
their owners and thus prevent other entrepreneurs from
registration and use of such trademarks. A petition for cancellation
can be successful only when there is a total lack of interest of the
trademark owner to use the trademark.
The Office found from the submitted evidence that it was
obvious that an agreement for use of the subject trademark existed
and it was clear from the evidence that the trademark was used in
the territory of the Czech Republic during the relevant period. The
Office confirmed its existing practice of recognizing as valid use of
a trademark its use on documents, in this case on invoices issued
in connection with sales of the products covered by the list of goods
of the contested trademark.204
V.A. Domain Names
The petitioner sought a judgment by which the City Court of
Prague would order Mr. X. to desist from any manipulation and
use of the domain names bonaqua.cz, cappy.cz and kinley.cz, to
provide the petitioner with appropriate damages and
reimbursement of costs of proceedings and further to oblige the
Czech Domain Name Register to transfer the ownership of the
second level domain names bonaqua.cz, cappy.cz and kinley.cz to
the petitioner.
The Court concluded that Mr. X. was engaged in the activity of
registering various second level domain names and then seeking to
204. Decision of the Office of Industrial Property No. O-194713 / February 25, 2004.
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sell those domain names to individuals who might be interested in
owning them. This conclusion was supported by a partial list of
domains owned by Mr. X., submitted by the Czech Domain Name
Register, including 3,307 domains registered by Mr. X. from
August 29, 2003, through September 7, 2003.
The Court determined that all three denominations forming
the basis of the subject domain names could be considered as wellknown trademarks. The Court stated that the registration of the
subject domain names by Mr. X. prevented the registration or use
of the same domain names by the parties entitled to them. As a
result, the Czech Trademark Act was violated because the
registration itself, which consists of a trademark that is the
dominant part of the domain name, effectively prevents the owner
of a trademark that is the dominant part of the domain name from
full and unhindered use of such trademark. The Court came to the
conclusion that with regard to the wide range of activities of Mr.
X., as far as domain names are concerned, it is necessary to
consider the mere registration of the subject domain names that
were identical to the petitioner’s trademarks as actual use of the
domain names. In addition, the Court concluded that while this
conduct is not illegal per se, the defendant must take into account
that he is liable for his conduct, if such registrations interfere with
legal rights of third parties. The fact that Mr. X. does not operate
any webpages under the domain names bonaqua.cz, cappy.cz and
kinley.cz does not protect him because the reality is that an
Internet visitor who cannot find anything under these addresses
might reach the conclusion that the petitioner does not care about
proper presentation of its products or is not able to offer such
presentation.
In connection with the above stated findings, the Court
concluded that the conduct of Mr. X. fulfills the elements of the
general definition of unfair competition under Section 44 of the
Czech Commercial Code, namely conduct in economic competition
that may be detrimental to other competitors. The Court stated
that such conduct conflicts with the accepted practices of
competition because there is no relevant reason why Mr. X. should
have registered the subject domain names that he does not use and
that the domain names include denominations of well-known
products, of which Mr. X. must have been aware.
Mr. X. was ordered by the Court to desist from manipulation
and use of the domain names bonaqua.cz, cappy.cz, and kinley.cz
and to pay damages and court costs to the petitioner. The Czech
Domain Name Register was ordered to transfer the ownership of
the mentioned domain names to the petitioner.205
205. City Court of Prague, decision of September 9, 2003 / Unpublished.
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365
DENMARK
I.B.7.b. Three-Dimensional Marks
Two cases show that it is difficult to obtain trade dress
protection for the shape of the good itself and for nondistinctive
packaging. In the first case, plaintiff filed for registration of a
three-dimensional trademark (device mark) of three French press
coffee makers. The Danish Patent and Trademark Office rejected
the applications for lack of distinctiveness, holding that the
trademarks were merely a depiction of the coffee pots. Plaintiff
filed evidence that the marks had acquired secondary meaning due
to sales that spanned over 25 years. Even though the coffee pots
had been marketed for such a long time, the PTO did not find that
the coffee pots had acquired distinctiveness in that the marks were
mere reproductions of the goods themselves. Plaintiff appealed the
decision to the Danish Board of Patent and Trademark Appeals,
but the Board affirmed the decision, holding that neither the coffee
pots themselves nor the details of the coffee pots could function as
a trademark. Plaintiff appealed further to the Maritime and
Commercial Court of Copenhagen. The court affirmed, stating that
the coffee pots do not have such a distinctiveness that the
plaintiff’s coffee pots can distinguish themselves from competing
coffee pots. The court stated that due to the fact that trademark
protection grants exclusive rights not only over identical marks
but also over similar marks, there is a reluctance to grant
trademark protection to the good itself unless special
circumstances exist. Such special circumstances did not exist in
this case, in part because the documentation did not support a
finding of acquired secondary meaning, in part because the coffee
pots were marketed under a word mark (BODUM) and not by the
shape of the coffee pots alone.206
The second case involved the Danish chapter of Société des
Produits Nestlé S.A. (Nestlé) and its trademark SMARTIES/ Mars,
Inc.’s M&M MINIS tube packaging litigation. Nestlé had sold
SMARTIES chocolate candies in paper tubes for over 50 years in
Denmark. An application for registration of a 13cm by 2cm tube
was originally rejected for lack of distinctiveness, but Nestlé had
gotten this provisionally registered by documenting that the tube
had acquired secondary meaning. Mars, Inc.’s Danish subsidiary
Master Foods A/S lodged an opposition against the final
registration of this tube and commenced selling M&M MINIS in a
10cm by 3cm plastic tube. Nestlé sought an injunction and
206. PI Design AG v. Danish Board of Patent and Trademark Appeals, Ugeskrift for
Retsvaesen 2003.2166S.
366
Vol. 95 TMR
damages. Master Foods A/S counterclaimed with a demand that
the provisional registration be removed from the Trademark
Register. Both the Maritime and Commercial Court of Copenhagen
and the Danish Supreme Court held that the undecorated
cylindrical cardboard container lacked characteristic elements and
therefore had to be considered as a common shape. Upholding
Nestlé’s trademark would give Nestlé a monopoly to use a common
container when selling candy. The Danish Supreme Court held
that Nestlé’s paper tube could not acquire distinctiveness to
achieve trademark protection for this common, basic shape. Both
the Maritime and Commercial Court and the Supreme Court gave
judgment in favour of Master Foods and, as consequence of the
judgment Nestlé’s trademark was removed from the Trademark
Register.207
III.A.2.b. Similarity of Marks
Even marks made up of a single letter and a single numeral
can enjoy extensive rights in Denmark. For many years, plaintiff,
the main public service radio station, had called its four
nationwide radio channels P1, P2, P3 and P4, the “P” being an
abbreviation of “Program.” Furthermore, plaintiff had registered
P1, P2, P3, P4, P5, P6, P7 and P8 as trademarks.208 Defendant
launched a new radio channel in Denmark under the name SKY
RADIO P5. Plaintiff sought to enjoin the use in that the services
were identical and the marks were similar. Defendant claimed
that P5 was the commonly known name for the new, fifth,
nationwide radio channel in Denmark. Plaintiff secured a
temporary injunction and defendant appealed. The Court of
Appeals for the Eastern District found that there was no evidence
to support a claim that P5 was commonly known except for
defendant’s own homepage and interviews in the newspapers.
Furthermore, the evidence could not support claims that plaintiff
had not prosecuted violations of its trademark rights in P5.
Therefore, the court did not find P5 to be generic and accordingly
affirmed the temporary injunction.209
III.A.10. Nonuse of Trademark
Use of a registered mark together with the house mark can
still be “genuine use.” If a trademark has not been put to “genuine
207. Société des Produits Nestlé S.A. v. Master Foods A/S, Ugeskrift for Retsvaesen
2003.2400 H.
208. The latter four expressly as a result of the OHIM Board of Appeal decision of March
11, 1998, in Case R 4/1998-2 concerning the trademark IX, which held that even two-letter
marks could possess the requisite distinctiveness for registration.
209. Sky Radio A/S v. DR , Ugeskrift for Retsvaesen 2004.1673 Ø.
Vol. 95 TMR
367
use” for a period of five years, the trademark registration can be
removed from the Danish Trademark Register. As part of the suit
involving Deutche Bank AG v. Din Bank A/S, defendant sought to
remove plaintiff’s registration due to nonuse on the ground that
plaintiff almost never used the BANK24 mark alone as registered,
but only in conjunction with plaintiff’s house mark, i.e., as
DEUTSCHE BANK24. The Maritime and Commercial Court of
Copenhagen held that use of the trademark together with the
house mark satisfied the use requirements and rejected
defendant’s claim of nonuse.210
III.A.11.a. No Similarity of Marks
Device marks containing descriptive elements can be
graphically similar but not necessarily confusingly similar.
Plaintiff Deutsche Bank AG and defendant Din Bank A/S had both
registered device marks comprised of the word Bank followed by
the number 24. Both were written with lower-case letters, and
there was a circular element around the 24. Defendant’s mark also
contained the Danish domain name suffix .dk. Both marks were
used for Internet banking services open 24 hours a day. Plaintiff
asserted word mark protection based on use. The Maritime and
Commercial Court of Copenhagen, however, held that BANK24
was a weak word mark, and therefore received only a narrow
judicial protection. Further, it held that the trademark lacked
distinctiveness. Plaintiff, a German bank, had only a few thousand
customers in Denmark, and had not used the trademark in such a
way that the trademark had obtained distinctiveness by
establishment. In spite of certain similarities, the two device
trademarks were not considered to be confusingly similar because
the weighing of the mark elements did not result in sufficient
similarities. The court found no basis to infer that the defendant
had been aware of the plaintiff’s use of the mark in Germany and
thus found no infringement of the unfair competition legislation.211
III.A.11.b. No Similarity of Goods/Services
In determining similarity of services, weight is given to the
purchasers of the services, and not the users. Plaintiff’s trademark
MEDICON was registered for a broad list of health care-related
services in Class 42 and used for performing clinical tests for the
pharmaceutical industry and research hospitals. Defendant’s
trademark MEDICONNECT was in use for an Internet-based
communications system for county health care providers to get in
210. See also III.A.11.a. No Similarity of Marks for additional discussion of this case.
211. Deutsche Bank AG v. Din Bank A/S, Ugeskrift for Retsvaesen 2004.2774S.
368
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touch with specialist doctors. Plaintiff sought to enjoin defendant’s
use of MEDICONNECT. The Maritime and Commercial Court of
Copenhagen held, firstly, that there was similarity between the
marks, despite the fact that the mark elements were weak and
there were phonetic differences. It stated that if MEDICON and
MEDICONNECT were used for the same services or goods,
MEDICON could stop the use of MEDICONNECT. However, the
court found that the services were not similar. Even though
specialist doctors used both MEDICON and MEDICONNECT, the
purchasers of the services were different. MEDICON was
purchased by the pharmaceutical industry, while MEDICONNECT
was purchased by the county social service departments. The
services, albeit both health related, were clearly distinct in the
marketplace. Consequently, because there was no risk of
confusion,
MEDICON
could
not
enjoin
the
use
of
MEDICONNECT.212
V.A. Domain Names
The Danish Supreme Court has issued its first ruling relating
to domain name registration. The Court affirmed a lower court’s
ruling that the passive registration of a domain name is
commercial “use” that infringes the Danish unfair competition
legislation because it blocks the plaintiff from using the domain
name. Plaintiff is a leading toy distributor in Scandinavia, and its
BR retail stores are well known in Denmark. It is the registered
owner of the BR trademark. Defendant, a website development
company, registered the domain name br.dk in 1998 but never
used it, maintaining that it had registered the domain name for a
third party and was holding it for use in relation to another
project. Plaintiff brought a complaint before the Maritime and
Commercial Court of Copenhagen, claiming that the domain name
registration infringed its rights. It pointed out that defendant had
also registered xerox.dk at about the same time and had been
forced to relinquish this domain name by court order. A material
segment of the population would search for plaintiff at br.dk and
discover that the site was not in use, thereby causing damage to
plaintiff. Passive registration (i.e., registration without use) is a
commercial use in contravention of the Danish unfair competition
legislation. On appeal, the Danish Supreme Court affirmed the
decision. The Court noted that the fact that defendant had
registered and had been forced to surrender xerox.dk was relevant
evidence; it reasoned that defendant had registered br.dk for the
212. Medicon A/S v. Mediconnect, Ugeskrift for Retsvaesen 2004.610 S.
Vol. 95 TMR
369
purpose of selling it to plaintiff in contravention of Section 1 of the
Marketing Practices Act.213
Registered trademark rights, in particular the five-year grace
period in the use requirement, were decisive in a domain name
case concerning an accidentally non-renewed domain name.
Complainant Createam A/S, an advertising agency, registered the
trademark CREATEAM in 1972. Following a merger, the
complainant ceased use of the CREATEAM mark in 2000 and
began trading under the name MANTRA. Complainant had made
use of the domain name createam.dk, which, following the merger,
redirected Internet users to the MANTRA website. However,
complainant failed to notify the domain name registrar of the
change in its contact details, and its createam.dk registration was
cancelled for lack of payment of the renewal fee. In January 2003,
the domain name was registered by the respondent, CreaTeam,
who started using it for a competing advertising agency.
Complainant argued that the disputed domain name infringed its
rights in the registered CREATEAM trademark. The Danish
Complaints Board for Domain Names upheld the complaint and
ordered the domain name transferred to the complainant. The
Board stated that because complainant had last used its mark as
late as the year 2000, the trademark registration was still
enforceable because registered marks benefit from a nonuse
protection period lasting five years. Thus, the domain name was
transferred to the complainant, even though the complainant no
longer used the trademark and had not done so for about three and
a half years.214
Distributors and in particular ex-distributors have no rights to
Danish domain names corresponding to the trademark of the
distributed
products.
Complainant,
a
Dutch
company,
manufactures tanning equipment and related products under the
marks ALISUN, ALLURA, AMBIANCE and SUNVISION.
However, only SUNVISION was registered as a trademark in
Denmark. Respondent was complainant’s general distributor in
Denmark for 16 years, and had registered the domain names
alisun.dk, allura.dk, ambiance.dk and sunvision.dk. The domain
names were used to redirect Internet users to respondent’s own
website. Complainant terminated the distribution agreement with
respondent and set up its own Danish subsidiary. Respondent
refused complainant’s request to transfer the four domain names,
213. Top-Toy A/S v. Icom Data ApS, Ugeskrift for Retsvaesen 2004.1561 H.
214. Createam A/S v. CreaTeam, DIFO Complaints Board for Domain Names decision of
January 23, 2004, in Case No. 371, published at http://www.domaeneklager.dk/.
370
Vol. 95 TMR
citing, among other things, its need to use them for continuing to
service the tanning equipment that had been sold under the
distribution agreement, and the fact that their use was sanctioned
by the “spare parts” and exhaustion rules in Sections 5 and 6 of the
Danish Trademark Act. The Danish Complaints Board for Domain
Names found, firstly, that complainant held common-law rights in
the three unregistered trademarks as a result of its use of the
marks. The Board then cited the European Court of Justice’s
decision in BMW v. Deenik215 and held that the “spare parts” and
exhaustion restrictions do not permit use of the trademark in a
way that gives the impression that there is a commercial
relationship between the distributor and the trademark owner. In
this case, the use of the domain names identical to the trademarks
gave the misleading impression that the use was authorized by the
trademark owner, which was no longer the case after the
expiration of the distributorship agreement. Accordingly, the
Board ordered the transfer of alisun.dk, allura.dk, ambiance.dk
and sunvision.dk to the complainant from its former distribution
agent.216
Similarly, the Board has ordered the transfer of the domain
name bmwimport.dk after finding that its registration by the
importer of used BMW cars breached the Danish Trademarks Act
and Marketing Practices Act. Complainant is the authorized
Danish distributor of the well-known BMW trademark.
Respondent registered bmwimport.dk as a portal directing
Internet users to its website, hosted under the domain name
autoformidleren.dk. The website’s homepage displayed, among
other things, the picture of a BMW car and the text “BMW special
import and styling.” Complainant sought transfer of the domain
name bmwimport.dk on the grounds that it has exclusive rights to
the BMW mark in Denmark under the terms of its dealership
agreement and the domain name was confusingly similar to the
corporate name of its subsidiary BMW Import A/S.
The Board found that BMW is a well-known mark and that
BMW was the dominant element of the domain name at issue.
Further, the domain name was identical to the corporate name of
complainant’s subsidiary. Accordingly, the Board found that the
215. ECJ Case C-63/97 [1999] ECR I-905.
216. Mercuria Beheer BV v. Dan-Sun Europe ApS, Case Nos. 334-37, DIFO Complaints
Board for Domain Names decision of December 15, 2003, published at
http://www.domaeneklager.dk/.
Vol. 95 TMR
371
registration of bmwimport.dk breached Section 4 of the
Trademarks Act and Section 5 of the Marketing Practices Act.217
ECUADOR
I.B.11.a. Copyright Protection
Ecuadorian legislation regarding copyright matters is based
on Decision 351 of the Cartagena Agreement Commission
(Common Regime on Copyrights and Related Rights) and the
Intellectual Property Law of May 19, 1998. Through those
instruments, the Ecuadorian State has established that authors
and other rights holders of works of talent involving literature,
arts or science, regardless of genre or means of expression, and
regardless of their merit, will have appropriate and effective
protection over their works. Specifically, the Intellectual Property
Law establishes mechanisms for inspecting, overseeing and
penalizing administratively and judicially anyone who infringes
those rights and, consequently, for preventing and curbing any
violations of the holders’ intellectual property rights.
Based on the foregoing, in 2002 Mr. Joao Scognamiglio
brought an action for administrative guardianship218 before the
Ecuadorian administrative authorities against Sociedade
Brasileira de Defensa da Tradiçao Familia e Propiedade. Mr.
Scognamiglio, a Brazilian national, is the author of several works
of art of a religious content registered in Brazil, Ecuador and other
countries. Among those works are “Design for the Cross of
Santiago” and “Ceremonial Attire or Vestments.” The respondent
company, not being one of those expressly authorized by the rights
holder, obtained registration in Ecuador of the mark DISEÑO DE
TRAJE DE GALA that includes a design identical to the one being
protected by Mr. Scognamiglio’s copyright in Ecuador.
Mr. Scognamiglio brought an action for administrative
guardianship to prohibit the rights derived from the registration of
the mark from being used to preclude the licensee of copyrights in
Ecuador from his legitimate enjoyment of copyright protection.
Parallel to this, the corresponding actions were brought to obtain
nullity of the registration of the mark unduly granted.
Sociedade Brasileira de Defensa da Tradiçao Familia e
Propiedade focused its defense on the rights acquired through
registration of the mark DISEÑO DE TRAJE DE GALA219 and on
217. NIC Christiansen Gruppen v. Autoformidleren, Case No. 310, DIFO Complaints
Board
for
Domain
Names
decision
of
June
3,
2003,
published
at
http://www.domaeneklager.dk/.
218. Copyrights Office docket No. 013-02 dated August 2, 2002.
219. Industrial Property Office docket No. 5361-02.
372
Vol. 95 TMR
certain evidence of use of the disputed mark. Nonetheless, the
resolution from the administrative authority (December 23, 2002)
held that a copyright is independent, compatible and cumulative—
among other aspects—with any industrial property rights that
might exist on the work. Therefore, in cases like this one where
different rights holders with diverging interests exist for the same
creation (one on the figurative work as a mark and the other on
the same work by reason of copyright), it is necessary to resort to
proof of the work’s pre-existence based on prior filings by Mr.
Scognamiglio as its author. Because a copyright is an absolute
right and because there is no evidence proving fully and
convincingly that Mr. Scognamiglio is not the author, his legal
entitlement was presumed and, therefore, by virtue of his right on
the mark, it was resolved to prevent Sociedade Brasileira de
Defensa da Tradiçao Familia e Propiedade from exercising any
actions that might interfere with Mr. Scognamiglio’s copyright and
on the rights of the entities authorized by him.
The resolution confirmed the copyright alleged by Mr.
Scognamiglio on his works and, therefore, Mr. Scognamiglio is
legitimately protected for the free exercise of his copyright.
However, the action of nullity220 against registration of the mark
DISEÑO DE TRAJE DE GALA by Sociedade Brasileira de Defensa
da Tradiçao Familia e Propiedade is still pending resolution.
Hence, until a definitive pronouncement from the competent
authority is issued, both rights coexist.
III.A.2.b. Similarity of Marks
An action for administrative guardianship is a process filed
with the Ecuadorian Intellectual Property Institute (IEPI) to
determine the existence of an infringement against an industrial
property right and to prevent its continuation. IEPI is empowered
to inspect such occurrence and to penalize it with preventive and
definitive actions, such as physical seizure of goods, removal of
signs and imposition of fines.
The mark KIDDIE is registered in Ecuador according to
certificates Nos. 2378-98 and 2379-98 to protect a large number of
products comprised in International Classes 1 and 9.
The owner of the mark filed an action221 for administrative
guardianship against Carburos y Herramientas Carher Compañia
Limitada on the ground that the latter was selling fire
extinguishers manufactured in China and identified with the mark
KIDDY. Since the name was extremely similar to the trademark
KIDDIE and was used to identify identical products, the plaintiff
220. Intellectual Property Committee docket No. 02-194 RVM dated August 29, 2002.
221. Industrial Property Office docket No. 217-2003-JPM.
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held that it necessarily created confusion and association in the
market, dilution of the protected mark’s distinctive character, as
well as damages.
The action was based on Article 155 of Andean Community
Decision No. 486. This article states that registration of a mark
gives its holder the right to prevent third parties from conducting
the following acts without the holder’s consent:
(a) To put or place the mark or an identical or similar
distinctive sign on products for which the mark has been
registered, on products relating to the services for which it has
been registered, or on the containers, wrappings, packages or
packing crates of such products.
(d) To use in commerce a sign identical or similar to the
mark with respect to any products or services if such usage
could bring about confusion or a risk of association with the
holder of the registration. In the case of an identical sign used
for identical products or services, the risk of confusion is to be
presumed.
(e) To manufacture labels, containers, wrappings,
packaging or other materials reproducing or bearing the mark,
as well as to market or to unlawfully keep those materials.
In the documents submitted for its defense as well as in the
letter to the holder of the mark, the defendant repeatedly admitted
that he sold KIDDY fire extinguishers but that he believed this not
to violate any rights due to several considerations that were not
even analyzed by the authority. One of these was that the
extinguishers did not bear the infringing mark.
According to Resolution No. 982146 dated July 21, 2003, from
the National Industrial Property Director, and confirmed with the
resolution issued by the Committee on Intellectual and Industrial
Property and Plant Varieties on July 29, 2004, the action for
administrative guardianship was admitted, and it was ordered to
definitively seize all inventory boxes bearing the mark KIDDY,
while releasing the products (fire extinguishers) because they did
not bear the mark.
EL SALVADOR
I.A.2. Assignments
In April 1995, the Uruguayan company Sidela S.A. filed an
application to register POXIPOL & Design to protect goods in
International Class 1. The Intellectual Property Department
denied the registration because the word mark POXIPOL had been
registered in the name of Akapol S.A.C.I.F.I. & Agropecuaria in
1980. On appeal, the National Bureau of Registries revoked the
Intellectual Property Department’s denial of registration, noting
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that the word mark had been assigned by Akapol to Sidela after
the date of the denial resolution.222
I.B.1. Generic Names
E.I. Du Pont de Nemours and Company filed an application to
register TEFLON to protect goods in International Class 21. The
Intellectual Property Department denied registration based on the
fact that the word TEFLON is considered a term of general use to
identify a very resistant material that covers the surface of cooking
devices. A registration certificate from Great Britain and Ireland,
plus a list of countries where the mark is registered, were used as
evidence, but the National Bureau of Registries, on appeal,
confirmed the denial by the Intellectual Property Department,
establishing that the word TEFLON appears in several Spanish
dictionaries as the common name of a special material used to
cover the surface of cooking utensils and implements.223
I.B.8.a. Similarity of Marks
The Spanish company Laboratorios Menarini S.A. opposed the
registration of KELAFER filed by the Guatemalan company
Laboratorio y Droguería Donovan Werke A.G.S.A. to protect
pharmaceuticals in International Class 5. On appeal, the National
Bureau of Registries confirmed the admission of the opposition by
the Intellectual Property Department because of the similarity of
KELAFER and MENAFER, a mark previously filed by the Spanish
company.224
I.B.9.a. No Similarity of Marks
Laboratorios Rowe C. por A., a Dominican company, filed an
application to register VIRIDIL for pharmaceutical products in
International Class 5. The Intellectual Property Department
denied registration owing to the similarity of the mark to
HYBRIDIL, previously registered by Boehringer Mannheim
GmbH. On appeal, however, the National Bureau of Registries
revoked the denial of registration, finding no similarity between
VIRIDIL and HYBRIDIL.225
222. National Bureau of Registries, Resolution dated October 30, 2003. Certification to
Intellectual Property Department (Registry of Commerce) dated November 19, 2003.
223. National Bureau of Registries, Resolution dated December 15, 2003. Certification to
Intellectual Property Department (Registry of Commerce) dated January 14, 2004.
224. National Bureau of Registries, Resolution dated April 29, 2004. Certification to
Intellectual Property Department (Registry of Commerce) dated May 14, 2004.
225. National Bureau of Registries, Resolution dated March 31, 2004. Certification to
Intellectual Property Department (Registry of Commerce) dated May 5, 2004.
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I.B.12. Famous Marks
The Colombian company Ladecol, S.A. filed an application to
register PROTEX to protect goods in International Class 17.
Colgate-Palmolive Company opposed the registration based on the
fact that PROTEX is a famous and notorious mark worldwide for
products in International Class 3. Registration certificates of the
mark from many countries and advertisements were introduced as
evidence to prove notoriety. The Intellectual Property Department
denied the opposition because Ladecol, S.A. limited the products to
industrial gloves. The National Bureau of Registries, on appeal,
revoked the denial of the opposition, finding that PROTEX was a
famous and notorious mark in El Salvador and that another,
identical mark for different products would cause confusion among
consumers as to the trademark’s origin.226
I.B.22. Distinctiveness
Société des Produits Nestlé S.A. filed an application to register
the slogan LA PASION POR EL CHOCOLATE (Spanish for THE
PASSION FOR CHOCOLATE) to attract the attention of
consumers to all its chocolate products. On appeal, the National
Bureau of Registries confirmed the Intellectual Property
Department’s denial of registration of the slogan for lack of
distinctiveness.227
III.H.2. Amendments to Registrations
The Swiss company Omega S.A. registered the trademark
OMEGA to protect goods in International Class 14. The domicile
on the certificate was Berne, Switzerland, instead of Bienne,
Switzerland, and the Intellectual Property Department denied the
certificate amendment because of the fact that it was not the
Department’s mistake and that an amendment could be made only
to the trademark or the products. The National Bureau of
Registries, on appeal, revoked the denial of amendment of the
certificate of the Intellectual Property Department because the
power of attorney document had the domicile of Bienne,
Switzerland, and a correct interpretation of the local law admits
amendments to the domicile.228
226. National Bureau of Registries, Resolution dated January 6, 2004. Certification to
Intellectual Property Department (Registry of Commerce) dated May 5, 2004.
227. National Bureau of Registries, Resolution dated December 3, 2003. Certification to
Intellectual Property Department (Registry of Commerce) dated December 23, 2003.
228. National Bureau of Registries, Resolution dated January 6, 2004. Certification to
Intellectual Property Department (Registry of Commerce) dated January 14, 2004.
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ESTONIA
I.B.2. Merely Descriptive Terms
Unilever N.V. applied for registration of the design mark
SLIM·FAST in Classes 5, 29, 30 and 32. The Patent Office granted
registration of the trademark, but with a disclaimer for the word
combination “Slim·Fast.” The Patent Office explained that the sign
was merely descriptive, indicating the purpose of the goods.229
Unilever N.V. contested the decision of the Patent Office
before the Board of Appeal of Industrial Property, arguing that its
trademark did not describe but only hinted at the purpose of the
goods. The complainant did not agree with the explanations of the
Patent Office and instead compared SLIM·FAST to the mark in
the famous BABY-DRY case, decided by the European Court of
Justice.230 Its main arguments were that the word combination
“Slim·Fast” was not a grammatically correct expression in English,
that the trademark SLIM·FAST did not describe but only hinted at
the purpose of the goods and that the dot between the words “Slim”
and “Fast” was not a common punctuation mark but instead
served as a design element.
Having examined the case and heard the explanations of both
parties, the Board of Appeal dismissed the appeal.231
This is not the final decision in this case, however, as Unilever
N.V. has appealed the Board’s ruling to the Administrative Court
of Tallinn.
I.B.11.e. Bad Faith
The enlargement in 2004 of the European Union indicated the
necessity for continuing the court practice of resolving disputes
concerning trademark applications filed in bad faith, as the law
does not prescribe the criteria for proving bad faith.
According to Article 8, Section 1.10 of the Estonian Trademark
Act, a mark may not be registered as a trademark if it is identical
to a trademark registered and in use in another country and if the
application for registration is filed in bad faith. Pursuant to the
wording of the provision, the registration application will be
refused if the following criteria are present: (1) another person’s
identical trademark (2) is registered and in use in another country
and also in use there and (3) the applicant demonstrates bad faith
at the time the application is filed.
229. Decision No. 7/M200001753, Patent Office.
230. Case C-383/99, September 20, 2001, 2001 E.C.R. I-6251.
231. Decision No. 557-o, Board of Appeal of Industrial Property, Ministry of Economic
Affairs and Communications, April 21, 2004.
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In Gulf International Lubricants Ltd. v. Gulf Oil Estonia
AS,232 the Administrative Court of Tallinn followed the earlier
decision of the District Court of Tallinn for the criteria for proving
bad faith.233 It is expected that these criteria will become the rule
in subsequent cases.
Gulf Oil Estonia AS applied to register the word GULF and a
logo for several services in Class 35, particularly the retailing and
wholesaling of oil-based fuel and lubricants. Gulf International
Lubricants Ltd. brought opposition proceedings before the Board of
Appeal of Industrial Property, claiming that it owned a number of
registrations in several countries for an identical trademark for
goods in Class 4 (oil-based fuels, lubricants, etc.). It also claimed
that its trademark was well known in Estonia because of the
length of time it had been used in various countries (but not in
Estonia) and that the application of Gulf Oil Estonia AS had been
filed in bad faith.
The Board of Appeal agreed with Gulf International and
refused the registration.234 It held that Gulf International’s mark
was well-known in Estonia and that the application had been filed
in bad faith because the trademarks were identical and a board
member Gulf Oil Estonia AS with links to the Netherlands should
have been aware of the GULF mark and its notoriety in the
Benelux countries.
Gulf Oil Estonia AS appealed the decision to the
Administrative Court of Tallinn, and the appeal was partially
allowed. The court agreed with Gulf Oil Estonia AS that the
evidence submitted by Gulf International Lubricants Ltd. did not
prove the notoriety of the GULF mark and logo in Estonia at the
time the application of Gulf Oil Estonia AS was filed. As for the
finding that the application had been filed in bad faith, however,
the court agreed with the decision of the Board of Appeal.
Following the ruling of the District Court of Tallinn, the
Administrative Court noted that Article 8, Section 1.10 of the
Estonian Trademark Act refers only to identity of trademarks, and
identity of goods or services is not relevant. As the law does not
prescribe any criteria for determining bad faith in filing an
application, the court held that the determination should be based
on the function of the trademark and the purpose for which
registration of the trademark is sought. Thus, the court concluded
that an application is filed in bad faith if the applicant knows of an
identical trademark belonging to another person and in use in
232. Case No. 3-237/2004, Administrative Court of Tallinn, March 31, 2004.
233. Case No. 2-3/549/2003, District Court of Tallinn, October 3, 2003.
234. Decision No. 501-o, Board of Appeal of Industrial Property, Ministry of Economic
Affairs and Communications, March 12, 2003.
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another country and the application is filed for the purpose of
obtaining the other person’s trademark. In determining bad faith,
the applicant’s intention to make use of the notoriety of another
person’s mark cannot serve as a basis.
The court held that Gulf International Lubricants Ltd.’s
GULF mark constituted a unique and highly distinctive trademark
and that it was not likely to have been copied by chance.
Furthermore, given the distinctiveness and international notoriety
of the trademark and the presence on Gulf Oil Estonia AS’s board
of a member who should have been aware of that distinctiveness
and notoriety, the court was convinced that the registration
application was not filed in good faith. The court found that the
applicant’s intention in registering the GULF mark in Class 35 in
the name of Gulf Oil Estonia AS was to take advantage of the
distinctiveness and notoriety of the other firm’s trademark in its
own business interests.
I.B.21. Trade Names
The Administrative Court of Tallinn has ruled that Article 8 of
the Paris Convention cannot be relied on directly in trademark
registration disputes.
Taevaraadio AS applied for registration of the trademark
KISS FM for radio broadcasting, radio entertainment and
production of radio programs. Helsingin Radioviestintä Oy and
Helsinkin Paikallinen Radio Oy opposed the trademark
registration, relying, inter alia, on Article 8 of the Paris
Convention. The opponents claimed that the trademark KISS FM
should not be registered, as it was an auxiliary trade name of
Helsingin Paikallinen Radio Oy.
The court found that Article 8 of the Paris Convention cannot
be relied on directly.235 According to Article 8, a trade name shall
be protected in all the countries of the Paris Union without the
obligation of filing or registration, whether or not it forms part of a
trademark. Professor Bodenhausen, in his guide to the application
of the Paris Convention,236 concluded that although Article 8
prescribes that a trade name must be protected, it does not specify
how such protection must be given. Member states are free to
regulate such protection, either by special legislation, by
legislation against unfair competition or by other appropriate
means.
235. Case No. 3-420/2004, Administrative Court of Tallinn, June 22, 2004.
236. G. H. C. Bodenhausen, Guide to the Application of the Paris Convention for the
Protection of Industrial Property as Revised at Stockholm in 1967 (Geneva: United
International Bureaux for the Protection of World Intellectual Property (BIRPI), 1968).
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Therefore, the court considered that Article 8 incorporates an
obligation for the states to regulate the question in their national
law.
According to the Estonian Commercial Code, a trade name is a
name entered into the Commercial Register, and an undertaking
can have only one trade name. In addition, a trade name has to
include an attribute referring to the type of undertaking.
The court ruled that it was clear, from the extract of the
Finnish Commercial Register, that the trade name of the opponent
was Helsingin Paikallinen Radio Oy. That trade name
corresponded to the requirements and definition of a trade name—
under Estonian law. KISS FM was an auxiliary trade name used
for radio broadcasting in the Helsinki, Turu, Tampere and Oulu
regions. The court concluded that because Estonian law provides
that an undertaking registered in the Commercial Register cannot
have an auxiliary trade name or a second trade name, it was fair
and logical that the state should not grant broader protection to a
foreign trade name or an auxiliary trade name than to a national
trade name.
EUROPEAN COMMUNITY
I.B.2. Merely Descriptive Terms
In KPN Nederland,237 the European Court of Justice (ECJ)
ruled on a host of questions referred to it by the Dutch court in
relation to Article 3(1)(c) of the European Community (EC) Trade
Marks Directive238 (non-registrability of descriptive marks). The
mark in question was POSTKANTOOR (“post office”), which KPN
had applied to register in respect of, amongst other things, paper,
postage stamps, telecommunications, technical information and
advice.
The key point that can be distilled out of the judgment is that
where a mark consists of a number of descriptive elements, the
mark itself must be considered descriptive unless there is a
perceptible difference between the mark and its components such
that the mark creates an impression that is sufficiently far
removed from that produced by the mere combination of meanings
of the separate elements of which it is composed, with the result
that the word is more than the sum of its parts. If the word has
acquired its own meaning, independent of its own components, it is
then necessary to consider whether the word has itself become
descriptive and therefore still contravenes Article 3(1)(c). The ECJ
237. KPN Nederland v. Benelux-Merkenbureau, Case No. C-363/99, February 12, 2004,
[2004] ETMR 57.
238. First Council Directive 89/104/EEC of December 21, 1988.
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also stated that the existence of alternative descriptive synonyms
is irrelevant for the assessment of Article 3(1)(c), as is the fact that
the characteristics of the goods or services the subject of the
description may be commercially essential on the one hand or
merely ancillary on the other.
On the same day, the ECJ gave a very similar judgment in
Campina239 when it stated that a neologism composed of two or
more descriptive parts need not use the parts in a descriptive way
as long as they could be used in such a way. Such a mark must be
viewed as a whole and refused registration if any possible meaning
was descriptive under Article 3(1)(c). A neologism would escape
refusal only if it could be shown to produce a different impression,
both aurally and visually, that was sufficiently removed from the
descriptive elements. The ECJ stressed the public interest in
ensuring that signs descriptive of the characteristics of goods or
services should be freely available to all to use when describing
those characteristics. The case concerned the application to
register BIOMILD in respect of foods, including milk products.
I.B.5. Personal Names
The UK Trade Mark Registry refused to register the mark
NICHOLS as a trade mark for foodstuffs because it was a common
surname and as a result was considered to be devoid of distinctive
character. The UK High Court referred the matter to the ECJ for
guidance. The ECJ’s judgment broadly follows the opinion of
Advocate General Colomer.240
The UK court queried what circumstances, if any, would result
in a single surname’s being refused registration for being devoid of
distinctive character under Article 3(1)(b) of the EC Trade Marks
Directive. In particular, must or may such a mark be refused
registration before it has acquired distinctive character if it is a
common surname in the member state where registration is
sought (or in one or more other member states)? Should national
authorities take into consideration the presumed expectations of
average customers in relation to those goods and services in the
member state in question, considering the commonness of the
surname, the nature of the goods or services and the prevalence of
the use of such surnames in the relevant trade? The UK High
Court went on to query the interpretation of Article 6(1)(a) of the
Directive and whether it should be taken into account when
considering the distinctiveness of the applied-for mark.
239. Campina Melkunie v. Benelux-Merkenbureau, Case No. C-265/00, February 12,
2004, [2004] ETMR 58.
240. Nichols v. UK Registrar of Trade Marks, Case No. C-404/02, September 16, 2004,
[2004] ETMR 48 (ECJ), and 94 TMR 387 (2004) (AG Colomer opinion).
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The ECJ referred to Article 2 of the Directive, which expressly
states that a trade mark may consist of a personal name provided
the particular name is capable of distinguishing goods or services
of one undertaking from those of other undertakings.
In essence the ECJ stressed that a stricter test should not be
applied to these types of marks. The criteria for assessing
distinctiveness of a surname as a trade mark are no different from
those of other trade marks. Therefore, when assessing distinctive
character, the national court should take into account the
particular goods or services in respect of which the registration
was applied for and the perception of the relevant consumers.
Criteria such as whether the number of people having that
surname listed in a directory exceeds a predetermined number, the
number of undertakings providing products or services of the type
covered by the trade mark application and the prevalence or
otherwise of use of surnames in that particular trade should not be
determinative. However, these factors may each be relevant in
assessing the distinctive character of the mark on an individual
basis.
Further, there should not be an assumption that such marks
require distinctive character acquired through use under Article
3(3) to be registrable. A refusal of registration cannot be justified
by a desire to prevent advantage to the first applicant for the
name, as there is no basis for such an approach provided by the
Directive.
The purpose of Article 6(1)(a) is to limit the rights of the mark
after registration, once distinctive character has been established,
for the benefit of operators with a name similar or identical to that
mark. Article 6(1)(a) is, therefore, not to be taken into account for
the purposes of asserting distinctive character before registration.
I.B.7.b. Three-Dimensional Marks
In Henkel,241 the German Bundespatentgericht referred to the
ECJ three questions relating to the shape of packaging and the
interpretation of distinctiveness under Article 3(1)(b) of the EC
Trade Marks Directive. The ECJ gave guidance regarding the
extent that national tribunals should take note of the registration
or refusal of registration of similar marks in other member states.
Henkel applied to register a German trade mark comprising a
coloured bottle for liquid washing detergent. The ECJ held that
the shape of packaging was equivalent to the description of the
shape of goods in the Directive for purposes of Article 3(1)(e), and
that shapes were also appropriate for consideration under Article
3(1)(c), which concerns marks “which consist exclusively of signs or
241. Henkel, Case No. C-218/01, February 12, 2004 (unreported).
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indications which serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical origin…or other
characteristics of the goods or services.”
When determining distinctiveness, the ECJ reiterated the
requirement that a mark must be capable of distinguishing one
party’s goods from another. Referring back to its judgment in
Libertel,242 the ECJ repeated its view that consumers generally do
not associate the shape of goods with an indication of origin,
whereas they are more likely to do so in respect of word marks or
logos. However, this assertion does not appear to have been based
on any evidence before the ECJ: Henkel’s survey evidence was not
considered even though it indicated the opposite.
In addition, the ECJ held that a national court could consider
decisions made by the tribunals of other member states in relation
to the registration of identical-shape trade marks for identical
goods, but that such consideration was not determinative.
However, it was not appropriate to do so in the case of decisions
relating to similar marks for similar goods.
This judgment appears to be judicial notice that in the view of
the ECJ the public does not readily perceive shape marks as an
indication of origin. However, as stated in the Nichols243 case, the
fact that a mark relates to a surname, or in this case a shape,
should not mean that it is assessed on criteria different from those
for any other marks. The ECJ’s view that consumers see shape
marks differently from personal names means that it will continue
to be difficult to register three-dimensional shapes as trade marks.
I.B.20. Color
On June 24, 2004, the ECJ considered whether abstract,
undelineated colour marks could be considered “signs” capable of
graphical representation under Article 2 of the EC Trade Marks
Directive. The German Bundespatentgericht referred a number of
questions to the ECJ for a preliminary ruling.244 At issue was
whether an application for registration covering a combination of
colours, without contours but in shades referenced to a colour
sample and to a recognised colour classification system, could
satisfy conditions for constituting a trade mark under Article 2. In
particular, could an abstract colour mark be considered capable of
indicating origin and capable of graphical representation?
Heidelberger had applied to register the colours blue and
yellow, in relation to products used in the building trade, as a
242. Libertel Groep v. Benelux Trade Mark Office, Case No. C-104/01, [2003] ETMR 63.
See 94 TMR 389 (2004).
243. See I.B.5. Personal Names.
244. Heidelberger Bauchemie, Case No. C-49/02, June 24, 2004, [2004] ETMR 99.
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383
German trade mark. The application included a reproduction of
the mark on a rectangular piece of paper, the upper half being
coloured blue and the lower half coloured yellow. The description of
the mark accompanying the application stated that “the trade
mark applied for consists of the applicant’s corporate colours which
are used in every conceivable form, in particular on packaging and
labels.”
The ECJ confirmed that a combination of colours or colours by
themselves in the abstract and without contours could constitute a
trade mark for the purposes of Article 2. However, this was
dependent upon establishing that the colours or the combination of
colours constituted a mark in the context in which they were being
used. Further, the application for registration needed to include a
systematic arrangement associating the colours in a
predetermined and uniform way.
The ECJ noted that even where a colour mark can be
registered in accordance with Article 2, it is still necessary for the
application to comply with the other registrability requirements, in
particular those under Article 3. When assessing registrability,
account must be taken of all the relevant circumstances, including
any prior use of the mark and the public interest in not unduly
restricting the availability of colours for other traders.
III.A.10. Nonuse of Trademark
In proceedings relating to the revocation of a trade mark on
the ground of lack of genuine use,245 the UK High Court referred to
the ECJ seven questions on the interpretation of “genuine use”
under Articles 10(1) and 12(1) of the EC Trade Marks Directive.
The Court queried (1) what factors should be taken into account
when deciding whether a mark has been put to genuine use; (2)
whether the extent of use of the mark in relation to the specific
goods and services for which the mark is registered should be
considered; (3) if any amount of use, however small, could be
sufficient provided it was made for no purpose other than
commercially dealing in the goods or providing the services; (4) if
not, what test should be used for determining how much use is
sufficient, and whether the nature and size of the business should
be taken into account; (5) whether token or sham use should be
discounted from consideration (this question was subsequently
withdrawn); (6) what types of use could be validly considered and
whether such use must be in the course of trade; and (7) whether
using trade marks subsequent to the filing of an application for
revocation could be considered.
245. La Mer Technology v. Laboratoires Goemar, Case No. C-259/02, January 27, 2004,
[2004] ETMR 47.
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La Mer Technology wished to market toiletries and cosmetics
in the UK under the mark LA MER. Laboratoires Goemar was the
proprietor of two UK trade marks consisting of the words
LABORATOIRES DE LA MER that were registered for goods it
was marketing (including Class 3 goods for cosmetics, among
which marine products). However, Laboratoires Goemar had not
made very extensive use of its marks in the market, and in fact, in
the five years prior to the application for revocation, it had only
generated about GBP 800 from the sale of its LABORATOIRES
DE LA MER products to a distributor established in Scotland,
Health Scope Direct.
The UK High Court held that Laboratoires Goemar’s low
turnover did not mean that the trade marks had merely been used
for the purpose of maintaining the trade mark registration and
therefore did amount to genuine use. However, the High Court
noted that Laboratoires Goemar had appointed a new distributor
following the end of the five-year period from registration of the
mark (the alleged period of nonuse of the trade marks) and
subsequent to La Mer Technology’s revocation application. The
main question in the case was whether, in these circumstances,
Laboratoires Goemar’s trade marks had been put to “genuine use”
pursuant to Articles 10(1) and 12(1) of the Directive.
The ECJ referred to its earlier answers in the Ansul case246 in
respect of questions (1) to (4) and (6) above and confirmed that
genuine use of a trade mark is made when it is used to perform its
essential function, namely to guarantee the identity and origin of
the goods or services in question so as to create an outlet for those
goods or services. Therefore, genuine use could not extend to
internal use or to use made solely to preserve trade mark rights or
defeat revocation applications.
In assessing the use of the trade mark in question, the ECJ
stated that regard should be had to all the facts and circumstances
of the case, including the market and type of goods and products in
question. It should also be considered whether the use was
warranted in the economic sector concerned “to maintain or create
a share in the market for goods and services protected by the mark.”
Minimal use of a trade mark would not therefore necessarily
prevent a finding of genuine use.
In answering question (7) in respect of use of a mark
subsequent to an application for revocation, the ECJ stressed it
was for the national court to decide whether or not such use was
genuine. Subsequent trade mark use is not necessarily precluded
from consideration, as it may be helpful in determining whether
246. Ansul, Case No. C-40/01, [2003] ECR I-2439.
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use of the mark prior to the application for revocation was
genuine.247
III.F.1. Forfeiture
In Bjornekulla,248 the ECJ stated that, despite the wording of
some different language versions of the EC Trade Marks Directive,
end user perceptions will always be relevant in determining
whether a registered trade mark has become a generic term “in the
trade” for the product in respect of which the mark is registered.
In this case, Bjornekulla sought revocation of the mark
BOSTONGURKA, alleging that it was now used as a common
name for chopped pickled gherkins, as was illustrated by consumer
market research surveys it had obtained. The ECJ stated that
where there are intermediaries involved in distribution, both the
perceptions of the final consumer and (depending on the particular
characteristics of the market) the views of those dealing with the
product commercially are important when assessing whether a
mark has become a generic term for the particular product for
which it is registered. In coming to this conclusion the ECJ noted
that due consideration had to be given to the different language
versions of Article 12(2)(a), some of which seemed to restrict the
consideration to trade circles and some of which referred to trade
circles and consumers.
This decision is another interesting example of the dangers of
a national court’s interpreting the Directive too literally. Although
Article 12(2)(a) refers to a mark being at risk of revocation if it is a
common name “in the trade,” the ECJ said that the purpose of the
provision was to enable a mark that was no longer capable of
fulfilling its essential function (which is to guarantee the identity
of the origin of the marked goods to the consumer by enabling him,
without any possibility of confusion, to distinguish the goods from
others which come from another source) to be removed from the
register. Consequently, consideration must be given not only to the
views of those strictly “in the trade” but also to the end consumers
247. The case was remitted to the UK High Court, which held that a proprietor’s
intention to use the mark in the market is in itself insufficient to lead to a finding of
genuine use, where use of the mark in fact was too minimal to create or maintain a share in
the market. The argument that importation of goods by the trade mark proprietor must be
sufficient to establish genuine use, as such an act without consent would constitute trade
mark infringement under Article 5(3), was rejected. Different objectives are served by
Articles 5(3), 10(1) and 12(1). Under the latter, importation could be considered akin to
internal use. On the facts, there was no evidence that the distributor had ever tried to offer
the goods for sale or bring them to the notice of the general public. The trade mark
registration was therefore wholly revoked for nonuse. December 21, 2004, [2004] EWHC
29960 (Ch).
248. Bjornekulla Fruktindustrier v. Procordia Food, Case No. C-371/02, April 29, 2004,
[2004] ETMR 69.
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of the product. A more extreme example of this purposive approach
can be found in the ECJ’s decision in Davidoff v. Gofkid249
concerning Article 5(2). There, the ECJ explicitly warned that “the
Directive must be interpreted not solely on the basis of its wording,
but also in the light of the overall scheme and objectives of the
system of which it is part.”
This appears to be the first time that the ECJ has been asked
to consider the problem of a previously distinctive mark’s having
become generic. However, there is a fine line between using a
mark in ways that will secure maximum public recognition
(whether it be through trade or in consumer circles) and uses that
“genericise” a mark, thereby depriving an organisation of what
might be one of its key assets.
III.J. Gray Marketing
In its judgment in Peak Holding v. Axolin-Elinor,250 the ECJ
considered the interpretation of exhaustion of rights provisions of
Article 7(1) of the EC Trade Marks Directive. Peak Performance
wished to prevent the sale of original clothing bearing the PEAK
PERFORMANCE trade mark in Axolin-Elinor’s “Factory Outlet”
stores. Peak Performance imported the clothing into the EEA and
offered it for sale. The unsold stock was later sold by Peak
Performance to a French undertaking, COPAD International. The
contract of sale to COPAD stipulated that the items were to be put
on a market outside the EEA, although up to 5 percent could be
sold in France.
The ECJ was asked by the Swedish court to consider whether
the importation or offer for sale of the unsold goods meant that
they had been “put on the market in the Community” for the
purposes of Article 7(1) of the Directive such that the trade mark
rights were exhausted and could not be relied upon to prevent resale within the EEA. The ECJ also considered the effect of
contractual restrictions on further sales within the EEA.
Prior decisions of the ECJ have protected the trade mark
owner’s right to control initial marketing in the EEA of goods
bearing the mark. The ECJ held that where the trade mark owner
merely imports goods into the EEA, they have not been “put on the
market” even if the purpose of the importation is sale in the EEA.
Likewise, merely offering goods for sale to a third party does not
come within the ambit of Article 7(1). However, actual sale to a
third party in the EEA would exhaust a proprietor’s rights under
Article 7(1) regardless of the terms imposed by the proprietor
prohibiting future sale of the goods within the EEA: the goods are
249. Case No. C-292/00, January 9, 2003, [2003] ETMR 42.
250. Case No. C-16/03, November 30, 2004 (unreported).
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to be regarded as “put on the market” even if the trade mark
owner does not consent to their resale in the EEA.
FINLAND
I.B.5. Personal Names
The Board of Appeal of the Finnish Patent Office annulled a
decision of the National Board of Patents and Registration that
had rejected the registration of the international mark OLSEN in
Classes 18 and 25 by Olsen GmbH & Co. Kg.251 The National
Board of Patents and Registration stated that Olsen is a surname
in Finland, and therefore, the mark may give the impression that
it is someone’s name.
The Board of Appeal of the Patent Office held that the
surname Olsen, which is used in Finland, is part of the applicant’s
trade name Olsen GmbH & Co. Kg, and therefore, the applicant
has the right to include the word in its trademark. The Board of
Appeal of the Patent Office returned the matter to the National
Board of Patents and Registration for re-examination.
The Board of Appeal of the Finnish Patent Office reversed the
decisions of the National Board of Patents and Registration, which
had rejected the registration of the International trademarks
NEIL BARRETT in Classes 3, 9, 14, 18 and 25 by Neil Barrett
Barber252 and WIBERG in Classes 1, 18, 22, 29, 30 and 42 by
Wiberg Besitz Gesellschaft M.B.H.253 designating Finland as both
of the marks may give the impression that the mark is a person’s
name.
The Board of Appeal considered that the holder has the right
to adopt his own name as his trademark without it giving the
impression that another person’s name is used. The Board of
Appeal then returned the matter to the National Board of Patents
and Registration for re-examination.
The Supreme Administrative Court annulled the decisions of
the National Board of Patents and its Board of Appeal, which had
rejected the application for registration of the trademark
O.P.ANDERSON in Class 33 by V&S Vin & Sprit Aktiebolag due
to the fact that the mark includes a surname used in Finland.254
251. Case 2001/T/11, The Board of Appeal of the Patent Office, December 4, 2002.
252. Case 2001/T/158, The Board of Appeal of the Patent Office, June 4, 2003.
253. Case 2001/T/153, The Board of Appeal of the Patent Office, May 5, 2003.
254. Case 1321/3/02, The Supreme Administrative Court, August 19, 2003.
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The Supreme Administrative Court saw that the trademark
O.P.ANDERSON could not be considered as a person’s name. The
applicant had provided evidence according to which Carl Gustav
Anderson had sold aquavit since 1971 under the name
O.P.ANDERSON. The aquavit was named after his father who had
died in 1876. Thus, the name referred to an historic person who
had lived a long time ago. Also the said person was not well known
in Finland. The Supreme Administrative Court stated that the
applicant had also submitted as evidence a history of the company
V&S Vin & Sprit AB for the years 1917-1942, which showed that
the company was founded in 1917 with the purchase of
Reymersholms Gamla Spritförädlings AB through which it also
took over the company O.P.Anderson. Therefore, in the opinion of
the Supreme Administrative Court, the company’s use of the
trademark O.P.ANDERSON can be traced back to the company
O.P.Anderson.
I.B.8.a. Similarity of Marks
The Finnish National Board of Patents and Registration and
its Board of Appeal accepted the opposition filed by Partek Oyj Abp
against the International trademark registration PARTEC in
Classes 35 and 41 by Nürnber Messe GmbH.255 The registration
was refused in Finland.
The Board of Appeal of the Patent Office stated that the
opposed International registration PARTEC differs from the
known trademark PARTEK only by its last letter. The marks are
deemed very similar, even identical by their pronunciation.
The opponent’s trademark registration for the mark PARTEK
covers several classes of goods and the trade name, in turn, covers
many branches of industry. Therefore, the products sold under the
said trademark are directed at several target groups and different
marketing channels. According to the Board of Appeal, use of the
mark PARTEC would result in an unjust advantage and would be
harmful to the mark PARTEK. Therefore, the International
trademark PARTEC is confusingly similar to the registered
trademark PARTEK and the trade name Partek Oyj Abp.
The Board of Appeal of the Finnish Patent Office annulled the
decision of the National Board of Patents and Registration to reject
the opposition filed by Benetton Group S.P.A. against the
trademark registration COLOURS in Classes 9, 16, 18, 34, 41 and
42 by The London Tobacco Company Ltd.
Benetton Group S.P.A. opposed the applicant’s mark
COLOURS as confusingly similar to their trademark registrations
255. Case 2000/T/226, The Board of Appeal of the Patent Office, October 9, 2002.
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389
Nos. 128446 COLORS, 206960 UNITED COLORS OF
BENETTON (device), 206563 UNITED COLORS OF BENETTON
(device), 111998 UNITED COLORS OF BENETTON and 200340
UNITED COLORS OF BENETTON.
The Board of Appeal held the applicant’s mark to be
confusingly similar to the opponent’s mark COLORS, which was
registered for the same goods.
However, the opponent’s mark No. 111998 UNITED COLORS
OF BENETTON is not protected for the same or similar goods as
the applicant’s mark, and therefore, there is no likelihood of
confusion with the same. The other three UNITED COLORS OF
BENETTON trademarks, both figurative and word marks, of the
opponent cover the same goods as the opposed mark, but have only
one word in common. The distinctiveness of the almost identical
words COLOURS and COLORS is deemed weak. As a whole, the
applicant’s mark COLOURS differs visually, phonetically and by
its meaning so clearly from the opponent’s registered marks
UNITED COLORS OF BENETTON that there is no likelihood of
confusion merely on the basis of the term COLORS. Consequently,
the Board of Appeal annulled the decision of the National Board of
Patents and Registration solely on the basis of the opponent’s
mark COLORS.
I.B.8.b. Similarity of Goods/Services
The Finnish National Board of Patents and Registration and
its Board of Appeal rejected the application for registration of the
trademark MIX MAX FLAKES in Classes 29 and 30 by Bio-Quelle
Klaus Lösch Gesellschaft M.B.H.256 The mark was held confusingly
similar to the earlier trademark registration MAX MIX, which is
registered for the same goods.
I.B.9.a. No Similarity of Marks
The Board of Appeal of the Finnish Patent Office reversed the
decision of the National Board of Patents and Registration, which
had rejected the application for registration of the mark
INTERBIZ in Classes 9 and 42 by Computer Associates Think,
Inc.257 Aware of the common meaning of the words biz and
business, the National Board of Patents and Registration held the
applied mark to be confusingly similar to the Community
Trademark registration INTERBUSINESS.
According to the Board of Appeal, there is no likelihood of
confusion between the mark INTERBIZ and the earlier trademark
256. Case 2001/047/T, The Board of Appeal of the Patent Office, February 26, 2003.
257. Case 2001/T/113, The Board of Appeal of the Patent Office, April 1, 2003.
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INTERBUSINESS. Even if both of the marks have the same
beginning INTER, the endings BUSINESS and BIZ differ both
visually and phonetically from each other. Further, as the meaning
of the word BIZ is not very commonly known in Finland, the marks
cannot be considered to have a similar meaning. The Board of
Appeal remanded the matter to the National Board of Patents and
Registration for re-examination.
The Board of Appeal of the Finnish Patent Office annulled a
decision of the National Board of Patents and Registration that
had rejected the registration of the international trademark TSELECT by Deutsche Telecom AG in respect of Classes 16, 35, 38,
42 and accepted it in Class 9.258 The National Board had held that
the mark was confusingly similar to the earlier trademark
registration for SELECT.
The Board of Appeal stated that the common component, the
word “select” is descriptive in respect of the applied goods in Class
16, as it means, “to take as a choice, to make a choice, single out.”
As a whole, both marks are weak and differ from each other
phonetically and visually due to the letter T. Despite the common
word “select,” the international trademark cannot be deemed
confusingly similar to the cited mark. The Board of Appeal
returned the matter to the National Board of Patents and
Registration for re-examination.
The Board of Appeal of the Finnish Patent Office reversed a
decision of the National Board of Patents and Registration that
had rejected the registration of the international trademark
CARMEL DSP (device) in Classes 9 and 42 by Infineon
technologies AG in Finland.259 The National Board of Patents and
Registration had held that the mark was confusingly similar to a
prior trademark registrations for CARMEN.
The Board of Appeal stated that despite the fact that one of
the cited marks is registered in the same class, the goods of the
applicant’s marks and of the cited marks are not the same or
similar. Therefore, the applied mark cannot be deemed confusingly
similar to the cited marks.
Furthermore, the word “Carmen” of the cited marks has a
commonly known meaning (Bizet’s opera and an internationally
known girl’s name) so even the slightest changes to other marks
are sufficient to distinguish the marks from each other. The
applied for trademark is a figurative mark where the word
CARMEL and the letter combination DSP are inside an oval-
258. Case 2000/T/079, The Board of Appeal of the Patent Office, January 20, 2003.
259. Case 2000/T/202, The Board of Appeal of the Patent Office, October 1, 2002.
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391
shaped figure formed of two crescent-shaped figures. Even if the
letter combination DSP is printed in smaller letters, it should be
taken into account in assessing likelihood of confusion as a factor
that increases differences between marks. As the word “carmel”
has no commonly known meaning in the Finnish language, it
should be considered a fanciful word. The words “Carmen” and
“carmel” differ by their last letter, however, phonetically, the
difference is minor due to weak pronunciation of the last letter.
When the letter combination DSP is added to the word CARMEL
together with the figurative element, the marks are clearly
distinguishable. The applied for mark should be considered as a
whole and, therefore, the applicant’s mark cannot be deemed
confusingly similar to prior registrations of CARMEN. The Board
of Appeal returned the matter to the National Board of Patents
and Registration for re-examination.
The Board of Appeal of the Finnish Patent Office annulled a
decision of the National Board of Patents and Registration that
had rejected the application for registration of the mark
CORNER’S PUB in Class 42 by Merinomet Oy due to likelihood of
confusion with prior trademark registrations for CORNER CAFE,
CORNER PUBLIC HOUSE, PUBLIC CORNER.260
The Board of Appeal stated that the common component of the
applied mark and of the cited marks, i.e., the word “corner,” is
suggestive by its nature as it has among others such meanings as
a position at which two lines, surfaces or edges meet and form an
angle or street corner. The other components of the marks, “pub,”
“café,” “public house” and “public,” are descriptive in respect of the
applied for service class. Therefore, all the subject marks are weak
if examined as a whole. The marks differ from each other
phonetically and visually. Thus, despite the common component
“corner,” the applied for mark cannot be deemed confusingly
similar to the cited marks. The Board of Appeal returned the
matter to the National Board of Patents and Registration for reexamination.
I.B.22. Distinctiveness
The Finnish National Board of Patents and Registration and
its Board of Appeal rejected the application for registration of the
trademark CRINOLIN by Hermes International in Classes 18 and
24.261 With only minor changes to the English language word
“crinoline,” which means coarse, stiff fabric of cotton, the mark was
260. Case 2000/T/229, The Board of Appeal of the Patent Office, October 9, 2002.
261. Case 2001/T/006, The Board of Appeal of the Patent Office, December 4, 2001.
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held nondistinctive as it indicates the quality and nature of the
applied for goods.
The Board of Appeal of the Finnish Patent Office dismissed
the appeal filed against the decision of the National Board of
Patents and Registration that rejected the registration of the
international trademark DTI in Class 12 by Adam Opel AG.262 The
mark DTI, which is also an abbreviation of the words “Distortion
Transmission Impairment,” was deemed to indicate the quality,
nature and purpose of use of the applied goods.
According to the Board of Appeal, the abbreviation DTI or Dti
(Diesel Turbo Intercooler or Diesel Turbo Injection) is commonly
used in connection with different car makes and models, and
because the mark thus indicates the quality, nature and purpose of
the goods covered by the application, it cannot be considered
distinctive.
The Board of Appeal of the Finnish Patent Office reversed a
decision of the National Board of Patents and Registration that
rejected the registration of the international trademark MINI
MILK in Class 30 by Unilever N.V.263 The National Board held
that the mark was nondistinctive due to the fact that it indicates
the nature, quality and purpose of use of the applied goods.
The Board of Appeal of the Patent Office noted the fact that
the applicant stated in its appeal that it was willing to include in
the registration a disclaimer for the words MINI and MILK. The
Board of Appeal stated that, even if the words “mini” and “milk” by
themselves can be deemed descriptive for the applied goods “edible
ice,” the applied for mark MINI MILK as a whole does not have
any commonly known descriptive meaning for the subject goods.
Therefore, the mark is capable of distinguishing the goods of the
applicant from the goods of others and is thus distinctive and
capable of registration. The Board of Appeal returned the matter
to the National Board of Patents and Registration for reexamination.
The Board of Appeal of the Finnish Patent Office reversed a
decision of the National Board of Patents and Registration that
had rejected the applications for registration of the marks
GLOBALONE264 and GLOBAL ONE265 in Classes 9, 16, 36, 37 and
38 by Global One Communications Holding B.V. The National
262. Case 2000/168/T, The Board of Appeal of the Patent Office, January 20, 2003.
263. Case 2001/T/084, The Board of Appeal of the Patent Office, February 17, 2003.
264. Case 2001/T/055, The Board of Appeal of the Patent Office, February 26, 2003.
265. Case 2001/T/056, The Board of Appeal of the Patent Office, February 26, 2003.
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393
Board of Patents and Registration had held that the applied for
marks merely indicate the quality of the goods and services
applied for and cannot, therefore, be held distinctive.
The Board of Appeal stated that the word “globalone” or any
similar word cannot be found in dictionaries of any foreign
languages that are commonly known in Finland. The word can be
divided into different parts from several places forming separate
words with different meanings and thus, the word cannot be
deemed to have one unambiguous meaning. Therefore, the mark
GLOBALONE cannot be considered to merely indicate the nature
and quality of the applied for goods and services, but it can be
deemed suggestive. Thus, the mark is distinctive. The Board of
Appeal returned the matter to the National Board of Patents and
Registration for re-examination.
The Board of Appeal of the Finnish Patent Office reversed a
decision of the National Board of Patents and Registration that
had rejected the registration of the international trademark
PERNAVITAL in Classes 3, 5 and 30 by Semomed AG.266 The
mark had been deemed to indicate the purpose of use in respect of
Classes 5 and 30.
The Board of Appeal stated that the word PERNAVITAL or
any word that closely resembles it cannot be found in any
dictionaries of the most commonly known languages. Thus, the
word does not have an unambiguous meaning and, therefore, the
mark can be held distinctive. The Board of Appeal returned the
matter to the National Board of Patents and Registration for reexamination.
The Board of Appeal of the Finnish Patent Office reversed a
decision of the National Board of Patents and Registration that
had rejected the application for registration of the mark NO 19 in
Class 3 by CHANEL as nondistinctive.267
The Board of Appeal stated that a trademark may be formed
solely of numbers and letters if the combination neither has
meaning in the subject field of business nor is an abbreviation
connected to the goods covered by the application. Generally,
numbers are neither used to indicate the size and number of goods
in the field of business to which the applied for goods belong, nor
are they a normal way to refer to such goods or their essential
qualities. Therefore, the mark is deemed distinctive.
266. Case 2000/T/224, The Board of Appeal of the Patent Office, September 10, 2002.
267. Case 2000/T/200, The Board of Appeal of the Patent Office, October 1, 2002.
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The Finnish National Board of Patents and Registration and
its Board of Appeal refused the registration of the mark VITA in
Classes 29, 30 and 32 by Vitasoy International Holdings Limited
based on the opposition filed by Compagnie Gervais Danone.268
According to the National Board of Patents and Registration, the
opponent’s mark VITALINE is in fact registered for the same
goods as the mark VITA, but the applicant’s mark cannot be
deemed confusingly similar to the opponent’s mark. However, the
opponent had shown that the applicant’s mark lacks
distinctiveness as it indicates the quality of the goods (vita =
white, in Swedish) and cannot thus distinguish the applicant’s
goods from the corresponding goods of others.
The Board of Appeal of the Finnish Patent Office reversed the
decision of the National Board of Patents and Registration
rejecting the registration for the International trademark
BIDETTE in Classes 11, 20 and 21 by Hansgrohe AG in Finland.269
The National Board of Patents and Registration held the mark to
be nondistinctive.
The Board of Appeal held that the International trademark
BIDETTE has no commonly known meaning and can thus be
considered to be a made-up word. The mark differs significantly
from the Finnish word “bidee” and the English word “bidet,” which
describe the nature of the applied for goods. The average consumer
cannot be assumed to connect the said words to the mark. The
Board of Appeal therefore deemed the applied for mark to be
distinctive and remanded the case to the National Board of
Patents and Registration for re-examination. The Board of Appeal
of the Finnish Patent Office annulled the decision of the National
Board of Patents and Registration rejecting the registration for the
International trademark BUSINESSCALL 100 in Classes 9, 16,
35, 38 and 42 by Deutsche Telecom AG in Finland due to nondistinctiveness.270
According to the Board of Appeal, the mark as a whole, in the
given form, does not solely and generally describe the nature of the
applied for goods and services. The Board of Appeal remanded the
matter to the National Board of Patents and Registration for reexamination.
The Board of Appeal of the Finnish Patent Office reversed the
decision of the National Board of Patents and Registration, which
had rejected the registration of the International trademark
268. Case 2001/T/069, The Board of Appeal of the Patent Office, February 26, 2003.
269. Case 2001/T/005, The Board of Appeal of the Patent Office, November 6, 2002.
270. Case 2001/T/110, The Board of Appeal of the Patent Office, April 7, 2003.
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395
EURO-WIENER in Class 18 by Devro Plc. in Finland due to nondistinctiveness.271
According to the Board of Appeal, the mark is to be deemed
distinctive as the said mark can be divided into parts that have
both several meanings: EURO, which has among others such
meanings as “currency unit” and “European,” and WIENER in
Finnish means a “Danish pastry” and in American English
“sausage,” the meaning of which is not very commonly known in
Finland. The Board of Appeal thus remanded the matter to the
National Board of Patents and Registration for re-examination.
V.A. Domain Names
The Communication Regulatory Authority’s following
decisions are the first decisions published since the new Domain
Name Act that took effect on September 1, 2003. Section 12,
paragraphs 3 and 4 of the Act provide that a domain name can be
revoked, (3) if there are reasons to suspect that it is a protected
name and the registrant does not show acceptable reasons for
registering the domain name, or, (4) if there are weighty reasons to
suspect that the domain name is a derivative of a protected name
obtained with the obvious intention to benefit from or to harm
another, and the registrant cannot show acceptable reasons for
registering the domain name.
The Finnish Communication Regulatory Authority (FCRA)
cancelled the registration for the domain name blanko.fi in the
name of Dapaq Oy,272 holding that the said domain was unlawfully
based on the protected trade name and trademark of a third party.
The FCRA cancelled the registration for the domain name
ttt.fi in the name of Tampereen Talotekniikka Oy and transferred
it to TTT Technology Oy Ab.273 The said domain was held to be
unlawfully based on the registered trademark TTT of TTT
Technology Oy Ab.
The FCRA rejected the request for the cancellation of the
domain name proshop.fi filed by J&K International Oy based on
their auxiliary trade name J&K Proshop.274 Undoubtedly, the
271. Case 2001/T/127, The Board of Appeal of the Patent Office, May 28, 2003.
272. Case 910/914/2003, The Finnish Communication Regulatory Authority, October 6,
2003.
273. Case 952/914/2003, The Finnish Communication Regulatory Authority, October 6,
2003.
274. Case 924/914/2003, The Finnish Communication Regulatory Authority, November
5, 2003.
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domain name proshop.fi is a protected name or a derivative name,
which has been obtained purely for profit purposes or for causing
damage.
The FCRA cancelled the registration of the domain diesel.fi in
the name of Fortum Oyj.275 The domain name was unlawfully
based on the registered trademark DIESEL of Diesel S.p.A. and
Diesel Finland Oy.
The FCRA cancelled the registration of the domain name
ykk.fi granted in the name of Yrittäjien Koulutuskeskus Oy.276 The
domain name was unlawfully based on the registered trademark
YKK of YKK Corporation.
The FCRA cancelled the registration of the domain name
digibox.fi of Sofia Digital Oy and transferred it to Finnsat Oy.277
The domain name was unlawfully based on the registered
trademark DIGIBOX owned by a third party.
The FCRA rejected the request filed by Spacecom Technologies
to cancel the domain name business.fi and transfer the same to
Spacecom Technologies who had registered the auxiliary trade
name www.business.fi in the trade name register.278 According to
the FCRA there were no justified grounds or probable cause to
suspect that the domain name was a protected name or derivative
name obtained clearly for profit purposes or for causing damage.
The FCRA rejected the request filed by Controller Oy
Laskentakonsultointi to cancel the domain name controller.fi and
transfer the same to Controller Oy Laskentakonsultointi.279 The
FCRA held that there were no justified grounds to suspect that the
domain name was a protected name or derivative name obtained
clearly for profit purposes or for causing damage.
The FCRA rejected the request filed by Finland’s Slot Machine
Association (RAY) to cancel the domain name deal.fi of Joliot Oy
275. Case 879/914/2003, The Finnish Communication Regulatory Authority, November
18, 2003.
276. Case 920/914/2003, The Finnish Communication Regulatory Authority, November
18, 2003.
277. Case 936/914/2003, The Finnish Communication Regulatory Authority, November
18, 2003.
278. Case 937/914/2003, The Finnish Communication Regulatory Authority, January 30,
2004.
279. Case 913/914/2003, The Finnish Communication Regulatory Authority, January 30,
2004.
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397
and transfer the same to RAY who is the owner of the figurative
trademark DEAL.280 The FCRA deemed that there were no
justified grounds or probable cause to suspect that the domain
name was a protected name or derivative name obtained clearly
for profit purposes or for causing damage.
The FCRA rejected the request for cancellation of the domain
name mamma.fi of Domain Bank Oy filed by Ohjelmatoimisto
Mamma Oy.281 In the opinion of the FCRA there were no justified
grounds or probable cause to suspect that the domain name was a
protected name or derivative name obtained clearly for profit
purposes or for causing damage.
The FCRA cancelled the domain name registration moon.fi
granted for Poleon Oy and allowed Kellomiehet Oy, which was the
owner of the Finnish trademark MOON, to apply for the transfer
of the domain name to its possession within three months from the
date of notifying the decision to the parties concerned.282 According
to the FCRA, there were justified grounds to suspect that the
domain name was a protected name or mark. Furthermore, the
holder of the domain name had not shown acceptable grounds for
its rights.
The FCRA cancelled the domain name petrol.fi granted to
Poleon Oy and allowed, upon request by Esa Kukila, the owner of
the trademark registration PETROL, Desperado Oy to apply for
the transfer of the domain name into its name.283 The FCRA saw
that there were justified grounds to suspect that the domain name
was a protected name or mark. Furthermore, the holder of the
domain name had not shown acceptable grounds for its rights.
The FCRA cancelled the domain name progress.fi granted to
Finnish Commuter Airlines Oy and transferred it to Progress
Software Oy who was the owner of the Finnish trademark
registration PROGRESS.284 According to the FCRA, there were
justified grounds to suspect that the domain name was a protected
280. Case 943/914/2003, The Finnish Communication Regulatory Authority, January 30,
2004.
281. Case 951/914/2003, The Finnish Communication Regulatory Authority, March 29,
2004.
282. Case 1341/914/2003, The Finnish Communication Regulatory Authority, March 29,
2004.
283. Case 1493/914/2003, The Finnish Communication Regulatory Authority, March 29,
2004.
284. Case 945/914/2003,
December 18, 2003.
The
Finnish
Communication
Regulatory
Authority,
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name or mark. Furthermore, the holder of the domain name had
not shown acceptable grounds for its rights.
The FCRA rejected the request filed by Canal D’amour
Finland Oy to cancel the domain name sex.fi and transfer it to
itself, whose auxiliary trade name is www.Sex.fi.285 In the opinion
of the FCRA, there were no justified grounds or probable cause to
suspect that the domain name was a protected name or derivative
name obtained clearly for profit purposes or for causing damage.
The FCRA rejected the request filed by Startex Oy, the owner
of the Finnish figurative trademark registration START, to cancel
the domain name start.fi and transfer the same to itself.286 The
FCRA held that there were no justified grounds or probable cause
to suspect that the domain name was a protected name or
derivative name obtained clearly for profit purposes or for causing
damage.
The above decisions show how the FCRA has interpreted the
Domain Name Act provisions regarding revocation of domain
names. If the protected name is identical to the domain name, the
complaint falls within paragraph 3 and the complainant needs
merely to ask for the transfer. If the registrant does not provide
acceptable reasons for registering the domain name, it will be
transferred.
However, if the protected name is not strictly identical to the
domain name, the domain is deemed to be a derivative of the
protected name and the complaint falls within paragraph 4. The
requesting party must then show bad faith on behalf of the
registrant in order to succeed.
The term “strictly identical” in this connection appears to
mean that if the protected name includes, for example, a figurative
or a descriptive element, or anything else at all besides the domain
name, the complainant must show bad faith on the respondent’s
side in order to succeed. All such complaints have so far been
rejected; in other words, complainants have not been able to show
bad faith. The definition of bad faith will be the next interesting
question to be answered by the FCRA’s future case law.
285. Case 1069/914/2003, The Finnish Communication Regulatory Authority, April 6,
2004.
286. Case 1116/914/2003, The Finnish Communication Regulatory Authority, March 29,
2004.
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399
FRANCE
I.B.2. Merely Descriptive Terms
Having received notification from the French Intellectual
Property Office (INPI) confirming its refusal to register the
trademark E-SERVICE, in respect of “customer maintenance and
assistance provided by video teleconference and via the Internet,”
the applicant filed an appeal with the Court of Appeal of Paris to
have this decision reversed.
The applicant argued that, contrary to the findings of INPI,287
which had rejected the mark applied for on the ground that it
consisted of descriptive terms, E-SERVICE was in fact a
neologism, which was neither usual nor descriptive of the services
designated. The applicant also put forward the argument that the
prefix E stands for “endoscopes” and not “electronic.” The Court
held that as the mark was not written in stylised letters and/or
depicted in conjunction with any figurative element(s), the
combination of the components E- and SERVICE would be
perceived in merely a descriptive sense. Referring to a popular
French dictionary,288 which defined E as the abbreviation of the
English word “electronic” when used as a prefix and hyphenated,
and indicating a link to the Worldwide Web (e.g., e-commerce, epub), the Court found that in the present context the E- prefix
immediately referred to the Worldwide Web. The average
consumer would therefore not be likely to associate this term with
endoscopes.
The Court of Appeal therefore confirmed the INPI’s decision
and ruled that E-SERVICE, that is, the combination of the prefix
E- and the suffix SERVICE (the latter being devoid of distinctive
character), was descriptive of one of the characteristics of the
services claimed and should therefore not be granted protection by
way of trademark registration, under the provisions of Article
L.711-2(b) of the French Intellectual Property Code.289
I.B.4. Geographical Names
The French Intellectual Property Office (INPI) rejected an
application for registration of the mark LES CADETS
D’AQUITAINE. (Aquitaine is a region of France where Bordeaux
287. Karl Storz GMBH & Co. KG v. Director of the French Intellectual Property Office
(INPI), September 9, 2003.
288. LE PETIT ROBERT, édition February 2001.
289. Article L.711-2(b) defines marks that lack distinctive character as “those marks or
denominations which can serve to designate a characteristic of the goods or service, and
notably the kind, quality, quantity, intended purpose, value, geographic origin, or epoch of
production of the goods or provision of service.”
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wines originate; the expression means “the younger sons of
Aquitaine.”) The application covered the following goods in Class
33: “vins d’appellation d’origine provenant de la région Aquitaine”
(“wines originating from the Aquitaine region”). INPI based its
decision on the ground that the registration of a mark containing a
geographical name, in this case the name of the region Aquitaine,
was in contravention of European Union regulations, even though
use of the same would not necessarily deceive the general public.
The applicant appealed the decision before the Court of Appeal
of Bordeaux,290 which referred a question of law to the European
Court of Justice (ECJ). The ECJ ruled that the applicable Article
40 of the relevant regulation291 should be interpreted as “not being
opposed to the use of a mark which includes a geographical
denomination and which is destined for the commercialisation of
wines even though it may lead to the erroneous supposition that
this geographical indication is protected, except where there exists
a real risk that the use of such mark may induce the concerned
consumer to err in some way and, consequently, would affect [his
or her] economic behaviour.”292 The judge should therefore apply
the above interpretation whilst deciding on the merits of the case
before him. The Court of Appeal, however, held that the use of the
mark comprising the geographical location Aquitaine did not fall
within the meaning of Article 40, and it ruled that, as such, the
indication was illicit.
Overturning the appellate court’s decision, the Supreme Court
found that by not determining whether the mark in question was
likely to “induce . . . consumer[s] to err in some way, thus affecting
their economic behaviour,” the Court of Appeal of Bordeaux had
given no legal basis for its decision. The case was consequently
remitted to another Court of Appeal for a rehearing.
I.B.8.a. Similarity of Marks
Following a successful partial opposition based on the French
registration of ORANGINA MOVE,293 the mark MOOVE, filed in
the name of Pinault Printemps Redoute, was allowed to proceed to
registration only for those goods and services that were not
290. Boire-Manoux v. Director of the French Intellectual Property Office (INPI), Court of
Appeal of Bordeaux, October 26, 1998.
291. Council Regulation (EEC) No. 2392/89 of July 24, 1989 (as modified), which
establishes the general regulations for the designation and presentation of wines and
grapes.
292. Decision of October 24, 2002.
293. In the name of Schweppes International Ltd.
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401
identical to those covered by the prior-registered ORANGINA
MOVE.294
Unsuccessful in overturning the French Trade Mark Office’s
decision following an appeal to the Court of Appeal of Paris,295 the
applicant, Pinault Printemps Redoute, appealed to the Supreme
Court on the basis that the Office had misapplied the provisions of
Articles L.713-2 and L.713-3 of the French Intellectual Property
Code.
The Supreme Court296 rejected the appellate court’s finding
that ORANGINA MOVE is a compound mark where the word
MOVE is detachable. Further, it rejected the finding that
ORANGINA is a juxtaposed term not forming a composite word
together with the suffix MOVE. Lastly, having rejected the Court
of Appeal’s finding that the comparison was to be made between
the term MOVE on the one hand and MOOVE on the other, the
Supreme Court held that the mark previously registered,
ORANGINA MOVE, must be considered in its entirety when
compared to the mark applied for, MOOVE.
According to the Supreme Court, by not taking into
consideration all the elements of the respective marks and by
placing greater significance on certain differences that would likely
be insignificant to the average consumer, the Court of Appeal had
given no legal basis for its decision. Furthermore, in relation to the
risk of confusion owing to the similar products covered by each
mark, by comparing MOVE with MOOVE the appellate court had
failed to make a global appreciation of the two marks and had
therefore contravened the French Intellectual Property Code.
The decision of the Court of Appeal of Paris was therefore
declared unlawful, and the matter was sent back to another Court
of Appeal for a rehearing.
I.B.8.b. Similarity of Goods/Services
Institut Jeanne Piaubert, the owner of a trademark
registration for SKINBREAKFAST, covering, inter alia, “cosmetics
and perfumeries” in International Class 3, filed an opposition to
the trademark application for PETIT DEJEUNER DE LA PEAU
claiming protection for similar products in Class 3. The French
Intellectual Property Office (INPI) ruled that there was no risk of
294. The mark’s registration covered “telecommunications communications by computer
transmission of information by communications networks and by Internet.”
295. Pinault Printemps Redoute v. Schweppes International Ltd., Court of Appeal of
Paris, May 31, 2000.
296. Commercial Chamber, November 26, 2003.
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confusion between the two marks at issue, and consequently it
rejected the opposition.297
The opponent appealed the decision before the Court of Appeal
of Paris.298 After ruling that the goods claimed under the
respective marks were indeed similar, the judge proceeded with a
comparison of the two marks by way of a global appreciation. The
judge held that whilst the two marks were not visually or
phonetically similar, they were conceptually similar, especially
when one took into consideration the relevant goods concerned.
More specifically, the average consumer would be likely to perceive
the mark PETIT DEJEUNER DE LA PEAU as the French version
of the mark SKINBREAKFAST, and consequently there was a
great risk of confusion as to the origin of the goods commercialised
under the respective marks. INPI’s decision was therefore
overruled.
I.B.9.a. No Similarity of Marks
The Coca-Cola Company, owner of the trademark “Enjoy
COCA-COLA,” filed an opposition against a trademark application
for ENJOY in the name of Mr. Cadier and claiming protection, for
inter alia, “mineral water, alcoholic and non-alcoholic beverages”
in Classes 5, 32 and 33. The Court of Appeal of Paris299 found that
although there was an overlap in goods, the two marks were
sufficiently dissimilar to be distinguishable, thus confirming a
previous decision of the French Intellectual Property Office.300
The Court of Appeal held that the distinctive and dominating
element of the earlier trademark “Enjoy COCA-COLA” was the
suffix COCA-COLA and not the prefix Enjoy. From a visual point
of view, owing to the fact that COCA-COLA is written in capital
letters and represented in a larger font, it stands out more than
“Enjoy,” where only the first letter, E, is in capitals. From a
conceptual viewpoint, COCA-COLA is a well-known trademark. By
contrast, ENJOY is an English term, which is easily understood by
the average French consumer as an invitation to consume or taste
the beverage in question. Therefore, when it compared the earlier
trademark “Enjoy COCA-COLA,” where the emphasis is on COCA-
297. S.A.S. Institut Jeanne Piaubert v. S.A. Matta, French Trade Mark Office (INPI),
March 20, 2003.
298. S.A.S. Institut Jeanne Piaubert v. Director of the French Intellectual Property Office
(INPI) & S.A. Matta, Court of Appeal of Paris, December 17, 2003.
299. Coca-Cola Co. v. Emmanuel Anaxhaoza Cadier & Decision of the Director of the
French Intellectual Property Office (INPI), 4th Chamber, Section B, Court of Appeal of Paris,
March 28, 2003 (Revue internationale de la propriété industrielle et artistique (RIPLIA) No.
212, 2nd Term 2003, at page 47).
300. Director of the French Intellectual Property Office (INPI), April 23, 2002.
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403
COLA, with the later-filed mark ENJOY, the Court found that
there was no risk of confusion.
I.B.10. Deceptive Marks
When is a label not a label? The French Intellectual Property
Office (INPI)301 refused to register the trademark IP-LABEL for a
wide range of goods and services relating mainly to computer
software, claiming that the mark was deceptive under the
provisions of Article L.711-3(c) of the French Intellectual Property
Code.302 The applicant, S.A.S. IP-LABEL, appealed the decision
before the Court of Appeal of Paris,303 submitting arguments to the
effect that the mark applied for was indeed distinctive as it
consisted of the terms IP, meaning “Internet Protocol” in English,
and LABEL, which is synonymous with “tag.” The applicant
contested INPI’s holding that the average consumer would confuse
the mark at issue with any other label or mark designating the
quality of a product or with any professional body or label relating
to the Internet.
The Court of Appeal rejected the applicant’s plea. It took the
view that the average consumer would be likely to understand the
term LABEL in the usual manner in which it is used in the French
language, and therefore consider the mark applied for, IP-LABEL,
to be “a mark created by a professional body and used in
connection with goods to certify their origins, conditions of
manufacture and quality,” rather than as a “tag,” as that term is
understood in the English language. From this it followed that the
public would immediately be led to believe that the goods and
services claimed under the mark IP-LABEL were of a certain
quality and possessed certain characteristics specifically
guaranteed by a certifying body.
The trademark IP-LABEL was deemed not to be capable of
being viewed as an indivisible whole. Further, the Court of Appeal
held that the suffix LABEL was likely to mislead the consumer as
to the specific characteristics of the goods and services claimed by
the applicant. Accordingly, INPI’s decision to refuse registration of
the mark IP-LABEL on the ground of deceptiveness was upheld.
301. S.A.S. IP-LABEL v. Director of the French Intellectual Property Office (INPI),
December 3, 2002.
302. Article L.711-3(c) states that a mark cannot be adopted as a trade mark if it “is of
such a nature as to deceive the public, notably as regards the nature, quality or geographic
origin of the goods or service.”
303. Court of Appeal of Paris, June 27, 2003.
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III.A.2.b. Similarity of Marks
The appellant, G.I.E. Charme Hotel, held the French
trademark CHARMHOTEL, registered in 1989 for “hotel and
catering services.” The first respondent, Miss G. Mangini, was the
founder of a hotel-restaurant trading (from March 31, 1999) under
the name Hotel Charme Restaurant Macon-Nord; she later
transferred ownership of this establishment to the second
respondent, the company Entremont Hotellerie. The act
complained of consisted in Entremont’s using a neon sign
displaying the words CHARME HOTEL on its business premises.
Unsuccessful in its action for trademark infringement and
unfair competition before the Court of First Instance of Macon,
G.I.E. Charme Hotel appealed to the Court of Appeal of Dijon. In
addition, it sought an injunction against further use by Entremont
of either CHARMHOTEL or CHARME HOTEL.
The respondent argued not only that the appellant’s claims
should be dismissed and the Court of First Instance’s decision
upheld but also that the appellant’s trademark, CHARMHOTEL,
should be cancelled ab initio, that is, from the date of filing, on the
grounds that it was generic and lacked distinctive character.
The Court of Appeal, in considering whether CHARMHOTEL
should be cancelled, held that the joining of the words “charme”
and “hôtel” (both having the same meaning in English as they do
in French) differed from the ordinary way of evoking the known
term, “hôtel de charme.” This, coupled with the fact that the
preposition “de” (“of”) was lacking, rendered the word combination
new and fanciful, and the sign did not directly describe hotel
services or indicate what types of services were offered under the
mark. The CHARMHOTEL mark was, therefore, inherently
distinctive in respect of the services designated.
Regarding the infringement claim, the appellate court held
that when the earlier mark CHARMHOTEL was compared with
the words CHARME HOTEL as depicted on the neon sign, the
absence of the letter “e” in the earlier mark did not render the
respective marks visually distinguishable and, in any case, did not
suffice to compensate for the phonetic identity. There was,
therefore, a high likelihood of confusion, and consequently the
Court ordered that the neon sign be removed. In addition, the
Court of Appeal ordered that the respondent be prevented from
using either CHARMHOTEL or CHARME HOTEL in the future.
The Court did not find for G.I.E. Charme Hotel in its claim for
unfair competition, however, owing to the appellant’s failure to
show that it had been prejudiced by the respondents’ actions.304
304. G.I.E. Charme Hotel v. Mangini & S.A.R.L. Entremont Hotellerie, Court of Appeal
of Dijon, July 8, 2003.
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In 1998, the Nestlé company sought protection for a compound
trademark consisting of a picture of a bar of chocolate on which
were written, at the top, NESTLE and underneath it the words
GRAND CHOCOLATE. At the centre of the bar were written the
word ECLATS (“piece,” “flake”), and, directly underneath it, the
word NOIR (“black,” “dark”). Nestlé’s trademark registration
claimed protection for “chocolates and chocolate products” in
International Class 30.
One of Nestlé’s competitors, Lindt, was using NOIR ECLATS
and LAIT ECLATS in connection with a range of chocolate
products commercialised under the registered trademark
EXCELLENCE. The company had sought, and obtained,
protection for these marks. Nestlé commenced proceedings before
the Court of First Instance of Paris305 on the grounds of trademark
infringement and unfair competition, and asked that Lindt’s two
trademark registrations be nullified. The Court ruled in Nestlé’s
favour, holding that Lindt’s use of NOIR ECLATS and LAIT
ECLATS constituted trademark infringement and was prejudicial
to Nestlé, warranting also a finding of unfair competition. The
Court did not declare Lindt’s registrations invalid, however.
Lindt appealed this decision, arguing that when comparing
the marks at issue the Court should have taken into consideration
not only their similarities but also their visual and predominant
phonetic differences. The company argued, further, that there was
no risk of confusion, as ECLAT was synonymous with “brisure” or
“morceau” (“piece” or “morsel”) and therefore not a fanciful word
when used on its own and in connection with the relevant goods.
As such, no one proprietor should be able to claim exclusive rights
in this term.
The Court of Appeal of Paris306 confirmed the holding of the
Court of First Instance. In its decision, the Court stated that the
term ECLAT in Nestlé’s mark, depicted on its own and in a central
position, distinguished itself from the other elements of which the
compound mark was made up and in fact was the most attractive
element of the trademark. By contrast to its meaning in phrases
such as “aux éclats de cacao” (“with pieces of cocoa”) or “aux éclats
de fèves de cacao” (“with pieces of cocoa beans”), the word ECLAT
in Nestlé’s mark was not descriptive of the product’s ingredients or
of its essential qualities.
Furthermore, and contrary to what was alleged by Lindt, the
Court of Appeal ruled that ECLAT was in fact a fanciful term. It
305. S.A Société des Produits Nestlé & S.A. Nestlé France v. STE Chocolade Fabriken
Lindt & Sprungli & S.A. Lindt & Sprungli (France), Court of First Instance (TGI) of Paris,
July 6, 2001.
306. Court of Appeal of Paris, October 22, 2003.
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found that the marks NOIR ECLATS and LAIT ECLATS, which
do not conform to the usual rules of syntax, were represented on
Lindt’s packaging in a manner that made them stand out. As such,
the Court held, these two marks constituted distinctive elements
immediately understandable by the average consumer.
Consequently, there was a risk of confusion as to the origin of the
respective products. Going further than the Court of First
Instance, the Court of Appeal ruled that Lindt’s trademark
registrations for NOIR ECLATS and LAIT ECLATS should be
nullified, as Nestlé had requested.
III.A.10. Nonuse of Trademark
Based on its semi-figurative trademark MG, filed on April 15,
1988, the company Rover initiated proceedings on the ground of
trademark infringement against the later-filed mark MG in the
name of Mécano Galva. The trademark in the name of Mécano
covered products identical and similar to those covered by the
earlier registration. Mécano argued that as Rover had not used its
trademark MG (fig.) during the five years between March 15, 1988,
and March 15, 1993, this registration should be revoked on the
grounds of nonuse.
The Court of Appeal of Reims307 found for Mécano because
Rover was unable to prove that it had used its mark MG (fig.)
during the specified five-year period.
Overruling the decision of the appellate court, the Supreme
Court held that in not taking into account the fact that Rover had
restarted its production of vehicles in 1995 and cancelling Rover’s
trademark registration for MG (fig.) as of April 15, 1993, the Court
of Appeal was in violation of Article L.714-4 of the French
Intellectual Property Code.308 The Reims Court should have
considered the five years preceding the filing of the cancellation
action, and not just any five-year period. The case was
consequently sent back to another Court of Appeal for a rehearing.
III.A.11.a. No Similarity of Marks
In 1995, Franck Le Calvez wrote a film script for a story of a
young orphaned clownfish who goes in search of his parents. The
script was used as the basis of a children’s book titled Pierrot, le
poisson-clown, published in September 2002. In February 2003,
307. Civil Chamber, 1st Section, October 20, 2001.
308. Article L.714-4 reads: “Serious use of the trademark that started or recommenced
subsequent to the five-year period stated in the previous clause is not an obstacle to said
forfeiture if said use was undertaken within the three months preceding a request for
forfeiture and after the owner thereof became aware of the possibility of a request for
forfeiture.”
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Flaven Scène, to whom Mr. Le Calvez had assigned all his rights,
sought trademark protection for the Pierrot character, which, as
depicted on the front cover of the book, was an orange-coloured fish
with white stripes and a human-like face. At a later date Walt
Disney released an animated film, also about a young clownfish
who is taken away from his parents. The main character, Nemo, is
depicted as a red-coloured fish with white stripes and the smile
and regard of a human being.
Having commenced proceedings before the Court of First
Instance of Paris based on trademark and copyright
infringement,309 the editor, Flaven Scène, sought an interlocutory
injunction to prevent further exploitation by the defendant of the
mark at issue. The judge in the injunction proceedings310 was
therefore faced with the task of assessing the likelihood of
confusion between the earlier figurative trademark, PIERROT, LE
POISSON-CLOWN (PIERROT), and the main character of the film
animation Le Monde de Nemo (NEMO), and possible infringement
in order to determine whether an order for an interlocutory
injunction was warranted before a decision regarding the alleged
trademark and copyright infringement would issue.
In order to decide whether there was a risk of confusion, the
judge made a global appreciation of the two marks at issue by
considering not only the similarities of the two characters but also
their dissimilarities. By so doing the judge departed from accepted
principles laid down in prior Court of First Instance decisions and
focused more on the details of the two characters than on the
overall impressions conveyed by each. Thus, instead of comparing
the general colour of each of the two fishes, the judge considered
the shade of colour. He found that whereas NEMO was a range of
red, PIERROT was a range of orange. Likewise, the bodies of the
two fishes, although similar in shape, were found to be
proportionally different, and their fins were also different in shape
and size—one was striped, the other was not. When assessing the
likelihood of confusion in the eyes of the public, the judge
established that the relevant public was children, who were
regarded as sensible/wary and attentive. He concluded that the
targeted public in this context would therefore be able to
distinguish “its reds from its oranges.”
The request for an interlocutory injunction to prevent the
distribution of edited works and related products carrying the title
of the film Le Monde de Nemo was provisionally rejected pending
the decision in the main proceedings.
309. Decision due shortly.
310. Flaven Scène v. Walt Disney Pictures & Television, Pixar, Walt Disney Co. (France)
& SNC Disney Hatchette édition, Court of First Instance (TGI) of Paris, March 12, 2004.
408
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Mr. X, owner of the semi-figurative trademark CRAMPON,
designating “cheville de fixation en matière plastique” (“plastic
wall-plugs”), launched, together with his exclusive licensee, a
trademark infringement action against the company Laurent.
Laurent was marketing similar products using the slogan
“chevilles universelles à crampons TX” (“universal wall-plugs with
crampons TX”).
The Court of Appeal of Versailles311 ruled in favour of Laurent,
thus confirming that use of the slogan at issue containing the word
“crampon” in the plural constituted trademark infringement under
Article L.713-2 of the French Intellectual Property Code.
The Supreme Court, however, suspended the decision of the
Court of Appeal that use of the slogan “chevilles universelles à
crampons TX” constituted trademark infringement of the mark
CRAMPON. It held that the slogan “universal wall-plugs with
crampons TX” could not be considered a mere reproduction of the
trademark CRAMPON: “A sign is to be considered identical to
another sign when it reproduces, without modification or addition,
all the elements of the previous trademark or, when viewed as a
whole, the mark at issue differs from the earlier trademark only in
insignificant details bound to go unnoticed by the average
consumer.” The case was therefore remitted to the Court of Appeal
for a rehearing.
III.A.12. Lack of Distinctiveness
The Polo Lauren Co. LP (Polo Lauren) is the owner of several
trademarks that include the term “polo,” including the semifigurative mark POLO and the word mark POLO RALPH
LAUREN. Polo Lauren initiated trademark infringement
proceedings against Mr. X, who is the owner of the trademarks
POLO PASSION, POLO LIFE and POLO LINE. On appeal before
the Court of Appeal of Versailles, the judge held that the term
“polo” was not distinctive in respect of clothing articles, and
therefore concluded that there should be no risk of confusion
between POLO LIFE and POLO LINE on the one hand and Polo
Lauren’s earlier mark POLO on the other, as the latter mark
included a figurative element. He ruled that only the trademark
POLO PASSION, in the name of Mr. X, should be cancelled.312
Not satisfied with this decision, Polo Lauren appealed to the
Supreme Court in order to have the remaining two trademarks
311. Mr. X v. Société Lauren, Court of Appeal of Versailles (12th Chamber, Section 2),
April 4, 2004.
312. Polo Lauren Co. LP v. Mr. X, Court of Appeal of Paris (4th Civil Chamber, Section
B), October 27, 2000.
Vol. 95 TMR
409
cancelled. Polo Lauren argued not only that the two marks in
question were deceptive (because they were not used in connection
with polo shirts”) but also that the Court of Appeal had failed to
make a proper comparison of the respective marks by way of a
global appreciation of all the elements. In addition, Polo Lauren
argued that the term “polo” does not lose its individuality or its
distinctive character when used with the term “passion,” “life” or
“line,” and that, consequently, all three trademarks, POLO
PASSION, POLO LIFE and POLO LINE, infringed the earlier
trademark registration for POLO RALPH LAUREN.
The Supreme Court held that although the marks at issue
were not identical with the earlier trademarks, nor reproductions
containing all the constituent elements of those earlier marks, by
not considering whether, when viewed as a whole, the respective
marks differed in a manner so insignificant that these differences
could pass unnoticed by the eyes of the average consumer, the
Court of Appeal of Versailles had not given a legal basis for its
decision. The case was therefore remitted to a different Court of
Appeal for a rehearing.313
III.A.18. Equitable Defenses
The company SPCEA,314 having been unsuccessful in its
attempt to obtain an interlocutory injunction against the alleged
use by the organisation Greenpeace of its trademarks A (stylized)
and A AREVA, was hopeful that the Court of First Instance of
Paris315 would find the defendant liable for trademark
infringement under Articles L.713-2 and L.713-3 of the French
Intellectual Property Code.316
Greenpeace, a campaigning organisation whose aim is to
expose environmental problems, had been reproducing on its
websites www.greenpeace.fr and www.greenpeace.nz the plaintiff’s
313. Polo Lauren Co. LP v. Mr. X, Supreme Court (Commercial Chamber), March 31,
2004.
314. S.A. Société des Participations du Commissariat à L’Energie Atomique (SPCEA),
trading as “AREVA.”
315. SPCEA v. Greenpeace, France & Greenpeace, New Zealand, Court of First Instance
of Paris, July 9, 2004.
316. Article L.713-2 prohibits the following, “except when authorised by the proprietor of
a trademark: (a) reproduction, use or affixing of a mark even followed by words such as:
‘formula,’ ‘made like,’ ‘system,’ ‘imitation,’ ‘based on,’ ‘method,’ for goods or services that are
identical to those designated in the registration; (b) removal or modification of a trademark
applied in its normal fashion.” Article L.713-3 prohibits the following, “except when
authorised by the proprietor, if a risk of confusion in the mind of the public can arise: (a)
from reproduction, use or affixing of a trademark as well as the use of a reproduced
trademark in respect of goods or services that are similar to those designated in the
registration; (b) copying of a trademark and use of a copied trademark in connection with
goods or services that are identical or similar to those designated in the registration.”
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trademarks in association with the death’s head symbol (the skull
and crossbones). The websites also featured the stylised letter A,
as depicted in the plaintiff’s AREVA logo, placed on a fish and the
slogan STOP PLUTONIUM – L’ARRET VA DE SOI, where the
letter A was stylised in the same manner as in the AREVA logo.
The plaintiff argued that such use constituted infringement under
Articles L.713-2 and L.713-3 and that it denigrated SPCEA’s
trademarks and caused substantial damage and prejudice to the
company. It argued, further, that Greenpeace’s actions were far
beyond what is defined as freedom of expression under Article
1382 of the French Civil Code and that this defense should be
rejected.
The Court found that the use complained of on Greenpeace’s
websites did not amount to an identical reproduction of the
trademarks in question. Furthermore, Greenpeace’s clear
denigration of the activities of SPCEA and its effect on the
environment and the fact that it made no effort to hide the author
of these messages, coupled with the fact that Greenpeace by its
very nature does not promote or sell nuclear energy products or
services, meant that there was no risk of confusion in the eyes of
the consumer. The plaintiff’s claim for trademark infringement
under Articles L.713-2 and L.713-3 was, therefore, dismissed.
In applying Article 1382 of the French Civil Code, however,
the Court ruled that Greenpeace had in fact exceeded the limits of
freedom of expression and could have used other ways to illustrate
its position and alert the public to what in its opinion were the
possible dangers of adopting nuclear energy. The acts complained
of were therefore held to be in contravention of Article 1382, and
Greenpeace was ordered to pay damages and to cease use of the
marks at issue.
III.B.1. Passing Off
Danone launched a drink under the trademark ACTIMEL317 in
1996 and a second flavour of the drink bearing the same mark in
1999. Shortly afterward, the company Bridel launched two
identical drink products under the marks B’A FORCE
ÉQUILIBRE and B’A FORCE VITALITÉ. Danone promptly
commenced proceedings against Bridel before the Court of Appeal
of Paris,318 claiming unfair competition and parasitism. The Court
found that Bridel was commercialising two identical products
using packaging that recaptured all the characteristic elements of
the ACTIMEL product. Consequently, the appellate court upheld
Danone’s claims.
317. ACTIMEL—a fermented milk–based drink.
318. Court of Appeal of Paris, January 2, 2002.
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Bridel appealed this decision before the Supreme Court,319
putting forward arguments to the effect that the commercialisation
of its two products did not constitute acts of unfair competition or
parasitism because the plaintiff had not demonstrated that
Bridel’s actions had caused actual confusion or a risk of confusion.
Bridel also argued that any loss of sales or other damages suffered
by Danone could be due only in part to the existence of Bridal’s
products on the market. Other drink products, presented in similar
packaging, were also sold in the relevant territory, and it was
therefore up to Danone to pursue all companies using packaging
that recaptured the various characteristic elements synonymous
with the ACTIMEL drink. Bridel argued that the Court of Appeal
had failed to make a proper assessment of the extent to which
Bridel’s commercialisation of its products had damaged Danone.
Rejecting Bridel’s appeal, the Supreme Court judge held that,
“far from being content with recapturing one or two characteristic
elements of the ACTIMEL packaging, Bridel had taken all the
characteristic elements of the packaging, creating an illusion, in
the eyes of the public, that its products were linked with those of
Danone; the adoption of these characteristic elements, forcefully
evocative of the ACTIMEL product, was unnecessary, and has
diluted the exclusive rights attached to the elements identifying
Danone’s products.”
The Court of Appeal’s decision was upheld in all instances,
and Bridel was ordered to pay damages to Danone.
III.C. Injunctions and Damages
Microsoft Corp., owner of a registration for the trademark
WINDOWS, filed in 1992 and covering goods in Class 9, inter alia,
“software programmes,” commenced proceedings in December 2003
against Lindows.com (and Hermitage Solution) on the grounds of
trademark infringement, unfair competition and parasitism. The
acts complained of consisted in the defendants’ using a number of
denominations, including LINDOWS and LINDOWS OFFICE, to
distinguish software products. Microsoft also sought an
interlocutory injunction under Article L.716-6 of the French
Intellectual Property Code320 against Lindows.com’s use of the
denomination LINDOWS (in any form) on the Internet.
By way of defence in the injunction proceedings, Lindows.com
argued that Microsoft had allowed too much time to elapse before
319. Supreme Court, March 17, 2004.
320. L.716-6 reads: “Application for an interlocutory injunction . . . is accepted only if the
action appears serious and well-founded and was initiated within a short period of time of
the trade mark owner or the beneficiary of exclusive rights thereto becoming aware of the
facts on which it is based.” [Emphasis added.]
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launching its main action and that therefore it was now too late to
obtain an injunction. Accordingly, it argued, Microsoft’s request
should not be granted. Lindows.com also put forward arguments to
the effect that the WINDOWS mark was generic in respect of
computer goods.
The defendants were able to show, by having recourse to the
ongoing litigation proceedings in the United States between the
two companies concerning the same trademarks, that Microsoft
had been aware of their offending actions since 2002. The Court of
First Instance of Paris held that Microsoft’s issuing of proceedings
over a year later (i.e., in December 2003) did not constitute “a short
period of time” within the meaning of Article L.716-6, and it
therefore refused Microsoft’s request for an interlocutory
injunction.321
Apart from Article L.716-6, no other ground was raised by
Microsoft, and the judge therefore could not comment further on
the alleged acts of trademark infringement, unfair competition and
parasitism.
III.F.5. Cancellation
Mr. X is the owner of the trademarks FASHION TELEVISION
and TELEVISION FASHION NETWORK, dated April 3, 1997,
and 7, 1997, respectively. On April 21, 1998, Mr. X also sought
protection for the trademark FASHION TV, to be used in
connection with the launch of a new series of themed TV programs
on fashion. When it became aware of these trademarks, Chum, a
Canadian producer of TV programs dedicated to fashion and
televised in a number of countries around the world, including
France, sought to have the trademarks cancelled. Chum also
claimed that Mr. X’s actions amounted to unfair competition and
parasitism, and it requested an injunction against further use and
damages.
The Court of Appeal of Paris ruled in favour of Mr. X,322 and
Chum consequently filed an appeal against this decision. The
Supreme Court323 concluded that although the word “fashion” was
not part of the everyday French language, it was understood by a
large part of the French public as designating “la mode” (i.e.,
“fashion” in French). Chum therefore could not claim exclusive
rights in the term “fashion television,” nor should Mr. X’s
trademark registrations be cancelled as they were not held to have
321. Microsoft Corp. v. Lindows.com, Inc., Court of First Instance (TGI) of Paris, April 7,
2004.
322. Chum v. Mr. X & Fashion TV, Court of Appeal of Paris, May 19, 2000.
323. Chum v. Mr. X & Fashion TV, Supreme Court, January 28, 2003.
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413
been filed in bad faith in the absence of evidence that Chum held
earlier rights.
The Supreme Court also dismissed Chum’s claims based on
unfair competition and parasitism. It held that Chum had not
shown that Mr. X was aware of the TV program emanating from
Canada at the time he sought protection for the trademarks in
question; on the contrary, it appeared that Chum had in fact
started preparations for its program only after the launch of Mr.
X’s “Fashion TV” series.
The company Bardinet, owner of a trademark registration for
PINA COLADA filed in 1974 and covering alcoholic beverages
(except beer) in International Class 33, initiated infringement
proceedings against the company Ego Fruit following Ego Fruit’s
commercialisation of a beverage under the mark/slogan
COCKTAIL OF PIGNA COLADA. In response, the defendant filed
a cancellation action against Bardinet’s trademark registration for
PINA COLADA, arguing that this term had become generic.
The Court of Appeal of Paris ruled in favour of Ego Fruit in
the cancellation proceedings in spite of the fact that Bardinet was
able to show that it had acted in previous cases to protect its mark,
which had resulted in the withdrawal of several trademarks
containing, or consisting of, the mark PINA COLADA.324
Bardinet appealed the decision before the Supreme Court on
the ground that cancellation should not have been ordered by the
Court of Appeal, since the appellate court had recognised that
Bardinet had acted to protect its trademark rights.
The Supreme Court underlined in its decision that it was the
responsibility of the Court of Appeal to assess any actions taken by
Bardinet to protect its rights in the mark PINA COLADA and to
decide whether this mark has become a generic term commonly
used in the course of trade in connection with the relevant goods.
In the present case, the actions taken by Bardinet to protect its
trademark rights did not suffice to avoid cancellation of its
trademark registration. It was found that the mark PINA
COLADA was used in recipe books, on websites and on the menus
in bars and restaurants to designate alcoholic cocktails; owing to
Bardinet’s passive tolerance of this generic use, the Supreme Court
concluded that the Court of Appeal had justly ruled that the sign
has indeed become generic.325
324. Ego Fruit v. Bardinet, Court of Appeal of Paris (4th Chamber, Section B), October
19, 2001.
325. Ego Fruit v. Bardinet, Supreme Court (Commercial Chamber), April 28, 2004.
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III.J. Gray Marketing
The company Reebok, the proprietor of the trademarks
REEBOK, VECTOR and STRIPECHECK, covering, inter alia,
“footwear” in Class 25, ordered the seizure of a number of sports
shoes carrying these three marks and offered for sale in a shop in
France. Proceedings were brought before the Court of First
Instance of Montpelier326 on the ground of trademark
infringement, owing to unauthorised use of Reebok’s trademarks
by the respondents. The first respondent, Transparence, had been
selling in its shop outlet shoes bearing the three trademarks at
issue, whilst the second respondent, Ms. Peyrical, had furnished
the first respondent with the goods in question. Both respondents
were held to be liable for trademark infringement under Articles
L.713-2327 and L.716-1328 of the French Intellectual Property Code
and were found to have committed acts amounting to unfair
competition vis-à-vis Reebok and its authorised distributor. All the
illicit shoes were therefore delivered up to Reebok for destruction,
and both respondents were ordered to pay damages to Reebok.
The respondents appealed to the Court of Appeal of
Montpelier, claiming exhaustion of Reebok’s trademark rights
under Article L.713-4 of the Code.329 In response to the plaintiffs’
claim of unfair competition owing to the “cut-down” sale price of
the shoes, the respondents argued that there existed no
distribution agreement network for authorised distributors in
France and that, consequently, the respondents’ sale of the shoes
on French territory did not prejudice any members of such a
network.
The responsibility to prove that Reebok had indeed consented
to the placing of the particular shoes on the EC market fell on the
respondents, which were not able to substantiate this allegation.
The Court of Appeal therefore upheld the decision of the Court of
First Instance on this point and confirmed that the respondents’
actions amounted to trademark infringement. However, it
326. Reebok International Ltd. & S.A. Reebok France v. S.A.R.L. Transparence & Ms.
Peyrical, Court of First Instance of Narbonne, June 27, 2002.
327. Article L.713-2 forbids the following, “except when authorised by the proprietor of a
trademark: (a) reproduction, use or affixing of a mark even followed by words such as:
‘formula,’ ‘made like,’ ‘system,’ ‘imitation,’ ‘based on,’ ‘method,’ as [well as] the use of a
reproduced trademark for goods or services that are identical to those designated in the
registration; (b) removal or modification of a trademark applied in its normal fashion.”
328. Under Article L.716-1, trespass on the rights of the trade mark owner constitutes
infringement, rendering the author thereof civilly liable. Trespass on trademark rights is
constituted by acts forbidden by Articles L.713-2, L.713-3 and L.713-4 of the Code.
329. Article L.713-4 states: “Rights conferred by a trademark do not permit the
proprietor thereof to forbid the use of the said trademark in respect of goods that have been
put on the market in the European Community or the European Free Trade Association
under the mark in question by the proprietor thereof or with his consent.”
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415
overturned the lower court’s decision in relation to the finding of
unfair competition, concluding that the plaintiff had not proved
that its shoes were distributed in France through an intermediary
that is part of a selective distribution network and that,
consequently, members of this network would have been
prejudiced by the respondents’ actions.
V.A. Domain Names
The French sports brand and company name DECATHLON
formed the basis of proceedings brought before the Court of First
Instance of Paris, in which S.A. Decathlon, the owner of the
trademark in question,330 sought to prevent unauthorised use of its
trademark and company name on the website www.décathlon.pl.
S.A. Decathlon simultaneously requested the transfer to it of the
domain name, which had been registered in Poland.
The website featured caricature drawings of sportsmen and
included references to the consumption of alcohol. The plaintiff
submitted arguments to the effect that the respondents’331 use of
the website constituted trademark infringement under Article
L.713-2 of the French Intellectual Property Code 332 and unlawful
imitation of its mark to designate identical or similar goods under
Article L.713-3.333 It claimed, further, that its mark was well
known and that the respondents’ use of the mark at issue was
likely to cause damage, under the provisions of Article L.713-5 of
the Code.334 S.A. Decathlon also alleged misappropriation of its
company name and mark, DECATHLON.
330. S.A. Decathlon, France, holder of the websites www.decathlon.com and
www.decathlon.fr and various registrations for trade marks consisting of, and containing,
the word DECATHLON.
331. S.A. Decathlon v. Valley SC, Tomasz, Aleksander & Tomasz, Court of First Instance
of Paris, July 8, 2003.
332. Article L.713-2 forbids the following, “except when authorised by the proprietor of a
trademark: (a) reproduction, use or affixing of a mark even followed by words such as:
‘formula,’ ‘made like,’ ‘system,’ ‘imitation,’ ‘based on,’ ‘method,’ as [well as] the use of a
reproduced trademark for goods or services that are identical to those designated in the
registration; (b) removal or modification of a trademark applied in its normal fashion.”
333. Article L.713-3 forbids the following, “except when authorised by the proprietor, if a
risk of confusion in the mind of the public can arise: (a) from reproduction, use or affixing of
a trademark as well as the use of a reproduced trademark in respect of goods or services
that are similar to those designated in the registration; (b) copying of a trademark and use
of a copied trademark in connection with goods or services that are identical or similar to
those designated in the registration.”
334. Article L.713-5 reads: “The use of a trademark that enjoys a reputation for goods or
services that are not similar to those designated in the registration of said trademark
renders the author thereof civilly responsible if the nature of such use leads it to cause
prejudice to the said proprietor or if such use constitutes unjustified beneficial usage of said
mark.”
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The Court held that since the respondents were not offering
any goods or services for sale, there was no trademark
infringement under Articles L.713-2 and L713-3. However, it found
that DECATHLON is a well-known mark and that the existence of
the images appearing on the website denigrating the practice of
sport tarnished S.A. Decathlon’s image, which is based on the
value and benefits of sports practice. This, coupled with the fact
that the respondents had, prior to the bringing of the proceedings,
offered to sell the domain name www.decathlon.pl to the plaintiff
for the sum of 20,000 Euros, contributed to the finding that the
respondents’ use of the mark was unjustified and unlawful under
the provisions of Article L.713-5.
The respondents were ordered to pay damages to the plaintiff
and to transfer to the plaintiff, with immediate effect, the domain
name and website www.decathlon.pl.
Exacod, a company founded in 1998 and active in the field of
inventory organisation of companies, is the proprietor of the semifigurative trademark EXACOD, dated June 3, 1999, and covering,
inter alia, “computer data processing, business management and
advice, computer file management and computer programming” in
Classes 16, 35, 36 and 42. Exacod initiated an action based on its
earlier trademark rights and earlier rights in the company name
against the registration of the website www.exacod.com by
L’Inventoriste for services identical or similar to those provided by
the plaintiff and covered by the plaintiff’s EXACOD registration.
The Court of Appeal of Paris,335 upholding the Court of First
Instance’s decision, stated that the domain name was indeed
phonetically similar to the plaintiff’s mark and, even though the
registration of the domain name alone did not constitute
trademark infringement, exploitation of the website (linked to
L’Inventoriste’s website) for similar services to the protected mark
did. The Court also held that the defendant’s actions were
effectively depriving the plaintiff from developing its activities in
its field and that this illicit misappropriation of the plaintiff’s
company name amounted to unfair competition. Accordingly, the
appeal by L’Inventoriste was dismissed.
The French company Sneep had been trading under the name
L’ARGUS and had published the French automobile magazine
L'Argus de L'Automobile et des Locomotions since 1927. The
company had been using the trade name L’ARGUS in a continuous
manner in various contexts, including the Internet.
335. S.A. Exacod v. S.A. L’Inventoriste, Court of Appeal of Paris, May 7, 2003.
Vol. 95 TMR
417
In 2000, Sneep learned that the domain name argus.fr was
already registered in the name of News Morning, which was using
it as a website under construction, linked to the website
www.emanitoo.com, registered in the name of E Manitoo
Company. News Morning and E Manitoo Company had also
registered the term ARGUS as a trade name in the French
Company Register. Sneep launched an action against News
Morning and E Manitoo Company, requesting the transfer to it of
the domain name www.argus.fr and the cancellation of the
tradename ARGUS. It also requested damages for the prejudice
suffered owing to the respondents’ acts.
The Trade Tribunal336 rejected Sneep’s claims. It held that
when E Mantoo Company registered the domain name in 2002, the
term ARGUS had already lost its initial distinctive character; the
term ARGUS had over the years become part of the current French
language and is nowadays perceived as a generic word by the
French public. The Tribunal also considered that the registration
of the domain name www.argus.fr was in line with the
respondents’ other activities and, owing to the difference in goods
and services offered by the respective parties, there was no risk of
confusion. Furthermore, the Court pointed out that ARGUS is
defined in two French dictionaries as a publication providing
specialised information,337 and it made reference to several earlier
decisions, one being a decision of the Court of Appeal of Paris338 in
which it was held that the term ARGUS did not constitute a
distinctive element of the composite trademark L’ARGUS DE
L’AUTOMOBILE ET DES LOCOMOTIONS (THE ARGUS OF
AUTOMOBILES AND MEANS OF TRANSPORTATION).
The French travel agencies Viaticum and Lutéciel are the
owners of several trademarks and domain names comprising the
terms BOURSE DES VOYAGES (“travel exchange”) and/or
BOURSE DES VOLS (“flight exchange”). Viaticum and Lutéciel
initiated proceedings against the Internet company Google
(France) after Google refused to stop selling the word combinations
“bourse de vol” and “bourse des voyages” as so-called metatags
through its “Adwords” and “Premium Sponsorship” databases.
The two travel agencies discovered that when key words
relating to traveling were entered on the Google search engine, the
336. Nouvelle d’Études d’Éditions et de Publicité S.A. (Sneep) & Argus Interactive S.A. v.
News Morning S.A.R.L. & E Manitoo Co. S.A.S., Trade Tribunal of Paris, 21st Chamber,
April 25, 2003 (Revue Internationale de la Propriété Industrielle et Artistique (RIPLIA) No.
212, 2nd Term 2003, at page 25).
337. Larousse of 1960 and Larousse of 1965.
338. Nouvelle d’Études d’Éditions et de Publicité S.A. (Sneep) v. Editor of the Magazine
Camins Magazine, March 24, 1986,
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term BOURSE DE VOL or BOURSE DES VOYAGES was
displayed and when clicked upon would lead to websites owned by
competitors of the plaintiff companies.
In ruling against Google (France), the Court of First
Instance339 stated: “It is not the use of the mark in the search
engine database that is illicit, but rather Google’s commercial
exploitation making a profit from third party publicity services.”
Google (France) was ordered by the Court to pay substantial
damages to the plaintiff companies and to cease using the
trademarks at issue.
GERMANY
I.B.4. Geographical Names
The German Patent and Trademark Office refused
registration of the trademark MISSOURI, the name of an
American state, for goods in International Class 12, inter alia,
“vehicles and parts thereof,” and for services in International Class
37, inter alia, “preparing and maintenance of vehicles.” The Office
held that the MISSOURI mark had to be rejected because of a
need to keep this geographical denomination available for common
use under Section 8(2)2 of the German Trademark Law.
Upon appeal by the applicant, the German Federal Patent
Court reversed the decision of the Patent and Trademark Office
and denied a need to keep the trademark MISSOURI available for
common use. According to the Court, registration of geographical
denominations as trademarks cannot be denied on principle, but
rather must be evaluated on a case by case bases relating to the
specific goods and/or services covered. In that regard, it is not
sufficient to simply refer to industrial enterprises that produce the
same goods as the applicant does and that are located in the
respective city, region, etc., that is the subject of the trademark
application. To the contrary, the examining authority must be
certain that the trade circles and consumers concerned will
identify the descriptive meaning of the geographical denomination.
With respect to the automotive industry, the Court found that
it is customary to use geographical denominations as trademarks,
which are not understood as an indication as to the geographical
source of the labeled products. Instead, such designations are
understood in the automotive sector as mere fantasy words that
transfer a certain image or flair but do not convey any information
as to the source of the vehicles.
339. Viaticum & Luteciel v. Google France, Court of First Instance of Nanterre, October
13, 2003.
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419
As a result, the German Federal Patent Court found that
there was no common need to keep the word mark MISSOURI
available for common use for vehicles, parts thereof and related
services in the sense of Section 8(2)2 of the German Trademark
Law, and therefore it lifted the decision of the German Patent and
Trademark Office.340
I.B.22. Distinctiveness
The German Patent and Trademark Office refused
registration of the trademark FITNESS COMPANY for goods and
services in International Classes 18, 25, 28 and 41, inter alia,
“backpacks; sportswear, gymnastic and sporting articles [included
in Class 28]; operation of a fitness studio, operation of sports
facilities.” The Office held that the trademark was not distinctive
because “fitness company” was a commonly descriptive term for
these goods and services.
Upon appeal by the applicant, the German Federal Patent
Court partially rejected the decision of the Patent and Trademark
Office with respect to the goods “backpacks; sportswear, gymnastic
and sporting articles” in International Classes 18, 25 and 28.341
The Court held that with respect to these goods “fitness company”
was not merely a descriptive term in the sense of Section 8(2)2 of
the German Trademark Law. Although “fitness company” could be
used generally to characterize undertakings that produce goods for
sports activities, the Court nevertheless denied that a term
describing a commercial undertaking is also descriptive of the
products originating from such undertaking. The Court did not
concur that the trade circles and consumers concerned would
assume that products labeled with the trademark FITNESS
COMPANY originated from a fitness studio, etc. Further, it denied
that the relevant trade circles and consumers would assume that
clothing articles labeled with the FITNESS COMPANY mark were
designed especially for use in fitness studios.
With respect to the services “operation of a fitness studio,
operation of sports facilities,” however, the Court confirmed the
decision of the German Patent and Trademark Office and
concurred with the Office’s opinion that FITNESS COMPANY was
merely descriptive of an undertaking that operates a fitness
studio. An Internet search had revealed that the term “fitness
company” was often used in the industry as a descriptive term in
connection with fitness studios. The German Federal Patent Court
340. German Federal Patent Court, Decision of January 14, 2004—28 W (pat) 266/03
(MISSOURI) (not yet published).
341. German Federal Patent Court, Decision of February 4, 2004—32 W (pat) 393/02
(FITNESS COMPANY) (not yet published).
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therefore partially refused the registration of the trademark
FITNESS COMPANY for the services “operation of a fitness
studio, operation of sports facilities,” in accordance with
Section 8(2)2 of the German Trademark Law.
Registration of the trademark MINUTES & MORE for various
telecommunications goods and services in International Classes 9
and 38 was refused by the German Patent and Trademark Office.
The Office held that MINUTES & MORE was not distinctive and
so should be kept free for common use.
Upon appeal by the applicant, the German Federal Patent
Court confirmed the decision. The Court found that charges for
telecommunication industry services were usually billed in
relation to minutes, and that the element “& MORE” was often
used in advertising to promote a comprehensive offer. Therefore,
the Court assumed that MINUTES & MORE would be understood
merely as a descriptive term by the relevant trade circles and
consumers.
As a result, the Court determined that MINUTES & MORE
was devoid of any distinctive character, and held that the
trademark was not registrable, in accordance with Section 8(2)1 of
the German Trademark Law.342
The German Patent and Trademark Office refused
registration of the trademark WELLNESS COTTON for “clothing”
in International Class 25. The Office held that WELLNESS
COTTON for Class 25 products was devoid of any distinctive
character and had to be kept free for common use, in accordance
with Sections 8(2)1 and 8(2)2 of the German Trademark Law.
Upon appeal by the applicant, the German Federal Patent
Court confirmed the decision of the Patent and Trademark Office.
The Court determined that WELLNESS COTTON conveys only
the inherent meaning that the products are manufactured with a
cotton material for a “well feeling.”343 Such a descriptive term, the
Court ruled, is devoid of any distinctive character and has to be
kept available for common use. In addition, noted the Court, the
combination of purely descriptive terms in a trademark usually
results merely in a descriptive combination. Therefore,
registrability cannot be assumed even if the word combination is a
newly created term that cannot be identified in dictionaries, etc.
342. German Federal Patent Court, Decision of May 12, 2004—29 W (pat) 227/01
(MINUTES & MORE) (not yet published).
343. German Federal Patent Court, Decision of March 2, 2004—27 W (pat) 254/03
(WELLNESS COTTON) (not yet published).
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III.A.2.b. Similarity of Marks
A recurring theme in trademark similarity cases is the
significance to be attributed to the situation where one of two
colliding marks is a part of the other, more complex mark.
Recently the German Federal Supreme Court partly confirmed
and partly revised its standards for deciding this issue. In the case
in question, the senior mark, CITY PLUS, was wholly integrated
into the junior mark, D2–BESTCITYPLUS.344 Both trademark
owners were using their marks for telephone tariffs.
In general, similarity is found only if the identical component
“dominates” the more complex mark. Such domination is made
possible if the component is more distinctive than the rest of the
mark. Descriptive or associative components are normally not
dominant.
By these standards, CITY PLUS would normally have to be
considered a weak component because it is understood as an
advantageous tariff for city connections. In this particular case,
however, the owner of the CITY PLUS mark had alleged an
increase of distinctiveness by notoriety. This issue had not been
considered by the court of appeals, which had denied similarity of
the marks. The Federal Supreme Court disagreed, stating that if
the senior mark CITY PLUS had achieved a significant degree of
distinctiveness, this would not only enhance its scope of protection
in general but also contribute to the similarity with D2–
BESTCITYPLUS, because the consumer would attribute greater
importance to this component if he or she encountered it within
the more complex mark of a competitor.
In a different case, the German Federal Supreme Court found
that the notoriety of a senior mark may also have significance for
acoustic similarity insofar as it may influence the pronunciation of
a junior mark.345 Similarity was found between the senior mark TONLINE and the junior mark DONLINE, because T-ONLINE is a
well-known mark and because it is customary to pronounce
“Online” and the preceding capital letter (“T” or “D”) separately.
In another case,346 the German Federal Supreme Court dealt
with the question of whether absolute grounds for refusal, such as
mere descriptiveness or nondistinctiveness, can be used against
the plaintiff’s mark in an infringement lawsuit. In this case, the
344. German Federal Supreme Court, Decision of March 13, 2003, MarkenR 385 (2003).
345. German German Federal Supreme Court, Decision of November 27, 2003, MarkenR
76 (2004).
346. German German Federal Supreme Court, Decision of August 28, 2003, MarkenR 32
(2004).
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plaintiff, relying on its word-picture registration for KINDER
(“children”) for chocolate, attacked the junior mark KINDER
KRAM (“children’s stuff”), which had been registered and used for
sweets. The court dismissed the complaint holding that the word
KINDER should not have been registered in the first place.
Under German law, as long as a mark is registered, a court is
bound to its protection. However, according to Section 22 I 2 of the
Trademark Act, the defendant in an infringement lawsuit may
argue that the senior mark could have been revoked on the basis of
absolute grounds for refusal when its own (junior) mark was
published. The German Federal Supreme Court has construed the
wording of this provision restrictively and has prohibited the
examination of absolute grounds for refusal by the court in an
infringement lawsuit, except when the motion for revocation could
no longer have been brought before the German Patent and
Trademark Office, which in principle is competent to deal with
revocation on the basis of absolute grounds for refusal.
According to Section 50 II of the Trademark Act, a motion for
revocation based on absolute grounds for refusal must be
dismissed if (1) the mark has been registered for more than ten
years or (2) the ground for revocation does not exist any more
when a decision about the motion is reached (e.g., when a mark
had been wrongly registered in spite of lacking distinctiveness, but
had acquired secondary meaning in the meantime). Only in such
cases may the defendant rely on absolute grounds for refusal in the
infringement lawsuit; in all other cases the defendant must bring
its motion for revocation before the German Patent and
Trademark Office. If it does so, the infringement court may
suspend the litigation until the Patent and Trademark Office has
rendered its decision.
As regards the scope of protection to be afforded a mark
targeting a consumer group with a descriptive word (in this case,
KINDER = “children”), the German Federal Supreme Court made
clear that this mark owed its distinctiveness only to the different
colors in the words (“K” in red, “Inder” in blue). A collision with
regard to the unprotected word component KINDER alone does not
create danger of confusion. The word kinder as such may be
protected only after acquiring secondary meaning. Because of the
plainly descriptive meaning of kinder, the court would require a
degree of notoriety close to 100 percent within the respective
consumer circles.
Danger of confusion with the junior mark KINDER KRAM
was denied both with regard to the word-picture mark KINDER
and with regard to the word mark KINDERSCHOKOLADE
(“children’s chocolate”). In both senior marks, the word component
KINDER was found to be not distinctive, and therefore could not
dominate their overall impression.
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III.B.7. Color
In two decisions in September 2003, Farbmarkenverletzung
I347 and Farbmarkenverletzung II,348 the German Federal Supreme
Court dealt with the scope of protection for trademarks consisting
of a specific color only. A specifically defined color called
MAGENTA had been registered as a Community Trademark for
telephone services, and had acquired secondary meaning in
Germany. A competitor had used a very similar color as the only
color component in a black-and-white advertising picture.
The plaintiff had moved to prohibit the use of its color “in a
trademark fashion.” The German Federal Supreme Court found
this motion to be inadmissible, as there are many lawful ways of
using a protected color. The limitation implied by the phrase “in a
trademark fashion” is still too unspecific, and a judgment
containing these words would be too vague. But in
Farbmarkenverletzung II it was held permissible to move for the
prohibition of an “eyecatching” use of the color MAGENTA.
Consequently, the plaintiff had to include in its motions the
specific advertising to which it objected.
Whether the use of a specific color in advertising identifies the
advertised product or service as originating from a specific
company depends on the expectations of the average consumer.
Normally, he or she will look at a color as a design element, not as
an indication as to source. In the first case, the court found a
trademark infringement because the color MAGENTA is both
unusual and well known in Germany (awareness degree of 60%
with all consumers of telephone services). Moreover, this color had
been used as the only color in the advertising of the competitor.
Still, the question whether the use of this color is a trademark
infringement deserves meticulous examination of the specific
advertising, including all other components.
The German Federal Supreme Court also referred to the
Libertel case,349 decided by the European Court of Justice (ECJ). In
Libertel the ECJ had held that a color as such must generally be
kept available for all competitors and that it has an inherent
distinctiveness only under exceptional circumstances and only
with regard to specific goods or services. Regardless, the German
Federal Supreme Court did not find these restrictive standards to
347. German German Federal Supreme Court, Decision of September 4, 2003, MarkenR
62 (2004).
348. German German Federal Supreme Court, Decision of September 4, 2003, MarkenR
66 (2004).
349. German Libertel Groep BV v. Benelux-Merkenbureau, No. C-104/01, 2003 E.C.R. 13793 (ECJ May 6, 2003).
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be obstacles and granted injunctions against advertising using the
color MAGENTA.
GREECE
I.B.3. Not Merely Descriptive Terms
According to the Athens Administrative Court of First
Instance the word mark TECHNOLOGY THAT YIELDS,350 as well
as the Greek version thereof (Η ΤΕΧΝΟΛΟΓΙΑ ΠΟΥ
ΑΠΟ∆Ι∆ΕΙ),351 used by the company Pioneer Hi-Bred
International, Inc. to cover goods in Class 31, has no particular
meaning for the average Greek consumer and does not describe a
particular good, or kind or quality of good. Thus, it cannot be
considered as lacking distinguishing character.
I.B.4. Geographical Names
A.G. Combi B.V. (“Combi”) applied to register the trademark
UNITED STEAKS OF AMERICA for meat, fish, poultry and game,
meat extracts, preserved meat, fish, poultry and game in Class 29.
The Administrative Trademark Committee352 rejected the
application on the grounds that it describes the goods it is
intended to cover and that it may cause confusion to consumers
regarding the origin of the covered goods because consumers may
think that the covered goods originate from the USA, whereas
Combi is a Dutch company.
Upon recourse before the Administrative Court of First
Instance, Combi requested the reversal of the decision issued by
the Administrative Trademark Committee. The Court reviewed
the case353 and held that:
a) The word STEAKS in the trademark under review is a
foreign word, which, according to the common knowledge, has
not been established in the common Greek vocabulary in such
a way that it might cause confusion to Greek consumers as far
as the nature of the goods is concerned b) the word AMERICA
may indicate a place of origin, but the combination of the
words UNITED STEAKS OF AMERICA creates a fictional
and novel indication, which possesses the necessary
uniqueness and c) according to Combi’s allegation, which was
uncontested, the trademark is intended to cover goods of
350. Athens Administrative Court of First Instance, Decision No. 12483/2003.
351. Athens Administrative Court of First Instance, Decision No. 12482/2003.
352. Decision No. 6717/1998 of the Administrative Trademark Committee.
353. Decision
(unpublished).
No.
2812/2003
of
the
Administrative
Court
of
First
Instance
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425
American origin and, as a result, there is no risk of confusion
of consumers.
Therefore, the Court reversed the decision of the
Administrative Trademark Committee and accepted the
trademark for registration.
Metro SB–Handels AG, a Swiss corporation, filed a trademark
application for the trademark ALASKA354 aimed to distinguish
electrical appliances in Classes 7 and 9, used mainly for household
purposes.
The Administrative Trademark Committee rejected the
aforementioned application and held355 that the trademark
ALASKA is a geographical indication and therefore lacks
distinguishing ability.356
On recourse to the Administrative Court of First Instance,
however, the Committee’s decision was reversed357 and the Court
found that the word ALASKA does not reflect the place where the
particular goods are produced because the actual place of
production is Switzerland. Under these circumstances, the Court
did not consider the word ALASKA to be a geographical indication
of origin.358
In addition, the Court held that the word ALASKA cannot be
deemed to be misleading to the average consumer as to the origin
of the products in question because the state of Alaska is not
famous for producing electrical appliances and that eliminates the
risk of confusion to the average consumer.
Brill Manitoba S.p.A, an Italian corporation, filed an
application for registration of the trademark OMINO BIANCO
MARSEILLAISE FOAM359 to cover liquid detergent, used mainly
for household purposes, in Class 3. The Administrative Trademark
Committee rejected the application, holding360 that the OMINO
BIANCO MARSEILLAISE FOAM mark was a geographical
indication and therefore lacked distinguishing ability.361
354. Trademark Application No. 137468/9.7.1998.
355. Decision No. 2227/1999 of the Administrative Trademark Committee.
356. Trademark Law No. 2239/1994 Article 3, paragraph 1.
357. Decision No. 3436/2003 of the Administrative Court of First Instance issued on
September 30, 2003.
358. Trademark Law No. 2239/1994 Article 3, paragraph 1.
359. Trademark Application No. 139880 (March 8, 1999).
360. Administrative Trademark Committee, Decision No. 8055/1999.
361. See Trademark Law No. 2239/1994, Article 3, paragraph 1, sections c and g.
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On recourse to the Administrative Court of First Instance, the
Committee’s decision was affirmed.362 The Court found that the
words MARSEILLAISE FOAM did not accurately reflect the place
where the particular goods were produced, and that they might
mislead the consuming public into believing the product was
produced in France when the actual place of production was in
Italy. Under these circumstances, the Court considered the words
MARSEILLAISE FOAM to be a geographical indication of
origin,363 despite the plaintiff’s contention that many other
companies use the same phrase on their detergent products in
order to indicate the quality of the particular detergent.
The Administrative Court of Appeals affirmed the decision of
the Administrative Court of First Instance. The appellate court
held that the writing of the word MARSEILLAISE on two different
parts on the detergent’s packaging, one next to the word FOAM
and one next to the words LIQUID DETERGENT WITH SOAP,
could in fact mislead consumers as to the origin of the particular
soap detergent.364 The Court also found that consumers were prone
to deem the geographical origin of the particular product as being
Marseilles, when it was, in fact, Italy. The fact that there were
several similar products bearing the same type of indication on
their packaging (MARSEILLAISE FOAM) had, according to the
Court’s judgment, no bearing on the particular case, as each
matter must be examined on its own merits.
I.B.7.a. Two-Dimensional Marks
Ferrero S.p.A. (“Ferrero”) applied to register a colored device
trademark consisting of the two halves of an egg, the one in brown
and the other in white, situated opposite each other, covering cocoa
chocolate, chocolate eggs, pastry and confectionery in Class 30.
The Administrative Trademark Committee partially rejected
the application,365 namely as far as chocolate eggs are concerned,
on the ground that the device of the divided chocolate egg describes
the covered goods and, therefore, lacks distinctive character.
Upon recourse before the Administrative Court of First
Instance,366 the Court took into consideration that: 1) Ferrero’s
trademark had already been filed since 1996 in its country of
origin, Italy, as well as in various other countries in order to cover
goods in Class 30 including chocolate eggs; and 2) Ferrero’s
362. Athens Administrative Court of First Instance (Three-Member), Decision No.
1123/2002.
363. See Trademark Law No. 2239/1994, Article 3, paragraph 1, sections c and g.
364. Athens Administrative Court of Appeals, Decision No. 4033/2003.
365. Decision No. 8519/1999 of the Administrative Trademark Committee.
366. Decision No. 7951/2002 of the Administrative Court of First Instance.
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427
trademark consists of a device of a chocolate egg broken into two
pieces, situated opposite each other and having a particular color
composition, the outer part thereof being brown and the inner part
being white. According to the Court’s rationale, this color
combination causes a particular visual impression and adds
distinguishing characteristics to the trademark, which are capable
of defining the origin of the chocolate eggs from the company
Ferrero.
The Court thus reversed the decision of the Administrative
Trademark Committee and allowed the trademark registration.
I.B.8.a. Similarity of Marks
The Administrative Trademark Committee accepted367
registration of the trademark KRISTA368 for goods in Class 25,
despite the Opposition filed by Krizia SpA, an Italian company, on
the ground that the application was filed in bad faith in an effort
to exploit Krizia SpA’s good will for its trademark KRIZIA covering
identical goods in Class 25 like clothing apparel, for men, women
and children, etc., as well as its other trademarks MOODS BY
KRIZIA, CRAZY KRIZIA and SPAZIO KRIZIA, covering goods in
Class 3.
Krizia SpA filed Recourse369 with the Administrative Court of
First Instance, requesting the reversal of the Committee’s decision
and the dismissal of the KRISTA trademark application. The
Court granted370 Krizia SpA’s Recourse and reversed the
Committee’s decision by finding that there is substantial visual
and phonetic similarity between the respective trademarks,
capable of causing confusion to the consuming public.
By virtue of statutory371 as well as well-established
precedent372 to that effect, the Court revoked the Committee’s
decision. On the one hand because it held that both marks,
KRIZIA and KRISTA, closely resemble each other because they
consist of six capital letters, out of which the first three and the
last one are identical and all letters composing the respective
words are written in the exact same manner. On the other hand,
the minor device, which was part of the preceding KRIZIA
application, was deemed insufficient for the purposes of adequately
distinguishing the respective trademarks in the eyes of the
367. Decision No.2776/1995 of the Administrative Trademark Committee.
368. Trademark Application KRISTA No. 120287/7.9.1993.
369. Recourse File No. 11615/2000.
370. Decision No. 11918/2002 of the Administrative Court of First Instance issued on
September 30, 2003.
371. Trademark Law No. 2239/1994 Article 38, paragraph 7.
372. Council of State Decision No. 1082/1994.
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average consumer, especially because both marks aimed to
distinguish the same goods in Class 25.
General Biscuit applied to register the trademark LU &
Device, consisting of the word LU appearing in a black frame,
which is the prolongation of a white parallelogram, in order to
cover coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee
substitutes, breadstuffs and breadstuffs preparations, bread,
biscuits, pastry, honey, syrup, pastry, baking powder, salt,
mustard, pepper, vinegar, spices, ice, confectionery, chocolate and
bread with honey, in Class 29. The Administrative Trademark
Court of First Instance rejected the application373 on the ground
that the trademark LU & Device visually and phonetically
resembles the prior trademark registration LUR in the name of
the Danish company Landbrugsministeriet covering goods in Class
29, thus creating risk of confusion to consumers. The case was
brought to the Administrative Trademark Court of Second
Instance, which confirmed same,374 and upon appeal to the Council
of State, which remanded the case to the Administrative Court of
Appeals.375
The Administrative Court of Appeals376 took into consideration
1) that the words LU and LUR consist of one syllable having the
letters LU in common and 2) that they differ only as far as the last
letter R of the trademark LUR and the black frame. Thus, the
Court held that the dominant feature of the respective trademarks
is the syllable LU, which renders likely the risk of confusion to
consumers due to the significant phonetic and visual similarity of
the two trademarks. Moreover, the Court held that the goods
covered by the two trademarks are similar and they are
distributed through the same stores, a fact which enhances the
risk of confusion to the average consumer.
I.B.9.a. No Similarity of Marks
Ion AE Viomichania ke Emboria Cacao Ke Sokolatas (“Ion”)
applied to register the trademark SMASH - ΣΜΑΣ,377 in order to
cover various goods in classes 29, 30, 32, 33 (goods made of
chocolate, sugar and similar ingredients) among which coffee,
coffee substitutes, tea, sugar, breadstuffs, breadstuffs preparations
and standardized foods based on maize flour, bread, biscuits, icecream, sweets, pastry, honey and chewing gum (Class 30).
373. Decision No. 7635/1981 of the Administrative Trademark Court of First Instance.
374. Decision No. 89/1991 of the Administrative Trademark Court of Second Instance.
375. Decision No. 2792/2000 of the Council of State.
376. Decision No. 3407/2002 of the Administrative Court of Appeal State (published in
Epitheorisi Emporikou Dikaiou–Commercial Law Review, Volume 4 2003, 916).
377. The second word in Greek characters.
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The application was partially rejected by a decision of the
Administrative Trademark Committee,378 namely as far as goods
in Class 30 are concerned, on the ground that the trademark
SMASH - ΣΜΑΣ resembled the prior trademark registration
SMACKS in the name of Kellogg Company (“Kellogg”), covering
coffee, tea, sugar, cocoa, rice, tapioca, sago, coffee substitutes,
breadstuffs and breadstuffs preparations, bread, biscuits, ice
cream, sweets, pastry, honey, syrup, pastry, baking powder, barm,
pepper, vinegar, sauces, spices and ice in Class 30. The Committee
held that the two trademarks are visually and phonetically similar
and that the covered goods in Class 30 are similar, thus creating
risk of confusion to consumers as far as the origin of the goods
from a certain company is concerned. The Administrative Court of
First Instance affirmed the Committee’s decision.
Upon appeal before the Court of Appeals, the Court took into
consideration the fact that the two trademarks are pronounced in
a different manner and that SMASH - ΣΜΑΣ consists of two words,
one in Latin and the other in Greek characters and held that there
is no visual and phonetic similarity between them, capable of
causing confusion to consumers as far as the origin of the goods
from a certain company is concerned.379
Upon appeal before the Council of State, the Court affirmed
the decision of the Court of Appeals, and concluded that there is no
sufficient similarity between the two trademarks simply due to the
fact that they have four letters in common, out of which one is a
vowel.380 In assessing the overall visual and phonetic impression
respectively caused by the two trademarks, the Court found that in
view of the obviously different pronunciation of the consonant
endings of the two trademarks, SMASH - ΣΜΑΣ and SMACKS,
they are sufficiently different, and thus not capable of causing
confusion to consumers and SMASH - ΣΜΑΣ cannot be considered
as an imitation of the trademark SMACKS.
L’Oreal applied for registration of the word mark
LONGITUDE to cover cosmetics, especially makeup products, in
Class 3. The application was rejected by the Administrative
Trademark Committee381 on the ground that it resembled the prior
trademark registration for LATITUDE-LONGITUDE in the name
of Horizon Cosmetics Inc., also covering goods in Class 3. The
Committee held that the two trademarks were visually and
378. Decision No. 3288/1987 of the Administrative Trademark Committee.
379. Decision No. 4841/1991 of the Court of Appeal.
380. Decision No. 2613/2002 of the Council of State (published in the Commercial Law
Review, Volume 4 2003, 914).
381. Administrative Trademark Committee, Decision No. 2957/2001.
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phonetically similar and that the covered goods were similar, thus
creating a risk of confusion for consumers as far as the origin of
the goods from a certain company was concerned.
On recourse before the Administrative Court of First Instance,
the Court took into consideration the fact that L’Oreal’s trademark
consists of one word, whereas the prior-registered trademark
LATITUDE-LONGITUDE consists of two words, appearing one
under the other, and beside the two words there is a device
consisting of a compass inside a parallelogram frame. The Court
held that there was no visual and phonetic similarity between the
two marks under comparison capable of causing confusion for
consumers as far as the origin of the goods from a certain company
was concerned.
Accordingly, the Court reversed the decision of the
Administrative Trademark Committee and accepted the
trademark LONGITUDE for registration.382
I.B.11.c. Violation of Public Order
The applicant, an individual by the name Alfredo Carlo, a
resident of Germany, filed a trademark application383 with the
Administrative Trademark Committee for a trademark that
consisted of the word CANNABIA and the device of a leaf on which
the word CANNABIA was inscribed and in between the gaps
created by the leaf’s edges, the following words were written:
“PFAND FLASCHE AIG 5% vol. 0.31” and on the bottom of the
device the following indications: “ZUTATEN: WASSER, MALZ,
HANFBLUTEN, HORFEN, NATURAL PRODUCTS.”
The trademark application aimed to distinguish “beer and
non-alcoholic drinks” in Class 32 and “alcoholic drinks” in Class
33. The Administrative Trademark Committee rejected384 the
application on the ground of violation of public morality and public
order as provided for by the relevant trademark law provisions.385
Subsequent to the applicant’s recourse and review of the
Committee’s decision by the Administrative Court of First
Instance, the Court reversed386 the Committee’s decision because it
did not agree with its rationale. The Court’s rationale was based
on the following facts, which were found by the Court to be true
and decisive:
382. Athens Administrative Court of First Instance, Decision No. 16113/2003.
383. Trademark Application No. 136239/6.3.1998.
384. Decision No. 2565/1999 of the Administrative Trademark Committee.
385. Trademark Law No. 2239/1994 Article 3, paragraph 1f.
386. Decision No. 3448/2003 of the Administrative Court of First Instance issued on
November 18, 2003, (to be published in the Commercial Law Review, Volume 1 2004).
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a) The device of the trademark in question which contained
the device of a leaf on a color scheme of yellow, green, red and
blue and the fictional word CANNABIA cannot be considered
as making a direct or indirect reference to the drug Indian
cannabis, which contains the substance tetrahydrocannabiol,
since such a substance is not part of the ingredients of the
goods covered by the particular trademark.
b) The official report issued by the General Drug
Administration of Greece, which clearly affirmed the fact that
the particular goods contained no narcotic substance
whatsoever.
Based on the above the Court was satisfied that there was no
real nexus between the particular trademark and drugs or
narcotics, thus it allowed the trademark application to proceed to
registration.
I.B.11.d. Scandalous Mark
Antonio Puig S.A. applied to register the trademark DIAVOLO
for “soaps, perfumery, essential oils, cosmetics, hair lotions” in
Class 3. The Administrative Trademark Committee387 rejected the
application on the ground that this trademark contravenes the
religious sentiment of the average person—orthodox Christian—as
well as the public and religious order and, therefore, it is not
acceptable for registration.
Upon Recourse before the Administrative Court of First
Instance, Antonio Puig S.A. requested the reversal of the decision
of the Administrative Trademark Committee. The Court reviewed
the case and found that:388
The Trademark DIAVOLO is intended to cover “soaps,
perfumery, essential oils, cosmetics, hair lotions” in class 3,
namely goods for the personal care of their target group.
Within this scope, this trademark has no religious or moral
character but suggests the “diabolical subtlety” by which the
goods covered thereby manage to achieve the qualities
promised.
Therefore, the Court reversed the decision of the
Administrative Trademark Committee and accepted the
trademark for registration.
387. Decision No. 2823/1999 of the Administrative Trademark Committee.
388. Decision No. 3587/2003 of the Administrative Court of First Instance (published in
Epitheorisi Emporikou Dikaiou–Commercial Law Review, Volume 1, 2004).
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I.B.12. Famous Marks
Fendt - Caravan GmbH (Fendt) applied to register the
trademark FENDT CARAVAN and device to cover goods in
Classes 12, 16, 18, 21, 25 and 28. The Administrative Trademark
Committee rejected the application in part,389 specifically insofar
as it concerned goods in Classes 18 and 25, on the ground that said
trademark resembled the trademark FENDI, owned by Fendi
Adele S.r.l. (Fendi), which covered, among other things, goods in
Classes 18 and 25. Fendt filed recourse before the Administrative
Court of First Instance for the revocation of said decision, and
Fendi filed an intervention against the acceptance of Fendt’s
recourse.
The Court took into consideration that the House of Fendi
started in 1952 and is established in its home country (Italy) as
well as all over the world. Its staff consists of 380 people, and 80
percent of its production is exported, to almost every country.
Fendi’s trademark has been registered in 117 countries. The firm
owns 570 FENDI trademark registrations in 55 countries, covering
goods in 15 classes; 270 FENDI and device trademark
registrations in 34 countries; and 896 FF FENDI trademark
registrations in 106 countries. Fendi owns various FENDI
trademark registrations in Greece, and goods covered thereby have
circulated in the Greek market since 1980.
The Court’s rationale was that the trademark in Fendt’s
registration application consists of the words FENDT and
CARAVAN and a device, whereas Fendi’s trademark consists of
the word FENDI. Although the trademarks under comparison are
not identical or similar enough to cause confusion for consumers
(the last letter of the FENDT trademark is the letter T and the last
letter of the FENDI trademark is the letter I), in view of the fact
that FENDI is a famous trademark, the Court held that the filing
of the trademark application by Fendt to cover goods in Classes 18
and 25 contravened good faith. It confirmed the decision of the
Administrative Trademark Committee and did not allow the
trademark to register as far as goods in Classes 18 and 25 were
concerned.390
Cardona Holdings Ltd (Cardona) applied to register the
trademark FORMULA 1 in Greek characters (ΦΟΡΜΟΥΛΑ 1) to
cover goods in Class 16 (various publications, magazines, etc.), and
the Administrative Trademark Committee accepted said
trademark for registration.391 Formula One Licensing B.V.
389. Administrative Trademark Committee, Decision No. 5387/2000.
390. Athens Administrative Court of First Instance, Decision No. 15894/2003.
391. Administrative Trademark Committee, Decision No. 4672/2000.
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(Formula One) filed an opposition before the Administrative
Trademark Committee, requesting the reversal of the decision.
The Committee, after having considered the reasoning of the
opposition as well as Cardona’s allegations, accepted the
opposition and rejected the trademark application FORMULA 1 (in
Greek characters).392
According to the Committee’s rationale, Formula One owns
many trademark registrations in various countries of the world, as
well as various Community Trademark registrations, all
containing the distinguishing feature FORMULA and covering
goods in many classes of the International (Nice) Classification,
including Class 16. Said trademarks have been filed by Formula
One as authorized by the FIA (Federation Internationale
d’Automobile), which has been organizing the well-known
FORMULA ONE car races, which last several months, since 1950.
Formula One is responsible for watching, promoting and defending
all the above trademarks. In view of their association with the
FORMULA ONE car races, the FORMULA ONE trademarks have
become marks of exceptional fame among the Greek and
international public and, thus, enjoy additional protection.
The Committee concluded that the trademark FORMULA 1 in
Greek characters was an exact translation of one or more Formula
trademarks and therefore had been filed in bad faith, as Cardona
should have been aware of the existence and fame of the
FORMULA trademarks.
I.B.22. Distinctiveness
L’Oreal applied for registration of the trademark EXPRESS
MAKE UP to cover perfumery, eau de toilette, gel, bath and
shower salts, cosmetics, especially creams, cleansing milks, lotions,
gels and powders for the face, the body and the hands,
preparations for sun protection, makeup preparations, shampoos,
gels, sprays, mousse and coiffure balsams and preparations for
treating the hair, hair lacquers, hair tint and decolorizing
preparations, permanent and curling preparations, essential oils
for personal use and dentifrices, in Class 3. The Administrative
Trademark Committee accepted the above-mentioned trademark
application for all covered goods except the face powders, on the
ground that the words of which the trademark consists indicate
the kind of covered goods (face powders) and the qualities
thereof.393
On recourse before the Athens Administrative Court of First
Instance, the Court reversed the decision of the Administrative
392. Administrative Trademark Committee, Decision No. 4582/2004.
393. Administrative Trademark Committee, Decision No. 5727/2000.
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Trademark Committee and accepted the trademark EXPRESS
MAKE UP for face powders as well.394
According to the Court’s rationale, the foreign word “makeup”
has been established in the Greek language, but not with the
meaning of “face powders,” whereas in combination with the word
“express,” which has also been established in the Greek language
with the meaning of “quick, urgent,” it creates a word trademark
that is distinctive and has sufficient distinguishing character also
insofar as face powders are concerned.
III.A.1. Famous Marks
Hermes International (Hermes), a French company known by
its distinguishing title Hermes and the owner of numerous wellknown trademark registrations and applications in Greece and
overseas, filed a Main Infringement Action395 against the Greek
company called Aik. Bavavea–P. Kolliopoulou O.E. with the
distinguishing title Casa di Hermes. This company was founded in
1996. Hermes charged that the company name infringed on
Hermes’ own company name and numerous trademarks and
violated the relevant provisions of the Greek Trademark Law and
Unfair Competition Law.
The Administrative Court of First Instance upheld the
plaintiff’s contentions.396 It found that the company name Casa di
Hermes (which in Italian means “House of Hermes”) was
intentionally chosen by the respondent to exploit the French
company’s goodwill and mislead the consuming public into
assuming that there was some type of business nexus between the
Greek company and the French company, or that the Greek
company was the French company’s affiliate, or subsidiary.
The case was further strengthened by the finding that the
shape and color combination of the packaging used by the
respondent for the products it sold, such as leather bags, shoes,
wallets, key rings and other leather items and smoking items, was
a slavish imitation of the packaging used by the plaintiff.
The Court therefore issued an order enjoining the respondent
from using the word “Hermes” on its own distinguishing title or in
any combination as a distinguishing title, in any manner including
on its store label or on any of its stationery.
394. Athens Administrative Court of First Instance, Decision No. 9836/2003.
395. File No. 98823/6008/2001 (filed July 17, 2001).
396. Athens Administrative Court of First Instance (Three-Member), Decision No.
6293/2003.
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435
III.B.6. Configuration of Goods
Honda Motor Company Limited, a Japanese company, filed
actions397 against importers of benzine engines, whose
configuration, shape, placement and color of parts were almost
identical to those of a particular Honda engine type, GX160. The
engines, which had been imported from China, were made for
general use, such as for power generators and digging equipment.
In pioneering decisions following three separate proceedings
(two of which were brought before the Athens398 and one before the
Thessaloniki399 Administrative Court of First Instance), the courts
accepted Honda’s contention that the particular configuration of
the specific Honda engine, its shape and placement of parts were
distinctive enough to become a distinguishing feature for Honda in
Greece and that consumers seeing such an engine configuration
immediately associated the particular engine with Honda.
The courts therefore granted three separate injunctions
concerning the distinctiveness of the outer shape and shape of the
parts of a benzine engine of general use marketed by Honda, and
the confusion caused by other, similar engines that had almost
identically copied the particular shape of the Honda engine,
without copying the name Honda or any other name or trademark
similar to that of Honda.
The significance of these decisions is paramount, especially
because, before the decisions were issued in Greece, there was
limited precedent on the issue of whether the distinctiveness of
goods could be based solely on their configuration, without taking
into account any potential trademark infringement per se.
III.J. Gray Marketing
Eastman Kodak Company (Kodak), a registered New York
company with headquarters in Rochester, New York, filed four
petitions for injunction against four separate respondents located
in the island of Crete. 400
Kodak’s legal action was based on information it had received
that there was unauthorized selling of KODAK items and use of
the KODAK trademark by the four individuals named as
respondents, each of whom maintained stores selling cameras and
related items in Crete.
The KODAK items being sold by the four respondents were
imported from South Africa and did not comply with the relevant
397. File No. 629/2004 (filed January 19, 2004).
398. Decision Nos. 5144/2004 and 3321/2004, respectively.
399. Decision number not available at the time of printing.
400. File Nos. 829, 827 and 838 (April 18, 03).
436
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European Union safety standards. In addition, the technical
characteristics of the particular items were aimed at a different
climate, that of Europe, instead of Africa.
The Cretan Court of First Instance, based in Chania, ruled
that the four respondents must cease their unauthorized selling of
the KODAK items and remove from their store and destroy any
signs or labels, etc., bearing the name KODAK.401 This was
necessary because, the Court reasoned, the average Greek
consumer was likely to be misled into believing that the
respondents’ business activities were somehow endorsed by Kodak
and that the respondents were acting in the capacity of an affiliate
or a sales representative for Kodak and their products and services
were subject to Kodak’s quality control, when in fact neither of the
foregoing was true. There was, therefore, an evident risk of
confusion for the consuming public, which was further enhanced
by the large KODAK signs affixed on all four stores owned by the
respondents.
V.A. Domain Names
The company Google, Inc., with headquarters in California,
USA, is well known even amongst “mild” Internet users, as the
provider of possibly the most popular search engine on the
Internet. When Google, Inc. attempted to register the domain
name google.gr, in Greece, it discovered that the particular domain
name was already registered to another entity, of undisclosed
identity. Due to the relevant provisions of Greek legislation,402 full
confidentiality can be granted to those domain name owners that
opt for it.
Consequently, Google, Inc. filed a petition with the Public
Prosecutor in order to discover the identity of the owner of the
google.gr petition was granted and it was then revealed that a
limited liability company in Thessaloniki, by the name Theofilos
Sagiroglou EPE had registered the domain google.gr in its name as
of April 2001.
Google, Inc. then immediately filed a petition for Injunction403
with the Thessaloniki Court of First Instance requesting that
Respondent be enjoined from using the domain name google.gr
because the risk of confusion to Internet users is evident and
alleging that the registration of the particular domain name by
Respondent was done in bad faith.
401. Chania Court of First Instance, Decision Nos. 2120/2003, 2121/2003, 2408/2003.
402. National Telecommunications and Post Committee Administrative Order No.
268/73.
403. Petition for Injunction File No. 17481/2003.
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437
In a pioneering decision, the Court agreed with Google, Inc.’s
claims and granted its petition,404 enjoining Sagiroglou EPE from
using the particular domain name. In its rationale, the Court held
that, although the registration of a domain name is much less
complicated than a trademark registration, in light of the current
reality of electronic business conduct, the role of the domain name
has now become similar to that of a trademark or a company name
and, therefore, a domain name is subject to similar legal
protection.
The Court took into account the numerous trademark and
domain name registrations that Google, Inc. had filed throughout
the world and the fact that the Google search engine is one, if not
the most, popular search engine available to Internet users.
Consequently, the Court held that the Internet user who visits the
www.google.gr website would expect to access the well-known
Google search engine and not the advertising company of
Sagiroglou EPE, who was using this webpage as a platform for
promoting its own company’s advertising activities. This
exploitation of Google Inc.’s fame by Sagiroglou was found to be an
act of unfair competition, creating a false impression to Internet
users that Sagiroglou and Google have some type of business
nexus when, in fact, they never did.
HONG KONG
I.B.2. Merely Descriptive Terms
Kabushiki Kaisha Sony CP Laboratories applied to register
the trade mark BEAUTY SUPPLEMENT C-WHITE for beverages,
soft drinks, fruit drinks and fruit juices, whey beverages, mineral
and aerated waters and other non-alcoholic drinks, syrups and
other preparations for making beverages in Class 32.
The Registrar of Trade Marks (“the Registrar”) determined
that the mark BEAUTY SUPPLEMENT C-WHITE directly
referred to the character or quality of the goods and was neither
inherently adapted to distinguish under Section 9 of the Trade
Marks Ordinance (Cap. 43) nor inherently capable of
distinguishing under Section 10. Therefore, the mark was
unacceptable for registration in both Part A and Part B of the
Register.
The applicant did not contest the determination regarding
Part A registration, but put forward arguments that the mark
qualified for registration in Part B. The applicant offered to
separately disclaim the words “Beauty,” “Supplement,” “White”
404. Decision No. 27482/2003 issued on September 18, 2003 (published in Commercial
Law Review, Volume 54, 2003, 907-14).
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and the letter “C.” The Registrar, however, was not persuaded and
maintained that the mark was unregistrable in both Part A and
Part B.405
The Registrar cited the Keystone Knitting decision,406 which
held that in determining whether words have a direct reference to
the character or quality of goods, they are not limited to their strict
grammatical significance, but are to be regarded as they would
present themselves to the public at large. The Registrar found that
the words “Beauty Supplement” unequivocally informed the
purchaser that an attribute of the goods was that it was a beverage
supplement that would enhance beauty.
As for the letter “C,” it would be readily understood as
referring to vitamin C. This was apparent from the label on the
applicant’s goods as seen from a pamphlet produced. The first line
of the label contained the words “Beauty Supplement,” the second
line “C-White,” the third line “Power Vitamin C” and the fourth
line “1000 mg.” The lettering of the second line was twice the size
as the lettering of the first line. Below the wording was a large
letter “C” and over this was superimposed the word “Vitamin.” The
Registrar found from a number of websites and existing products
that for some time, Vitamin C had been advanced as a skin
lightening agent and an aid to health and skin beauty.
Read together, the mark BEAUTY SUPPLEMENT C-WHITE
was held to refer directly to the character or quality of the goods,
namely, a health supplement containing Vitamin C that would
have the effect of lightening the complexion and enhancing skin
beauty.
Under Section 9, a mark referring directly to the character or
quality of goods is unregistrable in Part A unless evidence of
distinctiveness is adduced. In this case, no evidence of
distinctiveness was adduced. A mark referring directly to the
character or quality of goods that is unregistrable under Section 9
is also generally incapable of distinguishing under Section 10. The
Registrar followed the test set out in the Jeryl Lynn Trade Mark
decision: “The distinction between a sign which is capable of
distinguishing for the purposes of trade mark law and one which is
not can be turned into a question posed in colloquial language.
Does the sign indicate who the product or service came from or
does it only tell the customer what the product or service is?”407
The Registrar held that there was no single feature in the
mark BEAUTY SUPPLEMENT C-WHITE that indicated the
origin of the goods. Instead, the entire mark indicated what the
405. The Registrar of Trade Marks, 1 August 2002 (unreported).
406.
(1928) 45 RPC 421.
407.
[1999] FSR 491.
Vol. 95 TMR
439
goods were and their purpose. The mark was therefore
unregistrable in Part B. The Registrar noted that, with time, the
mark might come to be seen as a trade mark by consumers rather
than a description of the goods. However, no evidence of use or
other such evidence was held to have been adduced by the
applicant.408
I.B.8.a. Similarity of Marks
Croco Cola Company Limited applied to register the trade
mark CROCO COLA for beverages in Class 32 covering beers,
mineral and aerated waters, soft drinks, fruit drinks and fruit
juices, syrups and other such preparations. By way of background,
the Croco Cola Company Limited was a subsidiary of Crocodile
Garments Limited, a clothing manufacturer and retailer in Hong
Kong, as well as a member of the Lai Sun group of companies. The
application was accepted by the Registrar subject to a disclaimer of
the word “Cola,” but opposed by the Coca-Cola Company.409 The
opponent relied on a number of earlier registrations and use of its
COCA-COLA mark in Hong Kong. The Registrar identified the
registration in Class 32 as the relevant one for consideration in
this case.
The opponent relied on Section 20(1) of the Trade Marks
Ordinance (Cap. 43). Under Section 20(1), the test is whether (a)
the goods claimed by the applicant are identical to or of the same
description as those covered by the opponent’s registration and (b)
the applicant’s mark is identical to or so nearly resembles the
opponent’s mark that deception or confusion is likely to be caused.
The goods claimed by the applicant were identical to the goods
covered by the opponent’s registration.
In comparing the applicant’s and opponent’s marks, it was not
in dispute that the common element “Cola” is the generic word for
a type of beverage. The Registrar accepted the applicant’s
submission that the first word “Croco” in the applicant’s mark and
“Coca” in the opponent’s mark were therefore the words that would
remain in the average memory. It followed that in comparing the
two marks, the focus should be on the first words of the parties’
marks. However, the common element “Cola” should not be
ignored. The reasoning of the Coca-Cola Company of Canada v.
Pepsi-Cola of Canada410 and Broadhead’s Application411 decisions
was followed.
408. Unreported. This case was decided under the old Trade Marks Law, which is
relevant to applications filed before 4 April 2003.
409. The Registrar of Trade Marks, 10 November 2003 (unreported).
410.
(1942) 59 RPC 127.
411.
(1950) 67 RPC 209.
440
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Based on first impressions and the principle of imperfect
recollection, the Registrar held that visually the two marks were
similar. The Registrar applied the principle of imperfect
recollection and rejected the argument that the principle should be
totally discounted in light of the huge reputation of the COCACOLA mark. In other words, the Registrar rejected the argument
that once a mark becomes a household word, it becomes too well
known to be easily confused with others. The Registrar held that
the huge reputation of the opponent and its COCA-COLA mark
were irrelevant under Section 20(1) because it involved a
comparison of the relevant marks based on a notional (as opposed
to actual) user.
It was found that the two marks are visually similar because
they share a common second word COLA. The first words CROCO
and COCA are of similar length. Both begin with the letter “C” and
contain the letter “c” in the middle. Further, looking at all fair and
normal use of the applicant’s mark, in the future, the applicant
might also add a hyphen to its mark in the middle of CROCO and
COLA making it even more similar to the opponent’s mark.
Aurally, the marks were also held to be similar. Both CROCO
and COCA are made up of two syllables. The marks were also held
to be similar taking into account the principle of imperfect
recollection and the fact that the buying public tends to carelessly
pronounce and slur words. The Registrar found that CROCO
would likely be pronounced “Krou-kou” or “Coco,” which is similar
to COCA. The Registrar accepted the opponent’s submission that
as English is not the mother tongue of the majority of people in
Hong Kong, the letter “r” in CROCO would likely be
mispronounced or not pronounced at all.
On the other hand, the Registrar rejected the submission of
the applicant that the buying public would pronounce CROCO in
the same way as it is pronounced in the word crocodile because
they would associate the CROCO COLA mark with Crocodile
Garments Limited and other associated companies of the
applicant. The Registrar rejected this submission because it held
that the reputation and use of the marks of the applicant’s
associated companies was irrelevant. The Registrar also found that
because CROCO is not the formal abbreviation for the word
crocodile, it would not be pronounced as such.
The applicant cited a number of cases in which it was held
that marks containing the word COLA and another word were not
similar to the COCA-COLA mark. These included the POLA
COLA,412 COALA COLA413 and KOALA KOLA414 decisions. The
412.
(1992) 25 IPR 429.
413.
(1991) 24 IPR 113.
Vol. 95 TMR
441
Registrar held that these cases were decided on their own merits
and did not assist the applicant here.
In conclusion, the Registrar held that the opposition succeeded
under Section 20(1).
The Registrar went on to consider Section 12(1). Under Section
12(1), the opponent must first show that its mark has an
established reputation in Hong Kong. It is only then that the
burden of proof shifts to the applicant and the likelihood of
deception is considered. As a threshold point, the Registrar found
that the Coca-Cola Company did have an established reputation in
Hong Kong. This was not disputed by the applicant. The Registrar
also found that because the level of deception and confusion
required under Section 12(1) is the same as that required under
Section 20(1), the opposition similarly succeeded under Section
12(1).
The Registrar also dealt with the opponent’s argument that
because the applicant did not propose to use the CROCO COLA
mark, it was not entitled to be registered as the proprietor of the
mark under Section 13(1). The Registrar considered the words
“proposed to be used.” The opponent submitted that, at the time of
registration, there must be a definite and present intention to use
the mark. It is not sufficient that there is a mere general intention
on the part of the applicant to use the mark at some future time.
The opponent relied on the decision of Ducker’s Trade Mark.415 On
the other hand, the applicant submitted that, provided its claim to
proprietorship was bona fide and there was a genuine intent to use
the mark, the low threshold for Section 13(1) would be satisfied.
The applicant further submitted that, even if it did not intend to
use the CROCO COLA mark itself, the requirements under
Section 13(1) would be met if it allowed its parent company,
Crocodile Garments Limited, or other associated companies within
the Lai Sun group to use the mark.
The Registrar stated that it was unnecessary to resolve the
conflict between the opponent’s and applicant’s submissions
because she had already found that the opposition succeeded
under Sections 12(1) and 20(1). However, she did note that
factually, the Ducker case could be distinguished. The case
concerned rectification proceedings and the mark had been
registered solely with the intention of transferring it; in other
words, there had been no bona fide intention to use.416
414.
(1968) RPC 231.
415.
(1928) 45 RPC 397.
416. Unreported. This case was decided under the old Trade Marks Law, which is
relevant to applications filed before 4 April 2003.
442
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I.B.9.a. No Similarity of Marks
Rhino Watch Co. Ltd. applied to register the trade mark
ALTINO for watches and watch parts in Class 14. The application
was accepted by the Registrar, but opposed by S.A. Ancienne
Fabrique Georges Piaget & Cie (“Piaget”).417 The opponent relied
on its Hong Kong registration of its trade mark ALTIPLANO for
cuff links made of precious metals or coated therewith, jewelry,
precious stones, chronometers, watches and clocks in Class 14. The
opponent also relied on a corresponding Swiss registration.
Section 20(1) of the Trade Marks Ordinance (Cap. 43) (TMO)
was not available as a ground for opposition because it required an
earlier Hong Kong registration at the application date. The
opponent’s Hong Kong registration of its ALTIPLANO mark was,
in fact, registered on a later date than the applicant’s application.
Sections 12(1) and 23 of the TMO were relied on. Section 12(1)
requires that, as a threshold point, the opponent show that its
mark has an established reputation in Hong Kong by the
application date. It is only then that the burden of proof shifts to
the applicant and the likelihood of deception is considered.
As to the extent the opponent must show a reputation in Hong
Kong, the Registrar considered that he was bound by Hunter J’s
judgment in Hong Kong Caterers Ltd. v. Maxim’s Ltd.,418 which
adopted what Hunter J described as the purely factual approach in
Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty. Ltd.419 The
Pioneer Hi-Bred Corn test looks at the awareness of the opponent’s
mark in the market for the goods claimed by the applicant.
The opponent failed to discharge his burden and was not able
to show a sufficient awareness of the ALTIPLANO mark in Hong
Kong by the application date. The Registrar found that he could
attach no weight to the evidence of Hong Kong sales provided. The
opponent provided only the sales figures for one year, expressed in
Hong Kong dollars. This was held to be insufficient because, most
importantly, it was not supported by invoices and could have
represented sales from the opponent’s head office to its Hong Kong
boutiques rather than to the public. There was also no breakdown
of sales between those before the application date and those after
and between those in relation to watches and those not so related.
Further, no figures in relation to price, sales quantity or volume
were provided. The Registrar described the sales figures that were
provided as unhelpful and stated that it should not have been
difficult for the opponent to obtain the relevant documentation
from its own boutiques.
417. The Registrar of Trade Marks, 6 March 2003 (unreported).
418.
[1983] HKLR 287.
419.
[1979] RPC 410.
Vol. 95 TMR
443
The evidence supplied in terms of advertising in Hong Kong
was also held to be insufficient. The Registrar stated that the
opponent did not even assert that the “enormous efforts and
substantial investments made in advertising” were made in Hong
Kong. Two advertisements in the magazine “Racing World” were
supplied. The Registrar accepted that “Racing World” was an
effective vehicle for advertising prestige watches including the
opponent’s watches. However, no circulation figures were provided
and the publication dates of the advertisements were handwritten,
the Registrar having to take these dates on trust. The Registrar
also found that the dominant impression one would gain from the
advertisements is that they are for a PIAGET, rather than an
ALTIPLANO watch, the ALTIPLANO mark being a secondary
mark.
The opponent also provided a product brochure. However,
again no assertion was made that the brochure was even
circulated in Hong Kong. The Registrar assumed that it was
circulated in the two Piaget outlets in Hong Kong. As the Registrar
had found that there had been no, or no significant, sales in Hong
Kong, the Registrar stated that it could only assume that persons
who had viewed the brochure were limited in number. Further, the
circulation of the brochure was assumed to be limited by the fact
that one of the outlets was in a hotel and, therefore, Hong Kong
locals were less likely to have access to the brochure. The Registrar
stressed that it was the awareness of the opponent’s mark in Hong
Kong that was the relevant criteria.
The Registrar then assessed the relevance of at Section 23 of
the TMO that provided for opposition based on an earlier foreign
registration in the country of origin of the goods. The test is
whether the applicant’s mark is identical to or so nearly resembles
the opponent’s mark that deception or confusion would be caused.
The goods claimed by the applicant must also be identical to or of
the same description as those covered by the opponent’s
registration. Unlike Section 12(1), the burden of proof for Section
23 is on the opponent and the Registrar has discretion as to
whether the applicant’s mark should be refused registration. The
opponent need not prove that its mark has an established
reputation or has been used in Hong Kong or in the country of
origin, though the Registrar takes these factors into account in
exercising its discretion.
As the opponent relied on an earlier Swiss registration, for
Section 23 to apply in this case, the opponent’s goods must have
originated from Switzerland. The Registrar found that there was
evidence to this effect. The evidence was in the form of one
advertisement in “Racing World” where underneath “Piaget”
appeared the words “Geneve 1874,” which the Registrar took to be
a clear reference to Switzerland, and in the statutory declaration
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filed by the opponent, the preamble stating that the opponent was
a societe anonyme organized and existing under the laws of
Switzerland.
As for whether two marks, in general, so nearly resemble each
other that confusion would be caused, the Registrar compares
them by their look and sound. Here, the Registrar compared the
ALTINO and ALTIPLANO marks on the basis that because the
two words would have no known meaning to consumers in Hong
Kong (ALTINO is an invented word and ALTIPLANO is a plateau
of the Andes), consumers would more likely recognize them by
their visual features. The Registrar compared the two marks as
follows:
1. Both words have a European feel or look and the first
and last syllables are the same. The Registrar considered
these to be the strongest points of the opponent based on
accepted case law that the first syllable of a word mark is
generally the most important.
2. However, the length of the two words is different. The
length of the opponent’s ALTIPLANO is one third longer than
the applicant’s ALTINO.
3. The Registrar considered that the look of marks is
affected by their sound. This is because it is a common human
trait for consumers to say marks in their minds and mentally
read them as they look at them. Therefore, in terms of the first
impression created by the two marks, they do not resemble
each other because, as consumers mentally read the two
marks, ALTINO is more readily pronounceable than
ALTIPLANO and is shorter.
4. As for whether the marks aurally resemble each other,
the Registrar found that ALTINO should be pronounced such
that the three syllables are of equal length, with stress on the
second syllable, whereas ALTIPLANO should be pronounced
such that the third syllable is stressed and longer. Again, this
finding was made in the absence of evidence as to how the
words should actually be pronounced.
The Registrar found that based on the differences in the sound
of the marks, on balance, consumers would not likely be confused.
This is curious in light of the earlier finding that visual features
play a more important role in this case, consumers being more
likely to recognize the marks by their visual features. The
Registrar also applied the doctrine of imperfect recollection. This
assumes that consumers of reasonable intelligence and taking
reasonable care have imperfect recollections of marks. The
Registrar held that the ALTIPLANO mark, not appearing on the
watch face or good itself and being a secondary mark associated
Vol. 95 TMR
445
with the primary mark PIAGET, is unlikely to be confused by
consumers with the ALTINO mark.
As for whether the marks covered identical goods or goods of
the same description, the Registrar found that the overlap in the
item “watches” was sufficient to make the specification of goods
claimed by the applicant as a whole the same as the goods covered
by the opponent’s foreign registration. However, the Registrar
went on to comment that watches range from the expensive to
cheap and no evidence was given as to the trade channels in which
the watches would be sold and as to the nature and kind of
customers. Nevertheless, the Registrar held that, assuming fair
and normal use of the two marks, though the opponent’s watches
were currently sold exclusively through its own boutiques, in the
future, the same trade channels might be used and the opponent
and applicant might be in direct competition with each other.
However, the Registrar was of the opinion that if a watch of the
applicant was sold in the same outlets as the opponent’s and they
were compared side by side, there would actually be less likelihood
of confusion.
The Registrar considered that the customers of the opponent
would be customers who purchased for prestige, not for fun or
function. To such customers, the manufacturer would be the most
important factor in purchasing a watch. The Registrar also
considered that it was inconceivable that the ALTIPLANO line of
watches would be sold without the PIAGET mark. Therefore, it is
unlikely that customers concerned with prestige would be
confused. The Registrar stated that this factor alone would support
the finding that the applicant’s mark was not likely to confuse.
The Registrar went on to state that even if its finding that the
opponent’s watches were bought for their prestige were wrong, it
would exercise its discretion in rejecting the opposition. The
Registrar described the intention of Section 23 as the prevention of
copying of marks in Hong Kong of marks that were registered and
protected in the country of origin. There was no suggestion of
copying by the applicant here. In addition, the opponent had not
established the reputation of the mark in Hong Kong and had not
discharged its burden in proving that deception or confusion would
be caused.
It is noted that a new TMO (Cap. 559) has been enacted in
Hong Kong and took effect on 4 April 2003. There is no Section 23
equivalent in the new TMO. However, the old Section 23 continues
to apply to oppositions against applications under the old TMO
that remained pending on 4 April 2003.420
420. Unreported.
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Canal Jean Co. Inc. applied to register the trade mark CANAL
JEAN CO. NEW YORK and Device for men’s, women’s and
children’s clothing—pants, jeans, jackets, blouses, shirts, sweaters,
outer jackets, coats, T-shirts, sweatshirts and footwear in Class 25.
The application was accepted by the Registrar, but opposed by
Canali S.P.A.421 The opponent relied on two earlier registrations
and use of its trade marks CANALI and CANALI MILANO in
Class 25.
A preliminary issue was raised as to the admissibility of the
exhibits to two statutory declarations filed by the applicant. The
exhibits had not been separately notarized. The rules that
governed the making of statutory declarations were Rules 106 and
107 of the then Trade Mark Rules (Cap. 43A). It is noted that the
Trade Mark Rules (Cap. 43A) have been repealed and replaced by
the Trade Mark Rules (Cap. 559A). The corresponding Rule 80 of
Cap. 559A is similar (albeit broader) than Rules 106 and 107 of
Cap. 43A.
The then Trade Mark Rules (Cap. 43A) were based on similar
rules in the United Kingdom. The Registrar quoted paragraph 2161 of the United Kingdom Patent Office Work Manual for the
1938 Trade Marks Act, which stated that where witnesses make
declarations outside the jurisdiction and adopt the format and
manner of attestation of their own country, such declarations are
acceptable if the Registrar is satisfied of their worth as evidence.
The Registrar is normally so satisfied if the declarations are
serious statements of the witness’ evidence. In this case, the
Registrar found that the exhibits were admissible. The statutory
declarations had been made by a witness in the United States. In
the United States, separate notarization of exhibits is not required,
however, they must be authenticated. In the body of the statutory
declarations, the nature and contents of each exhibit were fully
described and the descriptions of the exhibits tallied with the
actual exhibits attached. The Registrar held that the exhibits had
been authenticated and that the statutory declarations together
with the exhibits were serious statements of the witness’ evidence.
The opponent relied on Section 12(1) of the Trade Marks
Ordinance (Cap. 43). However, before on opponent can invoke
Section 12(1), it must first establish that its marks have a
sufficient reputation in Hong Kong. The applicant conceded that
the opponent’s marks enjoyed such a reputation. The onus of proof
then shifted to the applicant to show that if its mark was allowed
to be registered, no likelihood of deception would arise.
In essence, the applicant’s mark was a composite mark
consisting of the words CANAL, JEAN CO. and NEW YORK
421. The Registrar of Trade Marks, 8 August 2003 (unreported).
Vol. 95 TMR
447
superimposed on a black and white checkerboard pattern. The
opponent’s CANALI mark was a pure word mark.
In comparing the two marks, the Registrar noted that counsel
for the opponent and counsel for the applicant adopted two entirely
different approaches. Counsel for the opponent argued that the
word CANAL was the main identifying feature of the applicant’s
mark, the other elements JEAN CO. and NEW YORK being
disclaimed and/or nondistinctive. On the other hand, counsel for
the applicant argued that the other elements should not be ignored
and that the applicant’s mark should be compared with the
opponent’s as a whole. The Registrar approved of the applicant’s
approach, stating that it was well-established law that marks
must be compared in their entirety. Fair weight and importance
must be attached to the points of resemblance and points of
dissimilarity, but the ultimate solution was to be arrived at by
judging the general effect of the respective wholes.422 The
Registrar further noted that, when considering whether marks are
similar, disclaimed elements should neither be ignored nor given
less significance than they deserve after due allowance has been
made for the degree to which they are nondistinctive of the
relevant goods or services.423
Based on first impressions and the principle of imperfect
recollection, the Registrar held that visually, the two marks were
not similar. This was particularly so because the applicant’s mark
was a composite mark, the overall arrangement of which was
distinctive, whereas the opponent’s mark was a pure word mark.
The Registrar also looked at the ideas conveyed by the marks.
The Registrar accepted submissions that the word “Canal” is an
English word with a known meaning, whereas “Canali” is an
Italian word, as well as a surname. Although the two words share
the same meaning (the word canal means artificial waterway and
canali means channel), the Registrar held that CANALI would not
convey any known meaning to the purchasing public in Hong
Kong. Where one word has a known meaning and the other does
not, it is generally accepted that the two words are more readily
distinguishable from each other, and this was held to be the case
here.
In light of the differences between the two marks, the
Registrar rejected submissions by the opponent that the
applicant’s mark would be seen as a sister mark of the opponent’s,
or that the applicant and opponent would be seen as associated.
The Registrar also discussed the aural differences in the
marks. The Registrar found that the two marks would be referred
422. Clark v. Sharp (1898) 15 RPC 141.
423. Granada Trade Mark (1979) RPC 303.
448
Vol. 95 TMR
to differently. The opponent’s mark would be referred to as
CANALI. On the other hand, the applicant’s mark would not
simply be referred to as “CANAL,” but rather CANAL JEAN CO.
or CANAL JEAN CO. & Checkerboard Design. This was because
the words CANAL and JEAN CO. were equally prominent and
because the checkerboard device retained its distinctiveness and
identity and was not diminished by the presence of the words.
The Registrar went on to hold that even if the finding that the
marks would be referred to differently was wrong, the two words
“Canali” and “Canal” sounded different. One word has three
syllables, the other two. Although both words would be pronounced
with an emphasis on the second syllable, the second syllable “nal”
in “Canali” would be pronounced with a long “nal,” whereas the
second syllable “al” in “Canal” would be pronounced with a shorter
“el” sound.
The Registrar noted that in any event, any aural differences or
similarities in the two marks were not so important in this case
because both the applicant’s and opponent’s goods, being ready
made clothing, were purchased by self selection over the counter,
rather than ordered orally.
In comparing the goods of the opponent and applicant, the
Registrar, after considering all normal and fair use of the marks
on the goods, held that the goods were of the same description. The
opponent gave evidence that its goods were high fashion and/or
formal wear for men, which were sold through high-end
department stores, such as Lane Crawford in Hong Kong. On the
other hand, the applicant had not used the CANAL JEAN CO.
NEW YORK mark in Hong Kong, but gave evidence that in the
United States the mark had been used on popular clothing for
children and young men and women, which were sold through midto low-range street clothing stores. The Registrar held that
although presently, the opponent’s and applicant’s goods were not
in direct competition, assuming all normal and fair use, in the
future, there was nothing in the specifications to preclude the
opponent and applicant selling the same goods using the same
trade channels.
In conclusion, the Registrar held that though the goods of the
applicant and opponent were of the same description, there were
considerable visual, conceptual and aural differences in the marks.
There was, therefore, no real tangible risk that the purchasing
public would be deceived and confused into believing or wondering
whether the goods came from the same source and no likelihood of
deception and confusion.
The same reasoning and conclusion were held to apply to the
opponent’s CANALI MILANO mark. The Registrar noted that the
CANALI MILANO mark was even more readily distinguishable
from the applicant’s mark in that the public would more easily
Vol. 95 TMR
449
recognize that the opponent’s goods came from Italy and the
applicant’s from the United States.
Also based on Section 12(1), the opponent submitted that the
applicant’s mark is likely to be deceptive if it was used on clothing
other than jeans or clothing made of denim (jean material). The
reasoning was that the applicant’s CANAL JEAN CO. NEW YORK
mark conveyed the impression that the applicant sold jeans or jean
material products. The Registrar rejected the submission. The
Registrar followed the reasoning of the GALVALLOY decision.424
In the GALVALLOY case, the applicant for removal sought to have
the GALVALLOY mark expunged on the ground that it would be
likely to deceive if not used on goods that were alloys. In the
present case, the Registrar held that purchasers of ready-made
clothing would not analyze carefully the meaning of the word
JEAN in the applicant’s mark. They would therefore realize that
they were dealing with a trade mark and that not all products of
the applicant were jeans or made of denim.
Further, the Registrar referred to the ORWOOLA decision.425
In that case, the ORWOOLA mark, being a misspelling of the
words “all wool,” was held to be likely to deceive when used on
goods not wholly made of wool. The decision was distinguished on
the basis that the ORWOOLA mark was comprised of a single
element, whereas JEAN was one of various elements in the
applicant’s mark. Further, the word ORWOOLA, comprising the
sole element of the mark, was a non-registrable word in itself,
being descriptive when used on goods made wholly of wool. It is
noted that the word JEAN would also be descriptive and nonregistrable if used on jeans or denim products. However, it was one
of various elements in the applicant’s mark and the applicant had
disclaimed it.
The opponent also sought to rely on Section 20(1). Under
Section 20(1), a mark can be opposed on the basis that it is
deceptively or confusingly similar to an earlier registered mark. As
the level of deception or confusion required under Section 20(1) is
the same as that required under Section 12(1), the Registrar held
that the opponent also failed under Section 20(1).426
I.B.12. Famous Marks
Croco Cola Company Limited applied to register the trade
mark CROCO COLA for beverages in Class 32 covering beers,
mineral and aerated waters, soft drinks, fruit drinks and fruit
424.
[1963] RPC 34.
425.
(1910) 1 Ch 130.
426. Unreported. This case was decided under the old Trade Marks Law, which is
relevant to applications filed before 4 April 2003.
450
Vol. 95 TMR
juices, syrups and other such preparations. The Registrar
considered the issue of similarity and famous marks in this case.
For a full discussion of this case, see Section I.B.8.a. Similarity of
Marks, supra.
I.B.13. First to Apply Versus First to Use
Chen Hung Chi trading as Suntex International Co. applied to
register the trade mark CHRISTIAN DANIEL for quartz analog
watches, liquid crystal display watches, parts of watches, clocks
and parts of clocks in Class 14 on 30 August 1999 (“the application
date”). The application was accepted by the Registrar, but opposed
by Lam Hau Kwan trading as Amona Enterprise Co.427
The opponent applied to register the CHRISTIAN DANIEL
mark for goods in Class 14 in 2000. The opponent submitted under
Section 13(1) of the Trade Marks Ordinance (Cap. 43) that it was
the proprietor of the mark. The Registrar held that to succeed
under Section 13(1), the opponent must show that the marks and
goods in question are identical or virtually identical. The Registrar
further held that, where there has been use, the proprietor is the
first to use and any supporting evidence is pivotal.
The opponent claimed that it had designed and first used the
CHRISTIAN DANIEL mark in early 1995. The applicant claimed
that it first used the CHRISTIAN DANIEL mark in early 1998.
The opponent produced evidence of use in the form of sales
invoices on which appeared the abbreviations “CD” or “C Case.”
The Registrar found from these invoices that the unit price of “CD”
and “C Case” items varied greatly and appeared to fluctuate in a
matter of weeks or even days. The Registrar held that the price
range was too great to infer that it was due to different models
being priced differently; it could only be inferred that “CD” and “C
Case” were each abbreviations for different marks. The Registrar
noted that the opponent itself gave evidence that there were
several marks that bore the short form “CD.”
The opponent also produced faxed production notices from
Wing Fat (HK) Holding Limited, one of its manufacturers. Again,
on the notices, reference was only made to “CD” items, not the
CHRISTIAN DANIEL mark. The Registrar found that the date
mechanically printed by the fax machine read 4 January 1998,
which was a date before the application date. However, on the
notices themselves, the date of order was stated as 20 September
1999 and the date of delivery as 7 October 1999. The Registrar
found that the 4 January 1998 fax transmission date was highly
suspect.
427. The Registrar of Trade Marks, 21 August 2003 (unreported).
Vol. 95 TMR
451
Photographs showing the CHRISTIAN DANIEL mark applied
to watches produced by the opponent were further held to be of no
consequence because no indication was given as to when the
photographs were taken.
The Registrar concluded that none of the evidence established
an association between “CD” and the CHRISTIAN DANIEL mark,
let alone an association between “C Case” and the CHRISTIAN
DANIEL mark. Therefore, the opponent did not establish use of an
identical or virtually identical mark prior to the application date
and the opposition failed under Section 13(1).
The opponent also relied on Section 12(1). Under Section 12(1),
the opponent must first show that it has a sufficient reputation in
Hong Kong by the application date before the onus shifts to the
applicant and the likelihood of deception is considered.
The Registrar held that the opponent had not discharged its
burden and shown a sufficient reputation in Hong Kong by the
application date. This was because no other relevant evidence was
produced but evidence of sales of “CD” and “C Case” items, which
as found under Section 13(1), did not necessarily show sales of
goods bearing the CHRISTIAN DANIEL mark and, thus, a
reputation in the mark.428
ICELAND
I.A.1.b. Quality and Quantity of Use
The Registrar published International Trade Mark
Registration No. 731 291, AUDIOVOX (word), in the name of
Intertrace S.L., for telephones and telephone accessories in Class 9
and telecommunications in Class 38, in the official gazette, open
for opposition. The international filing date was March 15, 2000.
AUDIOVOX Corp. filed an opposition to the mark’s registration on
the basis of its use of the trademark AUDIOVOX in Iceland since
1995, in particular for the sale of mobile phones, and on the
grounds of protection of its corporate name under the Paris
Convention. The opposition was rejected by the Registrar, as
AUDIOVOX Corp. produced no evidence regarding use of its mark
at the time of the filing of Intertrace’s registration, or of
registration or use of its company name in Iceland. AUDIOVOX
Corp. appealed the Registrar’s decision. The Appeal Board
reversed, finding that sufficient use was established since 550
phones were sold between December 1995 and July 1997 and a
further four phones were sold between October 1999 and December
1999. The Appeal Board noted that already-sold phones might still
428. Unreported. This case was decided under the old Trade Marks Law, which is
relevant to applications filed before 4 April 2003.
452
Vol. 95 TMR
be in use and some might even still be available from retailers in
the first half of 2000. The Appeal Board also ruled that
AUDIOVOX Corp.’s corporate name was protected.429
I.B.2. Merely Descriptive Terms
Michelin & Cie appealed the Registrar’s decision to refuse
registration of its word mark HI-CONTROL for tires and similar
goods in Class 12. The Appeal Board confirmed the Registrar’s
decision, noting that the quality and texture of tires have an
impact on a vehicle’s control. The expression HI-CONTROL was
therefore considered descriptive for the goods in question. The
word HI was considered by the Appeal Board as a short form for
HIGH, and the use of the hyphen did not add to the distinctiveness
of the mark.430
I.B.8.a. Similarity of Marks
The Registrar refused registration of URBAN DEFENCE
(words), in the name of Urban Decay Cosmetics for goods in Class
3 on the ground of confusing similarity with prior-registered
trademarks URBAN SURVIVAL (words) and URBAN ACTIVE
(words), both registered for similar goods in Class 3. Urban Decay
Cosmetics appealed the Registrar’s decision. The Appeal Board
stated that the word URBAN was not descriptive for the goods in
question and could be considered a strong mark for those goods.
On the other hand, the Board considered the latter part of the
mark weak and not sufficiently distinctive and pointed out that
consumers would think that all of the marks belonged to the same
product line. The Registrar’s decision was thus confirmed.431
The Registrar published International Registration No. 735
653 CAMUS, in the name of Camus “La Grande Marque,” for
goods in Class 34, in the official gazette, open for opposition.
Reemtsma Cigarettenfabrikken Gesellschaft MBH filed an
opposition, claiming confusing similarity with its prior-registered
trademark CAMPUS in Class 34. The Registrar confirmed
similarity of goods and argued that the marks are visually
somewhat similar. Phonetically, although the pronunciation of the
two marks might be different in French, the Icelandic
429. Audiovox Corp. v. Intertrace S.L., Appeal Board decision of 10 July 2004, http://
www.els.is/focal/webguard.nsf/key2/appeal3-2002.html/$File/2002-3%20AUDIOVOX%20.pdf.
430. Michelin & Cie v. Registrar, Appeal Board decision of 14 January 2004,
http://www.els.is/focal/webguard.nsf/key2/appeal3-2003.html/$File/2003-3%20HI-CONTROL.pdf.
431. Urban Decay Cosmetics LLC v. Registrar, Appeal Board decision of 26 March 2004,
http://www.els.is/focal/webguard.nsf/key2/appeal9-2003.html/$File/2003-9%20URBAN%
20DEFENCE.pdf.
Vol. 95 TMR
453
pronunciation of the marks was relatively similar.432 The Registrar
therefore upheld the opposition and refused registration to the
mark CAMUS.
I.B.9.a. No Similarity of Marks
The Registrar published registration of CANAL DIGITAL
(words & device), in the name of Canal Digital Norge A/S, for
services in Classes 38 and 41, in the official gazette, open for
opposition. Canal+ (société anonyme) filed an opposition, claiming
confusing similarity with its prior-registered trademarks CANAL+
(word & device) in Classes 9, 16, 25, 28, 35 and 41, and CANAL
SATELLITE (words & device) in Classes 9, 16, 38 and 41. The
Registrar confirmed similarity of goods and services but rejected
the opposition, arguing that the word CANAL, having strong
reference to the English word channel, was descriptive for the
most essential services in question, i.e., television, radio and
wireless communications, thus conferring very limited protection
to this part of the mark.433
The Registrar published registration of LEIFTRA (word), in
the name of Pharmaco hf, for goods in Class 5, in the official
gazette, open for opposition. Bayer Aktiengesellschaft filed an
opposition to the registration on the basis of confusing similarity
with its prior registered trademark LEVITRA (word), Int. Reg. 744
146, in Class 5. The Registrar confirmed similarity of goods.
However, the Registrar did not apply a rule established by the
Supreme Court, which provides for increased resemblance between
trademarks for prescription drugs, as in this case there was no
evidence of the goods being sold on prescription. The Registrar
found that there was not much similarity in the pronunciation and
not too much visual resemblance and thus rejected the
opposition.434
The Registrar published registration of PROCALYX (word), in
the name of Alcon Inc., for eye medication in Class 5, in the official
gazette, open for opposition. Alza Corporation filed an opposition to
432. Reemtsma Cigarettenfabrikken Gesellschaft MBH v. CAMUS “LA GRANDE
MARQUE,” Registrar decision of 10 September 2003, ELS Tíðindi, 9/03,
http://www.els.is/focal/webguard.nsf/key2/20urdskurdur2003.html/$File/CAMUS%20202003.pdf.
433. CANAL+ (société anonyme) v. Canal Digital Norge A/S, Registrar decision of 11
November 2003, ELS Tíðindi, issue 12/2003, http://www.els.is/focal/webguard.nsf/key2/
25urdskurdur2003.html/$File/CANAL%20DIGITAL%2025-2003.pdf.
434. Bayer Aktiengesellschaft v. Pharmaco hf., Registrar decision of 7 April 2004, ELS
Tíðindi, issue 4/2004, http://www.els.is/focal/webguard.nsf/key2/20urdskurdur2003.html/
$File/CAMUS%2020-2003.pdf.
454
Vol. 95 TMR
the registration on the basis of its prior registered trademark
CAELYX (word), for drugs for cancer treatment in Class 5. The
Registrar confirmed similarity of goods. Although there was no
evidence that PROCALYX would be subject to sale by prescription,
the Registrar applied the rule laid down by the Supreme Court
that increased resemblance is acceptable between two trademarks
for drugs when both are sold by prescription. The opposition was
thus rejected.435
II.F. International Issues
The Registrar published International Trade Mark
Registration No. 798 530, MTN MONEY TRANSFER NORDIC
(words & device), for services in Class 36, in the official gazette,
open for opposition. Uno Money Transfers, S.A. filed an opposition
to the mark’s registration on the basis of two European CTM
registrations, UNO MONEY TRANSFERS, No. 22 56 320, and
UNO, No. 22 56 321 both for services in Class 36. The opposition
was rejected on ground that no rights are granted by Iceland to
CTM registrations and that no rights had been acquired by
opponent for its marks in Iceland through use.436
III.B.1. Passing Off
The new owner of an ice cream shop terminated a distribution
agreement with ice cream manufacturer KJÖRÍS, which since
1987 had supplied ice cream to the shop. No name was displayed
on the shop, so the main identification of the shop to the public
was in the shop’s advertising signs, the KJÖRÍS trademark, a blue
oval shape with the word KJÖRÍS in white letters, displayed in a
large format in the windows and on a marquis over the entrance
and in a smaller format inside the shop. After termination of the
distribution agreement, the new owner modified the signs by
erasing the word KJÖRÍS and putting the words “Since 1987” in
its place. KJÖRÍS filed for an injunction, which was granted and
subsequently confirmed in court on the ground of passing-off. The
judge also found that the use of the altered mark constituted an
infringement of the KJÖRÍS trademark. KJÖRÍS’ claim for
damages was nonetheless dismissed.437
435. ALZA Corp. v. Alcon Inc., Registrar decision of 13 February 2004, ELS Tíðindi,
Issue 2/04, http://www.els.is/focal/webguard.nsf/key2/4urdskurdur.html/$File/ PROCALYX
%20%204-2004.pdf.
436. Uno Money Transfers v. Money Transfer Nordic AB, Registrar decision of 12 May
2004,
ELS
Tíðindi,
issue
5/2004,
http://www.els.is/focal/webguard.nsf/key2/
13urdskurdur2004.html/$File/MTN-2004.pdf.
437. Kjörís ehf. v. Ísboxið ehf., Reykjavík District Court judgement of 26 February 2004,
unpublished.
Vol. 95 TMR
455
V.A. Domain Names
In August 1999, the agent for MAZDA Motor Corp. applied for
the domain name mazda.is. The application was refused in
September because evidence of the trademark registration in the
name of the applicant was missing. In October 1999, the domain
name mazda.is was allocated to an informal MAZDA fan club. In
March 2003, the agent, on behalf of MAZDA Motor Corp.,
demanded that the fan club relinquish the domain name. The fan
club refused. In the subsequent court action, the fan club referred
to the plaintiff’s lengthy inaction. In response, the agent reported
that he had, upon refusal, notified the Icelandic Domain Name
Authority (INTIS) in September 1999 that he would provide formal
authorization from MAZDA Motor Corp. for a renewed application
for the domain name and claimed that no urgent action had been
needed as the domain name had been inactive from the beginning.
For this reason, the judge accepted that he had not forfeited his
right to contest the allocation of the domain name to the fan club.
On the basis of MAZDA Motor Corp.’s registered MAZDA
trademark, albeit stylized, and established use through the sale of
5,000 MAZDA vehicles over the years, though sales in recent years
had been weak, the judge found that the MAZDA trademark
rights, as described, precluded the defendant from keeping the
domain name. The defendant was thus ordered to cancel the
domain name.438
INDONESIA
III.A.2.b. Similarity of Marks
In ESSO v. ASSO,439 Exxon Mobil Corp. (EMC), the plaintiff in
this case, is the owner and user of the registered mark ESSO for
products in International Classes 4 and 11. On 25 July 2003, the
Trademark Office (TMO) issued PT. Kharisma Gemilang Wahana
(KGW) a registration certificate for the mark ASSO for motor
vehicle accessories and parts in Class 12, including starters,
transmission gears, radiators, pistons and reflectors.
According to EMC, the TMO should reject KGW’s ASSO
trademark in Class 12, which has the same pronunciation as the
ESSO trademark. EMC argued that the public would associate the
defendant with the plaintiff and will falsely believe that the
defendant’s products either originate from the plaintiff or there is
438. Mazda Motor Corp. v. Mazda Fan Club, Reykjavik District Court judgement of 16
January 2004, unpublished.
439. Commercial Court of the Central
22/Merek/2004/PN.Niaga/JKT.PST, 14 July 2004.
Jakarta
District
Court,
Case
No.
456
Vol. 95 TMR
at least a business relationship. The plaintiff is of the opinion that
without the inspiration of its well-known ESSO trademark, the
defendant would never have filed the ASSO trademark.
KGW denied and rejected all of EMC’s arguments as they are
the owner and the first registrant of the ASSO trademark, No.
544156 dated 25 July 2003, for goods in Class 12. KGW
acknowledged EMC’s ESSO mark, No. 373656 of 16 May 1996, for
goods in Class 4 and No. 466639 of 14 April 1998, for goods in
Class 11. However, KGW argued that it is crystal clear that the
marks of EMC and KGW are not the same at all based on the
meaning of the words and the kind of goods they cover. Therefore,
KGW argued that EMC’s claim is frivolous.
According to the TMO, the co-defendant, EMC's claim is not
clear (obscure libel) because the legal grounds of its claim are
incorrect, namely the data in the records of the TMO indicate that
the registration No. 466639 is for the trademark MP3.COM in the
name of MP3.Com, Inc. in the United States and not for ESSO.
Therefore, the plaintiff’s claim is considered obscure.
On the basic similarities claimed by the EMC, there is no
prohibition for an individual or entity to file an application for the
same trademark as long as it is for different kinds of goods. In
Article 6 para. 1 letter a, an application must be rejected by the
TMO if the mark has similarities in whole or in part with an
earlier registered mark for the same kinds of goods or services.
EMC claims that its mark is well known. Therefore, EMC is
obliged to prove that the mark concerned is well known. According
to Article 6 para. 1 letter b of Trademark Law No. 15 of 2001, this
can be proven based on public opinion, a reputation as a wellknown mark, promotional campaigns, registration in several
countries and survey results made by an independent institution.
EMC also claimed that KGW filed its trademark in bad faith.
Therefore, EMC must prove that the mark concerned is filed in
bad faith according to Article 4 para. 1 of Trademark Law No. 15 of
2001. The plaintiff must evaluate whether or not the registrant
filed the mark in bad faith based on the fame of the plaintiff's
mark, or the fact that the mark can create unfair competition or
mislead consumers.
The case was decided by the Commercial Court in favour of
KGW. The Commercial Court agreed with the TMO’s arguments
that the EMC’s claim was obscure as the legal ground to file this
cancellation based on the ESSO mark, No. 466639, which was not
in accordance with the data at the TMO because this register
number actually refered to the mark MP3.COM of MP3.Com, Inc.
in the United States and not the mark ESSO. In addition, the facts
that EMC amended its claim and corrected the registration No.
446639 in their counter-plea clearly showed that EMC was not
consistent with its own arguments and therefore the claim by EMC
Vol. 95 TMR
457
could not be justified because the revision was made in the
counter-plea and not as it should be before the reply of the
defendant was submitted to the Court. Therefore, the TMO’s
argument that EMC’s claim was obscure had a legal basis, and
this claim was rejected.
The Supreme Court, however, rejected the Commercial Court's
judgment and ruled in favour of EMC. The Supreme Court
reasoned that the Trier of Fact has wrongfully given judgment in
favour of KGW. The Supreme Court rejected KGW’s argument as
too narrow that revising the registration number during the
counter-plea was late according to civil procedure and should not
be accepted. The Supreme Court found that the ESSO trademark
is a well-known mark in its home country and also in other
countries as seen from the evidence. The use of the word ASSO as
a trademark by KGW was based on bad faith as this word is
similar in pronunciation and sound to the ESSO mark of EMC. By
using the mark ASSO, KGW was cashing in on EMC’s well-known
ESSO mark. The Supreme Court also based its finding on previous
Supreme Court decisions where a trademark was found to have
similarities with another mark in shape, composition or sound.
Furthermore, the Supreme Court held that Indonesia must
maintain International relations and respect trademarks from
foreigners.
In this Supreme Court judgment the following can be noted.
The well-known mark ESSO was recognized not only in EMC’s
home country but also in other countries, including Indonesia. The
trademark ASSO was considered to have similarities to and may
be compared with the ESSO trademark even though they covered
different classes of goods. The Commercial Court’s judgment to
reject EMC’s claim because revision was forwarded in the counterplea and not earlier before the defendant’s reply according to civil
procedure is considered too narrow a view.
III.F.5. Cancellation
In the FOREVER FRIENDS & Teddy Bear logo case,440 the
plaintiff, Hallmark Cards Plc. in England (Hallmark) is the owner
and user of the registered mark FOREVER FRIENDS & Teddy
Bear logo in several classes as follows:
•
FOREVER FRIENDS trademark No. 526114 in Class 6,
dated 31 December 2002; No. 526203 in Class 28, dated 3
January 2003; No. 548450 in Class 21, dated 17
September 2003;
440. Commercial
Court
of
the
Central
Jakarta
No.15/MEREK/2004/PN.NIAGA.JKT.PST, 13 April 2004.
District
Court,
Case
458
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Teddy Bear logo No. 542498 in Class 16, dated 9 July
2003 and No. 542497 in Class 28, dated 9 July 2003;
•
FOREVER FRIENDS and FOREVER FRIENDS & Teddy
Bear logo still pending under Agenda No. D00-2002
01001-01007 in Class 20, dated 17 January 2002 and
Agenda No. D00-2003 24175-24378 in Class 16, dated 8
September 2003.
Hallmark has used and registered the FOREVER FRIENDS &
Teddy Bear logo in many countries all over the world since 1987.
Through continuous use and promotion, its logo has become a wellknown trademark.
The TMO as the co-defendant registered the trademark
FOREVER FRIENDS & Teddy Bear logo for goods in Class 16
under No. 400605 dated 20 October 1997, in the name of the other
defendant, Mr. Hendrawan. This application was filed in 1995.
Hallmark strongly objected to the registration of FOREVER
FRIENDS & Teddy Bear logo trademark No. 400605 in Class 16 by
Mr. Hendrawan based on basic similarities in the font and type of
goods in Class 16 as well as bad faith on the part of Mr.
Hendrawan in registering the FOREVER FRIENDS & Teddy Bear
logo mark using the same label as Hallmark’s well-known mark.
Hallmark also argued that based on Article 68 para. 1 and
Article 69 para. 2 of Trademark Law No. 15 of 2001, Hallmark as
the owner of a well-known mark has the right to file a cancellation
action of Mr. Hendrawan’s registered trademark without any time
constraints because these provisions incorporate Article 6 para. 3
of the Paris Convention, which states, “No time limit shall be fixed
for seeking the cancellation of the marks registered in bad faith.”
Mr. Hendrawan raised the following procedural arguments:
(i) The trademark cancellation claim had no legal grounds
because Hallmark must have a registered FOREVER
FRIENDS & Teddy Bear logo in Class 16 or evidence that
it had a trademark application that was still pending at
the TMO. However, in this case the pending mark under
Agenda No. D00-2003 24175-24378 in Class 16, dated 8
September 2003, was rejected based on Mr. Hendrawan’s
mark FOREVER FRIENDS & Teddy Bear logo for Class
16 under No. 400605, dated 20 October 1997.
(ii) The time to file a cancellation claim had expired.
According to Article 69 para. 1 of the Trademark Law No.
15 of Year 2001, a cancellation claim can be filed within
five years from the registration date of the mark. Mr.
Hendrawan filed his mark No. 400605, dated 20 October
1997, but Hallmark’s claim was filed on 13 April 2004,
which is seven years after Mr. Hendrawan’s mark
•
Vol. 95 TMR
459
registration in 1997. This means that the time for
cancellation had expired.
(iii) According to Article 69 para. 2 of the Trademark Law No.
15 of Year 2001, a cancellation claim can be filed without
limitation of time if the trademark is against morality,
public order, decency or bad faith. Such claim should be
filed by the public prosecutor, consumer’s institution or
religious institution as the concerned parties.
(iv) The Paris Convention of 1967 as an International
Agreement cannot be used as a legal ground to cancel a
registered mark based on Trademark Law No. 21 of Year
2001, which is a national law.
(v) The claim is not clear and cannot be understood (obscure
complaint) because Hallmark claims that its trademark
FOREVER FRIENDS & Teddy Bear logo is a well-known
trademark without providing strong and convincing
evidence and filed the claim after the expiration to file the
cancellation claim.
Mr. Hendrawan raised the following substantive arguments:
(i) Based on Article 3 of the Trademark Law No. 15 of Year
2001, the “first to file” system adopted where the first to
file is considered by law as the trademark owner and
obtains protection according to law, in this case Mr.
Hendrawan is considered the trademark owner and
because he was the first to register the mark.
(ii) The TMO should actually reject the Hallmark trademarks
under Nos. 526114, 526203, 548450, 542498 and 542497,
filed after Mr. Hendrawan’s trademark No. 400605 dated
20 October 1997.
(iii) Hallmark claimed that both marks were for the same
products and that the marks had basic similarities with
each other, namely the FOREVER FRIENDS & Teddy
Bear logo. However, according to Mr. Hendrawan, in
reality, it was possible to distinguish between the two
products.
(iv) Hallmark could not prove that the FOREVER FRIENDS
& Teddy Bear logo was a well-known mark as there was
no strong convincing evidence on this claim.
(v) Mr. Hendrawan was the original owner of the trademark
FOREVER FRIENDS & Teddy Bear logo under No.
400605, dated 20 October 1997, because he had filed the
mark earlier and this mark had been accepted by the
TMO. Therefore, Mr. Hendrawan did not act in bad faith
because the TMO could only accept a trademark given the
following conditions:
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a. does not have similarities in the list of goods
protected;
b. is not a well-known mark;
c. is not filed in bad-faith.
The TMO raised the following substantive arguments:
(i) The products protected by both marks were different
kinds of goods. Hallmark registered the mark for keychains, children’s luxurious toys, plates, bowls, dishes,
drink glasses, bookmarks, calendars, files, posters,
stickers, note boxes and greeting cards with envelopes.
Whereas Mr. Hendrawan registered his mark for tissue
and toilet paper, wrapping paper, newspapers, magazines,
books, pencils, ballpoint pens and cards. According to
Article 6, para. 1 of the Trademark Law, registration of a
similar trademark is not prohibited as long as the goods
protected are different.
(ii) According to Article 6 para. 1b, a mark is considered well
known not only because the mark is registered in several
countries but also because there is a continuous and
substantial promotional campaign and investment in
several countries. If the evidence is insufficient, the
Commercial Court can instruct an autonomous institution
to make a survey to obtain a conclusion whether or not a
mark is well known.
Therefore, the criteria for a well-known mark are: (a)
general knowledge of the public of the well-known mark;
(b) high reputation of the well-known mark; (c) wide
promotions; (d) registration in several countries; (e)
survey results of an independent institution showing that
the mark is well known.
In this case, Hallmark failed to provide evidence that
proved that the trademark FOREVER FRIENDS & Teddy
Bear logo was a well-known mark.
(iii) According to Trademark Law No. 15 of Year 2001, only
applicants in good faith can obtain registration for their
trademark applications. It was not relevant to consider
that Mr. Hendrawan filed the mark in bad faith as Mr.
Hendrawan fulfilled the formal requirements after
substantive examination. After the mark was published in
the Trademark Journal, there was no objection filed by
Hallmark. Hallmark then, in bad faith, filed a
cancellation action against Mr. Hendrawan’s trademark.
The Panel of Judges of the Commercial Court rejected Mr.
Hendrawan’s argument that Hallmark could not be considered a
concerned party in order to file the cancellation claim without time
Vol. 95 TMR
461
limitation under Article 69 para. 2 of Trademark Law No. 15 of
Year 2001. The Panel of Judges accepted Mr. Hendrawan’s
argument that the time to file the cancellation case had expired
according to Article 69 para. 1 of Trademark Law No. 15 of year
2001. The cancellation claim should have been filed within five
years of the registration date of 20 October 1997, whereas the
cancellation claim was filed on 13 April 2003.
The Panel further reasoned that Hallmark could not prove
that the trademark FOREVER FRIENDS & Teddy Bear logo was a
well-known mark based on the following:
(i) To be considered a well-known mark, Hallmark should
have registered the mark in or before 1995, the year the
conflicting trademark registration was filed.
(ii) Before 1995, the owner of the FOREVER FRIENDS &
Teddy Bear logo was The Andrew Brownsword Collection
and not Hallmark. These marks were registered under
the name of The Andrew Brownsword Collection before
1995 in Australia for Class 16, Denmark in 1993 for
Classes 16, 21 and 28, France in 1993 for Classes 9, 14,
16, 20, 21 and 28, Germany in Classes 16 and 28, Hong
Kong in 1995 for Class 16. Hallmark did not mention its
connection with The Andrew Brownsword Collection in
the claims.
(iii) Although Hallmark had registered the FOREVER
FRIENDS & Teddy Bear logo after the year 1995 in
several countries, namely Croatia in 2002 for Class 18,
Estonia in 2000 for Classes 16, 21 and 28, Korea in 2003
for Classes 12, 16, 18, 24 and 25, Latvia in 1999 for
Classes 16, 21 and 28, China in 1997 for Class 16, Mr.
Hendrawan had evidence that he had registered his mark
FOREVER FRIENDS & Teddy Bear logo in Indonesia in
1997 before Hallmark’s filing of the mark. Hallmark also
could not prove that they were the first to file the mark at
the TMO in Indonesia.
(iv) Hallmark also could not prove that its trademark was
generally known by the public as Hallmark did not
mention specifically when and where the products
(greeting cards and wrapping paper) were widely sold and
therefore Hallmark’s FOREVER FRIENDS & Teddy Bear
logo did not fulfill the criteria of a well-known mark.
Thus, Hallmark’s cancellation claim against Mr.
Hendrawan of imitating and trying to take advantage of
the FOREVER FRIENDS & Teddy Bear logo trademark’s
popularity was not fulfilled.
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(v) Mr. Hendrawan had registered his FOREVER FRIENDS
& Teddy Bear logo under No. 400605, dated 20 October
1997, in good faith.
In conclusion, the Commercial Court decided the case in favor
of the defendant, Mr. Hendrawan and ordered Hallmark to pay
court fees.
IRAN
I.B.8.a. Similarity of Marks
A Chinese company located in one of the free zones of Iran
filed an application for registration of the trademark “JORDAN &
silhouette of a basketball player” in International Class 25. Nike
Corporation filed an administrative opposition against the
defendant’s trademark application and simultaneously, in order to
comply with Iranian law, filed two applications, for the word mark
JORDAN and for the design mark “Silhouette of a basketball
player,” in Class 25.
Plaintiff Nike filed a petition with the court against defendant
Chinese firm and requested the rejection of the defendant’s
trademark application.
The court issued a verdict in favor of the opponent. It found
that Nike's registration of the trademarks abroad and their
continued use, had been well documented before the court and,
therefore, the opponent had priority rights over the defendant’s
application. The court ordered the Iranian Industrial Property
Office to refuse the defendant’s trademark application and proceed
with registration of the plaintiff’s trademark applications in
Iran.441
IRELAND
I.B.2. Merely Descriptive Terms
The Irish Patents Office has held that the mark CRUNCHY
FRIES is a term that any manufacturer of potato- or corn-based
snacks might legitimately wish to describe any such goods in the
nature of potato sticks.442
Golden Wonder Limited applied for registration of CRUNCHY
FRIES in respect of the following goods in Classes 29 and 30:
441. Case No. 839/3/81, Verdict No. 252 (June 13, 2003). Confirmation of the verdict was
granted on June 29, 2004.
442. Unreported decision of the Controller of Patents, Designs & Trade Marks, July 27,
2004.
Vol. 95 TMR
•
463
Class 29: Potato crisps, potato products in the form of
snack foods; potato based snack foods; instant meals;
prepared meals; nuts and mixtures of nuts and dried
fruits; snack foods; preparations for making instant
snack meals.
Class 30: Snack foods; instant meals; prepared meals;
flour and cereal based foods; popcorn; coated nuts;
biscuits; preparations for making instant snack meals.
The mark was accepted and advertised for opposition purposes on
December 1, 1999. An Irish snack food company, Tayto Limited,
filed opposition on the ground that the mark was merely
descriptive and devoid of distinctive character. Tayto claimed in its
evidence that CRUNCHY and FRIES were words that other
traders might legitimately require to use to describe fried snack
foods that are crunchy and that registration of the mark would be
an obstacle to competitors’ using the term as a description of their
goods. The opponent exhibited sample packaging showing how it
used the words CRUNCHY and FRIES in a descriptive manner.
Exhibited wrappers included products named and branded KING
FRENCH FRIES and TAYTO CHIPSTICKS—CRUNCHY
POTATO AND CORN STICKS. Tayto claimed that the word “fries”
is an abbreviation of “French Fries” and is commonly used in the
trade to describe potato chips or potato crisps.
The applicant in reply accepted that the term “fries” is an
abbreviation of “French Fries,” which refers to fried strips of
potato; but it submitted that there is no evidence of widespread
use of the word “fries” in relation to packaged snack foods, and it
claimed that the term would not be required as a description of
such goods by other manufacturers.
Even though the application covered a range of goods in
Classes 29 and 30, the Controller of Patents, Designs and Trade
Marks considered the question of distinctive character in the
context that the opponent’s objection was directed to goods that
may be categorized as packaged potato- or corn-based snacks. The
Controller found that the mark was not devoid of distinctive
character in relation to such goods443 but held that the combination
of the adjective “crunchy” and the noun “fries” was not arranged in
any unusual manner and that the combination CRUNCHY FRIES
is the normal way of describing fries that are crunchy. The
opposition was upheld in respect of the following goods: “potato
crisps, potato products in the form of snack foods, potato based
snack foods and snack foods in the nature of potato or corn based
snacks.”
•
443. Compare Procter & Gamble Co. v. OHIM, Case C-383/99, 2001 E.C.R. I-6251
(BABY-DRY).
464
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I.B.9.b. No Similarity of Goods/Services
The opponent, Boyne Valley Foods Limited, is the proprietor of
Irish trademark registration No. B125544, KITCHEN MATE, in
Class 21 in respect of “cleaning sponges with both abrasive and
non-abrasive sides for household cleaning purposes.”
Kelly Hunter Limited (the applicant) filed two applications for
registration of the word KITCHENMATE in respect of the
following goods in Classes 8 and 21:
• Class 8: Cutlery, forks and spoons; tongs; vegetable
shredders and slicers.
Class 21: Small domestic containers (not of precious
metals or coated therewith); cutting boards for use in
the kitchen; tableware; salad bowls; kitchen utensils;
soup bowls; sieves.
The applications were accepted and advertised in the Patents
Office Journal of August 10, 1994.
Boyne opposed the published applications on the grounds of
likelihood of confusion and deception arising from its preexisting
reputation in the trademark KITCHEN MATE. It filed evidence of
sales of 3.5 million sponges bearing the mark KITCHEN MATE in
Ireland since January 1988. The exhibited sample packaging bears
the mark KITCHEN MATE together with the word KILLEEN and
the slogan FLY THROUGH THE WASHING UP.
The applicant denied that the mark applied for was identical
to the opponent’s mark or that the goods were similar. It filed
evidence of use of the mark KITCHENMATE in Ireland since
September 1989 in relation to “spoons, boards and other related
products.” The opponent disputed the evidence of use filed and
claimed that a survey conducted in 1995 failed to find any of the
applicant’s products in all major retail outlets.
In refusing the opposition the Controller noted the applicant’s
argument that the marks were not quite identical, but accepted
that the differences were very minor and attached no significance
to them.444 The Controller held, further, that the respective goods
were dissimilar, being different in their nature, composition and
purpose. The goods, the Controller stated, did not compete with
each other in the marketplace and were not complementary of each
other in use. While the opponent made much of the fact that the
respective goods were retailed through the same supermarkets,
the Controller pointed out that one could find a wide array of very
different goods in such outlets. Furthermore, while the respective
goods had the same end-users and were all used in kitchens, they
•
444. Unreported decision of the Controller of Patents, Designs & Trade Marks, March 5,
2004.
Vol. 95 TMR
465
were not goods that the ordinary consumer would regard as
similar or expect to have a common commercial origin. The
Controller regarded the semidescriptive nature of the opponent’s
mark as significant in the assessment of whether the use of the
applicant’s mark was likely to cause confusion. In the Controller’s
opinion, a person who was familiar with the opponent’s mark as
used on its goods and who subsequently encountered the
applicant’s mark on its goods might well be reminded of the
opponent’s goods, but that was as far as it went. The Controller did
not think that such a person was likely seriously to wonder
whether the KITCHENMATE cutlery, utensils, chopping boards,
etc., had the same commercial origin as the KITCHEN MATE
cleaning sponges. Rather, the Controller took the view that the
consumer was much more likely to conclude that two unrelated
undertakings independently came up with the same highly
allusive trademark for their respective kitchen products.
The decision has been appealed to the High Court.
I.B.12. Famous Marks
The well-known jeweller Tiffany & Co. opposed registration of
the mark TIFANY by Emballages Mixtes et Plastiques in Class 16
for “Paper, cardboard, articles of paper or of cardboard, (not
included in other classes); printed matter, books, brochures”
following publication of the mark in the Patents Office Journal of
June 28, 1995.
The opponent is the proprietor of a number of trademark
registrations for the marks TIFFANY and TIFFANY & CO. for
goods in Classes 3, 14 and 21. Tiffany claimed that its marks were
among the most famous in the world for jewellery, engraved
stationery, watches, high-quality cutlery, crystal bowls, chinaware
and other products. The opponent’s evidence included claims that
Tiffany had traded for more than 150 years in items of stationery,
including high-quality engraved cards, envelopes and paper. The
applicant submitted evidence of use of the mark TIFANY in
Ireland since 1983 on disposable paper or plastic plates and cups
as well as serviettes, although such goods were not covered by the
application filed. The applicant also exhibited the results of a
search of the Irish Register showing a number of existing
registrations of marks consisting of or containing the word
TIFFANY that have been registered in the name of proprietors
other than the opponent.
The respective marks, the Controller held, were so similar as
to be almost identical. The Controller accepted that the opponent
has a reputation under its marks in relation to stationery and held
that use of the mark TIFANY by the applicant in respect of the
goods applied for would be likely to be taken by the relevant
466
Vol. 95 TMR
consumers as an indication that the goods in question were those
of the opponent or were offered under its authority.
The opponent’s registration of TIFFANY & CO. under No.
112084 covered “all goods included in Class 21” and therefore
included disposable tableware of the type traded in by the
applicant. The Controller found deception or confusion was likely if
the applicant used the mark TIFANY on paper table napkins.445
I.B.13. First to Apply Versus First to Use
A Swiss company, Manufacture Des Montres Jaguar S.A.,
sought registration of the word JAGUAR in Class 14 in respect of
“watches and parts thereof.” The application was advertised as
accepted in the Patents Office Journal of September 22, 1993.
Opposition was lodged by the British companies Jaguar Cars
Limited and The Jaguar Collection Limited. The former company
is the proprietor of the trademarks JAGUAR and a device of a
jaguar in respect of high-quality products, including motor
vehicles, articles of sports clothing, games, playthings, gymnastic
and sporting articles, spectacles, sunglasses, spectacle frames,
articles of leather or imitation leather, bags, handbags, purses and
watches. The latter company has responsibility for the marketing
and sale of nonautomotive products under the JAGUAR
trademarks.
The opponents claimed that because of their international
reputation in the JAGUAR trademarks, use of the mark by the
applicant would be likely to deceive or cause confusion and lead to
the applicant’s goods’ being passed off as those of the opponents.
The opponents filed extensive evidence of use of the JAGUAR
marks on cars and nonautomotive products, including watches,
clocks, items of clothing, umbrellas, picnic baskets, jewelry, leather
goods and travel goods.
The applicant claimed succession in title from an entity called
Fabrique d’Horologerie Sindaco S.A., which had secured a
registration of the trademark JAGUAR in relation to watches in
Switzerland in 1945.
The opponents disputed the validity of the applicant’s claim to
be the successor in title of the original proprietor of the 1945 Swiss
registration of the trademark JAGUAR in respect of watches.
Much of the evidence filed by both sides related to proceedings in
Switzerland in which the validity of the legal transfer of title was
put in issue. In Switzerland, the criminal proceedings in respect of
an alleged fraud for interference with legal transfer documents
have been dismissed. The hearing officer took the view that the
445. Unreported decision of the Controller of Patents, Designs & Trade Marks, April 20,
2004.
Vol. 95 TMR
467
evidence filed by the parties did not prove conclusively that the
transfer of title was invalid under Swiss law. However, this was
not the end of the matter, and the opponents submitted an
alternative argument for refusal of the application on the ground
that the applicant was not the proprietor of the mark. The
argument was based on the long-established principle that the
owner of a mark is the party that first uses it in the jurisdiction.446
The opponents’ claim to proprietorship by virtue of first user
in the jurisdiction was based on evidence that three watches, one
of which was given gratis, were dispatched to an Irish distributor
of JAGUAR motorcars. The Controller dismissed the evidence as
flimsy and not evidence that goods bearing the mark had been put
on the market in Ireland in such a way as to have come to the
notice of the public generally or even of a very small subset, that
is, all those who bought JAGUAR cars. In order for a claim to
proprietorship of a mark based on use to succeed, the Controller
stated, the use must be genuine use of the mark as a trademark
and must be more than mere token use.
The Controller also dismissed the opponents’ objection that the
applicant’s use of the mark JAGUAR in relation to watches was
likely to lead to confusion, having regard to their existing
reputation under the mark JAGUAR in Ireland in relation to
motorcars. In reaching the decision, the Controller allowed for the
fact that there had been a practice of brand extension in the motor
industry to goods such as watches, but distinguished the
opponents’ marks, being an ordinary English word, from those of
some of their competitors, such as MERCEDES-BENZ or BMW.
The Controller noted that the names of animals, indeed the names
of big cats, are quite commonly used as trademarks for a wide
variety of goods: for example, PUMA sportswear, TIGER beer and
LION chocolate bars; however, the Controller could not imagine a
MERCEDES BENZ or BMW watch being taken as anything other
than a product of, or related to, the car manufacturer of that name.
A JAGUAR watch was a different matter. The Controller accepted
that the average consumer, on encountering the trademark, was
likely to be reminded of the motorcar and that it was possible that
he or she might think that there was a connection between the car
manufacturer and the watch manufacturer. Whether that was
likely, however, was not certain, and the Controller concluded that
it was not sufficiently likely to warrant refusal of the
application.447
446. See Montex Holdings Ltd. v. Controller of Patents, Designs & Trade Marks, 2000 1
I.R. 577 (Ir. H. Ct.).
447. Unreported decision of the Controller of Patents, Designs & Trade Marks, March 5,
2004.
468
Vol. 95 TMR
ISRAEL
I.B.7.b. Three-Dimensional Marks
The question discussed in August Storck KG v. ALFA INTOIT
Food Products Ltd.448 was whether a trademark registration can
prevent others from using the design of the goods themselves,
which is covered by the registered trademark.
Storck is a German company that produces and markets
TOFFIFEE, a chocolate-caramel candy shaped like an acorn. The
plaintiff wished to register the shape of the candy as a trademark.
ALFA INTOIT claimed that the candy’s shape could not be
registered as a trademark, as a trademark can be registered only
with regard to goods and not for actual goods. It claimed, further,
that the design of the candy was generic, consisting of “simple
lines” popular in the candy industry, and therefore was not unique.
The defendant charged that the plaintiff acted in bad faith in
attempting to register the design of the candy (i.e., the shape) as a
trademark. Storck countered that ALFA INTOIT tried to bypass
the regulations and demands of the Designs Registrar, which
probably would not have allowed the defendant to register the
product, as the candy was famous in Israel before the application
for its registration.
The court ruled that trademark protection was granted to the
graphic shape that was presented in the trademark registration
application, whereas the trademark served its owners as a “flag.”
Viewing the trademark as a means to protect the exclusive
production of the candy, said the court, was unacceptable. The
judge ruled that the protection afforded to the registered
trademark could not be broadened to include the product itself.
Therefore, registration of the mark with regard to the candy could
not prevent the production and marketing of acorn-shaped candy
that was not protected by the trademark.
A few months after this court ruling, on August 17, 2004, the
Trademark Registrar issued regulations with regard to the
registration of three-dimensional figures. The Registrar asserted
that in light of the increase of applications to register threedimensional figures (such as bottles, containers and capsules),
which apparently were intended to bypass the demands for
registering designs, there was a need for clear instructions that
would resolve this matter.
The general rule is that a three-dimensional figure should be
protected by way of a registered design mark. However, threedimensional figures will be registered only in special cases, subject
to two conditions:
448. C.F. 2191/03 (unpublished).
Vol. 95 TMR
469
1. the figure for which registration is requested is used to
mark the goods and identify their origin; and
2. the figure has acquired secondary meaning.
III.A.1. Famous Marks
Both court rulings and Registrar’s decisions were given on the
issue of famous marks in the past year. Sections 46(a) and 46(b) of
the Trade Marks Ordinance, 1972, which was enacted after Israel
entered the TRIPS Agreement, were discussed in these rulings.
These sections reinforce instructions regarding the unique right of
a famous and well-known trademark proprietor to use its
trademark.449
In V&S Vin & Sprit Aktiebolag v. Absolute Shoes Ltd.,450 the
judge asserted that the protection given to a well-known and
famous trademark needed to be narrowed. He raised the concern
that broadening the protection afforded to a well-known and
famous mark to include descriptions other than the one for which
the mark was registered would harm freedom of trade and
occupation.
Noting that there was a need for caution when applying
Sections 46(a) and 46(b) of the Trade Marks Ordinance, the judge
stated that it would be appropriate to limit the expansion of the
exclusive right to use a well-known trademark to areas close to the
field for which the trademark was registered. Only when there was
a clear indication that customers or potential customers would be
confused by the similarity between the goods indicated by the
famous and well-known trademark and the infringer’s goods could
the famous mark be protected with respect to other descriptions.
When the fields of products were distant from each other, there
was no place to apply the expansion of Sections 46(a) and 46(b).
In this case the defendant was in the footwear industry. The
judge ruled that it was not likely that the customers or potential
customers of the proprietor of the famous and well-known
trademark ABSOLUT Vodka could be confused by the similarity
between the names of the defendant’s shoe stores and the
trademark proprietor’s vodka.
449. Section 46(a) reads: “A well-known trademark, even if not registered, will enable
the trademark proprietor to use the mark exclusively with regard to the goods in which the
mark is recognizable with, or with regard to goods of the same description.” Section 46(b)
reads: “A registered well-known trademark will enable its proprietor to use the mark
exclusively also for goods that are not of the same description, if the use of the mark by
anyone who is not its proprietor might indicate that there is a relation between the above
goods and the registered mark proprietor, and that the owner of the registered trademark
might be affected as a result of this use.”
450. C.F. 1431/03 (unpublished).
470
Vol. 95 TMR
In Pentax SRL v. Asahi Kogaku Kogyo Kabushiki Kaisha,451
the trademark PENTAX was acknowledged as a well-known and
famous mark. The Registrar mentioned the ABSOLUT ruling and
referred to the judge’s opinion in that case. He agreed that there
was a need to narrow the application of Sections 46(a) and 46(b) to
cases where the application of the registered and well-known
trademark was in an adjacent area and when there was a concern
that clients or potential clients of the proprietor of the registered
mark could be confused into thinking that the business of the
applicant was related to that of the registered mark’s proprietor.
The Registrar stated, however, that each case should be examined
separately according to its facts.
III.B.4. Advertising
The Supreme Court’s ruling in Alonial Ltd. et al. v. Ariel
McDonald452 is extremely thorough and deals with several main
issues in the intellectual property field. This case dealt with
basketball player Ariel McDonald’s right to use his name in a
commercial for Burger King.
Cases such as this one, where a trademark is infringed
without likelihood of confusion, are not “typical” cases of
trademark infringement. In the “typical” case, an infringement
will be acknowledged only if the trademark proprietor proves that
there is a likelihood of consumer confusion. The court will
disregard the Trade Marks Ordinance’s demand for likelihood of
confusion where the infringer shows that there is no relation
between its products and those of the trademark proprietor but the
infringer attempts to obtain an improper benefit of some kind
solely by mentioning the other trademark.
As a general rule, the court will not bypass the Ordinance’s
instructions with regard to likelihood of confusion. If, however, the
court does decide to forgo this demand, it is required to weigh the
opposing values and decide whether it is appropriate to overlook
the clear language of the Trade Marks Ordinance.
Israeli law does not permit use of a competitor’s mark for
comparative advertisement. In this case, use of the McDONALD’S
trademark was made in order to assert that Burger King is better
than McDonald’s without presenting any factual data on which to
base that assertion, as customary in commercial advertisements.
In fact, Burger King wished to devalue the competitor and not
truly to compare the products. Thus, when in the commercial Ariel
McDonald said, “Listen to McDonald—Burger King is the one,” he
451. Opposition to registration of trademark No. 93261 (PENTAX).
452. C.A. 8483/02 (unpublished).
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471
debased and humiliated the McDONALD’S trademark. This
constituted a “reverse” use of the trademark by the infringer. In a
“reverse” use, the infringer wishes not to benefit from the mark’s
reputation but, rather, to alienate himself and the consumers from
the trademark proprietor and its products. In this case, however,
the reversal did not diminish the infringement. This was not a
commercial advertisement. If the commercial includes a factual
comparison of the competitors’ services, there is room to consider
the authorization of a comparative advertisement that mentions
the competitor’s trademark.
Furthermore, the necessity of balancing conflicting interests
means that the defense of a person’s right to use his or her name is
not absolute, but only relative. There is a need to restrict the
defense given to a person who uses his or her name while harming
another’s trademark. The right to use the name is conditional in
that the use being done is in good faith.
In this case, Ariel McDonald’s use of his name while
advertising Burger King was a sophisticated use of the
McDONALD’S trademark. McDonald wished to exploit his identity
and name for profit. However, this use was made in bad faith, and
therefore it constituted an unjust use of a trademark.
ITALY
III.A.1. Famous Marks
In Montblanc Simplo GmbH v. Sepia Products Inc. and Sire
S.r.l., the plaintiff was the renowned luxury goods company
Montblanc Simplo GmbH, owner of the famous Montblanc Star
device mark consisting of a six-point rounded white star,
registered and used for over 80 years to distinguish, inter alia, its
high-end writing instruments. Sepia Products Inc. registered and,
along with its Italian importer and distributor Sire S.r.l., used a
composite mark consisting of a similar rounded star device and the
word GENIUS to distinguish identical writing instruments.
Montblanc filed a trademark infringement action with the Court of
Milan seeking (i) the cancellation of Sepia’s registered composite
mark on the basis of Montblanc’s prior registrations, (ii) an
injunction against the defendants’ use of their mark on their
products and (iii) an award for damages for the infringement of
Montblanc’s trademark rights.
The Court of Milan granted the remedies requested by
Montblanc on the ground that Sepia’s trademark infringed
Montblanc’s trademark rights on the famous Montblanc Star
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device mark, irrespective of any likelihood of confusion.453 More
precisely, the Court held that, contrary to the previous, incorrect
interpretation of the law, the provisions of the Italian Trademark
Act that give a wider protection to famous marks454 are to be
equally applied to cases involving identical or similar goods or
services as to ones involving dissimilar goods or services.455
Consequently, the famous Montblanc Star device mark was to
afford protection against the use by Sepia and Sire of a similar
device mark on identical goods because such use took unfair
advantage of, and was detrimental to, the distinctive character
and repute of the Montblanc Star device mark.
III.A.2.b. Similarity of Marks
In Salvatore Ferragamo Italia S.p.A. v. Calzature Carpan
S.p.A., the plaintiff was the renowned luxury goods company,
owner of the famous FERRAGAMO and SALVATORE
FERRAGAMO trademarks. Calzature Carpan started using the
trademarks FERRAZZANO and F.LLI FERRAZZANO on footwear
in a graphic form identical with that used by Ferragamo for its
marks. Ferragamo filed a trademark infringement action with the
Court of Florence, but the trial court clamorously held that no
likelihood of confusion existed between the trademarks and
dismissed Ferragamo’s suit.456
On appeal, the Court of Appeal of Florence reversed the trial
court’s decision, holding that the trial court had erred, inter alia,
in evaluating the existence of a likelihood of confusion between the
parties’ trademarks.457 More precisely, the Court of Appeal
reiterated the Italian trademark law principle by which the
existence of a likelihood of confusion between two trademarks
must be examined under a “global” and “comprehensive”
perspective and not under a mere “analytical” one, as the trial
453. Montblanc Simplo GmbH v. Sepia Products Inc. and Sire S.r.l., Court of First
Instance of Milan, decision of August 5, 2003 (unpublished).
454. Article 1.1.c) Italian Trademark Act, which implements Article 5.2 EEC Directive
to Approximate the Laws of the Member States Relating to Trademarks (EEC Trademark
Directive), provides that a trademark owner has the right to exclude others from using “a
sign identical with or similar to a mark registered for dissimilar goods or services, if the
registered mark enjoys a reputation in the Country and if use of the sign without due cause
permits the taking of unfair advantage of, or is detrimental to, the distinctive character or
the repute of the mark.”
455. The Court cited and followed the European Court of Justice’s decision of January 9,
2003, in Case C-292/00 Davidoff & Cie S.A., Zino Davidoff S.A. v. Gofkid Ltd.,
www.curia.eu.int.
456. Salvatore Ferragamo Italia S.p.A. v. Calzature Carpan S.p.A., Court of First
Instance of Florence, decision of July 19, 2001 (unpublished).
457. Salvatore Ferragamo Italia S.p.A. v. Calzature Carpan S.p.A., Court of Appeal of
Florence, decision of March 11, 2004 (unpublished).
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473
court had erroneously done. In other words, the trial court should
not have evaluated the risk of confusion between Ferragamo’s and
Carpan’s marks by examining each single element separately, but
should have instead weighed all the relevant elements—the sight,
sound and meaning elements—together as a whole.
Moreover, the Court of Appeal held that the trial court did not
afford Ferragamo’s trademarks the adequate protection granted by
Italian law to strong marks. In particular, recent Supreme Court
decisions have consistently held that when a mark is strong, as is
the case for Ferragamo’s marks, variations to such mark, even if
considerable and original, are not sufficient to avoid a finding of
likelihood of confusion if they leave intact the “ideological nucleus”
of the said mark.
Accordingly, the Court of Appeal, following the trend in Italian
case law, held that, since the two marks at issue were markedly
similar both phonetically and graphically, and since the differences
portrayed by Carpan’s trademarks left intact the “ideological
nucleus” of Ferragamo’s marks, the trial court had erred in not
finding the marks confusingly similar. The Court of Appeal further
granted the remedies requested by Ferragamo, namely, the
injunctive order against Carpan and the award of damages and
legal costs and fees to Ferragamo.
Similarly, in Emanuel Ungaro S.A. v. Raffaele Ungaro, the
Court of Reggio Emilia held that the defendant’s mark U
RAFFAELE UNGARO was confusingly similar to the plaintiff’s
famous mark UNGARO.458 Following the leading trend set out in
the Ferragamo case above, the Court found that, although the
defendant’s trademark comprised a figurative element—namely, a
shield with a rhomboidal background and a five-point crown,
within which the letter U was displayed—this element was only a
formal difference and was not sufficiently distinctive within the
overall representation of the trademark. Therefore, the “ideological
nucleus” of Emanuel Ungaro’s trademark was entirely reproduced
in Mr. Ungaro’s mark.
The Court of Reggio Emilia, therefore, declared the
defendant’s Italian and International registrations for the mark U
RAFFAELE UNGARO to be void and, finding trademark
infringement, granted Emanuel Ungaro the injunctive remedy
against Mr. Ungaro, as well as, inter alia, an award for damages
and the publication of the decision.
458. Emanuel Ungaro S.A. v. Raffaele Ungaro, Court of First Instance of Reggio Emilia,
decision of January 23, 2004 (unpublished).
474
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III.A.11.b. No Similarity of Goods/Services
Centrale S.p.A., owner of the registered trademarks
FREEPORT and FREE-PORT, and Freeport S.r.l., the distributor
of the products bearing the said trademarks, filed a trademark
infringement suit against Freeport s.c.r.l. for, inter alia, the use of
the service mark FREEPORT. While the plaintiffs used the
trademark FREEPORT to distinguish clothing articles sold to the
public at large, the defendant used the service mark FREEPORT
to distinguish its “shopping club,” where a wide variety of products
were sold only to the co-operative’s members.
The trademark infringement claim was dismissed by the
Court of First Instance of Varese,459 whose decision was later
upheld by the Court of Appeal of Milan,460 on the ground that there
existed no likelihood of confusion due to the differences between
the plaintiffs’ goods and the defendant’s services. The plaintiffs
appealed the decision to the Supreme Court, which, ultimately,
upheld the lower courts’ decisions in relation to the trademark
infringement claim.461
In essence, the Supreme Court held that, as a general rule,
there can be no risk of confusion between a trademark and a
service mark unless the service mark is used in such a manner as
to induce the consumer to believe that the same mark also
distinguishes the product. The Supreme Court stated that, in this
case, the lower courts were correct in not finding a similarity
between the goods and services at issue because the two uses of
the mark not only related to a different geographical area but
concerned, on the one side, the offering for sale of clothing articles
to the public at large and, on the other side, the offering for sale of
products of varying nature solely to the members of the cooperative. Therefore, the Supreme Court held that the lower courts
correctly excluded the existence of any risk of confusion between
the plaintiffs’ products and the defendant’s services because a
consumer could not have been induced to believe that the
defendant’s activities could be somehow related to the plaintiffs’
products.
III.A.12. Lack of Distinctiveness
The Italian Supreme Court, in Dama S.p.A. v. Benetton Group
S.p.A., affirmed that a composite mark, when made up of nondistinctive elements that as a whole make it distinctive, cannot be
459. Court of First Instance of Varese, decision of July 9, 1998 (unpublished).
460. Court of Appeal of Milan, decision of March 3, 2000 (unpublished).
461. Freeport S.r.l. v. Freeport s.c.r.l., Supreme Court, decision of July 17, 2003,
published in Il Foro Italiano, February 2004, No. 11.
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475
infringed if only one of the non-distinctive elements is
reproduced.462 Its ruling upheld the previous decision by the Milan
Court of Appeal.
In this case, Dama had brought a trademark infringement
action against Benetton claiming that Benetton’s trademark
COLORS and its other COLORS-formative marks infringed its
prior composite trademarks, which consisted of three stylized roses
under two bands creating a rectangle within which is the word
COLORS.
Following the Court of Milan’s decision in favor of Dama,
Benetton appealed and the Court of Appeal of Milan set aside the
trial court’s decision. Dama then appealed and the Supreme Court
held that the Court of Appeal correctly ruled Benetton had not
infringed Dama’s marks. In fact, the Court of Appeal had found
that Dama’s trademarks were composite trademarks made up of
single, merely descriptive elements, that only as a whole
constituted a distinctive trademark.463 In particular, the word
element COLORS alone was to be considered merely descriptive in
the field of clothing and fashion in general because it is commonly
used in the industry to refer to colored products. Because it lacked
the necessary distinctiveness, it could not constitute the core of
Dama’s composite trademarks.
Consequently, Benetton’s use of the mark COLORS without
the other elements of Dama’s trademarks could not constitute an
infringement. Only the copying of all the nondistinctive elements,
which as a whole could be considered a distinctive trademark,
would have constituted trademark infringement.
III.K. Counterfeiting Issues
The Court of San Remo recently sentenced Mr. Giuseppe
Magliano and his sister, Ms. Vanessa Magliano, to one and a half
years imprisonment and 500 Euros in fines for receiving, detaining
and offering for sale products bearing counterfeit trademarks.464
Giuseppe and Vanessa Magliano were found to possess and
offer for sale a number of goods bearing counterfeit trademarks of,
inter alia, the famous fashion houses Chanel, Hermès and Dolce &
Gabbana. They were therefore charged with the crime of detaining
and offering for sale goods bearing counterfeit marks under Article
462. Dama S.p.A. v. Benetton Group S.p.A., Supreme Court, decision of April 20, 2004
(unpublished).
463. Benetton Group S.p.A. v. Dama S.p.A., Court of Appeal of Milan, decision of March
16, 2001, published in Giur. ann. dir. ind., 2001, n. 4273.
464. Court of San Remo, Division of Ventimiglia, decision of May 12, 2004
(unpublished).
476
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474 Criminal Code,465 and with the crime of fencing, i.e., willfully
receiving things originating from a crime, under Article 648
Criminal Code.466
By finding the defendants guilty under both Articles 474 and
648 of the Criminal Code, the Court of San Remo expressly cited
and applied a recent ruling of the Supreme Court that settled that
these two crimes can concur because they require different
elements for criminal liability.467
III.M. Licensing Issues
In La Vinicola Broni S.p.A. v. Casa Vinicola Calatrasi S.p.A.,
La Vinicola Broni appealed a preliminary injunctive order granted
by the Court of Voghera to Casa Vinicola Calatrasi in an action
brought on the basis of the Community trademark D’ISTINTO.468
Appellant claimed that the Court erred in granting the order
because appellee was merely the exclusive licensee of the
Community trademark D’ISTINTO, owned by the U.K. company
BRL Hardy Europe Limited, and, as such, had no standing to
bring injunctive proceedings in relation to the Community
trademark.
The Appeal Panel of the Court of Voghera admitted appellant’s
appeal and reversed the Court’s injunctive order.469 In doing so,
the Appeal Panel applied Article 22.3 of the EC Community
Trademark Regulation, which encounters no equivalent in either
the EEC Trademark Directive or the Italian Trademark Act,
according to which a licensee may institute an infringement action
in relation to a Community trademark only with the prior consent
of the Community trademark owner. In the absence of such
consent, an exclusive licensee may nonetheless independently
bring such proceedings if the trademark owner, after having been
given formal notice, does not himself bring infringement
proceedings within an appropriate period. Article 22.3 also
465. Article 474 of the Criminal Code provides that “anyone . . . who introduces in the
territory of the State for subsequent sale, or holds in order to sell or offers for sale, or
otherwise puts in the stream of commerce . . . industrial products bearing counterfeit or
altered national or foreign trademarks . . . shall be punished with imprisonment up to two
years and a fine up to Italian Lira four million.”
466. Article 648 of the Criminal Code provides that “anyone . . . who, in order to procure
a profit for himself or others, purchases, receives or conceals money or things originating
from any crime . . . shall be punished with imprisonment from two to eight years and a fine
of Italian Lira one to twenty million.”
467. Supreme Court, Unified Divisions, decision of June 7, 2001, reported in 93 TMR
684 (2003).
468. Court of First Instance of Voghera, order of February 28, 2003 (unpublished).
469. Court of First Instance of Voghera, Appeal Panel, order of April 10, 2003
(unpublished).
Vol. 95 TMR
477
specifies that its provisions do not prejudice the provisions of the
applicable license agreement.
Therefore, in the case before the Court, given that the appellee
had not obtained the Community trademark owner’s consent to
bring injunctive proceedings in relation to the said Community
trademark, had not given formal notice to the trademark owner of
its intent to bring such proceedings, nor had it attempted to “reach
an agreement” with the trademark owner to bring infringement
proceedings, as required by the exclusive license agreement, the
Appeal Panel held that it had no standing to bring such action.
V.A. Domain Names
In Società Vaionline v. Rapolla, the plaintiff had registered
various domain names, consisting of the names of small Italian
towns, to develop websites where geographical references, news,
links and other geopolitical information on such towns were
provided. One of these domain names was rapolla.it, where
Rapolla is the name of a city in southern Italy. The defendant, Mr.
Diego Rapolla, obtained the reassignment of the domain name
rapolla.it on the basis of his rights in his surname, through the
mandatory arbitration procedure provided by the Italian Domain
Name Registration Authority. Società Vaionline then filed an
action before the Court of Naples seeking a declaratory judgment
as to the validity of its original registration of the domain name
rapolla.it, on the ground that it did not infringe Mr. Rapolla’s
rights in his surname.
The Court of Naples first reiterated the established principle
that when a domain name is registered and used for commercial
purposes, its adoption and use are subject to the applicable
trademark laws due to the domain name’s indisputable trademark
function.470
Turning to the case before it, the Court first found that, in
applying the principles of trademark law relating to the adoption
of personal names,471 the plaintiff’s initial registration of rapolla.it
did not infringe Mr. Rapolla’s rights in his surname because (i)
such registration did not harm Mr. Rapolla’s reputation, credit or
dignity, nor (ii) was Mr. Rapolla’s name the least well known,
470. Court of First Instance of Naples, decision of March 13, 2003, published in Il Foro
Italiano, November 2003, No. 11.
471. Article 21 Italian Trademark Act provides:
2. Personal names that differ from the applicant's name may be registered as marks
by the applicant provided that their use does not harm the reputation, credit or
dignity of those who are entitled to bear such names. . . . 3. If well-known, the
following may be registered as marks only by those entitled to them . . . : personal
names. . . .
478
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which conversely would have afforded Mr. Rapolla an extensive
protection against third parties’ adoption of his name.
Nonetheless, the Court rejected the plaintiff’s request for a
declaration of validity of its original registration. The Court held
that, since domain names used for commercial purposes are
subject to the applicable trademark laws, if a domain name does
not comply with the requirements for trademark validity, its
registration is equally null. Consequently, because the domain
name at issue corresponded to the name of an Italian town and
was used to provide information on such town, i.e., was a merely
geographically descriptive term, its registration was prohibited by
the Italian Trademark Act.472
JAPAN
I.B.5. Personal Names
On October 22, 1998, the plaintiff filed a trademark
application for LEONARD KAMHOUT for precious metals,
umbrellas, clothing and the like. Leonard Kamhout is the name of
an American chaser and designer of silver accessories. Under
Article 4, Item 1, Paragraph 8 of the Trademark Law, trademarks
containing the name, professional name or pen name of another
person are not registrable except where the consent of the person
concerned has been obtained. On January 26, 1999, the applicant
submitted a consent of Mr. Leonard Kamhout to the Patent Office,
but on May 25, 2000, Mr. Kamhout submitted to the Patent Office
a copy of a letter that he had originally sent to the applicant to
inform the latter of the withdrawal of his previous consent. The
Patent Office rejected the trademark application under Article 4,
Item 1, Paragraph 8.
The Tokyo High Court affirmed the decision of the Patent
Office, stating that at the time the decision on registrability was
made, the consent of Mr. Leonard Kamhout did not exist.
The applicant appealed the case to the Supreme Court, but the
appeal was dismissed.473
472. Article 18.1 provides:
. . . the following may not be the subject of a trade mark registration: . . . b) signs
consisting exclusively of generic denominations of goods or services or descriptive
indications relating thereto, such as signs which may serve, in trade, as a designation
of the . . . geographic origin . . . of the product or service.
473. Supreme Court, Decision No. 2003 (gyo-hi) 265 of June 8, 2004, Supreme Court
Home Page.
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479
III.A.5. Fair Use
In 2000, the plaintiff registered the trademark BROTHER for
a wide range of goods, including “telecommunication machines and
apparatus” in International Class 9 and “ink ribbons” in Class16.
The defendant, Dainiku Inc., produced and sold ink ribbons
with the mark FOR BROTHER or BROTHER YO (meaning “for
brother” in Japanese) to co-defendant Ohmdenki Inc., and
Ohmdenki sold these ink ribbons to the public.
The plaintiff sued the defendants for injunctive relief and
damages, alleging infringement of its trademark.
The Tokyo District Court dismissed the suit, stating that it
was common practice to indicate on boxes what kinds of printing
machines were adaptable for the ink ribbons in the boxes in order
to prevent users from making mistakes, and that the defendants
were using these marks simply to show that these ink ribbons
were compatible with facsimiles produced by the plaintiff.
After considering all the above factors, the Court determined
that the defendants were not using the marks in question as
“trademarks” under the Trademark Law.474
III.B.1. Passing Off
The appellant, Riso Kagaku Kogyo Inc., which produced and
sold printing machines, printing ink, etc., had registered the
trademark RISO and two other trademarks.
Initially, the appellees, Takken Corp. Inc. and Corona Giken
Kogyo Inc., sold ink bottles filled with printing ink manufactured
by the appellant and bearing the appellant’s trademarks.
Thereafter, however, the appellees bought empty ink bottles from
the users of the appellant’s printing ink and, after cleaning them,
filled the bottles with their own printing ink and sold them
without deleting the appellant’s trademarks.
The appellant filed suit, claiming that the appellees were
infringing its trademark rights by selling ink bottles filled with the
appellees’ ink but bearing the appellant’s trademarks, and thereby
causing customers to be confused as to the origin of the goods. The
suit was dismissed by the Tokyo District Court, which held that
the appellees’ sale of the printing ink did not constitute “use of a
trademark” under the Trademark Law because the registered
trademarks had already been placed on the ink bottles when the
appellant filled them with ink and thus there was no relationship
between the trademarks and the ink.
474. Tokyo District Court, Decision No. 2003 (wa) 29488 of June 23, 2004, Supreme
Court Home Page.
480
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However, the Tokyo High Court reversed the Tokyo District
Court’s ruling and ordered that there be injunctive relief and
damages to be paid by the appellees.
The Court ruled that, all things considered, it was obvious
that the appellees’ sale of the ink was causing traders and
consumers to be misled into believing that the ink in the ink
bottles bearing the appellant’s trademarks was produced by the
appellant, and so the trademarks were functioning as an
indication of the origin of the ink.
The Tokyo High Court further held that the appellees’ sale of
the ink fell under “use of a trademark” and thus infringed the
trademark rights of the appellant.475
Plaintiffs Advance Magazine Publishers and Nikkei
Condenast Ltd. published the American fashion magazine Vogue.
Defendant Propasuto Inc. was in the business of selling mansions
named “La Vogue Minami Aoyama” (in Japanese katakana),
located in South Aoyama.
The plaintiffs filed suit for injunctive relief and damages based
on the Prevention of Unfair Competition Law.
The Tokyo District Court approved the suit, stating that
mansions are considered to be “goods” under the Prevention of
Unfair Competition Law because they will be handled on the
market and their origin can be recognized by their indication.
In addition, the Court found that there was a close
relationship between the magazine of the plaintiffs and the
mansions of the defendant, finding that fashion magazines and
architecture have become related to each other, and thus the
magazine had contained special stories about architecture, while
the defendant labeled its mansions “designer’s mansions” and
traded on their elegance and fashionableness.
The amount of damages was calculated based on a license fee
rate of five percent of the total monetary value of the mansions.476
III.F.1. Forfeiture
The plaintiff was the owner of the registered trademark
KELME for footwear and the like. The defendant was the only
regular sole agent of the Avadin group, which handled famous
KELME goods and sponsored professional athletes and
professional sports teams under the trademark KELME all around
the world.
475. Tokyo High Court, Decision No. 2003 (ne) 889 of March 4, 2004, Supreme Court
Home Page.
476. Tokyo District Court, Decision No. 2003 (wa) 27434 of July 2, 2004, Supreme Court
Home Page.
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481
At one time the plaintiff had imported KELME goods from
KELME Exportacion Inc., one of the sister companies of the
Avadin group, but it was forced to stop importing said goods
because it had ordered KELME goods from a factory in China
without Avadin’s permission.
The plaintiff filed suit for injunctive relief, claiming that the
defendant was infringing its trademark rights by importing
footwear bearing the KELME trademark. The defendant asserted
that the plaintiff’s suit should be dismissed, owing to the plaintiff’s
abuse of its trademark rights, which originally belonged to the
Avadin group.
The Court ruled that the plaintiff took over the trademark
registered by K.K. Taisei with the unjust intention of blocking
KELME goods bearing the famous KELME mark from being
imported into Japan and hence being the only distributor of goods
bearing trademarks similar to the KELME mark in Japan. In
addition, it held that the defendant was the sole agent in Japan of
the Avadin group and that the defendant’s goods were KELME
goods imported from the Avadin group.
Based on these holdings the Court dismissed the suit as an
abuse of rights.477
III.J. Gray Marketing
The plaintiff, a German company, had registered the
trademark PUMA with Puma device and two other similar
trademarks for various bags. The defendant, Relax Inc., had been
importing into Japan and selling small Boston bags, flight bags,
small shoulder bags, denim Boston bags, etc., bearing marks that
were substantially the same as the plaintiff’s.
The plaintiff filed suit, asking for compensation for damages
and that the defendant be required to publish an apology in a
newspaper, based on Articles 38(2) and 39 of the Trademark Law.
In reply, the defendant claimed that the importing of its goods
would be justified as a parallel importation of genuine goods,
because the defendant bought these goods from Aron Inc, a
company which in turn purchased the goods from the plaintiff’s
exclusive trademark licensee in Korea. The defendant further
claimed that its acts were neither done in bad faith nor negligent.
The Court noted that to justify parallel importation of genuine
goods, it was necessary that (1) the trademark on the goods must
be put on legally by the owners of the trademark rights or those
who had a license from the owners in a foreign country; (2) the
trademark should indicate the same origin in terms of legal
structure, such as parent and subsidiary or sister relationship, or
477. Tokyo District Court, Decision No. 2002 (wa) 6884 of July 30, 2003.
482
Vol. 95 TMR
financial relationship, such as capital tie-up, in both the country of
origin and the foreign country; and (3) there should be no
qualitative difference between the original goods and the goods to
be imported, because the owner of the trademark in the country of
importation could control the quality of the goods directly or
indirectly.
In the case at issue, the Court held that the owner of the
trademark in Korea did not put the marks on the defendant’s
goods legally, and the defendant’s act therefore could not be
justified as a parallel importation of original, genuine goods.
The Court also ruled that the presumption of negligence could
not be overturned in this case.478
JORDAN
I.B.2. Merely Descriptive Terms
The Registrar accepted the notices of opposition filed by
PepsiCo Inc. against the applications for the registration of the
following trademarks, published for opposition in the name of
Halawani Industrial Co.: CHEESE BALLS in Arabic,479 in Class
29; BARBECUE,480 in Class 30; CHEDDAR CHEESE,481 in Class
29; SALSA CHIPS,482 in Class 30; CHILI CHIPS,483 in Class 29.
The Registrar’s decisions were based on the fact that the
opposed trademarks were found to lack distinctiveness and to be
descriptive of the goods.
478. Tokyo District Court, Decision No. 2002 (wa) 28242 of December 18, 2003, Supreme
Court Home Page.
479. Application No. 51036, published in Official Gazette Supplement No. 211, dated
August 12, 1999, at page 334; PepsiCo Inc., an American company, v. Halawani Industrial
Co., a Jordanian company, Registrar’s Decision No. TM/51036/8948, dated May 27, 2003
(unpublished).
480. Application No. 51772, published in Official Gazette Supplement No. 216, dated
December 20, 1999, at page 307; PepsiCo Inc., an American company, v. Halawani
Industrial Co., a Jordanian company, Registrar’s Decision No. TM/51772/8921, dated
September 2, 2003 (unpublished).
481. Application No. 51113, published in Official Gazette Supplement No. 212, dated
August 31, 1999, at page 276; PepsiCo Inc., an American company, v. Halawani Industrial
Co., a Jordanian company, Registrar’s Decision No. TM/51113/8921, dated May 27, 2003
(unpublished).
482. Application No. 47106, published in Official Gazette Supplement No. 216, dated
December 20, 1999, at page 146; PepsiCo Inc., an American company, v. Halawani
Industrial Co., a Jordanian company, Registrar’s Decision No. TM/47106/8066, dated July
20, 2003 (unpublished).
483. Application No. 51773, published in Official Gazette Supplement No. 214, dated
October 16, 1994, at page 309; PepsiCo Inc., an American company, v. Halawani Industrial
Co., a Jordanian company, Registrar’s Decision No. TM/51774/10677, dated July 15, 2003
(unpublished).
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483
The Registrar accepted the notice of opposition filed by
PepsiCo Inc. against the registration of the trademark CRISPY
CHIPS484 in Class 29, published for opposition in the name of
Saudi Dairy & Foodstuff Co.
The Registrar’s decision was based on the fact that the
opposed trademark was found to lack distinctiveness and to be
descriptive of the goods.
I.B.7. Device and Design Marks
Notices of opposition were filed against the registration of two
device marks in Classes 29 and 30 in the name of PepsiCo.485 The
notices of opposition were based on the fact that the devices are
common and cannot be registered in the name of any person.
The Registrar of Trademarks decided that the submitted
devices are not common and are distinctive, and therefore rejected
the notices of opposition.486
Design 1
Design 2
I.B.8.a. Similarity of Marks
The Registrar of Trademarks accepted the notices of
opposition submitted by Time Warner Entertainment Company
484. Application No. 49793, published in Official Gazette Supplement No. 207, dated
March 23, 1999, at page 315; PepsiCo Inc. v. Saudi Dairy & Foodstuff Co., a Saudi
company, Registrar’s Decision No. TM/49793/10657, dated June 15, 2003 (unpublished).
485. Trademark Nos. 51014, 51015, 51058 and 510594, published in Official Gazette No.
211, dated August 12, 1999, at pages 329, 330, 384 and 385.
486. Halawani Industrial Co., a Jordanian company, v. PepsiCo, Inc., an American
company, Registrar’s Decision Nos. TM/51014/11414, dated June 24, 2003, TM/51015/17134,
dated September 4, 2003, TM/51058/11417, dated June 24, 2003, and TM/51059/17170,
dated September 4, 2003.
484
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(Time Warner), owner of the famous trademark TWEETY,487
against the registration of the trademarks TWEETY and
TWEENY in Arabic in Class 29.488
The Registrar’s decisions were based on the fact that both
TWEETY and the trademarks in Arabic are similar to an extent
that public confusion is possible. In his decision the Registrar
mentioned the fact that TWEETY is the name of the famous
cartoon character.489
[TWEETY]
[TWEENY]
Similarly, the Registrar accepted the notices of opposition
submitted by Time Warner Entertainment Co. L.P, owner of the
famous trademark TWEETY,490 against the registration of the
trademark TWEETY and TWEETY Device in Class 30.491
487. Registration Nos. 41589, 41597 and 41601 in Classes 9, 16 and 28, published in
Official Gazette No. 180, dated September 25, 1996; Registration Nos. 40057 and 40058 in
Classes 29 and 25, published in Official Gazette No. 174, dated April 25, 1996.
488. Application Nos. 51769 and 51780 in Class 29, published in Official Gazette
Supplement No. 214, dated October 16, 1999, at pages 305 and 315.
489. Warner Entertainment Co. L.P., an American company, v. Halawani Industrial Co.,
a Jordanian company, Registrar’s Decision Nos. TM/51769/10522, dated June 12, 2003, and
TM/51780/11141, dated June 23, 2003 (unpublished).
490. Registration Nos. 41589, 41597 and 41601 in Classes 9, 16 and 28, published in
Official Gazette No. 180, dated September 25, 1996; Registration Nos. 40057 and 40058 in
Classes 29 and 25, published in Official Gazette No. 174, dated April 25, 1996
491. Application No. 54626 in Class 30, published in Official Gazette No. 223, dated July
4, 2000, at page 342.
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485
The Registrar’s decision was based on the fact that both
trademarks are sufficiently similar that public confusion is
possible. In his decision the Registrar mentioned the fact that
TWEETY is a famous trademark and is the name of the famous
cartoon character.492
The Registrar of Trademarks also accepted the notices of
opposition submitted by Warner Entertainment Co. L.P, owner of
the famous trademark TWEETY,493 against the registration of the
trademark SWEETY in Class 30.494
Finally, the Registrar accepted the notice of opposition
submitted by Time Warner, owner of the famous trademark
TWEETY,495 against the registration of the trademark TWEETY’S
NURSERY in Class 5.496
492. Warner Entertainment Co. L.P., an American company, v. Abu Nassar & Abu
Khalaf Co., a Jordanian company, Registrar’s Decision No. TM/54626, dated March 19,
2003.
493. Registration Nos. 41589, 41597 and 41601 in Classes 9, 16 and 28, published in
Official Gazette Nos 180, dated September 25, 1996; Registration Nos. 40057 and 40058 in
Classes 29 and 25, published in Official Gazette No. 174, dated April 25, 1996.
494. Application No. 58579 in Class 29, published in Official Gazette Supplement No.
214, dated October 16, 1999, at page 369.
495. Registration Nos. 41589, 41597 and 41601 in Classes 9, 16 and 28, published in
Official Gazette No. 180, dated September 25, 1996; Registration Nos. 40057 and 40058 in
Classes 29 and 25, published in Official Gazette No. 174, dated April 25, 1996.
496. Application No. 48788 in Class 5, published in Official Gazette No. 205, dated
January 9, 1999, at page 61.
486
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The Registrar accepted the notice of opposition filed by Leo
Pharmaceutical Products Ltd. against the application for the
registration of the trademark FUSID497 published for opposition in
the name of Hayat Pharmaceutical Industries.
The Registrar’s decision affirmed that the opposed trademark
resembled the famous trademark FUCIDIN498 and that, as the
owner of the trademarks FUCIDIN, FUCICORT and
FUCITHALMIC, Leo Pharmaceutical Products Ltd. had the
priority of using the prefix FUCI-.499
The Registrar accepted the notice of opposition filed by
Charaffedine Industrial Laboratories, owner of the trademark
SILVANA, against the application for the registration of the
trademark SILVANA500 in Class 3, published for opposition in the
name of Yosef Abu Ajamieh & Partners Co.
The Registrar’s decision was based on the fact that the
trademark SILVANA was being used and had been registered in
several countries for a long period of time and that the registration
thereof in the name of an unauthorized party would cause public
confusion.501 The fact that the trademark was not registered in
Jordan did not affect the case. The registration of the opposed
trademark SILVANA was proven to be in bad faith, as the
applicant company had visited the opposing company and asked to
be appointed as its commercial agent in Jordan.
The Registrar accepted the notices of opposition filed by the
Savola Company, owner of the trademarks SAFIA502 and AFIA503
in Class 29, against the applications for the registration of the
497. Application No. 52201, published in Official Gazette Supplement No. 215, dated
November 21, 1999, at page 113.
498. Registration No. 20198, published in Official Gazette Supplement No. 80, dated
October 5, 1986.
499. Leo Pharmaceutical Products Ltd., a Danish company, v. Hayat Pharmaceutical
Industries, a Jordanian company, Registrar’s Decision No. TM/52201/16791, dated
September 1, 2003 (unpublished).
500. Application No. 53801, published in Official Gazette Supplement No. 220, dated
May 7, 2000, at page 3.
501. Charaffedine Industrial Laboratories, a Lebanese company, v. Yosef Abu Ajamieh &
Partners Co., a Jordanian company, Registrar’s Decision No. TM/53801/20471, dated
October 15, 2003 (unpublished).
502. Registration No. 28274 in Class 29, published in Official Gazette Supplement No.
123, dated March 16, 1991; Registration No. 28277 in Class 32, published in Official Gazette
Supplement No. 124, dated June 29, 1991.
503. Registration No. 46392 in Class 29, published in Official Gazette Supplement No.
198, dated March 25, 1998, at page 138; Registration No. 21130 in Class 30, published in
Official Gazette Supplement No. 83, dated February 5, 1987, at page 194; Registration No.
25389 in Class 31, published in Official Gazette Supplement No. 99, dated August 15, 1988,
at page 206.
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487
trademark SAFI in both Arabic and English504 in Class 29,
published for opposition in the name of Arab International Food &
Oil Processing Co.
The Registrar’s decisions were based on the fact that the
trademarks concerned were similar to the extent that public
confusion was possible.505
I.B.8.c. Conflict Between Trademarks and
Corporate Names
The Registrar of Trademarks rejected the notices of opposition
submitted against the registration of the trademark BURGER
KING and Device in both Arabic and Latin characters and in
Classes 29 and 30506 by Mohammed Abu-Shamot, owner of the
trade name Burger King in Arabic (i.e., Malek Al-Hamburger).507
The Registrar’s decisions were based on the fact that no
conflict between both the trade name registration and the
trademark registrations is expected.508 The fact that BURGER
KING is a famous mark was also mentioned in the decision.
On appeal the High Court of Justice affirmed the Registrar’s
decision.509
504. Application Nos. 45218 and 45219, published in Official Gazette Supplement No.
193, dated November 10, 1997; Application Nos. 46179 and 46180, published in Official
Gazette Supplement No. 197, dated February 21, 1998, at pages 127 and 129, respectively.
505. Savola Co., a Saudi company, v. Arab International Food & Oil Processing Co.,
AFICO, a Jordanian company, Registrar’s Decision Nos. TM/45218/11776 and
TM/45219/11784, dated June 29, 2003 (unpublished); Savola Co., a Saudi company, v. Arab
International Food & Oil Processing Co., AFICO, a Jordanian company, Registrar’s
Decision Nos. TM/46180/10570 and TM/46179/10571, dated June 12, 2003 (unpublished).
506. Application Nos. 52935 and 52934 in Classes 29 and 30, published in Official
Gazette No. 216, dated December 20, 1994, at pages 262 and 239; Application Nos. 54522
and 54101, published in Official Gazette No. 222, dated June 4, 2000, at pages 364 and 251.
507. Trading No. 15045, dated November 22, 1978; Trading No. 26895, dated
November 5, 1989.
508. Mohammed Abu-Shamot, a Jordanian citizen, v. Burger King Corp., an American
company, Registrar’s Decision Nos. TM/52935/9335, TM/52934/93335, and TM/54522/9336,
dated June 2, 2003, and Registrar’s Decision No. TM/54101/20199, dated October 11, 2003.
This decision was not appealed.
509. High Court of Justice, Decision Nos. 7, 9 and 10, Case Nos. 300/2003, 298/2003 and
301/2003, respectively, dated December 8, 2003.
488
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I.B.9.a. No Similarity of Marks
The Registrar of Trademarks accepted the notice of opposition
filed against the registration of the word mark ADENAFIL510 in
Class 5, published for opposition in the name of a Jordanian
company.
The notice of opposition was based on the similarity between
ADENAFIL and the prior-registered trademark DENAFIL511 in
Class 5.
On appeal the High Court of Justice reversed the Registrar’s
decision and decided that both trademarks are not similar enough
to cause confusion for professional people, such as doctors and
pharmacists.512
Beecham Group Ltd., owner of the famous trademark
AMOXIL513 in Class 5, which is registered and has been
extensively used in Jordan, filed a notice of opposition against the
510. Application No. 52941 in Class 5, published in Official Gazette No. 216, dated
December 20, 1999, at page 68.
511. Registration No. 48909 for DENAFIL in Class 5, published in Official Gazette No.
205, dated January 9, 1999 at page 89.
512. PFIZER INC, an American company, v. Advanced Pharmaceutical Industries, a
Jordanian company, Registrar’s Decision No. TM/52941/22143, dated November 9, 2003
(unpublished). High Court of Justice, Decision No. 20, Case No. 79/2004, dated April 25,
2004.
513. Registration No. 12400, published in Official Gazette No. 50, dated February 20,
1977.
Vol. 95 TMR
489
application for the registration of the trademark PHARMOXIL514
in Class 5, published for opposition in the name of International
Pharmaceutical & Chemical Mfg. Co., Ltd.
The Registrar rejected the notice of opposition and decided
that the similarity between the trademarks concerned would not
lead to confusion, as the people dealing with pharmaceutical
products are professional people and cannot be confused easily.515
The Registrar did not consider the point of unfair competition.
Beecham Group Ltd., owner of the famous trademark
AMOXIL516 in Class 5, which is registered and has been
extensively used in Jordan, filed a notice of opposition against the
application for the registration of the trademark AMOXIRAM517 in
Class 5, published for opposition in the name of Ram
Pharmaceutical Industries Co., Ltd.
The Registrar rejected the notice of opposition and decided
that the similarity between the trademarks concerned would not
lead to confusion, as the people dealing with pharmaceutical
products are professional people and cannot be confused easily.518
The Registrar did not consider the point of unfair competition.
Pfizer, Inc., owner of the famous trademark VIAGRA519 in
Class 5, which is registered and has been extensively used in
Jordan, filed a notice of opposition against the application for the
registration of the trademark VIGRO520 in Class 5, published for
opposition in the name of Ram Pharmaceutical Industries Co.,
Ltd..
The Registrar rejected the notice of opposition and decided
that the similarity between the trademarks concerned would not
lead to confusion, as the people dealing with pharmaceutical
514. Application No. 42825, published in Official Gazette Supplement No. 184, dated
December 30, 1996, at page 46.
515. Beecham Group Ltd., a British company, v. International Pharmaceutical &
Chemical Mfg. Co., Ltd., a Jordanian company, Registrar’s Decision No. TM/42825/20203,
dated October 11, 2003 (unpublished).
516. Registration No. 12400, published in Official Gazette No. 50, dated February 20,
1977.
517. Application No. 50221, published in Official Gazette Supplement No. 208, dated
April 18, 1999, at page 107.
518. Beecham Group Ltd., a British company, v. Ram Pharmaceutical Industries Co.,
Ltd., a Jordanian company, Registrar’s Decision No. TM/50221/20468, dated October 15,
2003 (unpublished).
519. Registration No. 48910, published in Official Gazette Supplement No. 205, dated
January 9, 1999.
520. Application No. 52709, published in Official Gazette Supplement No. 213, dated
September 25, 1999, at page 125.
490
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products are professional people and cannot be confused easily.521
The Registrar did not consider the point of unfair competition.
The Registrar rejected the notice of opposition filed by Hero,
owner of the famous trademark HERO,522 against the application
for the registration of the trademark HELLO523 in Class 32,
published for opposition in the name of Gulf Food Products Co.
The Registrar’s decision was based on the fact that the
trademarks concerned were not similar to the extent that public
confusion was possible.524
The Registrar rejected the notice of opposition filed by DC
Comics against the application for the registration of the
trademark ALWATWAT525 in Arabic, which is the Arabic
translation of the word BAT in English, published for opposition in
the name of Halawani Industrial Co.
The Registrar’s decision was based on the fact that the famous
trademark was known as BATMAN526 in its transliterated form
and not BAT in its translation form only, and therefore public
confusion was not possible.527
On appeal, the High Court of Justice affirmed the Registrar’s
decision.528
521. Pfizer, Inc., an American company, v. Ram Pharmaceutical Industries Co., Ltd., a
Jordanian company, Registrar’s Decision No. TM/52709/20845, dated October 20, 2003
(unpublished).
522. Registration No. 30213 in Class 5, published in Official Gazette Supplement No.
133, dated December 15, 1992; Registration No. 19219 in Class 29, published in Official
Gazette Supplement No. 76, dated March 10, 1985; Registration No. 19211 in Class 30,
published in Official Gazette Supplement No. 76, dated March 10, 1985; Registration No.
19212 in Class 32, published in Official Gazette Supplement No. 76, dated March 10, 1985.
523. Application No. 53819, published in Official Gazette Supplement No. 220, dated
May 7, 2000, at page 255.
524. Hero, a Swiss company, v. Gulf Food Products Co., a Jordanian company,
Registrar’s Decision No. 53819/16317, dated August 26, 2003 (unpublished).
525. Application No. 51768, published in Official Gazette Supplement No. 214, dated
October 16, 1999, at page 304.
526. Registration No. 17996, published in Official Gazette Supplement No. 72, dated
June 30, 1983; Registration Nos. 42509, 42519 and 42884, published in Official Gazette
Supplement No. 183, dated December 15, 1996.
527. DC Comics, an American company, v. Halawani Industrial Co., a Jordanian
company, Registrar’s Decision No. TM/51768/18831, dated September 25, 2003
(unpublished).
528. Case No. 461/2003, High Court of Justice, Decision No. 47, dated November 30,
2003 (unpublished).
Vol. 95 TMR
491
I.B.12. Famous Marks
Halawani Industrial Co. filed notices of opposition against the
applications for the registration of the trademark FRITO-LAY529 in
Classes 29 and 30, which were filed as both word marks and word
& device marks, published for opposition in the name of PepsiCo
Inc. Halawani claimed that it was the owner of the trademarks
FRITOS and LAYS.
The Registrar rejected the notices of opposition, finding that
PepsiCo Inc. was the owner of the famous trademarks FRITO-LAY
in several countries of the world and thus was entitled to
protection.530
PepsiCo Inc. filed notices of opposition against the applications
for the registration of the trademark FRITOS531 in Classes 29 and
30, published for opposition in the name of Halawani Industrial
Co.
The Registrar accepted the notices of opposition, finding that
PepsiCo Inc. was the owner of the famous trademark FRITOS in
several countries of the world and therefore was entitled to
register said trademark in its name.532
Halawani Industrial Co. filed notices of opposition against the
applications for the registration of the trademark LAY’S533 in Class
30, which were filed as both word marks and word & device marks,
published for opposition in the name of PepsiCo Inc. Halawani
claimed that it was the owner of the trademark LAY’S.
The Registrar rejected the notices of opposition, finding that
PepsiCo Inc., was the owner of the famous trademark LAY’S in
529. Application Nos. 53177 and 53178, published in Official Gazette Supplement No.
217, dated February 23, 2000, at pages 199 and 234, respectively; Application Nos. 55491
and 55492, published in Official Gazette Supplement No. 225, dated October 12, 2000, at
pages 330 and 301, respectively.
530. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American
company, Registrar’s Decision Nos. TM/53177/11189, TM/53178/11188, TM/55491/11178
and TM/55492/11193, dated June 22, 2003 (unpublished).
531. Application No. 49456, published in Official Gazette Supplement No. 206, dated
February 3, 1999, at page 287; Application No. 50967, published in Official Gazette
Supplement No. 211, dated August 12, 1999, at page 368.
532. PepsiCo Inc., an American company, v. Halawani Industrial Company, a Jordanian
company, Registrar’s Decision Nos. TM/49456/11774, dated June 29, 2003, and
TM/50967/11303, dated June 23, 2003 (unpublished).
533. Application Nos. 50975 and 50976, published in Official Gazette Supplement No.
211, dated August 12, 1999, at pages 372 and 373, respectively.
492
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several countries of the world and therefore was entitled to
register said trademark in its name.534
Procter & Gamble Co. filed a notice of opposition against the
application for the registration of the trademark ALWAYS535 in
Class 3, published for opposition in the name of Anwar Sinjab Est.
The Registrar accepted the notice of opposition, finding that
Procter & Gamble was the owner of the famous trademark
ALWAYS536 in Classes 5, 16 and 25 in several countries of the
world, including Jordan, and therefore the registration thereof in
the name of an unauthorized party would lead to public confusion
and unfair competition even if applied in a different class.537
The Registrar accepted the notice of opposition filed by Rotana
Video & Audio Visual Publicity & Advertising Co. against the
application for the registration of the trademark ROTANA & R
Device538 in Class 16, published for opposition in the name of
Suhair Karoot Est.
The Registrar’s decision was based on the fact that the
Registrar was convinced from the submitted documents that the
trademark ROTANA & R Device was a famous trademark and
that the registration thereof in the name of an unauthorized party
would lead to public confusion.539
The Registrar rejected the notice of opposition filed by
Halawani Industrial Co. against the application for the
registration of the trademark TAZOS540 in Class 30, published for
opposition in the name of PepsiCo Inc. Halawani claimed that it
was the owner of trademark TAZOS.
534. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American
company, Registrar’s Decision Nos. TM/50975/9627, dated June 4, 2004, and
TM/50976/10680, dated June 15, 2004 (unpublished).
535. Application No. 54118, published in Official Gazette Supplement No. 222, dated
June 4, 2000, at page 18.
536. Registration Nos. 57166 and 57167, published in Official Gazette Supplement No.
231, dated June 20, 2001.
537. Procter & Gamble Co., an American company, v. Anwar Sinjab Est., a Jordanian
establishment, Registrar’s Decision No. TM/54118/20532, dated November 16, 2003
(unpublished).
538. Application No. 46739, published in Official Gazette Supplement No. 199, dated
April 28, 1998, at page 85.
539. Rotana Video & Audio Visual Publicity & Advertising Co., a Saudi company, v.
Suhair Karoot Est., a Jordanian establishment, Registrar’s Decision No. TM/46739/17446,
dated September 10, 2003 (unpublished).
540. Application No. 50978, published in Official Gazette Supplement No. 211, dated
August 12, 1999, at page 375.
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493
The Registrar’s decision was based on the fact that the
submitted evidence proved that the trademark TAZOS had been
owned by PepsiCo for a long time.541
On appeal, the High Court of Justice affirmed the Registrar’s
decision.542
PepsiCo Inc. filed notices of opposition against the applications
for the registration of the trademark TAZO Labels543 in Class 29,
published for opposition in the name of Halawani Industrial Co.
for chips.
The Registrar accepted the notices of opposition, as the
Registrar was convinced that PepsiCo was the owner of the
trademark TAZO and therefore was entitled to register and use
said trademark in Jordan.544
On appeal, the High Court of Justice affirmed the Registrar’s
decision and confirmed that the registration of this trademark by
an unauthorized party would cause unfair competition and public
confusion.545
The Registrar rejected the notices of opposition filed by
Halawani Industrial Co. against the applications for the
registration of the trademark QUAVERS546 in Classes 29 and 30,
published for opposition in the name of PepsiCo Inc.
The Registrar’s decisions were based on the fact that PepsiCo
submitted convincing evidence that it was the owner of the
trademark QUAVERS and that said trademark was a famous
trademark.547
541. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American
company, Registrar’s Decision No. TM/50978/11307, dated June 24, 2003 (unpublished).
542. Case No. 309/2003, High Court of Justice, Decision No. 43, dated November 20,
2003 (unpublished).
543. Application Nos. 50866–50869, published in Official Gazette Supplement No. 211,
dated August 12, 1999, at pages 311–14.
544. PepsiCo Inc., an American company, v. Halawani Industrial Co., a Jordanian
company, Registrar’s Decision Nos. TM/50866/1129, TM/50867/11144 and TM/50868/11143,
dated June 22, 2003 (unpublished); Registrar’s Decision No. TM/50869/1215, dated July 2,
2003 (unpublished).
545. Case Nos. 305/2003, 282/2003, 304/2003 and 323/2003, High Court of Justice,
Decision Nos. 41, 42, 44 and 37, respectively, dated November 20, 2003 (unpublished).
546. Application No. 50970, published in Official Gazette Supplement No. 211, dated
August 12, 1999, at page 324 (Class 29); Application No. 50963, published in Official
Gazette Supplement No. 211, dated August 12, 1999, at page 366 (Class 30).
547. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American
company, Registrar’s Decision Nos. TM/50970/11418 and TM/50963/11305, dated June 24,
2003 (unpublished).
494
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The Registrar rejected the notices of opposition filed by
Halawani Industrial Co. against the applications for the
registration of the trademark DORITOS & Device548 in Class 30,
published for opposition in the name of PepsiCo Inc.
The Registrar’s decisions were based on the fact that PepsiCo
submitted convincing evidence that it was the owner of the
trademark DORITOS and that said trademark was a famous
trademark.549
The Registrar rejected the notices of opposition submitted by
Halawani Industrial Co. against the applications for the
registration of the trademark CHEETOS & Device550 in Classes 29
and 30, published for opposition in the name of PepsiCo Inc.
The Registrar’s decisions were based on the fact that PepsiCo
submitted convincing evidence that it was the owner of the
trademark CHEETOS and that said trademark was a famous
trademark.551
PepsiCo Inc. filed notices of opposition against the applications
for the registration of the trademark RUFFLES552 in Classes 29
and 30, published for opposition in the name of Halawani
Industrial Co. for chips.
The Registrar accepted the notices of opposition, as the
Registrar was convinced that PepsiCo was the owner of the famous
trademark RUFFLES and therefore was entitled to register and
use said trademark in Jordan.553
548. Application Nos. 50961 and 50966, published in Official Gazette Supplement No.
211, dated August 12, 1999, at pages 367 and 365, respectively.
549. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American
company, Registrar’s Decision Nos. TM/50961/11304 and TM/50966/11308, dated June 23,
2003 (unpublished).
550. Application No. 50974, published in Official Gazette Supplement No. 211, dated
August 12, 1999, at page 371 (Class 29); Application No. 50964, published in Official
Gazette Supplement No. 211, dated August 12, 1999, at page 323 (Class 30).
551. Halawani Industrial Co., a Jordanian company, v. PepsiCo Inc., an American
company, Registrar’s Decision Nos. TM/50974/10855 and TM/50964/10856, dated June 16,
2003 (unpublished).
552. Application No. 49455, published in Official Gazette Supplement No. 206, dated
February 3, 1999, at page 286 (Class 29); Application No. 50977, published in Official
Gazette Supplement No. 211, dated August 12, 1999, at page 374 (Class 30).
553. PepsiCo Inc., an American company, v. Halawani Industrial Co., a Jordanian
company, Registrar’s Decision Nos. TM/49455/11774 and TM/50977/11302, dated June 23,
2003 (unpublished).
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495
III.A.1. Famous Marks
The Registrar accepted the notices of cancellation filed by
PepsiCo Inc. against the registration of the trademark TAZO554 in
Classes 29 and 30, registered in the name of Halawani Industrial
Co.
The Registrar’s decisions were based on the fact that the
submitted evidence proved that the trademark TAZO had been
owned and used by PepsiCo for a long time.555
On appeal, the High Court of Justice affirmed the Registrar’s
decisions.556
The Registrar accepted the notice of cancellation filed by
PepsiCo Inc. against the registration of the trademark PAZO557 in
Class 30, registered in the name of Halawani Industrial Co.
The Registrar’s decision was based on the fact that the
submitted evidence proved that the trademark TAZO had been
owned and used by PepsiCo for a long time and that the
trademarks PAZO and TAZO were confusingly similar.558
On appeal, the High Court of Justice affirmed the Registrar’s
decision.559
III.A.2.b. Similarity of Marks
The Registrar accepted the notice of cancellation filed by
Dolorgiet GmbH & Co. KG, owner of the trademark DOLOGIT560
in Class 5, against the registration of the trademark DOLCET561 in
554. Application No. 54704, published in Official Gazette Supplement No. 223, dated
July 4, 2000, at page 309 (Class 29); Application No. 47720, published in Official Gazette
Supplement No. 201, dated June 28, 1998, at page 196 (Class 30).
555. PepsiCo Inc., an American company, v. Halawani Industrial Co., a Jordanian
company, Registrar’s Decision No. TM/54704/12143, dated July 2, 2003 (Class 29)
(unpublished); Registrar’s Decision No. TM/47720/10573, dated June 12, 2003 (Class 30)
(unpublished).
556. Case No. 262/2003, High Court of Justice, Decision No. 38, dated November 20,
2003 (Class 29) (unpublished); Case No. 381/2003, High Court of Justice, Decision No. 39,
dated November 20, 2003 (Class 30) (unpublished).
557. Application No. 49750, published in Official Gazette Supplement No. 207, dated
August 12, 1999, at page 302.
558. PepsiCo Inc., an American company, v Halawani Industrial Co., a Jordanian
company, Registrar’s Decision No. TM/49750/11207, dated June 22, 2003 (unpublished).
559. Case No. 372/2003, High Court of Justice, Decision No. 40, dated November 20,
2003 (unpublished).
560. Registration No. 20087, published in Official Gazette Supplement No. 79, dated
April 5, 1986.
561. Registration No. 44377, published in Official Gazette Supplement No. 190, dated
August 14, 1997.
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Class 5, registered in the name of Ram Pharmaceutical Industries
Co., Ltd.
The Registrar’s decision was based on the fact that the
trademarks concerned were similar to the extent that public
confusion was possible.562
The Registrar accepted the notice of cancellation filed by
Carter-Wallace Inc., owner of the trademark PEARL DROPS
SMOKERS563 in Class 3, against the registration of the trademark
PEARL DROPS564 in Class 3, registered in the name of Houbara
Factory for Cosmetics.
The Registrar’s decision was based on the fact that the
trademarks concerned were similar to the extent that public
confusion was possible.565
III.A.10. Nonuse of Trademark
The Registrar accepted the cancellation action based on
nonuse filed by ITT Trademark & Trade GmbH against the
registration of the trademark ITT in Class 9, registered in the
name of ITT Corp.566
The Registrar’s decision was based on the fact that the
company that filed the cancellation action was an aggrieved party
and that the trademark owner did not submit any proof of use.567
III.A.11.a. No Similarity of Marks
SmithKline & French Laboratories Ltd., owner of the famous
trademark DYAZIDE568 in Class 5, which is registered and has
been extensively used in Jordan, filed a notice of cancellation
562. Dolorgiet GmbH & Co. KG, a German company, v. Ram Pharmaceutical Industries
Co., Ltd., a Jordanian company, Registrar’s Decision No. TM/44377/18082, dated September
17, 2003 (unpublished).
563. Registration No. 39322, published in Official Gazette Supplement No. 172, dated
February 25, 1996, at page 15.
564. Registration No. 44352, published in Official Gazette Supplement No. 190, dated
August 14, 1997, at page 24.
565. Carter-Wallace Inc., an American company, v. Houbara Factory for Cosmetics, a
Jordanian company, Registrar’s Decision No. TM/44352/10678, dated June 15, 2003
(unpublished).
566. Registration No. 22595, published in Official Gazette Supplement No. 89, dated
April 20, 1987.
567. ITT Trademark & Trade GmbH, a German company, v. ITT Corp., an American
company, Registrar’s Decision No. TM/22596/21458, dated October 28, 2003 (unpublished).
568. Registration No. 13171, published in Official Gazette Supplement No. 51, dated
July 30, 1977.
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against the registration of the trademark DIABREZIDE569 in Class
5, registered in the name of L. Molleni & C., dei Fratelli Alitti
Societa Di Esercizio S.P.A.
The Registrar rejected the notice of cancellation and decided
that the similarity between the trademarks concerned would not
lead to confusion, as the people dealing with pharmaceutical
products are professional people and cannot be confused easily.570
The Registrar did not consider the point of unfair competition.
III.F.5. Cancellation
The Registrar accepted the cancellation action filed by Arroces
Y Cereals against the registration of the trademark LAPERDIZ &
Device571 in Class 30, registered in the name of a Jordanian firm,
Mahmoud Shaban & Sons Co., that used to be the Spanish
company’s local commercial agent in Jordan.
The Registrar accepted the cancellation action, confirming
that it appeared from the submitted evidence that Arroces Y
Cereals was the owner of said trademark and that its prior agent
registered the same in its own name in bad faith.572
On appeal, the High Court of Justice affirmed the Registrar’s
decision.573
MAURITIUS
III.A.1. Famous Marks
The Polo/Lauren Company, LP (Polo) applied for an
interlocutory injunction against three respondents,574 restraining
and prohibiting them from, inter alia, manufacturing and selling
products bearing the POLO mark and marks incorporating POLO,
all of which had been registered in Mauritius. In addition, Polo
sought an interlocutory injunction restraining the respondents
569. Registration No. 38649, published in Official Gazette Supplement No. 169, dated
December 20, 1996.
570. SmithKline & French Laboratories Ltd., a British company, v. L. Molleni & C., dei
Fratelli Alitti Societa Di Esercizio S.P.A., an Italian company, Registrar’s Decision No.
TM/38649/20204, dated October 11, 2003 (unpublished).
571. Registration No. 43642, published in Official Gazette Supplement No. 188, dated
June 5, 1997, at page 114.
572. Arroces Y Cereals, a Spanish company, v. Mahmoud Shaban & Sons Co., a
Jordanian company, Registrar’s Decision No. TM/43642/20467, dated October 15, 2002
(unpublished).
573. Case No. 14/2004, High Court of Justice, Decision No. 17, dated March 16, 2004
(unpublished).
574. The Polo/Lauren Co., LP v. Regent Ltd., Mr. Hitendranath Beegoo & Mr. Kreshna
Ramasawmy, 2004 SCJ45, 25 February 2004.
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from manufacturing and selling products bearing the registered
trademark POLO in association with the words “by RALPH
LAUREN” or any other words. Polo had not registered the
trademark RALPH LAUREN at the time of bringing this
application.
As Polo is the registered proprietor of the various POLO
marks, the court, as expected, granted the injunction against the
three respondents in respect of those trademarks. The more
interesting aspect of the case concerned the court’s consideration of
whether an injunction should be granted against the respondents
in respect of their use of the trademark POLO in association with
the words “by RALPH LAUREN.” Although Polo had not sought an
injunction in respect of use of the trademark RALPH LAUREN per
se, the court nevertheless considered Polo’s rights to the trademark
RALPH LAUREN, concluding that the respondents’ use of the
trademark RALPH LAUREN constituted an infringement of Polo’s
rights. The court found that the use of the trademark RALPH
LAUREN, on its own or together with the registered POLO
trademark, constituted an infringement of the provisions of the
Protection Against Unfair Practices (Industrial Property Rights)
Act 2002. In particular, the court found that RALPH LAUREN
was a well-known mark and, although it was not registered in the
name of Polo, use of that trademark by the respondents
constituted an unfair practice that was likely to cause confusion
and damage Polo’s reputation and goodwill.
Despite the fact that there was very little evidence of use of
the trademark RALPH LAUREN by Polo in Mauritius itself, the
court decided that Polo had acquired a reputation and goodwill, in
respect of its trademark RALPH LAUREN, that were
internationally well known. Moreover, the court found that the
respondents, as professionals in the textile industry, could not
have been unaware of the trademark RALPH LAUREN.
This decision is tangible proof that the provisions of the
Patent, Industrial Design and Trade Marks Act 2002, as well as
the Protection Against Unfair Practices (Industrial Property
Rights) Act 2002, are being rigorously applied by the courts.
MEXICO
II.B. Identification of Goods or Services
In accordance with Article 93 of the Mexican Law of Industrial
Property (LPI),575 trademarks will be registered in connection with
particular products or services according to the classification
established in the regulations to said law. Any doubts in regard to
575. Ley de la Propiedad Industrial.
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the class to which a product or service belongs will be finally
resolved by the Mexican Institute of Industrial Property (IMPI).576
The Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the
Registration of Marks, adopted in 1957, has been in force in
Mexico since 2001. In a resolution issued in November 2002, the
Federal Court for Tax and Administrative Affairs (TFJFA)577 ruled
that because, in the matter at issue, the registered trademark, for
goods in International Class 16, covered disposable diapers and
within the alphabetical list of goods of the Nice Classification
Class 16 refers to diapers made of cellulose paper of unique use
and disposable, it was clear that said class did not distinguish
whether the diapers were to be used for hygienic purposes for
incontinent adults or for babies. The TFJFA therefore held that if
the owner of the trademark proved the use of the mark for any
type of disposable diapers, it could be deduced that the registration
was used within the terms for which it was granted, that is,
covering disposable diapers, as in Class 16 it is not specified
whether the diapers are manufactured for adults or babies.578
III.A.2.b. Similarity of Marks
In order to determine the distinctive character of a trademark,
the IMPI takes into account all the factors characterizing the
mark, namely, its graphic, phonetic and ideological elements.
In May 2002, the TFJFA ruled that, with regard to trademark
registration, the ideological contents are of great importance when
deciding whether there is confusion between two or more
trademarks.
According to the resolution, if the ideological aspects of the
trademarks being compared are the same, the confusion arising
between them is inevitable, despite the fact that their similarities
could be graphic or phonetic.
Confusion may be caused by drawings that resemble each
other, a word and a drawing, words with opposed meanings or the
inclusion in the trademark of the name of the product sought to be
distinguished. Of all of these types the one that refers to words and
drawings is the most important, because of the fact that if the
symbol or design of a mark is the graphic representation of an idea
576. Instituto Mexicano de la Propiedad Industrial.
577. Tribunal Federal de Justicia Fiscal y Administrativa.
578. Proceeding No. 10831/01-17-05-4/407/02-PL-07-04. Resolved by the plenary meeting
of the Superior Court of the Federal Court for Tax and Administrative Affairs, in session of
November 18, 2002, by unanimity of 9 votes. Magistrate Silvia Eugenia Díaz Vega.
Secretary María Elda Hernández Bautista. Resolution approved in session of November 18,
2002.
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it will undoubtedly cause confusion with a word or words that
designate the same idea of the other trademark subject to analysis.
Therefore, trademarks that evoke a thing or a quality protect
not only their expression but also the drawing or symbol that can
graphically represent them. Otherwise, a person or company could
easily infringe the rights of a trademark owner by obtaining a
registration for symbols or words that refer to the thing or quality
contained in the word mark already registered, which would cause
confusion among consumers.579
NEW ZEALAND
I.B.13. First to Apply Versus First to Use
In International Resource (1999) Ltd. v. Aqua-Life 1983 Ltd.,580
the Assistant Commissioner of Trade Marks allowed an opposition
to the registration of a stylised version of the trade mark ECH20.
Aqua-Life 1983 Ltd. (the opponent) successfully argued that it had
a prior claim to the proprietorship of the trade mark. This decision
is significant because the Assistant Commissioner held that,
notwithstanding the opponent not having commercially used an
identical mark, the opponent’s preparations to use substantiated
its claim to proprietorship.
On 30 July 2002, the opponent instructed its (then) attorneys
to apply to register the trade mark ECH20. At the time, a plain
text version of the trade mark ECH20 was already registered in the
name of International Resource Ltd. for various beverages in
International Class 32. On 2 August 2002, the opponent’s
attorneys wrote to the attorneys on record for the registration
enquiring whether the registration had been assigned to a third
party because International Resource Ltd. had been struck off the
Register of Companies in 1997.
The opponent applied to register ECH20 on 19 August 2002,
and then applied to remove the prior ECH20 registration on the
grounds of non-use. This registration was subsequently removed
from the Register of Trade Marks.
In the meantime, on 15 August 2002, International Resource
Ltd. (the applicant) applied to register a stylised version of the
trade mark ECH20 in International Class 32 for essentially the
same goods as its prior ECH20 registration. On 21 August 2002,
the applicant requested that its name be changed to International
579. Proceeding No. 15038/01-17-11-8. Resolved by the Eleventh Regional Metropolitan
Court of the Federal Court for Tax and Administrative Affairs on May 7, 2002, by
unanimity of votes. Magistrate Gustavo Arturo Esquivel Vázquez. Secretary Eunice
Ortigosa Vélez.
580.
(17 May 2004) IPONZ T9/2004, Assistant Commissioner Hastie.
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501
Resource (1999) Limited. This request was granted by the
Commissioner of Trade Marks.
In the opposition hearing, the opponent essentially relied on
the ground that the applicant was not entitled to claim to be the
true proprietor of the mark, because the application was not made
in good faith or, alternatively, the applicant did not have a
sufficiently definite intention to use the mark. The opponent also
argued that it was the first to use and/or assert ownership of the
mark under Section 26(1) of the Trade Marks Act 1953.
On the issue of bad faith, the Assistant Commissioner
accepted that “. . . there is an inherent difficulty in establishing the
applicant did not have the requisite intention to use, given that the
facts are, to a large extent, uniquely within its knowledge.” The
Assistant Commissioner held that no inference could be drawn on
the facts that the application was made in bad faith, and therefore
the opposition failed on this ground.
In considering the issue of prior use, the Assistant
Commissioner reviewed a number of Australian581 and New
Zealand582 cases, and commented that the consistent approach
from the cases was that they drew a distinction between use and
mere preliminary discussions preceding use. At common law, the
proprietor of a trade mark is the first person to use the mark in
New Zealand.583 It was accepted by the applicant that there may
be use of a trade mark in the sense required by the Trade Marks
Act (that is, to distinguish the opponent’s goods from the goods of
others) even before the commercial launch of the product or service
with which the mark is associated. That was the case here,
because the opponent had not actually used the trade mark ECH20
prior to the application date (15 August 2002).
The opponent argued that it had an existing (genuine)
intention to use the trade mark in relation to the relevant goods,
and this was sufficient for it to claim proprietorship of the mark.
The opponent filed evidence that showed that it had briefed a
graphic design company in June 2002 to create a brand for the
opponent to use in relation to a new bottled water product. At a
presentation to the opponent on 23 July 2002, the brand ECH20
was one of three initial recommendations. As part of the design
process, an Internet search was done to see whether or not anyone
581. Moorgate Tobacco Co. Ltd. v. Phillip Morris Ltd., (1984) 156 CLR 414; Settef S.p.A.
v. Riv-Ovland Marble Co. (Vic) Pty Ltd., (1987) 10 IPR 402; Buying Systems (Australia) Pty
Ltd. v. Studio SRL, (1995) 30 IPR 517; Malibu Boats West, Inc. v. Catanese, (2000) 51 IPR
134; Woolly Bull Enterprises Pty Ltd. v. Reynolds, (2001) 51 IPR 149.
582. Effem Foods Ltd. v. Tip Top Investments Ltd., (22 November 2000) Unreported,
High Court, Auckland CL21/00, Williams J.
583. See Phillip Morris (NZ) v. Liggett & Myer Tobacco, (1978) NZIPR 195; Pioneer HiBred Corn Company v. Hy-Line Chicks Pty Ltd., [1979] 2 N.Z.L.R. 50.
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was using ECH20 (or the other brands that had been developed).
That search did not reveal anyone else using ECH20 in New
Zealand. In late July 2002, the opponent decided that it would use
the ECH20 brand in relation to its new product, and had instructed
its (then) attorneys on 30 July to apply to register the trade mark.
The opponent had also worked on, and settled, the distribution
channels for the new product, and how and to whom it would be
marketed.
The Assistant Commissioner held that the evidence
established sufficient use of the trade mark by the opponent prior
to 15 August 2002, and that the use substantiated its claim to
proprietorship. The opponent had a fixed and existing intention to
use the mark, and the steps taken by the opponent, including the
significant step of choosing a mark in relation to the relevant
goods, took the matter beyond the preliminary stage. The opponent
“had committed itself to using the mark” and “all that remained to
be done was to actually bottle and sell the new product.”
I.B.20. Color
In Effem Foods Ltd. v. Unilever PLC and Bluebird Foods
Ltd.,584 the Assistant Commissioner of Trade Marks allowed an
opposition by two parties against the registration of the colour
orange as a trade mark in International Class 30 for “rice.” This
decision is significant because the Assistant Commissioner
confirmed that in order for colour marks consisting of a single
basic colour to be registrable as a trade mark a very substantial
level of factual distinctiveness, obtained through use, is required.
Effem Foods Ltd. (the applicant) originally described the
precise colour for which protection was sought by referring to an
example attached to the application itself. The Intellectual
Property Office of New Zealand (IPONZ) later adopted a policy
requiring colours to be defined by reference to a standard colourindexing scheme, such as the Pantone system. The applicant
sought to change its description of the colour to a range covered by
several Pantone reference numbers. IPONZ refused to accept this
change. At the opposition hearing the applicant reluctantly agreed
to describe its colour as Pantone No. 021C, which was allegedly
closest to the representation of its mark.
Unilever PLC and Bluebird Foods Ltd. (the opponents)
opposed the application on the grounds that the colour mark did
not satisfy the definition of a trade mark under Section 2 of the
Trade Marks Act 1953 (the Act), and that it was not registrable
under Sections 14 and 15 of the Act.
584. (26 November 2003) IPONZ T43/2003, Assistant Commissioner Walden.
Vol. 95 TMR
503
To fall within the definition of a trade mark in the Act, the
alleged mark must be capable of graphic representation, and
capable of distinguishing the applicant’s goods from those of other
traders. As the applicant did not specify how the colour was to be
applied to the goods, the Assistant Commissioner considered the
mark in relation to the goods (rice) in a broad way including in
relation to the packaging, promotional material and rice itself. The
Assistant Commissioner noted that single colours have inherently
low distinctiveness and that the shade of orange in this case was a
common shade. Consequently, the mark was at the lower end of
the “spectrum of distinctiveness” but was not completely generic to
rice, or habitually associated with it. The mark, therefore, fell
within the definition of a trade mark in the Act.
The Assistant Commissioner then considered the registrability
of the mark. The key issue for determining a colour mark’s
inherent capability of distinguishing was whether or not other
traders were likely, in the ordinary course of their business and
without improper motive, to want to use the same or similar colour
mark on or in connection with their goods. The opponents’ evidence
showed that other traders wished to use, and had used, various
shades of orange in relation to rice without any improper motive.
Given the low level of inherent distinctiveness, a substantial level
of factual distinctiveness, through use by the applicant, was
required to establish registrability. The evidence failed to establish
the necessary distinctiveness.
NIGERIA
II.E. Forum Conflicts
In Ayman Enterprises Ltd. v. Akuma Industries Ltd.,585 the
Supreme Court held that where a trademark is not registered the
proper court to hear a passing-off action is the High Court of a
state and not the Federal High Court. When a mark is registered,
a passing-off action (or any other action for infringement) may be
brought only in the Federal High Court.
This decision means that previous practice must be reviewed.
Previously, when an application for registration was pending, the
better view was that a passing-off action should be commenced in
the Federal High Court. Courts had long held that when a
registration issued during the pendency of an action, the
registration could be relied on in the action as by law it was
effective retroactively. Subsequent to the Ayman decision, courts
have taken the view that when a registration has not issued the
Federal High Court is, ab initio, incompetent to hear any passing585. Supreme Court, 20 June 2003, reported at [2003] 13 NWLR 22.
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off action. Consequently, many cases pending in the Federal High
Court at the time Ayman was decided have had to be discontinued.
It seems that in reaching its decision the Supreme Court
overlooked a little-announced piece of legislation, s.2 of the Federal
High Court (Amendment) Decree No. 60 of 1991, which had the
effect of extending the jurisdiction of the Federal High Court to
common-law passing off (for which trademark registration is not
an element). In the circumstances, a number of appeals are
coursing their way up in the hope that the Supreme Court will at
some point have the opportunity to reconsider its decision in
Ayman in the light of the overlooked legislation.
III.A.12. Lack of Distinctiveness
In Ferodo Ltd. v. Ibeto Industries Ltd., the appellant, who was
the proprietor of the trademark FERODO for brake linings,
instituted an action against the respondent for infringement.
Evidence at the trial had shown that the trademark registered by
the appellant consisted of the word FERODO and a checkered
stripe device in the colors red, black and white. The respondent
sold its goods in red packaging.
The respondent denied the allegation of infringement. It
argued that its trademarks UNION and UNION SUPA were
distinctly different from the appellant’s trademark FERODO. The
trial court took the view that the appellant’s trademark was
essentially the word FERODO in spite of the accompanying stripe
device and that the respondent’s trademarks were not similar to
the appellant’s notwithstanding similarities in package coloring.
The Court of Appeal dismissed the appeal.586 It held that when
a name, graphic representation or any word is registered as a
trademark with an accompanying device, it cannot be assumed
that the device is part of the trademark.
The Supreme Court,587 in upholding the lower court’s decision,
held that in the absence of distinctiveness the appellant could not
claim exclusive right to the getup notwithstanding its being part of
the registered trademark. The Court relied on Section 9(1)(e) of the
Trade Marks Act,588 which provides that only a distinctive device is
registrable.
586. Reported at 92 TMR 469 (2002).
587. Supreme Court, 6 February 2004, reported at [2004] 16 WRN 1.
588. Laws of the Federation of Nigeria 1990, Chapter 436.
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505
NORWAY
III.A.2.b. Similarity of Marks
On September 3, 2004, the Gulating Appeal Court prohibited
the Norwegian company Autofil Norge AS from using the word
AUTOFIL in its marketing. The plaintiff, NRK (the Norwegian
Broadcasting Corporation), had used the word AUTOFIL
extensively for a number of years as a name of a TV series about
motor vehicles, and had registered AUTOFIL as a trademark in
International Classes 16, 38 and 41.
The Appeal Court found that AUTOFIL was also established
by extensive use as a trademark connected with cars and motor
vehicles, and that the mark and its owner enjoyed protection
outside Classes 16, 38 and 41 on account of its obvious association
with motor vehicles and motoring activities.
NRK’s use was found to have occurred throughout Norway,
and NRK was also regarded as having interests that justified the
City Court’s previous granting of a preliminary injunction.
In addition to ceasing the use of AUTOFIL in its marketing
activities, the defendant was also ordered to change its company
name, so that it no longer would contain the word AUTOFIL. The
plaintiff was awarded costs for the Appeal Court.589
The Norwegian company Rørleggervakta AS (Plumber Guard
Inc.) was granted a preliminary injunction against Plumber Guard
Oslo Ludvigsen (a sole trader), prohibiting Mr. Ludvigsen’s use of
the words PLUMBER GUARD based on the plaintiff’s established
trademark rights after 37 years of continuous use.
Even though the trademark as such was regarded by the court
as being rather descriptive, and thus enjoying limited protection,
the strong use of the mark, as well as the documented risk of
confusion between the parties’ activities, convinced the Oslo City
Court to issue, on November 24, 2004, a decision against the
defendant. The plaintiff was awarded full costs.590
III.A.10. Nonuse of Trademark
The trademark TRIPP TRAPP has been registered under the
Nice classification in Class 20 for “furniture, including chairs.” The
mark has been used only for a certain type of chair, mainly for
children, but the chair is adjustable so that the child until fully
grown may use it.
589. Published Lovdata LG 2004-36841.
590. Published Lovdata TOSLO-2004-16346.
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The case had previously been heard by the Oslo City Court,591
which on October 2, 2002, had ruled in favor of the plaintiff, Trip
Trap Denmark AS, finding that adequate trademark use by the
defendant, the Norwegian firm Stokke Gruppen AS, had not taken
place because the City Court determined that chairs for children
differ from chairs for adults. The defendant appealed.
On November 12, 2003, the Borgarting Lagmannsrett (a
regional Appeal Court) reversed the decision, finding that
trademark use was indeed present and that there was no reason to
distinguish between chairs for adults and chairs for children.
Further, the Appeal Court found that the trademark, when used
on a chair, also satisfied the user requirement for the item
“furniture.”592
III.C. Injunctions and Damages
The German carmaker BMW (Bayerische Motoren Werke AG)
filed suit in Oslo City Court against the Norwegian company
Cellus Norge AS for alleged trademark infringement, as well as for
compensation for economic losses.
Cellus Norge AS sells cellular phone services in the form of
logo messages to be transmitted via cell phones, including also the
plaintiff’s trademark BMW & Device.
However, as the defendant had immediately ceased its sale of
services after a warning letter had been issued by BMW and had
offered to pay NOK 20,000 (approximately US $3,000), and the
court found Cellus Norge AS’s activity to be beneficial for BMW,
the court refused BMW’s additional claim for NOK 30,000
(approximately US $5,000) in damages. Each party had to cover its
own legal costs. The decision was made by Oslo City Court on July
2, 2004.593
III.J. Gray Marketing
On June 4, 2004, the Norwegian Høyesterett (Supreme Court)
upheld, for the most part, the Borgarting Appeal Court’s decision
to prohibit the Norwegian company Paranova AS (a subsidiary of
Paranova-Gruppen A/S, Denmark) from using a number of
trademarks owned by companies in the Merck group (Merck & Co.,
Inc., Merck Sharp & Dohme B.V. and MSD Norge AS).594
The case dealt primarily with a parallel importer’s
repackaging of pharmaceuticals. In particular, the Supreme
591. Published Lovdata TOSLO-2001-11200.
592. Published Lovdata LB-2003-00364.
593. Published Lovdata TOSLO-2004-09059.
594. See 93 TMR 708-09 (2003).
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Court’s decision dealt with the question of whether the parallel
importer had the right to use certain graphic elements of the
plaintiff’s trademarks.
Prior to making its decision, the Supreme Court had obtained
an advisory opinion from the EFTA (European Free Trade Area)
Court on the interpretation of Article 7(2) of the EU Trade Marks
Directive concerning the possible need for repackaging in relation
to exhaustion of rights according to the Trade Marks Directive.
Merck’s appeal was lost, as the Supreme Court decided that
Paranova was justified in adding graphic elements in the process
of repackaging. The Appeal Court’s judgment concerning
Paranova’s compensation to the plaintiff was lowered to NOK 2
million (approximately US $300,000).
Paranova AS had to pay the plaintiff’s costs for the case before
the Oslo City Court, whereas most of the costs for the Appeal
Court were shared. For the Supreme Court, the plaintiffs jointly
had to cover Paranova’s legal costs in the amount of NOK
2,102,880 (approximately US $300,000).595
V.A. Domain Names
The Norwegian company Volvo Personbiler Norge AS, a
subsidiary of the Swedish car maker Volvo, filed suit against a
Norwegian citizen, Mr. O. B. G. Hoppestad, for trademark
infringement caused by the defendant’s use of the domain name
volvoimport.no.
On October 7, 2004, the Norwegian Supreme Court upheld the
decision handed down by the Appeal Court, as the word element
“volvoimport” was found to represent an obvious infringement of
the plaintiff’s famous trademark VOLVO. Under the
circumstances the use of the domain name by the parallel
importer, Mr. Hoppestad, was found to be unreasonable, and
Volvo’s trademark rights were found not to have been exhausted in
the course of trade.
The defendant’s use of the domain name volvoimport.no was
prohibited, and the plaintiff was awarded costs for the Supreme
Court.596
The Norwegian company Ergoline AS requested a preliminary
injunction before the Oslo City Court in order to prohibit the
defendant, Offitek AS, another Norwegian company, from using
the domain name ergoline.no or similar domain names containing
the word ergoline.
595. Published Lovdata HR-2004-00981-A.
596. Published Lovdata HR-2004-016701-A.
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On August 18, 2003, the Oslo City Court decided in favor of
the defendant and ordered Ergoline to pay the court costs.
Ergoline AS filed an appeal before the Borgarting Appeal
Court concerning the order to pay the defendant’s costs. The
Appeal Court, in upholding the Oslo City Court’s decision on
November 24, 2003, confirmed that Offitek had infringed upon
neither Ergoline trademark nor its company name.597
The Norwegian company finn.no AS filed for a preliminary
injunction against Nettfinn AS for trademark infringement
relating to confusion between the two parties’ domain names,
finn.no and nettfinn.no.
On October 31, 2003, the Borgarting Appeal Court confirmed
the Oslo City Court’s previous negation of the presence of
trademark infringement. The Appeal Court found that the element
“finn” of the domain name finn.no had low distinctiveness (“finn”
translates into “find” in English).
The Appeal Court stated that although the Trademarks Act
covers conflicts between trademarks and domain names (finn.no
AS had registered the trademark FINN), this was not sufficient to
prevent the defendant from using nettfinn.no, owing to the court’s
finding that the two words were sufficiently different from one
another.
Further, nettfinn.no was used for goods and services other
than those covered by finn.no AS’s use and registration. Costs
were not awarded to either party.
Two judges voted in favour of this decision, whereas the third
judge found that risk of confusion existed and that the defendant’s
use of nettfinn.no infringed on the plaintiff’s rights.598
On continued appeal, the Norwegian Supreme Court on July
2, 2004, referred the case back to the Borgarting Appeal Court,
with instructions to consider also the plaintiff’s submissions
regarding unfair marketing practices from the owner of
nettfinn.no. However, the Appeal Court again decided against
finn.no AS. The Appeal Court’s previous decision was upheld on
April 29, 2004.599
On April 28, 2003, the Borgarting Appeal Court upheld the
Indre Follo Tingrett’s (District Court’s) decision to prohibit the
Norwegian company Haralds Printershop AS from using the
domain name hpshop.no according to a request for a preliminary
597. Published Lovdata LB-2003-09956.
598. Published Lovdata LB-2003-20042.
599. Published Lovdata LB-2004-10163 and HR-2004-01169-U.
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injunction filed by Hewlett Packard Company’s (HPC’s) Norwegian
subsidiary.600
The Appeal Court found that the Trademark Act also covers
use and registration of domain names. The word mark HP was
determined to be strongly established by use in the Norwegian
market for HPC.
Risk of confusion for a not insignificant number of potential
customers was found to exist. The Appeal Court regarded
registration of the domain name in the Norwegian domain name
registry by Haralds Printershop AS as having no importance with
respect to the question of whether trademark infringement
existed.601
PANAMA
I.B.1. Generic Names
Cuba Libre Products, S.A. filed registration petitions for
CUBA LIBRE & Design for products in Classes 29, 30, 32, 33 and
34. Bacardi & Company Ltd., opposed, alleging that the
trademarks were generic for products in all the requested classes.
The applicant argued that the fact that it had obtained a
previous registration for CUBA LIBRE ORIGINAL FORMULA &
Design for products in Class 33 as of March 6, 1992, which was
renewed on March 6, 2002, for ten more years, evidenced that its
trademarks did not fall in the prohibition, and therefore the new
registrations ought to be granted. The applicant had filed evidence
of registration in other countries, as well as evidence of intensive
and extended use.
The Court considered the registrations in Classes 29, 30, 32
and 34 deceiving and the registration in Class 33 generic. As to
evidence of registrations in other countries, the superior level court
established that these are not enough to disregard genericism. In
connection with evidence of intensive use in local and international
commerce and extended use, the Court found that these alone did
not evidence acquired distinctiveness and suggested that
additional evidence was missing. The Court, however, did not go
further to establish what other evidence would clearly demonstrate
secondary meaning, though it is clear that, according to the Court,
intensive use for an extended period of time would help build the
secondary meaning allegation.
The Third Superior Court, on appeal, rejected applicant’s
secondary meaning claim for products in Class 33. The Court
considered CUBA LIBRE a generic name as it is the common name
600. See 94 TMR 472-73 (2004).
601. Published Lovdata LB-2002-02410.
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for an alcoholic beverage made with rum, lemon and cola. The
ruling of the first level court was modified in part, allowing the
registration of CUBA LIBRE for products in Classes 29, 30, 32 and
34, and confirmed in part, denying the registration of CUBA
LIBRE for products in Class 33.
In connection with the protection of the statute of limitation
argued against by the plaintiff for existing registrations, the court
was clear in establishing that the genericism of the trademark was
evidence of the applicant’s lack of good faith in obtaining the
registration and that the protection granted by the statute of
limitation provision could not be extended as the provision
expressly excludes registrations obtained with a lack of good faith.
The decision, therefore, implies that bad faith needs to be shown in
specific circumstances. It also opens the possibility for contesting,
by means of cancellation suits, trademarks protected under statute
of limitation provisions, a course seldom undertaken.
As very few cases have been tried on the grounds of secondary
meaning, a determination of the Court as to what would
demonstrate secondary meaning would have a positive effect on
future cases.602
I.B.8.a. Similarity of Marks
The Third Superior Court reversed the previous holding that
denied the contempt of likelihood of confusion between SINTRAX
of the plaintiff Merck KgaA and SINTAB of Laboratorios Maver,
Ltda., both for products in Class 5. As a result, the Court
established that the root or particle of a trademark could be
regarded as generic not only when the root implies the chemical
composition of the product but also when there is a generalized use
of a word root in a significant number of trademarks of different
owners.
In doing so, the Court went further to establish that 34
examples of trademarks with the initial syllable “SINT” were
enough to demonstrate significant use whereas it found the rule of
six examples, established by an author cited by the Court, was not
enough to establish genericism of the syllable in the
pharmaceutical industry. The Court did not determine what would
be the required minimum number of trademarks sharing the same
root to demonstrate significant use in the pharmaceutical industry.
The findings of the Court further distance itself from its
previous criterion that genericism could only be established where
parts of a trademark suggested a chemical composition or specific
use of the product.
602. Bacardi & Co., Ltd. v. Cuba Libre Products, S.A., Third Superior Court,
December 5, 2004.
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Notwithstanding the above, the Court rendered a holding of
likelihood of confusion in favor of the plaintiff. The Court held
considered the differences between the last syllables were not
enough for diminishing likelihood of confusion because the
trademarks not only shared the same prefix but also the same
number of syllables and word extension.603
PARAGUAY
III.B. Unfair Competition
The Colombian firm Productora Tabacalera de Colombia S.A.
filed a complaint before the Judge of First Instance in Civil and
Commercial Matters against the local firm Productora Tabacalera
Comercial S.R.L. to cancel the defendant’s trade name
PROTABACO at the Commerce Public Registry based on unfair
competition, considering that both firms had similar trade names
and exactly the same abbreviation, PROTABACO. The Judge of
First Instance upheld the complaint, and therefore the local firm’s
trade name PROTABACO was cancelled at the Commerce Public
Registry.
Productora Tabacalera Comercial S.R.L. appealed the Judge’s
resolution. The Appellate Chamber affirmed the decision issued by
the Judge of First Instance.604
The decision issued by the Appellate Chamber was based on
the Washington Convention of 1929, of which Paraguay and
Colombia are members. In the appeal, the defendant had argued
that the cancelled trade name was legally registered in the
Commerce Public Registry and that Productora Tabacalera de
Colombia S.A. did not prove the economic damage supposedly
caused by the registration of the defendant’s trade name.
The Appellate Chamber expressed that the legal registration
of the trade name at the Commerce Public Registry did not protect
said trade name from being cancelled when it was similar or
identical to another trade name or a prior registered one.
Furthermore, in regard to the supposed economic damage
justification, the Appellate Chamber stated that this was not an
important and valid point, so it did not take this argument into
serious consideration. It said the plaintiff could claim economic
damage in an independent and further judicial action.
The Appellate Chamber’s decision is important because it sets
jurisprudence on the matter that in an illegal registration of a
603. Merck KgaA v. Laboratorios Maver, Ltda., Third Superior Court, January 19, 2004.
604. Productora Tabacalera de Colombia S.A. v. Productora Tabacalera Comercial
S.R.L., Decision No. 33 of the Appellate Chamber, dated March 17, 2003.
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trade name, economic damage does not need to be proven in order
to obtain the cancellation of said trade name.
III.F.3. Nullity
Philip Morris Brasil S.A. filed a nullity action against the
trademark registration for MUSTANG, in Class 34, owned by the
Colombian firm Productora Tabacalera de Colombia S.A. in
Paraguay.
The arguments filed in this case were that the registration of
MUSTANG was granted to Productora Tabacalera in 1994 in
Paraguay and by that date Philip Morris Brasil S.A. was already
the owner of the trademark MUSTANG in Brazil. The plaintiff
argued that MUSTANG was a notorious trademark in Class 34.
Productora Tabacalera argued that it was the owner of the
trademark MUSTANG in Colombia and that when it applied for
the trademark in Paraguay it was only exercising its effective
rights. It also stated that MUSTANG was a notorious trademark
in Colombia based on its use of the mark.
The Judge of First Instance in Civil and Commercial Matters
stated that it was demonstrated that both parties were the owners
of the same trademark, MUSTANG, for cigarettes in their
respective countries, and that therefore the decisive element
necessary to resolve the conflict in Paraguay was a determination
of whether Philip Morris’ trademark had prior rights over the
defendant’s trademark registered in Paraguay.
The Judge made a comparison of the lists filed by the parties,
wherein were mentioned all registrations of the trademark
MUSTANG in the respective countries. The prior registration of
MUSTANG in the name of Productora Tabacalera in Colombia
dated from 1973, while the registration of MUSTANG in Brazil in
the name of Philip Morris dated from 1975.
Given the above arguments, it was demonstrated that the
prior registration of the trademark MUSTANG was owned by the
defendant. Therefore, the Judge rejected the complaint filed by
Philip Morris.605
Philip Morris has appealed the Judge’s decision.
This decision is important because it establishes the rules for
resolving situations where an applicant’s trademark has prior
rights in a country over an identical trademark of another owner
that is registered in a different country and where both
trademarks are notorious.
605. Philip Morris Brasil S.A. v. Productora Tabacalera de Colombia S.A., Decision No.
560 of the Judge of First Instance in Civil and Commercial Matters, dated July 27, 2004.
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513
PERU
I.B.9.b. No Similarity of Goods/Services
Unilever N.V. applied for registration of its trademark MINI
MILK CRAYOLA for products in International Class 30. The
application was opposed by Binney & Smith Inc. based on the
existence of the registered trademark CRAYOLA, covering
products in Classes 16, 25 and 28.
In its decision,606 the Court of INDECOPI (National Institute
for the Defense of Competition and Protection of Intellectual
Property) stated that to determine whether two products are
related, to the extent of causing confusion among consumers if
they are identified by similar trademarks, it is necessary to
consider the complementary character of their physical nature or
purpose, their similar channels of distribution or promotion and
the type of consumer to which they are directed. These bases of
comparison are tacitly included in Decision 486 of the Andean
Community, and are consistent with different interpretations
made by the Andean Court of Justice. For example, in one case,
the Court has held that there will be a competitive connection
between the products if, among other things, (1) they have similar
distribution channels, (2) they use identical or similar advertising
means, (3) they have a certain relation or connection, (4) they are
interchangeable and (5) they have the same purpose.607
In the case mentioned above, the Court of INDECOPI
concluded that the products in Class 30 (ice creams, confectionery
and related products) were not sufficiently related to and did not
have a competitive connection with the products in Class 16
(stationery, in which are comprised wax pencils known as crayons),
Class 25 (clothing) and Class 28 (playthings and decorations, etc.).
The Court found that the insufficient relation between the
products in question was due to four factors:
1. The different nature or purpose of the products. “Icecreams, water ice, ices, frozen confectionery and other
elements for the preparation of said products have diet
purposes, whereas clay for modelling and compounds, and the
pencils (crayons) have educational and entertainment
purposes; clothing, footwear, headgear and clothes in general
have as [their] purpose to keep people warm and protected,
and games and playthings have amusement and
entertainment purposes.”
606. Court of INDECOPI, Resolution No. 700-2004/TPI-INDECOPI, August 10, 2004,
File No. 154286-2002.
607. Andean Court of Justice, Proceeding No. 5-IP-2002 (February 20, 2002), [2002]
ACCJ 7.
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2. The different distribution channels of the products. “The
products that the mark applied for registration intends to
distinguish are mostly sold in grocery stores, ice-cream stores,
restaurants [and] ice-cream vendor’s carts, whereas the
products that distinguish the registered trademarks are
mostly sold in bookstores and bazaars, boutiques and
department stores and toy stores and department stores.
Although the products in controversy can be found in
supermarkets, they are arranged in different sections.”
3. The fact that the products are not substitutes
(interchangeable).
4. The fact that the products are not used for the same
purpose.
Moreover, the Court dismissed the supporting argument of the
opponent, namely that the products to which the trademark
CRAYOLA referred had the same type of consumers and,
consequently, the same entertainment purpose, if one took into
consideration the fact that the applicant intended to distinguish
ice creams presented in a novel shape (crayon shape).
The Court found that the ice creams and frozen confectionery
intended to be distinguished by the mark for which registration
was sought were destined for a consumer public of all ages,
whereas the elements for preparing said products—which the
mark also intended to distinguish—were destined for a specialized
consumer (people who manufacture ice creams or frozen
confectionery). It observed that “in the case of products that
distinguish registered trademarks . . . clays for modelling and
compounds, and pencils (crayons) are destined for students and
artists; clothing, footwear, headgear and clothes in general are
destined for a general consumer public; and games and playthings
are destined for both children and adults.”
The Court noted that “[p]rintings obtained from [the] Internet
and from catalogues prove the existence of companies specialized
in products for babies and/or children, which activity includes
several areas such as diet, clothing and playthings. These are
products exclusively destined for a certain sector of consumers;
nevertheless, the same does not occur in the present case, since the
products distinguished by the signs in conflict are not exclusively
destined for [the] same sector of consumers.” In this way, it clearly
established that ice creams are not products mostly destined for
children and that, probably, this is the reason why companies
oriented toward the children sector have not expanded their
activities to include the marketing of said products.
It is important to emphasize that the Court of INDECOPI,
which confirmed the criterion set forth by the first administrative
instance, did not consider the argument of the opponent regarding
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the supposed way in which the products (ice creams) would be sold
(reproducing a crayon form).
The Court tacitly recognized that the question of relation and
competitive connection of the products has to be judged according
to the products for which protection is requested and that are
distinguished by the trademark opposed, without considering the
particular way in which they can be presented or sold, a factual
circumstance that is clearly beyond the confusion problem between
the marks. It also recognized that, in this case, there were no
graphic or visual similarities between the trademarks CRAYOLA
and MINI MILK CRAYOLA because of their different extension
and their different sequence of vowels and consonants.
As this case demonstrates, in order to determine whether
there exists the risk of indirect confusion between two marks (i.e.,
confusion with respect to the origin of the products covered), it is
essential to compare the products and consider whether they are
similar or different. Specifically, it must be determined whether
the products are sufficiently related and/or competitively
connected.
PHILIPPINES
III.A.2.b. Similarity of Marks
Petitioner McDonald’s Corp.’s trademark BIG MAC for its
double-decker hamburger sandwich has been in the market since
September 1981 and was registered on July 18, 1985. On October
21, 1988, respondent L.C. Big Mak Burger, Inc. applied for the
registration of BIG MAK for its hamburger sandwiches. This
prompted McDonald’s to file a case for infringement and unfair
competition.
In this case,608 the Supreme Court made an analysis of the
presence of the following elements needed to establish
infringement, namely, (1) the validity of the plaintiff’s mark; (2)
the plaintiff’s ownership of the mark; and (3) the use of the mark
or its colorable imitation by the alleged infringer, resulting in
likelihood of confusion.
With regard to the first element, the Court considered BIG
MAC as falling under the class of fanciful or arbitrary marks
because it bears no logical relation to the actual characteristics of
the product it represents, which makes it highly distinctive and
therefore valid.
With respect to the second element, the Court held that an
earlier registration of BIG MAK on March 31, 1979, by a third
608. McDonald’s Corp. & McGeorge Food Industries Inc. v. C.C. Big Mak Burger, Inc., et
al., G.R. No. 143993, promulgated August 18, 2004, by the Supreme Court.
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party was later assigned by said party to petitioner, while another
earlier registration (June 24, 1983) by yet another third party was
registered only on the Supplemental Register, which is not even
prima facie evidence of the validity of the registrant’s exclusive
right to use the mark on the goods specified in the certificate.
As far as the third element is concerned, the Court said that
there was both confusion of goods (product confusion) and
confusion of business (source or origin confusion). As to the first
type of confusion, the Court rejected the respondents’ arguments
that BIG MAC is used only on the petitioners’ double-decker
hamburgers while BIG MAK is used not only on hamburgers but
also on other products, such as siopao, noodles and pizza. The
Court also rejected the respondent’s argument that the packaging
and presentation of the goods covered by the two trademarks are
different by reasoning that the two marks are used on the same
product—hamburgers—and that use of BIG MAK on nonhamburger food products cannot likewise be excused. Otherwise,
registered marks will lose their protection under the law, as the
non-hamburger food products may be considered to fall within the
normal potential expansion of business of the registered mark.
With respect to source or origin confusion, the Court gave no
weight to the respondents’ contention that BIG MAK caters mainly
to the low-income group while BIG MAC is patronized by middleand upper-income groups. In fact, the Court reasoned that the lowincome group may be led to believe that BIG MAK hamburgers are
the low-end hamburgers marketed by the petitioners and that the
respondents would then benefit by associating their low-end
hamburgers with the petitioners’ high-end BIG MAC hamburgers.
All of these factors lead to a finding of likelihood of confusion in
the identity of business.
The Supreme Court, in finding that likelihood of confusion
between the marks exists, said that the dominancy test, rather
than the holistic test, should be applied to this case. BIG MAK
sounds exactly the same as BIG MAC. The first word in BIG MAK
is exactly the same as in BIG MAC. The first two letters of MAK
are the same as those in MAC, and the third letter, “k,” is the
equivalent in Filipino of the letter “c” and is pronounced in the
same manner. The aural and visual identity of the two marks, as
far as the Court is concerned, prevails over the supposed
differences in the overall presentation of the two marks as they
appear on the goods with their labels and packaging. The Court
also considered the fact that the respondents were not able to
explain sufficiently how and why they chose BIG MAK for their
hamburger, and in the absence of proof that respondents’ choice
was due to honest mistake or accident, the Court, in light of the
goodwill and reputation of BIG MAC, ascribed that choice to an
intention to ride on the popularity of BIG MAC.
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With regard to the claim of unfair competition, the Supreme
Court considered the dissimilarities in the packaging (styrofoam
box for BIG MAC as opposed to plastic wrapper for BIG MAK) and
the script style and color combinations of the two marks as minor
compared to the almost identical words and exactly the same
pronunciation of the two competing marks. The Court pointed out
that Section 29(a) of the trademark law, Republic Act No. 166,
governing unfair competition, expressly provides that the
similarity in the general appearance of the goods may be in the
“devices or words” used on the wrappings. In this case, said the
Court, the words are almost the same.
As to the requirement of Section 29(a) that the defendant give
“his goods the general appearance of goods of another
manufacturer,” the Court held that if the respondents used BIG
MAK on egg sandwiches instead of hamburger sandwiches, their
use of BIG MAK will not give their goods the general appearance
of the petitioners’ BIG MAC hamburgers. In such case, there will
be only trademark infringement but no unfair competition. The
absence of a notice to the public that BIG MAK hamburgers are
products of L.C. Big Mak Burger, Inc. on their plastic wrappers
was considered by the Court as showing the respondents’ intent to
deceive the public and as supportive of the Court’s holding that the
respondents were guilty of unfair competition.
III.A.3. Prior User
In Mighty Corp. & La Campana Fabrica de Tabaco, Inc. v. E.
& J. Gallo Winery & Andresons Group, Inc.,609 the petitioners
sought the reversal of the decision of the Court of Appeals ruling
that they were liable for trademark infringement and unfair
competition for using the trademark GALLO for cigarettes despite
the respondents’ GALLO wine trademark, which was registered on
November 16, 1971. The Supreme Court upheld the petitioners’
position, stating that under the trademark law then in effect,
Republic Act No. 166, actual commercial use was the basis for
acquiring trademark ownership because the petitioners started
using the mark in 1973 whereas the respondents’ use did not begin
until July 9, 1981, even though their mark was registered in 1971.
Moreover, the Supreme Court held that wines and cigarettes
are not identical or competing products, thus rejecting the
applicability of the concept of “related goods” to the case because
they are not so related that the public may be deceived or misled
as to their manufacturer or source. In reaching this conclusion, the
Supreme Court considered several factors employed by it in
previous similar cases, namely, (1) the business (and its location)
609. G.R. No. 154342, promulgated July 14, 2004 by the Supreme Court.
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to which the goods belong; (2) the class of product to which the
goods belong; (3) the products’ quality, quantity or size, including
the nature of the package, wrapper or container; (4) the nature and
cost of the articles; (5) the descriptive properties, physical
attributes or essential characteristics with reference to their form,
composition, texture or quality; (6) the purpose of the goods; (7)
whether the article is bought for immediate consumption, that is,
day-to-day household items; (8) the fields of manufacture; (9) the
conditions under which the article is purchased; and (10) the
channels of trade through which the goods flow, how they are
distributed, marketed, displayed and sold. In applying the entire
range of factors enumerated above, the Court held that the usual
purchaser of the products involved is not likely to be confused.
The Supreme Court also rejected the applicability of Article
6bis of the Paris Convention, holding that wines and cigarettes are
neither the same, identical, similar nor related goods, which is a
required element under the Convention.
As for the claim of unfair competition, the Supreme Court held
that it had no basis because there was no attempt by the
petitioners to pass off their cigarettes as products of the
respondents, and it was not established that the buying public was
likely to be deceived.
PORTUGAL
I.B.4. Geographical Names
Água do Fastio–Comércio e Engarrafamento de Águas
Minerais, SA (Fastio) appealed to the Court against the decision of
the Portuguese Industrial Property Office (IPO) granting
protection to the trademark GERÊS & Device,610 filed by Empresa
de Águas do Cabril, Lda (Cabril), on the basis of its mark ÁGUA
DO FASTIO GERÊS & Device.611
Fastio argued that Cabril’s mark has as its distinctive element
the word GERÊS, which is included in Fastio’s mark and is an
indication of the origin of the mineral water commercialised by
Fastio. Cabril argued that its mark is composed of both word and
device elements and that Fastio’s mark is also composed of word
and device elements, the preponderant one of which is the word
FASTIO, and that the remaining words (ÁGUA and GERÊS) are of
public domain, to which no exclusive rights can be claimed.
610. Application No. 321.892, GERÊS & Device, intended for “table waters,” in the name
of Empresa de Águas do Cabril, Lda.
611. Registration No. 215.128, ÁGUA DO FASTIO GERÊS & Device, covering “mineral
and medicinal water,” in the name of Água do Fastio–Comér. e Eng. de Águas Min., S.A.
Vol. 95 TMR
519
Empresa das Águas do Gerês, SA (Empresa) also appealed to
the Court against the grant of GERÊS & Device, arguing that
Empresa first started as Empreza das Águas do Gerez (this name
is written nowadays Gerês) in the nineteenth century, having
applied for the registration of its name of establishment—
EMPREZA DAS ÁGUAS DO GEREZ—in 1897,612 and that the
distinctive element of its company name and name of
establishment is the word GERÊS. Cabril replied by arguing that
its mark is composed of both word and device elements and that
Empresa’s company name is composed of words of public domain,
to which the appellant cannot claim exclusive rights.
The Court decided that, as a whole, Cabril’s GERÊS & Device
mark is distinctive, although it is composed of generic, usual,
descriptive and weak elements, namely the word GERÊS in a
special lettering—(which is the name of the mountain where the
mineral water has its source), the words água de nascente
(“fountain water”) and the device of a mountain, all of them
inserted in a mosaic panel.
Thus, regarding Fastio’s mark ÁGUA DO FASTIO GERÊS &
Device and Cabril’s GERÊS & Device mark, the Court ruled that
both marks are composed of both word and device elements and
that the preponderant element of the appellant’s mark is the word
FASTIO. Furthermore, the expression GERÊS cannot be of
exclusive use by any party, as it is an indication of the origin of the
products and can, therefore, be used and registered in combination
with other marks, but cannot be, per se, opposable to other marks
that contain it.
Regarding Empresa’s company name and name of
establishment EMPREZA DAS ÁGUAS DO GEREZ (GERÊS), the
Court decided that the predominant element or distinctive part of
Empresa’s company name and name of establishment is the word
GERÊS. The activity of Empresa (i.e., operation of water fountains
in Gerês), for which the name of establishment EMPREZA DAS
ÁGUAS DO GERÊS has been granted, is similar to the products
covered by Cabril’s mark (i.e., table mineral water).
The Court further decided that, despite the fact that in
Cabril’s mark the word GERÊS is accompanied by other device
elements, in the case of the company name and name of
establishment, the preponderant element is Gerês, which is also
descriptive, bearing in mind Empresa’s activity.
The Court concluded that, despite the fact that the word
GERÊS is not preponderant in Cabril’s mark, it is part of the mark
and is recognizable and associated with Empresa’s trade name,
612. Registration No. 17905 (formerly 302), EMPREZA DAS AGUAS DO GEREZ, filed
on 11 September 1897, and granted on 11 September 1898.
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protected since 1908, which could give rise to acts of unfair
competition. This may happen regardless of Cabril’s intention.
Thus, the Court revoked the IPO’s decision granting protection to
GERÊS & Device.613
I.B.7.b. Three-Dimensional Marks
Unilever, NV appealed to the Court against the decision of the
IPO refusing protection to its three-dimensional mark614 on the
ground of lack of distinctiveness.
The Court declared that the mark in question does not consist
of a shape necessary to any of the products for which the mark is
intended, does not consist of the usual shape of such products, does
not consist of a technically necessary shape and does not increase
the value of the products for which it is intended.
The Court therefore decided that there are no absolute
grounds for refusal and that this mark is distinctive.615
I.B.8. Likelihood of Confusion
GN2–Produções e Gestão Artística, Lda (GN2) opposed at the
IPO the trademark application for D’ARRASAR,616 on the grounds
of priority of its mark D’ARRASAR617 and identity of the marks
and services designated by both marks.
The applicants replied by arguing that their mark is earlier, as
they started to use it six months prior to the filing of GN2’s
application, that is, on 8 February 1999. The applicants also
claimed the copyright of the word element D’ARRASAR.
The IPO acknowledged the priority rights deriving from the
use six months prior to the filing of the application, as provided for
under Article 171 No. 1 of the Portuguese Industrial Property
613. Application No. 321.892, GERÊS & Device, intended for “table waters,” in the name
of Empresa de Águas do Cabril, Lda.
614. Application No. 346.545, device (three-dimensional), intended for “detergents;
preparations and substances, all for laundry use; fabric conditioning preparations, cleaning,
polishing, scouring and abrasive preparations; preparations for dishwashing purposes;
fabric softeners; bleaching preparations; stain removing preparations; deodorizing and
freshening preparations for use on clothing and textiles; soaps for brightening textiles; hand
washing preparations; laundry starch; tissues impregnated with preparations and
substances for cleaning and polishing; sachets and sheets for perfuming fabrics; and
potpourri.” The mark consists of a flattened oval shape.
615. Trade Court, Bulletin No. 9/2004, dated 30 September 2004, at page 3147.
616. Application No. 336.898, intended for “music group” in Class 41 and applied for by
Jorge Fernando dos Santos Capinha Marques Rosa and Carlos Manuel Godinho Coincas,
filed on 5 May 1999.
617. Registration No. 336.811, covering “cultural activities, music group” in Class 41, in
the name of GN2-Produção e Gestão Artística, Lda, filed on 30 April 1999, and granted on
19 March 2001.
Vol. 95 TMR
521
Code. However, the applicants did not mention or claim such prior
use when filing the application. Furthermore, the applicants had
transferred the copyright to GN2 and, while the contract involved
was revoked, this happened only after the filing of both
applications; furthermore, the transfer contract provided for the
non-revocation of the same and stated that the copyright would
always pertain to GN2.
Thus, as the priority claimed by the applicant could not be
accepted, the IPO, in view of the similarity of the services covered
by the marks in conflict and the identity of their word elements,
refused the protection of the applicants’ mark.618
I.B.8.c. Conflict Between
Trademarks and Corporate Names
BMC Software, Inc. (appellant) appealed to the Low Court
against the refusal of its trademark BMCSOFTWARE & Device619
by the IPO, because of prior registrations for the trademark BMC
& Device,620 the BMC logo621 and the name of establishment BMC–
Bulhosa & Mendes, Computadores, Lda (appellee).622
The appellant argued that the company name BMC Software,
Inc. was used in the United States since 1980 and is one of the
biggest manufacturers of software. When the appellee filed its logo
and mark, it was aware that the appellant had been carrying out
its activity in Portugal since 1998. The appellant’s trade name
enjoys protection in Portugal, conferred by Article 8 of the Paris
Convention,623 and the appellee’s mark and logo should not have
been granted protection, as they constitute an imitation of the
appellant’s well-known mark BMCSOFTWARE.
618. Industrial Property Bulletin No. 3/2001, dated 29 June 2001.
619. Application No. 348.855, BMCSOFTWARE & Device, intended for “computer
programs and software,” filed by BMCSoftware, Inc., on 4 August 2000.
620. Registration No. 335.193, BMC & Device, covering “Hardware installation,
maintenance, repair and assistance” in Class 37 and “Computer programming and computer
software” in Class 42, filed by BMC–Bulhosa & Mendes, Computadores, Lda on 11 February
1999, and granted on 10 August 1999.
621. Logo No. 1704, BMC & Device, filed by BMC–Bulhosa & Mendes, Computadores,
Lda. on 11 February 1999, and granted on 10 August 1999. Logos are intended to identify
the company/corporation and are formed by word elements combined or not with a device,
which identifies the company/corporation (it usually is the distinctive sign by which the
company is known or wants to be known).
622. Name of Establishment No. 44.687, BMC, filed by BMC–Bulhosa & Mendes,
Computadores, Lda. on 13 February 2001, and granted on 10 December 2001. Names of
establishments are intended to identify the premises, the physical place where the
company/corporation has its activity, and are formed by a word element.
623. Article 8 reads: “The trade name will be protected in all the countries of the Union
irrespective of its registration and whether it is or not part of a trade or service mark.”
522
Vol. 95 TMR
The appellee replied by arguing that the refusal of the
appellant’s mark should be maintained on the basis of its prior
rights, and that the appellant has no legal protection whatsoever
in Portugal, as it is not registered with the Portuguese National
Register of Companies (RNPC).
The Low Court maintained the refusal decision of the IPO and
the appellant further appealed to the High Court.
The High Court acknowledged that the interpretation of
Article 8 has been diverse and has given rise to contradictory
jurisprudence, and that it is thus difficult to define the contents of
protection given by said article.
The High Court then followed the interpretation of Professor
Oliveira Ascensão which states that Article 8 does not confer a
priority to the registration but allows the non-registration of the
trade name involved.
Thus, the High Court ruled that the prior use made by the
appellant in the United States does not confer priority to its mark
in respect of appellee’s mark and that refusal of BMCSOFTWARE
should be maintained.624
III.A.1. Famous Marks
Renova–Fábrica de Papel do Almonda, SA (Renova), appealed
to the Court against the use of the mark PÉROLA, on the basis of
its various registrations for the trademark RENOVA, arguing that
the later mark is confusingly similar to the prior mark, it is
intended for the same products and causes error or confusion
among consumers, giving rise to acts of unfair competition.
Furthermore, Renova argued that economically the appellee
caused it damages, for its marks lost distinctive character and the
appellee benefited at the cost of Renova.
The appellee replied by arguing that it had ceased to use the
products referred to by Renova.
The Court acknowledged that Renova is the owner of several
Portuguese registrations and one Community registration for the
mark RENOVA, with a special type of lettering and device, some of
which claim the colours white and blue. The Court also agreed that
this mark is used on Renova’s products and that it is a well-known
mark. Furthermore, it is a leading trademark in the market of
hygienic paper, pocket tissues, paper napkins, facial tissues and
kitchen paper rolls, which are sold all over Portugal.
624. Industrial Property Bulletin No. 7/2004, dated 30 July 2004, at page 2421.
Vol. 95 TMR
523
Regarding the appellee—Industrias de Papel Coelhos, Lda—
the Court acknowledged that it manufactures and sells paper
products, namely hygienic paper, napkins and kitchen paper rolls,
and that at least since 1999 it has been using on some of its
products a label bearing the mark PÉROLA, in a special type of
lettering in the colour white, inserted in a blue rectangle (with the
exception of the pocket tissues on which the blue background is not
used). The mark PÉROLA is not registered.
The Court cited the opinion of Bédarride, who considers that
the imitation should be assessed by the similarity that results
from the whole of the elements that constitute the mark and not by
the dissimilarities that may offer several details, when analyzed
separately.
In view of the above, the Court decided that the mark
PÉROLA is confusingly similar to the RENOVA mark, despite the
524
Vol. 95 TMR
fact that the respective word elements per se are perfectly
distinguishable and have different meanings.625
In fact, the appellee’s mark contains the exact same type of
lettering used for RENOVA, with the same colors, resulting in an
identical graphic and chromatic component, displayed on the same
place as Renova’s products. The remaining elements used by the
appellee are displayed at a secondary level, in a reduced size and
on the side or back of the packaging.
Thus, the use made by the appellee of the mark PÉROLA has
been damaging to the RENOVA mark. The conduct of the appellee
constitutes unfair competition as the appellee benefits from the
well-known status of the mark RENOVA to sell its own products,
as well as from the financial investments made by Renova to
promote and disseminate its mark and to associate it with quality
products.
The Court thus decided that the appellee should cease the use
of the mark PÉROLA in the form described above or in any other
form similar to the mark RENOVA.
Regarding the claim that the appellee has benefited
economically at the cost of Renova, the Court considered that all
three requirements had been met: the existence of enrichment
obtained at the cost of a third party and without justification.
However, due to lack of sufficient elements, the Court was
unable to quantify the compensation to be paid to Renova and
decided that it should be calculated later in a subsequent executive
action.
Finally, regarding the claim of the damage caused by the
appellee by weakening the distinctive character of the mark
RENOVA, the Court also considered this claim proven. Due to the
lack of sufficient elements to define such compensation, the Court
ruled that these damages should be calculated later in a
subsequent executive action.
PUERTO RICO
II.D.1. Jurisdiction/Authority
Gerardo Abascal II (Abascal) filed for the registration of OLD
HAVANA in International Class 33. After publication, Havana
Club Holding, S.A. (Havana) filed an opposition, citing its
registration for HAVANA CLUB in the same classification. The
Trademark Office denied the application, but failed to give Abascal
notice of the denial the same day the decision was filed and
entered. Ultimately, notice went out by mail ten days later.
625. Court of Commerce of Lisbon 2º Juizo, File No. 38/2002.
Vol. 95 TMR
525
Following receipt of the ruling, Abascal asked the Trademark
Office to reconsider and to vacate the denial. Havana moved for
dismissal of the motion, claiming that Abascal failed to file in time,
that is, within 15 days from the date the denial was entered. The
Trademark Office found for Havana and dismissed Abascal’s
motion.
Abascal then went to the Circuit Court of Appeals. Havana
sought dismissal of the appeal for lack of jurisdiction, arguing that
Abascal’s late motion for reconsideration did not stop the time to
appeal, and that as a result the decision had become final.
The Circuit Court reversed and remanded the case to the
Trademark Office with instructions to consider Abascal’s motion
on the merits. The court held that while the time to ask for
reconsideration generally is computed from the date the decision is
filed and entered, the delay in mailing actual notice substantially
impaired Abascal’s right to seek reconsideration.626
Lowenbrau, A.G., the famous German brewer, is one of the 14
sponsors of the renowned OKTOBERFEST, the annual music, food
and beer festival that originated in 1810 in Munich, Bavaria, and
is now celebrated in many places throughout the world.
Lowenbrau applied and got the necessary approvals for an
OKTOBERFEST 2000 celebration in San Juan, Puerto Rico. When
the festivities were about to begin, however, the permits were
revoked. Government officials explained that Event Marketing and
Management,
Inc.
(EMMI)
owned
a
registration
for
OKTOBERFEST in International Class 41 and claimed the
exclusive right to use the designation.
Thereupon Lowenbrau brought suit against EMMI before the
Court of First Instance for damages and for an order to compel the
Trademark Office to cancel the registration. Lowenbrau argued
that OKTOBERFEST is generic and that the Trademark Office
had acted ultra vires, claiming that the law does not allow for the
registration of words in the public domain. The complaint was
ultimately dismissed with prejudice by the Court for Lowenbrau’s
failure to prosecute diligently.
Lowenbrau then filed a petition for cancellation before the
Trademark Office, repeating the same arguments that were raised
in the lawsuit. In response, EMMI sustained the validity of the
registration, arguing that OKTOBERFEST is a German word that
means nothing to the vast majority of the Spanish-speaking people
of Puerto Rico, and that in any event the petition for cancellation
was precluded by res judicata.
626. Havana Club Holding, S.A. v. Gerardo Abascal II, 2004 PR App. LEXIS 69 (P.R. Ct.
App. Feb. 18, 2004).
526
Vol. 95 TMR
The Trademark Office embraced EMMI’s position, dismissed
the petition on the basis of res judicata and refused to cancel the
registration.
On appeal the Circuit Court of Appeals reversed, holding that
res judicata requires, among other elements, that judgment in the
first lawsuit be entered by a court of competent jurisdiction. Under
the Trademark Act, jurisdiction to decide any issue relative to the
cancellation of a registration rests only with the Trademark Office.
Therefore, the defense of res judicata was not available, because
the Court of First Instance was not a court of competent
jurisdiction.
REPUBLIC OF SOUTH AFRICA
III.F.6. Dilution
In Laugh It Off Promotions CC v. South African Breweries
International (Finance) BV,627 the appellant, Laugh It Off
Promotions, had produced and sold T-shirts employing the general
layout and colours of respondent South African Breweries’ (SAB’s)
registered marks for a beer label, but with a different message.
Specifically, SAB’s trade mark BLACK LABEL, used in relation to
Carling Black Label beer, was replaced by BLACK LABOUR,
while its slogan AMERICA’S LUSTY, LIVELY BEER—BREWED
IN SOUTH AFRICA was replaced by AFRICA’S LUSTY, LIVELY
EXPLOITATION
SINCE
1652—NO
REGARD
GIVEN
WORLDWIDE.
The Supreme Court of Appeal traced the origins of the antidilution doctrine, referring in particular to the law in the United
States, the United Kingdom and Europe; the Court stressed,
however, that while reliance would be placed on foreign case law,
it must be understood that such was done principally in order to
illustrate or compare, and that the outcome in those cases would
not necessarily have been the same had they been decided under
South African legislation and in a South African social context.
The infringement alleged by SAB involved dilution of its trade
mark rights through tarnishment—that is, acting in a manner
detrimental to the reputation of SAB’s mark. In considering the
meaning of the word “detrimental,” the court stated that it was
inconceivable that any detriment could suffice. It is implicit, said
the Court, that the detriment, in order to be actionable, has to be
unfair, in the sense that the relief sought may not unfairly or
unduly encroach on the rights of others—including the freedom of
expression. A further qualification is that the law, as a general
proposition, concerns itself with matters of substance only, and,
627. Case No. 242/2003, [2004] JOL 12940 (SCA Sept. 16, 2004).
Vol. 95 TMR
527
accordingly, insubstantial prejudice to the trade mark owner is not
enough. Since neither freedom of expression nor trade mark rights
are absolute, the Court found it necessary to consider how they
should be balanced.
In determining whether Laugh It Off’s use on T-shirts of
BLACK LABOUR together with slogans, such as AFRICA’S
LUSTY, LIVELY EXPLOITATION, was likely to take unfair
advantage of or be detrimental to the distinctive character or
repute of SAB’s registered marks BLACK LABEL and AMERICA’S
LUSTY, LIVELY BEER, the Court considered the interpretation of
the message not only through the eyes of the typical purchaser of
such T-shirts but also through the eyes of those who are perforce
exposed to the purchaser’s attire. The Court accepted the trade
mark proprietor’s submission that the message conveyed was that
since time immemorial SAB had exploited and still was exploiting
black labour; that it had, or should have, a feeling of guilt; and
that SAB could not care less. It found that the message was likely
to create in the mind of consumers a particularly unwholesome,
unsavoury or degrading association with the registered marks, and
that anyone who saw Laugh It Off’s T-shirt would not be able
thereafter to disassociate it from SAB’s trade marks.
The Court rejected the appellant’s argument, which stated
that there was no detriment because the respondent had not
established that there had been a loss of sales of its beers as a
result of the T-shirt sales. It stressed that Section 34(1)(c) of the
South African Trade Marks Act does not require proof of actual
loss, but only the likelihood of loss. The requirement in South
Africa is, accordingly, different from the corresponding
requirement of actual loss under the U.S. Federal Trademark
Dilution Act, as established in Moseley v. V Secret Catalogue,
Inc.628
The Court also stressed that the prohibited use must be “in
the course of trade,” which accords with the position in the United
States and the European Community, and that, significantly, it
must be in relation to goods or services. In considering the actual
use made by the appellant, the Court took into account the
predatory intent, stressing that T-shirts are primarily a
marketable commodity and not only a communication medium.
The Court was influenced by the fact that Laugh It Off was in the
business of marketing clothing, and that using well-known marks
for the marketing of its goods was the whole basis of its
commercial existence.
Having found that the message on the T-shirt was materially
detrimental to the repute of the registered trade mark, the Court
628. 537 U.S. 418 (2003).
528
Vol. 95 TMR
considered the question of whether freedom of expression
constituted justification. Again taking into account the
aforementioned predatory intent, it found that while many cases of
parody constituting fair comment could be justified, parody per se
was not a defence against trade mark infringement, and purely
derisory parody of a mark should not be entitled to protection.
Accordingly, the Court held that Laugh It Off’s reliance on freedom
of expression was misplaced.
The Court therefore granted an injunction and legal costs
against Laugh It Off.
SOUTH KOREA
I.B.6. Letters and Numbers
On August 27, 2004, the Patent Court of Korea rendered a
decision supporting a 1995 decision in which the Supreme Court of
Korea629 held that two numbers in a mark can be the gist of that
mark in determining the similarity of marks for purposes of
excluding others from registering the same two numbers as a
mark. Generally, Korean trademark practice does not recognize
any mark consisting of one or two number or letter combinations.
The appellant in this case asserted that its mark, 76 (subject
mark), in Class 18, which includes mountain climbing bags,
business card holders, wallets, briefcases, traveling bags,
umbrellas, etc., should be distinguished from the Philadelphia
Professional Basketball mark 76ERS in Basketball Device (cited
mark), in Class 27, which includes sneakers, boots, shoelaces,
umbrellas, canes, etc., because (1) the conflicting numbers in the
cited mark consisted of only two simple numbers lacking
distinctiveness of their own and therefore should not be considered
the gist of the mark; (2) as the number in the cited mark further
consisted of ERS, the number 76 and the letters ERS were not
separable but, rather, created a new term to reference members of
the Philadelphia team known collectively as “the 76ers”; and (3) as
the cited mark had established its own well-known status, there
should not be any confusion as to the source of goods. Further, the
appellant asserted the well-known status of its mark.
The Patent Court began its opinion by stating that the gist of
the cited mark should be the number 76, because 76 is the only
boldfaced part of the mark. The Court supported the earlier
decision by the Supreme Court by stating that although any mark
consisting of two numbers can lack distinctiveness to be registered
as a mark, when it is combined with others, as in the case of the
cited mark, the mark can have its own distinctiveness as a whole.
629. Supreme Court of Korea, Decision No. 94 HU 1070, March 17, 1995.
Vol. 95 TMR
529
Regarding the well-known status of the cited mark and the subject
mark, the Patent Court held that neither party had established its
well-known status among ordinary or average consumers in Korea.
It will be interesting to see how broadly this concept reaches
and whether the 76 in the cited mark will be enforced against
subject marks that include a device or letters.
SPAIN
I.B.1. Generic Names
In 2000, the Spanish Patent and Trademark Office rejected
the oppositions filed by Loctite Corp. on the basis of its famous
trademark SUPERGLUE (registered in Spain since 1981 for glue
in International Class 1 and adhesive material for stationery in
Class 16) against the trademark applications for SUPER GLUE
QUILOSA in these same classes. Surprisingly, the Patent and
Trademark Office based its decision on the argument that
“superglue” was a generic term, even though it had previously
been registered as a trademark. Loctite appealed this decision
before the High Court of Justice of Madrid, which accepted the
appeal.630 Loctite had denied that the trademark SUPERGLUE
was generic on the ground of the reputation it had attained in
Spain. In addition, Loctite demonstrated that the other party
already owned registrations for the trademark QUILOSA for the
same goods, which proved to Loctite that the other party’s
intention was to secure a registration that would enable it to
obtain
rights
in
the
trademark
SUPERGLUE,
thus
misappropriating the reputation of this mark in the Spanish
market. The High Court of Justice of Madrid ruled in favour of
Loctite on all counts, rejecting the registration of the trademarks
SUPER GLUE QUILOSA and ordering the Patent and Trademark
Office to expunge them from the register.
II.D.3. Improper Pleadings
In 1997, the owners of various ROSCOLINA Spanish
trademarks (registered in 1988) lodged an infringement action
against the company Roscolina S.L., established in 1990 and
recorded at the Companies Registry that same year. The defendant
argued the action was time-barred, in that more than five years
had passed since it had duly registered its company name (which
in Spain is published in the Official Gazette of the Companies
Registry). The defendant claimed that the action could have been
630. High Court of Justice of Madrid, Contentious-Administrative, decision dated March
22, 2004.
530
Vol. 95 TMR
brought on the publication date of the establishment of the
company with the name Roscolina S.L.
The plaintiffs, owners of prior registrations for ROSCOLINA,
argued that although the defendant established its company in
1990 it did not begin using the company name in the course of
trade until 1994, which should have been the starting date for the
five-year prescription period.
The Court of First Instance agreed with the defendant and
duly rejected the complaint. The owners of the ROSCOLINA
marks appealed this decision before the Provincial Court, which
overturned the ruling of the Court of First Instance on the ground
that the starting date for the five-year prescription period was the
date on which Roscolina S.L. began using its company name in the
course of trade. This decision was in turn appealed by Roscolina
S.L. The Supreme Court upheld the decision of the Provincial
Court and ordered Roscolina S.L. to change its company name and
cease all use of the term ROSCOLINA.631
This is an important judgment in relation to the required term
for bringing legal actions on grounds of infringement of trademark
rights. Article 39 of the former statute, the Spanish Trademark
Act of 1988 (which, given the date these proceedings began,
governed this dispute), established that “civil actions for
infringement of trademark rights shall be statute-barred after five
years, counted from the day on which they could have been
brought.” The case law laid down in this judgment still applies, as
Article 45.1 of the current Spanish Trademark Act of 2001 is
identical to Article 39 of the former act.
SWEDEN
I.B.5. Personal Names
On June 22, 1999, the Swedish Patent Office rejected an
application for the mark HUMMEL in respect of beer in
International Class 32, as the word exists as a surname in
Sweden. The applicant, Årc Bryggeri AB, had not shown any
authorization to use the surname in the mark, nor did the word
have any known secondary meaning.
On appeal to the Swedish Court of Patent Appeals, the
applicant argued that its mark had been used extensively since
1989 for beer on the Swedish market. It argued that “hummel”
exists in the Swedish language, meaning “mountain” or “hill” as
well as a certain musical instrument, and that the word can be
easily associated with beer, as “hummel” is a variant of “humle,”
meaning hops, an ingredient in beer.
631. Supreme Court, Civil, decision dated July 14, 2004. Aranzadi Ref. No. 2004/4678.
Vol. 95 TMR
531
By a margin of three votes to two, the Court of Patent Appeals,
in plenary session, dismissed the appeal.632
The judges who upheld the Patent Office’s rejection stated the
following reasons for their decision. First, the surname Hummel
exists for around 100 persons in Sweden, and the applicant had
not produced any authorisation to use this name as a trademark.
Second, the argument that “hummel” means mountain or hill was
not given any weight, nor was the fact that the word also can refer
to an ancient musical stringed instrument, a meaning that is, in
any case, hardly familiar to a large number of the buying public.
Third, the applicant had not shown that the linguistic connection
to “humle” was known to any reasonable degree. Last, the
applicant had not proved that the mark had been used to a
considerable extent: the two surveys filed had been conducted on
too small a selection of people.
In their minority opinion, the two dissenting judges stated
that surname rights are now generally given considerably
preferential treatment over trademarks compared to what is
stipulated in the Surnames Act. In addition, the committee
preparing amendments to the Trademarks Act has proposed a
more generous interpretation of escape clauses regarding surname
obstacles to trademark registration and use. The word “hummel”
exists both as a separate word and as part of a name, as, for
example, the hills Totthummeln and Mörvikshummeln in Åre,
where the applicant is domiciled. The linguistic relation between
“hummel” and “humle” is easily understood in connection with
beer. There is also Hummelhonung, the title of a well-known book
published in 1995 by a Swedish Academy author, which has
received great publicity.
This judgment illustrates the biased situation still existing in
Sweden regarding the conflict between surnames and trademarks.
It is hoped, however, that within a few years the issue of surnames
in trademark registration and use will be subject to a more
realistic handling as a result of the proposed amendments to the
Trademarks Act.
SWITZERLAND
I.B.2. Merely Descriptive Terms
The Federal Commission of Appeals held that the word mark
FITNESS cannot be registered for goods in Classes 29, 30 and
632. Case No. 98-512, Court of Patent Appeals, September 16, 2003. See also Case No.
99-311, Court of Patent Appeals, October 30, 2003 (dismissing appeal of Patent Office’s
rejection of HUMMELORIGINAL).
532
Vol. 95 TMR
32.633 The Commission decided that the element FITNESS is
directly descriptive of the claimed goods. The average consumer
can easily recognize the descriptive characteristics and expects to
buy goods that improve one’s physical well-being.
Similarly, it was held that the word mark WE KEEP OUR
PROMISES, for goods in Classes 3 and 5, lacks distinctiveness and
must be kept free for public use.634 According to the Commission,
the consumer recognizes the slogan WE KEEP OUR PROMISES
as a product claim without any distinctiveness. In addition, it must
be kept free for use by all competitors.
The Commission held that the trademark GRIMSEL STROM
for producing and trading electricity cannot be protected. Grimsel
is a well-known mountain region in Switzerland where electricity
is produced, and Strom means electricity. According to the
Commission,635 the trademark cannot be regarded as distinctive
and, in addition, contains a geographic indication.
The word marks SMARTMODULE and SMARTCORE may be
new and unusual word combinations. The Commission
nevertheless decided636 that SMARTMODULE and SMARTCORE
are descriptive for computer hardware and software.
The word mark SWISS BUSINESS HUB, for services in
Classes 35, 36 and 42, may be a new word creation, but
nevertheless it is easily understood without reference to one’s
imagination or special thoughts. For this reason, the Commission
confirmed the Federal Institute of Intellectual Property’s rejection
of the trademark application. The fact that single, similar marks
had previously been registered did not confer the right to register
in a subsequent case.637
I.B.3. Not Merely Descriptive Terms
The word mark FITMORE for goods in Classes 5 and 10 is an
unusual juxtaposition of the words fit and more. The Federal
633. Decision of the Federal Commission of Appeals, sic! 10/2003, 800 FITNESS.
634. Decision of the Federal Commission of Appeals, sic! 10/2003, 802 WE KEEP OUR
PROMISES.
635. Decision of the Federal Commission of Appeals, sic! 3/2004, 216 GRIMSEL STROM.
636. Decision of the Federal Commission of Appeals, sic! 3/2004, 220 SMARTMODULE,
SMARTCORE.
637. Decision of the Federal Commission of Appeals, sic! 7/8/2004, 573 SWISS
BUSINESS HUB.
Vol. 95 TMR
533
Commission of Appeals held638 that the terms FIT and MORE were
well known by the average Swiss consumer. The combination,
which is different from the grammatically proper term “more fit,”
is strong enough to afford registration.
The Federal Institute of Intellectual Property had rejected the
word mark SILK-WRITER for goods in Class 16, including writing
instruments. The Commission, however, ruled that SILK-WRITER
was not an existing English word but a new creation. Even though
new creations can be descriptive, the Commission found that this
trademark did not directly describe the writing instruments but
only alluded to a certain quality of the goods. Therefore, the
trademark was admitted to registration.639
I.B.7.b. Three-Dimensional Marks
Toothpaste lines (three-dimensional) cannot be protected as
trademarks if they do not vary from the usual and expected form of
toothpaste. According to the Federal Commission of Appeals,640 use
of different colors does not render the trademark distinctive. The
Commission did take into consideration that the same trademark
was granted protection in other countries, but decided that it was
not bound by such decisions.
The Commission overturned the decision of the Federal
Institute of Intellectual Property and allowed registration of a
three-dimensional trademark for ice cream and ice cream cake.
The trademark claimed protection for specific colours (white, beige,
various brown tones). According to the Commission, it was
essential to judge the trademark in the combination of all
elements. While single elements of the trademark were simply for
decoration purposes, the combination of all, especially the various
layers, was specific and original enough to allow registration. In
addition, there was no reason to keep this specific form, shape and
colour combination free for competition.641
The issue of registrability of LEGO-BRICKS also kept Swiss
courts busy. The design of the interlocking bricks is registered as a
three-dimensional trademark with the Federal Institute of
Intellectual Property. Claimant requested cancellation of this
trademark on the basis that it was not registrable. The Zurich
638. Decision of the Federal Commission of Appeals, sic! 1/2004, 27 FITMORE.
639. Decision of the Federal Commission of Appeals, sic! 6/2004, 503 SILK-WRITER.
640. Decision of the Federal
ZAHNPASTASTRAENGE (3D).
Commission
of
Appeals,
sic!
10/2003,
804
641. Decision of the Federal Commission of Appeals, sic! 6/2004, 502 EISTORTE (3D).
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Commercial Court ruled in favour of the claimant on December 17,
2002, and Lego appealed.
The Federal Supreme Court overturned the Zurich
Commercial Court’s decision and remanded the case for a new
judgement. Under Swiss law, there is specific wording for threedimensional marks (Art. 2 Lit. b). Specifically, trademarks cannot
be registered if they consist of forms that are the essence of the
goods or that are functional. The Supreme Court held that Lego’s
very specific form of bricks was not the essence of toy bricks as
such and that the technical details of the bricks were not
technically necessary to obtain the function of connecting the
bricks. Other forms of bricks could produce the same result.
On the other hand, the Supreme Court held that the specific
brick form was the result of a specific technical characteristic,
namely, the interlocking nature of the bricks. Therefore, the
trademark had no distinctiveness per se, but (as it did not fall
under the specific rule of Art. 2 Lit. b) it was open to registration if
it acquired distinctiveness through use. The Supreme Court sent
the matter back to the Commercial Court for a ruling on acquired
distinctiveness.642
I.B.8.b. Similarity of Goods/Services
A prior trademark with a figurative letter K claims protection
for goods in Class 19, namely “panels, pipes and profile elements
made of various plastics.” A later trademark with a stylized K
claimed protection for “plastic” in Class 17. The Federal
Commission of Appeals643 decided that there was a similarity of
goods. The decision held that the claimed goods in Class 19 could
also be made of or contain plastics that were protected under the
later mark. This was likely, especially for construction purposes,
and therefore the goods were held to be similar.
In the case involving the mark CARTOON NETWORK, the
Commission decided that there is similarity among goods in
Classes 25 and 18 because diversification in the fashion industry
(e.g., bags and shoes) has become a rather standard marketing
procedure.644
642. Decision of the Federal Supreme Court, sic! 11/2003, 892 LEGO III (3D).
643. Decision of the Federal Commission of Appeals, sic! 5/2004, 419 K (fig.) et al./K
(fig.).
644. Decision of the Federal Commission of Appeals, sic! 11/2003, 906
CARTOON/CARTOON NETWORK. See also discussion of this case under II.G. Evidence.
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535
I.B.9.a. No Similarity of Marks
According to the Federal Commission of Appeals,645 the later
trademark OH! JOHN RAY is not confusingly similar to Ô DE
LANCÔME, even for identical products. In the overall impression,
the element OH! is understood as an exclamation, whereas the
element Ô is read or understood either as eau (French for water) or
as a reference to the same letter in the word LANCÔME.
Furthermore, in the overall impression, the two trademarks are
dominated by LANCÔME and JOHN RAY, and, for this reason,
there is no risk of confusion.
The trademarks HEXAL and INFANRIX HEXA were held not
to be confusingly similar, even though they claim protection for
identical goods. The element HEX (A) comes from the Greek hex,
meaning “six”; it is a frequent prefix for chemical goods and
preparations. For this reason, the element HEX, in itself, was held
not to be characteristic of the prior trademark. It is a weak
element, and as such is not strong enough to create a danger of
confusion.646
I.B.9.b. No Similarity of Goods/Services
The Federal Commission of Appeals decided647 that for the two
similar marks ED & Device and ED ENERGIEDIENST & Device,
the goods and services were different enough to allow coexistence.
The prior mark claimed protection for electric goods in Classes 7, 9
and 11. The later mark claimed protection for services in Class 35
in relation to management in connection with electricity and
utility matters, distribution of energy and water in Class 39,
production of energy in Class 40 and technical planning in energyrelated fields in Class 42. The decision reiterated the principle that
goods and services can be similar. In this case, however, the two
industries were too different. The average consumer does not
expect the sophisticated management and technical services
claimed by the later mark to be rendered by the same businesses
that sell everyday electric goods, such as lamps and appliances.
The Commission also decided that there is no similarity
between plastic foils for wrapping and packaging and unprocessed
645. Decision of the Federal Commission of Appeals, sic! 1/2004, 29 Ô DE
LANCÔME/OH! JOHN RAY.
646. Decision of the
HEXAL/INFANRIX HEXA.
Federal
Commission
of
Appeals,
sic!
7/8/2004,
575
647. Decision of the Federal Commission of Appeals, sic! 3/2004, 235 ED (fig.)/ED
EnergieDienst (fig.).
536
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plastic.648 The later identical mark RESINEX must claim
protection for goods clearly different from those protected by the
prior mark in order to avoid a risk of confusion. According to the
Commission, raw material is similar to the final product if the raw
material’s quality has—from the consumer’s point of view—an
essential importance for the final product’s quality. However, this
is not the case for plastic as the raw material used to produce
plastic foils.
II.G. Evidence
In the case involving the mark CARTOON NETWORK,649 the
Federal Commission of Appeals had to decide procedural issues
regarding evidence of use. The Commission has held in the past
that evidence in the form of links on a website is basically
insufficient to establish use. However, in the CARTOON
NETWORK case, these links were sufficient, in regard to the
overall impression, as prima facie evidence, to establish use of the
trademark CARTOON.
III.A.2.b. Similarity of Marks
The president of District Court VIII Bern-Laupen decided that
the trademarks PHYTOTHERAPIE FNH, AYURVEDA-MEDIZIN
FNH, TRADITIONELLE CHINESISCHE MEDIZIN FNH,
KLASSISCHE HOMÖOPATHIE FNH, TIBETISCHE MEDIZIN
FNH and ALLGEMEINE NATURHEILKUNDE FNH were
confusingly similar to the prior trademark FMH. The trademark
FMH is registered for the Swiss Medical Doctor’s Association for
various services in Classes 41 and 42. The later marks with the
element FNH were registered in the name of the Alternative
Doctors’ Association of Switzerland. The Court held in preliminary
injunction proceedings650 that the trademarks were similar. While
the overall impression was dissimilar, the decisive elements FNH
and FMH were phonetically and visually close enough to pose a
risk of confusion.
648. Decision of
RESINEX/RESINEX.
the
Federal
Commission
of
Appeals,
sic!
5/2004,
418
649. Decision of the Federal Commission of Appeals, sic! 11/2003, 906
CARTOON/CARTOON NETWORK. See also discussion of this case under I.B.8.b.
Similarity of Goods/Services.
650. President of the District Court VIII Bern-Laupen of June 11, 2003, sic! 1/2004, 31
FMH/FNH.
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537
III.A.8. Infringement of Unregistered Trademarks
Claimant had been using the word mark TRIPP TRAPP for
children’s seats in Switzerland since 1973. However, TRIPP
TRAPP was not filed by the claimant until 1999. Claimant asked
for an injunction against defendant, who had been using the
trademark TRIP TRAP for garden furniture in Switzerland since
1996. Among a wide range of discussions regarding claims,
counterclaims, valid use and other concerns, the key issue was
whether the claimant’s mark TRIPP TRAPP was a valid
unregistered, notorious trademark. In Switzerland, registration
and not use creates the trademark right. As an exception to this
principle, unregistered notorious (or well-known) trademarks are
recognized under Articles 3 and 6bis of the Paris Convention and
Article 16 of the TRIPS Agreement.
The Federal Supreme Court decided that recognition of a wellknown unregistered trademark was a clear exception to the firstto-file principle in Switzerland, and therefore a high threshold had
to be met. Under normal circumstances, at least 50 percent of
those in one relevant circle of commerce have to know the
trademark and attribute it to a specific company. In this case, the
Supreme Court accepted the argument that TRIPP TRAPP was a
notorious trademark.651
III.A.10. Nonuse of Trademark
In a landmark case, the Federal Supreme Court established
new rules for the period for taking up use for International
Registrations under the Madrid Agreement if the basic trademark
is under attack. International Registration 663349 FOCUS
claimed protection in a number of countries, including
Switzerland. It was filed on the basis of a German trademark,
FOCUS, registered on May 23, 1996. Under normal circumstances,
the grace period for taking up use for International Registrations
with protection in Switzerland starts either (a) 12 months (for the
Madrid Agreement) or 18 months (for the Madrid Protocol) after
extension of the trademark to Switzerland, or (b) the moment that
a provisional refusal has been withdrawn. If, however, the basic
registration (in this case, in Germany) is under attack (e.g., in an
opposition procedure) and the attack was initiated within the fiveyear dependency period for the International Registration
according to Article 6 Section 3 of the Madrid Agreement, the
attack on the basic registration will be a valid reason and excuse
for nonuse of the trademark in Switzerland. According to the
Supreme Court, with respect to taking up use of a trademark in
651. Decision of the Federal Supreme Court, sic! 5/2004, 407 TRIPP TRAPP III.
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foreign countries, a trademark owner must have the option of
waiting, as long as fate of the basic trademark in the home country
(here, Germany) is not secured. On a practical note, this means
that for every nonuse attack against an International Registration
in Switzerland, a full status report for the basic trademark (i.e.,
the basic national registration) must be obtained in order to
calculate the nonuse period.652
SYRIA
III.A.2.b. Similarity of Marks
The American company Polo Ralph Lauren Corporation duly
registered the trademark POLO together with a design of a horse
rider playing polo under No. 22250 on July 18, 1972, and duly
renewed the same, to cover soaps, essential oils and cosmetics in
Class 3. Certain Syrian citizens, namely Mohamad, Amar, Imad
and Abdulrahman Al-Habbal Co., registered the trademark POLO
under No. 55681 on Aug. 30, 1995, to cover cleaning preparations
and other such products in Class 3. Legal action was initiated by
the American company for imitation of its trademark POLO &
Design. The civil Court of First Instance issued the following
decision:
1. To cancel and delete the registration of the trademark
pertaining to Mohamad, Amar, Imad and Abdulrahman AlHabbal Co., and to delete the trademark from the Register of
the second defendant regarding the materials of cleaning, soap
and cosmetics (Class 3) only.
2. To order the defendants Mohamad, Amar, Imad and
Abdulrahman Al-Habbal Co. to pay to the plaintiff the amount
of 50,000 Syrian Pounds (U.S. $1,000).
3. To order the defendants to pay duties and expenses, and
to exempt the Department of Commercial & Industrial
Property Protection in the Ministry of Supply from paying
such duties being it a public organization.
The judgment was issued in public on November 2, 2002, and
is subject to appeal.
III.K. Counterfeiting Issues
The American company Eastman Kodak Company, a wellknown company in the field of photography, duly registered two
trademarks in Syria, namely ROYAL under No. 64720 and
Triangle Design, to cover cameras, film and photographic
652. Decision of the Federal Supreme Court, sic! 7/8/2004, 580 FOCUS.
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539
equipment in Classes 1, 9, 16 and 40. A Syrian citizen named
Makardis Minasian was dealing in counterfeit film cartridge
bearing the trademarks ROYAL and Triangle design. The
American Company then initiated legal action against him for
imitation and counterfeiting of its film cartridges.
The criminal Court of First Instance issued the following
decision:
1. Seizure of the infringing products;
2. Obligation of the defendant to pay 200,000 Syrian Pounds
(U.S. $4,000).
The decision is subject to appeal.
TAIWAN
I.B.9.a. No Similarity of Marks
Sung-Tien Co., Ltd. applied to register the disputed mark
VALENTINO RUDY for goods in Class 25 and successfully
obtained registration of the mark. The plaintiff, Valentino Globe
B.V. (“Valentino”), brought an invalidation action against the
mark based on its famous trademark VALENTINO pursuant to
Paragraphs 7 and 12 of Article 37 of the pre-amended Trademark
Law. The invalidation action was dismissed by the Intellectual
Property Office (IPO) and the Ministry of Economic Affairs
(MOEA) in the first and second instances, respectively. Valentino
appealed to the Taipei High Administrative Court against the
decisions.
Article 37, Paragraph 7 of the pre-amended Trademark Law
sets out that a mark that is identical with or similar to another
person's famous mark, thus creating a risk of confusion on the part
of the public, cannot be registered. Paragraph 12 of the same
provides that a mark that is identical with or similar to a
registered trademark of another person, designated for the same or
similar goods, cannot be registered either. Thus, the main issue for
the Court to decide in this case was whether the two marks were
sufficiently similar so that the disputed mark should be
invalidated based on the above provisions of the law.
The Court held that there was no sufficient similarity between
the disputed mark VALENTINO RUDY and the plaintiff's mark
VALENTINO, and made the following findings:
1. The appearances of the marks are distinguishable from
each other. The disputed mark comprised two words,
VALENTINO and RUDY, in handwriting style, while the
plaintiff's mark was simply VALENTINO, in block letters.
Although the two marks both contained the word
VALENTINO, it did not make them indistinguishable
from each other. The number of words each mark
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contains, the complexity of the design of the marks and
their writing styles were all different. Therefore, there
was no likelihood of confusion in the eyes of the average
consumers if the marks were to be viewed separately by
the consumers at different times and places.
2. VALENTINO is a common surname in Italy. Over the
years, there were also other registrations of marks for
goods in all sorts of classes, having the word
VALENTINO as a part of the marks. Thus, it cannot be
said that registration of the disputed mark would give rise
to the possibility of misleading the consumers to believe
that such products were produced by the plaintiff.
3. The fact that the two marks were not similar and have
coexisted in the market for a long period of time
inevitably led to the conclusion that Paragraphs 7 and 12
of Article 37 of the Trademark Law did not apply in the
present case. The plaintiff had failed to provide evidence
of actual confusion as to the origin of the products or
confusion caused to the relevant consumers in the market.
Thus, the registration of the disputed mark should not be
invalidated by claiming the above provisions.
4. The previous opposition decisions of other jurisdictions or
the IPO's other decisions mentioned by the plaintiff in its
argument could not be relied on to support this current
case as the legal systems and cultures of each country are
different, the designs of the marks are not the same and
the examination of trademark cases should always be
decided on a case-by-case basis.
Accordingly, the Court affirmed the earlier decisions of the
IPO and the MOEA and dismissed the appeal based on the above
findings.653
I-Art Corporation applied to register the trademark STEREO
3D INSIDE (device) for goods in Class 9. The plaintiff, Intel
Corporation (Intel), opposed the application based on its famous
trademarks INTEL INSIDE (word) & INTEL INSIDE (word &
device). The opposition, however, was dismissed by the IPO and
the dismissal was affirmed by the MOEA on the administrative
appeal. Intel appealed to the Taipei High Administrative Court
against the decision of the MOEA.
The law upon which the opposition was based, Paragraph 7 of
Article 37 of the pre-amended Trademark Law, provides that a
mark that is identical or similar to another person's famous mark,
thus causing the public to confuse or misidentify it, cannot be
653. 91-Su-Chi No. 4308, Taipei High Administrative Court, November 19, 2003.
Vol. 95 TMR
541
registered. However, the Court emphasized that the law would
apply only if sufficient similarity between the marks could be
established. Therefore, the issue before the Court was whether the
disputed mark was sufficiently similar to the marks of Intel, so
that Intel's similarity claim could succeed based on such provision.
In reaching its decision, the Court rejected the plaintiff's
arguments claiming that INSIDE was the dominant element of the
disputed mark, that the disputed mark was a simple design
following the typical format of "[word] INSIDE" invented by the
plaintiff and, thus, such a mark would be highly associated with
the plaintiff's marks, especially the most famous one INTEL
INSIDE. The Court found that the disputed mark was actually a
quite complex design, comprised of three stylized words, STEREO,
3D and INSIDE. Among those words, the most prominent and
memorable word was found to be 3D, while INSIDE was regarded
as a non-dominant element of the mark. By applying the test of
whether the consumers would be likely to confuse or misidentify
the mark with that of the plaintiff if the marks were to be viewed
separately at different times and places, the Court found that the
overall impression created by the disputed mark was significantly
different from that of the plaintiff's marks.
Based on the above findings, the Court affirmed the earlier
decisions of the IPO and the MOEA by holding that the disputed
mark STEREO 3D INSIDE was not similar to the marks of Intel,
and thus, Article 37, Paragraph 7 of the pre-amended Trademark
Law did not apply in this case. The appeal was, therefore,
dismissed.654
III.F.5. Cancellation
The plaintiff, Tradelink International Pty. Ltd., applied to
register the trademark AQUAQUEEN & Chinese characters for
goods in Class 32 on May 4, 1995. The IPO initially granted
registration of the mark under Reg. No. 731324. But later, an
examiner of the IPO brought an invalidation action against the
mark on the ground that the registration was in violation of Article
36 of the pre-amended Trademark Law.
Article 36 of the pre-amended Trademark Law provides that
when two or more persons apply separately for registration of an
identical or similar trademark, designated for the same or similar
goods, the applicant who first files the application shall be granted
registration. As the application date of a cited mark AQUAQUEEN
& Device was earlier than that of the subject mark, the IPO
canceled the registration of the subject mark by finding that the
subject mark and the cited mark, having the same English word
654. 91-Su-Chi No. 3227, Taipei High Administrative Court, September 3, 2003.
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AQUAQUEEN in their bodies, were designated for the same or
similar goods, and if viewed separately at different times and
places, would create a likelihood of confusion on the part of the
public. The plaintiff appealed against the cancellation.
On appeal to the Supreme Administrative Court, the plaintiff
contended that because the cited mark was subsequently canceled
by the IPO for non-use on April 18, 2001, the material facts on
which the original decision was based had changed. Therefore, the
decision should be canceled and a new judgment in favor of the
plaintiff entered. The Court rejected such claim and held that in
considering an invalidation action the law and facts to be taken
into account should be those at the time of registration, even if the
law or the facts changed after the decision. Furthermore, according
to Article 33 of the pre-amended Trademark Law, where a decision
canceling the right of exclusive use of a trademark is final, such
right shall become invalid only from the date of the cancellation
decision, not from the date of registration. Therefore, the Court
affirmed the earlier decisions and dismissed the appeal.655
THAILAND
III.M. Licensing Issues
The case reported below involved the question of a local
licensee’s standing to join the licensor as a co-plaintiff in
prosecuting an action for trademark infringement. The license
agreement between licensee and licensor had not been registered,
as required under Section 68 of the Trademark Act.
In Government v. Unique Shoes Co., Ltd.,656 the Thai Dika
(Supreme) Court rejected the appeal petition filed by the coplaintiff, United Sport (Thailand) Co., Ltd., the Thai licensee of
Brook Sport, Inc., owing to the co-plaintiff’s lack of standing.
The facts of this case involve criminal charges filed by the
Public Prosecutor against Unique Shoes Co., Ltd. for (1) offering
for sale and (2) possession for sale of shoes bearing a forged
trademark. The registered trademark owner was Brook Sport,
which had licensed the right to the use of its mark to its licensee
United Sport. During the criminal trial, United Sport filed a
motion to join as a co-plaintiff. The IP&IT Court granted the
motion. At the close of the trial, the Court dismissed the charges
based on insufficiency of evidence presented by the prosecution.
United Sport filed an appeal with the Dika Court, which ruled
that it was necessary to determine whether United Sport had the
655. 90-Pan-Chi No. 1701, The Supreme Administrative Court, September 24, 2001.
656. Dika Court No. 10873/2546/Date April 26, 2004, published by Information System
Service of the Intellectual Property and International Trade Court.
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543
right to join as a co-plaintiff and whether United Sport had
standing to file an appeal, particularly when the prosecutor did not
file an appeal. Based on the facts and evidence submitted, the Dika
Court found that United Sport was not the rightful owner of the
registered mark that was being copied, and that the license
agreement between United Sport and Brook Sport had not been
registered with the Department of Intellectual Property, as
mandated by the Thai Trademark Act.
As the license agreement between United Sport and Brook
Sport was not registered, the license agreement was actually
considered null and void because it was not in the form prescribed
by Thai law. In this respect, United Sport was not a lawful injured
party with rights to file suit against Unique Shoes and, thus, had
no right to join as a co-plaintiff. The IP&IT Court’s decision to
allow Unique Sport to join as a co-plaintiff was erroneous. The
Dika Court declined to hear the appeal, and thereby dismissed the
petition.
The unstated inference from this decision is that if the license
agreement had been duly registered the licensee would have had
the right to join the action as a co-plaintiff and prosecute the
offender for trademark infringement.
TURKEY
I.B.3. Not Merely Descriptive Terms
An action was instituted against the Turkish Patent Institute
(TPI) for withdrawal of the refusal of registration of the plaintiff’s
trademark, composed of the words SAFMAYA and SANAYI A.S.
and a traditional cooking device. The grounds for the TPI’s
decision were that the word SAFMAYA (PUREYEAST) was
descriptive for the goods “yeast” according to Article 6/a of the
former Trademarks Act (Decree-Law No. 551)657 and that the
trademark was confusingly similar to the trademark SAF,
registered for identical goods in the name of another registrant.
The plaintiff claimed that its trademark was not descriptive
for the goods “yeast” when evaluated as a whole.
The court of first instance accepted the plaintiff’s claims and
ordered the cancellation of the refusal decision.658
657. Article 6/a reads: “Trademarks whose principal elements consist of signs and
inscriptions indicating exclusively the kind, type, characteristics/quality, quantity,
[geographical] origin, intended purpose [of use] and time [of production] . . . shall not be
registered as a trademark.”
658. Safmaya Sanayi A.Ş. v. Turkish Patent Institute, Case No. 2000/1485, Decision No.
2000/1521 (1st Administrative Court of Ankara December 22, 2000).
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Upon the TPI’s appeal the Council of State (High
Administrative Court of Appeal) upheld the lower court’s decision
on the grounds that the conditions for overturning such decision,
set forth in Article 49 of the Administrative Procedural Law, had
not been met and that the ruling of the court of first instance was
justified.659
I.B.7.b. Three-Dimensional Marks
Beaute Prestige International brought an action against the
Turkish Patent Institute (TPI) seeking the withdrawal of the TPI’s
administrative decision refusing the registration of the plaintiff’s
three-dimensional international trademark, consisting of bottle
device packaging. The TPI had based its refusal on the ground that
the bottle device did not have the characteristic of distinctiveness
of a trademark, as specified in Article 5 of Decree-Law No. 556
(Decree-Law for Protection of Trademarks).
The plaintiff argued that the bottle device had a distinctive
character permitting its registration as a trademark because, the
plaintiff claimed, the device was an original design, consisting of
two transparent parts, that gave the impression that there was a
red object in it and because the spraying head of the bottle was
located in the tap, which was set on the top of the bottle in an
original way.
The TPI asserted that the trademark should not be considered
distinctive in the sense of Articles 5 and 7(a) of Decree-Law No.
556 because the bottle device showed no originality or
distinctiveness, as it was an ordinary bottle.
Following the favorable conclusions of the expert’s report and
considering the trademark in the sense of Article 5 of Decree-Law
No. 556, the Court held that the bottle was a three-dimensional
device. It gave the impression that an object was hanging in the
sphere that had two transparent parts, and, on the top of the
upper part, it had a cylinder-shaped neck with designs in light
orange, dark orange, gray and white. Further, the Court
determined that the bottle device trademark had been registered
since August 21, 2000, as a national trademark in its home
country and since February 20, 2001, as a Community Trade
Mark, and that moreover it had been registered in Paris
Convention signatory countries.
The Court ruled that the bottle device was not an ordinary
design for a bottle, as asserted by the defendant; that the
trademark had been registered and marketed in the plaintiff’s
home country and other European countries; and therefore that it
659. Case No. 2001/581, Decision No. 2003/1040 (High Administrative Court of Appeal
March 20, 2003).
Vol. 95 TMR
545
had gained distinctiveness through use. In addition, the Court,
having examined ex officio the trademark in the sense of Article
7(e) of Decree-Law No. 556,660 ruled that because the goods in
International Classes 3, 14 and 33 that will be marketed in the
bottle are cosmetic products mostly for women, and because either
such goods do not have any effect on the shape of the bottle or the
shape of the bottle is not conditioned by the necessity of obtaining
a given technical result in respect of the products contained in it,
the three-dimensional bottle device as applied for was registrable
as a trademark in the sense of Article 5 of Decree-Law No. 556.
On these grounds the Court ruled that the administrative
decision of refusal should be withdrawn and allowed the
application to proceed to registration.661
III.A.2.b. Similarity of Marks
In an action for trademark infringement GAP Inc. sought the
cancellation of the defendants’ trademark registrations for GAP on
grounds of similarity to the plaintiff’s well-known trademark GAP,
and the determination and stopping of unfair competition and its
effects.
The plaintiff claimed that it is one of the most renowned
companies in the world in the field of ready wear, in view of its
turnover, quality and chain of stores; that its trademark GAP is
registered in many countries around the world; and that the
trademark is also registered in Turkey, where it is under
protection according to Article 6bis of the Paris Convention and
Article 7, paragraph (i) of Decree-Law No. 556, and is in
accordance with the Turkish Code of Commerce because the word
GAP is a distinctive element of the plaintiff’s trade name. GAP Inc.
argued that the registration of the word GAP by the defendants
constituted infringement of the plaintiff’s trade name and
trademark, the defendants having registered the word GAP or
having filed an application therefor. Further, the plaintiff argued,
in view of the fact that its trade name and trademark are well
known worldwide, that it manufactures its product range in
Turkey via contract manufacturing and that the defendants are
active in the field of textile manufacturing, it is not possible that
the defendants do not know about the plaintiff’s GAP trademark.
On the contrary, the plaintiff asserted, the defendants are ill-
660. Article 7(e) reads: “[S]igns containing the shape of the product which results from
the nature of the product, which is necessary to obtain a technical result or which gives
substantial value to the product [shall not be registered as a trademark].”
661. Beaute Prestige International v. Turkish Patent Institute, Case No. 2004/164,
Decision No. 2004/50 ((Specialized) Court of Ankara for Intellectual and Industrial Property
Rights March 23, 2002).
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willed, as the word GAP used by the defendants in their
trademarks is identical with the plaintiff’s GAP trademark.
Accordingly, the plaintiff requested that such acts be recognized as
constituting infringement of its well-known trademark and trade
name and an act of unfair competition; the plaintiff asked for the
cancellation of the defendants’ trademark registrations because
the defendants had no right to such registrations, and for the
cancellation and abandonment of the defendants’ trademarks.
The court of first instance, partially accepting the plaintiff’s
claims, ruled for the cancellation of the defendants’ trademark
registrations but refused to rule for the exclusion of the word GAP
from the trade names of the defendants.662 Two of the defendants,
Gap Güneydoğu Tekstil Sanayi Ve Tic. A.Ş. and Gap Güneydoğu
Anadolu Pazarlama Ve Tarim Ürünleri Ve Tic. A.Ş., appealed.
Besides lodging objections to the procedure, one of the
appellants claimed that it had no intention to make its GAP
trademark notorious. The appellant asserted that the word GAP
was also the abbreviation for Turkey’s Güneydoğu Anadolu Project
(South Eastern Anatolia Project), and that this was well known
both in Turkey and around the world; that it had activity in the
city of Gaziantep, which is located in this region; that it had
registered the abbreviation GAP as its trade name and trademark;
and that during this period GAP Inc.’s trademark did not possess
the quality of notoriety and was not registered in the country. If
the foreign trademark was known publicly in Turkey, the
appellant argued, GAP, Inc. could benefit from Article 6bis of the
Paris Convention. Accordingly, the appellant requested rejection of
the case, stating that the wording GAP was well known not
because of the trademark GAP or the trade activity of GAP Inc.
but because of the name of the project for the development of the
Güneydoğu Anadolu region (South Eastern Anatolia region).
The Supreme Court upheld the decision of the court of first
instance, which became finalized for defendant Gap Güneydoğu
Anadolu Pazarlama Ve Tarim Ürünleri Ve Tic. A.Ş.663
Defendant Gap Güneydoğu Tekstil Sanayi Ve Tic. A.Ş. further
appealed to the Supreme Court for reconsideration on formal
grounds of failure of proper notification of the decision. The
Supreme Court overturned the decision and remanded the case for
further hearing.664 The lower court partially accepted the claims of
GAP Inc. in light of the previous final decisions with regard to the
662. GAP Inc. v. Gap Güneydoğu Tekstil Sanayi Ve Tic. A.Ş., et al., Case No. 1998/179,
Decision No. 2000/248 (2d Commercial Court of Istanbul June 16, 2000).
663. Case No. 2001/5479, Decision No. 2001/7121 (11th Civil Chamber of the Supreme
Court September 24, 2001).
664. Case No. 2004/11395, Decision No. 2002/920 (11th Civil Chamber of the Supreme
Court February 5, 2002).
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other defendants and decided to cancel the entry in official records
of the trademark registration in the name of the appellant. It
rejected, however, the plaintiff’s request relating to the use of the
word GAP, together with differing elements, by the defendants in
their trade names, as that did not constitute infringement of the
plaintiff’s trade name.665
In a different case, plaintiff General Biscuits Belgie sought to
stop the use by the defendant of the mark PRENS on grounds of
similarity with its well-known trademark PRINCE, which had
been registered since 1956 (i.e., before the organization of WIPO),
arguing that the defendant’s use constituted an infringement of
the plaintiff’s mark and an act of unfair competition. Plaintiff
requested compensation of moral damages and destruction of the
equipment and machinery used to produce the defendant’s
infringing products. It voluntarily waived its claims regarding
compensation of material damages.
The court of first instance, initially accepting in part the
plaintiff’s claims, held that the trademark PRINCE was well
known and that the defendant’s use of its mark PRENS infringed
the plaintiff’s trademark and constituted an act of unfair
competition. It refused to rule, however, for compensation for
moral damages and for destruction of the equipment and
machinery used to produce the infringing products as well as the
promotional material.666
The Supreme Court overturned the lower court’s decision on
moral damages.667 It found that, as the defendant’s acts were
considered to constitute infringement of the plaintiff’s trademark
and unfair competition according to Article 62 of Decree-Law No.
556 and Article 58 of the Turkish Commercial Code, an
appropriate amount should be allowed as compensation for moral
damages.
Adhering to the Supreme Court’s ruling, the court of first
instance ordered the payment by the defendant of 250 million
Turkish lira to the plaintiff, together with the rediscount interest
applying as of the date of institution of the court action.668 As the
lower court’s decision regarding trademark infringement, unfair
competition and determination of the notoriety of the plaintiff’s
665. Case No. 2002/671, Decision No. 2003/588 ((Specialized) Court of Istanbul for
Intellectual and Industrial Property Rights October 23, 2003).
666. General Biscuits Belgie v. Karsa Bisküvi Ve Gida Sanayi Tic. Ltd., Case No.
1999/148, Decision No. 2000/203 (2d Commercial Court of Beyoğlu/Istanbul June 7, 2000).
667. Case No. 2000/9741, Decision No. 2001/888 (11th Civil Chamber of the Supreme
Court February 6, 2001).
668. Case No. 2003/719, Decision No. 2003/554 ((Specialized) Court of Istanbul for
Intellectual and Industrial Property Rights October 14, 2003).
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trademark had already been finalized, no further ruling was
issued in those matters.
General Biscuits Belgie also brought an action for cancellation
of the defendant’s trademarks BİFA SUPER PRENS, BİFA
PENBE PRENS and BİFA SÜTLÜ PRENS on grounds of
similarity with its well-known trademarks CHOCO PRINCE and
PRINCE FOURRE, and for stopping trademark infringement and
unfair competition.
The plaintiff claimed that the trademarks PRINCE, CHOCO
PRINCE and PRINCE FOURRE have been registered in their
home countries since 1955 and the latter two in Turkey since 1976;
that its trademarks have been marketed throughout the world
since 1926; and that these marks are well known and as such
enjoy protection per Articles 7(i) and 42(a) of Decree-Law No. 556
and Article 6bis of the Paris Convention. Consequently, the
plaintiff claimed, the defendant, operating in the same field,
registered in bad faith its trademarks including the word PRENS
as an essential component in respect of goods identical to those
covered by the plaintiff’s well-known trademarks including
PRINCE.
The defendant countered that it had registered its trademark
in 1984 in good faith, and therefore that even if the reputation of
the plaintiff’s trademark were accepted, according to Article 42(a)
of Decree-Law No. 556 a court action on such basis should have
been filed within five years of the registration date of the
defendant’s trademark; that the plaintiff should have known of the
defendant’s trademark as it had been in use for 16 years; and that
therefore the time period for instituting such action had lapsed.
Further, the defendant claimed that the essential and
distinguishing element of its trademarks is not PRENS but BİFA;
that the plaintiff’s trademarks do not consist solely of the word
PRINCE; that a trademark cannot be considered as well known
without a decision by the TPI (Turkish Patent Institute) in that
regard; and that the plaintiff had not opposed the defendant’s
trademark application, even though it had a prior registration. On
such grounds, the defendant argued, the plaintiff’s claims should
be rejected.
The Court ruled that, in the light of the evidence gathered and
the expert’s report, the reputation of the plaintiff’s PRINCE
trademarks had not been sufficiently evidenced. It found, however,
that the word PRENS in the defendant’s marks was phonetically
similar to PRINCE in the plaintiff’s marks, and that such
similarity would lead to confusion between the trademarks.
Because the infringement was continuing, the defendant’s
objections regarding the five-year deadline for instituting the court
action were held unjustified. The Court further held that, owing to
the fact that the TPI was not a party to the action as filed, the
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549
plaintiff’s claims regarding notoriety were not taken into
consideration. Viewing with favor the plaintiff’s other claims, the
Court ordered the partial cancellation of the defendant’s
registrations by the exclusion therefrom of the word PRENS, while
refusing to recognize the notoriety of the plaintiff’s trademarks
and the plaintiff’s unfair competition claim.669
The Supreme Court rejected the defendant’s appeal on the
ground that such appeal was not justified according to the content
of the file, the evidence and the evaluation thereof.670
In Red Bull GmbH v. Orbital Kimya Ve Gid A Sanayi Ticaret
A.Ş., the plaintiff instituted an action for cancellation of the
defendant’s registered trademark POWER BALL ENERGY
DRINK + Bull Device (No. 206842) on grounds of trademark
infringement and unfair competition.
The plaintiff claimed that the drink bearing its trademark
RED BULL was produced and marketed throughout the world;
that said trademark was registered in 80 countries and, since
1995, in Turkey; and that the trademark was well known. It
claimed, further, that a court action had been instituted between it
and the defendant; that the defendant’s trademark POWER BULL
was confusingly similar to the plaintiff’s RED BULL trademark;
and that the defendant’s use of the POWER BULL mark on
identical goods constituted trademark infringement and gave the
impression that there was a business relationship between the
plaintiff and the defendant. Therefore, the plaintiff sought
cancellation of the defendant’s trademark registration,
compensation of material damages and stopping of both the
infringement of its trademark and trade name and unfair
competition.
In reply, the defendant argued that the court action,
prosecuted before the 5th Commercial Court of Istanbul, concerned
the trademark POWER BULL, whereas its trademark was
POWER BALL; that those two marks are not connected in writing
and semantically; that there are many trademarks in the United
States that include the word BULL used together with such words
as “cola”; and that its products were not similar as to weight, size,
color, shape and design of the packaging. The defendant claimed,
further, that consumers would not confuse the products, owing to
the price difference thereof.
669. General Biscuits Belgie v. Bifa Bisküvi Ve Gida Sanayi A.Ş., Case No. 2002/82,
Decision No. 2003/215 ((Specialized) Court of Istanbul for Intellectual and Industrial
Property Rights May 6, 2003).
670. Case No. 2003/9301, Decision No. 2004/4298 (11th Civil Chamber of the Supreme
Court April 20, 2004).
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The expert’s report ordered by the Court concluded that the
color composition and design pattern of the defendant’s product
packaging led to confusion and constituted parasitary competition
in the sense of Article 57/b.5 of the Turkish Code of Commerce
regarding the unfair competition and that the use of a priorly
registered trademark and the use of a well-known nonregistered
trademark for identical or similar goods or services are,
respectively, a ground for refusal and a ground for cancellation
according to Article 42 of Decree-Law No. 556.
On such grounds, the expert’s report concluded that the
defendant’s trademark should be partially cancelled by the
exclusion therefrom of the word BALL and the “Bull Device,” so
that the trademark would consist of the word POWER only.
The Court, accepting the plaintiff’s claims in the light of the
evidence gathered and following the conclusions of the favorable
expert’s report, ordered the cancellation of the defendant’s
trademark registration in its entirety. Further, it ordered the
defendant to stop its act of unfair competition, stop the production
and distribution of goods carrying the subject trademark and their
sale within the country or for exportation and pay 1 billion Turkish
liras as moral compensation. In addition, the Court ordered the
confiscation and, where necessary, the destruction of the goods
bearing the subject trademark; of all packaging, boxes and printed
materials used in the production thereof; and of printed paper
carrying the cancelled trademark, including invoices and all
promotional material.671
Finally, the Court ordered the publication of the ruling in one
of the largest newspapers with nationwide distribution.
III.A.10. Nonuse of Trademark
Upon the refusal of its application for ROUTE 66 in
International Class 34, plaintiff requested the partial cancellation
for nonuse of the earlier ROUTE 66 registration in Class 34 (No.
96/013518) cited against it.672 Plaintiff asserted that it is known for
producing and marketing tobacco products throughout the world;
that its application had been rejected because of the existence of
the defendant’s trademark registration; and that the defendant,
operating in the field of manufacturing leather and ready-to-wear
clothing and goods, was not using its trademark on the goods of
671. Red Bull GmbH v. Orbital Kimya Ve Gid A Sanayi Ticaret A.Ş., Case No. 2001/970,
Decision No. 2004/79 ((Specialized) Court of Istanbul for Intellectual and Industrial
Property Rights February 26, 2004).
672. Van Nelle Tebek Nederland BV v. Um-Ka Deri Imalati Ve Konfeksiyon Sanayi Ve
Tic. Ltd. Şti., Case No. 2003/24, Decision No. 2004/292 ((Specialized) 1st Court of Istanbul
for Intellectual and Industrial Property Rights May 13, 2004).
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551
interest for the plaintiff, namely, “tobacco, products for tobacco
users,” and that therefore, according to Article 14 of Decree-Law
No. 556,673 the goods “tobacco and products for tobacco users”
should be excluded from the specification of defendant’s trademark
registration for nonuse.
The defendant objected that the action was not well grounded,
that the plaintiff was ill-willed and that the action should be
rejected.
As the defendant did not timely file with the Court evidence
showing the serious and uninterrupted use of the trademark
ROUTE 66 in respect of goods in Class 34, the Court accepted the
plaintiff’s claims and ordered the partial cancellation of the
defendant’s trademark in accordance with Article 14 by the
exclusion therefrom of the goods in Class 34.
As the defendant did not appeal, the decision is finalized.
UNITED KINGDOM
I.B.4. Geographical Names
In Miguel Torres S.A. v. Cantine Mezzacorona S.C.A.R.L., the
applicant was an Italian wine producer based near the town of
Mezzocorona. Its wine labels bore a word & device mark with the
name MEZZACORONA and a picture of a half crown (the Italian
meaning of the word). Torres also produced wine, some of which
was sold under marks that included pictures of crowns and the
word CORONAS. Torres opposed registration of the applicant’s
mark under the EU (European Union) regulation laying down
rules for the description and presentation of wines from specific
regions. The relevant regulation set out mandatory information
that must be printed on the labels of such wines, including the
name of the region of origin. It also set out supplementary
information that might appear on the label; this included brand
names. Further provisions of the regulation allowed the
continuation of use of a registered trade mark identical to the
name of the geographical region, provided the products were
entitled to use the description.
At the court of first instance the judge concluded that the word
MEZZACORONA was both a brand name and a geographical
name and that the applicant was entitled to use it.674 The opponent
appealed.
673. Article 14 reads: “If, within a period of five years following the registration, the
trademark has not been put to use without a justifiable reason or if the use has been
suspended during an uninterrupted period of five years, the trademark shall be repealed.”
674.
[2003] E.W.H.C. 3359.
552
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The Court of Appeal upheld the decision that the mark was a
trade mark. It concluded that there was nothing in the regulation
to suggest that a trade mark that contained or consisted of a
geographical name that was not otherwise regulated by European
Community (EC) provisions should be prohibited.675
I.B.5. Personal Names
In E.I. Du Pont de Nemours & Co. v. S.T. Dupont, S.T. Dupont
(STD) opposed the registration of E.I. Du Pont’s (EIDPs) mark DU
PONT on the ground that it was not distinctive enough and
subsequently sought to rely on the fact that the registration was
incapable of being distinctive because DU PONT (whether as one
or two words) was a common French surname.
The Court of Appeal found that in relation to the first appeal
the judge had no good reason to reverse the hearing officer’s
decision and thereby refuse EIDP’s application to register.676 On
the question of whether the DU PONT mark was capable of
distinguishing EIDP’s goods, the appellate court ruled that the fact
that the name Dupont appeared 800 times in the Paris telephone
directory was not conclusive.
There was evidence that DU PONT had become distinctive
through use in relation to EIDP’s fabrics and yarns. It had the
capacity to distinguish these types of goods, and there was no
reason why that capacity would be lost if it was applied to clothes
connected with EIDP. The hearing officer had therefore been
correct to find that registration was not contrary to Section 10 of
the Trade Marks Act 1938.
STD’s objection under Section 11 that there would be a risk of
confusion to members of the public was also not made out, as its
use of its mark had started after the mark DU PONT had become
distinctive as regards EIDP’s fabrics and EIDP’s use of that mark
in connection with menswear was sufficiently distinct from STD’s
use and unlikely to cause confusion.
As STD’s application to register S.T. DUPONT was liable to be
prevented by the law of passing off, the court refused registration
of STD’s mark under Section 5(4) of the Trade Marks Act 1994.
I.B.8.a. Similarity of Marks
In Coco de Mer Ltd. v. Chanel Ltd.,677 the applicant applied to
register the mark COCO DE MER & Device in a number of
675.
[2003] E.W.C.A. Civ. 1861.
676. [2003] E.W.C.A. Civ. 1368. For a full discussion of the case, see I.B.22.
Distinctiveness.
677.
[2004] E.W.H.C. 992 (Ch.).
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553
classes, including Class 3 (perfumery and cosmetics) and Class 18
(travelling bags). The application was opposed by Chanel, which
had registrations for the mark COCO in relation to both perfume
and fashion accessories. Chanel’s opposition was based on Section
5(2)(b) of the Trade Marks Act 1994, which provides that a mark
shall not be registered if (1) it is similar to an earlier mark, (2) it is
to be registered for identical or similar goods or services and (3)
there exists a likelihood of confusion. The opposition succeeded in
the Trade Marks Registry, and the applicant appealed.
The High Court dismissed the appeal. It found that the
average consumer would not understand what the phrase and
device in the COCO DE MER mark described (the fruit of a rare
species of palm tree growing in the Seychelles), and that therefore
the significance of the mark depended largely on its impact as an
invented phrase. The most eye-catching word was COCO, and the
consumer’s lack of understanding of the meaning of the full phrase
also diminished the ability of the words DE MER to control the
impact of COCO. The High Court did not have to accord each part
of the mark the same weight or significance; the case law was clear
that the court had to appreciate the mark globally, and part of this
would be determining the distinctive features of the mark.
Given that the mark applied for was proposed to be used on
identical goods, the likelihood of confusion centred on the degree of
similarity between the two marks, with regard to their distinctive
characteristics. As they shared a key word, the question therefore
was whether other factors were likely to rule out confusion, which
the presence of COCO in both marks might otherwise produce if
they were used on identical types of goods. The judge found that
the additional words and the device were not likely to be sufficient
to negate the effect of the key word COCO and that the average
consumer might well assume an economic link between the two
products. The challenge to the hearing officer’s conclusions failed.
I.B.11.e. Bad Faith
In Inter Lotto (UK) Ltd. v. Camelot Group plc, both parties ran
lotteries. The National Lottery Commission ran the National
Lottery through the defendant, whereas the claimant operated
lotteries in public houses under the registered trade mark
HOTSPOT. In July 2001, Inter Lotto chose the name HOTPICK to
describe a feature of HOTSPOT in which numbers could be
randomly generated; it began promoting the feature, in
conjunction with HOTSPOT, one month later, and started using it
in November 2001. Meanwhile, in August 2001, Camelot had
chosen an almost identical name, HOTPICKS, for a planned new
lottery game; in October 2001, it applied for registration of the
HOTPICKS mark, although it did not launch a game under that
name until July 2002.
554
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Camelot’s application for registration of HOTPICKS was
opposed in November 2002 by Inter Lotto, which argued that
Camelot’s application had been made in bad faith because Camelot
was aware of Inter Lotto’s use of the name. In January 2003, Inter
Lotto brought proceedings against Camelot in the High Court that
included a claim of passing off. The trade mark application was
stayed pending determination of the High Court proceedings.
If Camelot’s trade mark application were successful, the mark
would be deemed registered with effect from the date of
application, that is, October 2001. Therefore, Camelot claimed that
it should, for the purposes of the proceedings, be treated as
benefiting from a trade mark registration that conferred on it a
superior right that overrode Inter Lotto’s common-law passing-off
rights.
The High Court was called on to decide, as a preliminary
issue, the relevant date at which Inter Lotto’s reputation and
goodwill should be assessed for the purposes of the passing-off
claim. Camelot argued that its alleged superior right meant that
the relevant date was October 17, 2001, the date of Camelot’s
application for registration. Inter Lotto accepted that if this date
were correct, it would be difficult for it to show sufficient goodwill
to succeed in a claim of passing off. However, it maintained, and
the court agreed, that the right date was July 7, 2002, the date on
which Camelot launched a game under its HOTPICKS mark.678
Camelot appealed this preliminary finding. The Court of
Appeal dismissed the appeal.679 Section 2(2) of the Trade Marks
Act 1994 expressly provided that the statute did not affect the law
of passing off. Although Section 5(4) did give special recognition
and protection to rights acquired by use before the date of an
application for registration, there was no equivalent recognition of
the possibility of superior rights’ being acquired by use after the
date of an application. The natural implication might be that such
subsequent use was to be disregarded; however, in light of Section
2(2), that interpretation was precluded, and the judgment of the
court of first instance was upheld.
Inter Lotto subsequently abandoned its opposition to the
Camelot’s trade mark application, and consequently, in August
2003, Camelot’s mark proceeded to registration. The following
month, Camelot commenced trade mark infringement proceedings,
and Inter Lotto counterclaimed for revocation and a declaration of
invalidity. Inter Lotto applied to amend its Particulars of Objection
to plead that Camelot’s mark was invalidly registered, in breach of
Section 3(6) of the Trade Marks Act 1994, because it had been
678.
[2003] E.W.H.C. 1256 (Ch.), [2003] 3 All E.R. 191. See also, III.B.1. Passing Off.
679.
[2003] E.W.C.A. Civ. 1132, [2003] 4 All E.R. 575.
Vol. 95 TMR
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registered in bad faith, as up to the date of registration Camelot
was aware that Inter Lotto was using the HOTPICK mark and of
Inter Lotto’s rights in HOTSPOT. Camelot opposed the application
on the basis that for purposes of Section 3(6) the relevant date was
the date of application for registration, not the date of registration.
The court dismissed Inter Lotto’s application.680 Section 3 of
the statute was concerned with the absolute grounds for refusal of
registration. Subsection 6 was in unqualified form, and its
language, requiring that an “application” have been “filed” in bad
faith, was a reference to the application for registration filed in the
Registry. Therefore, the relevant date for testing bad faith was the
date of filing of the application for registration.
I.B.22. Distinctiveness
EIDP applied to register the trademark DU PONT in relation
to menswear. STD opposed the registration under Sections 9 and
10 of the Trade Marks Act 1938 on the ground that the mark was
not distinctive enough, and subsequently sought to rely on the fact
that the registration was incapable of being distinctive because DU
PONT (whether as one or two words) was a common French
surname.
STD also alleged that it had used the name Dupont for a long
time in relation to clothes and that the registration would be likely
to deceive and cause confusion and therefore should not be
permitted under Section 11.
The hearing officer dismissed the opposition, and STD
appealed. The judge allowed STD to argue the point in relation to
the surname and concluded that it had a good case on the basis
that Dupont was a common surname. Further, the judge found
that the risk of confusion to the public had been made out, and
therefore he allowed STD’s appeal against the dismissal of its
opposition.
In the second appeal, STD had applied to register the mark
S.T. DUPONT. EIDP opposed the application on the basis that use
of the mark by STD would amount to passing off. The opposition
was upheld, and STD appealed. The judge allowed the appeal.
EIDP appealed against both decisions.
The Court of Appeal found that in relation to the first appeal
the judge had no good reason to reverse the hearing officer’s
decision and thereby refuse EIDP’s application to register. The fact
that the name Dupont appeared 800 times in the Paris telephone
directory was not conclusive on the question of whether the mark
DU PONT was capable of distinguishing EIDP’s goods.
680.
[2004] R.P.C. 42 (Ch.), (Patten, J.). The decision is dated February 25, 2004.
556
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There was evidence that DU PONT had become distinctive
through use in relation to EIDP’s fabrics and yarns. It had the
capacity to distinguish in respect of those articles, and there was
no reason why that capacity would be lost if the mark were applied
to clothes connected with EIDP. The hearing officer had therefore
been correct to find that registration was not contrary to Section
10 of the Trade Marks Act 1938.
STD’s objection under Section 11, that there would be a risk of
confusion to members of the public, was also not made out, as its
use of its mark had started after the mark DU PONT had become
distinctive with respect to EIDP’s fabrics and use of that mark by
EIDP in relation to menswear was sufficiently distinct from STD’s
use and unlikely to cause confusion.
In respect of STD’s application to register S.T. DUPONT, the
court held that such application would be liable to be prevented by
the law of passing off, and registration was therefore refused
under Section 5(4) of the Trade Marks Act 1994.681
In Société des Produits Nestlé SA v. Mars UK Ltd.,682 in 1995
Nestlé had applied to register the mark HAVE A BREAK in Class
30 for confectionery. The application was opposed by Mars and the
opposition upheld by the hearing officer, who held that the mark
was devoid of distinctive character under Section 3(1)(b) of the
Trade Marks Act 1994 on the basis that the words would be
understood simply as an origin-neutral invitation to consume a
snack. He held, further, that the words had not acquired
distinctive character under the proviso to Section 3(1) of the
statute because the mark HAVE A BREAK had been used not by
itself as a brand name for any Nestlé product but always as part of
the phrase “Have a break, have a KitKat.” The decision of the
hearing officer was affirmed by the judge on appeal, and Nestlé
appealed.
The Court of Appeal upheld the earlier decision that the mark
applied for was not inherently distinctive and that it could be
registered only if acquired distinctiveness could be shown in
accordance with Section 3(1).
The issue of the construction of Section 3(1) was one of
Community law, however, as that section derived from the Trade
Marks Directive and was similarly used in the CTMark
Regulation.683 Its interpretation was thus of far-reaching
importance in the EC as a whole, and accordingly the Court of
681. E.I. Du Pont de Nemours & Co. v. S.T. Dupont, [2003] E.W.C.A. Civ. 1368. See also,
I.B.5. Personal Names.
682.
[2003] E.W.C.A. Civ. 1072.
683. First Council Directive 89/104/EEC; Council Regulation (EC) No. 40/94.
Vol. 95 TMR
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Appeal referred to the ECJ a question of whether distinctiveness
may be acquired by a mark in consequence of its use as part of, or
in conjunction with, another mark.
II.E. Forum Conflicts
In Apple Corps Ltd. v. Apple Computer Inc.,684 the defendant
applied to set aside the service of proceedings outside the
jurisdiction in trade mark proceedings brought by the claimant.
The claimant was a well-known record company formed by the
Beatles; the defendant was a well-known producer of computers
and software. Both parties traded under the name APPLE. The
claimant claimed that the defendant had broken an agreement,
made in 1991, that regulated the use of their respective marks in
various areas of activity, following the settlement of English trade
mark proceedings. The alleged breaches resulted from the
defendant’s launch of a Web-based music store that allowed
members of the public to download songs over the Internet.
The claimant was granted permission under Civil Procedure
Rule 6.20 to serve proceedings outside the jurisdiction on the
grounds that the agreement was governed by English law, that it
was made in England and that the defendant threatened a breach
of contract within the jurisdiction that would entitle the claimant
to an injunction to restrain it.
When the agreement had been made, neither party wished to
accept the other’s jurisdiction or governing law, and the agreement
was silent on both. In addition, neither party wished to give the
other an advantage in terms of where the agreement was finalised,
so copies had been signed by each party in its home jurisdiction
(England and California, respectively) and completion was
arranged by telephone.
The court dismissed the defendant’s application. The evidence
did not enable a clear view to be taken. Each party argued that
completion consisted of an offer by the other side followed by its
acceptance in its own jurisdiction. Each party’s case was equally
likely, and on that basis the claimant had a good, arguable case for
saying that acceptance was received, and the contract made, in
England.
The agreement was essentially a negative one, with each party
promising to refrain from doing acts in certain areas. Therefore,
this was not a case in which the characteristic performance of the
contract could be determined for purposes of the Rome Convention.
Instead, the court had to ascertain the country with which the
contract was more closely connected. Taking a broad approach,
there was some, but not much, connection with California, and the
684.
[2004] E.W.H.C. 768 (Ch.).
558
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closer connection was with England. In particular, one of the
factors in favour of England was that the agreement was part of an
overall settlement of English litigation.
III.A.2.b. Similarity of Marks
In Compass Publishing BV v. Compass Logistics Ltd.,685 the
claimant was part of a group of companies engaged in worldwide
business consultancy. It owned a number of registered trade marks
for the word COMPASS, used by all of its group companies
throughout the world. These included two UK registered trade
marks, filed in 1988 and 1996, respectively, and a Community
Trade Mark (CTM).
In 1995, the defendant, which offered management
consultancy services, changed its name to Compass Logistics
International Ltd.; in 2000, it made a further change, to Compass
Logistics Ltd. The claimant sued for infringement of its three
marks. The defendant denied infringement, and counterclaimed
for revocation and a declaration of invalidity of the marks.
Looking at infringement of the CTM, the claimant argued that
the defendant infringed the mark in its use both of COMPASS
LOGISTICS and of COMPASS, as it often used the word singly to
refer to its business. The court accepted that use of the word
COMPASS alone was deliberate and not accidental and that the
defendant had infringed the CTM under Article 9(1)(a) of the CTM
Regulation686 by that use. The court went on to consider whether
the use of COMPASS LOGISTICS also infringed the CTM.
The claimant argued that COMPASS LOGISTICS was also
identical to its CTM, but the court disagreed. Case law from the
European Court of Justice (ECJ) established that a sign is to be
treated as identical to a mark only where it reproduces, without
any modification or addition, all the elements of the trade mark or
where, viewed as a whole, it contains differences so insignificant
that they may go unnoticed by the average consumer. On the facts,
the differences between the signs were apparent and would be
identified without difficulty or prior coaching by members of the
public, and therefore the claim for infringement under Article
9(1)(a) for use of COMPASS LOGISTICS failed. However,
infringement was established under Article 9(1)(b). Whilst no
actual confusion could be shown, the court held there could be
little doubt that a likelihood of confusion existed.
On the challenge to the validity of the CTM, the defendant
argued that by the filing date of the CTM it had acquired valuable
and protectable goodwill for the use of COMPASS LOGISTICS for
685.
[2004] E.W.H.C. 520 (Ch.). See also, III.F.5. Cancellation.
686. Council Regulation (EC) No. 40/94.
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consultancy services relating to logistics. The specification for the
CTM’s services would include consultancy services relating to
logistics. The defendant argued that had the claimant wanted to
use its mark for such services the defendant could have prevented
it from doing so by means of a successful passing-off action and
that the CTM should be declared invalid under Article 8(4).
Article 8(4) provides for refusal of registration of a mark if it is
opposed by the proprietor of a “non-registered trade mark.” The
court accepted that this would include vested rights that could be
enforced under the law of passing off. However, the defendant
failed to show that it satisfied the further requirements of Article
8(4)—that is, that it was the proprietor of a “sign used in the
course of trade of more than a mere local significance.” The court
held that a mark should be considered to have mere local
significance if its geographical spread was restricted to
substantially less than the whole of the EU and if from the
perspective of the EC market for the services in question the mark
was of little significance. On the evidence, the defendant’s
reputation was small and localised.
In relation to an attack on the 1996 UK mark, however, the
defendant was successful in having the mark declared invalid to
the extent that it covered logistics consultancy services in the
United Kingdom, as Section 5(4)(a) of the Trade Marks Act 1994
(the equivalent of Article 8(4) of the CTM Regulation) does not
impose a requirement for the unregistered right to have more than
mere local significance.
The claimant in H Young (Operations) Ltd. v. Medici Ltd.687
was the successor in title to a company called Animal Ltd., which
in turn was successor in title to a business started by two surfers.
Young owned the registered trade mark ANIMAL in Class 25 for
clothing, footwear, headgear, baseball caps, sweatshirts and Tshirts. The mark was used on women’s clothing aimed at people
under 30 who had an association with surfing. When defendant
Medici Ltd. began importing a range of ladies wear, aimed at those
over 30, under the mark ANIMALE, Young sued for infringement
of its mark. Medici denied infringement and brought a
counterclaim for partial revocation of Young’s mark. Young made
out a case for likelihood of confusion between the marks, and its
claim for infringement succeeded.
687.
[2003] E.W.H.C. 1589 (Ch.). See also, III.A.10. Nonuse of Trademark.
560
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III.A.5. Fair Use
Reed Executive plc et al. v. Reed Business Information Ltd. et
al.688 concerned an action for trade-mark infringement and passing
off. In the appeal from the court of first instance’s finding in favour
of the claimant, one of the issues that fell for consideration was
whether the use of the word REED in invisible metatags could
constitute infringement or passing off.
As far as infringement under Article 5(1)(a) of the Trade
Marks Directive689 was concerned, the judge reserved his opinion.
He expressed doubts, however, that metatag and reserved-term
use could count as use of a trade mark at all. Even if it could, he
questioned whether it was trade mark infringement where
metatags were concerned.
III.A.10. Nonuse of Trademark
In H Young (Operations) Ltd. v. Medici Ltd.,690 the claimant
owned the registered mark ANIMAL in Class 25 for clothing,
footwear, headgear, baseball caps, sweatshirts and T-shirts. The
mark was used on women’s clothing aimed at people under 30 and
having a surf connection. The claimant sued for infringement of its
mark when the defendant began importing a range of ladies wear
aimed at people over 30 under the mark ANIMALE. In reply, the
defendant denied infringement and counterclaimed for partial
revocation of the claimant’s mark on the ground of nonuse under
Section 46(1)(b) of the Trade Marks Act 1994. The defendant
argued that although the claimant had proved use of its mark over
a range of garments during the relevant five-year period, all the
goods in question were aimed at those who wanted to project a
surfer image, and that the mark should be partially revoked by
limiting it to “casual surf type wear for women aged under 30.”
The High Court held that it was required to determine how
the average consumer would describe the products on which the
proprietor had used its mark. It did not accept that surf-type goods
were significantly distinct in commercial terms to justify a partial
revocation, nor could the mark be limited to goods for young
adults. Neither of these was a distinction that the ordinary
consumer would make if asked to give a fair description of the
goods in connection with which the mark had been used.
“Clothing” was a fair description, and the claim for partial
revocation failed.
688. [2004] E.W.C.A. Civ. 159. For a full discussion of the case, see III.A.11.a. No
Similarity of Marks. See also, III.B.1. Passing Off; III.C. Injunctions and Damages.
689. First Council Directive 89/104/EEC.
690.
[2003] E.W.H.C. 1589 (Ch.). See also, III.A.2.b. Similarity of Marks.
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III.A.11.a. No Similarity of Marks
In Reed Executive plc et al. v. Reed Business Information Ltd.
et al.,691 the claimant had carried on business as an employment
agency for more than 40 years and had a registration for the trade
mark REED for “employment agency services included in Class
35.” In 1995, Reed Executive began to use the Internet as a
business tool, and by early 1996 it was advertising job vacancies on
its website, www.reed.co.uk.
The defendants were member of a multinational publishing
group that published a range of magazines and journals, some of
which included job advertisements. In 1999, Reed Business
launched a dedicated jobs-related website, www.totaljobs.com. The
website went through a number of versions, but it consistently
featured two logos incorporating the word REED as well as using
that word in invisible metatags.
Reed Executive sued for trade-mark infringement and passing
off based on Reed Business’s use of the word REED as part of (1)
its logos in early versions of its website and (2) the copyright notice
on its website. At the court of first instance, the judge held that
there was infringement under Section 10(2) of the Trade Marks
Act 1994 and possibly also under Section 10(1), that there was an
actionable passing off and that the defendants could not take
advantage of the own name defence in respect of either claim. Reed
Business accepted that the use of its logos in early versions of its
website amounted to trade-mark infringement and passing off.
Such logos had subsequently been removed. However, it appealed
the decisions in respect of its other uses of the word REED,
particularly in its copyright notice. Reed Executive cross-appealed
the finding that the use of “Reed Business Information” on
invoices, press releases, etc., did not amount to trade-mark
infringement and passing off.
The Court of Appeal allowed the partial appeal by Reed
Business. Considering whether there was infringement under
Article 5(1)(a) of the Trade Marks Directive692 (on which the Trade
Marks Act 1994 is based), which requires use of an identical mark
on identical goods or services, Lord Justice Jacob considered first
whether the marks in question were identical. He considered that
the marks used by Reed Business was REED BUSINESS
INFORMATION; comparing this to Reed Executive’s mark REED,
he found that the marks were not identical and that the additional
words BUSINESS INFORMATION would not go unnoticed by the
average consumer. Furthermore, the service offered on the
691. [2004] E.W.C.A. Civ. 159. See also, III.A.5. Fair Use; III.B.1. Passing Off; III.C.
Injunctions and Damages.
692. First Council Directive 89/104/EEC.
562
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appellant’s website did not amount to “employment agency
services” as per the respondent’s website, so there was no identity
of services either. Proceeding on the basis that confusion between
the similar marks and services was required, he held that there
was no direct evidence to indicate this, and so a case for trademark infringement in respect of the copyright notice was not made
out.
Turning to the question of infringement under Article 5(1)(b),
which requires a likelihood of confusion and which the trial judge
had equated with the test to be applied in a passing-off action, the
Court of Appeal pointed out that the tests are in fact different. In a
trade-mark infringement case the court must assume that the
mark has been in use and has developed a reputation and goodwill,
whereas in a passing-off action this is for the claimant to prove.
When a trade mark has been used on a substantial scale, that use
can be factored into the level of distinctiveness that the mark has
achieved. In trade-mark infringement, likelihood of confusion is
assessed by reference to the average consumer, but in passing off
the focus is on a substantial proportion of the public. Nevertheless,
in the end such considerations were found to “come to the same
thing,” and Lord Justice Jacob felt that the judge in both
situations is essentially “forming an overall (‘global’) assessment
as to whether there is likely to be significant consumer confusion.”
Where a case concerns a descriptive mark, the court felt that
small differences may suffice to avoid confusion. This is
particularly relevant where marks are common surnames. On the
facts the court found that there was no direct evidence indicating
any confusion and no infringement under Article 5(1)(b).
Despite finding that there was no trade-mark infringement,
the court went on to consider the application of the own name
defence. In relation to infringement, the court confirmed that the
defence is available to companies as well as private individuals
and that it may be used even if there is some actual confusion with
the registered trade mark, albeit the amount of confusion that can
be tolerated is a question of degree. On the facts, Reed Business
had used its name in accordance with honest business practices in
order to demonstrate corporate ownership of the site.
The remaining issues between the parties centred on the use
of pop-up banner advertisements and the use of metatags, and
whether these constituted use of a trade mark. In relation to the
first issue, Reed Business used sponsored search terms with the
Internet search engine YAHOO!. When the terms “recruitment,”
“job” and “reed” were searched for by a user, they triggered the
appearance of a banner advertisement for the www.totaljobs.com
website. The Court of Appeal disagreed that this constituted trademark infringement, finding it fanciful that people would connect
Vol. 95 TMR
563
the banner (which made no reference to the word REED) to Reed
Executive.
In relation to use of the word REED in invisible metatags, the
court found that there was no misrepresentation and no passing
off or trade-mark infringement. Similarly, as far as Article 5(1)(b)
trade-mark infringement was concerned, there was no confusion,
so there could be no infringement. When discussing metatags,
Lord Justice Jacob stated that “causing a site to appear in a search
result, without more, does not suggest any connection with anyone
else.”
Lastly, turning to the enquiry as to damages, the court
criticised the trial judge’s view that the “user” principle should
apply in circumstances where the mark concerned is one that
would not be available for commercial use. This part of the case
was remitted to the judge for further consideration, however, in
the light of the amended declarations that had been made.
III.A.17. Descriptive Use
Claimant Electrocoin Automatics Ltd. manufactured gaming
machines conventionally referred to as “fruit machines.” It had
used the symbols BAR, X and O on the reels and in the win tables
of its machines. Electrocoin also sold machines under the name
OXO and had U.K. and Community registrations for the marks
BAR-X and OXO. Defendant Coinworld Ltd. marketed two fruit
machines under the names BEAR X and BIG BEN and used the
symbols BAR, X and O on those machines. Electrocoin sued for
infringement of its marks BAR-X and OXO.
Coinworld argued that the registrations should be declared
invalid under Section 3(1) of the Trade Marks Act 1994 and Article
3.1 of the Trade Marks Directive as they were (1) signs that cannot
constitute a trade mark; (2) marks that were devoid of any
distinctive character; (3) marks that consisted exclusively of signs
or indications designating the kind, quality, quantity, intended
purpose or other characteristics of the goods or services; and (4)
marks that consisted exclusively of signs or indications that have
become customary in the current language or in the bona fide and
established practices of the trade.
On the evidence, the court concluded that the marks were
valid but not infringed. The court was satisfied that the symbols on
the reels had been used in accordance with honest practices in
industrial or commercial matters simply as integers of the games
played on the defendant’s machines and thus simply as indications
of alignment of the reels. Coinworld therefore was entitled to rely
on Article 6.1(b) of the Directive.693
693. Electrocoin Automatics Ltd v. Coinworld Ltd., [2004] E.W.H.C. 1498 (Ch.).
564
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III.B.1. Passing Off
In Inter Lotto (UK) Ltd. v. Camelot Group plc,694 the Court of
Appeal held that Section 2(2) of the Trade Marks Act 1994
expressly provides that the statute does not affect the law of
passing off. Although Section 5(4) did give special recognition and
protection to rights acquired by use before the date of an
application for registration, there was no equivalent recognition of
the possibility that superior rights could be acquired by use after
the date of an application. The natural implication might be that
such subsequent use was to be disregarded; in light of Section 2(2),
however, that interpretation was precluded, and the court of first
instance’s judgment was upheld.
In Sir Robert McAlpine Ltd. v. Alfred McAlpine plc,695 the
claimant company was established by Robert McAlpine in 1869. By
1935, it was being run by his sons, Alfred, William and Malcolm,
who agreed to split the business. Alfred established a new
company, A Limited (the defendant), which would trade in the
North West, the West Midlands and North Wales, while the
existing company, RM (the claimant), would operate elsewhere.
The geographical split ended by agreement in 1983, and they
continued to operate in parallel. RM’s business was principally
construction, whereas that of A Limited included a significant
proportion of civil engineering. The two companies operated on the
basis of an informal understanding that they should distinguish
between themselves by using the appropriate forename (Robert or
Alfred).
In 2001, A Limited began a re-branding exercise, dropped
ALFRED from the brand and from the public faces of the company
and adopted a new logo, which was simply the word MCALPINE in
stylised form. RM sued for passing off on the basis that A Limited’s
use of the name McAlpine without any distinguishing features was
a misrepresentation that the services were those of, or associated
with, RM or, alternatively, a misrepresentation that there was
only one owner of the reputation and goodwill attaching to the
McAlpine name.
The claim succeeded. On the evidence, the word MCALPINE
was capable of being a reference to the activities of RM in one of
the fields in which the activities of the two companies overlapped.
However, use of the name by A Limited in relation to activities
outside the joint sphere would not give rise to a misrepresentation
and would not amount to passing off.
694. [2003] E.W.H.C. 1256 (Ch.), [2003] 3 All E.R. 191. For a full discussion of the case,
see I.B.11.e. Bad Faith.
695.
[2004] E.W.H.C. 630 (Ch.).
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565
A Limited had argued that the relevant public consisted of
professionals in the construction market, who would be unlikely to
be confused because they knew of the existence of the two
companies. The judge accepted that whilst mere confusion was not
sufficient, on the facts he found that there was a
misrepresentation. The fact that this was corrected later did not
remove the initial misrepresentation. As regards to the general
public, when they saw new signs and logos, even those who knew
that there were two companies would be encouraged to believe that
there was only one MCALPINE, and that would constitute a
misrepresentation.
Whilst no quantifiable damage had yet occurred, the judge
accepted that RM was likely to suffer damage. He cited the case of
Irvine v. Talksport,696 in which the judge had referred to a third
party’s “squatting” on the claimant’s goodwill. The judge held that
the same principle could be applied in the present case, albeit that
it was one of joint ownership of goodwill, where a more appropriate
metaphor would be “elbowing out” or “moving over” the other
party. Neither joint owner was entitled to elbow the other aside by
using the name to describe its own business in a way that
suggested the exclusion of the other.
In Reed Executive plc et al. v. Reed Business Information Ltd.
et al.,697 the claimant sued for trade-mark infringement and
passing off based on the appellants’ use of the word REED as part
of (1) its logos in early versions of its website and (2) the copyright
notice on its website. At the court of first instance the judge held,
inter alia, that there was an actionable passing off and that the
defendants could not take advantage of the own name defence in
respect of either claim. Reed Business accepted that the use of its
logos in early versions of its website amounted to trade-mark
infringement and passing off. Such logos had subsequently been
removed. However, it appealed the decisions in respect of its other
uses of the word REED, particularly in its copyright notice. Reed
Executive cross-appealed the finding that use of “Reed Business
Information” on invoices, press releases, etc., did not amount to
trade-mark infringement and passing off.
The Court of Appeal allowed the partial appeal by Reed
Business. Despite finding that there was no trade-mark
infringement, the court considered the application of the own name
defence. In the context of a passing-off action, the court stated that
the defence was a narrow one. The test is whether the name was
696.
[2002] E.W.H.C. 367.
697. [2004] E.W.C.A. Civ. 159. For a full discussion of the case, see III.A.11.a. No
Similarity of Marks. See also, III.A.5. Fair Use; III.C. Injunctions and Damages.
566
Vol. 95 TMR
being used honestly; if it is in fact causing deception and is known
to do so, then the use cannot be honest. On the facts, Reed
Business had used its name in accordance with honest business
practices in order to demonstrate corporate ownership of the
website.
In relation to use of the word REED in invisible metatags, the
court found that there was no misrepresentation and no passing
off or trade-mark infringement. In relation to the passing-off issue,
the evidence showed that Reed Executive’s result appeared below
Reed Business’s results, and therefore no one was likely to be
misled. This was irrespective of whether the search engine made
the metatag visible.
III.C. Injunctions and Damages
In Reed Executive plc et al. v. Reed Business Information Ltd.
et al.,698 in a second judgment relating to damages, the judge
stated that any case in which the claimant could not show loss of
sales or loss of business was to be approached on the “user” basis
and that the court should undertake a determination of how much
the defendant should have to pay for the use it had made of the
mark.
On appeal, turning to the enquiry as to damages, the court
criticised the trial judge’s view that the “user” principle should
apply in circumstances where the mark concerned is one that
would not be available for commercial use. This part of the case
was remitted to the judge for further consideration in the light of
the amended declarations that had been made.
III.D.2. Criminal Actions
In R v. Hafeez Sheikh, Saqeb Sheikh & Junaid Sheikhz,699 the
defendants were found guilty in the Crown Court on charges of
using a trade mark without authority, in violation of Sections
92(1)(b) and 92(1)(c) of the Trade Marks Act 1994. They had been
found in possession of a variety of counterfeit goods bearing wellknown brands such as Nokia, Gucci, BMW and Manchester United
Football Club. The defendants pleaded guilty, and the Crown
subsequently served a restraint order indicating that it would
pursue confiscation proceedings. At that point the defendants
applied to vacate their guilty plea. The applications were refused.
The defendants appealed to the Court of Appeal, claiming that
they should be allowed to change their plea, as no warning had
698. Id. For a full discussion of the case, see III.A.11.a. No Similarity of Marks. See also,
III.A.5. Fair Use; III.B.1. Passing Off.
699.
[2004] E.W.C.A. (Crim.) 492.
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567
been given to them of the possibility of confiscation proceedings. It
appears from the judgment that up to £11 million could be at
stake.
The court dismissed the appeals. Whilst the court retained the
discretion to allow a guilty plea to be withdrawn where to refuse to
do so would be unjust, this was to be reserved for cases where
there was a doubt that the plea represented a genuine
acknowledgement of guilt. In the present case, the defendants had
been properly advised as to the nature of the offences and had, by
their pleas, freely confessed their guilt. The only matter of which
they had not been informed was the possibility of confiscation
proceedings’ taking place, and that could have no bearing upon
their acceptance of guilt.
III.F.5. Cancellation
In Compass Publishing BV v. Compass Logistics Ltd.,700 the
defendant was successful in having the 1996 COMPASS mark,
registered in the United Kingdom, declared invalid to the extent
that it covered logistics consultancy services in the United
Kingdom, as Section 5(4)(a) of the Trade Marks Act 1994 (the
equivalent of Article 8(4) of the CTM Regulation)701 does not
require that the unregistered right have more than mere local
significance.
III.J. Gray Marketing
In Glaxo Group Ltd. v. Dowelhurst Ltd. & Taylor,702 the
claimant comprised a number of large pharmaceutical
manufacturers and the defendants were parallel importers of
trade-marked pharmaceuticals produced by the claimants. The
defendants procured genuine pharmaceuticals from other EU
member states for import into the United Kingdom. However,
because the packaging and information leaflets were not suitable
for the UK market, the defendants carried out a number of
activities, including the following:
• Re-boxing—the contents of the foreign boxes were
placed in new boxes with new information leaflets.
• De-branding—the new boxes used the generic name of
the drug and not the manufacturer’s trade mark.
700. [2004] E.W.H.C. 520 (Ch.). For a full discussion of the case, see III.A.2.b. Similarity
of Marks.
701. Council Regulation (EC) No. 40/94.
702.
[2004] E.W.C.A. Civ. 290.
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Co-branding—the new boxes showed both the
manufacturer’s trade mark and the getup of the
importer.
• Stickering—the defendants merely stuck appropriate
labels on top of an original foreign-language box.
In all cases the defendants included a statement that the
goods had been procured in the EU and were repackaged by the
importer.
The claimant sued for trade mark infringement. Under Article
7(1) of the Trade Marks Directive,703 a trade mark proprietor may
not prohibit use of his mark in relation to goods that have been put
on the market in the European Economic Area by the proprietor or
with his consent. Article 7(2) provides an exception where there
are legitimate reasons for opposing further commercialisation of
the goods, especially where their condition is changed or impaired
after they have been put on the market. This provision has
generated a significant amount of case law which had suggested
that a parallel importer could only repackage goods and reapply a
trade mark where (1) this was “necessary,” (2) there was no effect
on the original condition of the product, (3) there was clear
identification of the manufacturer and importer, (4) there was
nondamaging presentation and (5) prior notice had been given to
the trade mark owner.704
At the court of first instance705 the judge found that there was
widespread and substantial resistance to over-stickered boxes,
with the result that re-boxing was necessary for the defendants to
obtain access to the UK market. A reference was made to the ECJ,
which held that a proprietor could object to parallel importation
only where it was necessary to protect the specific subject matter
of his rights and that repackaging was deemed to be prejudicial
and must be done as unobtrusively as possible. Replacement
packaging was accepted as necessary because without it effective
access to the market concerned was hindered, given that
consumers were resistant to relabelled products. When the case
returned to the High Court, the trial judge found that although the
defendants were entitled to re-box and to use stickers, the cobranding and de-branding were objectionable because they did not
respect the legitimate interests of the trade mark proprietor. Both
parties appealed.
The Court of Appeal held that the issue required further
clarification from the ECJ but indicated that it was inclined to
•
703. First Council Directive 89/104/EEC.
704. Bristol-Myers Squibb v. Paranova A/S, Joined Cases C-427/93, C-429/93 and C436/93, [1996] E.C.R. I-3457.
705. Judgment was given in February 2000.
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569
overrule the trial judge on the issue of re-boxing. The trial judge
had interpreted the ECJ’s judgment to mean that repackaging was
presumed to be prejudicial to the trade mark, so that even if reboxing was necessary it must respect the legitimate interests of
the trade mark owner and be as unobtrusive from the trade mark
point of view as possible. This led him to believe that only
packaging that imitates the original packaging or that is very
plain and depicts nothing more than the claimant’s mark is
acceptable. The defendants argued that all they had to show was
that re-boxing was necessary and that the necessity test did not
extend to the details of the manner of repackaging. Lord Justice
Jacob accepted the defendants’ arguments but finally deferred
judgment on the form of the re-boxing and stickering because he
considered that despite years of case law the position was still not
free from doubt. Decisions from other national courts within the
EU showed varying approaches to repackaging and further
guidance on the form of co-branding, de-branding and stickering
was required. A further reference was made to the ECJ.
URUGUAY
I.B.12. Famous Marks
Nextel Communications, Inc., owner of trademark NEXTEL,
filed an opposition with the Trademark Office seeking the
dismissal of an application for NEXTEL presented by the
Uruguayan company Nextelco Ltda. in International Classes 9 and
38. Nextel Communications, Inc. based its action primarily on the
worldwide notoriety and fame of its NEXTEL trademark and on
the allegation that the applicant had engaged in unfair
competition by attempting to register a mark identical to one of its
own. In addition, it claimed that the legal regulations that protect
trade names applied to this case.
In support of its position, Nextel Communications, Inc.
furnished abundant material evidencing its registration and use of
the mark NEXTEL, which preceded Nextelco Ltda.’s application by
many years, and illustrating the trade name’s international
notoriety and the widespread renown of the company.
Based on an objection raised by the legal department of the
PTO concerning the formalities with which foreign documents
must comply in order to be accepted as evidence, the Trademark
Office decided to dismiss Nextel Communications, Inc.’s petition,
thus granting the contested application.706 This decision was, in
turn, appealed by the opposing company while it began the process
of correcting the formal defects that the PTO’s legal department
706. Resolution of the Trademark Office, October 26, 2001.
570
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had observed in the documents presented. In addition, new
evidence was submitted, mainly consisting of original materials
showing the notoriety of NEXTEL. As a result of this course of
action, the Trademark Office decided to reverse its prior decision
and dismiss Nextelco Ltda.’s application.707
This new decision was based on an opinion that the PTO’s
legal department formed after considering the supplemental
documentation submitted. It concluded that the expression
“Nextel” is the trade name of the petitioning party and that its use
in the market dates back to at least 1988; that Nextel
Communications, Inc. operates primarily in the field of
telecommunications (Class 38) and related equipment (Class 9);
and that the formal defects in most of the evidence had been
corrected. Moreover, it found that while several of the foreign
applications were made after the application for the current
registration, others were made on earlier dates, as were the United
States applications. These earlier applications include Brazil,
February 1997; Argentina, August 1995; the European Union,
April 1996; and Mexico, March 1994. The legal department further
stressed that although some of the new publications incorporated
as evidence refer to a later date, others are from at least two or
three years prior to the contested application. Based on this
material, it also concluded that, following a partnership entered
into with the company MCI, Nextel Communications had advanced
enormously in the field of wireless network communications, thus
gaining renown in the business. In addition, the PTO’s legal
department pointed out that this performance, which earned the
company increasing recognition, is also backed by the application
for and granting of numerous registrations in dates around 1997.
Moreover, it acknowledged the valuable services rendered by the
appellant, which because of their nature, transcend national limits
and are present on an international level. Lastly, it stressed that
regardless of the fact that the inclusion of “tel” is a customary
practice among companies operating in this business, the mark
applied for by the local company is identical to the trade name and
trademark used by the U.S. company. Anyone with experience in
the field of trademarks would find it difficult to believe that the
mark was conceived or created by the national company, especially
considering that the applicant operates in the field of
telecommunications and must necessarily have some awareness of
the trademarks used in this area and the companies that conduct
similar business activities, in particular, those operating in
neighboring countries.
707. Resolution of the Trademark Office, February 21, 2003.
Vol. 95 TMR
571
ExxonMobil Oil Corporation, owner of the trademark MOBIL
and its variants, filed two oppositions with the Trademark Office
seeking the dismissal of the applications for T-MOBIL (label)
presented by the German company Deutsche Telekom AG in
International Classes 9, 16, 36, 37, 38, 41 and 42. ExxonMobil Oil
Corporation based its action primarily on the worldwide notoriety
and fame of its MOBIL trademark, the prior use and reputation of
said mark and the trade name MOBIL used by ExxonMobil in
Uruguay and around the world, as well as on a number of prior
registrations of the mark MOBIL and its variants in Uruguay in
International Classes 1, 2 and 4.
The PTO decided to dismiss ExxonMobil Oil Corporation’s
petition and grant the contested applications.708 These decisions
were based on an opinion issued by the PTO’s legal department,
which concluded that the notoriety of the trademark MOBIL is
associated with goods in International Class 2 and as such is
limited to the products protected under that class. This opinion
further stated that, if trademark MOBIL were a renowned mark,
the protection would extend beyond the limits of that International
Class, but that it did not consider the mark to be renowned. These
resolutions were, in turn, appealed by the opposing company, but
the Board of Appeals in Trademark Matters confirmed the PTO’s
prior rulings based on the same arguments.709
ExxonMobil Oil Corporation then decided to file two final
claims before the High Administrative Court, which is the highest
body in Uruguay with jurisdiction over administrative decisions
issued by governmental bodies. Through these claims, ExxonMobil
sought the annulment of the Trademark Office resolutions
granting the applications for T-MOBIL (label). In support of its
position, the appellant furnished abundant materials evidencing
its registration and use of the mark MOBIL and its variants,
which preceded Deutsche Telekom AG’s applications by many
years, and illustrating the trade name’s international notoriety
and the widespread renown of the company.
The Court’s Judges accepted ExxonMobil Oil Corporation’s
claims and ruled in favor of annulling the contested decisions.710
The Judges stressed in their rulings that the plaintiff is justified in
its claims because it is evident that the conflicting marks are not
different enough to coexist in the same market, neither from a
graphic nor from a phonetic viewpoint. Moreover, while conceding
that the registered word mark MOBIL only covers “corrosion
708. Resolutions of the Trademark Office, January 10, 2000, and February 8, 2000.
709. Resolutions of the Board of Appeals in Trademark Matters, September 19, 2000,
and November 23, 2000.
710. Rulings of the High Administrative Court, February 24, 2003, and March 26, 2003.
572
Vol. 95 TMR
protection products” in International Class 2, and thus by virtue of
the specialty principle the action brought by the plaintiff would not
be acceptable, the Judges understood that the plaintiff did not base
its oppositions to the new registrations merely on the existence of
the mark MOBIL for International Class 2 products. The
appellant, the Judges indicated, also based its claims on the fact
that it has various other marks registered both in this country and
abroad containing the word MOBIL as an integral part thereof,
thus turning the term in question into a well-known mark. The
Judges also found that, notwithstanding the existence of these
other marks, it would be impossible not to acknowledge the
notoriety of the mark MOBIL, even without the need to register it.
They asserted that the importance of protection of well-known
marks in international trade relations implies an exception to the
territorial principle and even to registration as an essential
requirement for establishing protection of the mark. They added
that under Article 6bis of the Paris Convention, the States Party
are bound to prohibit the registration of a mark that constitutes a
reproduction, imitation or translation, liable to create confusion, of
a mark considered by the competent authority of the country of
registration or use to be well known in that country. Such
prohibition also applies “when the essential part of the mark
constitutes a reproduction of any such well-known mark or an
imitation liable to create confusion therewith.” The Judges
concluded that this is undoubtedly the case in these proceedings
because the only difference between the conflicting marks is the
letter “T.” A difference of one letter makes the new mark scarcely
distinctive or new, and such a minor difference is overshadowed by
the main and essential term constituting this mark that has been
famous worldwide for many years. Therefore, and as it is
impossible not to acknowledge that MOBIL is a well-known mark,
both nationally and internationally, the risk of confusion cannot be
ignored because consumers could reasonably be led to think that
the products or services have the same origin and quality.
Lastly, in the Court’s opinion, the word MOBIL is part of the
trade name ExxonMobil Oil Corporation, which is yet another
obstacle to the registration of the mark T-MOBIL. In fact, the
resemblance of the mark T-MOBIL to the plaintiff’s trade name is
obvious, thus increasing the risk of confusion, especially if the
effects of a well-known name are taken into account.
Vol. 95 TMR
573
VENEZUELA
I.B.3. Not Merely Descriptive Terms
The Patent and Trademark Office denied711 registration to
PREPAGO DIGITAL, filed by Telecomunicaciones Movilnet for
services in National Class 35,712 on the ground that it was merely
descriptive of the services covered, namely advertising;
management of commercial business and business administration
services. In its opinion PREPAGO DIGITAL was within the
prohibition of Article 82(d) of Decision 344 of the Commission of
the Andean Community,713 regarding registration of trademarks
consisting of a sign or indication useful in commerce to designate
the type, quality, quantity, destination, value, origin, time of
production and other data, characteristic or information relating to
the products or services for which the trademark will be used.
The applicant requested review of this decision before the
Industrial Property Registrar. It argued that this trademark did
not necessarily have to be used to distinguish digital prepaid
services, as indicated in its meaning, and therefore it should be
allowed registration because the services claimed did not have a
close relation to the meaning of the mark’s words. The Registrar
rejected the previous decision on the ground that the mark was not
descriptive of the services listed and consequently would not
generate confusion among consumers as the meaning evoked in
the Spanish language by the words PREPAGO DIGITAL and
consumers’ general understanding of that meaning did not closely
relate to the services offered by the applicant.714
I.B.9.a. No Similarity of Marks
In Coca-Cola Co. v. Hit de Venezuela, S.A.,715 the Political and
Administrative Chamber of the Supreme Tribunal of Justice
ordered the invalidation of the Ministry resolution716 upholding the
Industrial Property Registrar’s decision717 that denied registration
711. Resolution No. 0907, dated August 27, 1999; published in Industrial Property
Bulletin No. 434, Volume 2, dated October 15, 1999.
712. Trademark Application No. I-98-18,233.
713. Decision 344 was subsequently superseded by Decision 486, dated September 14,
2000 (Common Intellectual Property Regime).
714. Resolution 0007, dated January 4, 2004; published in Industrial Property Bulletin
No. 462, Volume 3, dated February 13, 2004.
715. Political and Administrative Chamber of the Supreme Tribunal of Justice, Decision
No. 514, dated April 3, 2001.
716. Secretary of Development, Resolution No. 774, dated April 7, 1992; published in
Industrial Property Bulletin No. 375, Volume 2, dated October 15, 1993.
717. Industrial Property Registrar, Resolution No. 1,677, dated April 13, 1989;
published in Industrial Property Bulletin No. 360, dated September 15, 1991.
574
Vol. 95 TMR
to the mark HI-C for the protection of natural and artificial
mineral and gaseous water and other nonalcoholic beverages,
syrup, in National Class 45, based on its similarities to the
registered mark HIT & Design,718 in the same class and for like
products.
Coca-Cola maintained its claim on the ground that HIT &
Design was a complex mark, and therefore all its possible
confusing elements with HI-C had to be analyzed as a unit rather
than separating and isolating each one of them. In addition, CocaCola asserted that HI-C was, in fact, an extension of its old
identical registration for food, vegetable and fruit beverages,
registered since 1958.719 Finally, Coca-Cola contended that these
two marks had coexisted in peace for over 30 years and therefore
there was no reason to deny registration to HI-C. In reply, Hit de
Venezuela argued that registration of HI-C would violate Sections
11 and 12 of Article 33 of the Industrial Property Law of 1956,
which forbid registration of marks so confusingly similar to a
registered trademark that they might deceive consumers.
In this decision the Tribunal defined the concept of complex
marks. Also, it cited some previous court opinions regarding the
method that must be followed by the competent authority when
evaluating the likelihood of confusion between confusingly similar
trademarks. Thus, a complex mark is such as puts together several
nominative or nominative and graphic elements that as a whole
will comprise a unitary, complex and undividable group, which
makes the mark a unique sign that differentiates analogous
products. In regard to the evaluation of confusingly similar
trademarks, the Tribunal held as follows. (1) Likelihood of
confusion must be evident and not the result of the separate
analysis of each one of the elements comprising the mark;
therefore, confusion should result from a judgment taken upon a
simple sight or listening. This test must also evaluate the impact
that might produce the element or elements that, because they
stand out within the group, will comprise the characteristic
figurative and/or phonetic unique image the consumer will
remember. (2) Designs and complex marks must be judged as a
group, and not by evaluating their elements in an isolated way. (3)
The accentuation must be considered to ascertain the differences
without making it, by itself, a judgment element. Hence, there may
coexist word marks with some identical syllables, when the other
syllables composing the word and its accentuation differ to the
point that any possible confusion is prevented. (4) It is necessary to
assess the list of goods and/or services identified with the mark,
718. Registration No. F-21,027, dated June 29, 1949.
719. Registration No. F-33,448, 1958.
Vol. 95 TMR
575
whether they are within the same class, its structure and its
commercial environment.
III.F.3. Nullity
Productos S.A.S, C.V., as owner of a registration for CHEESE
TRIS,720 requested that the Industrial Property Registrar declare
the nullity of the trademark CHEESE TRON & Design,721 for
confectionery, sweets, cookies and snacks in International Class
30, originally applied for by and registered in the name of
Industrial Amapola, C.A., but later on transferred to Productos
Alimenticios Agropack, C.A. The petitioner contended that in
granting registration to CHEESE TRON & Design the Registrar
did not consider that the mark could be misleading as to the origin,
nature or quality of the products, nor the fact that CHEESE TRIS,
also in Class 30, was already registered and thus enjoyed a priority
right in accordance with Articles 82(h) and 83(a) of Decision 344.
In answer to this petition, Productos Alimenticios Agropak
contended that the notification of this nullity proceeding, which
was to Industrial Amapola, C.A., was invalid and without any
effect, as that firm was no longer the legal owner of CHEESE
TRON & Design.
Before reviewing the priority between these registrations and
the likeness of the products covered by each of them, the Registrar
considered that, as provided by Articles 19 and 20 of the Organic
Law for Administrative Procedure and by the general opinion of
administrative bodies and the courts, an important distinction had
been established in the occurrence of certain facts of influence
upon the validity or nullity of the administration acts, being of
such character as to make it absolute or of a minor grade that only
are a cause to its annulment. Further, it developed the opinion
that there are certain facts or infractions of a minor nature or
mere or trifling irregularities in the formality of the administrative
act, which are referred to as irrelevant or inoperative since they do
not lead to annulment or to total or absolute invalidation. Thus,
since Article 30 of the Organic Law for Administrative Procedure
sets economy, efficiency, celerity and impartiality as the governing
principles of the administration, the Registrar decided that the
main purpose of the notification was accomplished in this case, as
the new owner of the mark voluntarily appeared and filed such
defenses as it believed useful, and therefore there was no reason to
invalidate the notification. After examination of the priority
720. Trademark Registration No. P-198,611, dated August 6, 1997.
721. Trademark Application No. I-93-11,494.
576
Vol. 95 TMR
between both applications and the likeness between the products,
the Registrar ordered the nullity of CHEESE TRON & Design.722
VIETNAM
I.B.3. Not Merely Descriptive Terms
Firmenich SA, a Swiss company, filed an international
application for the mark MASK-IT! covering “essential oils” in
International Class 3 and “flavourings (other than essential oils)
for foodstuffs, beverages, pharmaceutical products and mouth-care
products” in Class 30. This application also designated Vietnam.
The Vietnamese National Office of Intellectual Property
(NOIP)723 refused to grant protection for MASK-IT! in Vietnam on
the basis that the mark was descriptive of the products.
Firmenich, through its IP agent in Vietnam, lodged an
appeal724 against the NOIP’s refusal, principally based on the
following grounds:
1. The applied-for products do not relate to facial masks
but instead relate to essential oils and flavourings added to
cosmetics and beautification products. Therefore, the word
“Mask” and the mark as a whole are not descriptive of the
applied-for products in Classes 3 and 30.
2. The applied-for products are essential oils and
flavourings, which are ingredients to enhance and improve the
taste of the original products in which they are incorporated
and not to mask the taste, as claimed by the NOIP.
Having considered Firmenich’s arguments, the NOIP accepted
that the mark MASK-IT! did not directly describe the applied-for
products in Classes 3 and 30.725 Consequently, MASK-IT! was
granted protection in Vietnam on October 13, 2004.
722. Resolution No. 1,666, dated October 11, 2003; published in Industrial Property
Bulletin No. 461, Volume 3, dated December 19, 2003, at 303−09.
723. Under Decree No. 54/2003/ND-CP of the Government, which became effective on
June 21, 2003, the National Office of Industrial Property was renamed the National Office
of Intellectual Property.
724. No. KN-2004-00300.
725. See Letter No. 1756/TTKN.
Vol. 95 TMR
577
TABLE OF MARKS
A ............................................................... 409
A AREVA ................................................. 409
A PERFECT BLEND OF SCIENCE
AND NATURE .................................... 318
ABSOLUT ................................................ 469
ACTIMEL................................................. 410
ADENAFIL .............................................. 488
AFIA ......................................................... 486
AFRICA’S LUSTY, LIVELY
EXPLOITATION SINCE 1652—NO
REGARD GIVEN WORLDWIDE....... 526
ÁGUA DO FASTIO GERÊS.................... 518
ALASKA................................................... 425
ALISUN ................................................... 369
ALIVIO..................................................... 297
ALIVIO WATERBEDS............................ 297
ALLGEMEINE NATURHEILKUNDE
FNH ..................................................... 536
ALL-ROUND ORKEST MELROSE ....... 302
ALLURA................................................... 369
ALTINO ................................................... 442
ALTIPLANO ............................................ 442
ALWATWAT ............................................ 490
ALWAYS .................................................. 492
AMERICA’S LUSTY, LIVELY
BEER—BREWED IN SOUTH
AFRICA ............................................... 526
AMOXIL ................................................... 488
AMOXIRAM............................................. 489
ANIMAL................................................... 559
ANIMALE ................................................ 559
APPLE...................................................... 333
AQUAQUEEN ......................................... 541
ARGUS ..................................................... 417
ARTHUZICO ........................................... 305
ASSO ........................................................ 455
AUDIOVOX.............................................. 451
AUTOFIL ................................................. 505
AXXON..................................................... 276
AYURVEDA-MEDIZIN FNH ................. 536
B’A FORCE ÉQUILIBRE........................ 410
B’A FORCE VITALITÉ ........................... 410
BAILEY’S ................................................. 313
BANCO 1 – PHONE TICKETS .............. 304
BANK24 ................................................... 367
BARBECUE ............................................. 482
BARBIE.................................................... 314
BARBIE’S................................................. 314
BARBRA .................................................. 360
BAR-X....................................................... 563
BATMAN.................................................. 490
BAXTER................................................... 344
BAZZER ................................................... 344
BBDENT .................................................. 358
BCBG ....................................................... 362
BEAUTY SUPPLEMENT C-WHITE ..... 437
BEST CANADIAN MOTOR INNS ......... 310
BEST OF NATURE—BEST OF
SCIENCE ............................................ 318
BEST WESTERN .................................... 309
BI DEXATON .......................................... 359
BIDETTE ................................................. 394
BİFA PENBE PRENS ............................. 548
BİFA SUPER PRENS ............................. 548
BİFA SÜTLÜ PRENS ............................. 548
BIG MAC.................................................. 516
BIG MAK ................................................. 515
BIOFORMA ............................................. 360
BIOMILD ................................................. 380
BLACK LABEL ....................................... 526
BLUETOOTH .......................................... 332
BMCSOFTWARE .................................... 521
BMW ................................................ 370, 467
BODUM ................................................... 365
BOSS ........................................................ 289
BOSTON MARKET................................. 322
BOSTON PIZZA ...................................... 322
BOSTONGURKA .................................... 385
BOURSE DES VOLS .............................. 417
BOURSE DES VOYAGES ...................... 417
BR............................................................. 368
BROTHER ............................................... 478
BROTHER YO ......................................... 479
BRÜHL .................................................... 293
BUDWEISER BÜRGERBRÄU............... 289
BUGS BUNNY ........................................ 334
BURGER KING....................................... 487
BUSINESSCALL 100.............................. 394
CAELYX................................................... 454
CAMPUS.................................................. 452
CAMUS .................................................... 452
CANAL DIGITAL .................................... 453
CANAL JEAN CO. NEW YORK ............ 446
CANAL+................................................... 453
CANALI ................................................... 446
CANALI MILANO................................... 446
CANNABIA.............................................. 430
CARMEL DSP ......................................... 390
CARMEN ................................................. 390
CARTOON NETWORK................... 534, 536
CENTRO-HOTELS ................................. 295
CHARME HOTEL ................................... 404
CHARMHOTEL....................................... 404
CHDTV..................................................... 340
CHEDDAR CHEESE .............................. 482
CHEESE BALLS ..................................... 482
CHEESE TRIS......................................... 575
CHEESE TRON....................................... 575
CHEETOS................................................ 494
CHILI CHIPS .......................................... 482
CHIONG YAO JIANG............................. 332
CHOCO PRINCE..................................... 548
578
CHRISTIAN DANIEL ............................. 450
CITY PLUS .............................................. 421
COALA COLA.......................................... 440
COCA-COLA ............................................ 402
COCKTAIL OF PIGNA COLADA .......... 413
COCO DE MER ....................................... 552
COLD FILTERED ICE DRAFT BEER
BUDWEISER ...................................... 359
COLORS................................................... 475
COLOURS................................................ 388
COMBUSTICKET ................................... 304
COMPASS........................................ 558, 567
COMPASS LOGISTICS .......................... 558
CORNER CAFE....................................... 391
CORNER PUBLIC HOUSE .................... 391
CORNER’S PUB ...................................... 391
CORONAS ............................................... 551
CRAMPON............................................... 408
CRAYOLA ................................................ 513
CRAZY KRIZIA ....................................... 427
CREATEAM............................................. 369
CRINOLIN ............................................... 391
CRISPY CHIPS ....................................... 483
CROCO COLA ......................................... 439
CRUNCHY FRIES................................... 462
CUBA LIBRE........................................... 509
CUBA LIBRE ORIGINAL FORMULA .. 509
D’ARRASAR............................................. 520
D’ISTINTO............................................... 476
D2–BESTCITYPLUS .............................. 421
DANCEHILL ........................................... 298
DANCEVALLEY ..................................... 298
DANIEL ................................................... 322
DEAL........................................................ 397
DECATHLON .......................................... 415
DELISTER ............................................... 351
DENAFIL ................................................. 488
DERMALUB ............................................ 349
DEUTSCHE BANK24 ............................. 367
DEXA NEUROBION............................... 359
DEXEL ..................................................... 360
DI KA ....................................................... 333
DIABREZIDE .......................................... 497
DIAVOLO................................................. 431
DIESEL .................................................... 396
DIGIBOX.................................................. 396
DISEÑO DE TRAJE DE GALA.............. 371
DOLCET .................................................. 495
DOLOGIT................................................. 495
DONLINE ................................................ 421
DORITOS ................................................. 494
DRAKKAR ............................................... 326
DRAKKAR NOIR .................................... 325
DU PONT......................................... 552, 555
DUXIL ...................................................... 360
DYAZIDE ................................................. 496
ECH20....................................................... 500
ED............................................................. 535
ED ENERGIEDIENST............................ 535
EF ............................................................. 272
Vol. 95 TMR
EINSTEIN ............................................... 324
EL CORRECAMINOS............................. 328
EL TACO.................................................. 296
ELLE ........................................................ 362
EMPREZA DAS ÁGUAS DO GEREZ .... 519
ERFURT .................................................. 286
ERFURT–RAUHFASER......................... 286
E-SERVICE ............................................. 399
ESSO ........................................................ 455
ESTEE LAUDER..................................... 336
EURO-WIENER ...................................... 395
EVANATURA .......................................... 277
EVAX........................................................ 359
EXACOD .................................................. 416
EXPRESS MAKE UP .............................. 433
EXPRESSIONS FROM HALLMARK .... 323
EXXON..................................................... 276
F.LLI FERRAZZANO.............................. 472
FASHION TELEVISION ........................ 412
FASHION TV........................................... 412
FEMALE TREASURE ............................ 296
FENDI...................................................... 432
FENDT CARAVAN ................................. 432
FERODO .................................................. 504
FERRAGAMO.......................................... 472
FERRAZZANO ........................................ 472
FINN ........................................................ 508
FITMORE ................................................ 532
FITNESS.................................................. 531
FITNESS COMPANY ............................. 419
FLY THROUGH THE WASHING UP ... 464
FOCUS ..................................................... 537
FOR BROTHER....................................... 479
FOREVER FRIENDS.............................. 457
FREEPORT.............................................. 474
FREE-PORT ............................................ 474
FRITO-LAY.............................................. 491
FRITOS ............................................ 359, 491
FROSTED NUTS..................................... 358
FUCICORT .............................................. 486
FUCIDIN ................................................. 486
FUCITHALMIC....................................... 486
FUSID ...................................................... 486
FV ............................................................. 279
FV GARANTIA TOTAL .......................... 279
GALLO ..................................................... 517
GALVALLOY ........................................... 449
GAP .......................................................... 546
GEORGE, ZHUANG JI........................... 340
GERÊS ..................................................... 518
GLOBAL ONE ......................................... 392
GLOBALONE .......................................... 392
GRAN SIDRA REAL ............................... 277
GRANUFLEX .......................................... 303
GRIMSEL STROM .................................. 532
GULF ....................................................... 377
HAPPIDOG.............................................. 356
HAPPY DOG............................................ 356
HARPER’S BAZAAR ............................... 362
HARRODS ............................................... 350
Vol. 95 TMR
HAVANA CLUB ...................................... 524
HAVE A BREAK ..................................... 556
HELENA RUBINSTEIN......................... 330
HELLO ..................................................... 490
HERO ....................................................... 490
HERSHEY’S KISSES.............................. 348
HEXAL ..................................................... 535
HI-C.......................................................... 574
HI-CONTROL .......................................... 452
HIT ........................................................... 574
HOLIDAY CARS ..................................... 303
HOLOXAN ............................................... 343
HOTEL VILLA KUNTERBUNT ............ 292
HOTPICK................................................. 553
HOTPICKS .............................................. 553
HOTSPOT ................................................ 553
HUMMEL ................................................ 530
HYBRIDIL ............................................... 374
INET......................................................... 293
INFANRIX HEXA ................................... 535
INTEL INSIDE........................................ 540
INTERBIZ................................................ 389
INTERBUSINESS................................... 389
IP-LABEL ................................................ 403
ITT............................................................ 496
JAGUAR................................................... 466
JAMES BOND ......................................... 280
JAMES BONDI........................................ 280
JOIE DE VIVRE ...................................... 305
JORDAN .................................................. 462
KELAFER ................................................ 374
KELME .................................................... 480
KENT FRESH ......................................... 274
KIDDIE .................................................... 372
KIDDY...................................................... 372
KINDER ................................................... 422
KINDER KRAM ...................................... 422
KINDER SOFTY ..................................... 362
KINDERSCHOKOLADE ........................ 422
KING FRENCH FRIES........................... 463
KISS COOL.............................................. 348
KISS FM .................................................. 378
KITCHEN MATE .................................... 464
KITCHENMATE ..................................... 464
KJÖRÍS .................................................... 454
KLASSISCHE HOMÖOPATHIE FNH .. 536
KLEINER FEIGLING............................. 288
KLEINER FRECHDACHS ..................... 288
KOALA KOLA ......................................... 440
KODAK .................................................... 435
KRISTA .................................................... 427
KRIZIA ..................................................... 427
KUAI KE .................................................. 338
L’ARGUS.................................................. 416
L’ARGUS DE L’AUTOMOBILE ET
DES LOCOMOTIONS ........................ 417
LA MER ................................................... 384
LA PASION POR EL CHOCOLATE ...... 375
LABORATOIRES DE LA MER .............. 384
579
“LADY DIANA– KÖNIGIN DER
HERZEN” DAS MUSICAL................. 287
LAIT ECLATS ......................................... 405
LAPERDIZ ............................................... 497
LATITUDE-LONGITUDE ...................... 429
LAY’S ....................................................... 491
LAYS ........................................................ 491
LEGO-BRICKS........................................ 533
LEIFTRA.................................................. 453
LEONARD KAMHOUT .......................... 478
LES BOUTIQUE CLIQUOT................... 319
LES CADETS D’AQUITAINE ................ 399
LEVITRA ................................................. 453
LEX NET.................................................. 290
LEXIS....................................................... 290
LINDOWS................................................ 411
LINDOWS OFFICE ................................ 411
LINUX...................................................... 299
LION ........................................................ 467
LISTERINE ............................................. 351
LONGITUDE........................................... 429
LOOKS LIKE GRASS . . . FEELS
LIKE GRASS . . . PLAYS LIKE
GRASS ................................................. 357
LOXAN..................................................... 343
LUBRIDERM........................................... 349
M&M MINIS............................................ 365
MAGENTA............................................... 423
MALIBU................................................... 301
MANPOWER ........................................... 291
MANTRA ................................................. 369
MARIE CLAIRE ...................................... 362
MASK-IT!................................................. 576
MASTERTICKET.................................... 304
MAX MIX ................................................. 389
MAZDA .................................................... 455
MCALPINE.............................................. 564
McDONALD’S.................................. 300, 470
McSMART................................................ 300
MEDICON ............................................... 367
MEDICONNECT..................................... 367
MEGA 5.................................................... 289
MELROSE ............................................... 302
MENAFER............................................... 374
MENG TE JIAO ...................................... 337
MERCEDES............................................. 301
MERCEDES-BENZ ......................... 301, 467
MEZZACORONA..................................... 551
MICROSOFT ........................................... 298
MICROSOOF........................................... 298
MINI MILK.............................................. 392
MINI MILK CRAYOLA .......................... 513
MINUTES & MORE................................ 420
MISSOURI............................................... 418
MIX MAX FLAKES ................................. 389
MOBIL ..................................................... 571
MONTAGUT............................................ 337
MOODS BY KRIZIA................................ 427
MOON ...................................................... 397
580
MOOVE .................................................... 400
MP3.COM ................................................ 456
MTN MONEY TRANSFER NORDIC .... 454
MUPPET .................................................. 329
MUSTANG............................................... 512
MUSTEK.................................................. 335
NATURA .................................................. 277
NEIL BARRETT...................................... 387
NENEDENT ............................................ 358
NEW KUAI KE........................................ 338
NEXTEL................................................... 569
NICHOLS................................................. 380
NO 19 ....................................................... 393
NOIR ECLATS ........................................ 405
NOVARTIS .............................................. 360
NOVASIL ................................................. 360
NUTRAVITE............................................ 318
NUTRILITE ............................................. 317
Ô DE LANCÔME..................................... 535
O.P.ANDERSON ..................................... 387
OH! JOHN RAY....................................... 535
OKTOBERFEST...................................... 525
OLD HAVANA......................................... 524
OLDENBURGER .................................... 355
OMEGA ............................................ 289, 375
OMINO BIANCO MARSEILLAISE
FOAM .................................................. 425
ORANGINA MOVE ................................. 400
ORWOOLA............................................... 449
OXO .......................................................... 563
PAMELA GRANT VOLUMATIC ........... 330
PAMPERS................................................ 361
PARADISE LEGENDS TORPEDOES ... 283
PARTEC ................................................... 388
PARTEK................................................... 388
PASSION PARADISE ON EARTH ........ 339
PAZO ........................................................ 495
PEAK PERFORMANCE ......................... 386
PEARL DROPS........................................ 496
PEARL DROPS SMOKERS.................... 496
PENTAX................................................... 470
PERNAVITAL ......................................... 393
PÉROLA................................................... 522
PETIT DEJEUNER DE LA PEAU......... 401
PETROL ................................................... 397
PHARMOXIL ........................................... 489
PHYTOTHERAPIE FNH ........................ 536
PIAGET.................................................... 443
PIERRE CARDIN.................................... 331
PIERROT, LE POISSON-CLOWN......... 407
PINA COLADA ........................................ 413
PLUMBER GUARD ................................ 505
POLA COLA ............................................ 440
POLO........................................ 408, 497, 538
POLO LIFE.............................................. 408
POLO LINE ............................................. 408
POLO PASSION ...................................... 408
POLO RALPH LAUREN......................... 408
POSTKANTOOR ..................................... 379
POWER BALL ENERGY DRINK .......... 549
Vol. 95 TMR
POWER BULL......................................... 549
POXIPOL ................................................. 373
PRENS ..................................................... 547
PREPAGO DIGITAL............................... 573
PRINCE ................................................... 547
PRINCE FOURRE .................................. 548
PRO PAC.................................................. 275
PROCALYX...................................... 453, 454
PROGRESS.............................................. 397
PRO-PLAN............................................... 275
PROTABACO........................................... 511
PROTEX................................................... 375
PUBLIC CORNER .................................. 391
PUMA............................................... 467, 481
PUMS ....................................................... 361
PURO CUERO......................................... 358
QINGMAN ............................................... 338
QUAVERS................................................ 493
QUESIFRITOS ........................................ 359
QUILMES ................................................ 279
RADETZKY ............................................. 292
RALPH LAUREN .................................... 498
RAN TIAN ............................................... 338
REAL........................................................ 277
REAL EXPRESSION .............................. 323
RED BULL............................................... 549
REEBOK .................................................. 414
REED ....................................................... 561
REED BUSINESS INFORMATION ...... 561
RENOVA.................................................. 522
RESINEX ................................................. 536
RISO ......................................................... 479
ROAD RUNNER...................................... 328
ROCK ICE................................................ 359
ROSCOLINA............................................ 529
ROTANA .................................................. 492
ROUTE 66................................................ 550
ROYAL ..................................................... 538
RUFFLES ................................................ 494
SAF........................................................... 543
SAFIA....................................................... 486
SALSA CHIPS ......................................... 482
SALVATORE FERRAGAMO.................. 472
SAVOIR VIVRE....................................... 305
SEARA ..................................................... 306
SELECT ................................................... 390
SHENZHOU ............................................ 334
SHOWCASE ............................................ 308
SIGRA ...................................................... 297
SILK-WRITER......................................... 533
SILVANA ................................................. 486
SINTAB.................................................... 510
SINTRAX ................................................. 510
SIR WILLIAM WALLACE...................... 341
SKINBREAKFAST.................................. 401
SKY RADIO P5........................................ 366
SLIM·FAST.............................................. 376
SMACKS .................................................. 429
SMARTCORE .......................................... 532
SMARTIES ...................................... 286, 365
Vol. 95 TMR
SMARTMODULE.................................... 532
SMASH - ΣΜΑΣ ....................................... 428
SNS........................................................... 299
SPAZIO KRIZIA ...................................... 427
SPORTS ILLUSTRATED ....................... 327
SPORTS ILLUSTRATED SWIMSUIT... 326
STARBUCKS COFFEE........................... 345
STARBURST ........................................... 345
STEREO 3D INSIDE .............................. 540
STOP PLUTONIUM – L’ARRET VA
DE SOI................................................. 410
STREAMSERVE...................................... 354
STRIPECHECK....................................... 414
SUNVISION ............................................ 369
SUPER GLUE QUILOSA ....................... 529
SUPERGLUE........................................... 529
SURFERS ................................................ 301
SWEETY .................................................. 485
SWISS BUSINESS HUB ........................ 532
TALALAY................................................. 290
TAYTO CHIPSTICKS—CRUNCHY
POTATO AND CORN STICKS .......... 463
TAZO ........................................................ 495
TAZOS...................................................... 492
TEFLON................................................... 374
TELEVISION FASHION NETWORK ... 412
TERO REAL ............................................ 277
THE RITZ-CARLTON............................. 329
THORPEDO............................................. 283
TIBETISCHE MEDIZIN FNH ............... 536
TICKET.................................................... 304
TIFANY.................................................... 465
TIFFANY ................................................. 465
TIFFANY & CO ....................................... 465
TIGER ...................................................... 467
T-MOBIL.................................................. 571
TOFFIFEE ............................................... 468
T-ONLINE ............................................... 421
TORPEDOES........................................... 283
TRADITIONELLE CHINESISCHE
MEDIZIN FNH ................................... 536
TRÉSOR................................................... 296
TRIP TRAP .............................................. 537
TRIPP TRAPP ......................................... 537
581
T-SELECT................................................ 390
TTT........................................................... 395
TU BA GE ................................................ 334
TWEENY ................................................. 484
TWEETY .................................................. 483
TWEETY’S NURSERY ........................... 485
U RAFFAELE UNGARO ........................ 473
UNGARO ................................................. 473
UNION ..................................................... 504
UNION SUPA.......................................... 504
UNITED COLORS OF BENETTON ...... 389
UNITED STEAKS OF AMERICA.......... 424
UNO ......................................................... 454
UNO MONEY TRANSFERS .................. 454
URBAN ACTIVE ..................................... 452
URBAN DEFENCE................................. 452
URBAN SURVIVAL................................ 452
VALENTINO ........................................... 539
VALENTINO RUDY ............................... 539
VARESE................................................... 307
VECTOR .................................................. 414
VEGA ....................................................... 346
VEUVE CLICQUOT................................ 319
VIAGRA ........................................... 297, 489
VIGRO...................................................... 489
VILLA KUNTERBUNT .......................... 292
VIRIDIL ................................................... 374
VISION CENTER SUDAMERICA......... 325
VITA ......................................................... 394
VITALINE................................................ 394
VIVRE ...................................................... 305
VOGUE .................................................... 362
VOLUMATIC........................................... 330
VOLVO..................................................... 507
WE KEEP OUR PROMISES .................. 532
WEGA ...................................................... 346
WELLNESS COTTON ............................ 420
WIBERG .................................................. 387
WINDOWS....................................... 299, 411
WINNER TACO....................................... 296
X.ACTO .................................................... 360
YKK .......................................................... 396
Η ΤΕΧΝΟΛΟΓΙΑ ΠΟΥ ΑΠΟ∆Ι∆ΕΙ ........ 424
ΦΟΡΜΟΥΛΑ 1......................................... 432
R
T
TTAB – E-Learning
June 6 – 26, 2005
Gain confidence in appearing before the
Trademark Trial and Appeal Board (TTAB).
INTA’s customized Internet-based learning presents an efficient and
cost-effective way to learn about successfully advocating before the TTAB.
This course is presented in a practical three-part syllabus:
Session 1 – Overview of TTAB Proceedings and Strategic Considerations
Session 2 – Pre-Trial Procedures for Inter Partes Proceedings
Session 3 – Trial Practice and Settlement
The course is for attorneys seeking greater knowledge and understanding of
TTAB, as well as advanced paralegals and other trademark administrators and
professionals.
Top reasons to register:
•
•
•
•
•
Learn techniques to prepare your case
Increase your success record before the TTAB
Avoid costly travel and lodging expenses
Experience education from your home or office at your convenience
Earn CLE credits
Visit www.inta.org/events/e-learning.html to learn more about the
convenience of our e-learning courses.
Also look for:
Advanced TTAB Roundtables
Meet colleagues at this interactive and convenient lunchtime discussion
held in numerous cities throughout the United States.
July 11 – 22, 2005
Visit www.inta.org/events to register and for more information.