And...Action! Producers need their IP Experts before every take

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Stephany Ramsey
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ECTA 26th Annual Meeting - DEAUVILLE France, 20-23 June 2007 And...Action! Producers need their IP Experts before every take TABLE OF CONTENTS 1 Office Practice 1 1.

1 ECTA 26th Annual Meeting - DEAUVILLE France, June 2007 And...Action! Producers need their IP Experts before every take TABLE OF CONTENTS 1 Office Practice 1 1.Enforcement OECD Report 2 Case Law 2 1 Court of First Instance CFI - T-339/05 - LOKTHREAD The mark is descriptive for the goods CFI - T-190/05 - TWIST & POUR The sign is devoid of any disctinctive character CFI - T-441/05 - I dev Article 7(1)(b) CTMR makes no distinction between different types of signs with regard to distinctiveness CFI - T-207/06 - EUROPIG The mark is descriptive for the goods CFI - T-105/05 - WATERFORD vs Waterford dev There is a degree of complimentarity between some articles of glassware and wine CFI - T-60/04 to T-64/04 BUD vs BUD Proof of the reputation of an appellation of origin CFI - T-53/04 to T-59/04 BUDWEISER BIER vs BUDWEISER Proof of the reputation of an appellation of origin CFI - T-57/04 and T-71/04 BUDWEISER BIER vs Budweiser dev Proof of the reputation of an appellation of origin CFI - T-167/05 FENJAL vs FENEL dev The trade marks create different overall impression

2 2 2 European Court of Justice ECJ - C-344/05 P LIMONCHELO vs Limoncello dev It is only if all the other components of the mark are negligible that the assesment of the similarity can be carried out solely on basis of the dominant element. ECJ - C-246/05 Le Chef de Cuisine Date of completion of the registration procedure - proper reasons for non use 3 ECTA news 3 1 ECTA Gazette 1 Office Practice 1 1 Enforcement OECD (The Organization for Economic co-operation and Development) releases a new report on the Economic Impact of Counterfeiting and Piracy. Quantitative analysis carried out by the OECD indicates that the volume of tangible counterfeit and pirated products in internatinal trade could be up to 200 billion. This figure does not, however include counterfeit and pirated products that are produced and sonumed domestically, nor does it include the significant volume of pirated digital products that are being distributed via de Internet. If these items were added, the total magnitude of counterfeiting and piracy worldwide could well be several hundred billion dollars more. Full communication can be found at: pdf 2

3 2 Case Law 2 1 Court of First Instance of the European Court of Justice On absolute grounds for refusal 1. Case No: T-339/05 Parties: MacLean-Fogg v OHMI LOKTHREAD class: 6 Contested decision: R 1122/ dated 20 June 2005 Taken as a whole, the term lokthread means a thread that locks, in other words, a thread structure used in a locking mechanism (para. 48). Although the term lock does not mean anything in English, that term will naturally be assimilated by the English speaking public to the word lock which does have a meaning in English (para. 45). Therefore, the mere combination of the words lock and thread, the first being descriptive of the intended use and the second of a technical characteristic of the goods concerned, is itself also descriptive (para. 51). The Board of Appeal s decision is upheld. 2. Case No: T-190/05 Parties: Sherwin-Williams v OHMI TWIST & POUR class: 21 Contested decision: R 755/ dated 22 February 2005 Taken as a whole, the word mark directly describes the action in particular of opening a container with a cap which has to be turned before the liquid contents can be poured (para. 54). Therefore, the sign is devoid of any distinctive character (para. 66). The Board of Appeal s decision is upheld.

4 3. Case No: T-441/05 Date: 13 June 2007 Parties: IVG Immobilien v OHMI classes: 35, 36, 37, 39, 42 and 43 Contested decision: R 559/ dated 1 September 2005 The Board of Appeal decided that the mark lacked of any distinctive character because the claimed mark lacked notable specific graphic features in comparison to the standard Times New Roman character font. It implicitely took the view that a printing symbol forming part of a standardised character font did not in itself have the minimum degree of distinctiveness. The Court of First Instance considers that to that extent, the Board of Appeal deprived of all practical application the principle that article 7 (1) (b) of Regulation 40/94 makes no distinction between different types of signs with regard to the requirement for distinctiveness (para. 48). By deducing, from the absence of notable specific graphic features in comparison to a standard character font, that the claimed mark lacked distinctiveness, the Board of Appeal incorrectly applied Article 4 and Article 7 (1) (b) of Regulation n 40/94. The Board of Appeal s decision is annuled. 4. Case No: T-207/06 Date: 14 June 2007 Parties: Europig v OHMI EUROPIG classes: 29 and 30 Contested decision: R 1425/ dated 31 May 2006 The mark is descriptive as it will be considered by the relevant public as indicating that the goods are taken from pigs and are originated from the European Union (para. 34). The Board of Appeal s decision is upheld.

5 On relative grounds for refusal 1. Case No: T-105/05 Parties: Assembled Investments (Proprietary) v OHMI - Waterford Wedgwood WATERFORD Earlier trade mark classes: 3, 8, 11, 21, 24 and 34 Contested decision: R 240/ dated 15 December 2004 Articles of glassware and wine are not similar goods (para. 35). There is a degree of complimentary between some articles of glassware, in particular wine glasses, carafs and decanters, on the one hand, and wine, on the other hand, in so far as the first group of products is intended to be used for drinking wine. However, in so far as wine may be drunk from other vessels and the articles of glassware can be used for other purposes, that complementarity is not sufficiently pronounced for it to be accepted that the goods are similar (para. 34). The Board of Appeal s decision is annuled. 2. Case No: T-60/04, T-61/04, T-62/04, T-63/04, T-64/04 Parties: Budejovicky Budvar v. Anheuser-Busch and OHIM BUD BUD Earlier appellation of origin classes: 9, 14, 16, 21, 35, 29, 30 and 32

6 Contested decision: R 107/2003-2, R 111/2003-2, R 114/2003-2, R 114/ and R 122/ of 3 December 2003 Anheuser-Busch lodged five applications for registration of the word mark BUD with respect to goods in Classes 9, 14, 16, 21, 25, 29 and 30. Budvar filed an opposition, on the basis of Article 8 (4) of Regulation n 40/94, on the appellation of origin BUD, protected in particular in France by virtue of Article L of the French Rural Code which provides that the geographical name which constitutes an appellation of origin, or any other reference suggesting it, may not be used.. for any other product or service if that use is likely to misappropriate or weaken the reputation of the appellation of origin. In the contested decisions, the Board of Appeal stated that Budvar has not adduced any evidence to show that its appellation of origin possessed a reputation in France. The Board of Appeal considered that such a reputation could not be presumed and that Budvar had failed to show how the reputation of the appellation of origin, assuming it existed, would be likely to be misappropriated or weakened if Anheuser- Busch were allowed to use the word mark in respect of the goods in Classes 9, 14, 16, 21, 25, 29 and 30. The Court of First Instance upholds the Board of Appeal s decision. In particular, concerning the proof of the reputation of an appellation of origin, the Court states that such a reputation may not be presumed under the French legal provision or the registration under the Lisbon Agreement. The presumptions of reputation may not be regarded as objective elements making it possible to establish the reputation of the appellation of origin in question in France or, where applicable, to measure its extent (para. 184 and 185). 3. Case No: T-53/04, T-54/04, T-55/04, T-56/04, T-58/04, T-59/04 Parties: Budějovický Budvar v OHMI - Anheuser-Busch BUDWEISER BIER BUDWEISER Earlier appellation of origin classes: 9, 14, 16, 21, 25, 29, 30, 32, 35, 38, 41 and 42 Contested decision: R 820/2001-2, R 822/2001-2, R 823/2001-2, R 921/2001-2, R 29/ and R 32/ of 3 December 2003 The argumentation in this decision is the same as in the BUD/BUD decision reported under 2. above.

4. Case No: T-57/04, T-71/04 Parties: Budějovický Budvar v OHMI - Anheuser-Busch BUDWEISER BIER Earlier appellation of origin classes: 16, 21, 25, 30 and 32 Contested decision: R 1024/2001-2 and R

7 4. Case No: T-57/04, T-71/04 Parties: Budějovický Budvar v OHMI - Anheuser-Busch BUDWEISER BIER Earlier appellation of origin classes: 16, 21, 25, 30 and 32 Contested decision: R 1024/ and R 1000/ of 3 December 2003 The argumentation in this decision is the same as in the BUD/BUD decision reported under 2. above. 5. Case No: T-167/05 Date: 13 June 2007 Parties: Grether v OHMI - Crisgo (Thailand) Fenjal class: 3 Earlier trade mark Contested decision: R 250/ dated14 October 2004 The trade marks are visually (para. 66 to 68) and aurally (para. 69 and 70) different. Neither of the words in question has any meaning in the majority of the Members states (para 71). The trade marks create different overall impression (para. 72). The Board of Appeal s decision is upheld. 7

8 2 2 European Court of Justice On relative grounds for refusal 1. Case No: C-344/05 P Parties: Office for Harmonisation in the Internal Market v Shaker LIMONCHELO Earlier trade mark class: 3 Contested decision: T-7/04 dated 15 June 2005 In the contested decision, the Court of First Instance firstly held that the mark for which registration was sought contained a dominant element comprising the representation of a round dish decorated with lemons. It then inferred that it was not necessary to examine the phonetic or conceptual features of the other elements of that mark. It finally concluded that the dominance of the figurative representation of a round dish in comparison with the other components of the mark prevented any likelihood of confusion arising from a visual, phonetic or conceptual similarities between the words limoncello and limonchelo. The ECJ annuls the decision on the ground that the CFI did not carry out a global assessment of the likelihood of confusion of the marks at issue (para. 40). The comparison between trade marks must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark not, in certain circumstances, be dominated by one or more of its components (para. 41). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (para. 42).

9 2. Case No: C-246/05 Date: 14 June 2007 Parties: Armin Häupl V. Lidl Stiftung & Co. Le Chef de Cuisine class: 3 Contested decision: R 250/ dated14 October 2004 The following questions were referred to the European Court of Justice in respect with article10 (1) of the First Council Directive of 21 December 1988 which reads as follows: If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use. 1. Does the date of the completion of the registration procedure mean the start of the period of protection? 2. Are there proper reasons for non-use of a mark if the implementation of the corporate strategy being pursued by the trade mark proprietor is delayed for reasons outside the control of the undertaking, or is the trade mark proprietor obliged to change his corporate strategy in order to be able to use the mark in good time? The ECJ answers as follows : 1.The date of the completion of the registration procedure within the meaning of Article 10(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be determined in each Member State in accordance with the procedural rules on registration in force in that State 2. Article 12(1) of Directive 89/104 must be interpreted as meaning that obstacles having a direct relationship with a trade mark which make its use impossible or unreasonable and which are independent of the will of the proprietor of that mark constitute proper reasons for non-use of the mark. It is for the national court or tribunal to assess the facts in the main proceedings in the light of that guidance. To find the full text of the national decisions mentioned in ECTA Flashes, please search the ECTA Info Database including the free Darts Europe Case Law database available on ECTA s website in the members only section.

10 3 ECTA News 3 1 ECTA Gazettes If you would like to publish an Article in ECTA s Gazette, please note that the deadline for submission for the next publication is July 31, Articles should be sent to Sandrine Peters at: sandrine.peters@ecta.org. 10

JUDGMENT OF THE COURT (Third Chamber) 12 June 2007 *

OHIM v SHAKER JUDGMENT OF THE COURT (Third Chamber) 12 June 2007 * In Case C-334/05 P, APPEAL pursuant to Article 56 of the Statute of the Court of Justice, brought on 9 September 2005, Office for Harmonisation