The Law Journal of the International Trademark Association. International Annual Review

Transcription

1 The Trademark Reporter The Law Journal of the International Trademark Association International Annual Review The Eighteenth Yearly Review of International Trademark Jurisprudence May June, 2011 Vol. 101 No. 3

2 INTERNATIONAL TRADEMARK ASSOCIATION Powerful Network Powerful Brands 655 Third Avenue, New York, NY Telephone: +1 (212) Facsimile: +1 (212) OFFICERS OF THE ASSOCIATION GERHARD R. BAUER... President GREGG MARRAZZO... President Elect TOE SU AUNG... Vice President BRET I. PARKER... Vice President MEI-LAN STARK... Treasurer LUCY NICHOLS... Secretary DALE CENDALI... Counsel ALAN C. DREWSEN... Executive Director NIGAMNARAYAN ACHARYA JOSEPH ADAMS KENT AUBERRY WILLIAM G. BARBER PHILIP BARENGOLTS RONIT BARZIK-SOFFER MARTIN BERAN DANIEL BERESKIN STEFANIA BERGIA CHRISTOPHER BOLINGER KAREN BROMBERG WILLIAM M. BRYNER SHELDON BURSHTEIN SARAH BUTLER PINA CAMPAGNA RENATA CARNEIRO PAMELA CHESTEK STEPHEN JADIE COATES TOBIAS COHEN JEHORAM LAURENCE COLTON RUTH CORBIN MICHAEL S. DENNISTON SHERRI FELT DRATFIELD LINDA DU CATE ELSTEN CHRISTIAN ERNST EMILIO FERRERO SAMUEL FIFER GERALD L. FORD HOLLY M. FORD THOMAS M. GALGANO GARET K. GALSTER JASON M. GONDER OSCAR H. GONZALEZ MILES J. ALEXANDER WILLIAM M. BORCHARD CLIFFORD W. BROWNING SANDRA EDELMAN ANTHONY L. FLETCHER ARTHUR J. GREENBAUM WERNER JANSSEN, JR. EDITORIAL BOARD Editor-in-Chief LANNING G. BRYER Senior Editors JESSICA ELLIOTT GLENN MITCHELL DANIEL C. GLAZER JONATHAN MOSKIN KATHLEEN E. MCCARTHY PIER LUIGI RONCAGLIA Editor Managing Editor Senior Periodicals Editor BEVERLY HARRIS LISA BUTKIEWICZ JOEL L. BROMBERG Editors MASCHA GRUNDMANN NATALIE HANLON-LEH GUY HEATH LAURA HEFFNER ERIN M. HICKEY KRISTIN BLEMASTER HOGAN IRENE HUDSON BRUCE ISAACSON JAY JOHNSTON ANDREW B. KATZ NANCY KENNEDY DARLENE S. KLINKSIECK NISHAN KOTTAHACHCHI ROLAND KUNZE ANN LAMPORT HAMMITTE KATHLEEN LEMIEUX REBECCA LIEBOWITZ NELS T. LIPPERT PAUL C. LLEWELLYN ILARIA MAGGIONI MATTHEW D. MARCOTTE ANNE S. MASON DOUGLAS N. MASTERS JULIA ANNE MATHESON J. DAVID MAYBERRY J. THOMAS MCCARTHY AMANDA LOUISE MCCOY ZACHARY D. MESSA CHRISTOPHER MICHELETTI NANCY A. MILLER GLADYS MIRANDAH THOMAS MUDD ALISON NAIDECH TOMOHIRO NAKAMURA Advisory Board CHARLOTTE JONES ROBERT M. KUNSTADT THEODORE C. MAX VINCENT N. PALLADINO JOHN B. PEGRAM ALLAN S. PILSON JOANNE NARDI MARIA K. NELSON MASA NODA ELISABETH OHM BRENDAN J. O ROURKE NINA M. OSSEIRAN GALE R. PETERSON NEAL PLATT SHAHRZAD POORMOSLEH GENEVIEVE M. PREVOST KENT R. RAYGOR SUSAN D. RECTOR DEBRA RESNICK ANDREA RUSH JESSICA SACHS MEERA C. SANKHARI KURT SAUNDERS VALENTINA SERGEYEVA JUDITH SCHVIMMER GIULIO ENRICO SIRONI PRESCOTT SMITH RANDY S. SPRINGER PAUL TACKABERRY EDWARD E. VASSALLO MATTHEW WALCH JORDAN S. WEINSTEIN JOHN L. WELCH BRYAN K. WHEELOCK NEIL J. WILKOF KENNETH L. WILTON HELEN L. WINSLOW JOSEPH S. YANG RAFFI V. ZEROUNIAN AMIT ZUCKERSTEIN 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 Reporter are those of the individual authors. The Trademark Reporter (ISSN X) is published bimonthly by the International Trademark Association, 655 Third Avenue, New York, NY USA. Periodicals postage paid at New York, NY POSTMASTER: Send address change to The Trademark Reporter, 655 Third Avenue, New York, NY USA. Annual subscription rate for members is $90 (single copy $20), which is included in their annual dues. Subscriptions to nonmembers are available, in the interests of education, only to schools, public libraries and government agencies at a cost of $60 (single copy $20) per year. Rates for membership on request. Material may not be reproduced without permission. Claims for missing numbers must be made within the month following the regular month of publication. The publishers expect to supply missing numbers free only when losses have been sustained in transit and when the reserve stock will permit. Reprints of most leading articles and other material available for nominal charge on inquiry to INTA. INTA, the INTA logo, International Trademark Association, Powerful Network Powerful Brands, The Trademark Reporter, and inta.org are trademarks, service marks and/or registered trademarks of the International Trademark Association in the United States and certain other jurisdictions.

3 The Trademark Reporter (USPS ) Copyright 2011, by the International Trademark Association All Rights Reserved Vol. 101 May-June, 2011 No. 3 TOPICAL OUTLINE INTERNATIONAL ANNUAL REVIEW The Eighteenth Yearly Review of International Trademark Jurisprudence Editor s Note Part I. General A. Use 1. Prior Use 2. Intent to Use 3. First to File Versus First to Use 4. Quantity and Quality of Use B. Descriptiveness 1. Generic 2. Merely Descriptive 3. Deceptively Misdescriptive 4. Geographically Primarily Descriptive/ Deceptively Misdescriptive 5. Suggestive * 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 101 TMR (2011).

4 C. Distinctiveness 1. Inherent Distinctiveness 2. Acquired Distinctiveness D. Likelihood of Confusion 1. Similarity of Marks 2. Similarity of Goods or Services a. Product Configuration b. Trade Dress and Packaging 3. Conflict Between Trademarks and Corporate Names E. Bad Faith F. Famous and Well-Known Marks G. Acquisition of Trademark Rights 1. Assignment 2. Licensing H. Exhaustion of Trademark Rights 1. Implied Consent I. Bankruptcy J. Coexistence Agreements Part II. Registration A. Requirements for Acceptable Filings B. Identification of Goods or Services C. Registrability 1. Marks a. Word Marks b. Personal Names c. Corporate and Trade Names d. Geographical Names e. Letters and Numbers f. Device and Design Marks g. Two- and Three-Dimensional Marks h. Official Marks i. Service Marks

5 j. Slogans k. Nontraditional Marks l. Other Types of Marks 2. Trade Dress 3. Geographical Indications/Appellations of Origin 4. Collective Marks. 5. Certification Marks 6. Domain Names 7. Copyright. D. Objectionable Features 1. Immoral or Scandalous 2. Deceptive 3. Primarily or Aesthetically Functional 4. Violating Public Order 5. Official Name 6. Flags, Coats of Arms, and Other Insignia E. Examination and Opposition F. Other Issues 1. Disclaimers 2. Joint Ownership 3. Foreign Registrations G. Trademark Incontestibility H. Amendments 1. Marks 2. Registrations I. Post-Registration Evidence of Use and Renewals J. Protection for Nonrenewed Trademark Part III. Enforcement A. Infringement and Other Forms of Unfair Competition 1. Dilution a. Blurring b. Tarnishment 2. Passing Off 3. Counterfeiting

6 a. Civil Actions b. Criminal Actions c. Customs Actions 4. Unfair, Unauthorized, or Improper Use 5. Domain Names a. Cybersquatting b. Typosquatting 6. Other Internet Issues a. Online Ads b. Hyperlinks c. Metatags d. Sponsored Advertising/Keywords 7. Advertising 8. Parallel Imports/Gray Marketing 9. Infringement of Unregistered Trademarks 10. Infringement of Right of Publicity B. Procedure C. Other Issues 1. International Conventions 2. Detriment/Unfair Advantage D. Defenses 1. Descriptive Use 2. Equitable Defenses a. Fair Use b. Good Faith c. Laches d. Disclaimer e. Estoppel 3. Parody 4. Absence of Willful Intent 5. Prior Use E. Remedies 1. Injunction 2. Damages 3. Declaration of Invalidity 4. Seizure 5. Production of Documents F. Loss of Trademark Rights

7 1. Non-Use 2. Lapsing of Registration 3. Forfeiture 4. Cancellation 5. Nullification 6. Declaration of Invalidity 7. Attachment of Trademark G. Valuation and Tax Treatment H. Court Proceedings 1. Formalities for Acceptable Filings 2. Forum Conflicts 3. Improper Pleadings 4. Evidence 5. Counsel, Conflicts 6. Appellate Procedure a. Jurisdiction and Authority b. Who May Appeal? 7. Staying of Court Action 8. Payment of Legal Fees I. International Issues

8 The Trademark Reporter INTERNATIONAL ANNUAL REVIEW THE EIGHTEENTH YEARLY REVIEW OF INTERNATIONAL TRADEMARK JURISPRUDENCE Editor s Note The Board of Editors of THE TRADEMARK REPORTER welcomes you to its third issue of 2011, the INTERNATIONAL ANNUAL REVIEW: The Eighteenth Yearly Review of International Trademark Jurisprudence. This issue of the International Annual Review (IAR) was prepared by a Task Force under the leadership of IAR Editors Matthew Harris, Paul Tackaberry, and Peter E. Wild. They were ably assisted by Lisa Butkiewicz, TMR Managing Editor; Joel L. Bromberg, Senior Periodicals Editor; and Beverly Harris, Editor. The IAR is organized in alphabetical order by country or jurisdiction and, within each country or jurisdiction, by subject and topic. To ensure continuity, if a particular subject or topic is not covered in this issue, its absence will be noted in the Table of Contents by an asterisk (*). This issue is dedicated to our colleague Carmen Lichtenstein, of Lichtenstein, Körner & Partners in Stuttgart, Germany, who died on May 23, Carmen had been co-contributor for Germany since the very first issue of the International Annual Review (1993). She was noted for her warm demeanor and team spirit. She will be sorely missed. The Board of Editors wishes to thank those members of the Task Force who have contributed, as well as those who continue to monitor developments in their country or jurisdiction. Vol. 101 TMR 805

9 806 Vol. 101 TMR Members of the IAR Task Force are listed below. Where a member is responsible for coverage of multiple jurisdictions, all jurisdictions covered are listed. Jurisdiction Name Firm Address Africa (majority of the continent) and Channel Islands (Guernsey and Jersey) Wayne Meiring Spoor and Fisher Jersey St. Helier, Jersey, Channel Islands Albania and Romania Panagiotis Drakopoulos Eleni Lappa Adrian Roseti Drakopoulos Law Firm Andorra Manuel Pujadas Asturgo, Mateu & Associates Anguilla Kenneth Porter Keithley Lake & Associates Argentina Iris V. Quadrio Marval, O Farrell & Mairal Australia and Papua New Guinea Athens, Greece Andorra La Vella, Principality of Andorra Anguilla, British West Indies Buenos Aires, Argentina Trevor K. Stevens Davies Collison Cave Sydney, Australia Austria Peter Israiloff Barger, Piso & Partner Vienna, Austria Benelux Michiel Rijsdijk Arnold + Siedsma Amsterdam, Netherlands Bermuda Donna M. Pilgrim Conyers, Dill & Pearman Brazil Valdir Rocha Mariana Vicentini Veirano Advogados Associados Hamilton, Bermuda Rio de Janeiro, Brazil Bulgaria Iana Roueva PETOŠEVIĆ Sofia, Bulgaria Canada Paul Tackaberry Ridout & Maybee LLP Chile Rodrigo Velasco S. Alessandri & Compañia China, People s Republic Colombia Community Trade Mark Hailing Zhang Jorge Chávarro Natalia Tobón China Patent Agent (HK) Ltd. Cavelier Abogados Maria Athanasiadou Dr. Helen G. Papaconstantinou & Associates Toronto, Canada Santiago, Chile Wanchai, Hong Kong Bogotá, Colombia Athens, Greece Costa Rica Denise Garnier González-Uribe San Jose, Costa Rica

10 Vol. 101 TMR 807 Jurisdiction Name Firm Address Cuba J. Sanchelima Sanchelima & Associates, P.A. Miami, Florida Czech Republic Thomas E. Mudd Zeiner & Zeiner Prague, Czech Republic Denmark Peter Gustav Olson MAQS Law Firm Copenhagen, Denmark Dominican Republic Orlando Jorge Mera Patricia Villegas Jorge Mera & Villegas Santo Domingo, Dominican Republic Ecuador Egypt El Salvador Estonia European Court of Justice (now CJEU) María Cecilia Romoleroux Nazeeh A. Sadek Elias Edy Guadalupe Portal de Velasco Jüri Käosaar Kärt Laigu Adam N. Cooke Louise Zafer Danielle Amor Corral & Rosales A. Sadek Elias Law Office Portal & Asociados Käosaar & Co. Lovells LLP Quito, Ecuador Cairo, Egypt San Salvador, El Salvador Tartu, Estonia London, England Finland Seija M. Saaristo Benjon Oy Helsinki, Finland France and French Territories (DOM and TOM) Marc-Roger Hirsch Cabinet Hirsch Paris, France Germany Kay-Uwe Jonas Jonas Rechtsanwaltsgesellschaft mbh Ursula Stetzenmüller Lichtenstein, Körner & Partners Cologne, Germany Stuttgart, Germany Ghana Nii Arday Wontumi AELEX Accra, Ghana Greece Helen G. Papaconstantinou Maria Athanasiadou Dr. Helen G. Papaconstantinou & Associates Athens, Greece Guatemala Analucía Carrillo Carrillo y Asociados Guatemala City, Guatemala Gulf States (Kuwait, United Arab Emirates, Bahrain, and Oman) Farrukh Irfan Khan United Trademark & Patent Services Honduras Ricardo Anibal Mejia Bufete Mejia & Asociados Lahore, Pakistan San Pedro Sula, Honduras

11 808 Vol. 101 TMR Jurisdiction Name Firm Address Hong Kong, Cambodia, Laos, and Macao Barry Joseph Yen So Keung Yip & Sin Central, Hong Kong Iceland Skúli Th. Fjeldsted Fjeldsted, Blöndal & Fjeldsted Reykjavik, Iceland India Pravin Anand Anand & Anand New Delhi, India Indonesia Daru Lukiantono Hadiputranto, Hadinoto & Partners Iran Alireza Laghaee Dr. Ali Laghaee & Associates Inc. Jakarta, Indonesia Tehran, Iran Ireland Brenda O Regan F.R. Kelly & Co. Dublin, Ireland Israel Shlomo Cohen Dr. Shlomo Cohen & Co. Tel-Aviv, Israel Italy and San Marino Pier Luigi Roncaglia Gabriele Lazzeretti Jamaica Anne-Marie C. White-Feanny Studio Legale SIB Livingston, Alexander & Levy Japan Kazuko Matsuo Nakamura & Partners Jordan Mazen K. Dajani Ghaida M. Ala Eddein Saba & Co. Intellectual Property Florence, Italy Kingston, Jamaica Tokyo, Japan Amman, Jordan Latvia Vladimir Anohin Agency TriaRobit Rigar, Latvia Kosovo Kujtesa Nezaj SDP KOSOVE Pristina, Kosovo Liechtenstein Markus H. Wanger Wanger Vaduz, Liechtenstein Lithuania Rūta Pumputienė Edita Ivanauskienė Gediminas Ramanauskas Lideika, Petrauskas, Valiunas ir partneriai LAWIN Vilnius, Lithuania Malaysia Jin Nee Wong Wong Jin Nee & Teo Kuala Lumpur, Malaysia Mexico Middle East and North Africa (Iraq, Lebanon, Morocco, Qatar, Saudi Arabia, Tunisia, and Yemen) New Zealand Antonio Belaunzaran Luis C. Schmidt Zeina Salameh Georr John B. Hackett Sooyun Lee Olivares & Cia. Saba & Co. Intellectual Property Head Office A J Park Mexico City, Mexico Beirut, Lebanon Auckland, New Zealand

12 Vol. 101 TMR 809 Jurisdiction Name Firm Address Nicaragua Guy Jose Bendana- Guerrero Nigeria Theophilus I. Emuwa Guy Jose Bendana- Guerrero AELEX Managua, Nicaragua Lagos, Nigeria Norway Kjersti Rogne Acapo AS Bergen, Norway Pakistan and Bangladesh Panama Hasan Irfan Khan Carlos Bolivar Pedreschi United Trademark & Patent Services Pedreschi & Pedreschi Paraguay Denise Modica Bareiro Modica & Asociados Peru José Barreda Micaela Mujica Barreda Moller Philippines Rogelio Nicandro Romulo, Mabanta, Buenaventura, Sayoc & De Los Angeles Poland Portugal Puerto Rico Republic of South Africa, Botswana, Lesotho, Namibia, Swaziland, and Zambia Russian Federation Jaroslaw Kulikowski Beata Wojtkowska Rosário Cruz Garcia Nuno Cruz Federico Calaf- Legrand Kulikowska & Kulikowski Furtado, S.A. J. Pereira da Cruz, S.A. Reichard & Calaf, P.S.C. Lahore, Pakistan Panama City, Panama Asunción, Paraguay Lima, Peru Manila, Philippines Warsaw, Poland Lisbon, Portugal Lisbon, Portugal San Juan, Puerto Rico Charles E. Webster Spoor and Fisher Pretoria, Republic of South Africa Eugene A. Arievich Baker & McKenzie Moscow, Russia CIS Serbia Mihajlo Zatezalo PETOŠEVIĆ Belgrade, Serbia Singapore Sheena Jacob ATMD Bird & Bird LLP Singapore Slovenia Eva Gostiša Jadek & Pensa Ljubljana, Slovenia South Korea Junghoon Kenneth Oh Bae, Kim & Lee IP Group Spain Pablo González- Bueno González-Bueno & Asociados St. Kitts-Nevis Lindsay F.P. Grant Veira, Grant & Associates Seoul, South Korea Madrid, Spain Basseterre, St. Kitts Sweden Bengt Nihlmark Bengt Nihlmark AB Stockholm, Sweden Switzerland Peter E. Wild Wild Schnyder AG Zurich, Switzerland

13 810 Vol. 101 TMR Jurisdiction Name Firm Address Syria Ibrahim A. Tarazi Saba & Co. Intellectual Property Taiwan Kwan-Tao Li C.V. Chen Lee and Li Thailand Parichart Monaiyakul Tilleke & Gibbins International Ltd. Turkey M.N. Aydin Deriş Deriş Patents & Trademarks Agency Damascus, Syria Taipei, Taiwan Bangkok, Thailand Istanbul, Turkey Ukraine Taras Kulbaba PETOŠEVIĆ Kiev, Ukraine United Kingdom Matthew Harris Waterfront Partnership Uruguay Juan A. Pittaluga Pittaluga & Associates Venezuela Vietnam Rafael A. Márquez Losada Nguyen Tran Bat Pham Thi Thu Ha Márquez & Márquez Abogados Investconsult Group London, England Montevideo, Uruguay Caracas, Venezuela Hanoi, Vietnam

14 Vol. 101 TMR 811 ARGENTINA I.D.3. Conflict Between Trademarks and Corporate Names Rocío del Sur S.A., the plaintiff in this case, is the owner of the trademark ROCÍO DEL SUR, covering goods and services in Classes 29, 30, 31, and 35. The defendant is incorporated under the name Arándanos del Sur S.R.L. and uses Arándanos del Sur as its trade name. Rocío del Sur filed a complaint seeking to have the defendant discontinue its use of the trade name Arándanos del Sur and instead adopt a non-confusingly similar name. The defendant argued that the plaintiff s action had become statute-barred because the legal proceedings were initiated after the expiration of the one-year term set forth as a statute of limitations by Section 29 of the Argentinean Trademark Law. 1 The Court of First Instance admitted the defendant s objection and ruled that the plaintiff s action had lapsed because it was brought in 2007 and the defendant had been using its trade name since it launched its business in The court found that the plaintiff became aware of the defendant s existence and activities before the date alleged in the bill of complaint, noting that both companies produced and commercialized the same product (blueberries) and operated in the same region. Division I of the Federal Court of Appeals reversed the lower court s decision. 2 It ruled that the defendant s business became public in 2006, when the defendant actually began commercializing its products. The court noted that between 2004 and 2006 Arándanos del Sur published its by-laws in the Official Gazette, purchased premises, and made investments, all of which were acts preparatory to the setting up of a business, and third parties normally are not cognizant of such acts. Therefore, it concluded that when the plaintiff initiated legal proceedings the action had not become statute-barred. 1. Law on Trademarks and Designations, Law No. 22,362, Dec. 26, Section 29 provides: Anyone with a legitimate interest may oppose the use of a designation [i.e., a trade name]. Such action shall be statute-barred one year from the time when the third party commenced public and manifest use thereof, or from the date the plaintiff became aware of the use thereof. 2. Rocío del Sur S.A. v. Arándanos del Sur S.R.L., Case No. 5394/07 (Federal Court of Appeals, Division I, Nov. 26, 2009), available at document no. AR/JUR/57878/2009, and document no. MJ-JU-M AR.

15 812 Vol. 101 TMR Furthermore, even though it found that the trade names Arándanos del Sur and Rocío del Sur were not confusingly similar, the appellate court ordered the defendant to discontinue the use of its trade name, on the ground that arándanos ( blueberries ) was the usual or necessary name of the defendant s product and, as such, it was not eligible for registration as a trademark under Argentine law. The Federal Court of Appeals also ordered the defendant to modify its corporate name, as it had determined that, according to the particulars of this case, the use of said name could not be separated from the use of the trade name. This decision clarifies which acts constitute first public use of a trade name for purposes of determining when the statute of limitations of Section 29 of the Trademark Law starts to run. II.C.1.f. Device and Design Marks Eduardo Alfredo Valot, an Argentinean individual, filed a trademark application for a towel paper dispenser design in Class 20 (see below). The application was opposed by La Papelera del Plata S.A. on the basis that the design was generic and violated the provisions of Sections 2(a), 2(b), and 3(d) of the Trademark Law. 3 La Papelera further argued that packagings and containers had to be protected as industrial models. 3. Section 2 of the statute provides, in pertinent part: The following shall not be considered as trademarks, nor shall they be capable of registration: (a) names, words and signs that constitute the necessary or usual designation of the product or service to be distinguished thereby, or that 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(d) provides: The following may not be registered:... trademarks which are liable to lead to error as to the nature, properties, merit, quality, manufacturing methods, purpose, origin, price or other characteristics of the goods or services that they are intended to distinguish.

16 Vol. 101 TMR 813 The Court of First Instance held that the defendant s mark showed sufficient distinctiveness, and dismissed the complaint. On appeal, Division II of the Federal Court of Appeals upheld the first instance decision. 4 The court determined that industrial models protect the shape or appearance added or applied to an industrial product, conferring upon it ornamental character. Therefore, the defendant s particular design could be afforded protection only as a trademark. The appellate court also held that the design could not be considered as the necessary shape of the product at hand for it was neither the usual form of that sort of device nor the form imposed by the nature or functionality of the product. In addition, the court found that the defendant s dispenser and others in the market exhibited only a structural or functional similarity, while they differed in their external characteristics. This decision sets out some guidelines regarding the protection of package designs under local trademark law. II.D.1. Immoral or Scandalous MAPA GmbH, Gummi- und Plastikwerke, a German firm, filed a trademark application for BILLY BOY & Design, consisting of a phallic drawing (see below), for condoms in Class 10. The National Institute of Industrial Property (Instituto Nacional de la Propiedad Industrial) (INPI) denied registration on the basis of Section 3e) of the Argentinean Trademark Law. 5 Thereupon MAPA filed a court action against INPI seeking to have its decision overturned. The Court of First Instance dismissed MAPA s request and ruled that the drawing involved was disagreeable, inappropriate, and obscene. 4. Valot v. La Papelera del Plata S.A., Case No. 7637/03 (Federal Court of Appeals, Division II, Nov. 10, 2009) (unpublished). 5. Section 3e) provides: The following may not be registered:... words, drawings and other signs that are contrary to morals and good mores....

17 814 Vol. 101 TMR Division II of the Federal Court of Appeals reversed the lower court s decision. It held that the assessment of immorality must rely on the present beliefs of the society, which constitute the prevailing social morals, and not on ideal moral rules that do not necessarily concur with those of the society. 6 The appellate court found that the drawing did not cause any sexual thoughts or desires beyond what was natural and organic, or in addition to the convenience of using condoms for the purpose of preventing venereal diseases and AIDS. The court concluded that under the social morals of 2010, MAPA s design could not be regarded as immoral. The fact that the mark applied for was going to be used in connection with a condom made the reference to a phallic symbol not at all unreasonable. This ruling is important because there are almost no decisions, either from the courts or from INPI, on obscene trademarks; the last one dates back to the 1940s. II.I. Post-Registration Evidence of Use and Renewals For reasons unknown, two trademark registrations for PANORAMIC (both word marks) coexisted in the registry in Class 9. In May 2002, Valydar S.R.L. had purchased the trademark PANORAMIC, covering telephone equipment, among other products, in Class 9, from Julio Laurenzzo, who in turn had acquired it from its original owner, Newport S.A., in a bankruptcy proceeding. Integración Hogar S.A. (IH) was the owner of the trademark PANORAMIC, covering all products in Class 9. When IH filed new trademark applications for PANORAMIC in Classes 7, 8, 9, 11, 12, and 15, Valydar opposed on the basis of its PANORAMIC registration in Class 9. IH brought suit against Valydar asking for the cancellation of the latter s PANORAMIC trademark based on non-use and, therefore, the withdrawal of Valydar s opposition. IH argued that the mark had not been used either by Valydar or by its prior owners Mr. Laurenzzo and Newport S.A. as required by Sections 5 and 26 of the Argentinean Trademark Law. 7 In 6. MAPA GmbH, Gummi- und Plastikwerke v. Instituto Nacional de la Propiedad Industrial, Case No. 191/2001 (Federal Court of Appeals, Division II, Mar. 4, 2010) (unpublished). 7. Section 5 provides: The duration of a trademark registration is ten (10) years. It may be renewed indefinitely for similar periods provided the trademark has been used in the sale of a product, in the rendering of a service or as a trade name within the period of five (5) years preceding each expiration date. Section 26 provides: On request, a trademark shall be declared to have lapsed if it has not been used in the country for a period of five (5) years prior to the date on which the action was instituted, other than for force majeure reasons. A registered trademark that was not used in one class shall not lapse if the same trademark was used in marketing a product or providing a service included in other classes or if it is part of the trade name used for an activity.

18 Vol. 101 TMR 815 addition, IH questioned Mr. Laurenzzo s application for renewal of the mark, arguing that his sworn declaration of use did not meet the use requirements of Section 20 of the Trademark Law 8 as the PANORAMIC mark had not been in use owing to Newport s bankruptcy proceedings. Valydar then filed suit against IH requesting the cancellation of IH s PANORAMIC mark, on the ground that the mark was registered in violation of Section 3a) of the Law. 9 The two lawsuits were consolidated. The Court of First Instance admitted Valydar s complaint and ruled that IH s trademark registration for PANORAMIC be cancelled. It rejected IH s complaint against Valydar seeking cancellation of the latter s mark based on non-use and ruled that Valydar s opposition was not ill founded. Division III of the Federal Court of Appeals reversed the lower court s decision and declared the cancellation of Valydar s PANORAMIC registration. 10 It ruled that Valydar did not successfully prove use of the trademark after purchasing the mark from Mr. Laurenzzo. The appellate court determined that the bankruptcy of a company is not in itself a force majeure event, as the Commercial Court is able to order the continuation of the business and the preservation of the assets of the company. Therefore, it concluded that Mr. Laurenzzo s renewal application for the PANORAMIC trademark was null and void. According to the court, Mr. Laurenzzo did not comply with Section 20, as his sworn declaration of use was false in view of the lack of use of the mark by him and by Newport S.A. In this decision the Federal Court of Appeals articulated the doctrine that the bankruptcy of the trademark owner is not an event of force majeure as set forth in Section 26 of the Trademark Law. However, in two prior decisions, Division B of the Commercial Court of Appeals, which hears bankruptcy cases, had ruled the opposite (i.e., that the bankruptcy of the trademark owner is an event of force majeure that will enable the owner to avoid the cancellation of a trademark based on non-use) Section 20 provides: When renewing a trademark application, the applicant shall... file a sworn declaration of use stating that the trademark has been used, within the term set forth in Section 5, in at least one of the classes, or if it has been used as a trade name. The declaration shall specify the good, service or activity for which use has been made Section 3a) provides: The following may not be registered:... a trademark identical to one previously registered or applied for to identify the same products or services Valydar S.R.L. v. Integración Hogar S.A., Case No. 7288/03, and Integración Hogar S.A. v. Valydar S.R.L., Case No. 3212/03 (Federal Court of Appeals, Division III, May 20, 2010) (unpublished). 11. Peñaflor S.A. v. Bodegas y Viñedos Talacasto S.A. (Commercial Court of Appeals, Division B, Aug. 30, 1999), available at El Derecho, ED ; Porlain S.A. v. Porcelana Americana S.A. (Commercial Court of Appeals, Division B, June 28, 2007), available at document no. AR/JUR/7292/2007.

19 816 Vol. 101 TMR III.E.1. Injunction The U.S. company South Cone, Inc. is the owner of the trademarks REEF & Design (below, illustration at left), MISS REEF BIKINI OPEN, and Reef logo (below, illustration at right). South Cone filed a petition for preliminary injunction pursuant to Article 50 of the TRIPS Agreement, 12 requesting that the defendant, the Argentinean company Televisión Federal S.A. (TELEFE), cease using its trademarks in an episode named Let s Go to the Beach in a local version of the American sitcom Married... with Children. The plaintiff also requested that the defendant refrain from airing the episode. The Court of First Instance dismissed the plaintiff s request. It held that the requirements for a preliminary injunction were not met, as there were no evident reasons for admitting the plaintiff s claim. In so deciding, the court took into consideration that the defendant was just referring to the plaintiff s trademarks by using the mark BEEF; such use, the court ruled, did not imply prima facie that TELEFE was denigrating or passing off South Cone s trademarks, given the comedy tone of the show and the fact that the verbal element REEF of the trademarks was mentioned as part of a joke. Division I of the Federal Court of Appeals reversed the first instance decision and granted the requested injunction. 13 The court took into consideration the fact that the episode referred to recreated a beauty contest on the beach where the plaintiff s Reef logo trademark was used along with the mark BEEF. It held that there were sufficient reasons for admitting South Cone s claim, as the plaintiff was the owner of the Reef logo mark, which was reproduced by the defendant, and the damage resulting from such unauthorized use could not be ignored. On these grounds the appellate court ordered TELEFE not to use the Reef logo mark in the episode in question. This decision is noteworthy because the court ordered that the content of a TV show be revised, notwithstanding the 12. Article 50 deals with provisional measures to prevent infringement of intellectual property rights. 13. South Cone, Inc. v. Televisión Federal S.A., Case No. 2665/09 (Federal Court of Appeals, Division I, Nov. 24, 2009), available at document no. MJ-JU- M AR.

20 Vol. 101 TMR 817 constitutional right of freedom of speech. It should be noted that at the time the plaintiff s injunction petition was filed, the episode had already been broadcast, and therefore the plaintiff was attempting to prevent future reruns of that episode. III.E.2. Damages Gap (ITM) Inc., a U.S. corporation, is the owner of the wellknown trademark GAP, for goods and services in Classes 3, 18, 25, and 42. Gap obtained a preliminary injunction under Section 50 of the TRIPS Agreement against Rafael Chirazi, Fabio Diego Chirazi, and U.S.1 S.R.L. Following the attachment and seizure of a significant amount of infringing products bearing the GAP trademark, the firm filed a lawsuit on the merits seeking (1) that the defendants use of its trademark be discontinued, (2) the destruction of the seized products, (3) the publication of the court s decision in a local newspaper, and (4) damages. The Court of First Instance ordered the defendants to stop using the plaintiff s trademark and to publish the court s decision in a local newspaper. It also ordered the destruction of the seized goods and awarded damages of ARS (Argentina Pesos) 25,000 (ca. USD 6,400), based on its determination that the defendants had intended to trade on Gap s goodwill. Division III of the Federal Court of Appeals upheld the lower court s decision. 14 Following prior decisions and the opinions of legal scholars, the court said that the existence of damages must be presumed in trademark infringement cases in view of the difficulty of proving the infringement and the resulting damages. The court also held that the unauthorized use of the trademark GAP caused damages even if the trademark owner failed to prove that it was using the mark in Argentina. Regarding the amount of damages awarded, the appellate court noted that, as the defendants did not question the estimate of damages made by the plaintiff, the amount awarded by the first instance court was reasonable. The defendants, who should have recorded the sale of the infringing products in their accounting books, were in a better position than the court to question the plaintiff s estimation of damages. This decision shows the Federal Court of Appeals returning to the historical doctrine that damages are presumed when infringement is proved. In 2005, in Flamagas S.A. v. Cerro Nevado S.A., 15 Division III of the Federal Court of Appeals had departed 14. Gap (ITM) Inc. v. Chirazi et al., Case No /04 (Federal Court of Appeals, Division III, Aug. 25, 2009), available at document no. MJ-JU-M AR. 15. Case No. 2206/98 (Federal Court of Appeals, Division III, June 21, 2005) (unpublished), reported at 96 TMR 281 (2006).

21 818 Vol. 101 TMR from the line of prior rulings in holding that it was necessary to prove the infringement plus the existence of the damages. Moreover, the present decision clearly states that the unauthorized use of a trademark causes damages even if the trademark owner is not using the mark in Argentina, which means that it is not necessary to prove a decrease in sales to obtain damages derived from trademark infringement. In that respect, it is worth noting a debatable decision rendered in 2006, Mattel Inc. v. Nuevo Rosz S.A., 16 in which Division I of the Federal Court of Appeals reduced the amount of damages awarded to the plaintiff because it determined that the plaintiff s sales had not decreased as a consequence of the infringement. Polo/Lauren Company LP (PLC) is the owner of the wellknown trademarks POLO and RALPH LAUREN and the device trademark shown below (the Polo logo ), all for goods in Class 25. As a result of attachment and seizure measures taken at Nativo, a clothing and accessories store in Buenos Aires owned by Carlos Horacio Bustos, a significant amount of infringing products bearing the trademarks POLO, RALPH LAUREN, and the Polo logo was found. PLC then filed a lawsuit on the merits, seeking (1) that Mr. Bustos stop using its trademarks, (2) the destruction of the infringing products, (3) the publication of the court s decision in a local newspaper, and (4) damages. The Court of First Instance ordered the defendant to stop using the plaintiff s trademarks and to publish the court s decision in a local newspaper. It also awarded damages of ARS 10,000 (around USD 2,500). Division III of the Federal Court of Appeals upheld the lower court s decision. Mr. Bustos argued that he acted in good faith as he did not know where the infringing products came from and that 16. Case No /01 (Federal Court of Appeals, Division I, July 11, 2006) (unpublished), reported at 98 TMR 321 (2008).

22 Vol. 101 TMR 819 he had stopped using PLC s trademarks. On the other hand, he asserted that PLC had not suffered any damage at all, taking into account the reduced amount of clothes sold in the searched premises and the low price of the products involved. The appellate court ruled that Mr. Bustos acted in bad faith because, as a businessman, he was supposed to know about the origin of the products he was selling and that they were counterfeit, especially after being put on notice by the plaintiff in a cease and desist letter. 17 Following prior decisions and the opinions of legal scholars, the appellate court further held that the existence of damages must be presumed in trademark infringement cases in view of the difficulty of proving the infringement and the damages caused thereby. The low price of the infringing products did not rule out the award of damages, as trademark infringement harmed the trademark owner and caused dilution, regardless of the price of the products involved. In common with Gap (ITM) Inc. v. Chirazi et al., 18 discussed above, this decision shows the Federal Court of Appeals returning to the historical doctrine that damages are presumed when infringement is proved. III.H.1. Formalities for Acceptable Filings Beautybank Inc. filed a trademark application for FLIRT in Class 3. Opposition was filed by Gabriel Juan Haitayan on the basis of his trademark FLIRTY, registered in Class 25. Mr. Haitayan s subsequent application to register the trademark FLIRTY in Classes 3 and 18 met with opposition by Beautybank based on its trademark application for FLIRT in Class 3. Beautybank filed a court action seeking the withdrawal of Mr. Haitayan s opposition and the cancellation of the opposing mark on grounds of non-use. Mr. Haitayan answered the complaint and filed a counterclaim seeking the withdrawal of Beautybank s opposition. The counterclaim was filed directly with the court and not with the Trademark Office, as required by Section 17 of the Trademark Law Polo/Lauren Company LP v. Bustos, Case No. 608/05 (Federal Court of Appeals, Division III, Feb. 18, 2010), available at document no. 1/ Case No /04 (Federal Court of Appeals, Division III, Aug. 25, 2009). 19. Section 17 provides: A court action to have the opposition set aside shall be brought before the Trademark Office. Within ten (10) days of receiving the bill of complaint the Trademark Office shall forward it, together with the attachments thereto and a copy of the administrative proceedings relating to the opposed mark, to the Federal Court in Civil and Commercial Matters of the City of Buenos Aires.

23 820 Vol. 101 TMR The Court of First Instance did not admit the counterclaim because the bill of complaint was not filed with the Trademark Office, as stipulated by Section 17. On appeal, Division I of the Federal Court of Appeals reversed the lower court s decision and admitted the counterclaim. After filing the complaint, Mr. Haitayan had informed the Trademark Office that he had initiated a court action against Beautybank requesting the withdrawal of its opposition against his trademark application for FLIRTY. The appellate court determined that in so doing he had complied with the requirement of Section 17 by providing said information to the Trademark Office. 20 In this decision the Federal Court of Appeals made an exception to the formalities set forth in the Trademark Law for filing a complaint seeking the withdrawal of an opposition. AUSTRALIA I.A.2. Intent to Use In September 2003, Suyen Corporation applied to register the mark BENCH BODY 21 for clothing in Class 25 (see below). The mark was accepted and published for opposition. Registration was opposed by Americana International Limited. The principal ground of opposition relied upon by Americana was that Suyen did not have the requisite intention to use the mark BENCH BODY in Australia on the date the company applied for its registration. According to the evidence submitted, Suyen is a large clothing company based in the Philippines. Suyen first used the mark BENCH BODY in the Philippines in 1987, and subsequently expanded its use of the mark to other countries, including the USA and China. Clothing under the BENCH BODY mark is sold by the company through clothing stores, under franchise, and by distributors. In 2007, sales of clothing under the mark totaled over 3.9 million items. Suyen also operates an online store for the sale of its goods with drop-down boxes that include Australia, and, 20. Beautybank Inc. v. Haitayan, Case No. 7935/07 (Federal Court of Appeals, Division I, June 10, 2010) (unpublished). 21. Application No , filed Sept. 5, 2003.

24 Vol. 101 TMR 821 according to the evidence, the company s website was accessed by persons based in Australia. The delegate of the Registrar of Trade Marks found that the ground of opposition based on Suyen s lack of intention to use its trade mark was made out. In the proceedings before the delegate, Suyen did not lodge evidence in answer to Americana s evidence in support of the opposition, and registration of Suyen s mark was refused. 22 By notice of appeal to the Federal Court, Suyen alleged that the delegate erred in his findings on a number of grounds. For purposes of the appeal Suyen tendered to the court a substantial body of evidence to establish the existence of the requisite intention to use the mark BENCH BODY in Australia. Judge Dodds-Streeton noted that the determination of the appeal raised several unsettled questions of trade mark law in Australia. These included the relevant date for assessing an intention to use a trade mark, whether the intention may be presumed from the filing of the trade mark application, the shifting of the evidentiary onus, and the standard of proof an opponent must meet in trade mark oppositions. In relation to the question of when the intention to use the opposed mark in Australia had to exist, the judge made reference to the conflicting authority on this issue. In particular, the judge referred to the recent judgment of the Full Court of the Australian Federal Court in the Food Channel case, 23 where the court held that the intention must exist at the date of the application although it acknowledged that use or non-use of the trade mark after the date of the application may be relevant in drawing inferences as to the intention of the applicant at the application date. Because this issue was not determinative of the outcome of the appeal, it was not necessary for the judge to decide the issue. Nevertheless and despite the Full Court s judgment in Food Channel the judge expressed the view that a requirement that the intention to use must exist as of the date of application appears inconsistent with the wording of the relevant provision in the Trade Marks Act 24 that is, the provision is worded in the present tense and states that registration may be opposed on the 22. Decision of Jan. 31, Food Channel Network Pty Ltd v. Television Food Network GP, (2010) FCAFC 58 (June 2, 2010). 24. Section 59 of the Act provides: The registration of a trade mark may be opposed on the ground that the applicant does not intend: (a) to use, or authorise the use of, the trade mark in Australia; or (b) to assign the trade mark to a body corporate for use by the body corporate in Australia; in relation to the goods and/or services specified in the application.

25 822 Vol. 101 TMR ground that the applicant does not intend to use the trade mark in Australia. Furthermore, said the judgment, arguments in support of the view contrary to the Full Court s conclusions were not addressed in the Food Channel proceedings, and a number of potential inconsistencies and uncertainties remain. 25 Turning to the presumption of an intention to use and the nature of the onus under this ground of opposition, the judge referred to the longstanding presumption that the making of an application for registration of a trade mark constitutes evidence of an intention to use. The judge was of the view that this presumption continues to apply, and consequently he accepted as a corollary that the absence of the requisite intention to use cannot be inferred from the lack of use per se. It was equally clear, said the judge, that in trade mark opposition proceedings and in appeals to the Federal Court in respect of such proceedings the opponent bears the onus of establishing its grounds of opposition. However, the standard of the onus borne by the opponent is the subject of some uncertainty in Australian trade mark law. 26 This is particularly so where the evidence relied upon by an opponent shows a prima facie case of lack of intention to use the trade mark. In such circumstances, the evidentiary onus may shift to the applicant, in particular when an applicant fails to respond to the evidence relied upon by the opponent. Notwithstanding the unsettled questions of law regarding the assessment of an intention to use a trade mark, the judge was satisfied not only that Americana bore the onus of establishing the ground of opposition but also that it had failed to prove that Suyen lacked the requisite intention, whether at the date of filing the trade mark application or thereafter. In reaching this conclusion, the judge accepted that Suyen s evidence showed several thousand visits to the online site from Australia and the possibility 27 of online purchase of goods bearing the trade mark BENCH BODY from Australia. Furthermore, Suyen s overseas activities established its capacity and propensity to use its trade marks, including the BENCH BODY mark, in relation to goods, including clothes, in bona fide large-scale commercial activities. While the company s trading activities and use of trade marks in other countries did not in themselves establish an intention to use a trade mark in Australia, those activities were consistent with, and reinforced, the presumption of intention to use arising from the filing of the application. 25. Suyen Corp. v. Americana International Ltd, [2010] FCA 638 para. 177 (June 21, 2010) (Dodds-Streeton, J.). 26. Id. paras Id. para. 234.

26 Vol. 101 TMR 823 The ground of opposition relied upon by Americana was not established, and accordingly the appeal was dismissed. I.C.1. Inherent Distinctiveness Sports Warehouse, Inc. applied to register the mark TENNIS WAREHOUSE in Australia in August The services specified under the application were online retail services featuring tennis clothing, tennis footwear, tennis gear, tennis equipment, tennis accessories, and tennis sport bags. The company, which was incorporated in California in 1994, conducted its business principally via its website. Since 1995, Sports Warehouse had sold its products worldwide, including to customers in Australia. The application proceeded through examination to acceptance. Following publication of the trade mark, Fry Consulting Pty Ltd opposed the mark s registration. The delegate of the Registrar of Trade Marks held that the application failed on the grounds that the words TENNIS WAREHOUSE did not sufficiently distinguish the applicant s services and that the evidence tendered in support of the application did not confer the requisite degree of acquired distinctiveness necessary for registration. 29 Sports Warehouse appealed the delegate s finding to the Federal Court. The principal questions before the court were, first, whether the words TENNIS WAREHOUSE were inherently adapted to distinguish the applicant s services, and, second, if the level of inherent adaptability to distinguish was not sufficient to qualify the mark for registration, whether the Federal Court was required to consider whether, by reason of the extent to which the mark was inherently adapted to distinguish the designated goods or services, combined with the use of the mark by the applicant and any other circumstances, the mark was capable of distinguishing the applicant s services Application No , filed Aug. 18, Decision of Dec. 2, Section 41(5) of the Trade Marks Act provides: If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services: (a) the Registrar is to consider whether, because of the combined effect of the following: (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services; (ii) the use, or intended use, of the trade mark by the applicant; (iii) any other circumstances;

27 824 Vol. 101 TMR Judge Kenny ruled that the words TENNIS WAREHOUSE were not sufficiently adapted to distinguish the applicant s services to qualify for registration. 31 This was so, according to the judge, because both tennis and warehouse had known meanings, including, in the case of the latter word, an implication or connotation that one was going to get a good deal. 32 In short, the judge determined that the expression TENNIS WAREHOUSE had a sensible meaning that was in large measure descriptive of the applicant s designated services. He did, however, consider that the words TENNIS WAREHOUSE were to some extent inherently adapted to distinguish. Given the judge s finding that the level of inherent adaptation to distinguish was relatively low, a correspondingly higher level of use and other circumstances would be required to satisfy the court that the words did or would distinguish the designated services. Sports Warehouse submitted wide-ranging evidence of its use of the words TENNIS WAREHOUSE, and the judge considered each category of evidence separately. In relation to sales to Australian customers, the judge commented that such sales were not insignificant in Australian terms, although the sales were not particularly large and were modest when compared with the company s total sales. Turning to the company s website, the judge found that the close association of the TW logo with the words TENNIS WAREHOUSE (see below) had the effect of substantially diluting any trade mark significance that attached to the words used by themselves. 33 There was also evidence of the use of the trade mark on thirdparty websites. The number of visitors to those websites was not the trade mark does or will distinguish the designated goods or services as being those of the applicant; and (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services the trade mark is taken to be capable of distinguishing the applicant s goods or services from the goods or services of other persons; and (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services the trade mark is taken not to be capable of distinguishing the applicant s goods or services from the goods or services of other persons. 31. Sports Warehouse, Inc. v. Fry Consulting Pty Ltd, [2010] FCA 664 (June 25, 2010) (Kenny, J.). 32. Id. paras Id. para. 132.

28 Vol. 101 TMR 825 significant, and this evidence did not advance the company s case. Sports Warehouse contended that use of the website address constituted use of the words TENNIS WAREHOUSE as a trade mark. The judge accepted that a domain name may constitute use of a trade mark and that, in the present case, use of the domain name constituted use of the trade mark TENNIS WAREHOUSE. Use of the words TENNIS WAREHOUSE on invoices related to purchases completed by the time the invoices issued; for that reason, this use of the trade mark was not in the course of trade when received by Australian consumers. For the same reason, use of the words TENNIS WAREHOUSE on product packaging was not use in the course of trade in Australia. The level of use of the trade mark TENNIS WAREHOUSE tendered by Sports Warehouse was not sufficient to satisfy the judge that on the filing date of the application the mark distinguished or would distinguish the applicant s designated services from the services of other traders. On that basis the judge concluded that the mark did not meet the statutory requirements for registration, and the appeal by Sports Warehouse was dismissed. AUSTRIA I.C. Distinctiveness DFF Dairy Fine Food GmbH (DFF) is the owner of the international trademark DELICADO, 34 based on a German registration of origin and covering all kinds of milk products in Class 29. The Austrian Patent Office refused DFF s application to extend protection for the mark to Austria on grounds of lack of distinctiveness. On appeal, the Administrative Court confirmed the Patent Office s decision. It held that although the word delicado has different meanings in the Spanish and Portuguese languages it would be automatically understood in Austria as a variant of the German word delikat ( delicate ), which is an expected attribute of goods in Class 29 and therefore would not be regarded as a trademark. 35 In this case the Administrative Court once again maintained its rigid attitude regarding distinctiveness and descriptiveness, 34. IR No , registered Aug. 17, DFF Dairy Fine Food GmbH v. Austrian Patent Office, Case No. VwGH, Zl 2006/04/0110, Pbl 2009, 59 (Administrative Court, May 28, 2008), available at 10_ X00.pdf (in German).

29 826 Vol. 101 TMR irrespective of the German registration of origin and the International Registration that was based on it. The application for registration of the trademark SOFTWASH, to cover cosmetic and medical preparations for treating and cleaning hair and skin (Classes 3 and 5), was rejected by the Austrian Patent Office based on lack of distinctiveness. The applicant appealed. The Administrative Court confirmed the decision. It held that both terms in the applied-for mark, SOFT and WASH, were understood in Austria and that their use in combination, even if not reflected in a dictionary, simply described the expected features of goods for treating hair and skin. 36 As an identical trademark was registered in Germany, where the same language, culture, and social and economic conditions as in Austria are present, this decision demonstrates once again the inflexibility of the Austrian authorities with regard to distinctiveness and descriptiveness of designations sought to be registered as trademarks. I.D.1. Similarity of Marks Terredora S.S.A. (Terredora), an Italian company, owns several senior Community trade marks (CTMs) resembling or containing the words TERRE DORA and registered for, inter alia, alcoholic beverages in Class 33. Weinkellerei Lenz Moser Aktiengesellschaft (Lenz Moser), an Austrian firm, is the owner of two junior Austrian trademarks, ARTE DORA and O DORA, registered for wines, sparkling wines, and spirits in Class 33. Terradora brought an action for cancellation of Lenz Moser s marks based on their similarity to Terradora s marks and company name. The Nullity Department of the Austrian Patent Office rejected the request for cancellation, denying direct confusing similarity of the marks at issue despite the identity of the covered goods. On Terredora s appeal, the Supreme Patent and Trademark Board ordered the cancellation of the trademarks ARTE DORA and O DORA. It held that although there was no direct confusing similarity between the defendant s marks and TERRE DORA, an indirect confusing similarity could be assumed because DORA could be perceived as the main element in a series of marks, inasmuch as the other parts of those marks (ARTE or O, on the 36. Case No. VwGH, Zl 2006/04/0080, Pbl 2009, 84 (Administrative Court, June 25, 2008), available at X00/JWT_ _ X00.pdf (in German).

30 Vol. 101 TMR 827 one hand, and TERRE, on the other) were less distinctive in character. 37 This case is worthy of note because decisions on indirect similarity of marks have been rather rare in the recent past. Gruner + Jahr AG & Co owns numerous Austrian and international trademarks consisting of or containing the verbal element GEO and covering, inter alia, services in Classes 41 and 42, especially educational, entertainment, scientific, and technological services. Gruner + Jahr initiated an action for cancellation of the junior combined mark GEOMIX, registered for the same services in the name of an Austrian individual, Harald Lemmerer. The Nullity Department of the Austrian Patent Office cancelled the trademark registration for GEOMIX with respect to services in Classes 41 and 42. Its rationale was that the junior trademark completely contained the senior mark GEO, which was crucial for a finding of confusion. As the suffix -MIX was understood by the trade involved as meaning mixture, it would not be perceived as separate from the prefix GEO-; thus, the combination GEOMIX would be regarded as related to GEO and mistakenly perceived as reflecting a common source of origin of the services covered. The Supreme Patent and Trademark Board disagreed. It dismissed the final decision of the Nullity Department and rejected the cancellation request. The Board held that although the senior mark GEO was completely taken into the junior mark GEOMIX, it did not have an independent position in the latter. The combination of the verbal elements GEO and MIX resulted in a word with a specific meaning; that is, GEO had lost therein its distinctive character for a descriptive indication (e.g., in geography, etc.). In addition, GEO and GEOMIX also differed in sound. 38 This decision demonstrates the occasional unpredictability of outcomes in cases involving confusing similarity, because the findings at both the first and the second instance were reasonable. 37. Terredora di Paolo Società Semplice Agricola più brevemente Terredora S.S.A. o TD DP S.S.A. v. Weinkellerei Lenz Moser Aktiengesellschaft, Case No. Om 4/08 (Nm /2003), Pbl 2009, 101 (Supreme Patent and Trademark Board, Sept. 10, 2008), available at (in German). 38. Gruner + Jahr AG & Co Druck- und Verlagshaus v. Harald Lemmerer, Case No. Om 1/09 (Nm 85/2007), Pbl 2009, 149 (Supreme Patent and Trademark Board, Mar. 11, 2009), available at pdf (in German).

31 828 Vol. 101 TMR III.A.2. Passing Off Allergan, Inc., a U.S. healthcare products company, owns Community registrations for the trademark BOTOX, covering cosmetics in Class 3 39 and pharmaceutical preparations in Class Its products are used mainly for curing wrinkles by subcutaneous injection. Allergan brought an action against a firm that distributes through Austrian pharmacies a cosmetic product for relaxing mimic wrinkles by cutaneous application under the designation BOTOINA 1000, sometimes in combination with a picture of an applicator resembling a syringe with a dull cannula. The plaintiff sought a temporary injunction based on trademark infringement and misleading of the public. It claimed that the defendant s ads suggested that the same results could be achieved with the BOTOINA 1000 product as with the BOTOX products, but without the need for injections. In provisional proceedings, the first instance court (Commercial Court of Vienna) granted the temporary injunction; at the second instance, however, the Upper Provincial Court of Vienna reversed the lower court s decision and dismissed the petition. Allergan appealed. The Supreme Court granted the temporary injunction on the basis of unfair commercial practice; however, by comparison with the decision of the court of first instance, the injunction was more restricted in scope. Specifically, the Court held that the designation BOTOINA 1000 cutaneous application, when used in combination with the depiction of a syringe-like applicator, would mislead the public by leading consumers to believe that the product would have the same effect as Botox (Botulinum toxin) therapy done by a physician; without that depiction, the designation could be used. The Court rejected the trademark infringement claim, however, on two grounds. First, it held that there was no risk of direct or indirect confusion because there was a lack of similarity between the marks BOTOX and BOTOINA, despite the identity (which, the Court observed, was fictitious) of the designated goods. 41 Second, it denied special protection for BOTOX as a wellknown mark, holding that Botox was understood by the public as an active substance or a method of therapy for curing wrinkles but not as referring to the specific source of the product; that is, a 39. CTM No , registered Aug. 14, CTM No , registered Oct. 9, The Court s use of the word fictitious refers to the fact that the BOTOX trademarks were at that time still within the five-year grace period for use, so that the comparison was between the goods as registered (as opposed to the BOTOX products that were then on the market) and the BOTOINA 1000 product.

32 Vol. 101 TMR 829 mark is deemed well known solely if the notoriety refers not only to the term protected by the trademark registration but also to the mark s function as an indication of origin. 42 This decision is important in that it marks the first time that a court has dealt with ambiguities in the sense of a trademark and whether such ambiguities have an effect on proof of acquired distinctiveness. The plaintiff had based its demand for a temporary injunction on, inter alia, its trademark rights, asserting that BOTOX was a well-known mark. Austrian jurisprudence differentiates between known, well-known, and famous marks. Acquired distinctiveness is one aspect of a well-known mark, but that alone does not suffice to make a mark well known, even when proof of publicity has been acknowledged. In this case, however, the Court denied the publicity of the BOTOX mark, holding that although the term Botox was, without doubt, known by the trade involved, it was regarded primarily as a reference to the active substance (i.e., Botulinum toxin A) rather than as an indication of origin (i.e., a trademark). In addition, the decision addresses the tension between a wellknown mark and a generic name. The reason why the Court held that BOTOX was not a well-known mark in Austria may be that the product that is in widespread use in the United States under the trademark BOTOX is sold in Austria for beauty purposes under the name Vistabel and is sold under the BOTOX trademark only when it is to be used for medical purposes, which use requires a physician s prescription. Therefore, the decision touches on the question of whether BOTOX is perceived as a trademark or as an abbreviation of the active substance (i.e., whether it has become somewhat generic in the mind of the public). BAWAG P.S.K., of Vienna, the fourth-largest bank in Austria, owns, inter alia, the Austrian trademarks EASYBANK, 43 for banking and related services, and EASY KREDIT, 44 for financial affairs, registered on the basis of acquired distinctiveness. TeamBank AG, of Nuremberg, Germany, owns an International Registration for EASYCREDIT (figurative mark), 45 valid in Austria and other countries and covering especially financial affairs, etc. (see below). It uses not only the figurative mark but also the word mark EASY CREDIT and runs a website under the domain name Case No. 17 Ob 20/08b, ÖBl 2009, 180 (Supreme Court, Sept. 23, 2008), available at _000/JJT_ _OGH0002_0170OB00020_08B0000_000.pdf (in German). 43. Trademark No , filed Oct. 3, 1996, registered June 14, Trademark No , filed Sept. 16, 2005, registered Jan. 29, IR No , registered June 18, 2003.

33 830 Vol. 101 TMR The plaintiff, a licensor of BAWAG P.S.K., brought an action against TeamBank seeking a temporary injunction enjoining the defendant s further use of the expression EASYCREDIT or the like. In provisional proceedings, the first instance court (Commercial Court of Vienna) granted the temporary injunction with regard to the use of EASYCREDIT but allowed the use of the international trademark per se. The second instance court (Upper Provincial Court of Vienna) granted the temporary injunction in full scope. On TeamBank s appeal, the Supreme Court restored the decision of the court of first instance. Although it held that the marks EASYBANK and EASYCREDIT were not confusingly similar, because the common element EASY was not distinctive, it came to the conclusion that the mere use by the defendant of the word combinations easycredit and easy-credit infringed the rights given by the trademark EASY KREDIT, even though that mark was junior to the defendant s international trademark EASYCREDIT. Use of the figurative mark EASYCREDIT was, however, not regarded as an infringement of the word mark EASY KREDIT because of the narrow scope of protection defined by the figurative elements. 46 The differentiation between the mere use of the word combination easycredit or easy-credit, on the one hand, and the use of the figurative mark EASYCREDIT, on the other hand, is remarkable but not quite understandable. Should this litigation be carried on, it is possible that in the main proceedings the first and second instance courts will come to a different final judgment. III.A.4. Unfair, Unauthorized, or Improper Use Mazda Corporation owns, inter alia, an Austrian registration for the design mark MAZDA logo (see below), 47 for products in Classes 36 and 39, and uses the mark on all its vehicles. The defendant offers the service of so-called chip-tuning the installation of microprocessors into engine control devices to increase engine power. It has offered on its website, among other 46. Case No. 17 Ob 6/09w, ÖBl 2009, 260 (Supreme Court, May 12, 2009), available at 000_000/JJT_ _OGH0002_0170OB00006_09W0000_000.pdf (in German). 47. Trademark No , filed Mar. 4, 2004, registered Aug. 26, 2004.

34 Vol. 101 TMR 831 places, to do that service also for Mazda vehicles and has included the MAZDA logo in that offer. Mazda brought an action seeking the defendant s discontinuance of use of the designation Mazda and/or the MAZDA logo. Both the first and the second instance tribunals (Provincial Court of Wiener Neustadt, Upper Provincial Court of Vienna) dismissed the action. On appeal, the Supreme Court granted the plaintiff s claim, but it ordered the discontinuance of use in a restricted manner. The Court held that the MAZDA logo mark was very well known in Austria and that a third party could use a wellknown mark in a description of its own services only to the extent absolutely necessary. To exclude an exploitation of reputation, use of a design or a word and design mark is prohibited as long as the public otherwise knows the goods and/or services of the trademark owner through the mere citation of a word mark or the word part of a combined trademark. 48 The Supreme Court has specified the application of the European Court of Justice s (ECJ s) rulings on fair use of trademarks by third parties 49 to those cases where the use is ambiguous. This happens especially in cases where a design mark may depict that additional services are offered by one party to branded goods of another party but may insinuate a commercial connection between the parties. Therefore, the use of a design mark by a third party is, in general, prohibited. Red Bull GmbH, the plaintiff in this case, is the owner of the CTM RED BULL, 50 covering, inter alia, beverages, and distributes under this trademark energy drinks in cans. The defendant runs a discotheque. When guests at the discotheque ordered a mixed beverage, Red Bull/Wodka, they were served a long drink 48. Case No. 17 Ob 28/08d, ÖBl 2009, 186 (Supreme Court, Dec. 16, 2008), available at _000/JJT_ _OGH0002_0170OB00028_08D0000_000.pdf (in German). 49. Bayerische Motorenwerke AG (BMW) v. Deenik, Case C-63/97, ÖBl 1999, 250 (ECJ, Feb. 23, 1999); General Motors Corp. v. Yplon SA, Case C-375/97, ÖBl 2000, 42 (ECJ, Sept. 14, 1999); Gillette Co. v. LA-Laboratories Ltd Oy, Case C-228/03, ÖBl 2006, 87 (ECJ, Mar. 17, 2005). 50. CTM No , registered Mar. 16, 2001.

35 832 Vol. 101 TMR named Wodka Energy-Drink, which did not contain the RED BULL product. In provisional proceedings, the court of first instance (Commercial Court of Vienna) granted Red Bull s request for a temporary injunction prohibiting the defendant from serving drinks that did not contain the RED BULL energy drink whenever a mixed drink with Red Bull was ordered. However, the second instance court (Upper Provincial Court of Vienna) overturned the lower court s decision and dismissed the petition. Red Bull appealed. The Supreme Court granted the temporary injunction on the basis of unfair commercial practice: Specifically, the delivery by an entrepreneur of a product differing from that ordered by the consumer constitutes an unfair, namely misleading, commercial practice, as long as the entrepreneur does not point out to the consumer, either at the acceptance or at the execution of the order, that the product differs from the order and as long as the discrepancy is not obvious. 51 This was the first time that the Supreme Court had to rule in consideration of the amended Law Against Unfair Competition in the light of the European Unfair Commercial Practices Directive. 52 However, the Supreme Court avoided ruling on the question of whether the acceptance by an entrepreneur, without comment, of the order of a branded product, so that the consumer is kept under the impression that what will be delivered is the branded product, should be regarded as use of a trademark. This question may have to be answered in the future by a preliminary decision of the ECJ. III.A.5.a. Cybersquatting The judicial guard (Justizwache) watches over the penal institutions and is under the Austrian Ministry of Justice. A member of that guard ran, without governmental permission, a website under the domain name which was used as a forum for criticism about prison methods. In main proceedings for discontinuance of use of the domain name and consent to its cancellation, the first and second instance courts (Provincial Court and Upper Provincial Court of Innsbruck) granted both claims. Thereupon the defendant filed a request with the Supreme Court for an extraordinary revision Case No. 17 Ob 25/08p, ÖBl 2009, 175 (Supreme Court, Oct. 14, 2008), available at _000/JJT_ _OGH0002_0170OB00025_08P0000_000.pdf (ion German). 52. European Parliament and Council Directive 2005/29/EC, May 11, Whether a reference to the Supreme Court for an ordinary revision is permitted depends on the nature of the case. In this case, an ordinary revision was not permitted, so the defendant filed for an extraordinary revision. When an extraordinary revision is requested, the Supreme Court first must decide whether to accept or reject it a limine. Only

36 Vol. 101 TMR 833 The Supreme Court accepted the extraordinary revision; ultimately, however, the Court dismissed it, and as a result a slight change in the jurisdiction as well as in the precise factual characteristics of the case occurred. 54 The Court made clear that domains resembling or containing a name have the function of a name. Use of a name by an unauthorized third party as a domain generally is regarded as an inadmissible arrogation of that name in that it interferes in general with the interests of the rightful holder of the name worth being protected, irrespective of the content of the website running under the domain. The Supreme Court s decision changed the previously established legal practice with regard to claims, based on the right to a name, against the owner of a domain name. III.A.8. Parallel Imports/Gray Marketing The plaintiff, Glaxo Group Ltd, is the owner of Austrian, international, and Community registrations for the trademark ZOVIRAX, for pharmaceuticals that are used to cure herpes. The defendant, Paranova Pharmazeutika Handels GmbH, imported the ZOVIRAX product from Greece and repackaged it in a completely new trade dress, although making reference to the producer. In provisional proceedings for a temporary injunction enjoining the defendant from repackaging the ZOVIRAX product, the first and second instance courts (Commercial Court of Vienna, Upper Provincial Court of Vienna) granted the temporary in the event of acceptance is there a second stage, in which the matter is discussed in substance. 54. Case No. 17 Ob 44/08g, ÖBl 2009, 229 (Supreme Court, Mar. 24, 2009), available at 44_08G0000_000/JJT_ _OGH0002_0170OB00044_08G0000_000.pdf (in German). The term Justizwache designates a uniformed guard of the Federal Republic of Austria. Although it is not an independent juristic person of public law, the term was granted protection as a name so that the Republic could claim name rights based on civil law. According to previous decisions the unauthorized use of a name as a domain name was regarded as denial of a name (4 Ob 320/99k (ortig.at)) and, later, as arrogation of a name (4 Ob 47/03w (adnet.at II)). However, such use is unlawful only in cases where the interests of the name holder that are worthy of protection are infringed. Whether interests worthy of protection are being infringed has been decided on the basis of different criteria. In the past, a confusion of attribution was regarded as infringement; that is, not only the domain name itself but also the content of a website was crucial for a decision (e.g., 17 Ob 9/08k (eltern.at)). In more recent cases (e.g., 4 Ob 165/05a (rechtsanwälte.at)), the content of the website was neglected. In this case, the Supreme Court concluded that public opinion had advanced to the extent that when a name is used as a domain name without any further supplement, the relevant consumers assume that the rightful name holder stands behind the domain name on the associated Internet website. Therefore, the Court ruled that in general the use of the name of a third party as a domain name is an inadmissible arrogation of a name.

37 834 Vol. 101 TMR injunction, but with different scopes. On request by the Supreme Court, the ECJ released a preliminary decision stating that repackaging by new packaging is admissible as long as the repute of the trademark or that of its owner is not impaired, and that the parallel importer has to give the trademark owner any information needed for consideration of the necessity of the repackaging. 55 Based on the ECJ s decision, the Supreme Court ruled that the parallel importer is obliged to give the trademark owner any information about the requirements of the repackaging in order to distribute the goods in Austria, as well as, if requested by the plaintiff, about the member state of the European Community to which the goods might be exported. 56 In their decisions the ECJ and the Supreme Court have defined more precisely the scope of a parallel importer s obligation to give information to a trademark holder. III.B. Procedure The owner of the Austrian registration for the word and design mark SONNENTOR ( sungate ), covering, inter alia, foodstuffs and agricultural products, brought an action for cancellation of the junior word mark SONNENSCHEIN ( sunshine ), registered for essentially the same goods. The plaintiff alleged that the contested mark was confusingly similar to its trademark and company name. The Nullity Department of the Austrian Patent Office rejected the request for cancellation. The plaintiff s appeal against the final decision of the Nullity Department was intentionally not substantiated by grounds. Instead, it contained a request to extend the term for filing the grounds. The Nullity Department had set such a term; however, the Supreme Patent and Trademark Board rejected the appeal as inadmissible. It held that the latest amendments to patent and civil law did not alter the regulation providing that only defects that occurred inadvertently or as a result of lack of knowledge may be remedied within a given correction term Wellcome Foundation Ltd v. Paranova Pharmazeutika Handels GmbH, Case C- 276/05, [2008] ECR I (ECJ, Dec. 22, 2008). 56. Glaxo Group Ltd v. Paranova Pharmazeutika Handels GmbH, Case No. 17 Ob 3/09d, ÖBl 2009, 257 (Supreme Court, Mar. 24, 2009), available at gv.at/dokumente/justiz/jjt_ _ogh0002_0170ob00003_09d0000_000/jjt_ _OGH0002_0170OB00003_09D0000_000.pdf (in German). 57. Case No. Om 2/09 (Nm 77/06), ÖBl 2009, 270, Pbl 2009, 106 (Supreme Patent and Trademark Board, Apr. 29, 2009) available at Publikationen/PB I.pdf (in German).

38 Vol. 101 TMR 835 III.D.2.a. Fair Use A cancellation action was brought against the owner of six Austrian trademarks resembling decorations and registered for charitable services in Classes 37, 41, and 42 (see below). Defendant s Trademarks The Nullity Department of the Austrian Patent Office followed the argumentation of the plaintiff and cancelled the trademarks based on the ECJ s preliminary judgment in Ansul. 58 Upon appeal by the defendant, which is a charitable society, the Supreme Patent and Trademark Board suspended the proceedings for a preliminary ruling of the ECJ. The main question was whether the use of trademarks by nonprofit organizations was to be regarded as genuine, right-preserving use in competition. The ECJ ruled: Article 12(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be construed as meaning that a trade mark is put to genuine use where a non-profit-making association uses the trade mark, in its relations with the public, in announcements of forthcoming events, on business papers and on advertising material and where the association s members wear badges featuring that trade mark when collecting and distributing donations. 59 Based on this ruling the Supreme Patent and Trademark Board granted the appeal but remanded the case to the Nullity Department in order to make out the specific facts of the scope of 58. Ansul BV v. Ajax Brandbeveiliging BV, Case C-40/01, [2003] ECR I-2439 (ECJ, Mar. 11, 2003). 59. Verein Radetzky-Orden v. Bundesvereinigung Kameradschaft Feldmarschall Radetzky, Case C-442/07, [2008] ECR I-9223, GRUR 2009, 156, GRUR Int 2009, 324 (ECJ, Dec. 9, 2008), available at (in German).

39 836 Vol. 101 TMR actual use of each of the trademarks, 60 because such statements are required irrespective of whether a fact is contested. As a result of this decision it has now been made clear that charitable societies (nonprofit organizations) are market participants that may use trademarks in a genuine manner. III.F.1. Non-Use The Swiss firm Rothmans of Pall Mall Limited owned Austrian registrations for two design marks 61 and a combined mark, 62 each covering tobacco and smokers articles in Class 34 (see below). Trademark No Trademark No Trademark No A cancellation action brought against the two design marks on grounds of non-use was accepted by the Nullity Department of the Austrian Patent Office. The Department held that only the combined mark had been used and such use was not regarded as right-preserving use for the design marks. The Supreme Patent and Trademark Board confirmed the cancellation decision. It held that Rothmans had used a separate senior combined mark instead of a combination of the design marks and a word mark ROTHMANS, which would have led to a multiple designation and would have to be regarded as rightpreserving use of each of the trademarks Verein Radetzky-Orden v. Bundesvereinigung Kameradschaft Feldmarschall Radetzky, Case No. Om 1/07 (Nm /2004), Pbl 2010, 36 (Supreme Patent and Trademark Board, Jan. 28, 2009). 61. Trademark No , filed Apr. 29, 1998, registered June 16, 1998; Trademark No , filed Apr. 8, 1998, registered June 22, Trademark No , filed Dec. 5, 1972, registered Apr. 26, Case No. Om 10/07 (Nm /2001), Pbl 2009, 133 (Supreme Patent and Trademark Board, Nov. 28, 2007), available at Publikationen/PB I.pdf (in German).

40 Vol. 101 TMR 837 In a combined mark (word and design), generally the word element is decisive. Therefore, the addition of the word ROTHMANS to the design marks would have had an essential influence on their distinctiveness that is, use of the combined mark could not be regarded as use of one of the design marks. BENELUX I.E. Bad Faith The plaintiff Euro-Tyre B.V. had been using the trade name Euro-Tyre in the Netherlands since 1984 and had registered the Benelux trademark EUROTYRE on January 28, 2000, for goods in Class 12 (tires) and the Benelux trademark EURO-TYRE in Classes 12 (tires), 35, and 37 (services related to tires) on February 19, The defendant s trademark EUROTYRES was registered on August 4, 1997, for goods in Class 12 (tires) in the Benelux. Plaintiff s mark Defendant s mark Euro-Tyre B.V. sought a declaration that Eurotyre S.A. s trademark EUROTYRES was void in the Benelux and sought a prohibition against the use by Eurotyre S.A. of EUROTYRES or of any similar term as a trademark or trade name. Eurotyre S.A. counterclaimed, seeking the nullification of Euro-Tyre B.V. s trademarks and a prohibition against the use of EUROTYRE or any similar term (except in Venlo, where Euro-Tyre B.V. s office was located). The court of first instance nullified Euro-Tyre B.V. s two trademarks and denied Euro-Tyre B.V. s claims. Euro-Tyre B.V. appealed. By interlocutory decision, Euro-Tyre B.V. was ordered to produce evidence that Eurotyre S.A. filed its trademark application in bad faith. In its final judgment, the court of appeal upheld the decision of the court of first instance. This decision was appealed in cassation by Euro-Tyre B.V. To prove that the filing by Eurotyre S.A. was in bad faith, Euro-Tyre B.V. proffered a witness s statement, corroborated by a fax. This witness, who worked with Eurotyre S.A. from 1994 to

41 838 Vol. 101 TMR 2005, stated that he knew about Euro-Tyre B.V. in 1991, that Euro-Tyre B.V. was a known company name in the industry at that time, and that the company was also known specifically to his own firm. Eurotyre S.A. was previously named Arc en Ciel, and the witness stated that when Euro-Tyre B.V. wanted to change its name to Eurotyre, he directed the organization s attention to the Dutch company name. This was also expressed in the fax. The court of appeal did not accept this proof. Euro-Tyre B.V. appealed to the Dutch Supreme Court. The Supreme Court discussed the evaluation of the evidence by the court of appeals and decided that the evaluation was incomprehensible for three reasons. First, the court of appeals should not, without reason, fail to consider the statement of Euro- Tyre B.V. regarding the subjective bad faith of Eurotyre S.A. Second, the Supreme Court found it incomprehensible that the proffered fax was not adequate corroboration of the witness s statement and proof of objective bad faith. The court of appeals had ruled that the statement that Eurotyre S.A. was familiar with Euro-Tyre B.V. was unsubstantiated. In the light of the proffered exhibits by Euro-Tyre B.V., the Supreme Court found that the court of appeals did not have a proper reason for discounting the witness s statement. Third, The Supreme Court found that the court of appeals failed to give proper consideration to the protection for senior trade names against a confusingly similar junior trade name. The Supreme Court therefore nullified the final decision of the court of appeal and referred the case to a different court of appeal for further proceedings. 64 This decision reflects the importance of the difference between subjective and objective bad faith and points to important aspects of the evaluation of offered proof with regard to both types of bad faith. III.C. Other Issues The plaintiff is the holder of seven international and Benelux trademarks with a design of three vertical and parallel lines having the same width ( three-stripes mark ). These lines are placed over the whole length of trousers, sleeves, etc. in colors contrasting with the basic color of the clothing. The marks are all registered for sportswear and casual clothing. The products of the defendants consist of sportswear and casual clothing that have two parallel lines with the same width 64. Euro-Tyre B.V. v. Eurotyre S.A., Eurotyre G.I.E. & Eurotyre Benelux N.V., LJN BJ9431 (Dutch Supreme Court, Nov. 20, 2009), available at No. B

42 Vol. 101 TMR 839 over the length of trousers, sleeves, etc. in colors contrasting with the basic color of the clothing. Three stripes (on left, in back) versus two stripes (on right, in front) Adidas brought an infringement action against the defendants for marketing clothing with a two-stripe design, as this design was similar to Adidas s trademarks. The alleged infringements dated from Adidas first summoned H&M in an interlocutory procedure and another defendant (Marca) in proceedings on the merits. H&M was ordered to cease and desist the use of a sign similar to Adidas s trademark but appealed this decision. Marca appealed the decision in the proceedings on the merits in which infringement was found. The actions were joined by the court of appeals. In the final decision of the court of appeals, all claims of Adidas were denied. This decision was appealed in cassation by Adidas. Following the objections of Adidas, the Dutch Supreme Court, in an interlocutory decision, asked the European Court of Justice (EJC) (now known as the Court of Justice of the European Union) whether, when determining the extent of protection of a trademark that is not inherently distinctive but has integrated into the public s awareness through use, one should consider Freihaltebedurfnis : the public interest in the availability of certain signs. The EJC decided that for the determination of the extent of protection one does not need to consider the Freihaltebedurfnis, except for situations mentioned in Article 6(1)(b) of the Trademark Directive (regarding the use of a sign to point to characteristics of the goods and services). The court of appeals had held that one should take into account the Freihaltebedurfnis when judging the scope of protection of a trademark and that one could not give up that availability for the benefit of the protection of a trademark. In the subsequent proceedings, following the decision of the EJC, the Supreme Court decided that this holding of the court of appeals was incorrect. The Supreme Court found no exception within the meaning of Article 6(1)(b) Trademark Directive. The Supreme

43 840 Vol. 101 TMR Court nullified the final decision of the court of appeals and referred the case to another court of appeals for further proceedings on the question of infringement. 65 This decision is a step forward in the ongoing case regarding the scope of protection of the three-stripe mark of Adidas. More generally, it is a further comment on trademark law in the European Community with regard to the scope of trademark protection and restrictions to that protection for the benefit of third parties in light of the public interest. III.D.2.a. Fair Use G-Star is the holder of the figurative Community trade mark (CTM) with the text G-STAR ORIGINALS RAW DENIM, 66 for goods in Classes 3, 18, and 25 (jeans and other casual clothing) (below, illustration at left). Makro is a self-service wholesale trader in food and non-food, e.g., clothing. In her leaflet of July 1, 2002, Makro offered G-star jeans using the aforementioned CTM (below, illustration at right). Plaintiff s mark Defendant s advertisement G-Star summoned Makro, seeking to prohibit Makro from selling and advertising products under the trademark G-Star at least in a fashion that harmed the reputation of G-Star s trademark. 65. Adidas AG and Adidas Benelux B.V. v. Marca Mode, C&A Nederland, H&M Hennes & Mauritz Netherlands B.V. and Vendez Kbb Nederland B.V., LJN BK0674 (Dutch Supreme Court, Dec. 11, 2009), available at No. B CTM No , registered June 26, 2003.

44 Vol. 101 TMR 841 The court of first instance rejected all claims of G-Star. G-Star appealed this decision, but the court of appeals upheld the earlier decision. This decision was appealed in cassation by G-Star. It was G-Star s position that following the decisions of the EJC in the Dior/Evor (C-337/95) and BMW/Deenik (C-63/97) cases, third parties could use a trademark in an advertisement only when it would be reasonably necessary for the further marketing of the products bearing that trademark. G-Star argued that this did not include the use of its figurative trademark. The Dutch Supreme Court argued that for products that were exhausted, it followed from EJC case law that the reseller had the freedom to resell, which included the freedom to use the trademark to point to the origin of those products. This freedom had the proviso that the reseller had to act loyally with respect to the legitimate interests of the trademark owner. Therefore, resale and the use of the trademark would be allowed under these conditions, unless the trademark holder had a valid reason to oppose the marketing. Those valuable reasons included, e.g., the impression of a commercial connection between the user and the trademark holder, use of the trademark that was not in conformity with the common use in the industry, or other circumstances by which the trademark s reputation could be damaged. The Supreme Court held that there was no legal ground for further assessment, such as the assessment of a necessity for the use of the trademark by third parties for the resale of products bearing the mark. The Dutch Supreme Court therefore rejected the appeal of G-Star. 67 This decision is a further examination of accepted trademark use by third parties in advertisements for products bearing that trademark. The framework for assessing the legitimate use of the trademark of another party is set out in this decision. III.H.4. Evidence Coca-Cola is the holder of three figurative trademarks for its 1.5-liter bottles (called the contour bottle ) registered on May 30, 2007, for Class 32, mineral drinks. Superunie is the holder of a three-dimensional (3D) trademark showing its model for a 1.5-liter bottle called the First Choice bottle, registered on February 22, G-Star International Ltd. and G-Star International B.V. v. Metro Cash & Carry Nederland B.V., LJN BI2335 (Dutch Supreme Court, July 10, 2009), available at No. B

45 842 Vol. 101 TMR Coca-Cola Superunie Coca-Cola was using its contour bottle before Superunie designed its First Choice bottle. Coca-Cola brought an infringement action against Superunie for using the First Choice bottle. Coca-Cola sought a prohibition against Superunie s use of the First Choice bottle, stating that Superunie, by using the particular shape, colors, label, typography, and logo for its First Choice bottle, created an overall impression of both the Coca-Cola and Superunie bottles that was confusingly similar and therefore Superunie was infringing Coca-Cola s trademark. To substantiate its position, Coca-Cola submitted two market surveys conducted at the request of Coca-Cola. In addition, Coca-Cola stated that its trademark was well known, which reputation Superunie impaired by the use of its First Choice bottle. Coca-Cola also sought nullification of Superunie s 3D trademark, because Superunie was acting in bad faith during the filing of its trademark. In its defense, Superunie claimed that the surveys should not be taken into consideration. One of the defects of the surveys, Superunie claimed, was that the control research that was carried out made it impossible to consider the possible market leader effect of Coca-Cola. Because parties differed in their opinions about the validity of the market surveys, the court ordered that a new market survey be conducted before the court s deciding of the case on the merits. 68 This decision reflects the dubious status of market surveys in legal cases. A survey that is conducted by only one party may be considered biased. The opposing party will always search for (and will often find) defects in a survey. In this case, the court decided that it needed a new survey designed by both parties. 68. Coca-Cola Company v. Coöperatieve inkoopvereniging Superunie B.A., HA ZA (District Court of Arnhem, Sept. 9, 2009), available at No. B

46 Vol. 101 TMR 843 BRAZIL I.A.1. Prior Use In November 2007, Getaway Turismo Ltda. filed a lawsuit 69 against the Brazilian Patent and Trademark Office (PTO) and Gateway Viagens e Turismo before the 35th Federal Court of the State of Rio de Janeiro. The suit aimed at reversing the PTO s decision that cancelled the plaintiff s registration for the composite trademark G GETAWAY TURISMO in Class 39 (see below). 70 The cancellation was based on Gateway Viagens prior registration of the word mark GATEWAY 71 (registered in the same class for similar services); Getaway Turismo had argued prior use, in accordance with Article 129 of the Brazilian Industrial Property Law, 72 and senior rights in its corporate name, as per Article 124, item V, of that law. 73 The court rejected Getaway Turismo s claims on the ground that although the plaintiff evidenced use of the trademark GETAWAY since 1990, it had not requested the mark s registration until 1996, after Gateway Viagens had already been granted a trademark registration for GATEWAY without ever being challenged at the administrative instance. The judge stressed that Article 124, item V was not applicable to this case, as that provision aims at assuring protection to corporate names by impeding third parties from obtaining registration of trademarks that, totally or partially, reproduce distinctive elements of another party s commercial name for similar or identical purposes. 69. Lawsuit No , filed Nov. 21, Registration No , filed May 15, 1996, granted Mar. 5, Registration No in old Brazilian Class 38.30, filed Feb. 28, 1994, granted Apr. 9, Law No. 9,279/96, May 14, Article 129, Paragraph 1 of the law provides: Any person who, at the date of priority or at the date of application, has been using, in good faith, an identical or similar mark for at least 6 (six) months in the Country to distinguish or certify an identical, similar or related product or service, shall have preferential rights to registration. 73. Article 124, item V provides: The following shall not be registrable as marks:... reproductions or imitations of a characteristic or differentiating element of a title of an establishment or a name of an enterprise belonging to another party, likely to mislead or cause confusion with such distinctive signs....

47 844 Vol. 101 TMR The lower court judge also held that Article 124, item XIX of the Industrial Property Law 74 was applicable to this case, owing to the graphical similarity of the trademarks GETAWAY and GATEWAY. In his view, consumers would be led into confusion if they were to coexist. Thereupon Getaway Turismo filed an appeal 75 before the 2d Specialized Chamber of the Federal Court of Appeals for the Second Circuit. The appellant argued that the owner of a previous commercial name enjoyed exclusive rights over its characteristic elements regardless of the type of business in which it was engaged, such rights being sufficient to invalidate subsequent trademarks that imitated or reproduced it. Getaway Turismo also reiterated its argument of prior use under Article 129. In its judgment of the appeal, the Court held that the right of prior use foreseen in Article 129 could not be applied in this case, as that provision assured the prior use for the registration rather than the registration itself. That meant that the prior use right could only be exercised before the existence of a third party s registration, and at the administrative instance (i.e., by challenging a trademark application before the PTO). According to the Court, after a third party is granted a registration without ever being challenged by the owner of the prior use right, it is no longer possible for the latter to claim such right by means of a lawsuit to have the third party s registration cancelled. The Court further held that Article 124, item V also was not applicable to this case because the terms GATEWAY and GETAWAY were the distinctive elements of the commercial names of the defendant and plaintiff, respectively. Last, the Court held that the marks at issue could not coexist in the market because Article 124, item XIX of the Industrial Property Law was applicable to the case on account of their similarity, and because, when translated, they invoked similar ideas and ideals and thus could lead consumers into confusion. Therefore, the appellate court rejected the appeal and upheld the lower court s decision Article 124, item XIX provides: The following shall not be registrable as marks:... reproductions or imitations, in whole or in part, even with additions, of a mark registered by another party, to distinguish or certify a product or service which is identical, similar or related, which [reproductions or imitations] are likely to cause confusion or association with another person s mark Appeal No , filed May 7, Getaway Turismo Ltda. v. Brazilian Patent and Trademark Office & Gateway Viagens e Turismo, Case No (Federal Court of Appeals, 2d Circuit, Aug. 25, 2009).

48 Vol. 101 TMR 845 I.B.1. Generic Mark Peerless S/A, a Brazilian pump manufacturing company, filed a declaratory action 77 before the 12th Federal Court of Rio de Janeiro seeking a declaration that the trademark MARK PEERLESS was registrable and a reinstatement of its applications 78 for the composite trademark MARK PEERLESS. The applications had been rejected by the Brazilian PTO based on Article 65, item 6 of the then current Industrial Property Law, 79 the PTO finding that in translation the mark was highly generic. The court partially granted the claim and declared that the trademark MARK PEERLESS was registrable. The PTO filed an appeal 80 before the 2d Specialized Chamber of the Federal Court of Appeals for the Second Circuit, but the appeal was denied by a majority decision. As the lower court s decision was not unanimous (and as per the civil procedure rules in force at the time), it was possible to file another appeal to have the decision reviewed by one of the sections of the Federal Court of Appeals for the Second Circuit. Therefore, the PTO filed such an appeal. The decision rendered by the Second Chamber was reviewed and reversed, the appellate court holding that the trademark MARK PEERLESS could not be registered. Thereupon Mark Peerless filed an appeal before the Superior Court of Justice. It argued that the trademark MARK PEERLESS had to be analyzed in the English language, not in its translation into Portuguese. 81 The Superior Court of Justice ascertained that the prohibition of registration of generic marks was also foreseen in the current Industrial Property Law. 82 It emphasized that the nature, nationality, weight, value, [and] quality, to which the law alludes, are characteristics of the product itself, and that the trademarks that are not registrable are those that merely reveal the nature, nationality, weight, value, or quality of the product they identify. 77. Lawsuit No , filed July 7, Application Nos , , , and , filed Apr. 4, Law No. 5772/71, Dec. 21, Article 65, item 6 provided: [The following] [a]re not registrable as a trademark:... generic name or its graphical representation, an expression commonly used to designate genus, species, nature, national origin, destination, weight, value and quality Appeal No , filed Mar. 14, Appeal No /RJ, filed Dec. 15, Article 124, item VI provides: The following shall not be registrable as marks:... signs of a generic, necessary, common, ordinary or simply descriptive nature when related to the product or service to be distinguished, or those commonly used to designate a characteristic of a product or service regarding its nature, nationality, weight, value, quality and time of production or providing of a service, except where presented in a sufficiently distinctive form.

49 846 Vol. 101 TMR The Superior Court of Justice concluded that there were no impediments to the registration of the trademark MARK PEERLESS as it did not refer, even reflexively, to any product. 83 It further held that the generic character of a trademark should be verified according to national practice, meaning that, even when the mark is written in another language, what should be verified is whether the term is in common use in Brazil as written. In the Court s view, although the translation of the term MARK PEERLESS was in common use, it had no meaning for the average Brazilian consumer, and, thus, the mark could be registered. I.B.4. Geographically Primarily Descriptive/ Deceptively Misdescriptive Restaurante Arábia Ltda. and Arábia Empreendimentos, Participações e Administração Ltda. filed a lawsuit 84 before the 16th Civil Court of Curitiba of the State Court of Paraná against Areibian Restaurante Ltda. In their suit, which was based on several registrations for the trademark ARÁBIA, the plaintiffs alleged that the term AREIBIAN, used by defendant as a trademark and a distinctive element of its commercial name, was extremely similar to ARÁBIA, as used in their trademark and company names; they requested that the defendant be compelled to cease its use of AREIBIAN in conducting its businesses. The court rejected the plaintiffs arguments. It held that the coexistence of the marks ARÁBIA and AREIBIAN would not lead to consumer confusion, particularly because the companies operated in different localities. It further held that the plaintiffs were not entitled to the exclusivity claimed, finding that ARÁBIA was a term in common use, as it indicated a certain geographical region and, thus, was not registrable under Article 124, item VI of the Industrial Property Law. The plaintiffs filed an appeal 85 before the 16th Civil Chamber of the Court of Appeals of the State of Paraná; the appeal was rejected, the court finding that, despite being similar, the terms ARÁBIA and AREIBIAN were not conflicting, as their similarity was not significant enough to result in consumer confusion. Therefore, the plaintiffs filed an appeal 86 before the 3d Chamber of the Superior Court of Justice, whose seat is in Brasilia. The appellants argued that because the term ARÁBIA was the characteristic element of its commercial name and, moreover, was registered with the Brazilian PTO as a trademark, 83. Mark Peerless S/A v. Brazilian Patent and Trademark Office, Case No /RJ (Superior Court of Justice, Oct. 10, 2009). 84. Lawsuit No. 60/2003, filed Jan. 1, Appeal No , filed May 10, Appeal No /PR, filed Oct. 18, 2007 (Reporter Justice Nancy Andrighi).

50 Vol. 101 TMR 847 and because the term AREIBIAN clearly imitated ARÁBIA, the use of AREIBIAN by the defendant as a distinctive element of its commercial name and trademark to identify the same services was undue. The plaintiffs also claimed that their earlier commercial name and trademark registrations assured their rights of exclusivity over the term ARÁBIA within the Brazilian national territory. 87 The Reporter Justice for this appeal observed that the legislation in force allows country, region, or locality names geographical names that do not constitute indications of source or appellations of origin to function as distinctive elements of trademarks and/or service marks provided they do not suggest a false source. 88 She therefore found that, in this case, the plaintiffs had legitimately used the geographical name as an evocative trademark, as it suggested to consumers that the services rendered were related to the production and commercialization of Arab food, without leading them to believe that the food sold was from the region of Arabia. The Reporter Justice stressed, however, that the mere use of a previously registered trademark by a third party was not sufficient to constitute a violation of a registrant s exclusivity right; it was, further, necessary, under Article 124, item XIX of the Industrial Property Law, that such use effectively caused a risk of doubt, mistake, or confusion by consumers between the products or services of the companies involved. The Reporter Justice s opinion was fully accepted by the other justices of the 3d Chamber of the Superior Court of Justice, and the appeal was unanimously rejected. 89 I.D.1. Similarity of Marks Glaxo Smith Kline Brasil Ltda. (GSK) brought a court action 90 against Laboratório Teuto Brasileiro Ltda. before the 19th Civil Court of the State Court of Rio de Janeiro, seeking to compel the defendant to cease its use of the terms KWEEL and KWELL in its advertising material. GSK argued that the defendant was 87. Article 129, first paragraph, of the Industrial Property Law provides: Ownership of a mark shall be acquired by a valid registration pursuant to the provisions of this Law; the owner shall have exclusive use of the mark throughout the national territory, without prejudice of the provisions of Arts. 147 and 148 with respect to collective and certification marks. 88. Article 181 of the Industrial Property Law provides: A geographic name that is not an indication of source or denomination of origin may be used as a characteristic element of a product or service mark provided it does not suggest a false origin. 89. Restaurante Arábia Ltda. & Arábia Empreendimentos, Participações e Administração Ltda. v. Areibian Restaurante Ltda., Case No /PR (Superior Court of Justice, Sept. 28, 2009). 90. Court Action No , filed June 16, 1999.

51 848 Vol. 101 TMR trying to take advantage of its famous mark KWELL and lead consumers into confusion. The plaintiff markets and sells a product for the treatment of hair lice under the trademark KWELL, which was duly registered with the Brazilian PTO. It contended that the defendant had launched a similar product in the market under the trademark KWEEL, which was similar in appearance to the plaintiff s mark, in order to lead consumers into confusion. GSK argued that it had rights of exclusive use over the trademark KWELL, in accordance with Articles 129 and 130 of the Industrial Property Law, 91 and that the defendant s acts constituted unfair competition. Based on the plaintiff s claims, the judge granted an injunction enjoining the defendant s use of GSK s trademarks KWELL and KWEEL in its advertisements, under penalty of payment of a fine. In its defense, Laboratório Teuto claimed that the advertisements for its KWEEL product were not misleading, but merely comparative, and their use therefore was not a crime. It further contended that it did not use GSK s KWELL trademark. In response to the decision granting the injunction request, the defendant filed an interlocutory appeal 92 before the 8th Civil Chamber of the State Court of Appeals of Rio de Janeiro. The appeal was dismissed by the Reporter Judge, however, on the ground that it was untimely filed. The judge granted the plaintiff s requests, finding that the defendant was guilty of unfair competition as it had commercialized and advertised a product similar to the plaintiff s KWELL product under a similar trademark KWEEL and that the defendant expressly mentioned, in its advertisements, that its product was similar to KWELL. This kind of advertisement was, the judge held, not comparative, as claimed by the defendant, but, rather, misleading. The judge also ordered the defendant to pay indemnification for losses and damages, to be settled upon calculation of the award; however, the plaintiff s request of indemnification for moral damages was dismissed. The defendant filed an appeal with the 9th Civil Chamber of the State Court of Appeals of Rio de Janeiro, 93 based on the same arguments presented in its defense, but the appeal was rejected. The appellate court held that, as demonstrated by its use of the 91. Article 130 provides: The owner of a mark or the applicant is also guaranteed the right to: I assign his registration or application for registration; II license its use; III ensure its material integrity or reputation. 92. Interlocutory Appeal No , filed June 11, 2001 (Reporter Judge Paulo Lara). 93. Appeal No , filed Aug. 12, 2003 (Reporter Judge João Carlos Guimarães).

52 Vol. 101 TMR 849 mark KWEEL, the defendant clearly had the intention of leading consumers into confusion, and, therefore, its acts constituted unfair competition. Following the decision of the 9th Civil Chamber of the State Court of Appeals of Rio de Janeiro, the lower court judge initiated the phase of calculation of the award. The defendant was ordered to pay an indemnification of BRL 1,584, (ca. USD 931,800) as loss of profits; BRL 5,799, (ca. USD 3,411,674) as incidental damages; and court costs and attorneys fees, to be adjusted for inflation. Laboratório Teuto sought to reverse the lower court s decision settling the amount to be paid as indemnification by filing an interlocutory appeal 94 before the 8th Civil Chamber of the State Court of Appeals of Rio de Janeiro. The appeal was granted in part, the indemnification for incidental damages being reduced to BRL 3,118, (ca. USD 1,834,343); however, the rest of the total indemnification amount was left unchanged. In response, both parties filed Special Appeals 95 against the decision of the 8th Civil Chamber of the State Court of Appeals of Rio de Janeiro, which were rejected by the 3d Chamber of the Superior Court of Justice. 96 Against that decision Laboratório Teuto filed two motions for clarification, which were granted merely to correct material mistakes of the decision that rejected the Special Appeals, 97 their outcome not being modified. Laboratório Teuto filed another appeal against the rejection of its Special Appeal, but that appeal was abandoned by the Superior Court of Justice owing to lack of payment of official fees. 98 On March 2, 2011, the decision by which the appeal was abandoned became res judicata. Notwithstanding that determination, Laboratório Teuto filed a petition requesting the nullity of all acts by GSK s attorneys and asking that all acts that occurred after the filing of its Special Appeal be cancelled on grounds of lack of presentation of a valid power of attorney. On April 29, 2011, the Reporter Judge rendered a decision merely informing the petitioner that, as the latest decision rendered in the case had become res judicata, the case records should be sent to the Presidency of the Superior Court of Justice; that occurred on May 9, Interlocutory Appeal No , filed June 1, 2007 (Reporter Judge Ana Maria Pereira de Oliveira). 95. Special Appeal No /RJ, filed Oct. 6, 2009 (Reporter Judge Sidnei Beneti). 96. Decision of May 25, Decisions of Oct. 14, 2010, and Nov. 26, Appeal No. EResp , filed Jan. 1, 2011.

53 850 Vol. 101 TMR I.D.3. Conflict Between Trademarks and Corporate Names In April 1997, Fiorella Produtos Têxteis Ltda. filed a lawsuit 99 before the 13th Civil Court of João Mendes Júnior of the State Court of São Paulo against Produtos Fiorella Ltda., seeking to have the defendant cease the use of the term FIORELLA in its corporate name, as well as any other term confusingly similar to the plaintiff s commercial name and trademark FIORELLA, 100 registered for bed, table, bath and kitchen linen in old Brazilian Class The defendant argued that the trademarks and commercial names in question could peacefully coexist, as the companies were engaged in different fields of business: the plaintiff manufactured textile products (bed, table, bath, and kitchen linen), while the defendant manufactured household products and plastic goods in general. The lower court partially granted the plaintiff s claim. It ordered the defendant to modify its commercial name and abstain from using the term FIORELLA in connection with its business. Produtos Fiorella appealed before the 3d Private Law Chamber of the State Court of Appeals of São Paulo, 101 aiming at reversing the lower court s decision. The appeal was granted by a majority decision. The appellate court held that the specialty principle should be taken into consideration in an assessment of conflict between a trademark and a corporate name, in order that, if the fields of business of the parties are distinct, they may coexist in the marketplace. In response, Fiorella Produtos filed a Special Appeal 102 before the 3d Chamber of the Superior Court of Justice. The appeal was rejected 103 on the grounds that although both corporate names at issue bore the term FIORELLA, the use of such term by the defendant did not violate the plaintiff s rights, as the parties were engaged in different fields of business, and, thus, there was no chance of consumer confusion. The decision of the Superior Court of Justice became res judicata on April 7, 2010, and thus is not subject to further appeal. 99. Lawsuit No , filed April 4, Registration No , filed Apr. 30, 1979, granted Feb. 25, Appeal No , filed Apr. 30, 2000 (Reporter Judge Antonio Mansur) Special Appeal No /SP, filed July 5, 2000 (Reporter Judge Vasco Della Giustina) Decision published Mar. 17, 2010.

54 Vol. 101 TMR 851 I.F. Famous and Well-Known Marks Visa International Service Association and Visa do Brasil Empreendimento Ltda., owners of the trademark VISA, 104 filed an action 105 before the 1st Civil Court of Formiga of the State Court of Minas Gerais against Indústria de Laticínios Pauliminas Ltda., seeking a court order compelling the defendant to cease its use of the plaintiffs trademark in its trademark VISA LATICÍNIOS. 106 The plaintiffs argued that VISA was considered a well-known mark under Article 67 of the previous Industrial Property Law, 107 and consequently it deserved protection in all classes of goods and services. The defendant then filed a counterclaim, seeking a declaration that the plaintiffs well-known trademark was diluted and, therefore, able to be freely used by third parties. The lower court rejected the plaintiffs claims, finding that the principle of specialty of trademarks should not be disregarded in this case, as the plaintiffs registration had not been renewed, under the terms of Article 67 of the previous Industrial Property Law, and the Brazilian PTO had not declared VISA a famous mark, under the terms of Article 125 of the current Industrial Property Law. 108 The defendant s counterclaim, in turn, was dismissed, without analysis of its merits, on grounds of juridical impossibility. Both the plaintiffs and the defendant filed appeals 109 against the lower court s decision. These were rejected by the State Court of Appeals of Minas Gerais, which held that the principle of specialty of trademarks must be applied in this case as, in the court s understanding, there was no risk of consumer confusion as to the origin of the goods and services offered under the marks in question. The plaintiffs then filed a further appeal 110 before the 3d Chamber of the Superior Court of Justice, seated in Brasilia. That court rejected the appeal on the ground that the trademark VISA was not recognized by the Brazilian PTO as a well-known mark or 104. Registration No in Class 36, granted Jan. 10, Court Action No , filed June 9, Application Nos , , , and , in Classes 29, 30, 31, and 31, respectively, filed Jan. 18, Article 67 provided: Marks registered in Brazil and considered well-known... shall be guaranteed special protection in all classes,... provided there is possibility of leading consumers into confusion as to the origin of the products, goods and services, or damage to the reputation of the trademark Article 125 provides: Marks registered in Brazil and deemed to be famous shall be afforded special protection in all fields of activity Appeal No /000, filed Aug. 6, Appeal No /MG, filed May 17, 2007.

55 852 Vol. 101 TMR famous mark. 111 It should be noted, however, that although the Superior Court of Justice rejected the plaintiffs appeal, it established that the rejection was due solely to the fact that VISA had not been declared a well-known mark by the PTO, and not because the coexistence of the trademarks in question would not lead consumers into confusion (as opposed to the understanding of the State Court of Appeals of Minas Gerais). II.C.1.a. Word Marks In August 2007, Comitê Olímpico Brasileiro ( Brazilian Olympic Committee ) filed a lawsuit 112 before the 35th Federal Court of Rio de Janeiro against the Brazilian PTO and De Álcool Ltda., 113 seeking the annulment of defendant De Álcool s trademark registration 114 for FOGO OLÍMPICO ( Olympic fire ). In brief, the plaintiff argued that it is an entity that represents the spirit of the Olympic Games and spreads the Olympic ideal in Brazil, and hence that the PTO erred in granting the trademark registration for FOGO OLÍMPICO, as Law No. 9,615/ assured the plaintiff the exclusive use of the expression Jogos Olímpicos ( Olympic Games ) and of any other terms or expressions related to the Olympics; this was certainly the case with the trademark FOGO OLÍMPICO, as it clearly referred to the Olympic torch. The plaintiff further argued that the defendant used its trademark for alcoholic beverages, thus associating the product with the Olympics in a manner that defamed the image of the sport and violated the provisions of Article 124, items XIII and XIX of the Industrial Property Law 116 and of Law No. 9,294/96, which provides for restrictions on the use and advertising of alcoholic beverages. The defendant claimed to have been in business for over 50 years, and that its trademark FOGO OLÍMPICO served not to 111. Resolution No. 121/05 (Brazilian Patent and Trademark Office, Sept. 6, 2005) Lawsuit No , filed Aug. 2, Previously known as Dallegrave Tesche & Cia Ltda Registration No , filed June 8, 1999, granted Sept. 16, 2003, in the name of Dallegrave Tesche, for alcohol and ethylic alcohol in Class Law No. 9,615/98, Article 15, Section 2 provides: It is exclusive to the Brazilian Olympics Committee COB and to the Brazilian Paralympic Committee CPOB, the use of the Olympic and Paralympic flags, mottos, anthems, symbols, as well as of the terms jogos olímpicos [Olympic Games], olimpíadas [Olympic Games], jogos paraolímpicos [Paralympic Games] and paraolimpíadas [Paralympic Games], being allowed the use of these when it comes to events pertaining to educational sports and participation Article 124, item XIII provides: The following are not registrable as marks:... names, prizes, or symbols of official or officially recognized sporting, artistic, cultural, social, political, economic or technical events or imitations likely to create confusion, except when authorized by the competent authority or entity promoting the event.

56 Vol. 101 TMR 853 identify alcoholic beverages but, rather, alcohol for cleaning purposes, as the company was, in fact, engaged in the manufacture of chemical products and cleaning products. The lower court judge rejected the plaintiff s request on the ground that Law No. 9,294/96 was not applicable to this case, as defendant was engaged in the manufacture of chemical and cleaning products rather than alcoholic beverages. With regard to the plaintiff s argument regarding the applicability of Law No. 9,615/98, which provides that Olympic flags, mottos, anthems, and symbols are to be used exclusively by Comitê Olímpico Brasileiro, the judge decided that the contested trademark FOGO OLÍMPICO was not being used by the defendant to identify sportive events and its use was, therefore, legitimate. Under the same reasoning, the judge understood that Article 124, item XIII of the Industrial Property Law was not applicable to this case. Finally, the judge understood there were no chances of conflict or improper association of the trademarks in question by consumers, as prohibited by Article 124, item XIX of the Industrial Property Law, because the activities in which the parties were engaged were completely different. The plaintiff filed an appeal 117 aiming to reverse the lower court s decision, presenting the same arguments as those given in its brief. The appeal was rejected on the ground that the parties were engaged in completely different activities. 118 The Brazilian Olympic Committee filed a motion for clarification against the decision that rejected the appeal; however, its motion was rejected. 119 The decision rejecting the motion has not yet become res judicata. III.A.3.a. Civil Actions Souza Cruz S/A, the owner of the trademarks COLOMY and TREVO, filed a civil damages lawsuit 120 before the Court of Veranópolis of the State Court of Rio Grande do Sul against Grafisa Gráfica Zanella and Tania Maria Oliveira dos Santos, alleging that the defendants were guilty of counterfeiting cigarette packs. In addition to material damages, the plaintiff sought moral damages under Article of the Industrial Property Law, arguing that its image among consumers was affected Appeal No , filed Sept. 14, Decision of Feb. 22, Decision of May 31, Lawsuit No , filed Feb. 1, Article 209 provides: The injured party shall be entitled to compensation and damages in respect to acts that infringe industrial property rights and acts of unfair

57 854 Vol. 101 TMR The lower court recognized the similarity of the counterfeit and the plaintiff s products and trademarks. It therefore ordered the defendants to cease use of the trademarks COLOMY and TREVO, or any other mark owned by Souza Cruz, as well as to pay material and moral damages for their undue use. Both parties filed appeals 122 against the first instance decision before the 18th Civil Chamber of the State Court of Appeals of Rio Grande do Sul. While the plaintiff requested an increase of the moral damages established by the lower court, the defendants aimed at reversing the decision. The State Court of Appeals partially granted the defendants claim, recognizing only pecuniary damages in the case and, therefore, denying the plaintiff the payment of moral damages. Consequently, the plaintiff filed an appeal before the 3d Chamber of the Superior Court of Justice, with its seat in Brasilia. 123 According to the Superior Court of Justice, counterfeiting leads consumers into confusion as to the origin of the goods, and if the consumer cannot identify the origin of the goods, the manufacturer cannot be identified by its target public. Thus, a counterfeit usurps part of the manufacturer s identity, because the counterfeiter pretends to be the legitimate manufacturer of the goods. The Court held that the violation of such right entitles the manufacturer to seek indemnification for moral damages, especially because, apart from their not being able to identify the manufacturer, consumers could be led to purchase products of the counterfeiter, which might not have the same level of quality as the original products. In June 2003, Grendene S.A. filed a lawsuit 124 before the 1st Court of the City of Farroupilha, State of Rio Grande do Sul, against Galcari Industria e Comércio de Matrizes Ltda. Grendene sought an order prohibiting the defendant from trading in counterfeit molds for manufacturing shoes identical to its own. It argued that manufacturing, without authorization of the owner of the product, a product that incorporates a registered industrial design or substantial imitation thereof can be misleading or competition that are not specified in this Law, but which are liable to prejudice another s reputation or business or to lead to confusion between commercial, industrial establishments or service providers, or between products and services placed on the market Appeal No , filed Oct. 22, Appeal No /RS, filed Feb. 20, Lawsuit No. 048/ , filed June 10, 2003.

58 Vol. 101 TMR 855 confusing to consumers, in violation of Article 187 of the Industrial Property Law. 125 Grendene likewise filed a search and seizure action against Galcari, on the same grounds as those of the main court action. The plaintiff sought the seizure of the defendant s counterfeit molds and machines. The lower court judge agreed with the plaintiff s claims and ordered the defendant to refrain from trading in counterfeit molds for manufacturing shoes identical to those produced by the plaintiff, as well to pay an indemnification for losses and damages and all court costs and attorneys fees. The defendant filed an appeal 126 before the 9th Civil Chamber of the State Court of Appeals of Rio Grande do Sul. It argued that it did not commit the crime prohibited by Article 187 of the Industrial Property Law, as the plaintiff s claims referred to the furnishing of counterfeit molds rather than to the manufacture thereof. It also claimed that there was no competition between the parties because they produced distinct products. The appellate court partially granted the appeal, reversing the lower court s decision regarding the indemnification on the ground that no indemnification should be determined as the plaintiff had never evidenced the occurrence of damages. Therefore, Grendene filed a Special Appeal 127 before the 4th Chamber of the Superior Court of Justice, aiming to reverse the 9th Civil Chamber s decision and have Galcari ordered to pay an indemnification for losses and damages arising from the counterfeiting of Grendene s products. The Superior Court of Justice, through a decision of the Reporter Judge, 128 granted Grendene s Special Appeal and ordered the payment of an indemnification. According to the Reporter Judge, the Superior Court of Justice s understanding on this matter was that the crime perpetrated by the counterfeiter by itself was sufficient for him to be ordered to pay losses and damages, and, thus, it was not necessary for the plaintiff to evidence the occurrence of damages Article 187 provides: Manufacturing, without consent or authorization of the owner, a product that incorporates a registered industrial design, or a substantial imitation thereof that is likely to mislead or cause confusion. Penalty - imprisonment, from 3 (three) months to 1 (one) year, or fine Appeal No , filed Aug. 15, Special Appeal No /RS, filed Oct. 28, 2008 (Reporter Judge Aldir Passarinho Jr.) Decision of May 27, 2010.

59 856 Vol. 101 TMR III.A.4. Unfair, Unauthorized, or Improper Use In November 2006, the Coca-Cola Company filed a lawsuit 129 before the 39th Federal Court of Rio de Janeiro against Indústria e Comércio de Bebidas Palazzo Ltda. and the Brazilian PTO, seeking the nullification of Palazzo s industrial design registration for a pet bottle bearing features that resembled the famous pet bottle used by Coca-Cola in its product COCA-COLA, 130 as well as a preliminary injunction suspending the registration s effects until a final decision on the merits of the lawsuit was rendered. Coca-Cola alleged that Palazzo s industrial design registration should be declared null because (1) it violated the plaintiff s Brazilian registrations for composite and three-dimensional marks that corresponded to the designs of the COCA-COLA contour bottle in various sizes; 131 (2) it violated the plaintiff s industrial design registration for its famous pet bottle; 132 and (3) registrations for industrial designs are granted by the Brazilian PTO automatically, that is, without examination. Reg. No. Reg. No. Reg. No. Reg. No. Reg. No. Reg. No The PTO agreed with Coca-Cola s pleas, but argued that it lacked standing to be sued in this case. Palazzo presented its defense motion, arguing that its industrial design registration was granted in accordance with the Industrial Property Law and therefore Coca-Cola s claim should be rejected. The lower court denied the preliminary injunction requested by Coca-Cola. It noted that Palazzo s industrial design registration was granted by the PTO on October 14, 2003, and, therefore, considering that the lawsuit was filed almost three years after that granting decision, Coca-Cola failed to evidence the urgency necessary for that grant Lawsuit No , filed Nov. 29, Industrial Design Registration No , granted Oct. 14, Registration Nos (three-dimensional mark), (threedimensional mark), (composite mark), (composite mark), (three-dimensional mark), and (three-dimensional mark), all in Class Industrial Design Registration No , granted Oct. 5, 1999.

60 Vol. 101 TMR 857 The lower court also denied the plaintiff s claim on the merits, dismissing the lawsuit based on its finding that Palazzo s industrial design was sufficiently original when compared to Coca- Cola s contour bottle design. 133 Coca-Cola s appeal 134 before the Federal Court of Appeals for the Second Circuit was rejected, the court finding that Palazzo s bottle did not have the same ornamental curvature as Coca-Cola s bottle, among other disparities, as verified by visual analysis and expert opinion. On August 19, 2009, Coca-Cola filed a motion for clarification, claiming that the appellate court failed to analyze the originality and novelty requirements. However, the motion was not accepted, the court holding that the omission referred to did not exist, as the judge had expressly stated that he considered Palazzo s industrial design sufficiently original when compared to Coca-Cola s contour bottle design. Coca-Cola then filed a Special Appeal to be judged by the Superior Court of Justice. This appeal, which was accepted, is pending remittance to the Superior Court of Justice for judgment. III.A.8. Parallel Imports/Gray Marketing American Home Products Corporation, producer of the CENTRUM brand multivitamin, American Cyanamid Company, owner of a Brazilian registration for the trademark CENTRUM, and Laboratórios Wyeth-Whitehall Ltda., owner of exclusive production and marketing rights to the CENTRUM product in Brazil, brought suit 135 against LDZ Comércio Importação e Exportação Ltda. before the 38th Civil Court of the State Court of São Paulo. The plaintiffs alleged infringement of intellectual property rights and unfair competition, in that the defendant had been importing and marketing original products of American Home Products Corporation without proper authorization, in violation of Article 132, item III of the Brazilian Industrial Property Law. 136 The court rejected the claim on the ground that the defendant did not violate the plaintiffs rights, as the goods in question were legally introduced into the Brazilian market with the consent of American Home Products. The plaintiffs presented a motion for clarification, but it was denied Decision of May 16, 2007, published in Official Court Gazette, June 6, 2008, at Appeal No , filed June 30, Lawsuit No / Article 132, item III provides: The owner of a mark shall not... prevent free circulation of products placed on the internal market, by the owner or with his consent, without prejudice of the provisions of Paragraphs 3 and 4 of [A]rticle

61 858 Vol. 101 TMR Consequently, the plaintiffs filed an appeal 137 before the 10th Civil Chamber of the State Court of Appeals of São Paulo against the lower court s decision. The appellate court found that the goods commercialized by LDZ in Brazil were, in fact, imported by another Brazilian company, Importex Importação e Exportação Ltda., which, presumably, promoted their importation. The illicit nature of this transaction had not been evidenced in the case records. The court s understanding, therefore, was that LDZ could not be impeded from commercializing goods acquired from a company that supposedly regularly promoted their importation, there being a presumption of legality attached to the transaction because, while the plaintiffs could have produced evidence that it was illegal, they had failed to do so. In its decision the appellate court also emphasized that the act of placing a product in the market by selling it to importers and distributors must, indeed, be considered an unequivocal authorization for the free circulation of that product. Accordingly, the court stressed that it would be illogical... to apply the interpretation intended by [the] plaintiffs to Article 132 of the Industrial Property Law, as, according to their claims, two authorizations would be necessary: one [for the placement of a] certain product in the market and another [for] the free circulation thereof. 138 The court s conclusion was that the plaintiffs could not impede the free circulation of the goods by the defendant, as American Home Products Corporation had already authorized their placement within the Brazilian market by selling them to Importex. Thus, it rejected the appeal because of lack of evidence of the unlawfulness of the transaction. American Home Products and American Cyanamid presented another motion for clarification. When that was denied by the State Court of Appeals, they filed an appeal 139 before the Superior Court of Justice. The Superior Court of Justice noted that parallel imports are performed outside the selective distribution system created by the product manufacturer and the owner of the intellectual property rights, but if the importation is authorized by the trademark owner, or by a party whom the owner has authorized to do so, the product enters the domestic market legally. Therefore, if the distributor where the transaction took place authorized the importation, the trademark owner may not impose restrictions on redistribution, even if the owner of the trademark in Brazil is different from the owner of the trademark abroad Appeal No /4-00, filed Mar. 25, Free translation Appeal No /SP, filed Nov. 11, 2003.

62 Vol. 101 TMR 859 The Superior Court of Justice further held that an absolute prohibition on parallel imports would also be incompatible with the principle of free enterprise. 140 Consequently, the appeal was not accepted. BULGARIA I.D.1. Similarity of Marks The Sofia City Court overruled the Bulgarian Patent Office s decision to reject the request for cancellation of the registration of the trademark SOPHTENSIF СОФТЕНЗИФ, owned by the Bulgarian pharmaceutical company Sopharma AD, on the basis of the earlier national registration of the trademark TERTENSIF, which was registered in Bulgaria 141 by the French pharmaceutical company Biopharma-France. 142 The Bulgarian Patent Office and Sopharma AD appealed the decision before the Supreme Administrative Court. The Supreme Administrative Court granted the appeal and made the following findings: 1. The trademarks in question were registered in the same Class 5 (pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides). 2. The goods contained the same active ingredient. Because the consumers of these products were both with and without specialized knowledge, there was a likelihood of confusion on the side of those consumers who did not possess the relevant expertise in the particular field. Therefore, the court found that the trademarks TERTENSIF and SOPHTENSIF СОФТЕНЗИФ were similar and could create 140. Article 1 of the Brazilian Constitution provides, in pertinent part: The Federative Republic of Brazil, formed by the indissoluble union of the states and municipalities and of the Federal District, is a legal democratic state and is founded on: the social values of labour and of the free enterprise.... Article 170 of the Constitution provides: The economic order, founded on the appreciation of the value of human work and on free enterprise, is intended to ensure everyone a life with dignity, in accordance with the dictates of social justice Registration No , granted July 7, Decision No (Supreme Administrative Court of the Republic of Bulgaria, Sofia, May 20, 2010). Available at (the website of the Bulgarian Supreme Administrative Court).

63 860 Vol. 101 TMR confusion among consumers, which constituted a basis for cancellation of the registration of the latter trademark SOPHTENSIF СОФТЕНЗИФ, in accordance with Article 26(3)(1) of the Law on Trade Marks and Geographical Indications (LMGI). 143 I.E. Bad Faith Endemol Nederlands BV filed a suit against Georgi Iliev, accusing him of acting in bad faith by filing the application for a national trademark in Cyrillic: ГОЛЕМИЯТ БРАТ, which translated into big brother. Citing Article 26(3)(iv) of the LMGI, 144 Endemol Nederlands BV, one of the leading companies for producing TV show licenses, among which was Big Brother, based its claim on its earlier international registrations and the popularity of the show Big Brother. Georgi Iliev, the defendant, explained that his idea was to start publishing a newspaper called ГОЛЕМИЯТ БРАТ, which he wanted to give as a present to his sister, in the same way that he had created the periodical OVER 55 and had given it as a present to his mother. In its argument, Endemol Nederlands BV highlighted the following points: the public s awareness of the Big Brother show at the time the trademark application was filed by Georgi Iliev; the earlier international registrations of BIG BROTHER; the evidence from the Commission on Protection of Competition of the Republic of Bulgaria, which showed that the defendant had been held liable in other similar badfaith actions. After reviewing these arguments and following further consideration regarding the conceptual identical meaning of BIG BROTHER and ГОЛЕМИЯТ БРАТ, the court of first instance found that Georgi Iliev acted in bad faith by filing a trademark application for ГОЛЕМИЯТ БРАТ and ruled that the national 143. Article 26(3)(1) of the Bulgarian Law on Trade Marks and Geographical Indications (LMGI) provides: The registration of a mark shall be declared invalid at the request of any legally interested party if: (i) the mark is registered in violation of Article 12[.] 144. Article 26(3)(4) of the LMGI provides: The registration of a mark shall be declared invalid at the request of any legally interested party if: (iv) the applicant has acted in bad faith when filing the application, that fact having been established by a valid court ruling.

64 Vol. 101 TMR 861 trademark ГОЛЕМИЯТ БРАТ should be cancelled, 145 in accordance with Article 26(3)(iv) of the LMGI. III.A.7. Advertising Bulgaria s Commission on Protection of Competition fined the Bulgarian snack food producer Ital Food Industry AD EUR 109,058 (US $138,373) for a misleading television commercial. 146 The Commission found the commercial to be misleading because it created the impression and led consumers to believe that the advertised product Bruschette Maretti, small round breads with various toppings, originated in Italy. The commercial is based entirely on the Italian culture and language, and the various ingredients used to make the snack product, such as the olive oil, parmesan cheese, tomatoes and basil, create the same impression. The two variants of the commercial revolve around the main actor in the scenario Fabio, who prepares bruschette in his own bakery named Marretti. In the first episode, Fabio explains to a young woman that the bruschette are made by his grandfather s family recipe. During the commercial, the actors speak Italian, with subtitles in Bulgarian, further creating the impression of an authentic Italian product. In the second episode of the commercial, the plot revolves around a small open market where Fabio is accompanied by a young man called Luigi, to whom Fabio explains the careful selection of the ingredients. At the end, the commercial takes the audience from the market to the Marretti bakery, where the young Luigi gives fresh bruschetta to a young sales assistant. Again, the commercial is in Italian, dubbed in Bulgarian. Against this factual background, the Commission ruled that Ital Food Industry AD s action was contrary to the fair trade practices, as the producer should have clearly indicated that the product was of Bulgarian origin. CANADA I.B.2. Merely Descriptive The Federal Court affirmed the Registrar s finding of descriptiveness of three marks (the Worldwide Marks ) (shown below) that Worldwide Diamond Trademarks Ltd had sought to register for use with diamonds, diamond certificates and diamond 145. Civil Case No (Sofia City Court, Commercial Department VI-4, Sofia, Jan. 8, 2010) Decision No. 345 (Commission on Protection of Competition of the Republic of Bulgaria, Sofia, Mar. 31, 2010). Available at (in Bulgarian).

65 862 Vol. 101 TMR appraisals, diamond cloths, magnifying loops, point of purchase countertop displays, posters, pens, and diamond appraisal services: Worldwide was a diamond distributor in Canada. The right to the exclusive use of the words CANADIAN DIAMOND, DIAMOND, CUT, POLISHED and CANADA and the phrase A DIAMOND THAT IS MINED, CUT, AND POLISHED IN CANADA was disclaimed in the applications for the Worldwide Marks. The applications were opposed by the Canadian Jewellers Association. Although the Registrar upheld the opposition, the grounds of opposition based on descriptiveness under Section 12(1)(b) of the Trade-marks Act were refused. 147 The court concluded that the Worldwide Marks described all Canadian diamonds that had been certified with a certificate, report, or appraisal for a diamond that was mined, cut, and polished in Canada. The only part of the marks that was not descriptive was the Canadian flag-like design with a diamond, which the Registrar had found was not a dominant part of the marks. Even assuming that the element MARK had a diverse range of meanings, the single use of this word was deemed insufficient to render the Worldwide Marks nondescriptive. Further, while the words REPORT, CERTIFICATE, and APPRAISAL did not accurately describe the goods in question, they did clearly describe them. There was no other meaning that could be ascribed to those words apart from the clear description of a certificate, report, or appraisal on the diamond s Canadian origin or its evaluation. Abstract dictionary references, divorced from their context, could not be used to transform a trademark that on first impression was clearly descriptive into one that was not R.S.C c. T-13. Under Section 12(1)(b), a mark is not registrable if it is either clearly descriptive or deceptively misdescriptive... of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin. All references to sections are to the Trade-marks Act unless otherwise noted.

66 Vol. 101 TMR 863 The court concluded that the additional evidence filed failed to demonstrate that the Worldwide Marks had become distinctive pursuant to Section 12(2): 148 there was no evidence of use of two of the marks, and most of the evidence with respect to the third mark was either out of date or not relevant in that Worldwide used a variation or a disjointed form of the mark. 149 In College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada, 150 the Federal Court granted the plaintiff summary judgment. It agreed with the College that the Council should be restrained from using the following titles (the Titles ) in association with educational, training, certification, and registration services; the operation of a traditional Chinese medicine or acupuncture clinic; and the practice of traditional Chinese medicine and acupuncture: (1) Dr. TCM (DOCTOR OF TRADITIONAL CHINESE MEDICINE); (2) R. TCM. H. (REGISTERED TCM HERBALIST); (3) R. TCM.P. (REGISTERED TCM PRACTITIONER); and (4) R. AC. (REGISTERED ACUPUNCTURIST. The court also invalidated six registrations 151 owned by the Council (the Council s Registrations ), principally on the basis that the trademarks were not registrable because of their descriptive nature. The College governed the practice of traditional Chinese medicine and acupuncture in the province of British Columbia. It offered educational services, including mandatory training courses to earn the titles. The Council was a federally incorporated nonprofit company that created educational programs and examinations in the field of traditional Chinese medicine and acupuncture. The College sued the Council for passing off, false and misleading statements contrary to Section 7(d), 152 and 148. Section 12(2) provides: A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration Worldwide Diamond Trademarks Ltd v. Canadian Jewellers Ass n, 82 C.P.R. (4th) 435 (F.C. Mar. 17, 2010), available at fc309.html, appeal docketed, File No. A (F.C.A. Nov. 30, 2010) C.P.R. (4th) 265 (F.C., Sept. 25, 2009), available at D.T.C.M. (DOCTOR OF TRADITIONAL CHINESE MEDICINE); D.P.C.M. (DOCTORATE IN PHILOSOPHY IN CHINESE MEDICINE); D.P.C.M. (DOCTORATE OF PHILOSOPHY IN CHINESE MEDICINE); D.P.O.M. (DOCTORATE OF PHILOSOPHY IN ORIENTAL MEDICINE); D.P.O.M. (DOCTORATE OF PHILOSOPHY IN ORIENTAL MEDICINE); R. AC. (REGISTERED ACUPUNCTURISTS) Section 7(d) provides: No person shall... make use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to (i) the character, quality, quantity or composition, (ii) the geographical origin, or (iii) the mode of the manufacture, production or performance of the wares or services....

67 864 Vol. 101 TMR invalidation of the Council s Registrations on the basis that, inter alia, the Council s trademarks were descriptive and lacked distinctiveness. In concluding that the Council s Registrations were invalid on descriptiveness grounds, the court noted that third parties used DR. TCM and D.T.C.M. interchangeably (e.g., in business directory advertisements) to refer to a doctor of traditional Chinese medicine, such that the everyday user of these services was familiar with these terms. It followed that the trademark REGISTERED D.P.C.M. was so similar to D.T.C.M. that it remained descriptive; the changing of one initial did not serve to distinguish the mark, considering the Council had disclaimed the term REGISTERED in its trademark applications. The term REGISTERED suggested to the public that a practitioner was registered to practice, thus making the abbreviation more descriptive. The acronyms in the Council s trademarks did not render them registrable because the descriptive phrase that followed dominated the mark. Accordingly, the Council s marks described or deceptively misdescribed goods or services associated with the practice of traditional Chinese medicine, and did not adequately distinguish the Council s goods or services. For the same reason, the Council s registrations were invalid because the underlying trademarks were not distinctive. The court also found that the Council was making use of the descriptions of their trademarks in a manner that was misleading the public as to the character of the trademarks contrary to Section 7(d). While the Council maintained that the marks were only in relation to educational courses and exams, the services actually included the operation of a clinic and certification. The result was that the public would believe there was federal regulation related to a profession in the traditional Chinese medicine field, as opposed to a trademark license. I.C. Distinctiveness In Simpson Strong-Tie Company, Inc. v. Peak Innovations Inc., 153 the Federal Court dismissed Simpson s appeal from the Registrar s dismissal of Simpson s oppositions to Peak s applications to register the colors green and grayish-green 154 as applied to the whole of the visible surface of fastener brackets for attaching deck boards. Before the Registrar, Simpson s evidence C.P.R. (4th) 79 (F.C. Nov. 23, 2009), available at appeal docketed, File Nos. A and A (F.C.A. Oct. 20, 2010). See 100 TMR 395 (2010) for a summary of the Federal Court of Appeal s dismissal of Simpson s appeal from the Federal Court s refusal to allow an amendment to Simpson s statement of opposition advancing a new ground of opposition not asserted before the Registrar In particular, PANTONE 5635C.

68 Vol. 101 TMR 865 comprised particulars of various third-party trademark applications and registrations. On appeal, Simpson filed as additional evidence archived versions of Peak s website, photographs of various products of Peak and another company, and information regarding Simpson s various products and their sales and promotion. In the court s view, the new evidence filed by Simpson on appeal would not have materially affected the Registrar s findings and conclusions with regard to distinctiveness; such evidence was after the material date and related to different products. The court was satisfied that different manufacturers used different colors for a variety of hardware products, including fastener brackets for attaching deck boards and that there were many competing products that used other colors. There was no evidence that any other party used green or grayish-green in association with fastener brackets for attaching deck boards. As the only party to pair such colors in association with such a product, Peak had distinguished its product from those of others. In support of its argument that Peak s marks were purely functional, Simpson relied upon a statement by Peak s witness that the powder coating referred to a covering on the product that was intended to enhance the longevity of the product by resisting rust. If Peak applied the coating for the primary purpose of reducing the possibility of corrosion, it might not be registrable. However, the witness s statement did not deal directly with the color green because powder coating that retards corrosion could be produced in many colors. The court had no evidence that a green coating offered more protection than a blue or pink coating. Thus, Simpson failed to demonstrate that Peak s marks were purely functional, utilitarian or clearly descriptive of a quality or characteristic of a color coating. Simpson s evidence of the absence of the relevant product from Peak s website archives added nothing of significance to Simpson s allegation that Peak had not used its trademarks since the claimed date of first use. The product s absence from the website was not conclusive of non-use as of June 1, As to the allegation that Peak s mark was insufficiently described in the application, the court opined that an applicant is not required to set out the dimensions of the objects in the drawings or elsewhere. Color alone can constitute a trademark. Because Simpson did not raise the issue of nondistinctiveness of Peak s marks on the basis that they were used by Peak s subsidiary before the Registrar, the issue could not be raised on appeal. In any event, the evidence of the interrelationship between Peak and its affiliate meant that a license could be implied. Simpson s appeal was dismissed.

69 866 Vol. 101 TMR In Apotex Inc. v. Registrar of Trademarks, 155 Apotex and several other generic drug companies succeeded in cancelling Glaxo Group Ltd s registration for the color purple as applied to the visible surface of the inhaler for the administration of pharmaceuticals (see illustration below) 156 on the grounds that the mark was not distinctive. The object at issue was Glaxo s ADVAIR DISKUS plastic spherical inhaler, which contained varying doses of dry-powder combination medication (fluticasone propionate and salmeterol xinafoate) for the treatment of asthma and chronic obstructive pulmonary disease. Glaxo s registration was invalidated for lack of distinctiveness because the court found that physicians, pharmacists, and patients did not associate the trademark with a single source and did not rely on the mark to make their prescribing, dispensing, and purchasing choices. The following were said to be insufficient to establish distinctiveness: (1) the se of a mark as a secondary check of product identity; (2) an educated guess about source; (3) a design that is simply unique in the marketplace; or (4) physicians/pharmacists making an informal assumption about the provenance of a product in the context of a therapeutic discussion with a patient. A trademark that is based on product color and shape is likely to be weak. In the context of a market where purchasing decisions are usually made by, or on the advice of professionals, the commercial distinctiveness of a mark will be more difficult to establish because physicians and pharmacists are not strongly influenced by a product s shape and color and have no obvious reason to associate them with a single trade source or provenance. Even when the ultimate consumer enjoys a purchasing choice, they will be significantly influenced by the prescribing and dispensing advice received including labeling and by associating products with certain well-known trade names C.P.R. (4th) 459 (F.C. Mar. 12, 2010), available at appeal docketed, File No. A (F.C.A. Nov. 19, 2010) The full trademark description was as follows: The trade-mark consists of the colours dark purple (Pantone* code 2587C) and light purple (Pantone* code 2567C) applied to the visible surface of portions of the particular object, namely an inhaler for administration of pharmaceuticals, shown in the attached drawing. The drawing is lined for the colours dark purple and light purple. *PANTONE is a registered trade-mark.

70 Vol. 101 TMR 867 The essential problem with much of Glaxo s evidence was that its inhaler was never marketed without a label. Glaxo s very limited anecdotal evidence was insufficient to displace the evidence of Apotex s professional witnesses that patients did not attribute much significance to the appearance of inhalers. No prudent physician or pharmacist and few patients would rely upon the color or shape of an inhaler to exercise a professional judgment about the product. The labels allowed patients to distinguish one product from another and to make informed purchasing choices. Glaxo s evidence did not prove that a substantial body of patients made an association between the appearance of its mark and a single source. Glaxo s claim to a secondary meaning from its use of the color purple was further weakened by the recognition in the marketplace of color as a functional attribute for bronchial inhalers. In Scott Paper Ltd v. Georgia-Pacific Consumer Products, 157 Scott Paper Ltd successfully appealed the Registrar s decision refusing its application to register a trademark for use in association with bathroom tissue in the face of an opposition by Georgia-Pacific Consumer Products LP based on confusion with a trademark that Georgia-Pacific had registered and used in association with bathroom tissue (see below). Scott Paper s mark Georgia-Pacific s mark The Registrar had rejected the ground based on confusion with Georgia-Pacific s registration primarily on the strength of the marketplace evidence, which indicated that similar design marks were quite common in the industry, thereby rendering the differences between the two marks sufficient to make confusion unlikely. The Registrar had also rejected Georgia-Pacific s opposition based on prior use of a confusing mark because its mark was not visible through the packaging at the time of purchase. The Registrar did not agree that consumers seeing Georgia-Pacific s mark after purchase constituted use of the mark under Section 4(1). 158 However, the Registrar accepted the nondistinctiveness 157. Scott Paper Ltd v. Georgia-Pacific Consumer Products LP, 83 C.P.R. (4th) 273 (F.C. Apr. 30, 2010), available at fc478.html Section 4(1) provides: A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal

71 868 Vol. 101 TMR ground of opposition and refused the application despite Georgia- Pacific s inability to establish use under Section 4; the Registrar had found that the appearance of Georgia-Pacific s mark on Costco s private label bathroom tissue could have resulted in an acquired reputation in Canada, even though it was not seen until after purchase. Scott Paper had not adduced any evidence that its mark had acquired any reputation or that it was common for others to use similar design marks as of the material date for determining distinctiveness. On appeal, Scott Paper filed new evidence establishing that embossment patterns that were commonly used in April 2006 were also commonly used in March 2004, the material date for determining distinctiveness. In the court s view, this evidence was both new and pertinent in that it addressed deficiencies identified by the Registrar. Because Scott Paper s new evidence was sufficiently substantial and significant, it was incumbent on the court to come to its own determination on the issue of whether Scott Paper s mark was distinctive. The court concluded that Georgia-Pacific had not discharged its evidentiary burden of establishing its mark enjoyed a sufficiently substantial reputation in Canada as a trademark to negate the distinctiveness of Scott Paper s mark. Although the court could accept the inference that many Canadians had eventually seen Georgia-Pacific s mark, it could not assume without any evidence that Canadians retained any memory of the pattern or realized that it was a trademark that in any way indicated source. The court could also not assume that Canadians viewing of the design was in any way linked to Georgia-Pacific s reputation. As a result of Georgia-Pacific s failure to discharge its evidentiary burden with respect to its mark s reputation, the ground of opposition based on nondistinctiveness was dismissed. CIBC World Markets Inc. v. Stenner Financial Services Ltd. 159 involved an application to cancel the respondent Stenner Financial Services (SFS s) registration for use of the trademark STENNER in association with financial services and publications, seminars, and radio programs related thereto. The bases for cancellation were: (1) STENNER was unregistrable because it was primarily merely a surname; (2) STENNER was not distinctive; (3) the STENNER registration was obtained by material misstatement; and (4) it would be contrary to public policy not to cancel the registration. The cancellation proceedings were part of an ongoing course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred C.P.R. (4th) 118 (F.C. Apr. 13, 2010), available at

72 Vol. 101 TMR 869 dispute 160 pitting father (Gordon) against daughter (Vanessa) and father against son (Thane), each of whom was in the general field of financial services. Gordon was the sole shareholder of SFS, which he established in He started in the financial services business in After SFS was put into receivership in 1988, it lost its mutual fund dealer license. Upon emerging from receivership, it never reacquired its license. SFS had not provided financial services since After declaring bankruptcy in 1988, Gordon rebuilt his career through working for various companies as an employee. At these various companies he called the group of people who worked closely with him on his book of business THE STENNER TEAM. He also did radio and TV shows under the name STENNER REPORT and developed investment strategies under the name STENNER SYSTEM. Vanessa worked for Gordon until their falling-out in Vanessa was well recognized locally as a financial advisor. She used her last name and her married name STENNER- CAMPBELL in her advertising, published articles and other forms of publicity. Thane, who was a registered full-service financial advisor, used the marks STENNER, STENNER INVESTMENT TEAM, THE STENNER GROUP, and STENNER INVESTMENT PARTNERS in his business advertising. CIBC was Thane s employer for several years. Thane s application to register THE STENNER GROUP as a trademark was denied on the basis of confusion with SFS s registration obtained pursuant to Section 12(2). SFS s evidence from friends and customers which was designed to establish that they associated STENNER and its various forms with Gordon was not persuasive. Some witnesses seemed confused about which Stenner was involved, and others had very dated information. The evidence was not representative of the general public and its perceptions. SFS s evidence of spending $8 million on advertising lacked probative value and carried little weight since it was not backed up by corporate records or financial statements. CIBC s survey evidence which showed that STENNER had virtually no recognition outside Vancouver and the Lower Mainland was far more persuasive on the issue of what the general public associated with STENNER. The survey further demonstrated that inside Vancouver, there was 16.8 percent recognition of STENNER in relation to financial services or products but generally not in relation to any particular person or company. To the extent there was recognition of a 160. For the passing-off aspect of this dispute, see Stenner v. ScotiaMcleod, 62 C.P.R. (4th) 1 (B.C.S.C., Sept. 14, 2007), available at jdb-txt/sc/07/13/ 2007bcsc1377.htm, summarized at 99 TMR 425 (2009).

73 870 Vol. 101 TMR particular person, there was little difference between Gordon (2.6 percent) and Vanessa (1.8 percent) with Thane (0.4 percent). As a surname, STENNER was not inherently distinctive. The continually changing use of other words (such as GROUP, TEAM and others) in conjunction with STENNER detracted from any suggestion that STENNER had acquired distinctiveness itself. SFS placed undue emphasis on the presumption of validity. The absence of use of the actual STENNER alone justified cancellation. CIBC established that at the time of registration neither Gordon nor SFS was using the trademark and that circumstance had never changed. Even if STENNER was a valid mark at the time of registration, whatever distinctiveness it may have had had been lost. The absence of use and the results of the expert evidence confirmed this lack of distinctiveness. The use by Vanessa and Thane of their own names in business also pointed to a lack of distinctiveness in STENNER. As a result of the foregoing, the court ordered SFS s registration expunged. I.D.1. Similarity of Marks The defendants motion for summary judgment dismissing a trademark infringement and passing off action was granted in Atomic Energy of Canada Ltd v. AREVA NP Canada Ltd. 161 The plaintiff, Atomic Energy of Canada Limited (AECL), was a Canadian crown corporation. The defendants, Société des Participations du Commissariat à L Énergie Atomique and AREVA NP Canada Ltd. were respectively a French majority state-owned corporation and its Canadian subsidiary. The parties competed in the provision of nuclear goods and services. AECL had alleged, inter alia, that the defendants use of the registered trademark A Design infringed AECL s registered trademark FLYING A Design pursuant to Section 20(1) (see below). AECL also alleged passing off and copyright infringement. The defendants sought a summary dismissal of AECL s action. AECL s mark AREVA s mark C.P.R. (4th) 113 (F.C. Sept. 30, 2009), available at varied on reconsideration, 78 C.P.R. (4th) 396 (F.C. Nov. 2, 2009), available at fc1119.html, appeal docketed, File Nos. A and A (F.C.A. Oct. 30, 2009).

74 Vol. 101 TMR 871 According to the Federal Court, in this case, it was not appropriate to assess the issue of confusion from the point of view of the somewhat hurried consumer considering the high level of sophistication and prudence exercised by the relevant consumer during the procurement process in the nuclear power business. The court found that it was beyond the realm of possibility that any utility could be confused by the resemblance of the parties marks into purchasing a reactor or nuclear services from the wrong company. Further, when considering confusion, the overall presentation of the parties trademarks must be taken into account: AREVA s A Design trademark was used in the first and last letter of the name AREVA; it was not used alone but as part of, or in close proximity to the name AREVA. AECL s FLYING A Design trademark always appeared in close proximity to its corporate mark AECL/EACL. Accordingly, there was no genuine issue for trial with respect to AECL s allegations of trademark infringement and passing off, and that claim was dismissed. The copyright infringement claim was also dismissed because there was no connection between AECL s work and AREVA s A Design work. Accordingly, there was no genuine issue for trial with respect to AECL s allegation of copyright infringement. AREVA s motion for summary judgment was granted and AECL s claim was dismissed. Advance Magazine Publishers, Inc. v. Wise Gourmet Inc. 162 involved an appeal from the Registrar s dismissal of Advance s opposition to an application by Wise Gourmet Inc. to register the trademark WISE GOURMET in association with various food products and food supplements as well as printed publications including periodicals. Advance s opposition was based primarily on an allegation of confusion with its trademark GOURMET, which was registered for periodical publications. Advance s magazine was devoted to entertaining, food, beverages, lifestyle, travel, restaurants, and epicurean product reviews. The Registrar had concluded that Advance failed to evidence its prior use of GOURMET, and therefore dismissed the ground of opposition based on prior use. In concluding that there was no significant likelihood of confusion in connection with the prior registration basis of opposition, the Registrar had noted that (1) GOURMET was a very common word with a well-known descriptive meaning; (2) Advance had not established that its trademark had acquired a significant reputation; (3) Advance s trademark was entitled to only a narrow ambit of protection; and (4) WISE served to distinguish the C.P.R. (4th) 179 (F.C. Nov. 24, 2009), available at fc1208.html.

75 872 Vol. 101 TMR trademarks in appearance, sound, and ideas suggested on the basis that the first portion of a trademark was the most relevant. On appeal, Advance tendered additional evidence, including evidence on the extent of use of its GOURMET trademark in Canada. Wise did not challenge this additional evidence, nor did it participate in the appeal. The Federal Court concluded that the substantial new evidence submitted by Advance negated many of the Registrar s findings. Advance presented convincing evidence that it had extensively used its GOURMET trademark for many decades in Canada and that there was a broad overlap in the parties wares and services. Although recognizing that Advance was not entitled to appropriate GOURMET over a wide area, the court considered that the GOURMET trademark had acquired a secondary meaning associated with Advance s magazine through its extensive use over time and that the parties goods and services were broadly comparable and basically sought to service the same markets and consumers. Finally, the court disagreed with the Registrar and found that although the element WISE served to distinguish the marks in appearance and sound to some degree, the determinative word in the WISE GOURMET mark remained the element GOURMET rather than its adjective WISE. The court concluded, on a balance of probabilities that there was a likelihood of confusion between the WISE GOURMET trademark and Advance s registered trademark GOURMET. In NPS Pharmaceuticals, Inc. v. Biofarma, Société Par Actions Simplifiée, 163 NPS appealed the Federal Court s dismissal 164 of an appeal from the Registrar s refusal of its application to register the mark PREOS for use with pharmaceutical preparations for the prevention or treatment of osteoporosis in the face of opposition by Biofarma. The Registrar had found and the Federal Court had agreed that NPS s PREOS mark was likely to be confused with Biofarma s PROTOS mark, which was the subject of a previously filed application based on proposed use with essentially identical goods. The case was unique in that the opposing marks were not actually in use in Canada because neither party s drug had been authorized for sale by Health Canada. The Federal Court of Appeal saw no error, whether of law or of a palpable and overriding nature in the following conclusions of the Federal Court: (1) the first two enumerated factors in Section 6(5) 165 were neutral, as both proposed marks were distinctive, C.P.R. (4th) 115 (F.C.A. Jan. 12, 2010), available at C.P.R. (4th) 391 (F.C. Feb. 19, 2009), available at en/2009/2009fc172/2009fc172.html, summarized at 100 TMR 384 (2010) Section 6(5) provides, in pertinent part:

76 Vol. 101 TMR 873 neither having any meaning as a whole, and there was no evidence they had become known in Canada because there was no evidence of promotion or use; (2) there had been no use of either mark; (3) whether Biofarma might choose PROTOS or PROTELOS when it started commercializing its product in Canada did not affect the outcome of the opposition because the PROTOS application was still in good standing; and (4) NPS s statement of goods in its application should be compared with Biofarma s statement of goods in its application, as opposed to the differences between an injector pen (PREOS) and an oral suspension (PROTOS). Accordingly, the appeal was dismissed. I.D.2. Similarity of Goods or Services In Masterpiece Inc. v. Alavida Lifestyles Inc., 166 Masterpiece unsuccessfully appealed the Federal Court s refusal 167 to cancel Alavida s trademark registration for MASTERPIECE LIVING, covering the development and operation of retirement residences. Masterpiece claimed to have been using trademarks comprising MASTERPIECE in association with the operation of retirement residences since before Alavida applied to register MASTERPIECE LIVING. The Federal Court had assessed the likelihood of confusion as of December 1, 2005, the date Alavida applied to register MASTERPIECE LIVING. At that time, Masterpiece did not market in Eastern Canada. That it had plans to do so in the future was deemed irrelevant by the Federal Court, which decided there was no likelihood of confusion between the parties marks. The Federal Court of Appeal saw no palpable and overriding error with respect to the manner in which the Federal Court considered and weighed the evidence, and arrived at its conclusion. The Federal Court did not err in analyzing the designs surrounding the marks, as opposed to only examining the words themselves. The way the mark is presented to the public was considered an important factor in determining whether confusion is likely. In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including: (a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; (b) the length of time the trade-marks or trade-names have been in use C.P.R. (4th) 243 (F.C.A. Oct. 13, 2009), available at leave to appeal granted, Case No (S.C.C. Apr. 1, 2010) C.P.R. (4th) 160 (F.C. Dec. 23, 2008), available at summarized at 100 TMR 385 (2010).

77 874 Vol. 101 TMR Relying on the phrase would be likely in Section 6(2), 168 Masterpiece argued that the Federal Court erred by considering confusion only as of Alavida s filing date and refusing to take into account the possibility of future confusion. Based on three tools of analysis an examination of the general context of the Act, a review of prior case law, and an analysis of the French version of the Act the Federal Court of Appeal rejected Masterpiece s arguments that the phrase would be likely requires a court to take into account whether confusion was likely to occur in the future. In the appellate court s view, the relevant time to assess the issue of confusion in an expungement action grounded in Section 16 was the filing date of the application and not some time in the future. The appellate court also concluded that because Masterpiece had not performed its services in the same geographic area as Alavida prior to or as of Alavida s filing date, there could be no likelihood of confusion. Leave to appeal was granted by the Supreme Court of Canada. The issues before the Supreme Court included: (1) whether the geographic scope of use of the trademarks at issue should be considered when assessing the issue of confusion, and (2) whether the test for expungement requires the party seeking expungement on the basis of prior use to establish a reputation in a particular geographic area. The Supreme Court of Canada allowed Masterpiece s appeal 169 and found there was a likelihood of confusion between Alavida s registered trademark MASTERPIECE LIVING and Masterpiece s previously used trademark MASTERPIECE ART OF LIVING. Because the marks were confusingly similar, Alavida s registration was ordered cancelled on the basis that Alavida was not the party entitled to its registration. The Supreme Court took the opportunity to provide an overview of the process to be followed when assessing likelihood of confusion between trademarks. In the process, the Supreme Court came to the following key conclusions: (1) the geographic areas in which the trademarks are actually used is irrelevant to the confusion analysis; (2) where a prior user asserts rights in several trademarks, confusion must be assessed on a mark-by-mark basis; (3) the high cost of the goods or services cannot justify changing the confusion test from one of first impression: that expensive, important purchasing decisions may involve extensive research after the trademark is first encountered 168. Section 6(2) provides: The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the wares or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class Masterpiece Inc. v. Alavida Lifetyles Inc., 2011 S.C.C. 27, available at

78 Vol. 101 TMR 875 cannot act to reduce confusion; (4) it is the manner in which a party is entitled to use its trademark (as set out in the registration) that should be considered, not the manner in which the party actually uses the mark; (5) expert evidence on the issue of how potential purchasers are likely to react to a trademark should be avoided, especially when the goods or services are marketed to the general public; and (6) survey evidence is unlikely to be helpful when the trademark being tested has not yet established a sufficient presence in the marketplace. Courts should initiate procedures aimed at excluding dubious survey evidence at an early stage in the proceedings. The Federal Court of Appeal, in Advance Magazine Publishers Inc. v. Farleyco Marketing Inc., 170 endorsed the decisions of the Federal Court 171 and the Registrar rejecting Advance s opposition to Farleyco s proposed use application to register the mark GHOULISH GLAMOUR for Halloween cosmetics and eyelash accessories. Advance alleged confusion based on its long-standing trademark GLAMOUR, registered for use in association with a periodical magazine. Farleyco had been selling its GHOULISH GLAMOUR goods in drug, food, and mass-merchandise outlets since September There had been no instances of confusion. Farleyco tendered evidence of: (1) 31 third-party Glamour products in the fields of cosmetics, lingerie, jewelry, children s wear, computer games, music, books, and toys; and (2) 22 thirdparty registrations and applications for trademarks containing GLAMOUR on the register for goods and services in various fields, including cosmetics, fashion, and beauty. The Federal Court had agreed with the Registrar that there was no likelihood of confusion. The appellate court was unable to conclude that the Federal Court committed any errors in reaching the following conclusions: The word glamour was descriptive of a whole industry of cultural and commercial endeavor. Glamour was something a large segment of the public wished to acquire. While Advance s mark enjoyed a certain degree of distinctiveness in relation to magazines and related goods and services, it was not associated with all goods and services that made up the glamour industry. Its distinctiveness lay in products and services that contribute to a culture, an ambience, a forum, a form and mode of discourse that is known generally as the glamour industry C.P.R. (4th) 324 (F.C.A. Nov. 30, 2009), available at C.P.R. (4th) 96 (F.C. Feb. 12, 2009), available at summarized at 100 TMR 390 (2010).

79 876 Vol. 101 TMR Even though cosmetics and magazines might be sold in the same stores, Advance s GLAMOUR magazine and Farleyco s products were sold and advertised, purchased, and used in very different ways. Consumers were repeatedly exposed to many GLAMOUR trademarks and to the constant use of the word glamour in the glamour industry and in the marketplace it spawned. It could be assumed that consumers had become extremely adept at distinguishing between goods and services sold and associated with the word glamour, either singly or in combination with other words, and that they were extremely unlikely to associate Farleyco s GHOULISH GLAMOUR Halloween products with Advance s GLAMOUR goods and services. There was no factual foundation for the proposition that Advance had expanded the scope of its GLAMOUR mark by licensing the mark to third parties. In Friendly Stranger Corp. v. Avalon Sunsplash Ltd., 172 Friendly Stranger successfully appealed the Registrar refusal of its application for the use of FRIENDLY STRANGER CANNABIS CULTURE SHOP & Design in association with products related to hemp and marijuana, including rolling papers, pipes, books, t-shirts, and the operation of a retail stores dealing in such goods. Friendly Stranger operated a website at The application was opposed by Avalon, which published a bimonthly magazine initially called Cannabis Canada but was rebranded as Cannabis Culture in Avalon operated a store in Vancouver and maintained a website at The Registrar had concluded that the distinctiveness of Avalon s mark was sufficient to negate the distinctiveness of Friendly Stranger s mark considering that both parties targeted the same market. As the probabilities were evenly balanced, the Registrar found in Avalon s favor. In the Federal Court s view, the new evidence filed by Friendly Stranger on appeal was of material significance, as it indicated that Friendly Stranger was a business on the rise known under the name the Friendly Stranger Cannabis Culture Shop. The evidence shifted the emphasis to the words Friendly Stranger from Cannabis Culture Shop, and it demonstrated the effect of the large and unique font that promoted the words Friendly Stranger over the smaller and more conventional font used for the words Cannabis Culture Shop. Friendly Stranger s new evidence would have materially affected the Registrar s decision with C.P.R. (4th) 10 (F.C. Feb. 18, 2010), available at

80 Vol. 101 TMR 877 respect to the trademark FRIENDLY STRANGER CANABIS CULTURE SHOP & Design. As a result, the court was permitted to take a fresh view. The new evidence tipped the balance of probabilities in Friendly Stranger s favor with respect to the distinctiveness of its trademark FRIENDLY STRANGER CANNABIS CULTURE SHOP & Design. Although the parties goods were similar, the marketplaces were very different. Friendly Stranger s principal marketplace was Toronto while Avalon s was Vancouver. Internet sales represented a small fraction of total sales compared with what was sold in the stores. Finally, the parties domain names were very different. The appeal of the opposition to the application for FRIENDLY STRANGER CANABIS CULTURE SHOP & Design was granted, and that mark was allowed to proceed to registration. In Vibe Media Group LLC v. Craig, 173 Vibe appealed the Registrar s rejection of its opposition to the application by Craig to register the trademark VIBETRAIN based on proposed use in association with sound recordings (namely pre-recorded tapes, prerecorded cassettes), pre-recorded compact discs containing music and additional related goods and promotional items, and entertainment services (namely, the provision of live musical and entertainment performances and recording services and personal appearances of a musical artist or group, and related services). Vibe alleged that VIBETRAIN was not registrable, Craig was not the person entitled to registration, and the mark was not distinctive, relying primarily on a likelihood of confusion with Vibe s registered mark VIBE used in association with a popular culture magazine focusing on urban culture, having been sold in Canada since The Registrar had rejected the opposition on the basis that: (1) VIBETRAIN consisted of the fusion of two ordinary dictionary words that were disconnected from their respective meanings and when juxtaposed, were inherently distinctive; (2) although the parties marks were similar to some extent, they had different meanings; and (3) there was overlap between the parties goods and services only with respect to a general interest magazine. On appeal, Vibe submitted new evidence demonstrating: (1) no other magazine title commenced with VIBE ; and (2) in addition to magazines, Vibe had used its VIBE mark in connection with TV programs, websites, a mobile phone based service, books relating to music, entertainment and culture and musical recordings. According to the Federal Court, at the time Vibe called its magazine VIBE, the word may have been slang and Vibe s use of the word for its magazine may have been unique. However, use of C.P.R. (4th) 1 (F.C. Feb. 24, 2010), available at

81 878 Vol. 101 TMR the word had become sufficiently widespread such that it was no longer inherently distinctive. Nevertheless, through Vibe s continuous use, VIBE had acquired a reputation related to its magazine and associated goods and services in the field of culture, music, and entertainment. That reputation was well known in Canada at the material time of the filing of Craig s mark. Further, the dominant word in VIBETRAIN was VIBE, which characterized a musical and cultural milieu rather than a succession of things. There was a broad overlap in the music, culture, clothing, and services that both parties marks sought to identify. Both relied on similar channels of trade and both targeted people with an interest in music, entertainment, and culture. The court ultimately concluded that there was a likelihood of confusion in the mind of a casual consumer who might be somewhat in a hurry; the appeal was allowed and registration of Craig s application for VIBETRAIN was refused. Wrangler Apparel Corp. v. Big Rock Brewery Limited Partnership 174 involved an appeal of the Registrar s decision to reject Wrangler Apparel s opposition to the registration of Big Rock s application for WRANGLER for use in association with brewed alcoholic beverages. Wrangler Apparel s opposition was based primarily on an allegation of confusion with its registered trademark WRANGLER, which had been previously used in association with apparel. The Registrar concluded that, on a balance of probabilities, the average consumer having an imperfect recollection of Wrangler Apparel s mark would not likely be confused as to the source of the goods upon seeing Big Rock s mark considering the differences between the goods and channels of trade and the existence of 15 third-party applications or registrations for trademarks composed of WRANGLER for, inter alia, automobiles, tires, smokeless tobacco, and herbicide. In the Registrar s view, the fame of Wrangler Apparel s mark did not transcend beyond articles of clothing, footwear, and accessories. On appeal, Wrangler Apparel filed new evidence of its proposed product diversification and survey evidence that 29 percent of Canadian beer drinkers aware of WRANGLER jeans inferred some kind of business connection between the company that puts out WRANGLER beer and the company that puts out WRANGLER jeans. Wrangler Apparel argued that its new evidence went directly to the Registrar s primary reasons for ruling in favor of Big Rock. In the court s view, the survey evidence would not have altered the Registrar s decision. At best, Wrangler Apparel could state that 29 percent of Canadian beer drinkers, who first thought of C.P.R. (4th) 297 (F.C. Apr. 30, 2010), available at

82 Vol. 101 TMR 879 Wrangler blue jeans, were likely to perceive a business connection between WRANGLER beer and WRANGLER jeans. However, less than 10 percent of those not in the control group gave this answer. The court weighed the survey accordingly. In the end, the court was not prepared to infer that the fame of Wrangler Apparel s mark with regard to apparel had any close association with beer. While Wrangler Apparel may wish to leverage its well-known mark WRANGLER to sell beer and a variety of other things, Canadian trademark law will not always clear its path from would-be competitors who would seek to use a word from the English language over which Wrangler Apparel had no monopoly. The court put significant weight on the fact that many others were able to use WRANGLER in association with unrelated goods without causing confusion. Ultimately, the Registrar s decision was deemed correct and the court dismissed the appeal. In Octeau v. Kempter Marketing Inc., 175 the Quebec Court of Appeal affirmed the Quebec Superior Court dismissal of an application by Octeau for a permanent injunction restraining Kempter s use of HORST WATERPROOF in association with waterproof bags to attach to bicycles. Octeau owned registrations for the trademarks H HÖRST & Design, HÖRST DÜSSELDORF and CULT HÖRST for use in association with apparel (among other goods). Octeau s HÖRST DÜSSELDORF-branded clothing was sold in over 2000 third-party retail outlets in Canada. Advertising expenditures exceeded $1 million in Octeau had not used H HÖRST & Design since 1992, and use of CULT HÖRST had not yet commenced. The trial judge had concluded there was no likelihood of confusion considering the absence of actual confusion and considering that Hörst was a common German given name that lacked inherent distinctiveness. The Quebec Court of Appeal agreed with the trial judge that Octeau s HÖRST DÜSSELDORF trademark lacked inherent distinctiveness. It was reasonable to conclude that when Kempter s HORST WATERPROOF bags came on the market in 2004, the use of the HÖRST DÜSSELDORF trademark was relatively recent such that it had not acquired a sufficiently distinctive character to justify the broad injunctive protection sought by Octeau. Octeau principally used the HÖRST DÜSSELDORF mark in association with men s wear, which is dissimilar from bicycle bags. The respective products of the parties were not within the same general category of goods (that is, medium-priced men s clothing wear, on the one hand, and high-end bicycle accessories on the other). To the extent any overlap might ever exist in the future, it C.P.R. (4th) 323 (Que. C.A. Feb. 4, 2010), available at qc.ca/php/decision.php?liste= &doc=a780e2155fb6e5a37a9e66d504865ed8dc4 054A4C7A9F1C96B83461E507B4E66&page=8.

83 880 Vol. 101 TMR remained a mere hypothetical possibility. The parties also did not have the same means of distribution. Finally, although both marks emphasized the German name Hörst, the combination with other words in the marks could not possibly lead to confusion. DÜSSELDORF was intended to associate the products sold under the name with a particular style, while WATERPROOF was clearly intended to describe a particular quality of the product. On the whole, there was an insufficient degree of similarity of the marks in appearance, sound or the ideas associated with them to give rise to a likelihood of confusion. While the absence of actual confusion was not dispositive of the appeal, it was a relevant factor. The appeal was dismissed. II.C.1.b. Personal Names In Miranda Aluminum Inc. v. Miranda Windows & Doors Inc., 176 the Federal Court of Appeal dismissed Miranda Aluminum s appeal of the Federal Court s refusal 177 to cancel Miranda Windows & Doors registrations for the word mark MIRANDA and a design mark (see illustration below), both for use in association with custom design and installation of windows, doors, porch enclosures, sunrooms, siding, soffits, fascia, eaves troughs (roof gutters), patios, garden doors, aluminum railings, and railings and for home renovation. Miranda Aluminum (MA) was owned by Antonio Miranda. Miranda Windows & Doors (MWD) was owned by Antonio Miranda s son Tony Miranda. Both parties sold and installed aluminum windows, doors and other home renovation products, and both drew their customers largely from the Portuguese community in the Greater Toronto Area (GTA). The trial judge s dismissal was based on five findings of fact: (1) Although Miranda is primarily a surname, the marks had acquired distinctiveness in connection with the products and services of MWD at the time applications for the marks were filed, and thus were registrable; (2) MA had not established prior use of MIRANDA so as to warrant cancellation of MWD s registrations on the basis of prior use; (3) when MWD first used MIRANDA in applying to register Miranda Aluminum and Vinyl Products as the trade name of the original company, T.M. Renovations Inc. ( TMR ), in 1990, the public would not falsely have connected C.P.R. (4th) 325 (F.C.A. Apr. 16, 2010), available at C.P.R. (4th) 47 (F.C. June 26, 2009), summarized at 100 TMR 392 (2010).

84 Vol. 101 TMR 881 MIRANDA with MA; (4) the marks were not liable to be cancelled on the ground of a material false statement even though MWD s trademark applications claimed a date of first use that predated the date of incorporation of MWD; and (5) the alleged use of MIRANDA by MA (and the father s brother) in connection with the sale and installation of aluminum products had not caused the name to lose its distinctiveness. According to the Court of Appeal, if MWD had misstated the date of first use in its applications, it did not warrant cancellation of the marks. Innocent misstatements will invalidate a trademark registration only if they are material, in the sense that without them, the mark would have been unregistrable. There would have been no bar to the registration of the marks in 2006 if MWD had stated in its application that the first use was in Nor was there any evidence that MA was prejudiced by the misstatement. Whatever technical irregularity may have occurred regarding the declared date of earliest use of MIRANDA, it did not warrant cancellation of the marks. The trial judge had found that the father s brother s use of MIRANDA in his business was irrelevant to the distinctiveness of MWD s marks because the father s brother was in the manufacturing and wholesale business, while MWD was in retail sales and installation. The businesses were thus not competing with each other. Accordingly, the father s brother s use of MIRANDA did not undermine the distinctiveness of the trademark in connection with MWD s business. These findings of fact were reasonably open to the trial judge on the evidence. In light of MA s abandonment of the use of MIRANDA, the breaks in the corporate chain, the absence of assignments of rights, the father s deceptive later use of the name and the trial judge s credibility finding, the Court of Appeal concluded that the trial judge did not make a palpable and overriding error by concluding that MA s use of MIRANDA had not destroyed its distinctiveness. The Court of Appeal agreed with the trial judge that MIRANDA did not falsely suggest a connection with MA considering MWD s first used MIRANDA in It was unlikely that, in 1990, the public would have falsely connected MIRANDA with MA in association with the supply and installation of aluminum and vinyl products, or that MWD would have attempted to encourage such confusion.

85 882 Vol. 101 TMR II.C.1.h. Official Marks In Maple Leaf Foods Inc. v. Consorzio Del Prosciutto Di Parma et al., 178 the Federal Court dismissed Maple Leaf s application for judicial review of a public notice given by the Registrar in 1998 (the 1998 Notice ) for Consorzio s adoption of the PARMA Design mark, which was predicated on the Registrar s view that Consorzio was a public authority within the meaning of Section 9(1)(n)(iii). 179 Maple Leaf produced a variety of food products including ham. Consorzio was a group of ham producers in the province of Parma, Italy. Maple Leaf owned a 1971 registration for the use of PARMA in association with a variety of meats including ham, that Consorzio had unsuccessfully challenged. In 2000, the Federal Court held 180 that Maple Leaf did not have standing to appeal the Registrar s decision that Consorzio was a public authority and that it was not necessary to decide whether Consorzio was a public authority (the 2000 Decision ). Maple Leaf did not pursue its appeal of the 2000 decision, nor did it pursue its application for leave to convert its appeal into a judicial review. In 2007, the Federal Court of Appeal in the Canada Post decision 181 interpreted the term public authority as meaning that a public authority must be under the control of the Canadian (as opposed to a foreign) government. Following this decision, Maple Leaf asked the Registrar to withdraw the public notice of Consorzio s adoption of the PARMA Design mark on the basis that Consorzio was not under the control the Canadian government. The Registrar declined, stating that it had no authority, after giving public notice of the adoption and use of an official mark by a public authority, to reconsider the decision. Maple Leaf then commenced its application for judicial review of the 1998 Notice. The court concluded that Maple Leaf s judicial review application was time-barred by Section 18.1(2) 182 of the Federal C.P.R. (4th) 328 (F.C. Oct. 15, 2009), available at appeal docketed, File No. A (F.C.A. Nov. 12, 2009) Section 9(1)(n)(iii) provides: No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for... any badge, crest, emblem or mark... adopted and used by any public authority, in Canada as an official mark for wares or services, in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use C.P.R. (4th) 496 (F.C.T.D. Nov. 28, 2000), summarized at 92 TMR 292 (2002) Canada Post Corp. v. United States Postal Service, 47 C.P.R. (4th) 177 (F.C.T.D. Nov. 30, 2005), summarized at 97 TMR 375 (2007), aff d, 54 C.P.R. (4th) 121 (F.C.A. Jan. 9, 2007), summarized at 98 TMR 376 (2008), leave to appeal denied Section 18.1(2) states: An application for judicial review in respect of a decision or an order of a federal board, commission or other tribunal shall be made within 30 days after the time the decision or order was first communicated by the federal board, commission or other tribunal to the office of the Deputy Attorney General of Canada or to the party

86 Vol. 101 TMR 883 Court Act 183 and was an abuse of process. According to Maple Leaf s Notice of Application, it was the 1998 Notice and not the Registrar s continuing refusal to withdraw the 1998 Notice after the Federal Court s decision in Canada Post that was the subject of the application for judicial review. Maple Leaf had thirty days from the giving of the 1998 Notice to seek judicial review, failing which it was obliged to seek an extension of time, which it had not done. While determining that the doctrine of res judicata did not bar Maple Leaf from prosecuting the judicial review application, the court decided that to do so would be an abuse of process. Maple Leaf had abandoned both its appeal of the 2002 Decision as well as its application to convert. The Court held that the merits of Maple Leaf s claim that the 1998 Notice was invalid because a public authority had to be Canadian could have been decided then but was not because Maple Leaf chose not to proceed with its motion to convert. Because the application for judicial review of the 1998 Notice was an abuse of process, the court did not consider whether the Registrar committed a reviewable error in publishing the 1998 Notice and dismissed Maple Leaf s application. II.C.5. Certification Marks The Ministry of Commerce and Industry of the Republic of Cyprus (MCIRC) had only partial success in its appeal of the Registrar s rejection of MCIRC s application for the certification mark of HALLOUMI cheese based on use since 1995 in association with the following standard:... the cheese is produced only in Cyprus using the historic method... from sheep s and/or goat s milk. In case of mixtures, cow s milk is also allowed. Raw materials which are used for its production include rennin, mint leaves and salt The application was opposed, inter alia, on the following grounds: (1) no licensee of MCIRC had used HALLOUMI as a certification mark in Canada since the date set out in the application; (2) HALLOUMI was not registrable because it had by ordinary and bona fide commercial usage become recognized in Canada as designating a kind or quality of cheese; and (3) HALLOUMI lacked distinctiveness because the mark had been used by persons not licensed by MCIRC to describe cheeses that did not meet the standards set out in the application. directly affected by it, or within any further time that a judge of the Federal Court may fix or allow before or after the end of those 30 days R.S.C c. F Ministry of Commerce & Industry of the Republic of Cyprus v. Les Producteurs Laitiers du Canada et al., 2010 FC 719 (June 30, 2010), available at appeal docketed, File No. A (F.C.A. Aug. 5, 2010).

87 884 Vol. 101 TMR Regarding the first and third grounds of opposition, the Registrar had found that any use of HALLOUMI could not be deemed to be use by MCIRC because the users obtained their right to use the mark not from MCIRC but from other ministries of the Republic of Cyprus. The Registrar also accepted the second basis of opposition in view of the packaging from cheese purchased in various cities in Quebec and in Ottawa bearing HALLOOM/HALOUMI and indicating that the cheese originated from various Canadian cheese producers, which was corroborated in affidavits from two of these third party sources. While the Federal Court allowed MCIRC s appeal on the first and third grounds of opposition it dismissed it on the second ground of opposition thus upholding the decision of the Registrar. On appeal to the Federal Court, MCIRC filed additional evidence to explain the internal operation of the Cypriot government in terms of the responsibility for monitoring the use of the mark. This constituted additional evidence that could have had an impact on the Registrar s findings and the appropriate standard of review was that of correctness with respect to the first and third grounds of opposition. In the court s view, the additional evidence showed without ambiguity that the laws of the Republic of Cyprus designated MCIRC as the ministry responsible for monitoring the use of Halloumi, and MCIRC delegated the responsibility for monitoring compliance with the manufacturing standards to the Ministry of Health and the public servants in the Department of Veterinary Services. These entities were not legally distinct from MCIRC but were all part of the Government of the Republic of Cyprus. The court, therefore, allowed the appeal with respect to the first and third grounds of opposition. However, MCIRC did not submit any additional evidence on the second ground of opposition. As a result, the appropriate standard of review was reasonableness. In the court s view, the following facts supported the Registrar s finding that HALLOUMI had become recognized in Canada as designating a type of cheese: (1) it was possible to procure from various Canadian sources cheese with packaging bearing the name HALLOOM, HALLOUM, or HALOUMI; (2) a number of Canadian producers had sold substantial quantities of cheese designated as HALLOOM in Canada; and (3) a number of stakeholders in the industry testified that the term halloumi designated a type of cheese and was used generically.

88 Vol. 101 TMR 885 II.D.3. Primarily or Aesthetically Functional In Procter & Gamble Inc. v. Colgate-Palmolive Canada Inc., 185 the Federal Court rejected Procter & Gamble Inc. s appeal of the Registrar s decision rejecting its opposition to Colgate-Palmolive Canada Inc. s application to register the following Stripe Design based on proposed use in Canada in association with toothpaste: The Registrar had rejected all of Procter & Gamble s bases of opposition, which included the following: (1) Colgate-Palmolive could not have been satisfied that it was entitled to register the Stripe Design as a trademark, as it knew or ought to have known that toothpaste incorporating a Stripe Design had been offered for sale and sold by others since 1984; (2) Colgate-Palmolive did not intend to use the Stripe Design; (3) the Stripe Design was not registrable because it was applied to the ware for the purpose of ornament or decoration only; (4) the Stripe Design was not registrable because it was primarily functional; (5) the Stripe Design was not registrable because it was unable to function as a trademark since it was contained in packaging and was not associated with the toothpaste at the time of transfer to customers; and (6) the Stripe Design was not distinctive in view of striped toothpaste being offered for sale and sold in Canada by others since at least While Procter & Gamble filed new evidence on appeal, the court was of the view that it would not have materially affected the Registrar s findings of fact or the exercise of his discretion, and therefore applied the standard of reasonableness. Regarding the first ground of opposition (could not have been satisfied as to entitlement), the court found that even if Colgate- Palmolive could have been aware of other toothpastes incorporating a Stripe Design sold by others since 1984, this did not mean Colgate-Palmolive would not be entitled to register the Stripe Design. The evidence demonstrated that Colgate-Palmolive might have been satisfied that they could register the mark. There was no evidence of bad faith on the part of Colgate-Palmolive. The C.P.R. (4th) 343 (F.C. Feb. 26, 2010), available at

89 886 Vol. 101 TMR second ground of opposition (did not intend to use the Stripe Design) was also rejected. Procter & Gamble attempted to rely on 33 applications abandoned by Colgate-Palmolive for various toothpaste designs, as well as on the fact that the application was filed over 15 years ago and no evidence of use had been tendered. While the court held that the applications were not properly put into evidence, it also found that in any event, they concerned unrelated trademarks and, as such, had no material effect on the Registrar s decision. As for the absence of use, the court simply held that there was no requirement for actual use of the Stripe Design until the Declaration of Use was filed. As for the third, fourth, and fifth grounds of opposition (the Stripe Design was not registrable because it was ornamental and/or primarily functional and/or contained in packaging and not associated with the goods at the time of transfer), the court held that they had been properly rejected on the basis that these grounds should have been pled under Section 30 (compliance with application formalities) as opposed to Section 12 (registrability). However, because the Board nevertheless proceeded with a discussion of each of these grounds, the court briefly addressed each ground as well. The court found that Procter & Gamble did not provide evidence that the Stripe Design was applied to the toothpaste only for the purpose of ornamentation. The court also found that the Stripe Design was not primarily functional. Although different functions could be assigned to particular color stripes, it was not necessary to have stripes on toothpaste in order to perform the different functions assigned to these stripes. Stripes in toothpaste could perform a function, but there was no evidence of a particular function to be performed by Colgate-Palmolive s Stripe Design. The court also rejected Colgate-Palmolive s argument that the Stripe Design could not be used as a trademark because it was applied to the toothpaste itself, which was contained in a sealed box, with a foil seal over the mouth of an opaque tube. There was no evidence showing it would be impossible to use the Stripe Design in accordance with Section 4(1), but there was evidence that toothpaste could be advertised in a manner to allow consumers to see the actual goods. Finally, as for the sixth ground of opposition (nondistinctiveness), the court found that insufficient evidence had been filed to demonstrate that other parties had used the same colored stripe pattern and that there was therefore no basis to find that the Stripe Design was not capable of distinguishing the goods of Colgate-Palmolive.

90 Vol. 101 TMR 887 II.E. Examination and Opposition In Ontario Limited v. Registrar of Trade-Marks et al., 186 the plaintiff failed to overturn the Registrar s rejection of its oppositions pursuant to Section 38(4) 187 to applications by Mikit France, Société Anonyme for the registration of the two trademarks shown below in association with a broad range of goods and services, many of which related to the construction of houses owned registrations for use of the trademarks WHERE, WHERE MAGAZINES INTERNATIONAL, WHERE FAMILY, WHERE ON-LINE, WHERE THE FINDS ARE, WHERE LOCALS HIKE, WHERE TELEVISION, and WHERE TELEVISION & DESIGN in association with a range of goods and services, including communication software, computer software and hardware, printed publications, management and operational services for retail stores, restaurants and other entertainment services, and informational and educational services including advertising services related to entertainment and tourist information based its oppositions inter alia on allegations that: (1) Mikit s marks could be confused with s family of marks; and (2) plans in Mikit s description of goods was too broad, contrary to Section 30(a). 188 The Registrar concluded that did not raise proper grounds of opposition because: (1) the allegation of confusion was unsupported, given the almost complete absence of any degree of resemblance between the parties marks; and (2) plans was a translation from French (the language of Mikit s applications) and therefore did not necessarily carry the same meaning as the word employed in the application. Further, s allegation was not supported by any facts and was not set out in sufficient detail F.C. 645 (June 16, 2010), available at /2010fc645/2010fc645.html Section 38(4) provides: If the Registrar considers that the opposition does not raise a substantial issue for decision, he shall reject it and shall give notice of his decision to the opponent Section 30(a) provides: An applicant for the registration of a trade-mark shall file with the Registrar an application containing a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used.

91 888 Vol. 101 TMR In endorsing the Registrar s summary dismissal of s oppositions, the court applied the following test: the Registrar is not to assess whether the opponent has a likelihood or probability of success; rather, the Registrar is to ask whether assuming the truth of all the allegations of fact in the statement of opposition, the opponent has an arguable case. The question was whether it was reasonable for the Registrar to conclude that s oppositions failed to raise a substantial issue for decision. The court answered this question in the negative. The court held that it was not unreasonable for the Registrar to conclude that failed to raise an arguable case with regard to confusion because there was no resemblance between the parties marks. In addition, s marks were in no way associated to any goods or services that overlapped with Mikit s goods or services, the latter of which were related to the construction of houses. As for section 30(a) ground, Plans could not have been the term employed by Mikit in its applications because the applications were completed in French. Whether this was even the appropriate translation was not clear. Moreover, did not explain why the word plans was not in compliance with the requirements of the Act; simply stated that the term plans was overly broad. In the court s opinion, the oppositions were so clearly futile that they did not have the slightest chance at succeeding. Consequently, they did not disclose an arguable case. Molson Canada 2005 v. Anheuser-Busch, Inc. 189 involved a unique factual situation in which the Federal Court of Appeal had previously held 190 that the parties confusing marks could coexist on the register without restriction. Molson was appealing the Registrar s rejection of its opposition to Anheuser-Busch s application to register the trademark BUDWEISER Label Design ( applied-for BUDWEISER label ) (below, illustration at left) based on proposed use in association with beer, clothing, and drinking vessels. Molson alleged that the mark was not registrable, Anheuser-Busch was not the person entitled to registration, and the mark was not distinctive. Molson relied primarily on a likelihood of confusion with its registered mark STANDARD LAGER label (below, illustration at right), which had been used in Canada since C.P.R. (4th) 169 (F.C. Mar. 12, 2010), available at Carling O Keefe Breweries of Canada Ltd. v. Anheuser-Busch Inc., 10 C.P.R. (3d) 433 (F.C.A. July 3, 1986).

92 Vol. 101 TMR 889 Applied-for BUDWEISER label STANDARD LAGER label The applied-for BUDWEISER Label was similar to Anheuser- Busch s previously registered beer labels ( registered BUDWEISER labels ) (see below), which had coexisted on the register with Molson s STANDARD LAGER label registration since Anheuser-Busch and its predecessors had used substantially the same label in Canada since the 1880s for its top-selling BUDWEISER beer. There had been an extensive history of litigation involving the parties registered marks. In 1986, the Federal Court of Appeal had concluded that: (1) the parties registered marks were confusingly similar; (2) there was some type of impropriety in Molson s predecessor s obtaining a registration for the STANDARD LAGER label; (3) Anheuser-Busch s attack on the STANDARD LAGER label would have succeeded had it been timely; (4) neither party would be permitted to cancel the other s registration; and (5) the parties registrations were valid and should remain on the register without restriction as to use. In rejecting Molson s opposition to the applied-for BUDWEISER label, the Registrar made the following findings: (1) because the parties agreed there was a likelihood of confusion between the applied-for BUDWEISER label and the STANDARD LAGER label as they related to beer, there was no requirement to undertake an analysis under Section 6(5); (2) the Registrar had the jurisdiction to limit the scope of protection accorded to the

93 890 Vol. 101 TMR STANDARD LAGER label because the court of appeal s decision was a full legal hearing held with respect to the same parties and almost the same marks; (3) because the court of appeal had limited the scope of protection accorded to the STANDARD LAGER label, it was both reasonable and logical to do the same with the appliedfor BUDWEISER label; (4) the court of appeal had determined that the STANDARD LAGER label was wrongfully obtained; (5) the Registrar had the jurisdiction to state that an opponent could not rely on unlawful use of its mark if the lawfulness issue was clear; and (6) there was no likelihood of confusion between the marks as applied to clothing and drinking vessels. In allowing Molson s appeal with respect to beer, the federal court opined that the court of appeal had not specifically limited the scope of protection that the parties registered marks could enjoy. Any limits the court of appeal may have placed on the STANDARD LAGER label were with regard only to the registered Budweiser labels. The issue in the opposition was the registrability of the applied-for BUDWEISER label in light of the registered STANDARD LAGER label. Anheuser-Busch chose to file a new application, based on proposed use, in order to protect the new applied-for BUDWEISER label, which was a unique trademark. An updated BUDWEISER label, as an application, could not claim protection from any limits the court of appeal decision may have placed on the STANDARD LAGER label with regard to the registered Budweiser labels. The court held that the Registrar erred when he determined that he had the jurisdiction to limit the scope of protection accorded to the STANDARD LAGER label. In opposition proceedings, the Registrar is limited to determining if a proposed trademark is or is not registrable. The Registrar should not register a new mark if there is a confusing mark on the register. The unique facts at issue could not oust the clear language of the Act and previous case law as to the jurisdiction of the Registrar in opposition proceedings. Regardless of how the request is framed, an opposition proceeding is not the appropriate forum for tacit or manifest amendments to the register. The Registrar is a creature of statute and has no inherent jurisdiction. Section 38 delineates the Registrar s powers, and they do not include any reference to equity. Only the Federal Court has the jurisdiction to alter the register in the manner advocated by Anheuser-Busch. It was contrary to the intention of Parliament for the Registrar to deprive the Federal Court of this exclusive jurisdiction. The court also held that while an opponent might be denied the benefit of its prior use of a confusingly similar mark when such use had been determined by a court of competent jurisdiction to be unlawful or was otherwise clearly unlawful, the Registrar could not rely on the court of appeal s decision to conclude that the

94 Vol. 101 TMR 891 lawfulness issue was clear. The marks in this case were not almost the same. In any event, the court of appeal did not conclude that the STANDARD LAGER label was unlawful, finding, in fact, that the registration was not a nullity. By stating that Molson could not rely on its registration for the STANDARD LAGER label at the opposition hearing, the Registrar amended the register by denying Molson full enjoyment of its valid registration. The Registrar did not have such jurisdiction. There was a likelihood of confusion between the STANDARD LAGER label and the applied-for BUDWEISER label (as it related to beer), especially considering: (1) the high degree of resemblance between the design features of the marks; (2) the court of appeal s finding that the STANDARD LAGER label could be confused with the registered BUDWEISER labels; and (3) both parties took the position that the applied-for BUDWEISER label and the STANDARD LAGER label were confusing. The Registrar s finding that the applied-for BUDWEISER label as applied to the non-beer goods was not likely to be confused with the STANDARD LAGER label was held to be reasonable. II.F.2. Joint Ownership In Jag Flocomponents N.A. v. Archmetal Industries Corp., 191 the Federal Court cancelled Archmetal s registration for FUSION for ball valves for industrial use, and opened the door to a finding that Archmetal was liable for making false and misleading statements in breach of Section 7(a). 192 Archmetal s FUSION registration issued in 2006 from an application based on use in Canada since September Archmetal was a British Columbia corporation wholly owned by Fortune (also a defendant), a Chinese company. Both Archmetal and Fortune were controlled by the individual defendant Chen. Archmetal was a 30 percent shareholder in the plaintiff Jag, and was Fortune s importer of valves into North America. The action arose out of the termination of a relationship between Jag and Archmetal where, for a period of time, the parties cooperated in the marketing and sale of valves for use in the oil field, some manufactured by Fortune and some by an unrelated third-party company (Neway). In 2001, Jag and Archmetal entered into a letter of intent, which set out the basics of their relationship: (1) Archmetal was to acquire a 30 percent ownership interest in Jag; (2) Jag was to provide technical and marketing support to Fortune; (3) Fortune F.C. 627 (June 10, 2010), available at appeal docketed, File No. A (F.C.A. May 26, 2011) Section 7(a) provides: No person shall make a false or misleading statement tending to discredit the business, wares or services of a competitor.

95 892 Vol. 101 TMR was to grant Jag an exclusive marketing relationship for all of Fortune s valves in Canada; and (4) Archmetal was to refer its valve customers to Jag. In 2002, Jag and Archmetal entered into a Consignment Agreement, Clause 12 of which stated that any new products, designs, patents, inventions, calculations, and other intellectual property which arise directly or indirectly pursuant to or in consequence of this agreement shall be deemed to [be] equally owned by the parties hereto. In January 2002, Jag proposed the trademark FUSION because FORTUNE, being associated with lower-quality China-manufactured products, would not be readily acceptable in the Canadian market. In February 2002, Jag entered into a market representation agreement with Neway for FUSIONbranded ball valves, to the knowledge of Chen. Neither Archmetal nor Fortune exercised any control or gave directions with respect to the nature and quality of the Neway products. In November 2002, Jag created a catalogue of Fusion valves, some of which were produced by Fortune and some by Neway. After the relationship between Jag and the defendants became strained, Archmetal applied to register the FUSION trademark in March 2003, claiming first use in September 2002 based on a shipment from Fortune to Jag. A month later, Jag filed its own application to register FUSION, which Archmetal opposed. In support of Archmetal s opposition, Chen filed as evidence the Consignment Agreement, but without Clause 12. Chen also filed the bulk of the catalogue used by Jag to market the FUSION valves without those portions that showed Jag s logo. After terminating the arrangement in July 2003, Jag directed Archmetal to cease use of Fusion and commenced an action for cancellation and breach of Section 7(a). The court found that the idea of using FUSION was entirely that of Jag. Chen consented to the use of FUSION in respect of products made and sold under the Jag- Archmetal arrangement. The FUSION trademark and its use fell squarely within the terms of Clause 12, which reflected the parties intention that any new trademark would be jointly owned. Accordingly, neither party could claim ownership of the mark. FUSION had been poisoned as a viable mark because neither side was prepared to share ownership. For this reason alone, Archmetal s registration was cancelled. The fact that Clause 12 was not pleaded was not fatal to the case because of the following: (1) the defendants were not caught by surprise; (2) there was no prejudice to either side; and (3) the court had a duty to ensure that only properly registrable marks were on the register. A second basis for cancellation was the finding that the September 2002 sale by Fortune to Jag, which formed the basis of Archmetal s first-use claim in the registration under attack, did not constitute a transfer in the ordinary course of trade. The defendants did not intend to transfer products to Jag until Jag had

96 Vol. 101 TMR 893 sold them to a third party. Under the Consignment Agreement, Jag held the products as a trustee and not in its own right. Accordingly, Archmetal s date of first use was unsustainable. Such a material misrepresentation as to use, whether or not fraudulent or with intent to deceive, rendered the FUSION registration void. A third basis for cancellation was lack of distinctiveness because of the following: (1) there was a complete mixing of the Fortune logo and the FUSION mark, and a mixing of the products including those made by Neway; and (2) neither Fortune nor Archmetal had any control over the quality of the FUSION-branded valves manufactured by Neway. A fourth basis for cancellation was material omission because Archmetal knew that the disclosure of Clause 12 to the Registrar would raise issues as to ownership. There was nothing inadvertent about the omission of this evidence and there was no doubt that Clause 12 was material to Archmetal s trademark application. As for the transfer of the FUSION registration to Jag, this was refused for three reasons: (1) the court lacked jurisdiction to order substitution of a registered owner; (2) Jag was only an equal owner of the mark pursuant to Clause 12; and (3) Jag could not establish its date of first use of August 2002 because it produced only an invoice; no purchase order or other documents substantiating the sale were put in evidence, nor was evidence by the alleged purchaser tendered. It was likely that the invoice referred to a sample, but even that was speculative. II.I. Post-Registration Evidence of Use and Renewals Nova Scotia Co. successfully appealed the Registrar s decision cancelling its registration for the trademark ENTRE NOUS for use in association with long distance telephone services. 193 The cancellation was the result of summary non-use cancellation proceedings commenced by Lang Michener LLP pursuant to Section 45, wherein the Registrar concluded that there was no evidence of a license agreement between the mark s owner and its user. 194 The only issue before the court was whether the additional evidence filed on appeal proved the existence of a licensing agreement Nova Scotia Co. v. Lang Michener LLP, 2009 F.C. 928 (Sept. 17, 2009), available at Section 45(1) provides: The Registrar may at any time and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee shall, unless the Registrar sees good reason to the contrary, give notice to the registered owner of the trade-mark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to each of the wares or services specified in the registration, whether the trade-mark was in use in Canada at any time during the three year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.

97 894 Vol. 101 TMR Before the Registrar, Nova Scotia had tendered evidence that the ENTRE NOUS mark was being used by Primus, a subsidiary of Nova Scotia, on invoices sent to customers of its long distance telephone services. However, Nova Scotia had erroneously failed to explain that Primus was its subsidiary, with Nova Scotia owning all of its shares. The Registrar had held that Nova Scotia could not claim the protection in Section because there was no evidence that PTC had been licensed by to use ENTRE NOUS, or that the had, under a license, direct or indirect control of the character or quality of services. The Registrar also held there was no public notice of any license so as to claim the protection of Section 50(2). 196 On appeal, Nova Scotia filed evidence that (1) Primus had been licensed by way of agreement with Nova Scotia to use the ENTRE NOUS trademark; (2) such license entitled Primus to market and perform long distance telephone services in association with Nova Scotia s trademarks; (3) by virtue of the license, Nova Scotia had direct or indirect control of the character and quality of the services performed and advertised with the licensed ENTRE NOUS mark; and (4) all use of ENTRE NOUS by Primus was to inure to the benefit of Nova Scotia. A copy of the license agreement was not produced. Given that Nova Scotia filed new evidence that was not available to the Registrar when the decision was made, the court applied the correctness standard of review. The court stated that it was not necessary to produce a formal licensing agreement to prove the existence of a licensing agreement under Section 50, that such an agreement may be inferred from the facts, and need not be in writing. The court was prepared to find that Nova Scotia maintained control of the use by Primus of the ENTRE NOUS trademark and that a licensing agreement as to the use of the mark by Primus existed between and Primus Section 50(1) provides: For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trade-mark to use the trade-mark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the wares or services, then the use, advertisement or display of the trade-mark in that country as or in a trade-mark, trade-name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trade-mark in that country by the owner Section 50(2) provides: For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trade-mark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trade-mark and the character or quality of the wares or services is under the control of the owner.

98 Vol. 101 TMR 895 In Jose Cuervo S.A. de C.V. v. Bacardi & Co. Ltd., 197 Jose Cuervo failed to overturn the Registrar s decision to cancel its registration for CASTILLO for rum pursuant to Section 45. In 1996, Jose Cuervo s predecessor in title had successfully defended the same registration in Section 45 proceedings based on a single sale of 41 cases of CASTILLO rum to the Liquor Control Registrar of Ontario. 198 In the present proceedings, Jose Cuervo s evidence before the Registrar established that (1) its most recent Canadian sale of CASTILLO rum was in 1999; (2) in May 2002, it undertook a new marketing strategy to incorporate the secondary COHIBA trademark (owned by Tequila Cuervo, a company related to Jose Cuervo)into the label for CASTILLO; (3) the new co-branding marketing strategy triggered a worldwide dispute between Tequila Cuervo and Cubatabaco, the owner of the trademark COHIBA for cigars; (4) until such time as the worldwide dispute was resolved, Tequila Cuervo instructed Jose Cuervo to defer plans for products branded with COHIBA in Canada, including CASTILLO-branded products whose label bore both marks; and (5) Jose Cuervo had a strong interest in resuming the use of CASTILLO in Canada. In ordering the cancellation of the CASTILLO registration for lack of use during the three-year period prior to October 26, 2005, the Registrar concluded that: (1) the intention to resume use was not a special circumstance that excused the absence of use 199 ; (2) the threat of impending trademark litigation might be a reasonable excuse for non-use for a short period of time, but a deliberate decision by Jose Cuervo to wait out the litigation relating to COHIBA for six years was a voluntary decision; and (3) there was insufficient evidence to demonstrate the necessity for the co-marketing strategy with COHIBA and the lack of choice by Jose Cuervo to not use CASTILLO without the COHIBA mark until the dispute was resolved. On appeal to the Federal Court, Jose Cuervo filed additional evidence that Jose Cuervo resumed use of CASTILLO (without COHIBA) on August 4, 2008, which coincidentally and suspiciously coincided with the hearing that led to the Registrar s decision under appeal. The court concluded that the additional evidence would not have changed the Registrar s decision because such evidence: (1) affirmed the Registrar s finding that Jose Cuervo s non-use of CASTILLO was a voluntary decision; (2) established that Jose Cuervo made the decision to remove the COHIBA mark from the C.P.R. (4th) 451 (F.C. Nov. 17, 2009), available at appeal docketed, File No. A (F.C.A. Dec. 17, 2009) Quarry Corp. v. Bacardi & Co., 72 C.P.R. (3d) 25 (F.C.T.D. Mar. 11, 1996), aff d, 86 C.P.R. (3d) 127 (F.C.A. Mar. 11, 1999) Relying upon Scott Paper Ltd. v. Smart & Biggar, 65 C.P.R. (4th) 303 (F.C.A. Apr. 4, 2008), summarized at 99 TMR 417 (2009).

99 896 Vol. 101 TMR label to be used in Canada, and to once again use CASTILLO alone; and (3) did not explain why Jose Cuervo could not have earlier resumed marketing its rum under the CASTILLO mark, while the pending dispute with COHIBA was resolved. Because the additional evidence would not have materially affected the Registrar s decision, it was subject to a reasonableness standard of review. In the court s view, it was reasonably open to the Registrar to conclude that Jose Cuervo had provided insufficient evidence as to why CASTILLO could not be marketed without reference to COHIBA. Jose Cuervo did not provide sufficient evidence to understand the basis for not using CASTILLO between 1999 and 2008 or why the relationship between Jose Cuervo and Tequila Cuervo would not permit Jose Cuervo to continue using CASTILLO by itself. It was deemed illogical to suspend the use of a valid Canadian trademark because of a threat of impending litigation with respect to another mark. Generally speaking, a dispute over a secondary mark is not an exceptional occurrence in business. The Federal Court of Appeal s decision in Scott Paper 200 recalibrated the criteria for cancellation under Section 45 by requiring trademark owners to demonstrate that non-use is due to special circumstances that are (1) beyond their direct or indirect control and (2) not normal or would not apply to other persons in the marketplace. Cobalt Brands, LLC successfully appealed the Registrar s decision to cancel its registration for USQUAEBACH & Design for Scotch whiskey pursuant to Section Cobalt admitted that the mark had not been used during the three-year period preceding December 15, 2008, but argued that there existed special circumstances that excused the absence of use. The mark had last been used in Canada in 2001 by Twelve Stone. The owner of Twelve Stone passed away in The mark was assigned to Van Caem, and subsequently Van Caem Belgium, pursuant to a U.S. Court order in At the end of 2003, the principal owner of Van Caem died, resulting in the suspension of all business and ultimately a lengthy liquidation process that lasted a number of years. After acquiring the mark from Van Caem in 2007, Cobalt immediately began taking steps to recommence the production and distribution of USQUAEBACH-branded whiskey products in Canada, including: (1) finding a Scottish distiller that could match the quality of the products sold by previous owners; (2) ensuring that each label associated with the different varieties of whiskey complied with labeling regulations; (3) negotiating distribution 200. Id Cobalt Brands, LLC v. Gowling Lafleur Henderson LLP, 82 C.P.R. (4th) 245 (F.C. Mar. 5, 2010), available at fc260.html.

100 Vol. 101 TMR 897 deals in the applicable provinces; (4) ensuring compliance with local liquor regulations; and (5) finding a licensed importer in Canada. The court determined that the death of the owners of Twelve Stone, together with the series of unfortunate events that plagued the mark s ownership, constituted special circumstances that justified the absence of use. The absence of use by Twelve Stone and Van Caem was directly related to the deaths of their owners, circumstances not faced in most circumstances of non-use and could not be said to be the result of a deliberate decision on the part of the registered owner. Noting that Cobalt was not dealing with the acquisition of an ongoing business with existing supply and distribution networks but rather, had to start from [the] beginning, and while the intention to resume use may not be used to support a finding of special circumstances, the court held that it was not the intention demonstrated through Cobalt s actions that excused the absence of use in the present case. The immediate resumption of use of the mark by Cobalt was impeded by the nature of the liquor industry, the regulatory schemes that must be complied with in each Canadian province, and the two deaths of the previous owners. In Tucumcari Aero, Inc. v. Cassels, Brock & Blackwell LLP, 202 Tucumcari successfully appealed the Registrar s decision to cancel its registration for Moto Mirror & Design for use with truck and automobile mirrors pursuant to Section 45. The Registrar had concluded that Tucumcari s evidence was ambiguous with respect to its control over the character or quality of the truck mirrors that had been sold during the relevant period in Canada. Tucumcari submitted the following additional evidence on appeal: (1) in 1997 Tucumcari and Echlin entered into a Licensee Agreement whereby Echlin was licensed to use the Moto Mirror in Canada and elsewhere and Echlin agreed that it would apply the trademark only to products that were of a quality equal to samples that had been previously approved by Tucumcari; (2) in 2000, Echlin sold all of its assets including the License Agreement to CVS with Tucumcari s consent; (3) in 2001, CVS entered into a Service and Supply Agreement with its related company National Seating, pursuant to which (a) National Seating would manufacture exterior mirrors for commercial vehicles on behalf of CVS and sell same to customers of CVS and (b) all products manufactured and supplied by National Seating would be of CVS s approved design and manufacture; and (4) every mirror manufactured by National Seating had attached to it a metal tag displaying the MOTO MIRROR trademark. Tucumcari submitted C.P.R. (4th) 372 (F.C. Mar. 9, 2010), available at

101 898 Vol. 101 TMR copies of the Licensee Agreement and Service and Supply Agreement. The additional evidence Tucumcari adduced on appeal was deemed substantial and addressed the ambiguities in the evidence that had concerned the Registrar. As the additional evidence would have materially affected the Registrar s findings on the issue of indirect control, the standard of correctness applied. The central issue before the court was whether the evidence was sufficient to establish Tucumari s control over the character and quality of the goods in the context of the sub-licensing arrangement. Noting that (1) the License Agreement between Tucumcari and CVS dealt effectively with the issue of product quality, and (2) the Supply Agreement between CVS and National Seating provided for National Seating to supply exterior mirrors for commercial vehicles manufactured in accordance with the terms, conditions, quality and specifications defined by CVS, the court was satisfied that the agreements were sufficient to establish Tucumari s indirect control. The court held that in the context of sublicensing, the indirect control contemplated by Section 50(1) does not require an express condition in the sublicensing agreement that the trademark owner will continue to determine whether the quality of the goods produced has been maintained. The court stated that [W]hat is required is that the owner be able to control product quality through the exercise of its contractual rights vis-à-vis the intermediary which, in turn, is entitled to control product quality under contract with the sublicensee. So long as there is a continuity of quality control that can be effectively maintained by the trademark owner under the chain of contracts, no special conditions or language are required. However, in view of the absence of evidence of use of the trademark in association with automobile mirrors, the registration was maintained only for truck mirrors. In Sim & McBurney v. Parry, 203 Sim & McBurney convinced the Federal Court to set aside the Registrar s decision pursuant to Section 45 maintaining Parry s registration for VANCOUVER LIFE in association with editorial/advertising inserts into publications and periodicals. 204 The court found that it was not C.P.R. (4th) 262 (F.C. Feb. 4, 2010), available at The Registrar had ordered the following goods and services deleted from the registration since there was no evidence of use of the mark in association therewith: printed publications, namely magazines, guidebooks, books, newspapers, newsletters; promotional services, namely promoting the sale of goods and services of others through the distribution of printed material, advertising and promotional contests; fashion show services; entertainment services through the media of radio and television broadcasts and motion pictures; audio-visual program services, namely writing and producing audio-visual works for others for purposes of advertising and education; arranging and conducting trade shows and exhibitions; databases services, namely establishing, updating and maintaining

102 Vol. 101 TMR 899 reasonable for the Registrar to assume that such goods included a column of editorial content published in a magazine. VANCOUVER LIFE had been used by Parry as the title of a regular column of editorial content in almost every edition of Vancouver magazine, which was published ten times a year by Transcontinental. The column always included the title VANCOUVER LIFE, usually with the TM symbol. The Registrar was of the view that it was not required to decide in Section 45 proceedings whether use of a mark as a column published in a magazine constituted trademark use, since the issue of distinctiveness was not relevant in Section 45 proceedings. However, the Registrar did not explain why a column of editorial content published in a magazine was considered editorial/advertising inserts into publications and periodicals; rather the Registrar simply assumed that to be the case. As Parry did not file additional evidence on appeal, the court applied a standard of reasonableness. In the court s view, the Registrar did not err in refusing to embark on a review of the distinctiveness or validity of the trademark. However, the Registrar did err in assuming that columns of editorial content published in a magazine constituted editorial/advertising inserts into publications and periodicals. The expression editorial/advertising inserts into publications and periodicals could not reasonably be understood as extending to editorials inserted into publications and periodicals. The list of goods set out in the registration should be read in the full context of the original registration, namely: printed publications, namely magazines, guidebooks, books, newspapers, newsletters, and editorial/advertising inserts into publications and periodicals. The noun insert and its plural inserts thus referred to a type of publication that is loose in form and that is inserted in a magazine, more often than not for advertisement or promotional purposes. III.A.2 Passing Off The Federal Court in Target Event Production Ltd. v. Cheung et al. 205 declared that Target was the owner of the goodwill in the trademark RICHMOND NIGHT MARKET, among others, in association with public markets in British Columbia and ordered the individual defendant Cheung and the corporate defendant Lions to cease directing public attention to their market and business in such a way as to cause or be likely to cause confusion computer data bases for use by subscribers. This aspect of the decision was not in issue in the appeal C.P.R. (4th) 413 (F.C. Jan. 11, 2010), available at appeal docketed, File No. A (F.C.A. Oct. 5, 2010).

103 900 Vol. 101 TMR between those of Target and those of the defendants contrary to Section 7(b). The court ordered the defendants to pay $15,000 in damages for copyright infringement and passing off. Target had used the following marks (in English and Chinese characters): (1) RICHMOND NIGHT MARKET since 2000; and (2) RICHMOND NIGHT MARKET SUMMER FESTIVAL since Target s market was open weekend evenings from May to October. In April 2008, Target issued a press release entitled Richmond Night Market Cancelled for 2008, which explained that: (1) the market would be cancelled because the landlord had decided not to renew Target s lease; and (2) Target was continuing to search for a new site. Target also posted a similar announcement on its website. In May 2008, Lions commenced operating a market on the same premises under the names RICHMOND SUMMER NIGHT MARKET and SUMMER NIGHT MARKET. In addition to using Target s site, Lions also used Target s copyrighted site plan showing the layout of the booths and other facilities. Target registered the copyright in the site plan in In the court s view, although Target s marks were originally merely descriptive, by January 2007 they were valid trademarks because they enjoyed substantial goodwill and had acquired distinctiveness. However, this acquired distinctiveness was not durable. When Target failed to open a night market in 2009, Target s marks, which were inherently weak, lost their distinctiveness. For this reason, much of the declaratory and injunctive relief sought by Target was denied. With respect to passing-off, the court was of the view that both vendors and visitors were relevant consumers. The court held that three significant surrounding circumstances virtually eliminated the likelihood that vendors would be confused by the similarities of the parties marks: (1) Target s press release and website announcement; (2) intense media coverage of the closing of Target s market and the opening of Lions market; and (3) Lions March 2008 news release identifying itself as a new operator. Vendors had a special reason for following news about the parties markets because the Richmond Night Market contributed to their livelihoods and Target had told them that its future was somewhat uncertain. Regarding visitors to the market, the court held that Lions use of RICHMOND SUMMER NIGHT MARKET and SUMMER NIGHT MARKET in Chinese characters and of the trademark RICHMOND SUMMER NIGHT MARKET conveyed that Lions market was a continuation of Target s successful night market. The court was therefore of the view that Target had established passing-off in connection with prospective visitors. Cheung was jointly and severally liable for the monetary award.

104 Vol. 101 TMR 901 III.A.7. Advertising The Ontario Superior Court of Justice refused Bell Canada s application for an interlocutory injunction restraining Rogers Communications Inc. from advertising that the latter s Internet service was the fastest and/or most reliable. 206 Bell and Rogers are strong competitors in the areas of telecommunications, Internet, television, wireless, and telephone services. Bell alleged that Rogers conduct constituted the tort of injurious falsehood and violated Section 7(a) and Section 52(1) 207 of the Competition Act. 208 In support of its speed and reliability claims, Rogers relied upon third-party research conducted by comscore Inc. The parties experts tendered conflicting evidence as to whether the comscore data supported Rogers claims. In support of its assertion that it would suffer irreparable harm if Rogers advertisement was not enjoined, Bell argued that if its customers wrongly believed that its Internet services were consistently second rate to those offered by Rogers, the customers might terminate or not renew their Bell Internet service and other Bell services. Bell acknowledged that it was not possible for Bell to ascertain whether a potential customer would choose Rogers (or another Internet service provider) over Bell because of Rogers advertisement, rather than for other reasons. Advertisements about Rogers having the fastest service, including reference to the comscore data, first appeared in August 2008, some 18 months before Bell applied for an interlocutory injunction. Bell established there was a serious question to be tried with respect to whether: (1) there was a reasonable basis for Rogers to advertise that it offered the fastest and most reliable Internet speed; and (2) the testing done by comscore was reliable and accurate. However, Bell failed to establish it would suffer irreparable harm if the injunction was not granted. Moreover, the balance of convenience favored Rogers. However, the court was of the view that Bell s evidence of irreparable harm was not compelling, but rather speculative, suggestive of the possibility that some customers may terminate with Bell who conceded that this eventuality might be unrelated to the advertising of Rogers. The court therefore held that the onus on Bell to show that an injunction was necessary to prevent irreparable harm had not been met. In addition, given Bell s delay since August 2008, the court was not convinced that it had suffered and would continue to 206. Bell Canada v. Rogers Communications Inc., 84 C.P.R. (4th) 132 (Sup. Ct. J. Ont. May 27, 2010), available at onsc3010/2010onsc3010.html Section 52(1) provides: No person shall, for the purpose of promoting, directly or indirectly, any business interest, by any means whatever, knowingly or recklessly make a representation to the public that is false or misleading in a material respect R.S.C c. C-34.

105 902 Vol. 101 TMR suffer irreparable harm. Regarding the balance of convenience, the court found that the chance of irreparable damage to Bell was much less than the risk that Rogers would suffer lost customers and lost opportunities if it were restrained from advertising that it offered the fastest and most reliable Internet service. The court found no justification on the evidence to interfere in the advertising war between these two large corporations. Accordingly, Bell s motion for an interlocutory injunction was dismissed. III.E.1. Injunction In Unique Sea Farms Ltd. v. Canada Marine Life Sciences Inc., 209 Canada Marine was enjoined, on an interlocutory basis, from using Unique s trademark UMAC in association with health food and natural products. Unique produced marine phytoplankton for use in natural health products, skin care products, beverages, and food and feed for fish and animals, which it marketed in association with the trademark UMAC. It registered the UMAC mark in In 2006 and 2008, Unique entered into agreements with Canada Marine s U.S. sister corporation (Marine Life LLC) pursuant to which Marine Life U.S. was granted an exclusive license to use the UMAC trademark in association with Unique s products. Canada Marine was incorporated by Marine Life U.S. in order to provide a vehicle to distribute UMAC-branded phytoplankton within Canada. In 2009, Canada Marine entered into an agreement with Hedley granting Hedley the exclusive right to market UMAC products in Canada and reserving to Canada Marine the right to specify what products Hedley could market, including products not produced by Unique. Canada Marine s submission was that it was entitled to use Unique s trademark and to distribute its products, and that this right arose under the 2006 and 2008 agreements. However, Canada Marine failed to tender evidence to support the following assertions of fact that: (1) Canada Marine was a subsidiary of Marine Life LLC; (2) Canada Marine and Marine Life LLC were connected in any way other than by having the same directors; (3) Marine Life LLC caused Canada Marine to be incorporated; (4) Marine Life LLC had authorized Canada Marine to do anything on its behalf or to use the UMAC trademark or to market any products; and (5) Unique had authorized or licensed Canada Marine to do anything. Unique convinced the Court that it had a strong case for breach of contract and trademark infringement, which was not seriously contested by Canada Marine. The court concluded C.P.R. (4th) 380 (B.C.S.C. Apr. 12, 2010), available at bc.ca/jdb-txt/sc/10/05/2010bcsc0545.htm.

106 Vol. 101 TMR 903 Unique would suffer irreparable harm if the injunction were not granted as a result of the following: (1) Canada Marine was not in a position to pay damages, being merely a shell company without assets; (2) Canada Marine gave Hedley Enterprises the right to market products other than Unique s under the UMAC mark, which would cause Unique irreparable damage by associating Unique with products it did not produce; and (3) there was no mechanism to determine how much product Canada Marine would market. In the court s opinion, the overwhelming balance of convenience laid with Unique, because Canada Marine asserted it was unlikely to continue marketing UMAC-branded goods. The British Columbia Supreme Court dismissed the interlocutory injunction application in Preferred Nutrítíon Inc. v. Vanderhaeghe. 210 For 25 years, the defendant, Ms. Vanderhaeghe, was involved in the development and marketing of women s health supplements. In 2001, the plaintiff was formed to develop a new line of health products that would bear Vanderhaeghe s name and likeness. Vanderhaeghe s role was to develop the products and marketing material in exchange for a percentage of sales. Since 2002, the plaintiff had sold a line of health supplements in association with the word SENSE in combination with different prefixes such as Uri and Estro, and proceeded to register a family of SENSE trademarks. In 2009, Vanderhaeghe proposed that the plaintiff distribute her new SMART-branded line of women s health supplements together with the SENSE line, with the latter eventually being phased out. The plaintiff considered this to be a fundamental change in its business relationship, and in 2010 the plaintiff terminated its arrangement with Vanderhaeghe when they could not reach an agreement as to their future relationship. After the termination, the plaintiff removed Vanderhaeghe s name and likeness from its SENSE line of products, but otherwise maintained the distinct combination of layout, color scheme, and font that it had always used for those products, and sought an interlocutory injunction restraining the defendants from marketing a line of women s health supplements using SMART (with prefixes similar to those used by the plaintiff) together with her name and likeness. The court was satisfied that there was a serious question to be tried and that the plaintiff s action was neither frivolous nor vexatious. However, regarding the issue of irreparable harm, the court was of the view that the evidence was only speculative; the evidence indicated that only a small fraction of the plaintiff s sales were subject to the confusion alleged by the plaintiff, and there was no evidence of a single lost sale. The court noted that the C.P.R. (4th) 197 (B.C.S.C. June 17, 2010), available at bc.ca/jdb-txt/sc/10/08/2010bcsc0864.htm.

107 904 Vol. 101 TMR plaintiff had an eight-year history of sales and an accounting system that tracked sales by product; if the plaintiff suffered losses from competition from the defendant, such losses could have been determined by comparing sales prior to the launch of the SMART line of products with those following the launch. The court also noted that the plaintiff s claim related only to money and the prospect of lost profits, as contrasted with Vanderhaeghe s position, which involved her reputation and her right to continue with a new product line that was closely associated with her name, likeness, and reputation. The court therefore concluded that the plaintiff had failed to establish that it would suffer irreparable harm. Turning to the balance of convenience, the court held that the inconvenience to the defendant if an injunction were granted would not be minimal as it would, in effect require the defendant to start all over again to develop a new product line. Finally, the court noted that the plaintiff s case was very weak; the defendant s use of SMART together with the addition of Vanderhaeghe s likeness rendered the SMART line of products quite distinct from the plaintiff s SENSE line of products. In the court s view the plaintiff had unilaterally decided to disassociate itself from Vanderhaeghe, and Vanderhaeghe was free to develop her own product line incorporating her name and likeness provided Vanderhaeghe did not infringe the intellectual property rights of the plaintiff, which it did not. CHILE I.D.1. Similarity of Marks Claudia Veronica Garriga Viera filed an application for LO Q EL VIENTO SE LLEVO, covering products included in Class 25. Turner Entertainment Co. filed an opposition based on its trademark GONE WITH THE WIND, registered abroad to distinguish products included in Class 25. The opponent argued that: 1. The opponent s trademark was widely registered abroad and was a famous trademark; 2. The applied-for mark was the Spanish translation for GONE WITH THE WIND; and 3. The applicant acted in bad faith, pursuant to Article 20(k) of the Industrial Property Law, 211 because the opponent s trademark corresponded to the name of the famous movie produced in Article 20(k) of the Industrial Property Law provides: The following may not be registered as trademarks: [ ] k) Those contrary to moral codes, norms of good behavior and public order, including the principles of fair competition and business ethics.

108 Vol. 101 TMR 905 The National Institute of Industrial Property upheld the opposition, stating that the opponent proved to be the owner of trademark GONE WITH THE WIND, registered abroad for the same scope of protection. Moreover, it was stated that the applicant s mark LO Q EL VIENTO SE LLEVO was phonetically identical to LO QUE EL VIENTO SE LLEVO, which is the Spanish translation for GONE WITH THE WIND, and therefore these two trademarks could not peacefully coexist. 212 This decision, which was not appealed, is interesting because it establishes that likelihood of confusion may be based on the translation of a foreign trademark. I.E. Bad Faith Jan Miroslav Zuanic Botta filed an application for the trademark BATMAN, covering bicycles, tricycles, and wheeled vehicles in Class 12. DC Comics filed an opposition based on its trademark BATMAN with foreign registrations to identify products included in Classes 9, 12, and 25. The opposition was based on the following arguments: 1. The opponent s trademark was widely registered abroad and was a famous trademark; 2. Registration of the applied-for mark would lead consumers to confusion. 3. The applicant acted in bad faith, pursuant to Article 20(k) of the Industrial Property Law, because the opponent s trademark was the name of a worldwide famous character. The National Institute of Industrial Property upheld the opposition, stating that the opponent proved to be the owner of the trademark BATMAN, registered abroad to distinguish products included in Class 12, and that it was also accredited as a famous trademark. In addition, it was stated that the applicant acted in bad faith, given that the fame of the opponent s trademark was notorious and therefore the applicant also acted against commercial ethics. 213 This decision, not appealed, ratifies a jurisprudence stated by the industrial property courts, according to which any application for registration of a well-known trademark by a third party is deemed an act in bad faith and contrary to commercial ethics Decision No , Application No (National Institute of Industrial Property, Oct. 9, 2009) (in Spanish) (unpublished) Decision No , Application No (National Institute of Industrial Property, Mar. 19, 2010) (in Spanish) (unpublished).

109 906 Vol. 101 TMR I.F. Famous and Well-Known Marks Impresora y Comercial Publiguías S.A. filed an application for 007 PUBLIGUIAS INFORMACIÓN TELEFÓNICA, covering information services via telephone and other related services included in Class 38. Danjaq LLC filed an opposition based on its trademark 007 (illustrated below), registered abroad to distinguish products included in Classes 9, 25, and 28. The opponent based its action on likelihood of confusion due to the similarity of marks and the fame of the trademark 007, related to the James Bond character. Moreover, the opponent pointed out that in the design of the applied-for mark the element 007 was more prominent. The National Institute of Industrial Property rejected the opposition because of the different scopes of protection of both trademarks. 214 On appeal, the Industrial Property Court revoked the first instance decision because the fame and notoriety of the trademark 007 exceeded its own coverage. 215 The Supreme Court, via recourse of cassation, stated that the decision issued by the Industrial Property Court was in accordance with the law because the element 007 is more prominent in the design of the applied-for trademark, while PUBLIGUIAS INFORMACIÓN TELEFÓNICA is not distinctive enough. 216 This decision is significant to trademark law in this jurisdiction, because the highest court recognized that a very well Decision No , Application No (National Institute of Industrial Property, July 27, 2007) (in Spanish) (unpublished) Case No (Industrial Property Court, Jan. 24, 2008) (in Spanish) (unpublished) Danjaq LLC v. Impresora y Comercial Publiguías S.A., Decision No (Supreme Court of Justice, June 16, 2010), available at modulos/busqcausas/bca_esta402.php?rowdetalle=aaanopaakaabt25aac&consulta=1 00&glosa=&causa=2097/2008&numcua=20812&secre=UNICA (in Spanish). There was a minority vote.

110 Vol. 101 TMR 907 known trademark may prevent the registration of a similar trademark even for a different and unconnected scope of protection, providing that a risk of confusion may be provoked. Emilia El Sarras El Satrras filed an application for R ROCK REPUBLIC & Design, covering products in Class 25. Rock & Republic Enterprises Inc. filed an opposition based on the opponent s trademark ROCK & REPUBLIC, registered abroad to identify products included in Class 25 (illustrated below). The opponent argued that its trademark was widely registered abroad and that it was a famous trademark quite similar to the applied-for trademark. Moreover, the opponent pointed out that the design of the application included the word jeans, which was one of the main products sold by the opponent under its trademark. The National Institute of Industrial Property upheld the opposition, stating that the opponent proved to be the owner of the trademark ROCK & REPUBLIC registered abroad for the same scope of protection. Moreover, it was stated that neither the suppression of the element & nor the addition of the letter R were sufficient to avoid the risk of confusion between the conflicting trademarks. The Institute also found that the trademark ROCK & REPUBLIC was a famous and notorious trademark abroad. 217 This decision, which was not appealed, ratifies that any famous and notorious trademark registered abroad may not be registered in Chile by a third party. II.C.1.b. Personal Names Confecciones Sauer S.A. filed an application for THALIA, for distinguishing products in Class 25. Ms. Ariadna Sodi Miranda filed an opposition based on her trademark THALIA SODI, registered in Chile and abroad for products in Class Decision No , Application No (National Institute of Industrial Property, Mar. 19, 2010) (in Spanish) (unpublished).

111 908 Vol. 101 TMR The opponent argued that: 1. The registered trademark THALIA SODI was quite similar to the applied-for trademark; and 2. The applied-for trademark was identical to her pseudonym THALIA, under which she was well known worldwide as a singer and also as an actress. The National Institute of Industrial Property upheld the opposition, stating that the applied-for trademark was confusingly similar to the opponent s locally registered trademark, stating that the suppression of the element SODI was not sufficient to avoid the risk of confusion between the conflicting marks. Moreover, the decision stated that the marks THALIA and THALIA SODI were famous and notorious trademarks registered abroad for products in Class This decision, not appealed, shows how a pseudonym may prevent its registration as a trademark by a third party, especially if that pseudonym is also protected as a trademark. II.E. Examination and Opposition Orange County Choppers Design Properties, LLC, filed an application for ORANGE COUNTY CHOPPERS covering products of several classes, including products in Class 25. Three oppositions were filed, one of them by Gaston Eddie Olhaberry based on his previous trademark application for ORANGE COUNTY CHOPPERS in Class 25. In addition, the National Institute of Industrial Property issued an office action based on the same opponent s trademark application. The opponent argued that both conflicting trademarks were identical and that their scopes of protection collided. The defendant argued that the opponent s trademark application was already rejected because of the opposition filed by Orange County Choppers Design Properties, LLC, which was shown to be the owner of that trademark abroad. The National Institute of Industrial Property reconsidered its own office action and rejected the opposition, which was based on a rejected trademark application. 219 This decision was not appealed. This case demonstrates how an opposition and an office action can concur in the same proceeding, both based on the same grounds. In this case, the applicant had to defend himself against the opponent and the National Institute of Industrial Property. At 218. Decision No , Application No (National Institute of Industrial Property, Oct. 9, 2009) (in Spanish) (unpublished) Decision No , Application No (National Institute of Industrial Property, October 2, 2009) (in Spanish) (unpublished).

112 Vol. 101 TMR 909 the same time, this case shows how an opposition proceeding may depend on another related opposition proceeding. CHINA, PEOPLE S REPUBLIC OF I.B.3. Deceptively Misdescriptive If instant noodles bear the mark SHAOLIN MEDICINAL CLINIC in Chinese characters and SHAOLIN MEDICINE in English, would you view this good as a food or a medicine? Maybe you cannot decide. This was the exact concern of the Beijing No. 1 Intermediate People s Court when it rejected registration of the mark filed by its applicant. 220 In August 2004, Songshan Shaolin Temple of Henan Province filed an application to register SHAOLIN MEDICINAL CLINIC in Chinese characters and SHAOLIN MEDICINE in English for instant noodles, coffee, rice boxes, and tea. In September 2006, the Chinese Trademark Office (TMO) rejected the application on the ground that use of the mark on these designated goods would cause consumer confusion. 221 Not satisfied with the TMO s decision, the applicant appealed to the Trademark Review and Adjudication Board of the State Administration of Industry and Commerce (TRAB). 222 The applicant argued that the mark was uniquely designed and therefore would not mislead consumers to think that the products so designated had medicinal properties. However, the TRAB held that the Shaolin Temple had historically offered services as a medical clinic by producing medicine and curing illnesses of both the monks who resided in the temple and the residents who lived near it. The Temple s services were interrupted because of war. Under these circumstances, customers would likely associate the trademark with a place where illness was diagnosed and medicine provided. However, consumers would not likely view the mark as an indication of source of the food and beverage products. In August 2009, the TRAB dismissed the appeal and upheld the TMO s rejection. The applicant further appealed to the court. 223 On April 26, 2010, the Beijing No. 1 Intermediate People s Court rendered a decision, upholding the TRAB s dismissal. 224 The court stated that because of the history and role of the Shaolin Temple medicinal clinic, use of the mark on products like coffee 220. Trademark SHAOLIN MEDICINAL CLINIC in Chinese and SHAOLIN MEDICINE Ruled Non-registrable, China Industry and Commerce News, May 13, Id Id Id Id.

113 910 Vol. 101 TMR and tea would likely cause customers to believe such goods were sourced from the Temple and contained medicinal ingredients, thus misunderstanding the nature of the designated goods. Therefore, registration of the mark should be rejected. This is a case where a third party s attempt to register a mark long used by a quite well-known owner was rejected because the TMO, the TRAB, and the court were all concerned that the mark might create confusion among customers. I.D.1. Similarity of Marks Beijing Shenzhou Chaoyue Science and Technology Development Inc. (Beijing Shenzhou) owned a trademark registration 225 for SHENZHOU in Chinese characters for liquor. In late 2009, the TRAB rendered a decision on an invalidation action, cancelling the trademark on the basis of a prior registration for the mark SHENZHOU & Design (in the name of Henan Minquan No. 2 Winery (Henan Minquan)), finding the two marks to be identical or similar and to be used on identical or similar goods. 226 Beijing Shenzhou s SHENZHOU mark was a brand for a highend liquor product exclusively distributed by Beijing Maotai Shenzhou Trading Co. (Beijing Maotai Shenzhou), a joint venture between Guizhou Maotai Liquor Ltd. (Guizhou Maotai) and Beijing Shenzhou. The mark was first used on the market in The application to register the mark was first filed in April 2001 and was later assigned to Beijing Shenzhou, which then authorized the joint venture Beijing Maotai Shenzhou to use the mark on liquor products. Henan Minquan s SHENZHOU & Design mark was filed in 1989 for wine in Class 33. The company filed an invalidation action with the TRAB against Beijing Shenzhou s mark in February 2007 on the ground that Beijing Shenzhou s mark and its own SHENZHOU & Design mark were similar and were used on the same or similar goods. The company also filed a civil action against Guizhou Maotai, alleging that Maotai Shenzhou infringed its trademark rights. The civil action against Guizhou Maotai was suspended and is still pending. 227 Henan Minquan found the TRAB decision encouraging, hoping it would benefit the pending trademark infringement case. Beijing Maotai Shenzhou refused to comment on the decision. China is a first-to-file country. If an application is filed later than an identical or similar mark s filing or registration date, the TMO will reject registration of the later mark Registration No Maotai SHENZHOU Trademark Ruled Invalid, China Intellectual Property News, Dec. 11, Id.

114 Vol. 101 TMR 911 When determining whether two marks are confusingly similar, the court will look at several issues, including a consent letter from the owner of the cited mark. At the end of 2009, the Beijing High People s Court found the mark ANTU & Design (in Chinese and Pinying characters) and the mark TUAN & Design (in Chinese characters) and TOURAN (in English) dissimilar, upholding a lower court s decision, and remanding the case to the TRAB. 228 ANTU is a mark used on car components, while the TUAN combination mark is used on cars. On June 8, 2004, Volkswagen Auto Ltd. filed an application before the TMO to register the TUAN combination mark for motorcycles, bicycles, and car bodies, etc. The application was partially rejected for goods including car bodies on the basis of the prior registration for ANTU, but the mark was approved for registration on motorcycles and bicycles. Volkswagen appealed the rejection, stating that TUAN cars were a new sedan series developed in 2003 and that the main purpose of its trademark application was to register and use the trademark on the new cars. The appeal was dismissed, despite the fact that during the proceedings, the registrant of the cited ANTU mark issued a letter consenting to Volkswagen s registration of the TUAN combination mark and confirmation that it would not infringe its trademark rights. 229 The applicant further appealed to the court, alleging that although both marks contained the Chinese characters TU and AN, the overall impressions of the marks were distinguishable. The TRAB did not consider whether the two marks were confusingly similar. The applicant stated that the use of TUAN on car bodies and the use of ANTU on car components would not mislead average consumers in the marketplace. The court found that consumers of cars were end users while users of car components were mostly car manufacturers and repairers. Function, usage, and sales channels of the goods were, in fact, different. Therefore, the goods designated by each mark were not similar. Moreover, the court of the first instance found the two marks to be different in the order of Chinese characters, pronunciation, and English words. Therefore, the use of the TUAN combination mark would not mislead the public as to the sources of the goods. The two marks were distinguishable Are ANTU and TUAN Similar Marks? China Intellectual Property News, Dec. 11, Id Id.

115 912 Vol. 101 TMR According to Presiding Judge Nei, the TMO and TRAB mostly relied on the international classification of similar goods and services and trademark examination guide to judge whether the two marks were similar and used on similar goods, while people s courts more frequently based their decisions on the Supreme Court s Interpretation of Several Legal Issues in Deciding Trademark Civil Disputes. In this case, the TMO and TRAB relied on the international classification and found the goods to be similar, while according to the Supreme Court s Interpretation, whether goods or services were similar should be determined by the relevant public s average understanding of the goods and services. The TUAN combination mark was used on cars. It would not cause customers to confuse it with the mark ANTU that was used on car components. Therefore, cars and car components were not viewed as similar goods by the court. 231 The TRAB appealed to the Beijing High People s Court but still did not prevail. 232 When determining whether two marks are confusingly similar, the courts tend to look at the overall impression of each mark. The factor that one mark totally contains another does not automatically mean the two marks are confusingly similar. In February 2010, the Beijing No. 1 Intermediate People s Court remanded a decision on an appeal against the TRAB. The Sino-French joint venture Dynasty Winery Ltd. (Dynasty) sued the TRAB for a decision to find the trademark QIWANGCHAO in Chinese characters distinguishable from its own mark WANGCHAO in Chinese characters (meaning dynasty ) for the same goods in International Class Dynasty owned a trademark registration for WANGCHAO in Chinese characters for wine, which was recognized in 2000 as a well-known mark for wine. It argued that the applicant for the mark QIWANGCHAO (meaning seven dynasties ) for the same goods should have known of the fame of the mark WANGCHAO. Thus, the application was willful, intentionally riding on the reputation of the WANGCHAO mark, as customers might easily view QIWANGCHAO as a new variation of the mark WANGCHAO. The court found the two marks quite distinguishable despite the fact that both marks contained the Chinese characters for WANG and CHAO. Although the mark WANGCHAO was recognized as a well-known mark in China, the court held that extended protection of well-known marks should be limited to a 231. Id Id QIWANGCHAO and WANGCHAO, Both for Wine, Are Found Dissimilar by Court of First Instance, China Intellectual Property News, Feb. 26, 2010.

116 Vol. 101 TMR 913 reasonable scope. Otherwise, it might affect other people s rights. 234 In a case with similar issues, the Beijing No. 1 Intermediate People s Court found the mark MBWL confusingly similar to the mark BMW. 235 Century Baoma Group, 236 the owner of the disputed mark MBWL, acquired a series of registrations in 2004 for leather shoes, clothing, and headgear. The three MBWL marks and three other related marks were a highly distinct series. BMW Co., however, asserted that the marks were a blatant plagiarization of its BMW mark. According to BMW Co., Century Baoma s trade name contained the Chinese version of the trademark BMW; its website was and it actually used a BMWL blue & white design, all of which pointed to intentional copying. On March 26, 1997, BMW Co., owner of an international registration for BMW, obtained recognition of the mark as a well-known mark in China for clothing, footwear, and headgear in Class 25. In 2001, the company licensed two clothing and accessory companies in Xiamen, China, to use the mark BMW on clothing and accessory products. 237 BMW Co. claimed that the mark MBWL was confusingly similar to its BMW mark both visually and phonetically. Moreover, the goods on which the marks were used were the same or similar. BMW Co. asserted that the MBWL mark on leather shoes, clothing, and headgear was sufficient to mislead the public as to the source of the goods and to cause the public to mistake these products as being manufactured and sold by BMW Co. or companies authorized by BMW Co. Through extensive and long use, the mark BMW had acquired a high degree of reputation. Therefore, BMW Co. stated that it was entitled to indisputable prior rights based on which it could exclude anyone from using the same or a similar mark on the same or similar goods in China without its authorization. It requested cancellation of the mark MBWL. The TRAB concurred, finding that both marks were word and design marks and that the only difference between the word portions was one letter. The design parts were also very similar. Even the blue and white colors used for the mark by Century Baoma were very close to BMW Co. s blue and white design. In addition, the trade name and website of Century Baoma contained 234. Id Century Baoma Loses Trademark Trial, China Intellectual Property News, May 12, Note that CENTURY BAOMA is the same name as the official Chinese-language version of the BMW mark owned by the famous car maker Id.

117 914 Vol. 101 TMR either BAOMA in Chinese (official Chinese version of the BMW mark) or BMWL, which was similar to BMW. Therefore, the two marks were viewed as similar marks used on similar goods. On appeal, Century Baoma argued that the two marks were distinguishable, stating that the TRAB should determine similarity based on the two marks at issue and not on information of a trade name and website address. The court sided with the TRAB and found MBWL confusingly similar to BMW and the goods designated similar to BMW s products. Century Baoma decided to further appeal. The case is still pending. 238 I.G.2. Licensing The trademark VALENTINO has recently been the subject of a trademark licensing dispute in court involving the right of sublicensing. 239 The plaintiff, Hangzhou Manlong Guiyu Trading Co. (Guiyu Co.), alleged that it was authorized by Mario Valentino Co., an Italian company, to manufacture and sell shoes bearing the mark VALENTINO 240 and the V & Circle Design mark. 241 It also alleged that it was authorized to sublicense the rights to a third party to manufacture and sell shoes bearing these marks. 242 In April 2008, Guiyu Co. signed two license agreements with Fujian Aoke Shoe Co. (Aoke Co.), authorizing the latter to manufacture and sell leather shoes and casual shoes bearing VALENTINO and V & Circle Design marks for men in mainland China, Hong Kong, and Macau. The two parties agreed that starting in March 2008, Aoke Co. would pay Guiyu Co. RMB 500,000 as a royalty fee and 10% of the sales amount as a management fee for the first year or a minimum management fee of US $200,000 under any circumstance. If Aoke Co. failed to pay on time, the damages would be no less than 1 million. 243 Once the agreements were signed, Aoke Co. started preparation of production and paid RMB 660,000 to Guiyu Co. in royalties. However, Guiyu Co. never recorded the license agreements at the Chinese Trademark Office and refused to provide proof of the recordal to Aoke Co., thus Aoke Co. s products could not be sold on the market. After Aoke Co. made many 238. Id Valentino Trademark License Agreement Leads to Litigation, China Intellectual Property News, Mar. 19, Reg. No Reg. No Id Id.

118 Vol. 101 TMR 915 unsuccessful attempts to resolve the issue, the company refused to continue the payments. In October 2008, Guiyu Co. brought a contract dispute lawsuit before the West Lake District People s Court in Hangzhou and applied for attachment of Aoke Co. s bank account. The major arguments focused on whether the case involved a contract dispute or a trademark license dispute, whether Guiyu Co. had rights to sublicense the marks to Aoke Co., and whether the contracts signed by the two parties were valid. 244 During the trial, the defendant submitted a copy of the license agreement between Guiyu Co. and Mario Valentino Co., which was recorded at the Chinese Trademark Office. According to the document, the Italian company licensed rights to Guiyu Co. to use the above marks on certain products. However, it never licensed Guiyu Co. to manufacture and sell shoe products on mainland China, Hong Kong, or Macau. Nor did it authorize the company to use the VALENTINO and the V & Circle Design marks on casual wear shoes. Moreover, it provided that the licensee (Guiyu Co.) had no rights to sublicense without the prior written authorization of the licensor. Even the authorization letter, issued by the Italian company and submitted by the plaintiff, clearly stated so. 245 The defendant claimed that without authorization from the Italian licensor, Guiyu Co. had no rights to further sublicense the trademarks to Aoke Co. and that Guiyu Co. s acts constituted fraud and unauthorized disposal of rights. Without make-up authorization by Mario Valentino, the license agreements signed between the two Chinese companies were, the defendant claimed, invalid. According to the defendant, the court had recommended that Guiyu Co. obtain a make-up authorization from the Italian company to license the marks for the items in question. However, even so, Mario Valentino did not authorize Guiyu Co. to sublicense the trademarks to a third party. 246 The case is still pending. In this case, determination of the scope of the original trademark license agreement will be the key to the outcome of the contract dispute lawsuit. III.A.2. Passing Off In May 2010, Hunan Changsha Tianxin District People s Court rendered a decision on an intellectual property dispute case, ordering defendants Changsha Oil Development Ltd. and its distributors to stop infringing the trademark JINHAO & Design Id Id Id Reg. No

119 916 Vol. 101 TMR in Chinese characters in the name of Hunan Jinhao Tea Oil Co. and pay damages in the amount of RMB 20, The JINHAO & Design mark in the name of the Jinhao Tea Oil Company was quite famous and well known to the relevant public. The defendant, without authorization of the registrant, prominently used JINJIE in Chinese characters as a trademark on similar goods. As the first Chinese character in each mark 金 (pronounced as jin ) was the same, and as the only difference between the second characters in each mark was a mere stroke i.e., 浩 (pronounced as hao ) as opposed to 洁 (pronounced as jie ) the two marks looked confusingly similar, which could have easily caused confusion among consumers as to the origin of goods. Jinhao Tea Oil Company, therefore, charged that Changsha Oil Development Co. infringed its rights concerning the registered JINHAO combination mark. 249 The court agreed, finding that the plaintiff, as registrant of the JINHAO combination mark, enjoyed protection of the trademark. The Chinese characters for JINHAO, which through long and extensive use and as an element that could be pronounced, had become the dominant part of the mark. The disputed mark JINJIE combination mark appeared very similar to the JINHAO combination mark as to the Chinese characters, overall layout, etc. Prominent use of the disputed mark would likely cause confusion. Therefore, the court held that infringement of JINHAO by use of JINJIE on similar goods should be stopped. 250 In a similar court action, the Beijing No. 2 Intermediate People s Court ruled in favor of the plaintiff, the French company Lacoste. The defendants in the case, a local chain supermarket and a shoe company in Wenzhou, Zhejiang Province, used a crocodile design on leather shoes that was similar to the crocodile mark owned by the plaintiff and prominently used the word CROCODILE in advertisements at counters selling leather shoes. 251 Lacoste has registered a series of marks in China, including a crocodile design with the word CROCODILE. The goods designated for the registrations included clothing, footwear, and headgear, etc. In November 2008, Lacoste found a chain supermarket in Beijing that sold leather shoes bearing a label similar to its crocodile mark. The manufacturer was a shoe company in Wenzhou. Lacoste claimed that because the 248. JINHAO Prevails in Action Against JINJIE, Similar Marks Used on Similar Goods Are Found, China Industry and Commerce News, May 6, Id Id The Beijing No. 2 Intermediate People s Court Concludes the Crocodile Trademark Infringement Case, China Intellectual Property News, Jan. 15, 2010.

120 Vol. 101 TMR 917 defendants manufactured and offered for sale leather shoes bearing a mark very similar to the crocodile design mark by Lacoste, their acts constituted trademark infringement. The French company brought a lawsuit, demanding RMB 300,000 as damages. 252 The court held that although the disputed label contained some minor differences when compared with the plaintiff s mark, it still might cause customer confusion as to the origin of the goods, considering the extent of attention an average consumer would pay during his or her purchase. The two marks were therefore similar marks used on similar goods, and infringement of the plaintiff s trademark rights was confirmed. 253 III.A.5.a. Cybersquatting JACK & JONES is a trademark for men s wear by the Danish company Bestseller Co. 254 A Chinese website ( caught its attention because the website offered to sell bargain JACK & JONES branded clothes. The company sued the two individual owners of the website, Mr. Huansuo Cui and Mr. Xinghua Du, at the Beijing People s Court of Haidian District, charging trademark infringement and requesting injunctive relief and damages of RMB 2,000,000. On May 27, 2010, the court heard the case. The plaintiff claimed that although it had not yet set up any official company website in China, the defendants acts were clear cybersquatting. The plaintiff discovered the infringement because its customers called to inquire whether the company had set up an official company website and reported that the goods offered on the defendants website were not of the same quality as the ones offered by the plaintiff. The plaintiff confirmed that all goods offered on the disputed website were counterfeits. The authentic JACK & JONES men s wear were made by authorized manufacturers with special materials and laser authentication labels. 255 Established in 1975 in Denmark, the plaintiff is one of the biggest fashion power houses in Europe. It entered the Chinese market in 1996 and established its Chinese subsidiary Bestseller Fashion (Tianjin) Ltd., which rolled out JACK & JONES branded products in The mark was registered in 1997 for clothing in Class 25 and was still valid upon renewal. The mark was later assigned to its Chinese subsidiary, and in 2003, the Chinese 252. Id Id Cybersquatting of Official Website Leads to 2 Million Yuan Damage Claim, China Intellectual Property News, June 2, Id.

121 918 Vol. 101 TMR subsidiary filed an application to register the mark in Chinese and obtained registration of the same in Since 2008, frequent infringement of the mark had occurred, along with a rapid increase of market share of the Chinese equivalent of the JACK & JONES mark. Most of the consumer complaints related to sales from the website The plaintiff alleged that the website was deceptive, as it passed itself off as the official website of the plaintiff and frequently used JACK & JONES and its Chinese equivalent mark to promote clothing products. Searches using the Internet keyword Jack & Jones on search engines such as Baidu and Yahoo would lead to the infringing website. At the same time, the defendant set up a discount store on the website to sell clothing products bearing marks identical or similar to JACK & JONES and its Chinese equivalent mark. The defendants acts seriously infringed the plaintiff s legal rights. The defendants admitted that they did not understand the law. They set up the website because they saw many other people selling clothing products bearing the mark. Once the plaintiff sued, they immediately closed the disputed website. 256 This case differs from other trademark infringement cases in that the defendants had set up an infringing website to extend their infringing activities. The court has not rendered a decision on the case yet. 257 However, a finding of trademark infringement is expected. As the entry level is quite low in the clothing industry, trademark infringement has become common in the industry in China. The situation has not improved despite numerous court actions brought by trademark owners so far. The case is particularly outrageous, as the defendants used a high-tech website to mislead consumers. Close monitoring of infringing websites is highly recommended for trademark owners if they wish to vigilantly protect their trademark rights in China. COLOMBIA I.C. Distinctiveness José Rodrigo Lievano applied for the registration of the trademark SUPPER KING & Logo, to cover services for providing food and drink; temporary accommodation in Class 43. The Trademark Office granted registration. The Trademark Office s decision was affirmed both on reconsideration and on appeal Id Id.

122 Vol. 101 TMR 919 Burger King Corporation brought an action before the Council of State for a declaration of nullity of the resolutions by which the Trademark Office granted registration of the mark SUPPER KING & Logo. The plaintiff alleged that the defendant s mark was confusingly similar to its trademark BURGER KING & Logo, registered in Classes 29, 30, 31, 32, and 42. It also claimed the well-known character of the BURGER KING mark as grounds for nullification, contending that the word BURGER was generic and in common use in the Colombian market, while the word KING was the main element of the mark. The Council of State denied the request for a declaration of nullity. It found the mark SUPPER KING & Logo to be sufficiently distinctive on its own, and thus there was no likelihood of confusion with the previously registered mark BURGER KING & Logo. 258 First, the Council of State established that the main and prevalent element in both marks was the nominative part and not the graphic one. Thus, it was necessary to analyze each of the words that composed the contested mark: SUPPER and KING. In regard to SUPPER, the justices indicated that it means evening meal (in Spanish, cena), and is not a known word to Spanish speakers. This was confirmed by the fact that the Trademark Office had indicated it meant above of, to a degree, excess, or preeminence. On the other hand, the word KING, common to both marks, means male sovereign (in Spanish, rey), and that it was a commonly known word among Spanish-speaking persons and thus had to be analyzed as a local word. Furthermore, it is word is used in many marks along the classification. Therefore, the Council opined, the word SUPPER was the main element in the mark, contrary to what the plaintiff claimed, and had an important semantic force that made it distinctive. In regard to the ideological criteria, the Council of State found that the mark SUPPER KING could be translated as cena rey in Spanish and BURGER KING as hambuerguesa rey, and thus they did not evoke the same idea in the consumer s mind, especially 258. Burger King Corp. v. Colombian Trademark Office, Case No (Council of State, May 14, 2009).

123 920 Vol. 101 TMR because the word SUPPER must be considered a fanciful word, as its meaning was not known to Spanish speakers in Colombia. Although the graphic element was secondary, the Council of State indicated that it added distinctive character to each mark given the difference in logo, colors, etc. Finally, the Council of State did not find sufficient proof of the well-known character of the mark BURGER KING in Colombia or the Andean Community market (Bolivia, Ecuador, and Peru). Consequently, the Council of State rejected the nullity action. The importance of this case lies in the relevance of the mark in question, BURGER KING, which is notorious in the United States and many other countries around the globe but whose owner was unable to prove such character in Colombia. This confirms the position that the well-known or notorious character of a mark must be sufficiently proved and differs from what is known in Continental Law as notorious facts that do not require proof to be considered as certain. Also, it is important when one considers that Burger King landed in Colombia through a franchise only two years ago. I.D.1. Similarity of Marks Plaintiff Commonwealth Brands Inc. sought to register the trademark USA GOLD & Logo to cover goods in Class 34. It brought an action for a declaration of nullity of the decision, by which the Trademark Office, in both the first and the second instance, denied registration of its mark USA GOLD and upheld the opposition filed by Compañia Colombiana de Tabaco S.A. The Trademark Office found that the mark USA GOLD & Logo was confusingly similar to the mark AMERICAN GOLD & Logo that was previously registered to cover products in Class 34. Commonwealth Brands Inc. argued that the marks were different from a morphological, phonetic, and ideological point of view. It also asserted that the font, design, and colors were sufficient to avoid any risk of confusion between the marks. Finally, it claimed that the word AMERICAN referred to several American countries while USA referred to the United States of America.

124 Vol. 101 TMR 921 The Council of State denied the nullity claims brought by Commonwealth Brands Inc. and confirmed the resolutions issued by the Trademark Office considering that there was likelihood of confusion between the marks AMERICAN GOLD & Logo and USA GOLD & Logo. 259 First, the Council of State affirmed that marks can be formed by both nominative and graphic elements, of which the nominative part is usually predominant. This was precisely the case here given that the expression AMERICAN GOLD and USA GOLD were used by consumers to ask for the products they identified. Furthermore, the Council of State found that the graphic element of the marks had the following common features: a flag, an eagle, and stars. It also raised the possibility of registering foreign language words as trademarks and noted that they are considered to be fanciful marks as long as their meaning is not commonly known in Colombia. Second, the Council of State analyzed the phonetic, graphic, orthographic, and ideological similarities between the marks AMERICAN GOLD and USA GOLD and found that (1) there was no phonetic or orthographic similarity between USA and AMERICA; (2) the word USA in this case is the acronym for United States of America (and not the verb use in Spanish); (3) the word AMERICAN according to the American Heritage Spanish Dictionary means American (from the U.S.A.), Northamerican, from the United States of America, which means it is not used to identify the American continent or any country in the Americas; and (4) the word GOLD may be translated as oro ( gold ) or dorado ( golden ) in Spanish. Thus, the denied mark USA GOLD could be translated as oro de los Estados Unidos ( gold from the United States ) and the registered trademark AMERICAN GOLD as oro Americano. After this analysis, the Council of State concluded that there was an ideological similarity between the trademarks because they shared their meaning and evoked the same idea. Finally, the Council of State recognized that there was a competitive connection between the products in Class 34 covered by the application of USA GOLD, that is, tobacco, smokers articles, matches, and those covered by the registered mark AMERICAN GOLD, that is, cigarettes, tobacco and smokers articles. Additionally, it was noted that even though the cigarette and tobacco consumer is specialized and linked to a particular brand, there was a risk of indirect confusion, as the consumer could believe the products to have had the same origin. This case is important because the Council of State held that words in a foreign language can be registered as trademarks as long as they are not confusingly similar to marks previously 259. Commonwealth Brands Inc. v. Colombian Trademark Office, Case No (Council of State, July 16, 2009).

125 922 Vol. 101 TMR registered, which means that the registrability analysis must be made (as with Spanish words) when their meaning is generally known. Casio applied for the registration of a graphic trademark formed by a crown with five tips, for precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments in Class 14. Plaintiff Montres Rolex S.A., the well-known Swiss watch manufacturer, was the owner of two prior registrations for the trademark ROLEX & Logo of a fivetip crown and the graphic mark of a five-pointed crown, covering products in Class 14. Rolex brought a nullity action of the resolutions by which the Trademark Office, in both the first and the second instance, granted registration of Casio s five-tip crown graphic trademark and declared unfounded the opposition filed by Rolex. The Trademark Office found that the marks were sufficiently different from each other and not confusingly similar. Rolex argued that the marks were similar and that there was likelihood of confusion given that the crowns shared the following features: (1) they are opened in the top; (2) they have five tips; (3) their tips are elongated and separated from the base; and (4) they have thick dark features. Rolex also asserted that both graphics were classified in the same section of the Vienna Agreement. 260 The Council of State denied the nullity claims brought by the plaintiff and confirmed the resolutions issued by the Trademark Office, finding that there was no likelihood of confusion between the marks Colombia is not a signatory to the Vienna Agreement.

126 Vol. 101 TMR 923 First, the Council of State explained that graphic trademarks may or may not evoke or refer to a specific idea. Thus, they have two elements: (1) the outline or trace that forms the specific drawing, and (2) the concept or idea that the drawing suggests in the mind of the consumer. Usually the conceptual element of the graphic trademark prevails over the outline. Therefore, although two graphic trademarks could differ in the drawing or design, they could bring to mind the same idea or impression in the consumer, thus generating a likelihood of confusion. Second, the Council of State analyzed the likelihood of confusion between Casio s graphic trademark of a five-tip crown and Rolex s trademark ROLEX & Logo of a five-tip crown. It concluded that even though they had the common feature of the crown, the predominant element was the word ROLEX, which was sufficient to avoid any risk of confusion. Next, the Council of State analyzed the likelihood of confusion between the two graphic trademarks of a five-tip crown. It concluded that when shown to an average consumer, the crowns were capable of leading the consumer to error as they both evoked the same ideas in the customer s mind (royalty, jewel, power). However, the Council of State then explained that the products target customers differed from one trademark to the other, which is the reason there would be no likelihood of confusion. It went on to describe that ROLEX is a luxurious product directed to a particular group of customers with specific tastes. On the other hand, CASIO is a product that could be acquired by a broad group of people and is not a sumptuary product. Therefore, the Council of State concluded that there was no likelihood of confusion and it rejected Rolex s claims. 261 This case is important because the Council of State admitted as evidence an expert witness report requested by the plaintiff and used it as evidence during the proceeding. It is important to note that the case law has maintained that expert reports on the likelihood of confusion of trademarks are irrelevant because it is a matter of law that must be defined by the judge. It is also important because it established that two similar trademarks can coexist in the same class even if they identify the same products or services as long as they target different kinds and groups of customers. Plaintiff Panamco Industrial de Gaseosas S.A. was the owner of the trademark SANTA CLARA, covering goods in Class 32. It brought an action for a declaration of nullity of the decision by which the Trademark Office, in both the first and the second instance, granted registration of the defendant s trademark AGUA 261. Montres Rolex S.A. v. Colombian Trademark Office, Case No (Council of State, Aug. 13, 2009).

127 924 Vol. 101 TMR SANTA to identify natural water because it found the mark confusingly similar to the mark SANTA CLARA, also in Class 32. The plaintiff asserted that the trademarks at issue were sufficiently distinctive because the tonic (stressed) syllable granted a phonetic differentiation to the marks that avoided confusion. The Council of State nullified the resolutions that granted registration to the mark AGUA SANTA ( holy water ) because it found that the mark was confusingly similar to one previously registered and therefore could induce into error or mislead the consumer. 262 The Council of State affirmed that the trademark was composed of two words, one of which was the generic name of the product it distinguished natural water and thus lacked distinctiveness if considered alone. Generic words may be used as part of a trademark as long as they are accompanied by another word or expression that gives distinctiveness to the mark as a whole and distinguishes it from other trademarks that identify the same class of products or services. In this case, the additional distinctive element was the word SANTA, which had no direct or indirect link to the products covered by the mark, thus making it inherently distinctive. However, this word was the main and fundamental part of the previously registered mark SANTA CLARA ( Saint Claire ), which also identified water (as this product is within the listing of products in Class 32 s heading). Considering that SANTA is the word that adds the distinctive character to the mark AGUA SANTA, the comparison between marks must be made considering it alone, disregarding the generic expression in the mark. After comparing the marks AGUA SANTA and SANTA CLARA, the Council of State concluded that there was in fact a likelihood of confusion between them. Furthermore, there was a prior exclusivity right in the word SANTA the only distinctive word in the mark AGUA SANTA which means that only its owner can use it to identify products in Class 32. The case is important because the Council of State reaffirmed that generic terms are registrable only when accompanied by sufficiently distinctive elements and that no exclusivity can be granted in them. Also, it noted that trademarks formed by generic terms must be compared with previously registered trademarks while disregarding the generic expression to determine whether there is likelihood of confusion. Plaintiff Colombit S.A. applied for registration of its mark PERDURIT for goods in Class 17. Eternit opposed the application, arguing that Colombit s mark was confusingly similar to its marks 262. Panamco Industrial de Gaseosas S.A. v. Colombian Trademark Office, Case No (Council of State, Sept. 10, 2009).

128 Vol. 101 TMR 925 ETERNIT, ONDULIT, FIBROLIT, DECORIT, TEJALIT, and LIVIANIT, all registered in Class 17. Colombit S.A. brought a nullity action against the resolution by which the Trademark Office denied registration to its mark PERDURIT and upheld the opposition filed by Eternit. Colombit S.A. raised the issue of its previously registered trademarks COLOMBIT, RANURIT, CIELOLIT, CASABIT, PLANILIT, CAMPOLIT, RURALIT, FACILIT, MODULIT, VERSQALIT, and PERDURIT in Class 19 to show that there was no likelihood of confusion, and that, in fact, the marks had coexisted for years in the Colombian market. Furthermore, Colombit S.A. alleged that the mark complied with all other requirements for registration. The Trademark Office denied the registration of the mark PERDURIT on appeal after it had granted it in the first instance and reconsideration remedy, on the grounds of ideological and conceptual similarity between the marks PERDURIT and ETERNIT. 263 It found that the two marks suggested the same ideas, such as durable, perdurable, long-lasting, and eternal. The Council of State nullified the resolution issued on appeal that denied registration of the mark PERDURIT because it found that there was no likelihood of confusion with the previously registered trademark ETERNIT that could lead to error or mislead the consumer. 264 First, the Council of State found that the marks at issue shared the suffix -IT, which is considered a suffix of common use and thus weak and irrelevant when performing a comparison and registrability analysis between both trademarks. Furthermore, no exclusivity rights could be granted in this suffix, and thus any other competitor could include it in its distinctive marks. That said, the comparison would have to be made between the word elements PERDUR and ETERN only, without considering the common suffix. Therefore, when analyzing the phonetic, graphic, and orthographic similarities between the elements PERDUR and ETERN, the Council of State found that there were none. In regard to the ideological or conceptual similarity, contrary to what Eternit alleged and the Trademark Office stated, the Council of State found that there was no synonymy, for the following reasons: The Council of State granted evidentiary power to the expert witness report filed within the proceeding (which is in itself significant), who established that both signs were 263. The word perdurar in Spanish means to remain, to last, to endure, to persist, whereas the word eterno in Spanish means eternal or everlasting. The marks PERDURIT and ETERNIT (which do not exist in the Spanish language) are derived from these words, respectively Colombit S.A. v. Colombian Trademark Office, Case No (Council of State, Dec. 14, 2009).

129 926 Vol. 101 TMR fanciful trademarks that had no suggestive power in themselves and had no meaning. To arrive at their meaning it was necessary to turn to the adjectives perdurable and eterno, which do not refer to a type of products or services. The Colombian Academy of Language stated that the word perdurable and eterno are not synonyms because, according to the Dictionary of the Royal Spanish Academy, perdurable means perpetual, lasting forever, while eterno means without beginning or end. Last, the Council of State established that there was no likelihood of confusion considering that the final consumers of the products who identified with the marks PERDURIT and ETERNIT were engineering and architecture firms and construction professionals or technicians and they would be capable of differentiating the marks and respective products as well as their qualities, properties, and commercial origin. The fact that the marks shared commercialization channels did not change this circumstance. (The Council of State again cited the expert report.) This case is important because the Council of State evolved from the Rolex v. Casio case cited above, and not only admitted and decreed an expert witness as evidence within the proceeding, but also used it as basis of the final ruling, giving credence to all of the findings and assertions made in the report. Caja de Compensación Familiar del Valle del Cauca registered the mark VECINO FIEL ( loyal neighbor ) for advertising; business management; business administration; office functions in Class 35. Banco Caja Social brought an action for declaration of nullity against the decision by which the Trademark Office, in both the first and the second instance, granted registration of the trademark VECINO FIEL ( faithful neighbor ) & Logo in Class 35 (below, illustration at left). It alleged that the mark was confusingly similar to its word marks BUEN VECINO ( good neighbor ) and UN BUEN VECINO EN QUIEN CONFIAR ( a good neighbor to trust ) and a figurative mark consisting of the figure of a good, smiling neighbor (below, illustration at right), all registered in Class 36 for insurance; financial affairs; monetary affairs; real estate affairs.

130 Vol. 101 TMR 927 The Council of State declared the nullity of the resolution that granted registration of the trademark VECINO FIEL & Logo and ordered its cancellation from the TMO s records. In sum, it found that there was a likelihood of confusion between the trademarks. The Council of State affirmed that the nominative or word element of the marks was predominant and thus that the comparison should be made between BUEN VECINO and UN BUEN VECINO EN QUIEN CONFIAR, on one hand, and VECINO FIEL, on the other. From the visual and orthographic point of view, the marks were confusingly similar, as they shared the word VECINO ( neighbor ) and, thus, the main verbal element was identical. With regard to the ideological element, the Council of State also found that there was a risk of confusion among consumers because it would evoke the idea of a service rendered by a firm that could be trusted and that responded to its clients needs. The adjectives FIEL ( faithful ) and BUENO ( good ) have a similar connotation; and it reaffirms that there is no doubt that a good neighbor is a faithful neighbor. After establishing that the marks were confusingly similar, the Council of State analyzed whether the services in Classes 35 and 36 had a competitive connection. Considering the criteria previously established by the Andean Tribunal of Justice and applied by this court, it concluded that there was a complimentary use of the services in Classes 35 and 36 as the government through a national law gave to these kinds of corporations the means to offer members micro-credits or loans for home purchase (Cajas de Compensación Familiar, which are private entities that render different kinds of services to employees and their families and that are funded through employees and employers mandatory contributions). Therefore, the Council of State nullified the resolution that had granted registration, in the first and the second instance, the

131 928 Vol. 101 TMR mark VECINO FIEL & Logo in Class 35. It also ordered the TMO to cancel the corresponding trademark registration. 265 The significance of this case lies in the weight given to the ideological or conceptual element of the marks as a criterion to find that there is likelihood of confusion between two or more marks, even when there are other word or graphic elements that differentiate them. I.F. Famous and Well-Known Marks Muebles & Accesorios Ltda. registered the trademark SHERATON, to cover furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; all included in [I]nternational [C]lass 20. Sheraton International Inc. opposed the application based on its prior registration for the well-known mark SHERATON in Class 42. Sheraton International Inc. brought an action for declaration of nullity of the decision by which the Trademark Office granted registration of the mark SHERATON, disregarding proof of the well-known character of the mark filed and requested by the opposing party. The Trademark Office granted the registration because it found that there was insufficient evidence of its well-known character. The decision was affirmed in the first and the second instance. The Council of State declared the nullity of the resolutions that granted registration to the trademark SHERATON because it found that the mark was wrongfully granted as it reproduced a previously registered well-known mark. It began by establishing that the main question was whether the mark SHERATON was well known and whether the TMO disregarded the filed evidence and mistakenly abstained from requesting proof. In regard to the well-known character of marks, the Council of State indicated that the mark must be known by the pertinent sector of consumers or potential consumers, people in the distribution or commercialization channels, firms in the same commercial activities, etc. Also, it referenced and confirmed the legal criteria necessary to determine whether a mark has a wellknown character. Then, the Council of State explained that because the wellknown character of a mark is a matter of fact, it must be supported by evidence introduced at the appropriate time and the burden of proof is on the party who alleges it. Two conclusions can be drawn from this statement: (i) the TMO cannot request proof but can only 265. Banco Caja Social v. Colombian Trademark Office, Case No (Council of State, May 20, 2010).

132 Vol. 101 TMR 929 analyze filed documentary evidence; and (ii) this is not a limitation on the means of proof but only on the opportunity to file it. After establishing this, the Council of State analyzed the proof filed by the opposing party at the prosecution stage before the TMO. The evidence consisted of an affidavit by the vice president of Sheraton International Inc. together with several enclosures: a copy of the U.S. trademark registrations; a list of the SHERATON registrations around the world; a copy of the registrations in the Andean Community countries; annual reports from 1998 to 2001; and advertising material and catalogues that demonstrated the use and reach of the mark SHERATON. The Council of State agreed that: the registrations were not legally valid; the list was not proper proof, as the registrations should have been proved by the corresponding titles; and the annual reports referred to the company Starwood Hotels & Resorts and not specifically to the mark SHERATON or its current owner. However, contrary to the TMO, the Council of State found that the advertising material and catalogues did show (1) a high degree of acknowledgment of the mark SHERATON among the members of the pertinent sector within the Andean Community countries and (2) the duration, breadth, and geographic extent of the use of the mark within or outside the Andean Community countries. Therefore, the Council of State concluded that the mark SHERATON registered by Muebles & Accesorios Ltda. to identify products in Class 20, reproduced the well-known mark SHERATON registered in Class 42, and thus should not have been granted regardless of the products or services they were registered to cover. 266 The importance of this case relies on the recognition that a well-known trademark s scope of protection is broader than normal trademark protection, and thus covers any similar mark, regardless of the products or services it is deemed to identify. I.J. Coexistence Agreements The plaintiff, American National Red Cross, applied to register the trademark MONARC-M, to cover a pharmaceutical preparation derived from plasma that helps relieve FVII deficiencies in patients with hemophilia A in Class 5. It brought an action for declaration of nullity of the decision by which the Trademark Office denied registration of the mark MONARC-M on the ground that there was a likelihood of confusion with the mark MONARCA, previously registered by Bayer A.G. to distinguish products in Class 5, particularly insecticides, herbicides, and fungicides. The plaintiff alleged that, as a whole, the marks were 266. Sheraton International Inc. v. Colombian Trademark Office, Case No (Council of State, Feb. 4, 2010).

133 930 Vol. 101 TMR not confusingly similar because (1) they shared only the prefix MONAR-, (2) they were ideologically different (MONARC-M is a fanciful mark, while MARCA means monarch in Spanish), and (3) they identified different products. The Trademark Office denied the trademark MONARC-M in the first and the second instance because it found that there was likelihood of confusion with the mark MONARCA in Class 5. The Council of State denied the request for nullity of the resolution that denied registration to the trademark MONARC-M because it found that it was confusingly similar to the mark MONARCA previously registered in Class 5. The Council of State found that the marks were orthographically, phonetically, and ideologically similar. They also had the same prefix MONARC. Although MONARC-M is, in fact, a fanciful mark, it evokes the word MONARCA ( monarch ) and thus the same idea. In regard to the products, it found that they were different and may have had dissimilar commercialization channels and even specialized retailers. However, products in Class 5 require a more rigorous and thorough examination because it is necessary to guarantee that there will be no possible consumer confusion that could affect its health and welfare. Therefore, even though there could be no confusion at retail, consumers could be confused at a later stage such as when they store the product and subsequently consume it. Consequently, the fact that one mark identified herbicides and insecticides while the other one identified a pharmaceutical for the treatment of a human disease was not reason enough to leave aside the similarities in the comparison. Finally, the Council of State pointed out that Bayer A.G. s consent to register the mark MONARC-M by the American National Red Cross did not compel the TMO to register it because its primary objective is to protect the consumer s interests by preventing any possible confusion or error that may cause irreparable damage. Therefore, the Council of State rejected the claims. 267 The importance of this case is that it established that the mere consent of the previous mark owner to register a similar mark is not sufficient to obtain a registration, as the main objective of the TMO is to protect the consumer s rights and interests. Thus, the parties to such an agreement must: adopt all the necessary measures to prevent consumer confusion as to the origin of the merchandise or services concerned, including arrangements to identify such origin; respect provisions on unfair competition and antitrust; and obtain the previous authorization of the TMO for its validity American National Red Cross v. Colombian Trademark Office, Case No (Council of State, Feb. 11, 2010).

134 Vol. 101 TMR 931 II.C.1.f. Device and Design Marks The third interested party applied for the registration of a figurative mark formed by a flower, a bud, and a heart placed inside intertwined irregularly shaped diamonds (illustration below), covering products in Class 16, in particular, toilet paper. The Trademark Office granted registration. Productos Familia S.A. brought an action to nullify the Trademark Office s decision. The plaintiff based its allegations on the supposed lack of inherent distinctiveness, arguing that as the design was used in the marketplace and printed all along the surface of the toilet paper, the mark was strictly ornamental and decorative in purpose, and therefore could not indicate to the consumer the source of origin of the product. The Council of State denied the request for nullity of the resolution that granted registration of the trademark because it found that the design was, in fact, distinctive. 268 First, the Council of State analyzed the registrability of marks considered to be in common use. It noted that there could be no exclusive right in such marks and they could not be appropriated by any person. Thus, if this kind of mark or expression were included in a trademark, it would have a weak distinctive character, and for that reason other competitors would be able to reproduce it. The same is true with descriptive marks. In this case, the mark had real figures that, when considered individually, were not appropriable. However, it could not be adduced without doubt that such elements could not be used within a figurative or graphic mark and be subject to trademark registration Productos Familia S.A. v. Colombian Trademark Office, Case No (Council of State, Nov. 26, 2009).

135 932 Vol. 101 TMR Second, the Council of State found that there was no proof as to the supposed use the applicant was making of the trademark by printing it all along the toilet paper. Additionally, it established that the ornamental or decorative character of the pattern design of a mark does not in itself eliminate its distinctiveness. In fact, most figurative or graphic trademarks have secondary decorative effects to make them more appealing to consumers. Finally, the Council of State indicated that, according to the application, the pattern was not printed all along the toilet paper but was instead a label. This pattern design was not merely decorative even though it had a simple, vague or weak structure. Thus, competitors would not be deprived of using the same elements as long as the design had a different structure. Consequently, the Council of State narrowed the registration to use as a label. In its opinion, the contrary would affect a trademark s main purpose of distinguishing and individualizing products or services. Using the registered trademark for merely decorative purposes, such as printing the pattern design all along the toilet paper, would be contrary to fair competition and consumer statutes. The case is important because the Council of State specifically referred to the possibility of filing an application for a figurative mark composed of elements in common use, as long as the structure is sufficiently distinctive. Also, it establishes that figurative marks are registrable as long as their only purpose is not strictly ornamental or decorative. II.C.1.g. Two- and Three-Dimensional Marks Plaintiff Sociedad B.P. Amoco P.L.C. brought an action for a declaration of nullity of the decision by which the Trademark Office denied registration of its three-dimensional image of a service station with the characteristic colors green and yellow in the station s columns, roof, and signs, to cover services for maintenance, repair, lubrication, cleaning, polishing, washing, undersealing, paint and rust removal, all for motor vehicles; tire installation and flat tire repair services; vehicle service station services; laundry, dry cleaning and repair of clothing; construction; repair; installation works; franchise services relating to service stations and stores located at service stations, all in Class 37. The plaintiff alleged that the mark was neither generic nor descriptive, as he did not intend to obtain an exclusive right over the form, design, or architecture of the mark, but over the colors green and yellow as displayed in the columns, roof, and signs of a gas station. Furthermore, the plaintiff argued that the mark consisted of the

136 Vol. 101 TMR 933 colors green and yellow within a specific outline, which made them registrable under Article 134(e). 269 * Verde: green ** Amarillo: yellow The Trademark Office denied the registration of the threedimensional mark because it found that it lacked inherent distinctiveness and would deprive its competitors of using common forms to identify the same kind of services. The Council of State rejected the nullity claims. 270 In sum, the Council of State found that the mark was not registrable because it should have been analyzed as a whole, in which case the necessary conclusion would be that it covered the three-dimensional image of a gas station that was commonly used in the marketplace. The colors green and yellow could not be analyzed separately. First, the Court stated that the mark to be analyzed in this case was a three-dimensional mark, even though it was represented on one plane in other words, not the graphic itself, but what it represented in the real world, and what the applicant wanted to protect. Applying the rule of law according to which registrability analysis must be made as a whole and not on a partby-part basis, it was necessary to consider the form or outline of the mark and not simply the colors, as the Trademark Office did. Second, the Council of State analyzed and concluded that the three-dimensional image of a service station matched the usual form and architecture of the place where the kind of services covered by the application are typically rendered, that is, oil change and mechanical repairs to automobiles, thus making it potentially confusing for consumers Article 134(e) of Decision 486 of the Andean Community provides: The following signs, among others, may constitute marks:... a color within an outline, or a color combination Sociedad B.P. Amoco P.L.C. v. Colombian Trademark Office, Case No (Council of State, July 2, 2009).

137 934 Vol. 101 TMR However, the Council of State observed that the sale of gas and fuel was not included within the services covered by the application. For this reason it proceeded to make the following analysis. Originally, the applied-for three-dimensional shape and colors were not usual or necessary to identify the place where the services covered by the mark were rendered. 271 However, nowadays, it has become the usual practice to incorporate in gas stations many of the services covered by the application, which is the reason why they have come to be called service stations. Therefore, the mark was not registrable because it corresponded to the usual or common shape/architecture of the place where the services covered by the application typically were rendered. Then the Council of State noted that colors individually considered are not registrable. 272 A combination of them or their application to a particular inherently registrable outline or shape is registrable. This shape may be bi-dimensional or threedimensional, as long as it is inherently distinctive and registrable. Therefore, the Council of State established that colors are registrable only when applied to a distinctive shape or outline, a requirement that was not met in this particular case. This decision is important because the Council of State clearly established that three-dimensional marks are registrable only when they are not the usual shape or form of the place where the products or services covered by the mark are sold or rendered, regardless of whether such shape is necessary due to the nature or functionality of such products or services. II.C.1.j. Slogans Productos Familia S.A. registered the commercial slogan LA SUAVIDAD QUE RESISTE TODO ( softness that resists it all ) to accompany the mark FAMILIA ( family ) in Class 16. The company competed in the market for toilet paper and similar products, particularly with Papeles Nacionales S.A. Papeles Nacionales S.A. brought an action for declaration of nullity of the decisions by which the Trademark Office granted registration of the commercial slogan LA SUAVIDAD QUE RESISTE TODO on the grounds that the mark was descriptive, that is, indicating to the consumer the product s characteristics: softness, more resistance than usual for products in Class 16, etc. It also found that the slogan was not sufficiently distinctive, given 271. Article 135(c) of Decision 486 provides: Those signs may not be registered as marks that... consist solely of the everyday shape of the goods or their packaging, or of shapes or characteristics dictated by the particular nature or function of the product or service concerned Article 135(h) of Decision 486 provides: Those signs may not be registered as marks that... consist of a color in isolation, without any demarcation to give it a specific shape....

138 Vol. 101 TMR 935 that it claimed qualities common to products of the same nature in Class 16 and that could be deceptive about the product s characteristics. This decision was affirmed in reconsideration and appeal remedies. The Council of State denied the request for nullity of the resolution that denied registration of the commercial slogan LA SUAVIDAD QUE RESISTE TODO because it found that the commercial slogan complied with the requirements of Colombian trademark law. The Council of State confirmed that commercial slogans are words, phrases, or legends used to complement the trademark it accompanies. The complementary function of the slogan requires it to be capable of increasing the distinctive character of the mark. Thus, it must meet the requirement of having a distinctive character and lending itself to graphic representation. Commercial slogans are advertising tools that are intended to attract the consumer s attention. In addition, commercial slogans must not fall within any of the grounds of unregistrability. However, these grounds should be applied with less rigor than with slogans. A merely descriptive commercial slogan is not registrable if it simply informs the consumer about characteristics that are common to other products or services of the same genre. However, if there are other words that give a distinctive character to the slogan, even if they are descriptive, as a whole, the mark will be registrable. In this case, the owner could not claim ownership of the descriptive elements of the slogan. In order to establish that a mark is descriptive, the following question must be answered: How is it? When this question is asked in regard to toilet paper and other products in Class 16, the answer would be soft, which allowed the Council of State to conclude that the word softness in the slogan was descriptive. However, considered as a whole, the slogan was fanciful and arbitrary, as were the words softness and resistance in the same sentence. Consequently, the Council of State found that the slogan was registrable. However, it did establish that the word softness is descriptive for products in Class 16 and thus cannot be exclusively owned. 273 This decision is significant because it confirms that slogans must go through a less strict and rigorous examination than marks. This means that slogans may include generic or descriptive elements Papeles Nacionales S.A. v. Colombian Trademark Office, Case No (Council of State, Apr. 23, 2010).

139 936 Vol. 101 TMR III.A.1.a. Blurring The Coca-Cola Company was the owner of a trademark registration for the COCA-COLA contour bottle, covering mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; [and] syrups and other preparations for making beverages in Class 32. The trademark consists of (1) a characteristic contour or silhouette from the top of the bottle to its base, (2) flutes from the middle part of the bottle to its base and from the panel to the top, (3) a pinch in the bottom part of the bottle, and (4) a label panel for decoration. The main characteristic is the outline, which explains the name contour bottle. Pursuant to Article 155(e) of Decision 486 of the Andean Community, Coca-Cola brought an infringement action against Gaseosas Posada Tobon S.A. (Postobon), claiming that it had infringed its three-dimensional mark through the use of a similar bottle to commercialize the soda and pop drinks identified with the mark POSTOBON, thereby causing unfair commercial and economic harm to the plaintiff through the dilution of the distinctive power or the commercial and advertising value of its well-known three-dimensional mark. Coca-Cola s subsidiary claimed infringement of a well-known trademark and risk of confusion, as well as unfair use of a previously registered mark and its owner, as grounds of the action, under Article 226(a) and (c) of Decision 486. This was a first instance decision subject to appeal before the Court of Appeals of Antioquia. However, the Colombian Trademark Office, within Postobon s three-dimensional trademark application for its bottle outline, established that Postobon s mark for which it was sued in this case was registrable under Andean Community IP regulations. Before analyzing the particular case, the judge of the 10th Civil Circuit Court of Medellin outlined the requirements that must be satisfied in order for there to be infringement by dilution: (1) the existence of a registered trademark owned by the plaintiff; (2) the well-known character of the presumably infringed mark; (3) that the infringer uses an identical or a similar mark in the market; and (4) that the allegedly infringing use is capable of

140 Vol. 101 TMR 937 causing unfair commercial and economic harm to the trademark owner, derived from the dilution of the distinctive power of the mark or the dilution of its commercial or advertising value or an unfair use of its prestige. The requirements of finding infringement of a well-known mark and risk of confusion were, the judge explained, as follows: (1) the existence of a registered trademark owned by the plaintiff; (2) the well-known character of the presumably infringed mark; (3) the infringer s use of an identical or similar mark in the market; and (4) the potential of the use of the infringing mark to cause confusion or to imply association with the trademark owner. The judge established that the first and second requirements had been duly satisfied within the proceeding, as the COCA-COLA contour bottle trademark was, in fact, a registered mark owned by The Coca-Cola Company. The judge also found that the wellknown character of the mark had been sufficiently proved. Thus, the main issue that had to be adjudicated in this case was whether the defendant used or had used a mark identical or similar to Coca-Cola s registered three-dimensional mark. Therefore, the judge found that it was essential to establish whether the bottle used to commercialize Postobon s soda drinks had a distinctive design owing to the inclusion of arbitrary or special elements that produced in those who perceived it an impression different from that arising from the observation of the COCA-COLA contour bottle three-dimensional mark. In order to make this determination, it was necessary to take into account the novel elements that contributed to the enhancement of the distinctive character. In this regard the judge found that there were clear similarities between the bottles: same size (personal), elongated outline, narrow bottleneck, and undulations (waist or curves). However, all of these similarities were natural, considering that the bottles were intended for use with products in Class 32, that is, beverages for human consumption. This was proved through the expert report (anthropometry test) of an industrial designer. The judge concluded that the similarities corresponded to usual shapes, which could not be covered by a trademark registration that would grant an exclusive right in them. Therefore, it was the other special characteristics that had to be considered in order to prove infringement. After comparing them, the judge found that the new POSTOBON bottle included novel, arbitrary, and special elements that produced a different impression from the one created by the COCA-COLA contour bottle, such as the relief, figures, and graphs, including the refreshing stella (trail). On the other hand, the distinctive elements of the COCA-COLA contour bottle were the flutes from the middle

141 938 Vol. 101 TMR part to its base and from the panel to the top, which differed from those in the POSTOBON bottle. Consequently, the judge found that the action did not comply with the requirements established by law, and the defendant was acquitted. 274 This case is important for two main reasons. On one hand, this is the first case of infringement of a three-dimensional trademark raised before a Colombian judge. On the other hand, it is a major case between the two leading soda beverage companies in Colombia. COMMUNITY TRADE MARK I.B.2. Merely Descriptive In February 1999, Giampietro Torresan, a Swiss individual, filed with OHIM (Office for Harmonization in the Internal Market) an application for the registration as a Community trade mark (CTM) of the word mark CANNABIS, 275 to cover beers in Class 32, wine, spirits, liqueurs, sparkling beverages, sparkling wine, champagne in Class 33, and providing of food and drink, restaurants, self-service restaurants, public houses, ice cream parlours, pizzerias in Class 42. Following registration of the mark four years later, the German company Klosterbrauerei Weissenohe GmbH & Co. KG filed a petition for cancellation of the registration 276 in Classes 32 and 33 on descriptiveness grounds. 277 The OHIM Cancellation Division accepted the petition and declared that the mark CANNABIS was invalid with respect to the goods in Classes 32 and Torresan s appeal for the revocation of this decision 279 was dismissed by the OHIM Second Board of Appeal on the grounds that the word cannabis designated in everyday language either a textile plant or a narcotic substance and that it was, for the 274. Coca-Cola Co. v. Gaseosas Posada Tobon S.A., Case No (10th Civil Circuit Court of Medellín, Feb. 10, 2010) CTM No , filed Feb. 12, 1999, registered Apr. 16, Cancellation Petition No. 648, filed June 27, Article 7(1)(c) of the CTM Regulation provides: The following shall not be registered:... trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.... Council Regulation (EC) No. 40/94 (codified in Council Regulation (EC) No. 207/2009, Feb. 26, 2009) Case No C /1 (OHIM Cancellation Division, Mar. 9, 2005) Appeal No. R 0517/2005-2, filed Apr. 29, 2005.

142 Vol. 101 TMR 939 average consumer, a clear and direct indication of the characteristics of goods in Classes 32 and In response, Torresan lodged a further appeal before the Court of First Instance (CFI). 281 He argued that (1) the trademark CANNABIS had distinctive character, given that it was both a common name and a fanciful mark and had no direct or indirect connection with beer and beverages in general; (2) the word cannabis was not the normal way of designating beers or alcoholic beverages in Class 32 or 33; (3) cannabis could not be used in beverages under EU legislation, and the CANNABIS beer consisted only of lawful and authorised materials; and (4) cannabis was an evocative word, intending to attract the consumer s attention and giving the idea of pleasure, distraction, or relaxation. In ruling on the case, the CFI referred to the Board of Appeal s finding that the word cannabis had three possible meanings: (1) a textile plant, the production of which is subject to strict legislation; (2) a narcotic, which is prohibited in a great number of EU Member States; and (3) a substance, the possible therapeutic use of which is under discussion. The CFI further pointed out that cannabis, also referred to as hemp, was used in the food sector in different forms, such as oils, herbal teas, and different preparations (e.g., tea, pasta, bakery and biscuits, alcoholic or nonalcoholic beverages, etc.), in a very low concentration, so that they have no psychotropic effects. Thus, the Court deemed it necessary to examine whether the trademark CANNABIS was descriptive for the goods in Classes 32 and 33 for which it was registered. Referring to settled case law, according to which a mark is considered descriptive if there is a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics, 282 the CFI held that it should be ascertained whether the average well-informed, observant, and circumspect consumer would think that the word mark CANNABIS on a beverage described its characteristics. The Court found that there was a material link between the mark CANNABIS and certain characteristics of goods in Classes 32 and 33, as some beers containing cannabis are present on the European foodstuffs market. It held, moreover, that the word cannabis, being a well-known Latin scientific term, was comprehensible throughout the Community. Under these 280. Case R 0517/ (OHIM Second Board of Appeal, June 29, 2006) Appeal No. T-234/06, filed Sept. 4, Metso Paper Automation Oy v. OHIM, Case T-19/04, [2005] ECR II-2383 para. 25 (Court of First Instance (First Chamber), June 22, 2005).

143 940 Vol. 101 TMR circumstances, the Court concluded, the average Community consumer, upon seeing a beer bearing the trademark CANNABIS, would immediately perceive, without further thought, that cannabis was one of the ingredients of the product in question, and that perception would play a primary role in his decision to purchase that specific product. Consequently, the CFI concluded that the word cannabis was a simple and direct indication of one of the possible ingredients of the goods for which the mark had been registered and thus that the word [mark] CANNABIS goes far beyond the realm of suggestion and comes within the realm of description. Accordingly, it dismissed the appeal. 283 The British company Exalation Ltd. filed a CTM application for the word mark VEKTOR-LYCOPIN, 284 to cover goods in Classes 5, 29, and 30. The examiner rejected the application on the grounds that the mark was descriptive and lacked distinctive character for the relevant public (German- and English-speaking). 285 Exalation s appeal against the decision 286 was also rejected. The OHIM Fourth Board of Appeal confirmed the examiner s findings that (1) the German word Vektor ( vector ) was used in genetic engineering to apply to molecules of deoxyribonucleic acid (DNA) used to introduce foreign DNA into a host cell; (2) the term vector, both in medicine and in the field of pest and disease control, referred to organisms that transmit diseases; and (3) the German term Lycopin had the meaning of a carotenoid with antioxidant properties. The Board further stressed that the verbal elements of the mark, VEKTOR and LYCOPIN, were linked by a hyphen, in accordance with the rules of the German and English languages. Last, it held that the mark, when assessed as a whole, had a specific descriptive meaning in respect of the goods referred to in the application, namely that of a food supplement, the active ingredient of which may be found in pharmaceutical preparations or dietetic preparations for medical use, in baby food in Class 5, or in any of the food products falling within the scope of Classes 29 and Torresan v. OHIM, Case T-234/06, [2009] ECR II-4185 (Court of First Instance (Second Chamber), Nov. 19, 2009), available at docor&docjo=docjo&numaff=t-234/06&datefs=&datefe=&nomusuel=&domaine=&mots=&re smax= CTM Application No , filed Jan. 6, Examiner s decision of May 4, Appeal No. R 1037/2007-4, filed July 3, Case R 1037/ (OHIM Fourth Board of Appeal, Dec. 17, 2007) (in German).

144 Vol. 101 TMR 941 In its appeal of the Board s decision before the General Court, 288 Exalation argued as follows: 1. The mark VEKTOR-LYCOPIN consists of two components, the combination of which is unusual and unknown. It cannot be found either in dictionaries or in the oral or written language, and it is not known or used in medicine, biology, physics, or mathematics. Thus, it is a neologism formed by the juxtaposition of two words, which may be descriptive if taken individually but which in combination, when the mark is taken as a whole, create an impression far removed from that produced by the meaning of the terms composing it. 2. The term vector has various meanings, and not just the meaning of that term in the field of genetic engineering that was taken into account by the Board of Appeal. It is not known to specialists in the above fields or to the average consumer, and the relevant public cannot infer from the mark that it describes a mixture of extracts of liquorice and tomato. 3. There are many Community, national, and international trademarks containing the word element VEKTOR. The General Court found that Exalation did not prove that the term lycopin was not descriptive, contrary to the Board of Appeal, which had found that (1) it described a food supplement necessarily known to professionals dealing with dietetic, pharmaceutical, and veterinary preparations; (2) it was in fact accessible to consumers of all the goods in Classes 5, 29, and 30, as it did appear in dictionaries and on websites; and (3) consumers of those goods usually sought advice from informed professionals. The Court concluded, therefore, that the relevant public should be considered as being aware of the meaning of lycopin. It stressed, moreover, that, in view of the fact that Exalation had not limited its application to goods not containing lycopene, there was a direct and specific link in the mind of the relevant public between the word element LYCOPIN and the goods covered by the mark. The Court likewise rejected Exalation s second argument. It pointed out that for refusal of registration of a mark to be justified, it is sufficient that the signs and indications composing the mark could be used in a way that is descriptive of the goods of services applied for. In the mark at issue, the term vektor was combined with the term lycopin, which designated a substance that could enter into the composition of the covered goods. Thus, the term would evoke in the mind of consumers a property of the goods referring to the capacity to transmit a substance or an active 288. Appeal No. T-85/08, filed Feb. 19, 2008.

145 942 Vol. 101 TMR ingredient that could be included in the composition of the covered goods, and it was therefore descriptive. Regarding the original character of the combination of the terms vektor and lycopin, the Court found that the fact that they were linked by a hyphen merely reflected a usual way of combining words in both English and German, and thus the juxtaposition of the words could not be considered unusual and unknown. The Court reasoned that in an assessment of the descriptive nature of a mark, it was irrelevant whether there was evidence of it in dictionaries. It found that the combination VEKTOR- LYCOPIN associated with food and with dietetic, sanitary, veterinary, and pharmaceutical preparations would evoke the property of those goods as transmitters of lycopene and that the relevant public would believe that they contained lycopene and would allow their consumers to assimilate that substance. Last, the Court found that Exalation had provided no evidence to support its third argument. While the fact that marks identical or similar to the mark applied for had been registered could be taken into account for information purposes, it was not binding on OHIM or the judicature of the European Union. Consequently, the General Court dismissed the appeal. 289 I.C. Distinctiveness The U.S. company Clearwire Corp. applied for and obtained the registration of the word mark CLEARWIFI 290 as an international trademark designating the European Community and covering telecommunications services, namely, providing high-speed access to computer and communication networks, and the electronic transmission of voice, video and data via computer and communication networks in Class 38. OHIM was notified by the World Intellectual Property Office (WIPO) of the mark s registration. 291 By decision of the examiner, protection in the European Community was rejected on the ground that the mark lacked distinctive character Exalation Ltd v. OHIM, Case T-85/08 (General Court (Third Chamber), July 9, 2010), available at r&alldocs=alldocs&docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=t-85/08&da tefs=&datefe=&nomusuel=&domaine=&mots=&resmax= IR No , filed and registered Aug. 14, Received by OHIM Sept. 27, Ex officio refusal of protection pursuant to Articles 7, 88(2), and 89(1) of the CTM Regulation and Rule 11(3) of the Regulation Implementing the CTM Regulation (Commission Regulation (EC) No. 2686/95, Dec. 13, 1995, as amended) (OHIM Trade Marks Department, Dec. 19, 2007).

146 Vol. 101 TMR 943 Clearwire s appeal against the examiner s decision was rejected by the OHIM First Board of Appeal. The Board held that the CLEARWIFI trademark lacked distinctive character and was descriptive of the covered services. It would be understood by individuals or companies in the Community needing to access computer and communications networks, such as the Internet, as describing the purpose of the services concerned, namely the offering of wireless connections, and the quality of said services (e.g., free from disturbance). Thus, the Board rejected the appeal. 293 Clearwire further appealed before the CFI. It argued that (1) the relevant public had to be an English-speaking public because the mark at issue was made up of components taken from the English language; (2) the relevant public was familiar with the term wifi in connection with the services at issue and therefore was able to distinguish between the indication of the commercial origins of those services and their description; (3) the Board wrongly defined the terms wifi and clear, because the mark CLEARWIFI meant an easy-to-use network service; (4) there was no specific link between the CLEARWIFI mark and the covered services; and (5) the Board should have examined whether the relevant public would consider the mark in question as describing the characteristics of the services concerned. Upon examining the case, the CFI found that the made-up word CLEARWIFI was in compliance with the rules of syntax and word composition of the English language and, therefore, the relevant consumer would not perceive it as unusual. It determined, moreover, that the CLEARWIFI mark did not have a merely vague or evocative meaning but could be perceived by the relevant public as designating Wi-Fi technology, which enables the wireless connection of computers and various items of electronic equipment, either with each other or to Internet access points, and which is resistant to external interference. The Court confirmed the Board s conclusion that the mark at issue was likely to be understood by the relevant public as a description of the purpose and quality of the services concerned. Interestingly, the Court upheld the Board of Appeal s decision as a whole, despite the fact that it concluded that the relevant public was likely to equate Internet access via Wi-Fi connection with high-speed access to that network, which was not necessarily a characteristic of part of the services for which protection was sought, namely the electronic transmission of voice, video, and data via communications networks. However, the CFI found that this was not sufficient to affect the lawfulness of the Board s decision, and it dismissed Clearwire s appeal Case R 0706/ (OHIM First Board of Appeal, June 30, 2008) Clearwire Corp. v. OHIM, Case T-399/08, [2009] ECR II-223 (CFI (Second Chamber), Nov. 19, 2009), available at

147 944 Vol. 101 TMR Andreas Stihl AG & Co. KG, a German firm, owned by transfer the International Registration for a device mark 295 designating the European Union, claiming the colours orange and grey, and covering power tools, namely power-operated cut-off machines in Class 7 (see below). The OHIM examiner rejected registration of the mark on the ground that it lacked distinctive character. 296 Andreas Stihl appealed the examiner s decision before the OHIM Fourth Board of Appeal. 297 Its main arguments were that (1) the mark did not claim protection for the colours per se, but for the colour combination as applied to the housing of the covered goods; (2) on the basis of ECJ case law, even a colour per se could be distinctive in exceptional circumstances, especially when the number of goods or services covered was very restricted and the target market was very specific; (3) the covered goods were intended for a very specific target group, namely skilled workers; (4) the colour combination of orange and grey was not usual for power-operated cut-off machines, and neither were they common warning colours; (5) the mark had acquired distinctiveness in the European Community through use, because it had been used since 1972 for all power tools with a combustion engine, in a way similar to that used in the tool constituting the mark s device; (6) its products had been circulating in the market through a network of distributors and licensees in all EU Member States; (7) various statements from, inter alia, the Austrian Forestry Association, Austrian private forest owners, and the German Federal Association for Power-Operated Tools recognised that Andreas Stihl was a manufacturer of power-operated tools and that the colour combination applied to these goods (orange to the upper part and grey for the lower part) was associated with the company in the forestry circles. &docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=t-399/08&datefs=&datefe=& nomusuel=&domaine=&mots=&resmax= IR No. W , filed and registered Dec. 12, Ex officio total refusal of protection (OHIM Trade Marks Department, provisional refusal Aug. 14, 2006, final decision Jan. 11, 2007) Appeal No. R 0355/2007-4, filed Mar. 7, 2007.

148 Vol. 101 TMR 945 The Board of Appeal held that the mark in question, if granted protection, would provide protection for the colour combination per se as applied to any of the covered goods, irrespective of what parts or to what extent different parts of said goods were coloured. It explained, further, that the distinctive character of a mark means that it must make possible the identification of the covered goods as originating from a particular undertaking. Turning to the facts of the case, the Board accepted that the goods in question were restricted (power-operated cutting machines, used in horticulture, agriculture, and forestry) and that the public concerned consisted of professionals (i.e., skilled forestry workers and professional gardeners and employees of companies or public bodies specialised in construction or landscaping). The Board emphasised, though, that despite the fact that no stricter criteria apply for marks consisting of one or more colours per se, the perception of the public is not the same as in the case of word or device marks. The public will not instantly perceive as a mark a colour combination forming part of the external appearance of the goods as a reference to their commercial origin. Although colours are capable of conveying certain ideas, they are not always capable of communicating specific information. The Board also emphasised the public interest in keeping colours available for other competitors, as the number of colours that are actually available is low. The Board reluctantly accepted the appellant s assessment that orange was not a common warning colour, pointing out that it was a colour that would serve to draw the user s attention to the dangerous parts of the machine rather than be perceived as an indicator of origin. It also mentioned that orange was used extensively in the United States but also in the European Union to indicate warning or precaution. The paler shade of the orange colour in the mark would not make any difference in the perception of the public, as consumers, irrespective of whether they are specialists, usually keep an imperfect image of the mark in their mind. With regard to the other colour used in the mark under examination, grey, the Board found that it was not common for the goods in question. In light of the above, the Board reached the conclusion that the combination of orange and grey could not be indicative of the business origin of the power-operated cutting machines. Accordingly, it turned to the examination of whether the mark had acquired distinctiveness through extensive use. Upon examining the material submitted by Andreas Stihl, the Board of Appeal opined that the appellant had proved that it was indeed the leader in the specific market of power-driven cut-off saws and that the specific colours were used on its goods in all EU Member States. However, the Board explained that the mere use of a mark applied for was not sufficient to lead to the conclusion

149 946 Vol. 101 TMR that the relevant public perceived it as an indication of commercial origin. The Board then turned to the two submitted surveys, which showed that an impressive number of consumers not only recognized the colours in question but also felt that the colour combination indicated a specific company, namely the producer. The results of the various surveys, the Board found, actually proved the recognition of the majority of the target public, which could be extrapolated to the other Member States. The Board of Appeal thus had no doubt that the mark in question had acquired distinctiveness throughout Europe, and it allowed the mark s registration in the European Community. 298 I.D.1. Similarity of Marks The Greek company Touristikes Epicheiriseis Messinias A.E. (Temes) applied for the registration as a CTM of the word mark ELAIOTHERAPY, 299 for goods and services in Classes 3, 41, and 44 (specifically, bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices in Class 3; education; providing of training; entertainment; sporting and cultural activities in Class 41; and medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services in Class 44). Italica Importaciones-Exportaciones, S.L. (Italica), a Spanish company, filed an opposition 300 against the registration of the mark based on its earlier Spanish trademark OLIVOTERAPIA, covering goods and services in Classes 29, 30, 31, 41, 43, and Italica argued that there was a likelihood of confusion between the marks because of their similarity and because the goods and services at issue were partly identical and partly similar. In response, Temes argued that (1) there was no likelihood of confusion because neither the marks nor the covered goods and services were similar and (2) the mark OLIVOTERAPIA was composed of very weak elements in relation to the goods and services at issue and therefore it had a very low distinctive character, especially as there were other registered marks containing the words THERAPY and OLIVO. The OHIM Opposition Division first found that the existence of several trademark registrations containing these words was not per se conclusive because it did not necessarily reflect the situation 298. Case R 0355/ (OHIM Fourth Board of Appeal, Nov. 30, 2009), available at CTM Application No , filed Mar. 4, Opposition No. B , filed Jan. 3, Spanish Trademark No , filed June 25, 2004, registered Nov. 4, 2004.

150 Vol. 101 TMR 947 in the market. In other words, the data concerning registry entries could not lead to the conclusion that all such trademarks had been effectively used. Accordingly, the Opposition Division did not accept that consumers had been exposed to extensive use of and had become accustomed to trademarks including the words THERAPY and OLIVO. With regard to the covered goods and services, the Opposition Division found that they were partially identical, partially similar, and partially dissimilar. Turning to the comparison of the marks, the Opposition Division observed that there was a low degree of visual similarity and a medium degree of aural similarity. From a conceptual point of view, it reasoned that although neither of the marks had a meaning per se in Spanish, the Spanish consumer would understand the mark OLIVOTERAPIA as meaning therapy based on olive tree or olives. On the other hand, the word element ELAIO in the mark applied for had no meaning in Spanish, while THERAPY, though an English word, would be understood by the Spanish public because of its phonetic similarity to the Spanish word TERAPIA. The Opposition Division noted that marks are conceptually identical or similar when they are perceived as having the same or a similar semantic content. Because, in this case, the marks shared the concept of therapy, it held that they were conceptually similar. With regard to the global assessment of the marks, the Opposition Division found that in view of the nature of the goods and services covered by the mark ELAIOTHERAPY, the awareness of the professional public would be high, whereas the awareness of the average consumer would be that of someone who was reasonably well-informed, observant, and prudent. Considering Italica s claim that the word element ELAIO was Greek for the Spanish word OLIVO ( olive tree or olive ) and THERAPY was the English for the Spanish word TERAPIA, the Opposition Division concluded that ELAIO had no meaning for the average Spanish consumer, as he or she was not familiar with the Greek language. It stressed that the etymological origin of OLIVO was the Latin noun olivum and not the Greek combining form elaio-. Therefore, it was unlikely that the Spanish public would make a connection between these two words. On the other hand, the Opposition Division found that Spanish consumers would understand that TERAPIA and THERAPY had the same meaning, because of the phonetic similarity of those words. The Opposition Division further found that the distinctiveness of the mark OLIVOTERAPIA was normal, because it would be understood by Spanish consumers as meaning therapy based on olive tree or olives a meaning that had no relation to the goods and services of Italica in Classes 30, 31, 41, and 43 (foodstuffs,

151 948 Vol. 101 TMR education, entertainment, food-providing and accommodation services). On the other hand, it observed that the word OLIVOTERAPIA could be considered as alluding to the characteristics of the goods and services in Classes 29 and 44 (olive oils and preserved olives, and mainly medical, hygienic, and beauty care services). To this extent, it considered the distinctiveness of the word as being lower than average and, thus, enjoying a reduced scope of protection. Notwithstanding that determination, the Opposition Division held that because the mark OLIVOTERAPIA had no meaning per se in Spanish, it enjoyed some protection vis-à-vis later marks. Making a final assessment of the degree of similarity of the marks, the Opposition Division stressed that, in some cases, the initial part of the mark should be considered the most important. Because the public reads from left to right, the initial part of a mark containing a verbal element is the one that first catches the attention of the reader, especially when that initial part is not very short. The Opposition Division therefore concluded that the visual, aural, and conceptual dissimilarities of the marks, which were placed at the beginning (i.e., OLIVO vs. ELAIO), were sufficient to counteract the similarities. Consequently, it held that there was no likelihood of confusion of consumers, and the opposition was rejected. 302 De Francesco Import GmbH, a German company, filed a CTM application for the word mark SPAGO, 303 to cover alcoholic beverages (except beers) in Class 33. The Belgian company Spa Monopole, compagnie fermière de Spa SA/NV filed opposition, 304 based on its earlier word mark SPA, registered in the Benelux and covering mineral and aerated waters and other non-alcoholic drinks; [and] syrups and other preparations for making beverages in Class 32. OHIM accepted the opposition 305 on the ground that the marks SPAGO and SPA were sufficiently similar, as they shared the element SPA. The Opposition Division also held that the use of the mark SPAGO for alcoholic beverages could be detrimental to the repute of the earlier mark because of the harmful effect of alcohol on health OHIM Opposition Division, decision of Jan. 15, 2010, available at A slightly different version of this case summary appeared in World Trademark Review Daily on March 4, See px?g=130f47a3-d53f-491e-96c2-76d78bd95e27&utm_source=wtr+daily+ &utm_medi um= &utm_campaign=wtr+daily+ &utm_content=wtr+daily CTM Application No , filed July 27, Opposition No. B , filed June 4, OHIM Opposition Division, decision of July 28, 2006.

152 Vol. 101 TMR 949 De Francesco appealed the decision. 306 The Second Board of Appeal annulled the contested decision, finding that there was no likelihood of confusion because the degree of similarity between the marks and between the covered goods was low. 307 Although the Board acknowledged the reputation of the mark SPA in the Benelux in respect of mineral waters, it found that the mark SPAGO was not sufficiently similar for its use in respect of alcoholic beverages to result in detriment to the reputation of the mark SPA. Spa Monopole appealed the Board s decision. 308 The CFI affirmed that the mark SPA enjoyed a reputation in the Benelux countries for mineral waters. The Court further explained that in view of the fact that the marks SPA and SPAGO were short, consumers would concentrate on the word as a whole; it was, the Court found, unlikely that they would break the mark SPAGO down into two word elements, SPA and GO. Moreover, it found that the addition of the element GO to the element SPA was crucial in differentiating the applied-for mark both visually and phonetically. From a conceptual point of view, the CFI found that no conceptual comparison was possible, as the earlier mark referred to the town of Spa in Belgium, famous for its mineral waters and thermal baths, to the Belgian racing circuit of Spa- Francorchamps, or to the descriptive meaning of a thermal spring, whereas SPAGO was an invented word with no meaning in any of the official languages of the Benelux countries. Next, the Court examined the nature of the covered goods. It stressed that alcoholic beverages and mineral waters had different characteristics. Whereas alcoholic drinks usually are consumed on special and convivial occasions, water and non-alcoholic drinks are consumed daily. Moreover, the consumption of water satisfied a vital need. The average well-informed and reasonably observant and circumspect consumer was aware of that distinction between alcoholic and non-alcoholic beverages, which in addition have a significant difference in price. Furthermore, a license to sell alcohol is required for the marketing of alcoholic beverages, and there is an age restriction for the purchase thereof. That the drinks at issue might be consumed in the same places and in a complementary fashion, in that they could be mixed or served together, did not affect that finding. The CFI concluded that although the mark SPA enjoyed a huge reputation, that fact did not alter the finding that there was only a low degree of visual and phonetic similarity between that mark and the contested one. It stressed that the criterion relating 306. Appeal No. R 1285/ , filed Sept. 28, Case R 1285/ (OHIM Second Board of Appeal, Sept. 13, 2007) Appeal No. T-438/07, filed Nov. 30, 2007.

153 950 Vol. 101 TMR to reputation, which is well established, does not automatically imply that there is a link between the marks at issue. Consequently, the CFI dismissed the action. 309 The Spanish company Beveland, S.A. applied for the registration as a CTM of a three-dimensional mark of a bottle with a label bearing the words Amaretto Real Conti (see below). 310 The application covered alcoholic beverages in Class 33. Ilva Saronno S.P.A., an Italian company, opposed the registration of Beveland s mark. 311 The opposition was based on likelihood of confusion with the petitioner s following priorregistered trademarks: (1) three-dimensional international trademark in the shape of a bottle bearing a label with the words Amaretto di Saronno, 312 covering wines, spirits, and liqueurs in Class 33 (see below); (2) three Italian trademarks in the shape of a bottle; 313 (3) Finnish trademark in the shape of a bottle; 314 (4) Danish trademark in the shape of a bottle; 315 (5) Irish trademark in the shape of a bottle; 316 and (6) Benelux trademark in the shape of a bottle Spa Monopole, compagnie fermière de Spa SA/NV v. OHIM, Case T-438/07, [2009] ECR II-4115 (CFI (Eighth Chamber), Nov. 12, 2009), available at jurisp/cgi-bin/form.pl?lang=en&submit=rechercher&alldocs=alldocs&docj=docj&docop=doco p&docor=docor&docjo=docjo&numaff=t-438/07&datefs=&datefe=&nomusuel=&domaine=& mots=&resmax= CTM Application No , filed Dec. 22, Opposition No. B , filed Sept. 28, IR No , filed and registered July 3, Trademark No , filed June 11, 1996, registered Jan. 22, 1999; Trademark No , filed Feb. 28, 1973 (registration date not available); Trademark No , filed Feb. 11, 1991, registered July 6, Trademark No , filed Jan. 9, 1976, registered Dec. 21, Trademark No , filed Jan. 9, 1976, registered July 23, Trademark No , registered Aug. 28, 1991 (filing date not available) Trademark No , filed Jan. 13, 1995 (registration date not available).

154 Vol. 101 TMR 951 After comparing the mark applied for and Saronno s international trademark, the OHIM Opposition Division found that they were visually, aurally, and conceptually dissimilar (it noted that the other earlier marks were identical to the international mark and even less similar to the opposed one). It also pointed out dissimilarities in the shape of the bottles, which differed in various elements, such as the shape of the caps and the decorations appearing thereon, the shape of the bodies of the bottles, and the appearance of the labels. The Opposition Division stressed that the marks differed in some of their most peculiar features and particularly in the word elements of their labels. Consequently, it rejected the entire opposition. 318 Saronno pursued an appeal against the decision. Its primary arguments were as follows: (1) there was substantial similarity between the opposed mark and its prior-registered trademarks; (2) its marks were well known; and (3) despite the fact that the word Amaretto appearing on the labels is a generic name, the Opposition Division did not take into account the red color in which it was written in the conflicting marks and that the phrase Real Conti on Beveland s label created a false impression as to noblesse, the status that the latter was trying to project with the coat of arms on its label. The OHIM Fourth Board of Appeal held that the marks under comparison had no visual similarities except with regard to their absolutely nondistinctive elements, namely the shapes of the bottles and the generic word Amaretto. The Board referred to the established case law of the Court of Justice, according to which the average consumer is not in the habit of making assumptions about the origin of the products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element. A three-dimensional trademark is devoid of distinctiveness unless 318. OHIM Opposition Division, decision of Nov. 18, 2008.

155 952 Vol. 101 TMR it departs significantly from the norm or customs of the sector and is thereby able to fulfill its essential function of indicating commercial origin. In this context, the Board of Appeal concluded that the shapes of the bottles in the marks under comparison were commonly used in the marketplace and that their distinctive element was their label. The labels, however, were significantly different, as apart from the generic term Amaretto, which could not be taken into consideration, there was no similarity between the words Di Saronno and Real Conti. In addition, the threedimensional elements of the conflicting marks presented dissimilarities. Last, the Board opined that Saronno s argument that the words Real Conti would be perceived as noblesse was unfounded in light of the aforementioned dissimilarity. Consequently, it dismissed the appeal. 319 Vasileios Ginis, a Greek individual, filed a CTM application for the figurative mark BILLY S PRODUCTS, 320 to cover whitening concoctions, washing substances (lye), cleaning concoctions, shiners, fat refinement and curettage, perfumery items, essences, decorative items, coiffure items, cosmetics, [and] denti-odorizers in Class 3 and various goods in Classes 4, 6, 8, 9, 11, 14 16, 18, 20 28, and 34 (see below). The Spanish company Laboratorios Byly SA opposed the registration with respect to goods in Class It based its opposition on its earlier Community registrations for the word mark BYLY, 322 the first of which covered goods in Class 3 and the second goods in Classes 3, 5, and 35. Byly argued that there was likelihood of confusion because of the existing similarity between the opposed mark and the earlier ones. The OHIM Opposition Division rejected the action. 323 Byly appealed, 324 but its appeal was rejected, 325 the OHIM Second Board of Appeal confirming the finding that despite the identity or similarity of the covered goods 319. Case R 0108/ (OHIM Fourth Board of Appeal, Mar. 26, 2010), available at CTM Application No , filed Jan. 28, Opposition No. B , filed Dec. 14, CTM No , filed Apr. 1, 1996, registered May 11, 1999; CTM No , filed Mar. 5, 2002, registered May 27, Case No. B (OHIM Opposition Division, Jan. 22, 2008) Appeal No. R 0469/2008-2, filed Mar. 13, Case R 0469/ (OHIM Second Board of Appeal, Sept. 15, 2008).

156 Vol. 101 TMR 953 and the certain phonetic similarity between the marks, there was no likelihood of confusion because the marks were visually and conceptually different. Byly brought the case before the General Court. 326 It argued that the Board of Appeal had erred in deciding that there was no likelihood of confusion. After examining the case, the General Court found that the word PRODUCTS in the contested mark was of lesser importance because it was written in lowercase characters (except for its first letter) and it had a very low degree of distinctive character because of its descriptive nature. Thus, the dominating feature of the mark was the element BILLY S. Accordingly, the Court proceeded to the comparison of this element with the appellant s earlier marks. In its assessment of the visual similarity of the marks, the Court disagreed with the finding of the Board of Appeal that they were dissimilar. It stressed that in word marks that are relatively short, the initial and final elements have the same importance as the central elements. In this respect, the Court pointed out that the conflicting marks had in common the majority of the letters of which they consisted, adding that they all began with the letter B and had the same ending, LY, the double L and the element S in BILLY S not being of significant importance. Consequently, the Court held that consumers would perceive the marks as visually similar, taking into account that the differences between them could be noticed only upon a detailed comparison, which was rarely possible. Turning to the phonetic assessment of the marks, the General Court concluded that there was a high degree of similarity, given that the letters Y and I would be pronounced in a similar way in English and French and that there would be a medium degree of similarity in their pronunciation in German. As for the presence of the S, the Court opined that it did not outbalance the significant aural similarity between the prior marks and BILLY. The element PRODUCTS was also found of minor importance because of its weak distinctive character. In a conceptual comparison of the marks, the Court found that there were some similarities of minor importance. While the BYLY marks were invented words, the mark BILLY S PRODUCTS could be understood by English-speaking consumers as referring to the products of a person or a company called Billy. However, although knowledge of the English language was becoming more and more extensive within the European Union, the average consumer could not be expected to know that Billy s was the possessive of Bill, a common diminutive of the name William. Finally, although the word PRODUCTS could be understood even by non-english Appeal No. T-514/08, filed Nov. 26, 2008.

157 954 Vol. 101 TMR speaking consumers, it was doubtful whether the latter would notice it because of its weak distinctive character. In light of the above, the Court held that there was little conceptual similarity between the marks at issue. Taking into consideration all the above and the fact that the goods in Class 3 covered by the marks under comparison were identical, the General Court annulled the decision of the Board of Appeal. 327 I.D.2. Similarity of Goods or Services The Slovenian company Probanka d.d. filed a CTM application for PROBANKA & Device (see below), to cover goods and services in Classes 9, 35, and Probank AE, a Greek company, filed an opposition against some goods and services in Classes 9 and 36, 329 based on its earlier Greek registration for the word mark ΤΡΑΠΕΖΑ PROBANK PROBANK, 330 covering goods and services in the same classes. The opponent s main argument was that there was a likelihood of confusion between the two marks on account of (1) their high degree of similarity, as the most distinctive element was practically identical, and (2) the fact that the goods and services at issue were either identical or highly similar. In response, Probanka argued that the opponent had not translated all the elements in the registration certificate for the Greek mark and had not represented the earlier mark correctly, having failed to repeat the second word, PROBANK. The OHIM Opposition Division rejected these two arguments, finding that (1) the part of the registration certificate that was omitted from the translation was an expression that would have been translated as word mark, and such information was self-evident from the representation of the mark; and (2) the second PROBANK word was missing because of a typographical error. Upon comparing the goods and services concerned, the Opposition Division focused on the nature of the goods, their 327. Laboratorios Byly, SA v. OHIM, Case T-514/08 (General Court (Seventh Chamber), Apr. 14, 2010), available at echercher&alldocs=alldocs&docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=t-5 14/08&datefs=&datefe=&nomusuel=&domaine=&mots=&resmax=100 (in French) CTM Application No , filed Mar. 22, Opposition No. B , filed Apr. 17, Trademark No , filed May 8, 2001, registered Oct. 17, 2002.

158 Vol. 101 TMR 955 purpose, and their method of use, as well as whether they were complementary. It held that the contested goods in Class 9 particularly identity cards, magnetic; integrated circuit cards [smart cards] were of the same nature as the goods protected by the earlier mark and that though they might differ in their exact purpose, they were all manufactured and put on the market by the same companies, and they might at times even be considered complementary. For example, a banking card (one of the opposing goods) could be considered as a type of data media (one of the contested goods). The only difference between the goods covered by the marks was that Probank s goods were electronic whereas Probanka s goods were magnetic. As for the rest of the goods in Class 9, the Opposition Division found them to be dissimilar. With regard to the services in Class 36, the Opposition Division held that all the services in the application that related to monetary, financial, and banking affairs were identical to the related services of the opponent. Upon comparing insurance services (another of the services applied for) with banking services, the Opposition Division found that though insurance services had different purposes than did the services usually provided by a bank (providing credit or asset management, credit card services, financial evaluation, or stocks and bonds brokerage), they did share a similar nature, they could be provided by the same or related undertakings, they were distributed through the same channels, and they were used in combination. As for the contested services relating to real estate activities, the Opposition Division found that they were different from the monetary, financial, and banking affairs services protected by the earlier mark, as they had a different purpose and the common trend in the market was that they had a different commercial origin. It also found that charity contributions raising and custom intermediations differed from the opponent s services. Turning to a comparison of the marks, the Opposition Division observed that they had seven out of the eight letters in common and differed as to (1) the last letter of the denomination in the contested mark, (2) the Greek word ΤΡΑΠΕΖΑ ( TRAPEZA ), (3) the duplication of the word PROBANK, and (4) the colours and the figurative element of the contested mark. The marks were found to be aurally similar in the pronunciation of the words PROBANK and PROBANKA and dissimilar as to the pronunciation of the word ΤΡΑΠΕΖΑ. From a conceptual point of view, it reasoned that ΤΡΑΠΕΖΑ was the Greek word for bank and that the relevant public would perceive the English term BANK both in the earlier mark and, in the word element BANKA, in the contested one. As to the prefix PRO-, the Opposition Division explained that it would be understood in a number of ways for example, professional. It

159 956 Vol. 101 TMR therefore concluded that there was a semantic link between the marks through the denominations PROBANK and PROBANKA. Consequently, the Opposition Division accepted the opposition in part and allowed the application to proceed only with respect to electronic publications (downloadable); bar code readers; [and] readers for data processing in Class 9 and real estate activities, customs intermediation, real estate and movable asset valuations, real estate management, real estate leasing, housing intermediation, charity contributions (raising), rent collection, [and] letting of real estate properties in Class Probanka appealed the decision before the OHIM Board of Appeal. 332 The Board did not accept the appellant s argument that Probank had not translated the type of the mark, finding that this was not crucial in the case because it was clearly stated in the language of the proceedings that the earlier mark was a word mark. Evaluating the visual and aural similarity of the marks, the Board found that while there was limited visual similarity, the marks were similar phonetically in light of the emphasis that was put on the word PROBANK. Indeed, the Board found it likely that the Greek public would tend to abbreviate the mark ΤΡΑΠΕΖΑ PROBANK PROBANK to simply PROBANK, as was evident by the copies of newspaper articles submitted by Probank, which mentioned PROBANK as a word or a device mark. The Board of Appeal further rejected the appellant s argument that the mark ΤΡΑΠΕΖΑ PROBANK PROBANK should be considered generic in Greece. The Board accepted that the word ΤΡΑΠΕΖA was purely descriptive because it meant bank, but held that it added weight to the element BANK. Regarding the element PRO, the Board held that it would be perceived as a fanciful element because it did not form part of the Greek language. Thus, the Board of Appeal concluded that the perception of PROBANK and PROBANKA was similar. Consequently, although it found some differences between the marks under comparison, it considered the phonetic and conceptual similarities prevalent and came to the conclusion that there was a likelihood of confusion even for the attentive consumer. Accordingly, the Board rejected the appeal OHIM Opposition Division, decision of Apr. 12, 2010, available at Appeal No. R 1003/2010-2, filed June 1, Case R 1003/ (OHIM Second Board of Appeal, Apr. 8, 2011), available at A slightly different version of this case summary appeared in World Trademark Review Daily on May 20, See

160 Vol. 101 TMR 957 II.D.6. Flags, Coats of Arms, and Other Insignia The British company Couture Tech Limited applied for the registration as a CTM of a figurative mark consisting of a representation of the coat of arms of the Soviet Union (see below). 334 The application covered various goods and services in Classes 3, 14, 18, 23, 26, and 43. The examiner rejected the application 335 on the following grounds: 1. The mark consisted of the exact representation of the coat of arms of the Soviet Union, including the red star, sickle and hammer, and 15 ribbons bearing the motto Proletarians of the world, unite! in all 15 languages of the Soviet Socialist Republics of the Soviet Union, an emblem that was the official symbol of the Soviet Communist Party, which had ruled the country. 2. Because it referred to the Soviet regime and its ideology, the mark contravened public policy and accepted principles of morality. 3. Under the laws of some Member States of the European Union (Latvia, Estonia, and Hungary), the Soviet symbols have been banned at public meetings. 4. OHIM was aware that Couture had already registered the same mark as a CTM for goods in Classes 16, 24, and 25; 336 however, that was due to an error of OHIM in accepting this mark CTM No , filed Dec. 22, Notice of grounds of refusal of application for a Community trade mark (OHIM Trade Marks and Cancellation Department, Nov. 21, 2007) CTM No , filed July 29, 2004, registered May 30, 2005.

161 958 Vol. 101 TMR Following the submission of the applicant s observations, a new examiner issued a second notice of grounds of refusal, 337 confirming OHIM s first position and pointing out that it was sufficient if the grounds of nonregistrability obtained in only part of the Community 338 and that OHIM should not assist an applicant in making business by awarding a monopoly right to a mark that might be perceived as an offence to the basic values and principles of the European Union. Couture appealed the above decision. 339 Its main arguments were as follows: 1. The coat of arms of the former Soviet Union, abandoned by its successor the Russian Federation as a state symbol, emblem, or similar device, had been neither banished nor prohibited in any EU Member State and its use per se had not been declared immoral, illegal, or unlawful. 2. Couture had already been using the same mark registered as a CTM, without the mark s having been considered offensive or causing any disturbances in the public order. For that reason it was entitled to the legitimate expectation that the mark would be registered in this case as well. The OHIM Second Board of Appeal held that, in accordance with the CTM Regulation, for a mark to be refused registration it is sufficient that it be found to contravene public policy or accepted principles of morality in only one EU Member State. In light of the fact that the legislatures of Hungary and Latvia prohibit the use and display of Communist symbols at public meetings, the Board held that OHIM had the right to refuse registration because the mark violated national law. In line with the SCREW YOU case, 340 the Board stressed that the mark applied for was likely to cause deep offence to consumers in certain countries, and in this respect the reasons for refusal were based on general principles, including historical background. As to the applicant s argument concerning its legitimate expectation that the mark in question would be registered because it had already been registered for goods in Classes 16, 24, and 25, the Board of Appeal held that the registration of the prior mark was a mistake, which might have been due to the fact that the examiner was not a citizen from a relevant country and was not aware of the circumstances in the EU Member States concerned Notice of grounds of refusal of application for a Community trade mark (OHIM Trade Marks and Cancellation Department, Apr. 4, 2008) Article 7(2) of the CTM Regulation provides: Paragraph 1 [marks that may not be registered] shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community Appeal No. R 1509/2008-2, filed Oct. 20, Case R 495/2005-G (OHIM Grand Board of Appeal, July 6, 2006).

162 Vol. 101 TMR 959 The Board observed that the principle of legitimate expectations does not bind the Office to issue decisions following an incorrect one. Although consistency in decision-making is highly desirable, the legality of decisions of the Office must be assessed purely on the basis of the [CTM] Regulation and not on the basis of previous decisions taken by the Office or by the Boards.... Consequently, the Board dismissed Couture s appeal. 341 Couture has appealed the Board s decision before the General Court. 342 COURT OF JUSTICE OF THE EUROPEAN UNION I.E. Bad Faith Defendant Schlick s Benelux trade mark REIFEN was registered for cleaning products in Classes 3 and 35. Plaintiff Internetportal held the registration for the Swedish trade mark R&E&I&F&E&N for safety belts in Class 9. ( Reifen means tyres in German). Intending to use the domain reifen.eu to operate an Internet portal for selling tyres, Internetportal registered the domain name reifen.eu on the basis of its prior R&E&I&F&E&N mark. The domain name was revoked by the Czech Republic Arbitration Court for being registered in bad faith after Schlicht challenged the registration. Internetportal had relied on Article 11 of Regulation 874/2004 (the Regulation ), which provides for special characters (e.g., ampersands) to be removed when converting marks into.eu domain names. Internetportal subsequently appealed this decision to the Austrian national courts pursuant to its rights of appeal under Article 22 of the Regulation. The Czech Republic Arbitration Court held that Internetportal had acted in bad faith when applying to register the domain name reifen.eu and transferred the domain name to Schlicht. Internetportal then brought an action to challenge this decision before the Austrian courts, which was dismissed at first instance and on appeal. Internetportal subsequently appealed on a point of law before the Austrian Supreme Court, which then requested a preliminary ruling concerning Article 21(1) 343 and 21(3) 344 of the Regulation from the ECJ Case R 1509/ (OHIM Second Board of Appeal, Mar. 5, 2010), available at Appeal No. T-232/10, filed May 21, Article 21(1) of Regulation 874/2004 provides: A registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that name is identical or confusingly similar to a name in respect of which a right is recognised or established by national and/or Community law, such as the rights mentioned in Article 10(1), and where it:

163 960 Vol. 101 TMR Drawing an analogy to its ruling in the decision in Chocoladefabriken Lindt & Sprüngli AG v. Franz Hauswirth GmbH (Case C-529/07), the European Court of Justice ( ECJ, currently the Court of Justice of the European Union ( CJEU )) stated that in order to assess bad faith, national courts have to conduct an overall assessment of the case and take into consideration all the relevant factors specific to a case. 345 Bad faith can be established notwithstanding that the particular circumstances of a case do not fall within the meaning of bad faith set out in Article 21(3) of the Regulation. Therefore, it is necessary to look at the conditions under which Internetportal (1) had obtained the Swedish trade mark registrations and (2) registered the.eu domain name. In relation to the first point, national courts must consider, inter alia, the intention of Internetportal not to use the Swedish mark for the goods/services for which it was registered and the fact that it had registered 33 other generic trade marks. As to the registration of the domain name, national courts should consider Internetportal s abusive use of special characters to take unfair advantage of the transcription rules in Article 11 of the Regulation and that it had also applied for a total of 133.eu domain names containing special characters that correspond to generic terms..eu domain name registrations can be revoked on the basis of bad faith for reasons other than those specifically stated in Article 21(3) of Regulation 874/2004. To assess bad faith, national courts must conduct an overall assessment of the case and take into consideration all of the relevant factors specific to a case. Applicants should not be able to circumvent the.eu domain name registration rules by using trickery and thereby taking unfair advantage over holders of prior national or Community rights. I.H. Exhaustion of Trademark Rights The claimant Coty Prestige Lancaster Group GmbH was a perfume manufacturer that marketed its perfumery goods using a selective distribution network of authorised specialist dealers. It (a) has been registered by its holder without rights or legitimate interest in the name; or (b) has been registered or is being used in bad faith Article 21(3) of Regulation 874/2004 sets out a list of what may constitute bad faith for the purposes of Article 21(1)(b) including, inter alia, that the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor or for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name in respect of which a right is recognised or established by national and/or Community law or to a public body Internetportal und Marketing GmbH v. Richard Schlicht, Case C-569/08 (CJEU, June 3, 2010), available at J0569:EN:HTML.

164 Vol. 101 TMR 961 made testers (in special packaging marked Demonstration and Not For Sale ) available to its authorised specialist dealers under agreements expressly prohibiting their sale and retaining the claimant s ownership of them. The defendant, who was not an authorised specialist dealer, had obtained claimant s perfume testers from one of the claimant s authorised specialist dealers in Singapore, who had been supplying the testers to a retailer in Germany. The claimant brought an action for trade mark infringement to prevent the testers from being offered for sale on the grounds that they had been put on the market for the first time in the European Community or the European Economic Area (EEA) without its consent. The Landgericht Nürnberg-Fürth had dismissed the claimant s application for a prohibitory injunction, concluding that the claimant s rights had been exhausted when it supplied the testers to specialist dealers authorised to use all of the perfume contained within the testers. On appeal, the Oberlandesgericht Nürnberg submitted a reference to the CJEU for a ruling on whether perfume testers for advertising purposes only (and packaged as such) were put on the market within the meaning of Article 7(1) of First Council Directive 89/104/EEC 346 and Article 13(1) of Council Regulation (EC) No. 40/ on the Community Trade Mark, when they were made available to contractually bound intermediaries without any transfer of ownership and with a no-sale proviso, and where the goods were presented in different packaging from that of saleable versions of the goods usually put on the market. The CJEU considered that in the present circumstances trade mark rights could be considered to have been exhausted only if the national court concluded that the proprietor expressly or impliedly consented to the goods being put on the market. 348 In the absence of express consent, implied consent could be inferred from the facts and circumstances surrounding the placing of the goods on the market. Relevant facts and circumstances in this case were the contractual conditions prohibiting sale and retaining the claimant s ownership of the testers, along with the packaging of the testers, which differed in appearance from that of the saleable products by carrying the labels Demonstration and Not For Sale. The implications of the present facts and circumstances were for the national court to assess, but the CJEU did consider that, in the absence of evidence to the contrary, the presentation of the Coty Prestige Lancaster Group GmbH v. Simex Trading AG, Case C-127/09 (CJEU, June 3, 2010), available at :209:0008:0009:en:pdf.

165 962 Vol. 101 TMR perfume testers in packaging marked Demonstration and Not For Sale was in itself a decisive indication that the claimant had not consented to the goods being put on the market. The CJEU s judgment is of particular importance in having recognized that the mere fact of clearly labelling goods as not for sale is a satisfactory reflection of the trade mark owner s intention, and a compelling indication that in marketing or otherwise parting with possession of such goods the trade mark owner has not itself put, nor consented to putting, such goods on the market, whether inside or outside the Community or EEA, in the sense required by the exhaustion of rights provisions. This will be a welcome decision for rights owners in the perfumery industry, whose saleable and tester products differ only in the manner of their packaging. I.H.1. Implied Consent Diesel SpA owns the trade mark DIESEL in the Benelux countries. Distributions Italian Fashion SA ( Difsa ) was the distributor of goods bearing the DIESEL mark in Spain, Portugal, and Andorra (the Iberian Peninsula ). In September 1994, Difsa entered into an exclusive distribution agreement with Flexi Casual SA ( Flexi ), under which Flexi was granted exclusive selling rights in the Iberian Peninsula for certain goods, including shoes, bearing the DIESEL mark. From November 1994, Flexi was permitted to conduct market tests by manufacturing and distributing shoes of its own design to determine market requirements with a view to offering those goods to Diesel for distribution or procuring the assignment of the manufacturing licence. In October 1997, Flexi licensed Cosmos World SL ( Cosmos ) to make and sell shoes and other goods bearing the DIESEL mark, without express approval from Diesel or Difsa. In 1999, Makro offered for sale shoes bearing the DIESEL mark. The shoes had been indirectly purchased from Cosmos. Diesel claimed it had never consented to the marketing of the shoes by Cosmos and sued Makro for trade mark and copyright infringement. At first instance, the Rechtbank te Amsterdam granted most of Diesel s application in a judgment of December 29, That decision was upheld by the Gerechtshof te Amsterdam on August 17, Makro appealed on a point of law to the Dutch Supreme Court, claiming, inter alia, that the rights conferred by the DIESEL mark were exhausted because Diesel had consented to the marketing of the shoes manufactured by Cosmos within the EEA within the meaning of Article 7(1) of the Trade Marks Directive 349 ( TMD ) NOT.

166 Vol. 101 TMR 963 The key issue was whether the Davidoff 350 criteria could be applied to determine whether Diesel had given implied consent. In Davidoff, the goods in question had been marketed for the first time outside the EEA. Here, however, the goods were first marketed directly within the EEA. The Dutch Supreme Court referred the following question to the CJEU for a preliminary ruling: In determining whether implied consent has been granted under Article 7(1), are the same criteria that are applied in cases where goods have previously been placed on the market outside the EEA by the trade mark proprietor or with this consent also applied in cases where the goods in question have first been placed on the market within the EEA by someone other than the trade mark proprietor and without his express consent? The CJEU ruled that the purely factual question of whether the goods in question were first marketed within the EEA or outside thereof is not in itself relevant for the purposes of applying Article 7(1) of the TMD. Limiting the possibility of inferring implied consent to cases in which first marketing of the goods occurred outside the EEA would not be in accordance with either the wording or objectives of Article 7(1) of the TMD. 351 The CJEU commented that consent, which was tantamount to the proprietor s renunciation of exclusive rights in respect of a trade mark, must be expressed so that an intention to renounce those rights is unequivocally demonstrated. Although such an intention would normally be gathered from an express statement, implied consent of the proprietor could also be inferred from certain facts and circumstances. The guidance set out in Davidoff is not limited to the particular factual context of that case and can have general application. Accordingly, applying Davidoff, the CJEU ruled that Article 7(1) of the TMD must be interpreted as meaning that the consent of a trade mark proprietor to the marketing of goods bearing that mark carried out directly in the EEA by a third party having no economic link to the proprietor may be implied in so far as such consent is to be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market in that area which... unequivocally demonstrate that the proprietor has renounced his exclusive rights. 352 National courts must make this determination in each case Zino Davidoff SA v. A & G Imports Ltd Levi Strauss & Co and Another v. Tesco Stores Ltd and Another Levi Strauss & Co and Another v. Costco Wholesale UK Ltd, Joined Cases C-414/99 to 416/99, [2001] ECR I-8691 (ECJ, Nov. 20, 2001) Makro Zelfbedieningsgroothandel CV v. Diesel SpA, Case C-324/08, [2009] ECR I (CJEU, Oct. 15, 2009), available at CTM/case-law/jj080324_en.pdf Id. 35.

167 964 Vol. 101 TMR The CJEU affirmed that national courts should apply the guidance set out in Davidoff when considering whether implied consent has been granted. In doing so, it clarified that this analysis does not hinge on the location in which the goods in question were first marketed. III.A.6.d. Sponsored Advertising/Keywords Three respondents filed for a preliminary ruling from the Cour de cassation ( French Court of Cassation ), concerning the interpretation of Articles 5(1) and (2) of Directive 89/104 ( Trade Marks Directive ), Article 9(1) of Council Regulation 40/94 ( CTM Regulation ) and Article 14 of Directive 2003/31 ( E-Commerce Directive ), where an Internet referencing service provider makes available for use, by advertisers, keywords identical or similar to third-party registered trade marks. 353 The first respondent s Community Trade Mark, registered in Classes 14, 18, 25, and 38 for, inter alia, leather goods and clothing, consists of the word mark VUITTON. The first respondent s French national trade marks, registered in all classes, consist of the word mark LOUIS VUITTON, and the device mark LV 354 (image below), respectively. The second respondent s French national trade marks include the word mark LA BOURSE DES VOLS, registered in Classes 9, 16, 38, 39, 41, 42, 43, and the word mark LA BOURSE DES VOYAGES, registered in Classes 9, 38, 41, 42 for, inter alia, travel-arrangement services. The third respondent s French national trade mark, registered in Classes 9, 16, 35, 38, 39, 41, 42, 43, and 45 for, inter alia, matrimonial agency services, consists of the word mark EUROCHALLENGES. Google operates an Internet search engine and a paid Internet referencing service known as AdWords. The AdWords referencing service allows advertisers to purchase one or more keywords from Google. In return, a link to the advertisers website and short commercial message are displayed to Internet users in response to the entry of those keywords into Google s Internet search engine First Council Directive 89/104/EEC of Dec. 21, 1988; and the equivalent provision applicable to Community Trade Marks under Article 9(1) of Council Regulation (EC) No. 40/94 of Dec. 20, 1993; Directive 2000/31/EC of June 8, French National Trade Mark No , registered in all classes in the name of Louis Vuitton Malletier, SA.

168 Vol. 101 TMR 965 The respondents brought three separate infringement actions against Google in France to obtain a declaration that Google had infringed their registered trade marks. In each case it was established that Google had offered use of keywords that corresponded to the respondents trade marks and that Google would create and favourably display, on the basis of those keywords, advertising links to websites that offered counterfeit goods to those of the first respondent, or competitor goods or services to those of the second and third respondents. Google was found to have infringed the first respondent s trade marks by a judgment of February 4, 2005, of the Tribunal de grande instance de Paris (Regional Court, Paris), and subsequently, on appeal, by judgment of June 28, 2006, of the Cour d appel de Paris (Court of Appeal, Paris). By judgment of October 13, 2003, the Tribunal de grande instance de Nanterre (Regional Court, Nanterre) found Google to have infringed the second respondent s trade marks and ordered it to compensate the second respondent for loss suffered. Google appealed to the Cour d appel de Versailles (Court of Appeal, Versailles). The Court ruled, by judgment of March 10, 2005, that Google had acted as an accessory to infringement and upheld the judgment of the Regional Court. Google was found to have infringed the third respondent s trade marks by a judgment of December 14, 2004, of the Regional Court, Nanterre, and subsequently, on appeal, by judgment of March 23, 2006, of the Court of Appeal, Versailles. In each case Google appealed the decision on a point of law to the French Court of Cassation. Before reaching its decision, the French Court of Cassation referred a series of questions to the Court of Justice for a preliminary ruling. 355 The Court of Justice held that an Internet referencing service provider that stores, as a keyword, a sign identical with a trade 355. Case C-236/08: jurcdj=jurcdj&jurtpi=jurtpi&jurtfp=jurtfp&numaff=&nomusuel=google%20france&docnodec ision=docnodecision&allcommjo=allcommjo&affint=affint&affclose=affclose&alldocrec=alldo crec&docor=docor&docav=docav&docsom=docsom&docinf=docinf&alldocnorec=alldocnorec& docnoor=docnoor&docppoag=docppoag&radtypeord=on&newform=newform&docj=docj&doco p=docop&docnoj=docnoj&typeord=all&domaine=&mots=&resmax=100&submit=recherch er. Case C-237/08: j=jurcdj&jurtpi=jurtpi&jurtfp=jurtfp&numaff=&nomusuel=google%20france&docnodecision =docnodecision&allcommjo=allcommjo&affint=affint&affclose=affclose&alldocrec=alldocrec &docor=docor&docav=docav&docsom=docsom&docinf=docinf&alldocnorec=alldocnorec&doc noor=docnoor&docppoag=docppoag&radtypeord=on&newform=newform&docj=docj&docop= docop&docnoj=docnoj&typeord=all&domaine=&mots=&resmax=100&submit=rechercher. Case C-238/08: urcdj&jurtpi=jurtpi&jurtfp=jurtfp&numaff=&nomusuel=google%20france&docnodecision=d ocnodecision&allcommjo=allcommjo&affint=affint&affclose=affclose&alldocrec=alldocrec&d ocor=docor&docav=docav&docsom=docsom&docinf=docinf&alldocnorec=alldocnorec&docnoo r=docnoor&docppoag=docppoag&radtypeord=on&newform=newform&docj=docj&docop=doc op&docnoj=docnoj&typeord=all&domaine=&mots=&resmax=100&submit=rechercher.

169 966 Vol. 101 TMR mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Articles 5(1) and (2) of the TMD or of Article 9(1) of the Community Trade Mark Regulation. 356 The use, by an advertiser, of a third party trade mark as a keyword does, however, constitute use of a sign in the course of trade and in relation to goods and services within the meaning of Article 5(1) of the TMD and Article 9(1) of the Community Trade Mark Regulation. The proprietor of a trade mark is entitled to prohibit such use where the advertisement does not enable average Internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to in the advertisement originate from the trade mark owner or an undertaking economically linked to the trade mark owner. Article 14 of the E-Commerce Directive (referred to as the hosting defence ) applies to an Internet referencing service provider in the case where the service provider has not played the kind of active role that would give it knowledge of, or control over, the data stored on behalf of the advertiser. If it has not played such a role, the service provider cannot be held liable for the data that it has stored at the request of the advertiser, unless, having obtained knowledge of the unlawful nature of the data held or of the advertiser s activities, it failed to act expeditiously to remove or to disable access to the data concerned. This is the first decision of the Court of Justice in a series of references for preliminary rulings concerning the use of keywords. The decision provides some long-awaited guidance on the conditions under which the provider of an Internet referencing service (which makes available keywords to advertisers and stores information on behalf of them) does not incur liability. Trade mark owners can take some comfort from the ruling that the use of keywords by advertisers can amount to trade mark infringement. The question as to whether the trade mark owner can prove infringement on the part of the advertiser will remain a matter for the national courts to decide. BergSpechte owns the figurative and word mark BERGSPECTHE OUTDOOR-REISEN UND ALPINSCHULE EDI KOBLMÜLLER registered in Austria in Classes 25 (in particular, clothing), 39 (in particular, travel arrangement services) and 41 (teaching, training, entertainment and sporting activities) (the Trade Mark ), which it uses predominantly for its travel arrangement services and outdoor tours. trekking.at also provides 356. Google France SARL and Google Inc. v. Louis Vuitton Malletier SA, Google France SARL v. Viaticum SA and Luteciel SARL, and Google France SARL v. Centre national de recherche en relations humaines (CNRRH) SARL and Pierre-Alexis Thonet, Bruno Raboin and Tiger SARL, Joined Cases C-236/08, C-237/08 and C-238/08 (ECJ, Mar. 23, 2010).

170 Vol. 101 TMR 967 outdoor tours. trekking.at reserved the keywords Bergspechte and Edi Koblmüller from the Google search engine, such that when an Internet user entered those terms into the search engine between August and September 2007, advertisements for trekking.at appeared under the headings Trekking- und Naturreisen ( Trekking and nature tours ) and Äthiopien mit dem Bike ( Ethiopia by bike ). BergSpechte claimed the reservation of signs identical or similar to its Trade Mark by trekking.at infringed its exclusive rights pursuant to national provisions implementing Article 5(1) of the TMD. 357 At first instance, the Landesgericht Wels (Wels Regional Court) granted BergSpechte an interim injunction restraining trekking.at from directing search engine users to its own home page by a link on the search engine results pages containing lists of hits obtained using the terms BergSpechte and/or Edi Koblmüller. The Oberlandesgericht Linz (Linz Higher Regional Court) varied the interim injunction in part. Both BergSpechte and trekking.at appealed to the Austrian Supreme Court. Before reaching its decision, the Austrian Supreme Court referred the following questions to the CJEU for a ruling: 1. Must Article 5(1) of the TMD be interpreted as meaning that a trade mark is used in a manner reserved for the trade mark proprietor if the trade mark or a similar sign (such as the word component of a word and figurative trade mark) is reserved as a keyword with a search engine operator and advertising for identical or similar goods or services therefore appears on the screen when the trade mark of the similar sign is entered as a search term? 2. If the answer to question 1 is yes, does it make a difference if the advertisement appears as a sponsored link or as part of the natural list of hits? NOT.

171 968 Vol. 101 TMR Referring to the decision in Google France and Google, 358 the CJEU held that the reservation of keywords with an Internet referencing service is use in the course of trade within the meaning of Article 5(1) of the TMD, even where the keyword does not appear in the advertisement itself. 359 However, in order for such use to amount to infringement, use of an identical sign for identical goods or services must be likely to have an adverse effect on one of the functions of the trade mark, namely the guarantee of origin or the advertising, communication, or investment functions. 360 Use of an identical or similar sign for identical or similar goods or services must cause a likelihood of confusion in order to amount to infringement. When considering whether the signs used were identical or similar, the CJEU (following LTJ Diffusion 361 ) said a sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer. The CJEU thought Edi Koblmüller could not be considered to be identical to the Trade Mark because it reproduced only a small part of it. However, BergSpechte could be regarded as containing differences so insignificant that they may go unnoticed by an average consumer. Whether these signs were similar or, in the case of BergSpechte, identical to the Trade Mark was a question for the national court to decide. Following the ruling in Google France and Google, 362 the CJEU held that the use of an identical sign to a registered trade mark in a referencing service such as Google s Adwords is not likely to have an adverse effect on the advertising function of the trade mark. However, in the same case, it also held that whether the guarantee of origin function is affected depends, in particular, on the manner in which the advertisement is presented. The origin function will be adversely affected if it does not enable the normally informed and reasonably attentive Internet user to ascertain, without difficulty, that the goods or services referred to by the advertisement originated from a third party rather than 358. Cases C-236/08 to C-238/08 [2010] ECR I-0000, at 51 and 52 and 65 to 73, available at en.pdf Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v. Günter Guni and trekking.at Reisen GmbH, Case C-278/08 (CJEU, Mar. 25, 2010), available at L Oreal and Others v. Bellure NV and Others, Case C-487/07 [2009] ECR I-0000 (ECJ, June 18, 2009) at 58, available at documents/ctm/case-law/jj070487_en.pdf. See also Google France, Case C-291/00 [2003] ECR I-2799, at 54 aspects/pdf/jj pdf Id. 81.

172 Vol. 101 TMR 969 from the proprietor of the trade mark or an undertaking economically connected with it. 363 Whether this is the case is a question for the national court to decide. Equally, when considering a similar sign for identical or similar goods or services under Article 5(1)(b) of the TMD, it is for the national court to decide whether, having found that use of the sign is liable to affect the origin function of the mark, such use causes a likelihood of confusion. In these circumstances, the CJEU did not think it necessary to consider the second question because this case only concerned sponsored links and not natural search results. The judgment is largely unsurprising as the CJEU has followed recent rulings on Internet referencing services, particularly the Google France reference. The CJEU has, however, provided some helpful guidance for national courts considering the tricky questions posed by the use of keywords. Hopefully, this should stem the flow of references on this topic to the CJEU and provide some certainty to Internet reference services and purchasers of keywords. It will also give trade mark proprietors a better indication of what must be proven in claims for trade mark infringement relating to the use of keywords. The Hoge Raad der Nederlanden (Supreme Court of the Netherlands) issued a preliminary ruling concerning the interpretation of Articles 5 to 7 of Directive 89/ in the context of the use, by an advertiser, of a third party trade mark as keywords in an Internet referencing service. The plaintiffs in the case are the owner and licensee of a Benelux trade mark registration for the word mark PORTAKABIN covering goods in Classes 6 (metal buildings, parts and building materials) and 19 (non-metal buildings, parts and building materials). The defendant sells and leases new and used mobile buildings, including secondhand units manufactured and put on the market in the EEA by the plaintiffs. The defendant chose the keywords PORTAKABIN, PORTOKABIN, PORTACABIN and PORTOCABIN as keywords for use in Google Adwords. At first instance, the voorzieningenrechter te Amsterdam (the judge hearing the application) rejected the plaintiffs application in 363. Id. 83 and First Council Directive 89/104/EEC of Dec. 21, 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p.1), as amended by the Agreement on the European Economic Area (EEA) of May 2, 1992 (OJ 1994 L1, p.3) Directive 89/104 was repealed by Directive 2008/95/EC of the European Parliament and of the Council of Oct. 22, 2008 to approximate the laws of the Member States relating to trade marks (Codified version) (OJ 2008 L 299, p.25) which entered into force on Nov. 28. However, the dispute was governed by Directive 89/104 due to the date on which the facts occurred.

173 970 Vol. 101 TMR its decision of February 6, 2006, holding that the defendant was neither using the word portakabin to distinguish goods, nor gaining an unfair advantage through its use of portakabin, as the word was being used to direct Internet users to its website on which it sold used Portakabins. On appeal, by judgment of December 14, 2006, the Gerechtshof te Amsterdam (the Amsterdam Regional Court of Appeal) set aside the first instance decision and prohibited the defendant from using advertising that contained the words used Portakabins and, in the event that it used the keyword portakabin or variations of portakabin, from providing a link leading directly to pages of its website other than pages on which units manufactured by the plaintiffs were offered for sale. However, the court held that use of the keyword portakabin and variations of portakabin did not constitute use in relation to goods or services within the meaning of the legislation transposing Article 5(1) of Directive 89/104. Portakabin appealed to Hoge Raad der Nedelanded (the Supreme Court of the Netherlands) and the Supreme Court decided to refer a number of questions to the CJEU for preliminary ruling. The CJEU followed its decision in the Google cases 366 and found that the use, by an advertiser, of a third party s trade mark as a keyword was use in the course of trade and use in relation to goods and services within the meaning of Article 5(1) of Directive 89/ A trade mark proprietor could prohibit such use where the advertisement did not enable average Internet users to ascertain, without difficulty, whether the goods or services referred to by the advertisement originated from the proprietor of the trade mark or an undertaking economically linked to it or, on the contrary, originated from a third party. It would make no difference whether the advertisement itself contained the offer for sale of the goods and services in question, or a link to the advertiser s website on which the offer for sale appears. It would also make no difference if the keyword chosen by the advertiser was a misspelling of the trade mark in question, although in such 366. Joined Cases C-236/08 to C-238/08 Google France and Google [2010] ECR I Article 5(1) of Directive 89/104 provides: 1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.

174 Vol. 101 TMR 971 circumstances there would be a need for a likelihood of confusion in accordance with Article 5(1)(b) of Directive 89/104. If Article 5 did apply, the CJEU considered that the advertiser would rarely be able to rely on the exception provided by Article 6 of Directive 89/104, 368 as it would be very difficult to meet the honest practises requirement if the advertiser had already fallen foul of the use provision. However, this would be for the national courts to determine. The CJEU also found that, in accordance with Article 7 of Directive 89/104, 369 a trade mark proprietor could not prohibit the use, by the advertiser, of its mark as a keyword to advertise genuine secondhand goods, unless there was a legitimate reason that justified its doing so, such as where the use of the sign gave the impression of an economic link or was seriously detrimental to the reputation of the mark. The CJEU set out guidance to be followed by the national court in determining whether a legitimate reason exists in the case before it. In summary: (i) The national court cannot find that there is a legitimate reason merely on the basis that the advertiser uses another person s trade mark with additional wording to indicate that the goods are being resold (e.g., used or secondhand ). (ii) The national court is obliged to find that there is a legitimate reason where the reseller, without the trade mark proprietor s consent, has removed reference to the mark from the goods in question, and replaced the label with its own mark. (iii) The national court is obliged to find that a specialist reseller of secondhand goods under another person s trade mark cannot be prohibited from using that mark to 368. The relevant parts of Article 6(1) of Directive 89/104 provide that: 1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade,... (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services;... provided he uses them in accordance with honest practices in industrial or commercial matters Article 7 of Directive 89/104 provides that: 1. The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. 2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

175 972 Vol. 101 TMR advertise its activities, which also include the sale of other secondhand goods, unless the sale of those other goods risks seriously damaging the image that the trade mark proprietor has created for its mark. 370 This decision is relatively unsurprising because it follows the CJEU s decision in the earlier Google cases. 371 It provides some further guidance about the liability of advertisers for trade mark infringement and the application of Articles 6 and 7 of Directive 89/104 in cases involving the use of third party trade marks as keywords in an Internet referencing service. CZECH REPUBLIC I.C. Distinctiveness AAA RADIOTAXI s.r.o. applied to register a yellow color (RAL 1021) as a mark for services in Class 39, described as taxi services, automobile transportation. The Industrial Property Office refused registration of the applied-for trademark on the ground of lack of distinctive capacity. An Appeals Panel of the Industrial Property Office confirmed the first instance decision. 372 The Panel held that the materials submitted as proof of use of the subject trademark in connection with taxi services were not acceptable, as all the submitted materials demonstrated use of the applied-for mark in connection with the additional word elements AAA RADIOTAXI. The Panel concluded that these word elements served as a distinctive element and therefore prevented the color mark from acquiring distinctive capacity. This case demonstrates how the Industrial Property Office considers the question of acquired distinctive capacity of signs with low inherent distinctive capacity that are used in combination with other, more distinctive elements. I.D.1. Similarity of Marks Petr Zantovský sought registration of the trademark RADIO ETHNO 90,7 FM, for services in Class 38, described as licensed terrestrial radio broadcasting (below, illustration at left). LIMEMEDIA a.s. filed an opposition against the applied-for mark based on its trademark RADIO ETNO, registered for 370. Portakabin Limited and another v. Primakabin BV, Case C-558/08 (CJEU, July 8, 2010) Cases C-236/08 to C-238/08 [2010] ECR I-0000, at 51 and 52 and 65 to 73, available at en.pdf Case No. O (Appeals Panel, Industrial Property Office, Jan. 29, 2010).

176 Vol. 101 TMR 973 services in Class 38, described as transmission of messages and visual information through computers (below, illustration at right). Applicant s mark Opponent s mark In its first instance decision, the Industrial Property Office refused the opposition of LIMEMEDIA a.s. because of lack of similarity between the compared marks. An Appeals Panel of the Industrial Property Office confirmed the first instance decision in its entirety. 373 The Panel held that the different graphic design of the compared marks and the presence of the additional element 90,7 FM was sufficient for distinguishing between the marks. The Appeals Panel refused the argument of the opponent that because both marks concerned services of radio broadcasting, the phonetic point of view should prevail. This decision demonstrates the attitude of the Industrial Property Office concerning the question of assessment of likelihood of confusion of conflicting marks in connection with specific goods and services. ANEKTA, spol. s r.o. filed a trademark application for DD, 374 seeking registration for goods in Class 18, described as goods made of leather (below, illustration at left). Zino Davidoff SA opposed the application based on similarity of marks and goods. Specifically, the opponent cited its figurative trademark, 375 registered for goods in Class 18, described as Leather and imitations of leather; animal skins, hides; trunks and suitcases; attaché cases; handbags; wallets; leather purses; document holders; key cases, cases for credit cards (leatherware); umbrellas, parasols and walking sticks; whips and saddlery (below, illustration at right). Applicant s mark Opponent s mark 373. Case No. O (Appeals Panel, Industrial Property Office, Mar. 31, 2010) Trademark No Trademark No

177 974 Vol. 101 TMR The first instance decision of the Industrial Property Office refused the opposition of Zino Davidoff SA based on lack of similarity between the compared marks. An Appeals Panel of the Industrial Property Office confirmed the first instance decision. 376 The Panel was of the view that the opposing mark did not consist of two letters DD and was merely a fantasy graphic device. This ruling is an example of the decision-making practice of the Czech Industrial Property Office concerning the likelihood of confusion of combined and figurative trademarks. I.F. Famous and Well-Known Marks Duracell Batteries BVBA appealed the decision of the Czech Industrial Property Office that refused its opposition against the registration by Kaufland Česká republika, v.o.s. of the combined trademark CRAZYWOLF ENERGY DRINK 377 for goods in Class 32 (below, illustration at left). Duracell s opposition was based on its prior rights to Czech national 378 and Community 379 registrations in Class 9 for figurative three-dimensional trademarks depicting a battery of black and brass color and claiming a reputation in the Czech Republic and the European Community, respectively (below, illustrations at right). Opposed mark Duracell s marks The first instance decision refused the opposition, finding lack of likelihood of confusion between the prior opposing trademarks and the trademark application, although the first instance body acknowledged reputation of the opposing Community trade mark (CTM). The Appeals Panel of the Czech Industrial Property Office overruled the first instance decision and found likelihood of confusion between the compared marks, particularly from the 376. Case No. O (Appeals Panel, Industrial Property Office, Apr. 16, 2010) Application No , filed Oct. 27, Trademark No , registered May 26, CTM No , registered Feb. 21, 2000.

178 Vol. 101 TMR 975 visual and phonetic point of view. 380 Moreover, the Appeals Panel referred in obiter dictum to the European Court of Justice s (ECJ s) decision in Adidas v. Fitnessworld Ltd, 381 according to which the grant of protection to a CTM with a reputation is not dependent on the finding of a likelihood of confusion and that it is sufficient that the target consumer public associates the opposing trademark with a reputation with the contested mark. The reference to the ECJ s decision in Adidas and its interpretation is a significant diversion from the Industrial Property Office s prevailing decision-making practice, which has required the establishment of likelihood of confusion as an obligatory condition for granting protection to prior trademarks, even if the reputation of the earlier trademarks has been proven. DENMARK I.D.1. Similarity of Marks When a defendant has been enjoined from using a mark, that defendant has a duty to change the name of its mark to a nonsimilar mark, as can be seen from the case of SALT v. ZALT. The plaintiff s SALT bar and restaurant opened in 2003; since that time, the plaintiff had enjoyed unregistered rights. In addition, the plaintiff had the word mark SALT registered for, among other things, bar and restaurant services in Class 43, and this registration took effect in April In 2009, the defendant opened a night club under the name KLUB SALT; the defendant used that name until the plaintiff sued and enjoined that use. Accordingly, the defendant changed the name of the night club to Klub Zalt. The Maritime and Commercial Court in Copenhagen stated that although the plaintiff s restaurant and bar and the defendant s nightclub, respectively, might target different customer segments, they both operated in the bar business. There was thus similarity of services. The fact that the defendant changed the spelling from SALT to ZALT did not eliminate the possible risk of confusion nor the possible assumption that a likelihood of association existed between the two parties. The court further found that the violation was deliberate or at least negligent and therefore awarded the plaintiff DKK 300,000 (about US $60,000) in damages and compensation. Furthermore, the 380. File No. O (Appeals Panel, Industrial Property Office, Apr. 21, 2010) Adidas-Salomon AG & Adidas Benelux BV v. Fitnessworld Trading Ltd, Case C-408/01 (ECJ, Oct. 23, 2003).

179 976 Vol. 101 TMR defendant was found liable for the legal costs of DKK 100,000 (about US $20,000). 382 I.D.2. Similarity of Goods or Services Danish Courts demonstrated the ability to find similarity of goods/services even across different classes. The plaintiff, Broadcom Corporation, had a Community trade mark (CTM) registration for the word BROADCOM for computer network goods in Class 9 and computer network services in Class 42. The defendants registered BROADCOM for telecommunications in Class 38 and used BROADCOM as a company name for telecommunications, including data, Internet, and telecommunication services to business and private individuals. The plaintiff sought an injunction and damages. The Maritime and Commercial Court found that the networkrelated goods/services were complementary to the telecommunications services and enjoined the defendant s use. However, the claim for compensation and damages was dismissed. The defendants appealed to the Danish Supreme Court, claiming that there was no infringement. The plaintiff counter-appealed for increased damages. In the meantime, the defendant sought to cancel the plaintiff s CTM registration for nonuse. Although a good deal of the plaintiff s CTM registration was lost in Classes 9 and 42, enough remained for the Supreme Court to uphold the injunction. Regarding the claim for damages and compensation, the Supreme Court found, based on the defendant s financial statements, that the defendant should pay damages and compensation of DKK 125,000 (about US $25,000). 383 There is no explanation in the opinion as to why the defendant sought a separate cancellation of the plaintiff s CTM before the Office for Harmonization in the Internal Market (OHIM) rather than directly before the Maritime and Commercial Court in Copenhagen (the Danish CTM Court) pursuant to Article 51(1) of the CTM Regulation. 384 Similarity of services in different classes was also at issue in ORIENTEXPRESSEN. The opponent had registered the word mark ORIENT-EXPRESS in Class 42 for hotels, hotel reservations, hotel management. A Danish individual, A. Møller, sought registration of a figurative mark containing the word ORIENTEXPRESSEN in Class 43 for catering CAH A/S v. Klub Salt ApS Kenneth Christelis, Case No. V (Copenhagen Maritime and Commercial Court, May 26, 2010) (unpublished) Broadcom Corp. v. Broadcom ApS and Broadcom Bolignet ApS, Ugeskrift for Retsvaesen H (Danish Supreme Court, Oct. 19, 2009) Council Regulation (EC) No. 207/2009 of Feb. 26, 2009 on the CTM.

180 Vol. 101 TMR 977 The Danish Patent and Trademark Office upheld the opposition, stating that the protection of the opponent s mark should be extended to cover the applicant s services. It reasoned that hotel activity also includes catering. This decision was affirmed by the Danish Board of Patent Appeals, the Maritime and Commercial Court of Copenhagen, and the Danish Supreme Court. 385 I.F. Famous and Well-Known Marks Danish courts usually have no difficulty protecting well-known marks but typically award low damages. The plaintiff was a major Danish chain of supermarkets with a yellow and black trade dress featuring the word NETTO and a Scottish terrier logo (below, illustration at top). The defendant owned a painting firm; it adopted the name NET2 and used a yellow and black trade dress featuring a combination of painting tools (ladder, brushes, pail, etc.) (below, illustration at bottom) that looked remarkably like the plaintiff s Scottish terrier. The Maritime and Commercial Court in Copenhagen started out by taking judicial notice that the plaintiff s trademark was undoubtedly well known. The court found that the defendant s logo, although consisting of painting tools, looked like the plaintiff s NETTO-and-Scottish-terrier logo. The court noted that the defendant s logo visually created an association with or an assumption that a connection existed between the two parties, which was enhanced by the name NET2 and the use of the yellow color. Therefore, the defendant s use of the particular logo was seen as taking unfair advantage of the plaintiff s trademark and was also found to be detrimental to the repute of the plaintiff s trademark. The court enjoined the use and awarded the plaintiff 385. A. Møller v/anita Paludan Møller v. Danish Board of Appeal for Patents and Trademarks (ORIENTEXPRESSEN), Ugeskrift for Retsvaesen H (Danish Supreme Court, Oct. 19, 2009).

181 978 Vol. 101 TMR DKK 10,000 (about US $2,000) in damages for market interference and compensation for use of the logo. 386 II.E. Examination and Opposition In Danske Spil A/S v. Lotto24.dk ApS, the Danish Supreme Court considered whether the Danish State Lottery had acquired exclusive rights in the word LOTTO in relation to online gambling. The defendant, Lotto24.dk ApS, filed a trademark application for registration of a figurative mark consisting of the text Lotto24 and a distinctive logo. The plaintiff lodged an opposition based on several figurative mark registrations comprising the word LOTTO, and claimed rights to the word LOTTO based on acquired distinctiveness. The Danish Patent and Trademark Office as well as the Danish Board of Appeal found that the plaintiff had acquired distinctiveness based on use. The Maritime and Commercial Court in Copenhagen further upheld the opposition, declaring that the plaintiff s rights were based on use, supported by a market survey and three industry and institutional declarations, despite the fact that LOTTO was a dictionary word. The Danish Supreme Court reversed, first stating that the requirements for proving that a common word has changed character into a trademark are very strict. The Court scrutinized the marketing survey and examined additional dictionaries, other reference works, and other domain names and found that in the mind of the general public, the word LOTTO had not become synonymous with the plaintiff s trademark. Therefore the plaintiff had not obtained exclusive rights to the word mark LOTTO through usage, and the registration of the defendant s figurative mark containing the text Lotto24 was therefore upheld. 387 III.A.1.b. Tarnishment The well-known Copenhagen amusement park TIVOLI brought suit against a pornographic site, which received a rarely granted fine, in addition to damages. The defendant began to broadcast a program with pornographic content under the names TIVOLI and TIVOLI NIGHT. In its press statement for the program, the defendant used a skyline with the words TiVOLi NiGHT in front of various silhouettes of amusements in the TIVOLI amusement park. The Maritime and Commercial Court in Copenhagen stated (yet again) that TIVOLI was a well-known 386. Dansk Supermarked A/S v. Net2 Maleren v/frederik Tuemand, Case No. V (Copenhagen Maritime and Commercial Court, Oct. 12, 2010) (unpublished) Lotto24.dk ApS v. The Danish Board of Appeal for Patents and Trademarks, intervener Danske Spil A/S, Ugeskrift for Retsvaesen H (Danish Supreme Court, Apr. 27, 2010).

182 Vol. 101 TMR 979 trademark, whose distinctiveness and reputation could be significantly harmed if the owner could not maintain control of the use of the mark. According to the Danish Trademark Act, Section 4(2), the TIVOLI trademark was protected, not only against goods and services that were not identical or similar to those covered by the well-known trademark, but also if the use of the mark in question could take unfair advantage of the well-known trademark s distinctiveness or reputation or could harm its distinctiveness or reputation. Based on this reasoning, the defendant was ordered to pay a fine of DKK 50,000 (approximately US $10,000) according to the Danish Trademark Act, Section 42(1), as well as to pay DKK 300,000 (approximately US $60,000) in compensation and damages, for the additional injury, based on estimates. The Supreme Court upheld the Maritime and Commercial Court s decision. 388 III.A.8. Parallel Imports/Gray Marketing Europharma v. Eli Lilly considered illegal rebranding of TAILAN products purchased in Spain as TYLAN in Denmark. The plaintiff, Eli Lilly, claimed both reasonable remuneration, according to Section 43(1)(1) of the Danish Trademark Act, and compensation for additional damage, according to the Danish Trademark Act, Section 43(1)(2). Because the defendant did not provide financial information, the Maritime and Commercial Court in Copenhagen awarded DKK 883,663 (approximately US $160,000), as claimed. On appeal, the defendant filed the requested financial information concerning sales of the TAILAN products, and in accordance with earlier practice, the Danish Supreme Court reduced the remuneration to DKK 228,231 (approximately US $40,000), representing 5% of sales. The Supreme Court found further that the plaintiff had not sufficiently provided evidence of additional damage such as market disruption. 389 III.D.2.a. Fair Use Danish traders are normally allowed to use their own names regardless of any third-party trademarks, but only if this is done according to proper marketing practices. That was not so in a case involving the name TLT. The plaintiff, Toftlund Logistics & Transport A/S, adopted as a mark for transport services the letters TLT. TLT appeared in capital letters in either red or white, with either a red or a white background, on the plaintiff s trucks Innocent Pictures ApS, tvpc.dk A/S og Claus Sørensen v. Tivoli A/S, Ugeskrift for Retsvæsen H (Danish Supreme Court, Sept. 16, 2010) Europharma.DK ApS og Europharma.Vet.DK ApS v. Eli Lilly and Company, Ugeskrift for Retsvaesen H (Danish Supreme Court, May 26, 2010).

183 980 Vol. 101 TMR Beneath the letters TLT the plaintiff s name was spelled out in smaller letters along with a circle of stars. Shortly after the plaintiff s adoption of letters TLT, the defendant, then called Thomas Lehrmann Trailer A/S, which operated in the business of leasing trailers, also started using the initials TLT, marked in white on a red triangle on the defendant s trailers. Beneath TLT, the defendant s name was spelled out in smaller letters. The plaintiff objected to this, and the defendant changed its name to TBL Trailer A/S. However, the defendant s 60 trailers were still painted with the TLT logo. The Maritime and Commercial Court in Copenhagen held that while the defendant had been entitled to use TLT while its name was Thomas Lehrmann Trailer A/S, such entitlement ceased when it changed its name to TBL Trailer A/S. The Supreme Court found that there was a similarity between the two companies marks; the court ordered that the defendant s trailers be repainted. The Supreme Court also found that the companies offered similar services and, after an overall assessment, that the defendant s trademark was confusingly similar to the plaintiff s. The Court noted the general right of a person to use one s own name in one s business but expressed doubt as to whether this rule encompassed the right to one s own initials. Nevertheless the Court stated that the defendant s adherence to proper marketing practice was lacking and found in favor of the plaintiff. 390 ECUADOR I.D.1. Similarity of Marks Inversiones Plurimarcas C.A. applied for the registration of the mark BELMONT EXTRA SUAVE as a label. 391 The applicant s mark was based on a Venezuelan registered trademark 392 the priority of which was claimed in accordance with Andean Community Decision TBL Trailer A/S v. TLT - Toftlund Logistik & Transport A/S, Ugeskrift for Retsvaesen, H (Danish Supreme Court, Apr. 15, 2010) Case File No (Intellectual Property Institute of Ecuador, Feb. 12, 1993) Trademark No F, registered July 14, The Fifth Transitory Provision of Andean Decision 313, which came into effect Feb. 6, 1991, provides as follows: Industrial property rights validly granted in any of the Member Countries before this Decision came into effect involving trademarks with more than ten years existence shall enjoy preemptive registration rights in the rest of the Member Countries for a one-year period beginning after the date when this Decision came into effect, provided that there is no identical mark protecting the same or similar goods or services that might induce the public to error previously registered in the Member Country where such registration is requested.

184 Vol. 101 TMR 981 Tabacalera Andina S.A. (TANASA) and Industrias del Tabaco, Alimentos y Bebidas S.A. (ITABSA) filed oppositions against the applied-for mark based on their registered trademarks BELMONT and EXTRA SUAVE, respectively. The Industrial Property Director admitted the oppositions filed and denied the application for registration of the mark BELMONT EXTRA SUAVE. 394 Inversiones Plurimarcas and British American Tobacco Company Limited filed a judicial appeal 395 against the Industrial Property Director s decision. The appellants argued that, in accordance with the fifth transitory provision of Decision 313, Inversiones Plurimarcas requested the priority registration of the BELMONT EXTRA SUAVE label based on a Venezuelan registered trademark of more than ten years existence and, hence, it was entitled to that registration. They further stated that oppositions formulated by TANASA and ITABSA had been processed even though the law provides that they should not be heard. It was also alleged that the refused mark had been in existence for more than ten years in Venezuela and, therefore, its registration rights enjoyed preference and priority, unless an identical or similar mark already existed. It was also argued that the resolution from the Director violated the rights of the appellants because it was issued more than four years later, with no explanation, except for the fact that the challenged resolution affirmed that the opposing party was the legitimate owner of the mark EL EXTRA SUAVE in Ecuador. However, the resolution overlooked the fact that its principal owned the mark ES (color label), which included the words EXTRA SUAVE in the name. Futhermore, even though the fourth whereas provision determined that the disputed marks were similar because of the manner in which they were written, the resolution did not address that the fifth transitory provision mentioned the exception that the marks ought to be identical, giving the word identical a similar meaning to alike. In addition, because the fifth whereas clause of the challenged resolution affirmed that the mark whose registration was sought constituted the union of the existing marks BELMONT and EXTRA SUAVE and, therefore, the BELMONT EXTRA SUAVE label was a total reproduction of a union of marks already registered. The respondent alleged that the designation requested was not registrable because it infringed Articles 71 and 73 of Decision 313, in force at the time the application was submitted, and Articles 81 and 83 of Decision 344, also in force at the time. It also argued that Inversiones Plurimarcas C.A. is a Venezuelan company whose sole shareholder is CA Cigarrera Biggot Sucesores, which executed a 394. Resolution No , July 15, Docket No CSA, filed Oct. 16, 1997, Administrative Litigation Court, Quito, Second Chamber.

185 982 Vol. 101 TMR compromise agreement with Philip Morris Products Inc., the predecessor in rights of the BELMONT mark, recognizing that it had no rights that were superior to the mark BELMONT in Ecuador after it agreed to acquiesce to the claim of nullity of a registration illegally obtained by that company. The respondent also maintained that, afterwards, British American Tobacco Company, the major shareholder of CA Cigarrera Biggot Sucesores, applied to register the mark BELMONT in Ecuador 396 and that its principals had opposed the application. Furthermore, TANASA was the owner of the marks BELMONT 397 and BELMONT & Design, 398 which were held by Philip Morris Products Inc. and covered the same goods. Consequently, the appellant had no preemptive right with respect to the mark BELMONT EXTRA SUAVE in Ecuador because there were already registrations of its principals marks in this country. The name BELMONT EXTRA SUAVE was not sufficiently distinctive with respect to the two marks registered by its principals, as there were no differences between them (they were identical) and could be confused at first sight. The respondent also argued that the requested mark consisted of the union of the marks BELMONT and EXTRA SUAVE, which were already being used to sell cigarettes, and thus allowing their registration would constitute a duplication of marks in the marketplace. Therefore, its registration and use would lead to error or confusion and would involve an act of unfair competition that would affect the rights of its principals and infringe the rules of Decision 344. The Administrative Litigation Court admitted the claim and declared the illegality of the administrative act. In consequence, it ordered the registration of the mark BELMONT EXTRA SUAVE. 399 Philip Morris Products Inc. filed an appeal of cassation against the court s judgment, because, as it stated, the interpretation of certain rules of law was erroneous and there was a lack of application of other rules (which had a decisive influence on the admission of the claim) and also because of the fifth clause listed in Article 3 of the Law on Cassation, as the award included contradictory or incompatible resolutions. The court affirmed that registration of the mark BELMONT EXTRA SUAVE was not permissible because it was not possible to register a mark that lacked a distinctive character and that was formed from terms describing the product to be protected, that is, 396. Application No , filed Feb. 7, Trademark No. 532/63, registered Dec. 12, Trademark No. 2689/88, registered Dec. 8, Docket No MB (Administrative Litigation Court No. 1, 2d Chamber, Quito, Mar. 1, 2005).

186 Vol. 101 TMR 983 EXTRA SUAVE (extra mild) and a word identical to the mark BELMONT that were both registered by its principals. In November 2009, a judgment from the Administrative Litigation Chamber of the National Court of Justice voided the judgment issued on March 1, 2005, by the Administrative Litigation Court, and resolved to reject the claim filed by Inversiones Plurimarcas and British American Tobacco Company and to declare the legality of the challenged administrative act. 400 At present, an extraordinary action for protection is being heard against the judgment of cassation presented by Inversiones Plurimarcas and British American Tobacco Company. III.F.1. Non-Use A mark becomes vulnerable to a cancellation (total or partial) action for lack of use if it has not been used by its registered owner (for all the protected goods/services in case of the partial cancellation) within the past three years in at least one of the Andean Community countries (Colombia, Ecuador, Peru, and Bolivia). A positive resolution in a cancellation action grants the plaintiff preemptive rights to register the cancelled mark, and this action may be also raised as a defense in an opposition proceeding. Plaintiff Novartis AG brought a cancellation action for lack of use 401 before the Intellectual Property Committee against the trademark registration for HIDRAT 402 in Class 5, owned by Industria de Belleza y Salud Bassa Cia. Ltda. The plaintiff argued that the mark HIDRAT had not been used for over three years, either in Ecuador or any other Andean country for the covered goods; therefore, the trademark had to be cancelled or at least partially cancelled covering those goods for which use was evidenced. In answering the action, the defendant, Industria de Belleza y Salud, submitted documents such as invoices, publicity, and even packages of the commercialized goods that identified the disputed trademark. The evidence related to soaps and lotions, goods contained in Class 3; however, the plaintiff alleged they were medicated, therefore belonging to Class 5. Furthermore, on the packages submitted as use evidence by the defendant, there appeared a sanitary registration number, 403 granted by the Sanitary Authority; therefore, the plaintiff requested the IP Committee to order Industria de Belleza y Salud to exhibit its 400. Docket No AB (National Court of Justice, Administrative Litigation Chamber, Quito, Nov. 9, 2009) Intellectual Property Committee, Proceeding No AC, filed Nov. 19, Registration No , granted Nov. 14, Health Registration No. C-9.837/04/96. In the Andean Community countries it is necessary to have a sanitary registration for cosmetics and pharmaceuticals.

187 984 Vol. 101 TMR registration and also requested the health authorities to certify whether the sanitary registration of the products were obtained as cosmetics (Class 3) or pharmaceuticals (Class 5). In September 2004, the IP Committee issued a resolution accepting the plaintiff s claim and cancelling the registration of the mark HIDRAT in Class The IP Committee stated that the defendant did not demonstrate the real and effective use of the trademark for goods in Class 5, as the Health Registration clearly identified the protected goods as cosmetics (Class 3), thus rendering the submitted evidence irrelevant. This case is important as a precedent for cancellation actions for lack of use proceedings, as it reveals that it is not enough to file evidence of use if the evidence does not demonstrate the true and effective use of the covered goods. Furthermore, it was the first time that the IP Committee had agreed to analyze evidence such as the type of sanitary registration (a permit to market the goods) that the goods had obtained. It should be noted that Industria de Belleza y Salud Bassa Cia. Ltda. has filed a judicial appeal 405 with the Administrative Contentious Court, which is currently pending. However, the judicial appeal does not suspend the effects of the issued resolution; thus, Novartis has preemptive rights to register its mark. EL SALVADOR I.D.1. Similarity of Marks Pozuelo S.A., a Guatemalan company, applied for the registration of the trademark CHOCOLINAS & Design, to protect goods in Class 30. Grupo Bimbo S.A. de C.V., from Mexico, filed an opposition against the registration, alleging that the applicant s mark was similar to its registered trademark RICOLINO. The Intellectual Property Department denied the opposition, and Grupo Bimbo appealed. The National Bureau of Registries confirmed the denial of the opposition, finding no similarity between the marks at issue. 406 In addition, the National Bureau of Registries, also on appeal, confirmed the denial of another opposition, filed by the Argentinean firm Bagley S.A., which provided no evidence of previous registrations in El Salvador Intellectual Property Committee, resolution of Sept. 8, Administrative Litigation Court, First Chamber, proceeding NR National Bureau of Registries, resolution of June 22, 2010, certification to Intellectual Property Department (Registry of Commerce), Sept. 14, 2010.

188 Vol. 101 TMR 985 The Persuaders, LLC, a U.S. entity that raises funds for charitable purposes, filed an application to register the mark DO THE (RED) THING, for services in Class 38. The Salvadoran company Intelfon, S.A. de C.V. opposed registration based on its registered trademark RED & Design, but its opposition was denied. On appeal, the National Bureau of Registries confirmed the denial by the Intellectual Property Department of Intelfon s opposition. It held that there was no similarity between the mark applied for and the opponent s mark and that the word RED was considered a generic term for telecommunication services. 407 The U.S. consumer products giant Procter & Gamble Company sought to register the mark ACCION MINERAL & Design, for goods in Class 3. An opposition filed by a major American competitor, Colgate Palmolive Company, on similarity grounds, was accepted by the Intellectual Property Department, and Procter & Gamble appealed. The National Bureau of Registries affirmed the Department s decision. It held that the applied-for mark was similar to the opponent s prior-registered trademark AXION and a variety of other marks previously registered by Colgate Palmolive. 408 II.C.3. Geographical Indications/Appellations of Origin On January 25, 2010, El Salvador was granted its first Appellation of Origin: CAFÉ APANECA-ILAMATEPEC & Design, for coffee products from a region encompassing the Departments of Ahuachapán, Sonsonate, and Santa Ana. 409 This region has also been declared a biosphere world reserve by UNESCO. FINLAND I.B.2. Merely Descriptive The British firm Castrol Limited is the owner of the international trademark LIQUID ENGINEERING, registered for industrial oils and greases; lubricants; lubricating oils and greases; fuels; non-chemical additives for fuels, lubricants and greases; dust absorbing, wetting and binding compositions; illuminants; gear oils; transmission oils in Class National Bureau of Registries, resolution of Mar. 1, 2010, certification to Intellectual Property Department (Registry of Commerce), June 23, National Bureau of Registries, resolution of June 10, 2010, certification to Intellectual Property Department (Registry of Commerce), Aug. 10, National Bureau of Registries, resolution of Jan. 25, 2010 (File No /2009).

189 986 Vol. 101 TMR The National Board of Patents and Registration (NBPR) rejected the application on the grounds that the term liquid engineering described the kind and quality of the goods and lacked distinctive character. The mark was considered to have, for instance, the meaning of liquid technique, and it was stated to be commonly used. Castrol s appeal was rejected by the Board of Appeal of the Finnish Patent Office. In addition to affirming the reasoning of the NBPR, the Board stated that even though there was no translation found in dictionaries for the term liquid engineering, consumers could easily understand the words and connect them to the goods covered by the mark. Thus, the mark was considered to be descriptive. The Board also mentioned that the term was commonly used on the Internet. 410 LU Suomi Oy applied for the registration of the word mark HERKKUTYYNY ( delicious pillow ), to cover goods in Class 30. The NBPR rejected the application on the ground that the mark consisted of two nondistinctive words. In the NBPR s view, the first part of the mark, HERKKU ( delicious ), was commonly used to describe the good taste of a product. The second part, TYYNY ( pillow ), was also commonly used for foodstuffs, in this particular case biscuits, when they were in the shape of a pillow. Consequently, the combination of the two words was nondistinctive. On appeal by the applicant, the Board of Appeal upheld the decision of the NBPR. Although the Board reasoned that the word TYYNY was not descriptive in relation to the goods covered in the application, it held that because the assessment was made considering the mark as a whole, HERKKUTYYNY could be seen as descriptive for the products in question (i.e., pillow-shaped biscuits). Additionally, the Board found that the mark did not fulfill the purpose of a trademark as it was not capable of indicating the origin of the goods to be covered. 411 I.B.5. Suggestive Namics Corporation, a Japanese company, applied for the extension to Finland of its International Registration for the trademark CHIPCOAT, covering paints in Class 2 and electrical insulating materials in Class 17. The application was rejected by the NBPR on the ground that the mark consisted of the words chip and coat, which describe the kind and the purpose of use of the goods covered by the application. Despite the fact that there was no translation for the 410. Case No. 2006/T/015 (Board of Appeal, Finnish Patent Office, June 9, 2008) Case No. 2006/T/029 (Board of Appeal, Finnish Patent Office, June 9, 2008).

190 Vol. 101 TMR 987 word in dictionaries, the mark was considered to be descriptive and nondistinctive. Namics appealed the NBPR s decision. The Board of Appeal of the Finnish Patent Office revoked the decision and remitted the matter to the NBPR for reevaluation. According to the Board, CHIPCOAT was an inventive, new word that did not have any meaning. There was no need to keep free the suggestive combination of words CHIPCOAT. 412 The boundary between a nondistinctive and a suggestive mark often is indefinite. The conclusion in this case, however, was that the mark was suggestive. I.C. Distinctiveness Diners Club Nordic AB filed trademark applications for SINULLE, JOKA VAADIT ENEMMÄN and TEILLE, JOTKA VAADITTE ENEMMÄN (both meaning For you who demand more ), to cover goods and services in Classes 9, 16, and 36. Both the NBPR and the Board of Appeal rejected Diners Club s applications on the grounds that marks lacked distinctiveness and were not capable of distinguishing the products of the applicant from the products of other parties. Additionally it was stated that as the marks were slogans commonly used in marketing, they needed to be free for use by everyone. The applicant appealed to the Supreme Administrative Court. The Court revoked the prior decision and remitted the matter to the NBPR. Referring to the trademark legislation and case law of the European Community, the Court opined that there should not be any stricter requirements in assessing the distinctiveness of slogan marks as compared to other types of marks. It further stated that if a word mark is considered to be nondistinctive based on its use in marketing, some evidence should be provided to support this view. The Court came to the conclusion that the requirement of distinctiveness did not mean that the mark must be connected to a certain trader. Additionally, it felt that the fact that the corresponding marks were accepted in Sweden and Denmark could not be ignored. 413 As this decision clearly shows, Finland is following the objectives of the European Trademarks Directive concerning the harmonization of EU member countries legislation. I.D.1. Similarity of Marks Swedish Meats Ek. För. is the owner of the Community trade marks (CTMs) SCAN (word mark) and SCAN & Design (below, 412. Case No. 2006/T/007 (Board of Appeal, Finnish Patent Office, May 13, 2008) Case Nos. 3816/3/07 and 458/3/08 (Supreme Administrative Court, Dec. 15, 2008).

191 988 Vol. 101 TMR illustration at left), both registered in, inter alia, Classes 29, 30, and 31. Nierova Oy owns a Finnish trademark registration for SCANSTAR, covering products in Classes 29 and 31 (below, illustration at right). The NBPR rejected an opposition by Swedish Meats against Nierova s registration on the ground that there was no likelihood of confusion between the marks at issue even though they covered the same or similar goods. The NBPR stated that SCAN, the part the marks had in common, was a so-called weak element, as it referred to the word Scandinavian and therefore described the quality and place of manufacture of the goods covered by the marks. Additionally, the NBPR found that the marks were visually different. Swedish Meats appealed the NBPR s decision. The Board of Appeal of the Finnish Patent Office rejected the opponent s appeal on the same ground as the NBPR had rejected the opposition. 414 Previously, there had been a bit of uncertainty regarding the distinctiveness of the word scan, but this decision confirms the weakness of that element. PI-Design AG, owner of a CTM registration for the word mark MELIOR and a national trademark registration for MELIOR & Design (see below), both in Class 21, filed an opposition against Febris Oy s Finnish trademark MÉLI, registered in Classes 20, 21, and 24. The opposition was rejected by the NBPR, which held that there was no likelihood of confusion between the marks as they differed both visually and phonetically even though the goods in Class 21 were considered to be similar. The NBPR further found 414. Swedish Meats Ek. För. v. Nierova Oy, Case No. 2006/T/008 (Board of Appeal, Finnish Patent Office, May 13, 2008).

192 Vol. 101 TMR 989 that despite the fact that the element MELI was included in the opposing mark MELIOR, the marks were visually different by virtue of the difference in their length and the fact that the letter E in the opposed mark MÉLI had an accent. In addition, the NBPR noted that the marks had some phonetic differences, as MÉLI was shorter and MELIOR ended with the phonetically strong letter R. The opponent s appeal was rejected by the Board of Appeal of the Finnish Patent Office on the same ground as the NBPR had rejected the opposition. 415 Elettrotec S.R.L., an Italian company, is the owner of the CTMs EL ELETTROTEC & Design, covering goods in Class 9, and ELETTROTEC, covering goods in Classes 7 and 9 (see below). Elettrotec brought an opposition against Dangaard Electronics Finland Oy s Finnish registration for the word mark ELETECH, for goods in Classes 9 and 11. The NBPR rejected the opposition, finding that there was no likelihood of confusion between the marks despite the similarity of the goods covered by the registrations. It held that the word elements at the beginning and the end of the marks (EL and TEC/TECH, respectively) were not distinctive for the goods in Class 9 and that there were enough visual dissimilarities between the marks to avoid any likelihood of confusion. Elettrotec appealed. The Board of Appeal upheld the decision of the NBPR. It agreed that the registrations covered the same or similar goods. In its assessment of the marks, the Board found that both the opposing marks and the opposed mark referred to electrotechnology and that they were considered to be weak marks meriting a limited scope of protection. The Board held that the marks were visually different, especially as the opponent s marks had some figurative elements. It also noted that there were phonetic differences stemming from the different number of syllables in the marks under comparison and the additional consonants in the verbal elements of Elettrotec s figurative marks PI-Design AG v. Febris Oy, Case No. 2005/T/164 (Board of Appeal, Finnish Patent Office, June 6, 2008) Elettrotec S.R.L. v. Dangaard Electronics Finland Oy, Case No. 2005/T/166 (Board of Appeal, Finnish Patent Office, June 16, 2008).

193 990 Vol. 101 TMR This decision demonstrates that marks consisting of descriptive elements can be registered side by side even when the differences between them are not very remarkable. Tordivel AS applied for the extension to Finland of its International Registration for the trademark SCORPION VISION SOFTWARE, covering goods in Class 9 (see below). The NBPR rejected the application on the ground that there was a valid earlier national trademark registration for SCORPION that covered similar goods in Class 9. In addition, the NBPR rejected the applicant s request for an extension of the time limit for negotiating an agreement with the proprietor of the national registration. Tordivel appealed, but the Board of Appeal of the Finnish Patent Office upheld the NBPR s decision. It noted that the appellant had had almost two years time to negotiate with the proprietor of the earlier national registration but had not provided any evidence about any progress in the negotiations. Therefore, the Board found no reason to change the decision. 417 In order to keep an application pending it is important to prove that the negotiations are in progress, and even in that case it is not possible to get extensions of time for several years. Red Bull GmbH is the holder of nine International Registrations for the trademark BULLIT, all covering, inter alia, products in Class 32. Red Bull filed an opposition against the registration by Sweet n Syrup Finland Oy of the trademark SILVER BULLET, covering goods in Classes 1, 30, and 32. The NBPR rejected the opposition on the ground that there was no likelihood of confusion between the marks at issue despite the fact they covered similar goods. In its reasoning the NBPR especially emphasized the conceptual difference between the marks and the different associations that they created. Red Bull appealed the NBPR s decision. The Board of Appeal rejected the appeal on the same ground as the NBPR had given for rejecting the opposition Case No. 2005/T/158 (Board of Appeal, Finnish Patent Office, June 24, 2008) Red Bull GmbH v. Sweet n Syrup Finland Oy, Case No. 2006/T/003 (Board of Appeal, Finnish Patent Office, Oct. 1, 2008).

194 Vol. 101 TMR 991 Oriflame Cosmetics S.A. applied for the registration of its mark ORIFLAME SOUL, for goods in Class 3. The NBPR rejected the application based on the earlier International Registration for the trademark SOUL, designating Finland and covering similar goods in Class 3. On appeal by Oriflame, the Board of Appeal of the Finnish Patent Office upheld the decision of the NBPR based on the earlier registration. It found that there was a likelihood of confusion because the applied-for mark ORIFLAME SOUL contained the distinctive earlier mark SOUL as a whole. The Board further held that consumers would think that the marks in question indicated the same commercial origin of the goods they covered. 419 This decision demonstrates that a distinctive mark cannot be included in a mark that is a combination of words without increasing the risk of likelihood of confusion. II.E. Examination and Opposition Ingman Foods Oy Ab filed an opposition against the extension to Finland of the International Registration for the word mark KALINKA in Class 33, owned by the Norwegian company Arcus AS. The opposition was based on Ingman s Finnish registration for the word mark KALINKA, covering goods in Classes 29 and 30. The opposition was rejected by the NBPR on the ground that the goods in Classes 29 and 30 covered by Ingman s registration were not similar to the alcoholic beverages in Class 33 covered by Arcus s international trademark. Additionally, the NBPR did not find that the opponent s mark KALINKA was a well-known mark in Finland. On appeal by Ingman, the Finnish Patent Office Board of Appeal revoked the NBPR s decision. It held that when a wellfounded opposition is raised against an International Registration in Finland, the NBPR must apply the national legislation to the procedure. According to the Finnish trademark law, the proprietor of the International Registration must appoint a representative in Finland on pain of the application s being considered withdrawn or the mark s being removed from the register. The Board explained that in this case the proprietor of the International Registration had received a notice about the potential rejection of its application in Finland and therefore was able to participate in the proceedings if it wished. As the proprietor did not furnish any opinion to the Board of Appeal relating to the matter, the Board refused the 419. Case No. 2006/T/076 (Board of Appeal, Finnish Patent Office, Dec. 2, 2008).

195 992 Vol. 101 TMR extension to Finland of the International Registration and concluded the case. 420 This decision shows how important it is to be aware of the national legislation in each country, as the differences are considerable. FRANCE I.A.4. Quantity and Quality of Use The French tobacco and alcohol policy law of January 10, 1991 (called Loi Évin) severely restricts advertising for tobacco and alcoholic beverages. According to the provisions thereof, direct or indirect advertising for alcoholic beverages is forbidden. 421 Diptyque, a French company and the owner of the trademark DIPTYQUE (meaning diptych ), registered for everyday products and especially candles and perfumes, asked for the cancellation of the registration for the identical trademark DIPTYQUE, filed at a later date, for alcoholic beverages and, more particularly, Cognac. Given the Loi Évin, Diptyque argued that the later registration threatened Diptyque s ability to advertise its products because the potential association of the mark with an alcoholic beverage could cause such product promotion to be viewed as indirect advertising restricted by the French law. The Paris Court of First Instance found that the Loi Évin does not automatically restrict the use of a trademark identical to an alcoholic beverage trademark if advertisements for the goods covered by the senior mark do not promote alcoholic products. 422 Indeed, the court found that the senior trademark was being used for goods different from alcoholic beverages, including with respect to their presentation and distribution networks. Moreover, the owner of the junior trademark was clearly using DIPTYQUE in its strict meaning, because the trademark was being used on a crate made of two parts containing two bottles of high-quality Cognac, whereas Diptyque was making no reference at all to the strict meaning of this word. Considering these differences, there was no risk of a finding of indirect advertising for alcoholic beverages and Diptyque s claims, therefore, were rejected Ingman Foods Oy Ab v. Arcus AS, Case No. 2006/T/090 (Board of Appeal, Finnish Patent Office, June 24, 2008) Any advertising for an organization, a service, an activity, a product or an article other than alcoholic beverages that, by its graphics, its aspect, the use of a denomination, a trademark, an advertising emblem, or any other distinctive sign, brings to mind such products must be regarded as indirect advertising for alcoholic beverages (Articles L and L of the Public Health Code) Diptyque S.A.S. v. Jas Hennessy & Cie S.C.S. (Court of First Instance of Paris, 3d Chamber, 4th Section, Oct. 29, 2009), PIBD No. 910, part III, at 64 (in French).

196 Vol. 101 TMR 993 This decision is important because it introduces a nuance in the application of the provisions of the Loi Évin. Previously, the rule was to apply the law strictly, as, for example, in the matter of VICTORIA S SECRET, filed for alcoholic drinks, where the owner of an earlier trademark for VICTORIA S SECRET, registered for goods and services other than alcohol (clothes), found itself prohibited from advertising its products. As a result, the Court of Appeal of Paris cancelled the later trademark. 423 Even the Supreme Court considered in 2006 that the filing of a second similar trademark for tobacco products had the effect of preventing the owner of the first mark from making use of its mark, thereby depriving it of the possibility of deriving the full benefit therefrom. 424 Thus, it will be interesting to see if other courts adopt the analysis of this decision with respect to whether the relevant goods are or are not related to alcoholic/tobacco products. I.D.1. Similarity of Marks Boehringer Ingelheim Pharma GmbH & Co. (Boehringer), a German company, owns a Community trade mark (CTM) registration for PRITOR, 425 for pharmaceutical and sanitary preparations in Class 5. Boehringer uses this mark for a drug for treating high blood pressure that had been authorized for use in France since The French company Fournier Industrie et Santé (Fournier) registered two trademarks: on February 3, 2003, the French trademark TRICOR, 426 covering, in Class 5, cardiovascular preparations containing a normolipidemic agent; and on July 4, 2007, the trademark, 427 which is TRICOR in Cyrillic characters, covering, in Class 5, cardiovascular preparations containing a hypolipidemic agent. Boehringer filed an action for cancellation of both of the abovereferenced marks, arguing that they covered identical products (i.e., pharmaceutical products) to Boehringer s PRITOR mark. Specifically, Boehringer argued that TRICOR was visually and phonetically similar to the PRITOR mark and that there was a risk of confusion between the marks even though consumers would 423. S.A.R.L. Roullet Fransac v. V Secret Catalogue Inc. (Court of Appeal of Paris, 4th Chamber, Sept. 20, 2000), PIBD No. 711, part III, at 9 (in French) BAT v. Belvedere (Supreme Court, Commercial Chamber, Dec. 19, 2006), Bulletin 2006, IV No. 266, at 290 (in French) CTM No , registered Mar. 11, Trademark No Trademark No

197 994 Vol. 101 TMR exercise a high degree of care in purchasing pharmaceutical products and even though the therapeutic areas for the parties products were different. Fournier argued the converse of all three of Boehringer s positions. The Court of First Instance of Paris 428 ruled that the products were similar, having the same nature and function, and were sold in the same places (drugstores) to the same consumers (i.e, patients and/or doctors). Although the contested TRICOR marks were in a therapeutic field (different from the drugs marketed by Boehringer), the similarity between the marks had to be viewed in light of the description of goods in the parties registrations. Furthermore, it found that cardiovascular preparations containing a normolipidemic agent and cardiovascular preparations containing a hypolipidemic agent were a part of a subset of pharmaceutical preparations covered by the PRITOR registration. Therefore, they were identical. The judges also found the trademarks PRITOR and TRICOR to be confusingly similar. The conceptual differences raised by Fournier (e.g., TRICOR is the combination of the element TRI for TRIGLYCERIDE and COR for CHOLESTEROL) were not found relevant. However, the judges found that TRICOR in Cyrillic characters was not similar to PRITOR because of the use of Cyrillic. The clothing chain ETAM S.A. is the owner of the French trademark DI CARLA, 429 covering goods in Classes 3, 18, and 25. In October 2008, Stephanie Michaeli filed a French trademark application comprising the denomination MISS CARLA, 430 for goods in Classes 14, 16, 18, 20, 24, 25, and 28 with the design illustrated below. ETAM filed an opposition against this trademark application based on the similarity of marks and goods. The French Trademark Office (Institut National de la Propriété Industrielle, or INPI) partially granted the opposition filed by ETAM on the following grounds: 428. Boehringer Ingelheim Pharma GmbH & Co. KG v. Fournier Industrie et Santé S.A.S., RG No. 2008/13675 (Court of First Instance of Paris, 3d Civil Chamber, 1st Section, Jan. 19, 2010), PIBD No. 919, part III, at 371 (in French) Trademark No , registered Apr. 27, Application No , filed Oct. 23, 2008.

198 Vol. 101 TMR 995 even though the opposed trademark was composed of a predominant device, the mark was identified by consumers through its word element, i.e., MISS CARLA. Moreover, the word CARLA was the main element in each mark, which would result in a risk of confusion between the trademarks; and the goods in Classes 18 and 25 were identical or similar. 431 Ms. Michaeli appealed the decision of the INPI, arguing that the use of the Italian-sounding first name CARLA is common in the field of clothes and leather goods. ETAM and the INPI maintained that the marks were phonetically similar and that the term CARLA was distinctive to cover goods in Classes 18 and 25. Moreover, they asserted that the goods covered by each mark were identical or similar. The Court of Appeal of Colmar 432 affirmed the INPI s decision, noting that: 1. on the one hand, both marks would be identified by their word elements (DI CARLA/MISS CARLA), which had phonetic similarities even though the opposing mark was composed of a predominant device; 2. on the other hand, conceptually, both marks used an Italian-sounding first name (CARLA) in the field of fashion, which could imply that the products sold under the marks had the same origin. The decision of the court is in line with other decisions, which generally hold that word elements predominate when comparing device trademarks. The company Laboratoires Ingrid Millet (Millet), registered the French trademark AROMAPURE in November 1996 in Classes 3, 5, and 21 for body care products. The company Laboratoires de Biologie Végétale Yves Rocher (Rocher) acquired, in April 2004, the trademark registration for PURAROM, registered in March 1996, after having benefited from a license since October By way of background, Casey had been the exclusive distributor in Asia for Rocher since Casey was also part of a consortium that, in 1999, acquired Millet. In 2001, Rocher and Millet tried to negotiate a license for the trademark AROMAPURE for the launching by Rocher of a range of products. Negotiations failed, and Rocher did not renew the distribution agreement with Casey ETAM S.A. v. Stéphanie Michaeli (INPI, July 27, 2009), available at (in French) Stéphanie Michaeli v. Directeur Général de l INPI & ETAM S.A., RG No. 09/04219 (Court of Appeal of Colmar, 1st Civil Chamber, Section B, Feb. 25, 2010), PIBD No. 917, part III, at 273 (in French).

199 996 Vol. 101 TMR In September 2004, Millet brought an action for infringement of the trademark AROMAPURE against Rocher. Rocher questioned Millet s intent in filing the action, arguing that Millet was using the action to pressure Rocher into entering into an agreement with the consortium led by Casey, and seeking dismissal of the infringement claim. Rocher also sought a declaration of invalidity for the trademark AROMAPURE because Rocher owned prior rights in PURAROM. The Court of First Instance found for Millet on the trademark infringement claim under Article L713-3 of the French Intellectual Property Code (IPC) and ruled that Rocher s invalidity claim could not proceed because Rocher had fraudulently obtained the assignment of the trademark PURAROM for the sole purpose of contesting Millet s infringement action. 433 The Court of Appeal of Paris affirmed this judgment except for Rocher s fraudulent acquisition of the PURAROM mark. 434 The Judge implicitly factored in the parties prior relationship to evaluate the damages awarded for infringement but found that the relationship did not affect the application of the rule of law. Indeed, Millet had an interest in acting based on trademark rights regardless of its relations with Casey. The Court of Appeal of Paris denied Millet s request for high damages because the company had not brought detailed proof of harm justifying such damages. Kenzo Parfums owns the French trademarks LABULLEKENZO 435 and LABULLEKENZO & Design (see below), registered in Classes 35, 42, and This company also has a beauty salon in Paris called LABULLEKENZO, which in French connotes the Kenzo bubble, evoking a carefree world. Plaintiff s mark 433. S.A.S. Laboratoires Ingrid Millet v. S.A. Laboratoires de Biologie Végétale Yves Rocher (Court of First Instance of Paris, 3d Chamber, 2d Section, Nov. 9, 2007), available at (in French) S.A. Laboratoires de Biologie Végétale Yves Rocher v. S.A.S. Laboratoires Ingrid Millet (Court of Appeal of Paris, 2d Chamber, Sept. 4, 2009, PIBD No. 905, part III, at 1436 (in French) Trademark No , registered May 2, Trademark No , registered May 2, 2003.

200 Vol. 101 TMR 997 On May 29, 2006, Mr. Karim Benalioua and Mrs. Natacha Villan applied to register the mark BULLE DE SOINS in France for the name of their beauty salon. In August 2008, Kenzo Parfums filed an infringement action against them, alleging that the trademarks were confusingly similar and that their use in relation with beauty salons constituted unfair competition. The Court of First Instance of Paris found the two main elements of the mark LABULLEDEKENZO distinctive for beauty and care salons: The term bulle, in French, meaning bubble, also signified rest and relaxation and escape from the cares of life. The term Kenzo referred to the famous dress designer and was also a trademark as well as a company name. Additionally, the display of LABULLEDEKENZO as a unitary mark increased the arbitrary nature of these terms. The figurative trademark LABULLEDEKENZO was even more distinctive because of the addition of shape and a color. Therefore, overall, this mark was distinctive. The court found only the first element of the challenged mark, BULLE DE SOINS, distinctive. It found the term De Soins descriptive for services in Class 44, i.e., hygienic and beauty care for human beings. The court found the marks to be similar, covering identical products/services and having the same structure namely, they both began with BULLE (LA is simply the definite article the ), the remainder being purely descriptive. The court, therefore, found the marks visually similar. The terms LABULLEKENZO and BULLE DE SOINS also were found to be phonetically similar in so far as they were pronounced in the same manner with regard to the first element BULLE. They also conveyed the same idea. Thus, the court found that the trademark BULLE DE SOINS infringed Kenzo Parfums LABULLEKENZO and LABULLEKENZO & Device marks. Further, they also considered that the use of BULLE DE SOINS in connection with beauty and care salons amounted to unfair competition. Indeed, the public could erroneously believe that the beauty salon called BULLE DE SOINS belonged to the Kenzo Group. 437 In the author s opinion, this ruling should not have gone against the later applicant. Indeed, the presence of the element BULLE in each mark is, in our view, not sufficient to create a risk of confusion all the more so considering this term is closely 437. Kenzo Parfums S.A. v. Karim Benalioua, Natacha Villan, et al. (Paris Court of First Instance, 3d Chamber, 1st Section, Sept. 22, 2009), PIBD No. 908, part III, at 1558 (in French).

201 998 Vol. 101 TMR associated to the elements LA and KENZO in the senior mark. Taken as a whole, the term BULLE refers to something belonging to Kenzo and the public could perceive this mark as LA BULLE de KENZO ( Kenzo s carefree world ) or BULLE nommée KENZO ( a carefree world called Kenzo ). Moreover, it is interesting to note that the French Trademark Office in a later ruling 438 decided that the trademarks LABULLEDEKENZO and BULLE DE NATURE (designating identical or at least similar products and services) were sufficiently different to peacefully coexist. The French company Bil Toki owns a Community trade mark (CTM) registration for the figurative mark 64, 439 as shown below, filed on February 28, 2002, in Classes 18, 25, and 32. Bil Toki filed an opposition against the French trademark SIX4 filed on July 21, 2006, by Sylvie Brière for goods belonging to the same classes. Bil Toki argued that trademarks have to be compared in their entireties by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. Specifically, Bil Toki argued that the marks were conceptually similar because they both evoked the French Administrative District ( Department ) of the Pyrénées Atlantique, also known as the French Basque country. The Paris Court of Appeal, 440 however, found that there was no likelihood of confusion between the marks, in part, because the word Six immediately followed by a 4 conveys a different impression from the number 64. The court did not find convincing the evidence adduced that one French Department is sometimes referred to as the Nine-Three instead of 93. The Supreme Court 441 affirmed the appellate court s decision. Indeed, it found that the two marks were distinct visually and phonetically. The Supreme Court also noted that the mark SIX4 did not refer to the number 64. There was therefore no risk of confusion and the application for SIX4 could be protected LABULLEKENZO vs. BULLE DE NATURE, OPP (French Trademark Office, Dec. 15, 2009), available at (in French) CTM No , filed Feb. 28, 2002, registered Sept. 26, Bil Toki S.A.S. v. Sylvie Brière (Court of Appeal of Paris, 2d Chamber, 2d Section, Dec. 20, 2007), PIBD 2008, No. 870, part III, at 199 (in French) Bil Toki S.A.S. v. Sylvie Brière & INPI (Supreme Court, Commercial Chamber, Dec. 15, 2009), PIBD 2010, No. 912, part III, at 112 (in French).

202 Vol. 101 TMR 999 I.D.3. Conflict Between Trademarks and Corporate Names Céline S.A. (part of the LVMH group) is a famous French company known for its clothes and luxury accessories. Since 1948 it had owned the trademark CELINE and had operated stores under that name. In 2003, it filed a trademark infringement action before the Court of First Instance of Nancy against a French company registered under the corporate name Céline S.A.R.L., specializing in the clothing business, which also used Céline for signage. Céline S.A.R.L., having lost before the Court of First Instance, filed an appeal. The main question on appeal was whether the use of Céline as a company name and with signage was actionable under Article L713-2 of the IPC, which requires trademark infringement to relate to a use in connection with goods or services. The Court of Appeal of Nancy 442 observed first that Céline S.A.R.L. had marked the price of each item in their shop window with a label bearing the Céline name, using the same characters as those of the signage identifying its store. Second, the bags handed out to customers to put their purchases in bore the same name, accompanied by the address of the store. Third, from a bill for the purchase of a skirt, the court established that the same name was being applied to commercial documents. The result was that, even if the Céline name was not, in any of these cases, being directly applied to the goods that Céline S.A.R.L. was selling, they were making use of the name, not only to identify the company, but also to distinguish the goods it was selling. The Court of Appeal found that such use did interfere with the essential function of a trademark, i.e., guaranteeing, without any possibility of confusion, the origin of the goods. The Court of Appeal of Nancy consequently held that Céline S.A.R.L. had committed trademark infringement. This decision shows the incoherencies that can exist within the IPC. Indeed, it is interesting to note that, on the one hand, a trademark cannot be adopted if there is a risk of confusion with an earlier corporate name 443 and that, on the other hand, the 442. S.A.R.L. Céline vs S.A. Céline, No. 05/01983 (Court of Appeal of Nancy, 1st Civil Chamber, Apr. 6, 2010), PIBD No. 918, part III, at 315 (in French) Article L711-4 of the IPC provides: Signs may not be adopted as marks where they infringe earlier rights, particularly: (a) An earlier mark that has been registered or that is well known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property; (b) The name or style of a company, where there is a risk of confusion in the mind of the public;

203 1000 Vol. 101 TMR reproduction of an identical corporate name does not constitute a trademark infringement, except if some particular conditions are fulfilled, as illustrated in the case above. I.F. Famous and Well-Known Marks Louis Vuitton Malletier (LVM), the famous French company, owns the following figurative French trademark representing the interwoven initials LV (for Louis Vuitton) covering, in relevant part, clothing, footwear, and headgear in Class 25. LVM discovered that a company called Nord-Sud was marketing denim clothes with a pattern close to their monogram canvas on labels and tags that included the initials LV. Therefore, LVM brought an action before the Court of First Instance 444 for trademark infringement and unfair competition. The Court of First Instance ruled that Nord-Sud had not infringed LVM s rights in its trademark. Indeed, the court ruled that Nord-Sud s use of the initials LV on the contested labels was very different from LVM s trademark. Furthermore, the goods upon which the contested labels were affixed bore the name JUST CAVALLI, which prevented any risk of confusion. The complaint for unfair competition was also dismissed. LVM appealed both rulings. The Court of Appeal 445 revised the first judgment on the basis that, although the challenged initials LV were not written in the same typeface, the use of LV on products identical to those offered by LVM could result in confusion. Indeed, the court found that the company Louis Vuitton was ordinarily called LV. Furthermore, Nord-Sud was using LV as a trademark and not as an internal reference because Nord-Sud s use was associated with (c) A trade name or signboard known throughout the national territory, where there exists a risk of confusion in the mind of the public; (d) A protected appellation of origin; (e) Authors rights; (f) Rights deriving from a protected industrial design; (g) The personality rights of another person, particularly his family name, pseudonym or likeness; (h) The name, image or reputation of a local authority Louis Vuitton Malletier S.A. v. Ittierre France S.A. & Nord-Sud S.A.R.L. (Paris Court of First Instance, 3rd Chamber, 3rd Section, Mar. 26, 2008) (unpublished) Louis Vuitton Malletier S.A. v. Ittierre France S.A. & Nord-Sud S.A.R.L. (Paris Court of Appeal, 2nd Chamber, Sept. 18, 2009), PIBD No. 907, part III, at 1510 (in French).

204 Vol. 101 TMR 1001 products being offered for sale. Moreover, the Court of Appeal found the addition of JUST CAVALLI, which enjoys a certain reputation itself, was not sufficient to avoid a risk of confusion, because the name was written in smaller letters. Thus, the Court of Appeal ruled that Nord-Sud infringed LVM s prior rights. However, the court considered that there were sufficient differences (such as the addition of the term JUST CAVALLI) to dismiss the claim of unfair competition. In the author s opinion, given the fame of LVM s mark, this decision seems justified. It appears that the Court of Appeal s ruling will give LCM the exclusive right to use the initials LV in connection with certain clothing. Nord-Sud may still request review by the Supreme Court in an attempt to have the Court of Appeal s decision overturned. II.C.1.d. Geographical Names The company Yves Saint Laurent (YSL) filed French trademark applications for MOROCCO, 446 MOROCO, 447 and MOROKO, 448 to designate goods in several classes (9, 14, 18, and 25). The INPI refused to register each of these marks because of a lack of distinctiveness and on the ground that they were deceptive (meaning that the consumers may be misled as to the origin of the goods) Application No , filed July 30, Application No , filed July 30, Application No , filed July 30, Article L711-2 of the IPC provides: The distinctive nature of a sign of a type that is capable of constituting a mark shall be assessed in relation to the designated goods or services. The following lack distinctive character: (a) Signs or names which in everyday or technical language simply constitute the necessary, generic or usual designation of the goods or services; (b) Signs or names which may serve to designate a feature of the product or service, particularly the type, quality, quantity, purpose, value, geographical origin, or time of production of the goods or furnishing the of service; (c) Signs exclusively constituted by the shape imposed by the nature or function of the product or which give the product substantial value. Distinctive character can be acquired by use, except in the case referred to in item (c). Article L711-3 of the IPC provides: The following may not be adopted as a mark or an element of a mark: (a) Signs excluded by Article 6ter of the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised, or by paragraph 2 of Article 23 of Annex 1C to the Agreement Establishing the World Trade Organization; (b) Signs contrary to public policy or morality or whose use is forbidden by law;

205 1002 Vol. 101 TMR YSL filed an appeal against the INPI s decision for each of the three applications. The Paris Court of Appeal rejected YSL s appeal and maintained the INPI s decision to refuse to register the marks because they lacked distinctiveness. 450 Indeed, whatever the spelling of the trademarks, French consumers would perceive them as a translation or an approximate translation of the country Morocco (in French, Maroc). They would also believe that goods sold under the marks came from Morocco (which is, furthermore, well known for the manufacture of leather goods, textiles, and jewelery). In France, the law permits the use of a geographical name as a trademark provided that it is arbitrary. However, when a trademark evokes an indication of origin (besides the specific protection afforded to the appellation d origine or to the geographical indication) such that the consumer will be influenced when acquiring the good, geographical names cannot be adopted. Thus, some geographic designations, such as HOLLYWOOD for chewing gum, PATTAYA for perfumes, CHICAGO for clothes, COTE D OR for chocolate, and WEMBLEY for balloons, have been permitted for registration because these places are not known for these particular goods. Thus, the places are arbitrary for these goods. The present decision of the Court of Appeal is consistent with the statutory law and the case law. III.A.1. Dilution Ferrero S.P.A., of Italy, is the owner of the international trademark NUTELLA, 451 designating France and covering the following goods in Class 30: pastry and confectionery, chocolate products, namely spreading creams containing cocoa with or without other ingredients, all the above articles excluding pudding mix. Mr. Alexandre Benaim had obtained a French registration for the trademark NU BELLA 452 in Class 5 for additives for medical purposes and in Class 29 for, in relevant part dietetic products not for medical use, food additives not for medical use, meal substitutes not for medical use. His company, Cosminpex, also owned the trademarks NU MOMENTS and NU MOMENTS KIDS. (c) Signs liable to mislead the public, particularly as regards the nature, quality or geographical origin of the goods or services Yves St Laurent S.A.S. v. Directeur Général de l INPI (Court of Appeal of Paris, 1st Chamber, Pole 5, Apr. 7, 2010), available at (in French) IR No , registered Mar. 31, Trademark No , registered Sept. 6, 2007.

206 Vol. 101 TMR 1003 Ferrero brought an action against Mr. Benaim and Cosminpex on the sole ground of damage to its famous mark. The defendants counterclaimed, asking for partial cancellation for non-use of the French extension of the International Registration NUTELLA, except for spreading creams containing cocoa. The Court of First Instance of Paris 453 dismissed the defendants counterclaim on the basis that they had no standing to bring the claim. Considering the substantial evidence presented by FERRERO, the court found the trademark NUTELLA to be well known in France. In comparing NU BELLA and NUTELLA, the court found that they had significant phonetic, visual and conceptual similarities (same number of letters, only one letter different in both marks, same rhythm of pronunciation) despite the fact that the goods covered by each mark were very different, although both covered foods. Ultimately, the Court of First Instance relied upon Article L of the IPC, recognizing that the word NU BELLA was very close to NUTELLA, a well-known mark, which was necessarily prejudicial to FERRERO. The court cancelled the registration for NU BELLA but did not award monetary damages to Ferrero because the NU BELLA mark had not been used. It is interesting to note that the court did not take account of the fact that the company COSMINPEX was already the owner of the trademarks NU MOMENTS and NU MOMENTS KIDS in its ruling, or the fact that the trademark NU BELLA could be considered an extension of this trademark format. III.A.2. Passing Off Jas Hennessy & Co. owns the trademark HENESSY, including in various forms (word marks and device marks (shape of a bottle)) for cognac (brandy). It found that numerous cognac bottles bearing its trademarks had their batch codes, located on the bottom of each bottle, intentionally scratched out and blackened Ferrero SPA v. Alexandre M. P. Benaim & S.A.R.L. COSMINPEX (Court of First Instance of Paris, 3d Chamber, 1st Section, Sept. 8, 2009), available at (in French) Article L713-5 of the IPC provides: 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. The provisions of the previous paragraph apply to the use of trademarks that are well-known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property.

207 1004 Vol. 101 TMR Hennessy filed an action against the distributors of these altered bottles for infringement of its trademarks. The Court of First Instance of Basse-Terre (Guadeloupe) rejected all of Hennessy s claims. 455 It ruled that Article L713-2 of the IPC 456 did not cover the acts of which Hennessy complained. This judgment was overturned by the Court of Appeal of Basse-Terre. 457 The Commercial Chamber of the Supreme Court affirmed the decision of the Court of Appeal. 458 It found that as a result of the deletion of the identification codes on the bottles bearing its trademarks, Hennessy was no longer able to give consumers a guarantee of authenticity and quality of all products being sold under its trademarks. The acts of scratching out and blackening the identification codes prevented traceability of the goods bearing Hennessy s trademarks and, therefore, constituted acts of infringement (Article L716-1 of the IPC). 459 In this decision the Supreme Court appears to have enlarged the scope of an infringement action to include not just the deletion and/or modification of a trademark per se but also of supplementary elements that perform the same function as a trademark (i.e., guarantee of origin, authenticity, and quality). III.D.3. Parody The French National Olympic and Sport Committee (Comité National Olympique et Sportif Français) (CNOSF) is the owner of a figurative trademark representing the five Olympic rings and of the national Olympic emblems. CNOSF filed an infringement and unfair competition action against Communication Presse Publication Diffusion (CPPD), which had in the summer of 2004 published a periodical bearing 455. Jas Hennessy & Co v. HBRI (Court of First Instance of Basse-Terre, Sept. 15, 2005), available at (in French) Article L713-2 provides: The following shall be prohibited, unless authorized by the owner: (a) The reproduction, use or affixing of a mark, even with the addition of words such as: formula, manner, system, imitation, type, method, or the use of a reproduced mark for goods or services that are identical to those designated in the registration; (b) The suppression or modification of a duly affixed mark Jas Hennessy & Co v. S.A. HBRI (Court of Appeal of Basse-Terre, Civil Chamber 2, May 26, 2008), available at (in French) S.A. HBRI v. Jas Hennessy & Co (Supreme Court, Commercial Chamber, Nov. 24, 2009), available at (in French) Article L716-1 provides: Infringement of the rights of the owner of a mark shall constitute an offense incurring the civil law liability of the offender. Violation of the prohibitions laid down in Articles L713-2, L713-3 and L713-4 shall constitute an infringement of the rights in a mark.

208 Vol. 101 TMR 1005 the name Olympic games for sex using the Olympic emblem and colors. CNOSF based its claim on Article L141-5 of the Sports Code and Article L713-5 of the IPC. 460 The Court of First Instance of Paris ruled that CPPD used the marks at issue as a parody and, therefore, would not injure their reputation. However, the court ruled that their use was unfair competition because of the reproduction of the colors of the Olympic emblems in the contested periodical. The Paris Court of Appeal partially invalidated the lower court s ruling. 461 It held that there was no imitation of the Olympic ring colors (rather, it was a reference to the rainbow flag). Therefore, the appellate court based its decision on the parody exception to the protection of trademark rights. The Supreme Court 462 partially overruled this decision on appeal and ordered a new trial. Indeed, the Supreme Court held that Article L141-5 of the Sports Code (which applies to any type of activity whether sport or non-sport activities) conferred an autonomous and absolute protection system independent from the provisions of Article L713-5 of the IPC. This ruling must be compared with the ECJ s decision 463 in connection with Article 6ter of the Paris Convention. The treatment is different for trademarks and for emblems: the existence of a risk of confusion is not required for the protection of emblems Article L141-5 of the Sports Code provides: The French Olympic and Sport Committee is the owner of national Olympic emblems and depositary of the motto, the hymn, the Olympic symbol, the terms jeux olympiques and olympiades. The filing of a trademark, the reproduction, the imitation, the affixing, the withdrawal, the modification of the emblems, motto, hymn, symbols and terms above mentioned are forbidden without the authorization of the French Olympic and Sport Committee. Article L713-5 of the IPC provides: 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. The provisions of the previous paragraph apply to the use of trademarks that are well-known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property S.A.S. CPPD v. CNOSF (Paris Court of Appeal, 4th Chamber, Section B, Mar. 7, 2008), available at (in French) CNOSF v. S.A.S. CPPD (Supreme Court, Commercial Chamber, Sept. 15, 2009), available at (in French) American Clothing Associates NV v. OHIM, Case C-202/08 P, [2009] ECR I-6933 (ECJ, 1st Chamber, July 16, 2009), available at docor&docjo=docjo&numaff=c-202/08p&datefs=&datefe=&nomusuel=&domaine=&mots=& resmax=100.

209 1006 Vol. 101 TMR Indeed, Article L141-5 of the Sports Code can be used against the appropriation of a trademark without even the Trademark Law to be taken into consideration. III.F.1. Non-Use Du Pareil au Même (DPAM) owned a registration for the trademark 86 in France 464 covering clothes, as well as registrations for variations on 86 and other registrations for trademarks either composed of 86 or 86 written out in French in different ways with different colors. In 2003, DPAM filed an action for infringement and unfair competition against ZARA, which was marketing tank tops with the number 86 written on them. ZARA counterclaimed for cancellation of DPAM s alleged 86 trademark for non-use as well as for unfair proceedings. In June 2007, the Court of First Instance of Paris dismissed DPAM s claims as well as ZARA s counterclaims. The Paris Court of Appeal found that a number alone could be a valid trademark. Nevertheless, it granted ZARA s claim for cancellation for non-use on the ground that DPAM had not used 86 in a trademark manner, but had used it in such a manner that consumers would view it as ornamental, especially because 86 was a weak indication of source. 465 The Court of Appeal also found no merit in DPAM s claim of infringement based upon ZARA s use of 86 in connection with tank tops, which are related to sport tops. DPAM appealed to the Supreme Court over the cancellation for non-use of its trademark 86, arguing that use of 86 in different formats was consistent with its claim to own a trademark in 86. The Supreme Court, however, upheld the decision of the Court of Appeal, cancelling the mark for non-use. 466 It held that DPAM had used 86 in variations (such as RW86 ), so that a consumer would not view 86 as a trademark but rather as an ornamental design. Under this ruling, DPAM could not prove use of 86 alone during the previous five years to avoid cancellation. This decision is consistent with precedent and reminds us that a trademark is susceptible to cancellation for non-use if it is used in a modified form, which affects its distinctive character. Because 86 was weak as a mark, DPAM could not satisfy the serious use criterion Trademark No , registered June 26, S.A. Du Pareil au Même v. S.A. Zara France (Court of Appeal of Paris, 4th Chamber, Section A, Nov. 12, 2008), available at (in French) S.A. Du Pareil au Même v. S.A. Zara France (Supreme Court, Commercial Chamber, Dec. 15, 2009), available at (in French).

210 Vol. 101 TMR 1007 III.F.6. Declaration of Invalidity In 1979, over a century after the division of the vineyard Château Figeac (1866), the Groupement Foncier Agricole du Château de Figeac (GFA), which was exploiting a number of plots of this vineyard, registered the French trademarks CHATEAU DE FIGEAC and LA GRANDE NEUVE DE FIGEAC, covering wines. GFA filed a claim against Rocher Bellevue Figeac (RBF) asking for the invalidation of RBF s French registrations for the trademarks CHATEAU CROIX FIGEAC and PAVILLON CROIX FIGEAC, registered in 1988 and 1998, respectively, in order to restrain them from using the name Château Rocher Bellevue Figeac to designate any wines originating from its plots of the vineyard by arguing that the latter owned only a very small area of the former Château Figeac vineyard (less than 4 percent) and that the trademarks were consequently deceptive. The Court of Appeal of Bordeaux rejected GFA s claims. 467 It stated that because GFA was requesting the invalidation of the trademarks CHATEAU CROIX FIGEAC and PAVILLON CROIX FIGEAC as a result of their deceptive character and passing off on the part of their owner, this meant that the GFA was requesting a decision in which the same rules as those that apply in an infringement action would apply here. The statute of limitations for an infringement action is three years. Furthermore, one cannot assert an infringement action if the later registered mark s use has been tolerated for five years unless registration for the junior mark was applied for in bad faith. Thus, the Court of Appeal found that GFA s claim was barred unless the GFA could prove the defendant s bad faith. On October 13, 2009, the Commercial Chamber of the Supreme Court overturned the decision of the Court of Appeal of Bordeaux. 468 The Supreme Court found that the Court of Appeal had not provided a sufficient legal basis for its decision because an invalidation action based on the deceptiveness of a mark is neither an infringement action nor an action claiming ownership of the trademark. Therefore, GFA s claim was not barred by the statute of limitation of Articles L and L of the IPC GFA du Château de Figeac v. S.A. Rocher Bellevue Figeac (Court of Appeal of Bordeaux, Jan. 14, 2008) (unpublished) GFA du Château de Figeac v. S.A. Rocher Bellevue Figeac (Supreme Court, Commercial Chamber, Oct. 13, 2009), available at (in French) Article L712-6 provides: Where registration has been applied for, either fraudulently with respect to the rights of another person or in violation of a statutory or contractual obligation, any person who believes he has a right in the mark may claim ownership by legal proceedings. Except where the applicant has acted in bad faith, action claiming ownership shall be barred three years after publication of the application for registration.

211 1008 Vol. 101 TMR Underpinning the Supreme Court s decision is the notion that one cannot acquire rights in a trademark that is deceptive, no matter how long such a mark is used. Thus, an action for invalidation based on the deceptive character of a trademark is not subject to any statute of limitation. GERMANY I.B. Descriptiveness The applicant FID Verlag GmbH Fachverlag für Informationsdienste sought to register the word mark OXFORD CLUB for goods and services in Classes 16, 38, 41, and 42. The German Patent and Trademark Office refused the registration of the applied-for term for goods and services in Class 16. The applicant appealed the decision to the German Federal Patent Court. During the application proceeding, the applicant had limited the specification of goods and services to print products, inter alia, periodically published magazines, books, loose leaf collections, seminar documents and other publications concerning financial, monetary and economical topics in Class 16; online services, namely provision of information of every description in sound and vision on the Internet concerning financial, monetary and economical topics in Class 38; cultural activities, education, apprenticeship, entertainment concerning financial, monetary and economical topics; publication and release of print products on sound recording carrier, picture carrier, and data carrier, as well as periodically published magazines, books, loose leaf collections, all of the aforementioned services concerning financial, monetary, and economical topics in Class 41, and software development for data processing, scientific services and research works; services of a database, all of the aforementioned services concerning financial, monetary, and economical topics in Class 42. Before the limitation in the application to goods and services related to financial, monetary, and economic topics, the German 470. Article L716-5 provides: A civil action for infringement is entered by the proprietor of the trademark. Nevertheless, a party enjoying an exclusive right to use said trademark may bring said action, except where otherwise stated by contract if, after having been requested to do so, the said proprietor has not exercised this right. Every party to a license agreement may intervene in an infringement suit brought by another party in order to obtain due redress for the prejudice he has suffered. Statute of limitation is three years. An infringement action cannot be brought against a subsequently registered trademark the use of which has been tolerated for five years, unless filing thereof was done in bad faith. This inadmissibility only however applies to those goods and services the use of which has been tolerated.

212 Vol. 101 TMR 1009 Patent and Trademark Office refused registration of the term OXFORD CLUB. The Office held that the applied-for mark was merely descriptive and not distinctive and had to be kept free for common use, in accordance with Section 8(2) Nos. 1 and 2 of the German Trademark Law. 471 The Office was of the opinion that Oxford was known as an important, traditional, and elitist English university town. The word CLUB described a union of people with common interests and goals. Furthermore, the word CLUB emerged as an indication of a special provider and the location of provision. By connecting a geographical indication and a descriptive term, the word mark OXFORD CLUB was a mere indication for a community thematically interested in the city of Oxford concerning the relevant goods and services. On appeal by the applicant, the German Federal Patent Court reversed the Office s decision. 472 It ruled that registration of the word mark OXFORD CLUB was not barred by Section 8(2) Nos. 1 and 2 of the German Trademark Act as far as all goods and services were limited to financial, monetary, and economic topics. In its opinion, OXFORD CLUB was distinctive and had no descriptive character with respect to the relevant goods and services. The combination of a descriptive word with the term CLUB is not registrable if it describes the field of interest or the target group. Furthermore, a geographical indication with the addon CLUB is barred from registration if it is an indication for associations or function rooms that provide the culture and tradition of a special country or a region. The applicant used the term OXFORD CLUB only for a private, international financial club. Furthermore, OXFORD would not evolve into a synonym for goods and services concerning financial, monetary, and economic topics. There was no indication that the city of Oxford had a special relation to these topics. Therefore, the word mark OXFORD CLUB qualified as an indication of origin that did not need to be kept free for common use. This decision is important because it shows that geographical indications are registrable if a reasonable association to the concerned region is excluded. Furthermore, the decision shows that a descriptive word with the add-on club is not barred from 471. Law on the Protection of Trade Marks and Other Signs, Oct. 25, 1994, as amended. Section 8 provides, in pertinent part: The following shall not be registered: 1. trade marks which are devoid of any distinctive character with respect to the goods or services; 2. trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of the rendering of the services, or to designate other characteristics of the goods or services Case No. 29 W (pat) 69/07 (Federal Patent Court, Aug. 12, 2009).

213 1010 Vol. 101 TMR registration if it does not describe the field of interest or the target group. Virbac S.A., a French company, applied for the international registration with extension to Germany of the word mark BACKHOME for, inter alia, medical and veterinary instruments destined to insert electronic microchips into creatures including animals in Class The German Patent and Trademark Office refused protection of the applied-for mark, in accordance with Sections 107, 113(1), 113(2), 37(1), and 8(2) Nos. 1 and 2 of the German Trademark Act; Article 5(1) of the Madrid Agreement; and Article 6quinquies B(1)(ii) of the Paris Convention. The Office held that BACKHOME was merely descriptive and not distinctive for the relevant goods and had to be kept free for common use. Regarding the relevant goods, it ruled that BACKHOME was just a general hint concerning the designated use, as such goods were designed to bring animals back home. On appeal, the German Federal Patent Court reversed the Office s decisions. 474 It ruled that BACKHOME had a distinctive character, was not descriptive, and did not have to be kept free for common use. Thus, it was protectable in connection with the relevant goods and not barred by Sections 107, 113, 37(1), and 8(2) Nos. 1 and 2 of the German Trademark Act, Article 5(1) of the Madrid Agreement concerning the international registration of marks in conjunction with Article 6quinquies B(1)(ii) of the Paris Convention. It held that neologisms can be barred from registration if they are commonly used and have an unambiguous descriptive meaning. In this regard, a neologism is descriptive if the relevant trade circle understands the descriptive meaning without difficulty and further analysis. A trademark that consists of several descriptive elements without any exceptional changes, such as those that are syntactical or semantical, is descriptive itself unless there is a perceptible difference between the word content and the mere sum of the elements contents. The neologism BACKHOME, which consisted of the two parts BACK and HOME, possessesed no meaning that exceeded the meaning of those parts. However, it had no descriptive character in terms of the abovementioned goods, that is, it did not directly describe a positioning system. Only directly descriptive terms are refused registration pursuant to Section 8(2) No. 2 of the German Trademark Act. On the other hand, there is no bar to registration if a descriptive message is merely suggested and has to be analyzed to conclude the descriptive character IR No , registered Aug. 16, 2004 (based on French Trademark No , registered July 23, 2004) Case No. 30 W (pat) 50/09 (Federal Patent Court, Dec. 4, 2009).

214 Vol. 101 TMR 1011 Furthermore, BACKHOME is distinctive, pursuant to Section 8(2) No. 1 of the German Trademark Act as well. Word marks have no distinctive character if they are only understood by the relevant trade circles and consumers as a descriptive meaning for the relevant goods and services, or if they are common words of the German or a foreign language that are understood because of their usage in advertisements or the media. However, some distinctiveness is sufficient for registration, even if it is very low. BACKHOME had neither an essential descriptive character concerning the aforementioned goods, nor was it a common word without distinctive meaning. This decision is important because it shows that a combination of two descriptive words can establish a descriptive character if the combined term creates a perceptible difference concerning the content of the combined term and the mere sum of its parts. Furthermore, a term is only descriptive in character if it directly describes the relevant goods and services. An indirect descriptiveness that necessitates further analysis does not bar a trademark from registration. I.C. Distinctiveness Gruner + Jahr GmbH & Co. KG applied for registration of the word mark TRUMAN for a variety of goods and services in Classes 9, 16, and 41. In its decisions on November 3, 2006, and December 21, 2007, the German Patent and Trademark Office refused registration, holding that the term TRUMAN had no distinctive character and had to be kept free for common use. The Office reasoned that the concerned trade circles would associate the word TRUMAN as a descriptive indication for the former president of the United States of America, Harry S. Truman. This association would be made because politicians usually are referred to by their surnames and not by their full names. The term TRUMAN is also descriptive of the relevant goods and services, as they are, with regard to content, capable of dealing with the person and the political work of the former U.S. President. On appeal, the German Federal Patent Court reversed the Office s decisions. 475 It held that personal names are generally registrable, pursuant to Section 3(1) of the German Trademark Act. Registration of such names is subject to the same restrictions as other word marks. In this regard, personal names are not registrable if they are not distinctive or merely descriptive concerning the relevant goods and services. Word marks have no distinctive character if they are only understood by the relevant trade circles as a descriptive meaning for the relevant goods and 475. Case No. 26 W (pat) 19/09 (Federal Patent Court, Sept. 23, 2009).

215 1012 Vol. 101 TMR services. In English-speaking countries, the name TRUMAN is a first name or surname. The movie The Truman Show, the famous writer Truman Capote, or the U.S. President Harry S. Truman would also have an effect on German trade circles understanding the term TRUMAN as a first name or surname. Without any additional specifications, the relevant trade circles would not directly associate the term with the former U.S. President (who died in 1972). Only unique surnames of contemporary history can have such an individualizing character. Therefore, the term TRUMAN was found to have distinctive character, as personal names normally indicate origin. Concerning the above-mentioned goods and services, the relevant trade circles would not associate the concerned goods and services with Harry S. Truman. This decision is important because it establishes that a personal name has to be subject to the same conditions as other word marks to be rejected from registration as a trademark. Only if the name is a unique personal name of contemporary history or if there are additional specifications would the relevant trade circle associate the concerned goods and services with the named person. However, a personal name is generally distinctive and indicative of the origin of the concerned goods or services. Defendant Defbeat Records word mark SOUL IN THE CITY was registered in Classes 9, 16, 38, and 41 for, inter alia, compact disks (sound, vision), DVD, Video CD, disk records, sound carriers, video tapes, video cassettes; musical performances and events, realization of musical performances and dances; entertainment by music and audio production; publication and editing of music and film recordings on audio and audio-visual carriers also via the Internet. On July 29, 2008, the German Patent and Trademark Office found in favor of the plaintiff, who had requested partial cancellation of the word mark SOUL IN THE CITY for absolute reasons limited to the above-mentioned goods and services. The defendant appealed the decision to the German Federal Patent Court. In its decision of July 29, 2008, the German Patent and Trademark Office held that the word mark SOUL IN THE CITY shall not be registered, in accordance with Sections 50(1), 54 in conjunction with Section 8(2) No. 1 of the German Trademark Act. All relevant goods and services regarding content could be associated with the music style of Soul (a version of Rhythm and Blues). If music such as this were presented in a city or textually or musically described the urban flair of a city, the interested audience would understand the term SOUL IN THE CITY as an obvious title of an event that distinguished the relevant goods and services. It would not recognize the term as an identification of

216 Vol. 101 TMR 1013 commercial origin. Furthermore, the Office established that this association would be made without translating the term into German. The relevant trade circles are accustomed to these kinds of descriptions of events, such as Salsa in the City, Summer in the City, and Dance in the City. Consequently, the Office held that SOUL IN THE CITY had no distinctive character. On appeal, the German Federal Patent Court upheld the Office s decision, holding that the word mark SOUL IN THE CITY was not registrable on the ground of lack of distinctiveness, in accordance with Sections 50(1), 54 in conjunction with Section 8(2) No. 1 of the German Trademark Act. 476 The main purpose of a trademark is to provide the commercial origin of the registered goods and services. The novelty of a word mark or a combination of words alone does not establish distinctiveness. Word marks are not distinctive if they have only descriptive meanings for the relevant goods and services, and lack any ambiguity. If so, the relevant trade circles would not understand them as distinctive. Certainly, the German trade circles would understand the meaning of the term SOUL IN THE CITY. This concept is supported by the comprehensive use of the term... in the city on the Internet. In addition, the relevant goods and services are unexceptionally related to music. Therefore, the court found that the word mark SOUL IN THE CITY was not distinctive. The term had only a descriptive character for the goods and services concerning music and it did not indicate commercial origin. This decision is important because it shows that a word mark for the registered goods and services is distinctive only if the relevant trade circles understand it as a distinctive feature of the relevant goods and services. Referring to music, it has only a descriptive character. Beyond that, the word mark SOUL IN THE CITY could have distinctive character. Hubert Burda Media Holding GmbH & Co. KG applied for registration of the word mark MY WORLD for goods and services in Classes 16, 35, and 41. On August 22, 2005, the German Patent and Trademark Office refused registration of the term MY WORLD for the relevant goods in Class 16, holding that it was devoid of distinctive character and had to be kept free for common use, pursuant to Section 8(2) Nos. 1 and 2 of the German Trademark Act. On appeal, the German Federal Patent Court affirmed the Office s decision. 477 Against this decision, the applicant filed an appeal with the German Federal Supreme Court, which partially reversed the decision and remanded the case to the German Federal Patent 476. Case No. 27 W (pat) 17/09 (Federal Patent Court, Sept. 28, 2009) Case No. 29 W (pat) 134/05, GRUR 2008, 430 (Federal Patent Court, Dec. 12, 2007), reported at 99 TMR 511 (2009).

217 1014 Vol. 101 TMR Court. The German Federal Supreme Court held that legal error was involved in the finding of lack of distinctiveness concerning the above-mentioned services in Classes 35 and 41. It held that the term MY WORLD had distinctive character for the services demonstration and leasing of sound and picture recording in Class 41. The term MY WORLD was not limited to a specific content or topic and consequently had no major descriptive meaning for such services. Furthermore, distinctiveness of MY WORLD could not be excluded for the services in Class 35. In the advertising field, it is not common that a trademark describes the content or theme of an advertisement. MY WORLD did not define a special topic and it was not applicable as a general advertising message. Further, it could not be overlooked that the relevant trade circle understands the term as a keyword that is used to draw attention to such services and to distinguish them from others. Furthermore, MY WORLD was an ambiguous term. On appeal, the German Federal Patent Court affirmed the German Federal Supreme Court s decision, holding that the term MY WORLD had distinctive character and did not have to be kept free for common use concerning the above-mentioned services in Classes 35 and 41, pursuant to Section 8(2) No. 1 of the German Trademark Act. 478 It had previously held that a low level of distinctiveness is sufficient for registration. This mark had no major descriptive meaning and no functional connection regarding the relevant services in Classes 35 and 41. Therefore, the trade served as an indication of origin. Furthermore, the court assumed that from the commercial practices in the field of advertising it can be concluded that trademarks usually do not describe the topic or content of an advertisement, as this would be an undesired limitation of the trademark s function. Thus, MY WORLD was not a thematic description, but an indication of origin of the services of an advertising agency, as the accomplishments of an advertising agency are not characterized by the advertised products. Also, the court did not find that the inherent meaning of MY WORLD was limited to any specific products or to the content of the other services for which the trademark was filed. Furthermore, MY WORLD could not be classified as a general advertising message that lacks distinctiveness. Rather, it could be shown that the relevant trade circle understood the term as an indication of origin. The trademark MY WORLD was too imprecise to describe an individual thematic issue. Also, MY WORLD was not a commonly used term because the combination of words was ambiguous. In addition, MY WORLD did not need to be kept free for common use. The court did not identify any interest of competitors to use MY WORLD in a descriptive manner Case No. 29 W (pat) 134/05 (Federal Patent Court, Oct. 14, 2009).

218 Vol. 101 TMR 1015 This decision is important because it shows that there are no strict guidelines for the assessment of distinctiveness. As only a low level of distinctiveness is sufficient for registration of a trademark, it is considered distinctive if it cannot be excluded that the relevant trade circle understands the term as an indication of origin. This can be assumed if the trademark has no major descriptive meaning and no functional connection regarding the relevant goods and services, specifically, if the trademark is ambiguous. The applicant Ferrero Deutschland GmbH sought to register the word mark EM 2012 for goods in Classes 16, 25, and 30. In its decisions of June 22, 2007 and February 27, 2008, the German Patent and Trademark Office refused registration of the word mark, pursuant to Section 8(2) No. 1 of the German Trademark Act. It held that EM 2012 had no distinctive character. The term was generally understood as descriptive of the European Football Championship in 2012, but not as an indication of origin concerning the relevant goods. Furthermore, the relevant goods related to the meaning of the applied-for word mark. The term EM 2012 was abstract regarding the goods in Class 16. As to the goods in Class 25, which include fan merchandise, the term EM 2012 was an indication for their design, namely, the caption. Also, the goods in Class 30 are typical sponsoring products for sporting mega-events. At least for the goods in Classes 16 and 25, the word mark was descriptive in accordance with Section 8(2) No. 2 of the German Trademark Act. The word mark indicated that the print products were related to EM 2012 regarding content, specifically because the clothing, headdresses and footwear are labelled with EM On appeal, the German Federal Patent Court affirmed the Office s decisions, holding that the word mark EM 2012 was not registrable on the ground of lack of distinctiveness, pursuant to Section 8(2) No. 1 of the German Trademark Act. 479 Word marks are not distinctive if for the relevant trade circles the descriptive meaning of the relevant goods and services is readily apparent. Furthermore, it is sufficient that only a portion of the goods covered by the applied-for mark is not protectable. The Court assumed that the relevant trade circles would not assign a distinctive combination of letters and numbers to the trademark. Instead, they would understand EM 2012 as an indication for the European Football Championship in 2012 (which takes place in Poland and the Ukraine in 2012). In fact, the relevant trade circles would not understand the word mark as an indication of origin. In this respect, this word mark could be a thematic description for the 479. Case No. 25 W (pat) 35/09 (Federal Patent Court, Nov. 25, 2009).

219 1016 Vol. 101 TMR print products, as the European Football Championship is continuously analyzed by the media and by the press. Furthermore, there is a close relation to clothing, headdresses and footwear. On the occasion of such events, special outfits and product lines are designed by several suppliers. Even the goods chocolate, chocolate goods, fine and long life bakery products and sugar products are strongly connected with the European Football Championship. In conjunction with such an event, groceries and other food products are produced and distributed with designs or packaging that relates to the event. Furthermore, there are products that are made especially for athletes. This decision is important because it shows that a direct descriptive meaning of a trademark is not necessary for a finding of lack of distinctiveness. It is sufficient that for the relevant trade circles the descriptive meaning is evident with respect to the relevant goods and services. II.C.1.d. Geographical Names The German firm Netto Marken-Discount AG & Co. KG applied to register the word mark LANCASTER for healing herbal teas, medicinal teas, medicinal herbal teas, slenderness tea for medical purposes in Class 5; and iced tea, tea-based beverages, non-medical herbal teas, tea in Class 30. As the registration for term for goods on July 7, 2008, the German Patent and Trademark Office refused the registration of the word mark LANCASTER. It held that Lancaster was known as a city located in the County Lancashire in North West England, an agricultural location. Furthermore the geographical origin of agricultural products, especially tea, is a very important description, and an absolutely necessary indication for the trade circle and consumers. Therefore the Office ruled that the relevant trade circles and consumers would understand the term LANCASTER as a geographical indication that would have to be kept free for common use, in accordance with Section 8(2) No. 2 of the German Trademark Act. On appeal by the applicant, the German Federal Patent Court affirmed the Office s decision, holding that the term LANCASTER was a geographical indication under the terms of Section 8(2) No. 2 of the German Trademark Act. 480 Section 8(2) No. 2 was applicable even if the relevant geographical indication was not actually used. It is only necessary that the use of the geographical indication is possible any time in future. Only if the relevant goods cannot be reasonably associated with the geographical origin, either at the present time or in the future, would Section 8(2) No. 2 be inapplicable. The relevant trade circles and consumers would 480. Case No. 25 W (pat) 67/09 (Federal Patent Court, Nov. 27, 2009).

220 Vol. 101 TMR 1017 associate the term LANCASTER with the English city Lancaster because of its economic and political importance. In this regard it is irrelevant how known the city is or if there are trade firms connected to it. The settlement of trade firms, which produce and distribute tea or tea-like beverages, is not impossible in an English city like Lancaster. Furthermore, the geographic indication LANCASTER has to be kept free for common use, even though it is the name of several cities, especially in the United States or Canada. This decision is important because it shows that geographical indication in word marks shall not be registered even though there are several cities with the corresponding name or even if the relevant geographical indication is not actually used as an indication of geographical origin. Only if a reasonable association to the relevant city can be excluded at present and in the future will the geographical indication be registrable pursuant to the German Trademark Act. III.A.6.a. Online Ads Beta Layout GmbH, the plaintiff in this case, is the owner of the trademark PCB-POOL, registered in Class 42 for technical treating and updating of computer software for optimizing technical procedures in the manufacture of printed circuit boards. The defendant used pcb as a keyword triggering advertising for its products and services relating to printed circuit boards. Both parties manufacture printed circuit boards and distribute them via the Internet. The trademark owner brought an infringement action against the defendant for using its trademark as a keyword for Google advertising. The defendant had already signed a cease and desist declaration, so that the action concerned only the plaintiff s claims for reimbursement of attorneys fees for the cease and desist letter that had been sent to the defendant. The court of first instance 481 dismissed the action. The court of second instance, however, upheld the plaintiff s claim. 482 The defendant had chosen the keyword pcb (short for printed circuit board ) and the keyword option broad match, where advertising is triggered also in cases where the Internet user searches for combined terms consisting of the keyword and additional words. The advertisement of the defendant was therefore displayed not only when an Internet user searched for pcb but also when a 481. Case No. 41 O 189/06 (District Court of Stuttgart, Mar. 13, 2007) (unpublished) Case No. 2 U 23/07, GRUR-RR 399 (2007) (Stuttgart Court of Appeals, Aug. 9, 2007).

221 1018 Vol. 101 TMR search for pcb-pool was performed. The court of second instance saw this as an infringing use of pcb-pool. On appeal, the Federal Supreme Court reversed, holding that use of a descriptive term as a Google AdWord was permitted use according to Section 23(2) of the German Trademark Act. 483 The Court pointed out that the defendant had not used pcb-pool but the descriptive term pcb. This finding was unchanged by the fact that the defendant had chosen the standard option broad match, resulting in the display of his advertisement also in instances where the Internet user searched for pcb-pool. The Court noted that the option broad match is generally chosen in order to also place the advertisements in cases where a search is performed for descriptive combinations, such as pcb-use and pcbdevelopment. The fact that this might at times lead to the display of advertisements, even in cases where distinctive marks containing a descriptive term are entered as search terms, would not change the conclusion of permitted use. This decision is important because it clarifies that the use of descriptive terms as Google AdWords is permitted even if the option broad match is chosen. In this instance, the Court refrained from referring the matter to the Court of Justice of the European Union) (formerly the European Court of Justice, or ECJ) because the case could be resolved on the basis of permitted use of a descriptive term. The defendant had been enjoying protection for its company name, Beta Layout GmbH, and the plaintiff had been using BETA LAYOUT as a keyword for Google advertising. Both parties manufactured printed circuit boards and distributed them via the Internet. The defendant sent a cease and desist letter to the plaintiff regarding the plaintiff s use of BETA LAYOUT as a keyword for Google advertising. The plaintiff asked the court to establish by declaratory judgment that the defendant could not enjoin the plaintiff from using BETA LAYOUT and/or confusingly similar spellings as a search term, which, when entered into Internet search engines, would refer the user to the plaintiff s Internet offer for the manufacture of printed circuit boards Case No. I ZR 139/07, GRUR 502 (2009) (German Federal Supreme Court, Jan. 22, 2009) (PCB). Section 23 No. 2 of the German Trademark Act provides: The proprietor of a trademark or commercial designation shall not be entitled to prohibit a third party from using in the course of trade... signs which are identical with or similar to the trademark or commercial designation as indications concerning characteristics or properties of goods or services, in particular, the kind, quality, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services..., provided such use is not contrary to accepted principles of morality.

222 Vol. 101 TMR 1019 The courts of the first and second instance (District Court of Düsseldorf 484 and the Düsseldorf Court of Appeals 485 ) both granted the declaratory relief sought, finding that there was no risk of likelihood of confusion. The Federal Supreme Court upheld the decisions of the lower courts, affirming that the use of BETA LAYOUT as a keyword for Google AdWord advertising did not infringe the defendant s company name. 486 The Court left open the question of whether use of a sign as a keyword constituted trademark use and found no infringement because there was no risk of confusion. The decision emphasizes the differences between use of a sign as a metatag, which directly influences the list of results of a search engine, and use of a sign as a keyword for advertising, where the list of results remains unchanged while an advertisement next to the result list is displayed (the advertisement is separated from the result list graphically and is identified as such by the headline Advertisements ). The Court concluded that in this particular case, where the plaintiff s advertisement did not contain the sign BETA LAYOUT, consumers would not assume that the advertisement originated from the defendant. In these circumstances, the defendant could not rely on unfair competition law claims. As protection of company names is German law, which is not based on the European Trademarks Directive, the Court did not refer the matter to the Court of Justice of the European Union. The decision is important because it concerns the previously unresolved question, discussed controversially by commentators and lower courts alike, of whether use of third parties trademarks or company names as Google AdWords is permitted. This decision seems to implicate that such use as a keyword is permitted, but leaves open the question of whether use as a Google AdWord constitutes use of a trademark. In another case, the German Federal Supreme Court 487 as well as courts of several other European Community member states referred this question to the Court of Justice of the European Union. It is, therefore, the Court of Justice that will have the last say in the matter of use of such keywords Case No. 34 O 179/05 (District Court of Düsseldorf, Apr. 7, 2006) (unpublished) Case No. 20 U 79/06, WRP 440 (2007) (Düsseldorf Court of Appeals, Jan. 23, 2007) Case No. I ZR 30/07 (GRUR 500 (2009)) (German Federal Supreme Court, Jan. 22, 2009) (BETA LAYOUT) Case No. I ZR 125/07, GRUR 498 (2009) (German Federal Supreme Court, Jan. 22, 2009) (BANANABAY).

223 1020 Vol. 101 TMR III.A.9. Infringement of Unregistered Trademarks Both parties were manufacturers of adhesives. The defendant s instant adhesives were packaged in the colors yellow, black, and red (below, illustrations at left). For decades, the plaintiff, UHU, had been intensively using the color combination yellow and black for the packaging of its adhesives (below, illustrations at right). UHU brought an infringement and unfair competition action against the defendant for the use of its packaging, relying on unregistered trademark rights in the color combination of yellow and black, with a predominant part being yellow. Defendant s packaging Plaintiff s packaging The court of first instance upheld the action, 488 but the court of second instance 489 dismissed the action, finding that the plaintiff had not acquired nonregistered trademark rights according to Section 4(2) of the German Trademark Act 490 in the abstract color combination of yellow and black. The court found that Section 8(1) of the German Trademark Act, 491 which deals with the prerequisite of graphic representation for the registration of a sign as a trademark, is applicable also to nonregistered trademark rights. According to settled case law, it is not possible to obtain a registered trademark for an abstract color combination if there is no systematic arrangement associating the colors concerned in a predetermined and uniform way. The court of appeals applied this rule of graphical representation to nonregistered trademark rights as claimed by the applicant and concluded that the applicant could not have 488. Case No. 81 O 100/05 (District Court of Cologne, Feb. 3, 2006) (unpublished) Case No. 6 U 59/06, GRUR-RR 100 (2007) (Cologne Court of Appeals, Oct. 13, 2006) Section 4(2) of the German Trademark Act provides: Trademark protection shall accrue... through the use of a sign in the course of trade insofar as the sign has acquired a secondary meaning as a trademark within the affected trade circles Section 8(1) of the German Trademark Act provides: Signs that are capable of being protected as a trademark within the meaning of Section 3, but not capable of being represented graphically, shall not be registered.

224 Vol. 101 TMR 1021 obtained a nonregistered trademark in an abstract color combination because of the mark s lack of graphical representation. The court additionally held that unfair competition claims with regard to avoidable deception as to origin or exploitation of reputation failed as well, as the public would be able to distinguish the differences in trade dress. The Federal Supreme Court upheld the decision of the court of second instance, confirming that the plaintiff could not rely on a nonregistered trademark right in the color combination of yellow and black, with the predominant part being yellow. 492 However, the Court held that the court of second instance should not have relied on Section 8(1), as such provision sets prerequisites to obtain trademark protection through registration and therefore was not applicable to nonregistered trademark rights. Rather, the Court relied on the general principle of precision. According to the Court, a plaintiff invoking nonregistered trademark rights in a color combination must to meet the general principle of precision identify precisely the mark invoked, by giving concrete details regarding the systematic arrangement of the colors (e.g., regarding the ground color and the color of the word parts) and the surface ratio of the colors. Where different variants of trade dress used by the plaintiff have common features (for example, certain color combinations), these features must be precisely defined. The Federal Supreme Court left open the question of unfair competition claims, as the appeal in this respect was inadmissible. The decision is important because the Federal German Supreme Court commented for the first time under harmonized trademark law on the prerequisites for claiming protection of a color combination as a nonregistered trademark. In particular, although nonregistered trademark protection according to Section 4(2) of the German Trademark Act need not fulfill the requirement of graphical representation of Section 8(1) of the German Trademark Act, such nonregistered trademark protection must fulfill the general principle of precision. Hence, this decision might make it possible to invoke nonregistered trademark rights in a color combination if precise information on the systematic arrangement of the colors and their surface ratio is provided. In such a case, courts could grant protection for a color combination irrespective of whether such a color combination would be registrable. III.D.1. Descriptive Use The plaintiff, the licensee of the word mark CCCP (a mark owned by Mr. Manfred Jansen and registered for, inter alia, 492. Case No. I ZR 195/06, GRUR 783 (2009) (German Federal Supreme Court, Feb. 19, 2009) (UHU).

225 1022 Vol. 101 TMR T-shirts) was granted authority to pursue infringement of the licensed trademark in its own name. The defendant was a distributor of T-shirts bearing the symbol of a hammer and sickle together with the term CCCP, an imitation in Roman letters of the Cyrillic abbreviation for the former Soviet Union. The plaintiff claimed that the distribution of T-shirts bearing CCCP on the front, as displayed in a picture presented to the court (see below), infringed the word mark CCCP. The courts of first and second instance (District Court of Hamburg 493 and Hamburg Court of Appeals 494 ) dismissed the infringement action. On appeal, the Federal Supreme Court upheld the decisions of the lower courts, assuming that the symbols of former Eastern bloc states (here, the CCCP together with the hammer and sickle) on the front of clothing items would be seen by the public as mere decorative elements and not as an indication of origin. 495 The court of appeals was right to take into consideration the branding practices in the relevant sector. The Court ruled that whether the public perceives a sign placed on the front of a piece of clothing as a trademark or as merely a decorative element would depend on the actual sign used and where on the garment it was placed. Although labels placed on the inside would usually be regarded as trademarks, so would signs on the outside, if they were already known to the public as trademarks, or if the signs were coined words or figurative elements. The sign CCCP in combination 493. Case No. 406 O 133/06 (District Court of Hamburg, Nov. 17, 2006) (unpublished) Case No. 3 U 280/06, GRUR 22 (2009) (Court of Appeals of Hamburg, Apr. 10, 2008) Case No. I ZR 82/08 (German Federal Supreme Court, Jan. 14, 2010) available at sid=22fc181bc e19660e3c4ad47.

226 Vol. 101 TMR 1023 with a hammer and sickle, however, would be seen as a decorative element only. The decision is likely to have an impact on the use of references to former Eastern bloc states, and it generally calls into question whether the eye-catching use of meaningful terms or symbols on clothing can be prohibited as trademark infringement, even if an identical registered trademark already exists. Trademark use and thus an infringement could also possibly be denied if a saying, aphorism, or any other term or logo that might have a more general meaning or that could be understood as a statement of the person wearing the garment were put on the front of the piece of clothing. This case verifies that a precondition of trademark infringement is use of a sign as a trademark, i.e., a mark that indicates origin. Such use of a sign as a trademark (infringing use) requires that the consumer perceive a sign as a trademark, which may be excluded in a case of descriptive use. III.D.2.a. Fair Use Adam Opel AG, the owner of trademark registrations for a logo (referred to here as the OPEL-LIGHTNING logo) covering, inter alia, motor vehicles and toys, brought suit against Autec AG, which manufactured and marketed remote-controlled scale models of the Opel Astra V8 coupé that bore the same OPEL-LIGHTNING logo (see illustration below) on its radiator grille as on the original vehicle. In its action, the plaintiff argued that the use of the OPEL- LIGHTNING logo by Autec on its scale models infringed the plaintiff s mark, which was protected both for motor vehicles for which the mark was well known and for toys. The court of first instance, the Regional Court Nürnberg- Fürth, referred this matter to the European Court of Justice (ECJ) (now known as the Court of Justice of the European Union) for a preliminary ruling. The ECJ held in this decision that where a trademark is registered both for motor vehicles in respect of which it is well known and for toys, the affixing by a third party of a sign identical to that trademark on scale models of vehicles, in order to faithfully reproduce those vehicles, and the marketing of those scale models, constitute a use that the proprietor of the trademark is entitled to prevent only if that use affects or is liable

227 1024 Vol. 101 TMR to affect the functions of the trademark registered for toys. 496 The ECJ further took the view that it was left to the referring court to determine, by reference to the average consumer of toys in Germany, whether the use at issue was affecting the functions of the mark. Following the preliminary ruling of the ECJ, the court of first instance denied such an effect on the functions of the mark and dismissed Opel s action. The Nürnberg Appeal Court upheld the decision. 497 On further appeal, the Federal Supreme Court confirmed the decisions of the prior courts. 498 Even considering that the plaintiff s mark was protected for toys resulting in identity of the concerned goods use of the OPEL-LIGHTNING logo was assumed to not affect the main function of the mark, which was to indicate the origin of the goods, or any of the other functions of the mark. In this regard the Court opined that it was decisive that the relevant public (as confirmed by surveys) understood the OPEL- LIGHTNING logo on the radiator grille of the model not as an indication of the origin of the model car but only as a reproduction detail of the real car. As to the question of whether the use of the mark on the scale model infringed the plaintiff s marks for motor vehicles, the Court consequently found that there was no likelihood of confusion given that the products were dissimilar. While the use of the OPEL-LIGHTNING logo on the model car took advantage of the reputation of the well-known mark of the car manufacturer, it did not take unfair advantage of it, as the exploitation was the inevitable result of the allowed faithful reproduction. Particularly, the defendant used its own trademark, CARTRONIC, and company name, Autec, on the packaging. The decision makes clear that even in cases of use of identical marks for identical products, there is no trademark infringement where no function of the trademark is affected. It is thus in line with the Court of Justice s recent decisions regarding AdWords, particularly its judgment in Google France and Google. 499 Car manufacturers will in the future have to rely on design protection rather than on trademark protection if they wish to prohibit scale models. Use of a sign that is protected as a trademark but is not perceived by the relevant consumer as an indication of origin might preclude trademark infringement Adam Opel AG v. Autec AG, Case C-48/05, [2007] ECR I-1017 (ECJ, Jan. 25, 2007) Case No. 3 U 1240/07, GRUR-RR 393 (2008) (Nürnberg Appeal Court, Apr. 29, 2008) Case No. I ZR 88/08, GRUR 726 (2010) (German Federal Supreme Court, Jan. 14, 2010) Joined Cases C-236/08 C-238/08, (CJEU, Mar. 23, 2010).

228 Vol. 101 TMR 1025 GREECE I.C. Distinctiveness Altana Pharma AG, a German company, applied for the extension to Greece of its International Registration for a device mark covering various goods and services in Classes 5, 9, 16, 35, 38, 41, and 42 (see below). 500 The Administrative Trademark Committee accepted the application for all goods and services except pharmaceutical preparations for the treatment of respiratory diseases in Class Its rejection of the Class 5 goods was based on the ground that the absence of a word element in the trademark rendered the prescription of those pharmaceuticals by physicians impossible, thereby presenting a danger to the health and perhaps the very life of the patients. After assessing the applicant s arguments to the contrary, the Athens Administrative Court of First Instance, which ruled on Altana s recourse for revocation of the decision, 502 held that the Committee had erred in finding that the device mark in question lacked distinctive power as far as pharmaceuticals were concerned. The Court commented that the mark was sufficiently specific and possessed distinctive character, so that it was capable of distinguishing even the goods in Class 5; it accepted that even a device is capable of defining the origin of the covered goods from a certain company IR No (Greek Trademark No. 7404), filed and registered Oct. 1, 2001, application for extension to Greece filed Apr. 11, Decision No. 7759/2003 (Administrative Trademark Committee, June 6, 2003) Recourse No. 9372, filed Aug. 14, 2003.

229 1026 Vol. 101 TMR Consequently, the Court reversed the decision of the Administrative Trademark Committee and allowed the mark to proceed to registration for goods in Class 5 as well. 503 I.D.1. Similarity of Marks The German company Schildt-Model-Kleidung GmbH & Co. KG filed an application for the extension to Greece of the registration for its international trademark KAISER DESIGN GERMANY, 504 covering goods in Classes 3, 18, and 25 (see below). 505 The Administrative Trademark Committee rejected Schildt s mark 506 with respect to goods in Class 25 on the ground that it resembled the prior-registered Greek trademark KAISER, covering similar goods in the same class. 507 Schildt filed recourse against the Committee s decision before the Administrative Court of First Instance of Athens. 508 It argued that (1) the words KAISER and DESIGN in its mark appear in bold letters with a certain distance from each other and different sizes; (2) its mark also comprised the word GERMANY, appearing beneath the other two words and in a smaller type size; and (3) its mark consisted of three words, whereas the cited mark consisted of one. The Court took into consideration the fact that the mark KAISER DESIGN GERMANY differed from the cited mark KAISER with respect to (1) the number of words of which it consisted (three, versus one in the cited mark); (2) the appearance (typeface) of the marks; and (3) the fact that the word KAISER, which is common to the two marks under comparison, is a name that is specifically defined by the words DESIGN and GERMANY. Moreover, the Court found decisive the fact that the cited mark 503. Decision No /2008 (Administrative Court of First Instance of Athens, July 16, 2008) IR No (Greek Trademark No. 1964), filed and registered Feb. 6, Class 3: soaps, perfumery goods, essential oils, articles for body and beauty care, hair lotions, dentifrices; Class 18: leather and imitations of leather and goods made of these materials (included in this class), trunks and traveling bags, umbrellas, parasols, walking sticks; Class 25: articles of clothing, suits, bathing trunks, bathrobes, belts, neckerchiefs, gloves, shirts, trousers, braces, jackets, ties, leather furs, coats, furs, pullovers, sack coats, shawls, pajamas, socks, knitwear, stockings, underwear, waistcoats, headgear Decision No. 5967/2002 (Administrative Trademark Committee, 2002) Trademark No , filed Mar. 24, Recourse No /2002, filed Dec. 3, 2002.

230 Vol. 101 TMR 1027 KAISER covered clothing in general in Class 25, whereas the mark under consideration covered many other different goods in the same class. The Court concluded that the overall visual and aural impression given by the marks under comparison was sufficiently different, and therefore presented no risk of confusion to consumers as to the company of origin of the goods in Class 25. Accordingly, it allowed the registration of the mark KAISER DESIGN GERMANY for said goods. 509 Athinaiki Ikogeniaki Artopiia, a Greek firm, applied for the registration of the trademark FERRÓ & Device, to cover goods in Classes 29 and 30 (see below). 510 The Administrative Trademark Committee accepted the application for registration. 511 Ferrero S.p.A., the famous Italian chocolatier, filed opposition 512 against the registration of the applied-for mark, based on its prior registrations for the following trademarks: (1) FERRERO; 513 (2) FERRERO; 514 (3) FERRERO; 515 (4) FERRERO 509. Decision No. 4205/2008 (Administrative Court of First Instance of Athens, Mar. 28, 2008) Application No , filed Oct. 18, Class 29: meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruit and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats; Class 30: coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour and preparations made from cereals, bread, pastry and confectionery, biscuits, sweets, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, toasts, breadsticks and all kinds of pastries (PALMIER, puff pastries) Decision No. 5557/1997 (Administrative Trademark Committee, 1997) Opposition No. 3456/1999, filed Apr. 27, Trademark No , filed Oct. 15, Trademark No , filed Dec. 21, 1971, registered Feb. 17, Trademark No , filed Dec. 21, 1971, registered Feb. 17, 1973.

231 1028 Vol. 101 TMR ROCHER; 516 (5) FERRERO ROCHED OR; 517 (6) FERRERO CAPPUCCINO; 518 and (7) FERRERO FRESCO MINT 519 (see below). No No No No No No No The Administrative Trademark Committee rejected the opposition. 520 Ferrero then filed recourse before the Athens Administrative Court of First Instance. 521 The Court upheld the Committee s decision, 522 and Ferrero appealed to the Court of Appeal. 523 It argued that the mark FERRÓ & Device resembled visually and aurally Ferrero s prior-registered trademarks, and that as a consequence registration of the mark would pose a risk of confusion of consumers because the goods applied for were similar to its own. Ferrero further argued that the contested mark infringed its company name and invoked the notoriety of its marks Trademark No , filed Aug. 6, 1982, registered July 17, Trademark No , filed May 3, 1983, registered Dec. 17, Trademark No , filed Dec. 2, 1993, registered May 19, Trademark No , filed Dec. 2, 1993, registered May 19, Decision No. 5050/2000 (Administrative Trademark Committee, June 6, 2000) Recourse No. 2000, filed Aug. 17, Decision No. 4696/2003 (Administrative Court of First Instance of Athens, Apr. 18, 2003) Appeal No /2003, filed Nov. 7, 2003.

232 Vol. 101 TMR 1029 Athinaiki responded that the marks under comparison were substantially different both visually and aurally. It stressed that in view of the fact that consumers were in a position to compare the marks directly on the supermarket shelves, the risk of confusion was particularly low. Athinaiki argued, moreover, that its mark FERRÓ did not resemble the opponent s FERRERO marks and thus did not infringe Ferrero s company name. Last, it denied the notoriety of Ferrero s marks. The Athens Administrative Court of Appeal found that (1) the dominant component of Ferrero s marks was the word FERRERO, as well as, in some of them, the device; (2) the contested mark comprised both a word element and a device element, the word element being FERRÓ; (3) the word elements of the marks under comparison differed substantially both as to their script and as to their way of pronunciation, as the word FERRERO consisted of three syllables whereas the word FERRÓ consisted of two and was accentuated on the last syllable; and (4) the device portion of the contested mark provided it distinctiveness in comparison to the marks owned by Ferrero. Consequently, the Court of Appeal concluded that the overall visual and aural impression given by the marks under comparison was different and thus there was no risk of confusion of consumers as to the company of origin of the covered goods. Accordingly, it rejected the appeal. 524 Ferrero s appeal against that decision 525 was accepted by the Council of State, on the ground that the Court of Appeal s decision did not provide appropriate reasoning, which would allow the assessment of whether the law had been applied correctly. More specifically, the Court of Appeal had omitted a detailed description of the devices of some of the marks owned by Ferrero that resembled the contested mark, which was absolutely necessary for the completeness of the legal basis of the decision and the proper justification of its findings. The Council of State remanded the case to the Court of Appeal for further examination. 526 Upon reexamining the case, the Court of Appeal held that the word FERRÓ of the contested mark prevailed over the other words of the mark as well as over its device element, which according to the Court had only a decorative and not a substantial character. Accordingly, after comparing the marks at issue, the Court concluded that there was a high degree of visual similarity between them. Indeed, despite the fact that the prior mark FERRERO consists of seven letters and three syllables, whereas the word FERRÓ consists of only five letters and two syllables, the two word portions comprise the same letters, namely F, E, R, and 524. Decision No. 166/2005 (Administrative Court of Appeal of Athens, Jan. 11, 2005) Appeal No. 408, filed May 9, Decision No. 585/2007 (Council of State, Feb. 28, 2007).

233 1030 Vol. 101 TMR O. Moreover, said letters are placed in the same order. Consequently, the word portions of both marks start and end with the same letters: F and O. The two words have also their three first letters, FER, in common. The Court emphasized that the attention of consumers usually is directed to the beginning of the word; it added that the only difference between the syllabification of the words FERRERO and FERRÓ was due to the repetition in the former of the syllable ER, which does not exist in the contested mark. However, this difference did not dispel the similarity between the marks, which had to be assessed on the basis of the overall impression they presented to the average consumer. Regarding the appearance of the dominant word element of the contested mark as well as the accent on its last letter Ó, these were of minor importance and could not be perceived by the average consumer as really distinctive elements. Regarding the aural similarity of the marks, the Court focused on the fact that the marks had the letters F, E, R, and O in common and in the same order and pointed out that the syllable ER of the contested mark was not sufficient to change the similarity between the words FERRERO and FERRÓ. Moreover, the Court was not convinced that the accent of the word FERRÓ was crucial in changing the average consumer s overall aural impression of the mark. It found that, from a conceptual point of view, the marks under comparison had no particular meaning to the Greek consumer. Upon examining the impact of the device elements of the marks under comparison to the overall impression given thereby, the Court concluded that all of them had a purely decorative character, without any particular distinctive power. In light of the above, the Court of Appeal concluded that there was a high degree of similarity between the contested mark and the earlier-registered Ferrero marks. Taking into account that all the marks covered partly similar goods and partly goods with similar use, it accepted Ferrero s appeal and rejected the contested mark. 527 The Greek company Pigassos Ekdotiki ke Ektypotiki A.E. applied for the registration of the mark YOUR W WEDDING & Device, 528 to cover printed material, newspapers, magazines, and books in Class 16 (below, illustration at left). Advance Magazine Publishers Inc., a U.S. company, filed opposition before the Athens Administrative Court of First Instance on the basis of its prior Community trade mark (CTM) registration for W & Device, 529 also covering goods in Class Decision No. 2906/2009 (Administrative Court of Appeal of Athens, Nov. 19, 2009) Application No , filed May 18, CTM No , filed Aug. 26, 1996, registered May 7, 1999.

234 Vol. 101 TMR 1031 (below, illustration at right). 530 Advance Magazine further invoked various registrations of its W mark in many countries, including the USA, 531 Canada, 532 and Japan, 533 and submitted copies thereof as a proof. The opponent argued that the mark YOUR W WEDDING & Device formed a falsification or imitation of its prior-registered mark W because the letter W as its dominating feature, and thus the applied-for mark presented a risk of confusion to consumers as to the source company of the covered goods. Pigassos responded that the overall visual and aural impression given by the two marks was different and that the opposed mark concerned a lifestyle magazine covering all aspects of weddings, which was addressed to women consumers. Accordingly, its trademark was geared to a very specific public and thus was unlikely to cause confusion as to the origin of the covered goods. In deciding the case, the Court took into consideration the following factors: 1. The opposed mark, apart from the letter W, also comprised the words YOUR and WEDDING. However, the letter W was the dominating feature of the mark, as it appeared in a considerably bigger format in the center of a rectangular frame, placed between the words YOUR and WEDDING in such a way that it attracted the consumer s attention. 2. The visual aspect was prevalent in this case, as the marks under comparison consisted both of words and of devices Opposition No /2007, filed June 18, Trademark No , registered Mar. 7, 1995; Trademark No , registered July 11, Trademark No , registered Dec. 12, Trademark No , registered May 26, 1998.

235 1032 Vol. 101 TMR 3. The goods covered by said marks (i.e., magazines) were similar, they were intended for similar use, and they were targeted at the same consumer group. Consequently, the Court concluded that there was a high degree of visual and aural similarity between the marks under comparison, which in light of the similarity of the covered goods was very likely to pose a high risk of confusion of consumers as to the source company thereof. Therefore, it accepted the opposition and reversed the decision of the Administrative Trademark Committee, which had allowed the registration of the contested mark. 534 Pigassos has appealed the above decision before the Court of Appeal. 535 The case is still pending. 536 I.F. Famous and Well-Known Marks A Greek individual, Mr. G. S., initiated proceedings 537 for the partial cancellation for non-use of the trademark registration for BEREC, 538 namely as far as goods relating to mobile telephony were concerned. The contested mark is owned by the British company Energiser Limited and covers goods in Class 9. G. S. requested its cancellation when his own application for the trademark BEREC, 539 which was intended to cover products of mobile telephony in Class 9, was rejected because of the existence of Energiser s prior mark. G. S. alleged that (1) Energiser s mark had been registered in bad faith because the company did not intend to use it for all the goods in Class 9, especially not for goods related to mobile telephony, and (2) the mark had not been used for longer than five years and thus it was open to cancellation. More specifically, he argued that according to market investigations the BEREC mark had not been circulating on the Greek market for the past 15 years and in other European countries for the past 12 years. After examining the record, the Administrative Trademark Committee held that the mark BEREC was lawfully registered in Greece and in many other countries. The Committee found that because of the excellent quality of the goods it covered and its 534. Decision No. 2958/2009 (Administrative Court of First Instance of Athens, Feb. 27, 2009), reversing Decision No. 2660/2006 (Administrative Trademark Committee, 2006) Appeal No /2010, filed May 17, A slightly different version of this case summary appeared in World Trademark Review Daily on June 24, See com/daily/detail.aspx?g=d8edbe2d-7f34-4df8-a498-fb3c0f6f2d23&q=wedding#search=%22 WEDDING% Cancellation Petition No. 8425/2000, filed Oct. 11, Trademark No. 8951, filed Apr. 1, 1933, registered Apr. 26, Application No , filed May 17, 1999.

236 Vol. 101 TMR 1033 broad advertisement, the mark had been established in the Greek market and had become a famous mark. As a result, it enjoyed broader protection, even against identical marks covering dissimilar goods. Accordingly, the Committee rejected G. S. s allegation regarding bad faith. Upon examining the evidentiary material submitted by Energiser, including, inter alia, affidavits and invoices, the Committee found that goods under the trademark BEREC circulated in the Greek market via the applicant s local affiliate company Energiser Hellas A.E. and its distributors in various Greek retail stores. Accordingly, it dismissed G. S. s allegation regarding non-use and rejected the cancellation petition. 540 G. S. pursued the revocation of the above decision by filing recourse before the First Instance Administrative Court of Athens. 541 The Court issued a preliminary decision ordering the Secretariat of the Trademark Committee to provide copies of the evidentiary material that had been produced before the Committee. 542 Various invoices were brought to the Court, evidencing the circulation of BEREC products in many Greek cities, among them Athens, Thessaloniki, Herakleion in Crete, Chalkis, and Korinthos, between 1995 and 1998, as well as registration certificates evidencing the registration of the BEREC mark in the United Kingdom, Ireland, France, Spain, Germany, Austria, Finland, Denmark, Hungary, the former Czechoslovakia, etc. The Court took into consideration that (1) BEREC was unquestionably a famous mark, and therefore its cancellation would be acceptable in accordance with the law only if it had not been used by its owner company for any of the covered goods within the five years preceding the date of filing of the cancellation petition, and (2) from the submitted invoices it was evident that goods under the trademark BEREC, namely batteries, circulated on the Greek market within the aforementioned crucial period of time. Consequently, the Court upheld the decision of the Administrative Trademark Committee and rejected G. S. s cancellation petition. 543 II.C.1.d. Geographical Names The German company JOOP! GmbH applied for the extension to Greece of its International Registration for the device mark 540. Decision No. 7909/2001 (Administrative Trademark Committee, 2001) Recourse No. 3237/2001, filed Dec. 18, Preliminary Decision No. 2677/2005 (Administrative Court of First Instance of Athens, Feb. 28, 2005) Decision No /2007 (Administrative Court of First Instance of Athens, Dec. 5, 2007).

237 1034 Vol. 101 TMR BERL!N, 544 covering a wide variety of goods and services in Classes 3, 9, 14, 18, 25, 41, 42, 43, 44, and 45 (see below). After examining the mark, the Administrative Trademark Committee held that the word BERL!N indicated the place of origin of the covered goods and services and thus was not acceptable for registration. 545 JOOP filed recourse before the First Instance Administrative Court of Athens, seeking the reversal of the Committee s decision. 546 The company argued that its mark had distinctive power because it was original with respect to its device, whereas the goods it was intended to cover were not manufactured in Berlin, so that the mark did not indicate their place of origin. The Court confirmed the allegations of the applicant and ruled that although the mark BERL!N was indeed a geographical indication, it was not probable that consumers would associate Berlin with the goods covered by the mark, because the German city was not renowned for the manufacture of goods such as those of the applicant. There was, moreover, no evidence that Berlin was likely to become indicative of the origin of such goods in the future. Consequently, the Court found that the overall impression given by the mark BERL!N was specific enough to be acceptable for covering the goods in question. Accordingly, it reversed the decision of the Administrative Trademark Committee and allowed the mark to proceed to registration. 547 Michail Dramytinos, a Greek individual, applied for the registration of the word mark MONTE CARLO, 548 to cover goods in Class 14. The Administrative Trademark Committee rejected the application on the ground that the mark consisted of a geographical indication and was likely to mislead consumers as to the origin of the covered goods. 549 The applicant pursued recourse before the Athens Administrative Court of First Instance, which confirmed the decision of the Trademark Committee. 550 Mr. Dramytinos appealed the decision IR No (Greek Trademark No. 8112), filed and registered Mar. 4, Decision No. 8461/2003 (Administrative Trademark Committee, June 26, 2003) Recourse No /2003, filed Oct. 10, Decision No. 5649/2008 (Administrative Court of First Instance of Athens, Feb. 2, 2008) Application No , filed Aug. 29, Decision No. 5916/1998 (Administrative Trademark Committee, 1998) Decision No /2002 (Administrative Court of First Instance of Athens, 2002).

238 Vol. 101 TMR 1035 The Athens Administrative Court of Appeal accepted the appeal and allowed the mark to proceed to registration. 551 The Court held that the mark MONTE CARLO did have distinctive power and was unlikely to mislead consumers because it was not a place known for the manufacture of goods in Class 14. Thereupon the Principality of Monaco filed opposition against the acceptance of the mark, arguing that the Court of Appeal had erred in deciding that it was not misleading. 552 The Administrative Court of Appeal, before which the case was brought, held that Principality of Monte Carlo was not a place known to the average consumer as a place of manufacture of goods in Class 14, irrespective of the fact that consumers did associate the indication MONTE CARLO with good quality and luxury, qualities that could characterize this kind of goods. The Court further held that the mark had distinctive character and was not likely to mislead consumers as to the origin of the covered goods. Accordingly, it rejected the opposition. 553 The case was brought before the Council of State, 554 which remanded it to the Court of Appeal, having found that the Court s decision had not been sufficiently grounded. 555 Upon reexamining the case, the Court of Appeal pointed out that the words MONTE CARLO could be used as an indication of the place of origin of the covered goods. Thus, the mark lacked distinctive character and could not be accepted for registration. Consequently, the Court reversed the contested decision and accepted the opposition. 556 HONDURAS I.D.1. Similarity of Marks Laboratorios Chile S.A. filed a trademark application for SINCRIS in Class 5 to cover the entire class heading. The application was opposed by Merck KGaA based on its previous trademark registration for STIMRIS. Merck claimed that the marks were confusingly similar, particularly in light of the wide coverage of the new application. Laboratorios Chile refused to restrict coverage of its application and maintained the position that the marks were sufficiently distinctive to coexist at the Trademarks Office and in the marketplace Decision No. 3270/2004 (Administrative Court of Appeal of Athens, 2004) Opposition No. 5/05, filed Nov. 16, Decision No. 3389/2006 (Administrative Court of Appeal of Athens, Oct. 31, 2006) Appeal No. 3006, filed May 4, Decision No. 194/2009 (Council of State, Jan. 21, 2009) Decision No. 2732/2009 (Administrative Court of Appeal of Athens, Oct. 29, 2009).

239 1036 Vol. 101 TMR The Trademarks Office ruled in favor of Merck. It held that the marks were confusingly similar when viewed as a whole and that the applicant s refusal to restrict coverage for its application suggested that it intended to benefit from the recognition of the opponent s prior-registered trademark. The Higher Administrative Office and the Highest Administrative Office confirmed the ruling issued by the Trademarks Office. The Honduran Trademarks Office initially rejected the registration by Sansui Acoustics Research Corporation of the trademark SANSUI, for goods in Class 7, based on the previously registered trademark SAMSUNG, covering very similar goods in the same class. The Office held that the marks were confusingly similar when viewed as a whole and that the applicant was trying to capitalize on the similarities and on the reputation of SAMSUNG. The reasoning behind the Office s decision was that the notoriety of a mark (in this case, SAMSUNG) can work to its own detriment when the owner of a new trademark (in this case, SANSUI) takes advantage of the prior mark s solid reputation and files for registration of its trademark, which is apparently different but which evokes the previously registered and notorious mark in the mind of the general consumer. On appeal, the Trademarks Office s decision was confirmed by the Higher Administrative Office. The applicant then filed a final appeal before the Highest Administrative Office, which revoked the ruling. It ruled that no office can stretch the protection of a distinctive sign so that it becomes an obstacle to healthy and fair commercial competition and innovation and that the notoriety of a mark is not something that can be transferred to third parties, the consumer or remotely similar marks. III.A.3.c. Customs Actions In the first action of its type and in compliance with obligations imposed by Chapter 15 (Intellectual Property Rights) of the DR-CAFTA Agreement (Dominican Republic Central America Free Trade Agreement), the Honduran Customs Office, acting ex officio, seized a significant number of luxury goods, including handbags, sunglasses, perfumes and footwear, identified by a number of well-known trademarks owned by different parties. When informed by the Port Authority that a ship with the presumed infringing goods had moored, the Customs Office sent a communication to the Honduran Trademarks Office asking it to provide within 24 hours the names of the registered owners of the marks the infringement of which was presumed. The Trademarks Office furnished the requested list and simultaneously sent a notification to the attorneys/agents of record

240 Vol. 101 TMR 1037 so that they could inform their clients and request authorization to act as coadjutants of the Customs Office in the operation. Within the maximum term of 72 hours established by the law, the affected parties were able to file complaints before the IP Division of the Attorney General s Office, which proceeded immediately to issue seizure and/or importation ban orders to the Port Authority and the Customs Office. The importers were requested to provide information on the source of the infringing goods (in this case, China) and to agree to the destruction of the goods. HONG KONG II.C. Registrability In September 2006, Danjaq, LLC, the holding company responsible for the trademark rights in the characters, elements, and other material related to the character James Bond on screen, applied to register the mark JAMES BOND for a wide range of goods and services in Classes 9, 16, 28, 38, and 41 (see below). The Trade Marks Ordinance precludes from registration marks that are devoid of any distinctive character. 558 The distinctiveness of a mark must be assessed by reference to the goods or services for which registration is sought and the perception of the relevant consumers, who are presumed to be reasonably well-informed and circumspect. James Bond is the name of a famous fictional secret agent with the code number 007. Indeed, the name James Bond and the combination James Bond 007 are so long established and well known that they have passed into the language. At the examination stage, objections were raised against the application with respect to certain goods and services on the basis that the mark was devoid of any distinctive character and that it consisted exclusively of signs that could serve in trade or business to designate the characteristics of those goods and services, contrary to Sections 11(1)(b) and (c) of the Ordinance. The Registrar of Trade Marks upheld the objections Application No AB, filed Sept. 29, Trade Marks Ordinance (Cap. 559), Apr. 4, 2003, sec. 11(1)(b).

241 1038 Vol. 101 TMR At a subsequent registrability hearing, Danjaq sought to convince the hearing officer that the mark was capable of distinguishing on a prima facie basis. The hearing officer found that when the mark was used in relation to the goods and services objected to, it conveyed a direct and immediate message that those goods and services portrayed or related to the fictional character James Bond 007 or were centered on the character. As such, the relevant consumers were likely to perceive the mark, on first impression, as an indication that the goods and services related to the famous fictional character, rather than as denoting the commercial origin of those goods and services. As to how the principles applied to the particular goods applied for, the hearing officer determined that when the subject mark was used on books, magazines, posters, and photographs in Class 16, consumers would expect those printed materials to contain the image of or information about the James Bond character. In respect of toy vehicles and toy weapons in Class 28, the mark would be understood as describing toys and playthings resembling the vehicles and weapons appearing in the James Bond movies. When the mark was used in respect of services relating to broadcasting and entertainment in Classes 38 and 41, consumers would recognise it merely as a designation that those services were related to the production, development, and broadcasting of James Bond films and related programs. Thus, the subject mark failed to perform the essential function of a trademark in guaranteeing the identity of the origin of the covered goods and services. Accordingly, registration of the goods and services objected to was refused on the ground that the mark was not capable of identifying the products and services in question as originating from a particular undertaking. 559 To overcome a prima facie objection, an applicant must file evidence of acquired distinctiveness. In this case, the applicant successfully demonstrated that its mark had acquired a distinctive character in respect of cinematographic films in Class 9 and film services in Class 41 on the basis of prior use of the mark in Hong Kong. In testing for distinctiveness the Hong Kong Registry follows the approach laid down by Mr. Justice Jacob in British Sugar Plc v. James Robertson & Sons Ltd: What does devoid of any distinctive character mean? I think the phrase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trade mark? Registrar of Trade Marks, June 17, 2010, available at intellectual_property/trademarks/trademarks_decisions/decision/dec abr.pdf [1996] R.P.C. 281, 306 (Ch.).

242 Vol. 101 TMR 1039 This case is consistent with the UK Court of Appeal s treatment of the name of another famous character, Tarzan, which was refused registration as a mark on a similar basis. 561 The importance of this case lies in the test that it sets out for the types of marks that are likely to be accepted as distinctive on a prima facie basis. The case is also important from the perspective of character merchandizing. It indicates that third parties may be able to use a famous name and code number in relation to certain goods and services without risking an action for infringement or passing off. III.F.1. Non-Use Jet Marques registered the mark JET TOURS & Device 562 in April 1994 in relation to provision and booking of hotel accommodation; restaurant services; hotel services; holiday camp services in Class 42 (see below). In July 2006, Jetour Holiday (China) Limited applied to revoke the registration on the basis of non-use. Jetour argued that the registered mark had not been genuinely used by its owner or with the owner s consent in relation to the subject services for a continuous period of at least three years. Applicants usually ask that the revocation take effect from the date of the application for revocation, but it is possible to request revocation from an earlier date. In that event, it is necessary to consider whether the subject mark has been genuinely used in Hong Kong for the three-year period leading up to the date of the requested revocation. The burden of proving genuine use of the mark in Hong Kong in relation to the designated goods and/or services during the relevant period lies with the registered owner (in this case, Jet Marques). Non-use actions usually are determined based on the strength and cogency of the evidence filed and on whether there is a credible reason why the registered mark has not been used In re Tarzan Trade Mark, [1970] F.S.R Trade Mark No , registered Apr. 8, 1994 (actual date of registration Mar. 26, 1997).

243 1040 Vol. 101 TMR At the hearing on the revocation application, 563 the hearing officer thoroughly and meticulously reviewed all of the proprietor s evidence of use of the mark. This included alleged use in Hong Kong via a website. With regard to such use the hearing officer noted that [t]he mere fact that websites can be accessed anywhere in the world does not mean, for trade mark purposes, that the law should regard them as being used everywhere in the world. It all depends upon the circumstances, particularly the intention of the website owner and what the reader will understand if he accesses the site. There was no evidence that any web pages were specifically aimed at customers in Hong Kong or that anyone from Hong Kong had acquired Jet Marques s services via the website. Moreover, none of the other voluminous materials showed that the mark had been exposed to anyone in Hong Kong. It is not uncommon for a party in a contentious matter to include materials that do not support a claim to use or goodwill. In this case, the respondent had not provided any valid reason for non-use. The revocation action succeeded, and costs were awarded to Jetour. 564 The Hong Kong Registry follows the approach taken by the European Court of Justice in Ansul and La Mer Technology, 565 the England and Wales Court of Appeal in the LABORATOIRE DE LA MER trade mark case, 566 and the Hong Kong High Court in Brands: 567 Genuine use excludes token use created for protecting the registration. The mark should be used publicly on the goods or services. Internal use does not count. Use of the mark must relate to goods or services on the market or about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns Conducted Dec. 18, Registrar of Trade Marks, Mar. 23, 2010, available at eng/intellectual_property/trademarks/trademarks_decisions/decision/dec rv.pdf Ansul BV v. Ajax Brandbeveiliging BV, Case C-40/01, [2003] ECR I-2439 (ECJ, Mar. 11, 2003); La Mer Technology Inc. v. Laboratoires Goemar SA, Case C-259/02, [2004] ECR I-1159 (ECJ, Jan. 27, 2004) Laboratoires Goëmar SA v. La Mer Technology Inc., [2005] EWCA Civ 978 (July 29, 2005) Brands Inc. Ltd v. Kabushiki Kaisha Regal Corp., [2006] HKEC 2313 (HCMP 754/2006) (Registrar of Trade Marks, Mar. 20, 2006).

244 Vol. 101 TMR 1041 When assessing whether use of a trademark is genuine, the Registry will consider the practices relevant to the industry concerned. The use of a mark does not have to be extensive, but it must be justified in the context of the industry for the purpose of preserving or creating market share for the goods or services protected by the mark. There is no requirement that the mark must have come to the attention of the end user or consumer. What is essential is that the mark should have been used by being exposed to third parties in a market in Hong Kong for the goods or services claimed. This decision is important because it sets out what constitutes genuine commercial use and highlights the importance of providing cogent evidence. ICELAND I.C. Distinctiveness The German firm Novartis Vaccines and Diagnostics GmbH & Co. is the owner of an International Registration for the trademark FLUAZUR (word mark), designating Iceland and covering pharmaceutical and veterinary products, vaccines and adjuvants for use with vaccines in Class The Registrar of Patents and Trademarks invalidated the Icelandic registration on the ground that the mark lacked distinctiveness as FLUAZUR differed only in minor detail from the International Nonproprietary Name (INN) for the pharmaceutical substance fluazuron. 569 Novartis appealed to the Board of Appeal for Intellectual Property Rights. The argument centered on the question of whether the INN fluazuron, used to combat ticks in animals, prevented the international trademark FLUAZUR from being registered in Iceland for pharmaceuticals, including for animals, in Class 5. In its guidelines on the use of INNs, 570 the World Health Organization (WHO) recommended that WHO member states prevent the registration of INNs especially those that were derived from common INN stems as trademarks. Going one step further, the WHO strongly recommended that trademarks that could be traced to INNs not be registered IR No , registered June 1, Decision of Oct. 19, 2007 (unpublished) World Health Organization, Guidelines on the Use of International Nonproprietary Names (INNs) for Pharmaceutical Substances, WHO/PHARM S/NOM 1570 (1997), available at (hereinafter INN Guidelines).

245 1042 Vol. 101 TMR It was clear that the implementation of these guidelines differed from country to country. For example, according to the explanatory notes to the Danish Trademark Act, a trademark based on a minor modification of a recognized INN cannot be registered in Denmark. From the examples given it could be assumed that the mark FLUAZUR would not be admitted for registration in Denmark, although it was registered in Norway and several other European member states of the WHO. This demonstrated that the evaluation was carried out independently in each country. It had not been established that FLUAZUR was one of the common stems that the WHO had recommended not be registered as trademarks 571 or that it was the name of an active ingredient. For these reasons, the Board of Appeal found that the mark FLUAZUR was sufficiently distinctive to be registrable in Iceland despite its considerable similarity to the INN fluazuron. Consequently, the Board reversed the Registrar s decision and allowed the mark to be registered. 572 This decision indicates that as long as a mark does not resemble an INN listed in Annex 3 to the WHO s guidelines or an active pharmaceutical ingredient, it will not be refused registration. Pierre Fabre Médicament, the French pharmaceutical laboratory, brought an action for cancellation of the Icelandic registration by the Swiss firm Actavis Group for the trademark VINORELSIN, covering pharmaceuticals and pharmaceutical preparations in Class 5. The plaintiff claimed that the mark was confusingly similar to the INN Vinorelbine, designating a chemotherapy drug that is given as a treatment for some forms of cancer. The Registrar rejected the action. 573 According to information from the Icelandic Medicines Agency, Vinorelbine was an active ingredient that could be found in, inter alia, the pharmaceutical products NAVLELBINE and VINORELBIN ACTAVIS. However, it was not one of the common INN stems that the WHO had recommended not be registered as trademarks, 574 and even though the mark VINORELSIN contained the INN stem vin-, the latter 571. See INN Guidelines, Annex Novartis Vaccines and Diagnostics GmbH & Co. v. Registrar of Patents and Trademarks, Case No. 16/2007 (Board of Appeal for Intellectual Property Rights, May 13, 2009), available at _FLUAZUR_urskurdur.pdf (in Icelandic) Pierre Fabre Médicament v. Actavis Group PTC ehf, Case No. 15/2009 (Registrar of Patents and Trademarks, July 10, 2009), available at pdf/akvardanir/vorumerki/2009/ %20vinorelsin.pdf (in Icelandic) See supra note 570 and accompanying text.

246 Vol. 101 TMR 1043 was meaningless as such and constituted only a small part of the mark. The main purpose of INNs is to enable health specialists anywhere in the world to use the same concepts or names for the same pharmaceutical ingredients. It is, however, generally accepted that companies can use INNs in trademarks in conjunction with their company names as long as that does not preclude others from doing likewise. Although the mark VINORELSIN bore a substantial resemblance to the INN Vinorelbine, the Registrar was of the view that its registration would not preclude others in the health sector from using Vinorelbine for the same pharmaceutical ingredients or specifying it as an active ingredient in similar products. This decision goes further than the Board of Appeal s holding in the FLUAZUR case. It now appears that even if a mark resembles an active pharmaceutical ingredient, it will not be refused registration provided it does not resemble an INN specifically listed in Annex 3 to the WHO s guidelines. INDIA I.D.2.b. Trade Dress and Packaging Ferrero Rocher SpA (Ferrero), the plaintiff, sought to restrain the importer, Shri Maa Distribution and the Chinese manufacturer, M/s Tasty Choco, the defendants, from infringing the registered shape mark and distinctive label of the worldfamous FERRERO ROCHER chocolates (below, illustration at left). The plaintiff has three registered trade marks in India, namely the FERRERO ROCHER word mark in Class 30, the FERRERO ROCHER Label & Praline Device in Class 30, and a three-dimensional Praline Device in a crushed wrapper and inside a fluted cupcake wrapper. Plaintiff s mark Defendant s look-alike

247 1044 Vol. 101 TMR The court initially granted Ferrero an ex parte interim injunction against the defendants selling the FERRERO ROCHER look-alikes (above, illustration at right) in India, and the importer s infringing goods were sealed. The court restrained the parties from marketing or selling chocolates and confectionary items under any mark, label, and visual medium that were similar to Ferrero s trade marks, including the trade dress of the FERRERO ROCHER chocolates. The learned judge, while protecting Ferrero s proprietary rights, in a subsequent application by the defendants to release the goods, ordered the defendants to: (1) furnish a bank guarantee; (2) furnish accounts in respect of the sale of the seized products; and (3) file an undertaking not to further import the Cherier chocolates or offer them for sale until pendency of this suit. The High Court affirmed the interim injunction in favour of Ferrero in accordance with the above terms. 575 Trade dress jurisprudence is not settled as yet in India. In this regard, this case is considered to be a landmark decision, because Ferrero sought only an injunction (which was granted) based on the infringement of the three-dimensional trade mark relating to the shape of the product and not the word mark FERRERO ROCHER. II.E. Examination and Opposition Shaw Wallace & Company (Shaw Wallace) sought the registration of the trade mark HAYWARDS 5000 in Class 31. Superior Industries, the appellant, opposed the registration of the application of Shaw Wallace s trade mark before the Registrar of Trade Marks, claiming it could not be registered because it was neither distinctive nor had the person seeking registration been recorded as the assignee of the trade mark. The appellant s opposition to the trade mark application was dismissed by the Deputy Registrar of Trade Marks on the ground that the appellant had already been restrained by the High Court of Delhi from using its trade mark SUPERIOR 5000 and that this injunction order and the special circumstances of the case allowed the application for registration. Furthermore, the extensive use since 1983 of the HAYWARDS 5000 trade mark by Shaw Wallace entitled Shaw Wallace to have its trade mark registered pursuant to the Act. The Intellectual Property Appellate Board (IPAB) held that the registration of the mark HAYWARDS 5000 as applied by Shaw 575. Ferrero SpA & Anr. v. Shri Maa Distribution India Pvt Ltd. & Anr. (available at

248 Vol. 101 TMR 1045 Wallace was unlikely to cause confusion with regard to the subsequently adopted mark SUPERIOR 5000 of Superior Industries. More importantly, the IPAB was called upon to decide whether Shaw Wallace, in whose favour an assignment deed for the trade mark had been executed by Skol Breweries (though had not been recorded before the Trade Mark Office), would be allowed to file pleadings and defend actions relating to that mark. Relying on Sections 18(4), 22, 45(2), 576 and 58 of the Trade Marks Act, 1999, the IPAB held that Shaw Wallace, having been vigilant about its rights and having made the appropriate request for the recording of the assignment deed could not be prevented from protecting its rights. 577 This case clearly laid down the principle that in Indian trade mark jurisprudence, where an assignee has taken all possible steps to have the assignment recorded before the Trade Mark Office, there can be no prohibition against allowing it to protect these rights as assigned. III.A.1.a. Blurring The plaintiff s mark, the ITC NAMASTE WELCOMGROUP logo (W-NAMASTE logo) (below, illustration at left), registered in several classes including Class 8, 30, 34, and 42, had been used for several years as the house mark for the company s hospitality services. The defendant s product was a special limited-edition pack of cigarettes for an Indian festival, Diwali; the pack bore a stylized, tilted M that had the appearance of being alight in yellow flames on a dark background (below, illustration at right). Plaintiff ITC alleged that the launch of this specific packaging for the defendant s MARLBORO brand of cigarettes was identical or similar to its W-NAMASTE logo. The plaintiff had alleged that 576. Section 45 of the Trade Marks Act, 1999, provides that: (1) Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods or services in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register, Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court. (2) Except for the purpose of an application before the Registrar under sub-section (1) or an appeal from an order thereon, or an application under section 57 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1), shall not be admitted in evidence by the Registrar or the Appellate Board or any court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Appellate Board or the court, as the case may be, otherwise directs Superior Industries Ltd. v. Shaw Wallace & Company, OA/18/2007/TM/KOL (unreported; available at

249 1046 Vol. 101 TMR the adoption of this logo by the defendants resulted in the blurring and dilution of their trade mark and was a deliberate departure of the MARLBORO logo by the defendants to take unfair advantage of the plaintiff s goodwill and reputation. Plaintiff s mark Defendant s mark In this case before the Delhi High Court, the plaintiff sought an interim injunction against the defendant Philip Morris on the grounds of trade mark infringement and dilution. The logo used by the defendant was alleged to look deceptively similar to its registered trade mark. The court found that where trade mark dilution is claimed, the test for proving identity or similarity of marks is much more stringent than the deceptive similarity standard. It further determined that, when considering whether the impugned or junior mark infringed, by dilution, an existing registered mark, a global examination should be undertaken rather than focusing only on the common elements of the mark. The court also observed that the plaintiff s mark was not a stand-alone mark and that it was used as a part of the overall marks and devices that were used in relation to each hotel, restaurant, resort, or service it offered to the consumer. The court was therefore of the view that the defendant s trade mark did not dilute the plaintiff s mark. Consequently, the plaintiff was not granted an interim injunction. 578 Having laid down a five-factor test for the determination of dilution of a trade mark, this case is already considered to be a landmark decision in trade mark jurisprudence in India. III.A.6.d. Sponsored Advertising/Keywords Consim Info Pvt. Ltd. (Consim), being in the business of classified matrimonial advertisements/listings, had several registered trade marks that consisted, for the most part, of a composite word incorporating the word Matrimony. 579 In the 578. ITC Limited v. Philip Morris Products Sa and Ors., 2010 (42) PTC 572 (Del.) The registered trade marks that Consim alleged had been infringed were: ASSAMESEMATRIMONY in Classes 16 and 42; BENGALIMATRIMONY in Class 16;

250 Vol. 101 TMR 1047 present case, Consim sought to restrain People Interactive Pvt. Ltd., Jeevansathi Internet Services, and Times Business Solutions (the other defendants) from infringing its various registered marks through the sponsored Adwords, Keyword, and/or Suggestion Tool services of Google India Pvt. Ltd. (Google India). Agreeing with Consim s assertions, the High Court of Madras had earlier granted an interim injunction in their favour that was vacated at a later stage after a direction to Google India to ensure that third parties would not infringe the registered trade marks of Consim through the Adwords service. Consim moved a subsequent application alleging that Google India was not complying with the court s directions. Consequently, the court was called upon to decide whether the defendants were, in fact, infringing the registered trade marks of Consim. Google India contended that their policy already addressed the concern of trade mark owners based on complaints received by them. However, Google India asserted that they could not preclude third parties from using the registered keywords, as they constituted a combination of two words (e.g., TAMIL in conjunction with the word MATRIMONY), descriptive in that particular line of business of classified advertisements seeking proposals for marriage. The other defendants, apart from contending that the marks at issue were descriptive in their (and Consim s) common line of business, also asserted that Consim could not in any manner claim a trademark monopoly over words that constituted only a part of their registered trade mark such as TAMIL, TELUGU, ASSAMESE, etc. These arguments were accepted by the court, which held that the other defendants could be precluded only from using the trade mark of Consim as a whole and not from using constituent portions of the mark because the same were descriptive in their common line of trade. 580 Importantly, the court observed that Google India s policy for its Adwords services while acknowledging concerns of trade mark infringement encouraged parties to seek redress inter se without Google India having to act as an arbiter. Thus, the court held that while a search engine has control over the selection of keywords by the advertiser, this control does not extend to searches made by a BHARATMATRIMONY CENTRE in Class 16; BHARATMATRIMONY in Classes 35 and 42; GUJARATIMATRIMONY in Class 16; HINDIMATRIMONY in Class 16;KANNADAMATRIMONY in Class 16; KERALAMATRIMONY in Class 16; MARATHIMATRIMONY in Class 16; MARWADIMATRIMONY in Class 16; MATRIMONY STAMP in Class 16; MEGA SWAYAMVARAM TAMILMATRIMONY.COM in Class 16; MUSLIMMATRIMONIAL in Classes 42 and 16; PARSIMATRIMONY in Class 16; PUNJABIMATRIMONY in Class 16; SINDIMATRIMONY in Class 16; TAMILMATRIMONY in Class 16; TELUGUMATRIMONY in Class 16; and URDUMATRIMONY in Class Consim Info Pvt. Ltd. v. Google India Pvt. Ltd., MIPR 2010 (3) 0067.

251 1048 Vol. 101 TMR person surfing the Internet, or to further awareness as to the registration of trade marks in respect of all the goods and services. Although the use of the keyword suggestion tool may constitute use in the course of the company s own trade within the meaning of Section 29 of the Trade Marks Act, 581 the same use does not amount to an infringement of the trade mark. The court also held that it was necessary to give Google India the benefit of the doubt regarding the peculiar facts of this case because the choice of search terms, having been held to be descriptive, could not be attributed to Google India and therefore no vicarious or contributory infringement existed. This is the first case addressing sponsored advertising and keywords on the Internet and Internet service provider liability regarding the same. III.A.10. Infringement of Right of Publicity The plaintiff, an incorporated company, brought an action for infringement of right of publicity of the artist DALER MEHNDI, a famous singer and personality in India and across the world. The defendants imported, sold, and offered for sale dolls that bore a resemblance to the singer DALER MEHNDI. The dolls also sang a few lines of a song by DALER MEHNDI. DM Entertainment sought a permanent injunction from the court to restrain Baby Gift House, M/s Hiccup s, and Poonam Gift Palace (the defendants) from infringing its right of publicity; the plaintiff claimed false endorsement leading to passing off and asked for damages. The court had previously granted DM Entertainment a temporary injunction restraining the defendants from selling/importing the dolls bearing likeness to DALER MEHNDI. The High Court of Delhi affirmed this decision and granted DM Entertainment a permanent injunction against the defendants from selling/importing these dolls. 582 In doing so, the High Court stated that DM Entertainment had successfully demonstrated the criteria necessary for a party to claim infringement of its right of publicity and false endorsement: 1. The right of publicity can be infringed only when there is an identifiable personality that must be protected from unauthorized use. 2. The plaintiff must demonstrate that the defendant has misappropriated the persona or some of its essential 581. Section 29 of the Trade Marks Act, 1999, deals with Infringement of registered trade marks DM Entertainment Pvt. Ltd. v. Baby Gift House & Ors., CS (OS) 893 of 2002 (unreported available on the online legal research website Manupatra and cited there as MANU/DE/2043/2010).

252 Vol. 101 TMR 1049 attributes and that this has resulted in commercial gain to someone other than the plaintiff. 3. False endorsement can be proven if consumers were misled into believing that the concerned personality endorsed the product or had some connection with the artist to use its exclusive right to market images of the artist. This is the first definitive precedent on publicity rights in India where guidelines for determining whether they have been infringed have been laid down. III.D.1. Descriptive Use The plaintiff, Marico Limited (Marico), claimed to have extensively used the mark LOW ABSORB in relation to edible oils to indicate that its products had the quality of absorbing less oil, and, after years of such use, eventually registered the mark LO- SORB and LOSORB (see illustration below, at left) in Class 29 in The defendant s product used its trade mark SUNDROP accompanied by the phrase low-absorb technology (illustration below, at right). Marico filed suit seeking to restrain Agro Tech Foods Ltd. (Agro Tech) from infringing, passing off, and/or diluting the trade mark LOSORB and from using LO-SORB on their packaging as a part of the phrase with low-absorb technology. Plaintiff s mark Defendant s mark Before the Single Judge Bench of the High Court of Delhi, Marico had initially been granted an ex parte interim order, which was later vacated by way of a detailed order in April Aggrieved by the vacating of the interim injunction, the plaintiff

253 1050 Vol. 101 TMR approached the Division Bench of the High Court of Delhi in appeal. The court addressed two main issues in the appeal first, whether the plaintiff s registration gave it the exclusive right to use the trade marks LOSORB and LO-SORB and consequently whether an action for infringement would be maintainable against a person such as the respondent who was using a trade mark that was deceptively similar to the registered trade mark; and second, whether the use of the expression low absorb technology by the defendant amounted to passing off. The court found that LOW-ABSORB was not a coined expression and was not arranged in an unusual syntax. At best, the term was a combination of two popular English words and was only descriptive of the nature of the product with no demonstrable acquired secondary distinctiveness. The court therefore held that there was no infringement of Marico s registered mark LO-SORB. Interestingly, the court held that the trial judge was justified in looking into the validity of the registration of the plaintiff s trade mark for purposes of deciding the interlocutory application for injunction. On the issue of infringement, no evidence of distinctiveness existed from the date of the application (on a proposed-to-be-used basis) until the date of registration of the LO- SORB and LOSORB trade mark. 583 The court took into account the statutory defense of invalidity in the course of hearing arguments on the interim injunction and therefore concluded that Marico had no exclusive right over its trade mark. It further concluded that the use of the mark by Agro Tech was bona fide. 584 The observations of the court at an interim stage were also affirmed in February 2011 by the Supreme Court of India, which dismissed a subsequent appeal filed by the plaintiff. This decision is important as it allows a defendant to raise statutory defences of invalidity of a trade mark, including questioning the validity of registration of the trade mark sought to be enforced by a plaintiff. IRAN I.D.3. Conflict Between Trademarks and Corporate Names The U.S. company General Mills Marketing, Inc., the owner of a registration for the famous trademark HAAGEN-DAZS in Iran, 585 had learned that an Iranian firm had registered the 583. The court referred to statutory defences that could be availed of by a defendant under Sections 30 through 35 and Section 57 of the Trade Marks Act, Marico Limited v. Agro Tech Foods Ltd., 2010 (44) PTC 736 (Del.) (DB) Trademark No , registered Mar. 19, 2007.

254 Vol. 101 TMR 1051 trademark as its company name, HAAGEN-DOZS Dairy Co., and moreover that it was using General Mills Marketing s trademark as its own. General Mills Marketing filed a petition before the First Instance Court of Tehran requesting that the court order a change in the defendant s company name, based on its Iranian trademark registration for HAAGEN-DAZS and supporting documents (trademark registration certificates from a number of countries). The request for change of name was based on Article 10bis of the Paris Convention (cancellation or prohibition of use of well-known marks) and Article 46 of the Iranian trademarks law. 586 The First Instance Court ruled in favor of General Mills Marketing. 587 It found that the evidence provided showed that the plaintiff had the exclusive right to use the trademark and its right had to be protected, and that the letterhead used by the defendant showed the identical use of the plaintiff s trademark. This, plus the fact that the defendant also was involved in the dairy business, made out a case for unfair competition. Therefore, the court held that the defendant s company name must be changed. The verdict was confirmed by the Appeal Court of Tehran. 588 IRELAND I.C. Distinctiveness On October 21, 2008, the German company CBR Textile GmbH applied for a declaration of invalidity in respect of the registration for the trademark COMPANYS, 589 registered by the Danish firm IC Companys A/S for a variety of goods and services in Classes 3, 18, 25, and 35. In its application, which was based on descriptiveness and nondistinctiveness, CBR Textile argued that the contested mark was derived from, and was a misspelling of, the plural of the English word company, which belongs to basic English vocabulary and is commonly used to name a business enterprise. CBR Textile also claimed that use of the word 586. Patents, Industrial Designs and Trademarks Registration Act, Oct. 29, Article 46 provides: A name or designation, the nature or manner of use of which is contrary to religious norm, public order or morality or is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name, may not be used as a Trade Name General Mills Marketing, Inc. v. HAAGEN-DOZS Dairy Co., Verdict No (First Instance Court No. 3 of Tehran, Apr. 13, 2009) Case No. 851/18/88, Verdict No. 833 (Appeal Court No. 18 of Tehran, Sept. 12, 2009). Subsequently, General Mills Marketing obtained a second registration for the HAAGEN-DAZS mark. Trademark No , registered Dec. 27, Trademark No , registered June 20, 2003.

255 1052 Vol. 101 TMR company was not exclusive to the English-speaking world and that any consumer in the European Union was aware of its meaning. Therefore, it argued, the contested mark COMPANYS was incapable of identifying the commercial origin of the goods and services. The Controller accepted that marks that contain the term company and an additional verbal element are deemed to lack distinctiveness only when the term combined with the additional element renders them so. If, however, the additional element is not considered descriptive and is capable of bestowing upon the mark a level of distinctiveness, such marks can be afforded protection. The Controller was satisfied that the mark COMPANYS fell into the latter category and that the addition of the letter S, which made it an invented word, gave it sufficient distinctiveness to perform the essential functions of identifying the goods and services of the holder and distinguishing them from goods or services that had a different commercial origin. In this case, the difficulty faced by CBR Textile was the wording of the Trade Marks Act itself, which precludes registration only of marks that are devoid of any distinctive character or that consist exclusively of descriptive content. The Controller opined that even a modicum of distinctiveness was, therefore, apt to ensure registration on these grounds and that a low level of distinctiveness was still enough to warrant registration, as all that is required of a mark is that it be sufficiently distinctive to enable the average consumer, once he has been exposed to goods or services offered for sale under the mark, to recognize it on a subsequent occasion of purchase and to associate it with the goods or services that he has previously seen marketed under that brand. 590 I.D.1. Similarity of Marks Pinewood Laboratories Limited holds an Irish registration for the trademark LEXAM, 591 covering pharmaceutical preparations and substances in Class 5. Novartis AG filed opposition against the registration, arguing that Pinewood s mark was similar to and fully incorporated within its Community trade mark (CTM) PLEXTAM, 592 registered for a pharmaceutical preparation. Specifically, Novartis claimed that the marks (1) had a similar construction, resembling each other in appearance; (2) were phonetically and conceptually similar; and (3) were registered in respect of identical or similar goods. Pinewood rejected Novartis s 590. CBR Textile GmbH v. IC Companys A/S (Controller of Patents, Designs and Trade Marks, Jan. 11, 2010) (unreported) Trademark No , registered Jan. 31, CTM No , registered Jan. 19, 2006.

256 Vol. 101 TMR 1053 assertions that the first syllables, PLEX- and LEX-, were indistinguishable and the second syllables, -TAM and -AM, were very close. It also denied that its mark LEXAM was fully incorporated within Novartis s mark PLEXTAM, as the inclusion of the letter T broke up the letter string. The Hearing Officer found that the overall aural and visual impression given by each mark was dominated and determined primarily by its initial letters and that the differences between those letters created a clear visual and aural difference between the marks as a whole. As to their conceptual significance, each mark consisted of an invented word and did not conjure up any conceptual notion or imagery. The Hearing Officer further found that the marks had a low level of overall similarity, notwithstanding the identity or close similarity between the goods. Because of the clear differences between the overall impressions given by the marks, he was not persuaded that the average person who knew of a pharmaceutical product called PLEXTAM would be prompted to recollect that product and name if he were to encounter pharmaceuticals offered for sale under the name LEXAM. Therefore, the opposition was dismissed. 593 The Hearing Officer s judgment was based solely on the construct and content of the words and ignored all other facts, such as that each mark was an invented word with no direct meaning. This was an important point, as there can be a tendency to attribute a higher level of visual similarity to words simply because they are invented words and because the assessor does not have any meanings of the words stored in his or her subconscious to bring into play. The Butlers Pantry (Manufacturing) Limited filed a trademark application for THE BUTLER S PANTRY & Device, 594 to cover various goods and services in Classes 29, 30, and 43 (below, illustration at top). The Irish Chocolate Company Limited opposed the application based on its registrations for the word and figurative marks BUTLERS, 595 BUTLERS IRISH, 596 BUTLERS CHOCOLATE CAFÉ, 597 and BUTLERS CHOCOLATE CAFÉ / EXPERIENCE TWO GREAT PLEASURES, TOGETHER, Novartis AG v. Pinewood Laboratories Ltd (Controller of Patents, Designs and Trade Marks, Feb. 26, 2010) (unreported) Application No , filed Jan. 31, CTM No , registered Apr. 27, 2004 (word mark); CTM No , registered Apr. 6, 1998 (figurative mark) CTM No , registered May 12, 2003 (word mark); Irish Trademark No , registered Nov. 6, 1989 (figurative mark) Irish Trademark No , registered May 21, 2002 (figurative mark); Irish Trademark No , registered Nov. 21, 2003 (figurative mark) CTM No , registered Mar. 21, 2001 (figurative mark).

257 1054 Vol. 101 TMR covering non-medicated confectionery, chocolate, and chocolates and sweets (below, illustrations at middle and bottom). Applicant s Mark BUTLERS BUTLERS IRISH CTM CTM CTM CTM Opponent s Marks The opponent submitted evidence that the brand BUTLERS was first used by it in Ireland in 1984 for chocolate, and claimed both a national and an international reputation under the trademark. Previously it had unsuccessfully opposed the

258 Vol. 101 TMR 1055 applicant s registration of the word mark THE BUTLERS PANTRY 599 as a CTM. The applicant claimed use of its mark THE BUTLERS PANTRY Logo since 1987 in connection with all the goods and services applied for. Honest concurrent use, however, is not a defense in opposition proceedings. The Controller found that the dominant feature of the respective marks was the word BUTLERS, which in the case of the applicant s mark included an apostrophe before the S, and this changed the conceptual meanings. The Controller further found the applicant s mark referred unambiguously to a senior male servant of a high-class household, whereas the opponent s marks referred to a family name, having been chosen in memory of Ms. Marian Bailey Butler. Having completed a global assessment, the Controller held that the marks under comparison had a very low level of similarity, and even though the goods covered by the application were identical or similar to those of the earlier registrations (chocolates), he was satisfied that the actual level of similarity between the marks fell short of what was required in order for him to conclude that a likelihood of confusion existed. 600 The Controller pointed out three important differences between the Irish case and that decided by OHIM. First, the marks applied for were not the same. Second, OHIM decided that case in terms of the European public (as it had to), and in so doing it had concluded that the word THE would not catch the European public s attention and the word PANTRY would not be attributed any meaning outside the United Kingdom and Ireland. By contrast, in the Irish proceedings the Controller was concerned only with the meaning of those words in an Irish context. Third, OHIM found that the conflicting marks showed a medium visual and aural similarity, reinforced by a strong conceptual similarity, whereas in the Controller s opinion the marks in question had a low level of visual and aural similarity and little conceptual similarity. Unlike OHIM, the Controller found that the words THE and PANTRY were important and that when viewed or spoken together they conveyed the precise message of a particular place: a pantry not any pantry, but the one in the possession of the butler (the senior male servant). PANTRY is a well-understood word in Ireland and is identified readily as a descriptive term for a small room where food is prepared or stored. The word THE served to remove the possibility of the said pantry s being in the possession of the Butler family or company, as THE is redundant when one describes such ownership CTM No , filed Apr. 6, 2000, registered July 17, Irish Chocolate Co. Ltd v. Butler s Pantry (Manufacturing) Ltd (Controller of Patents, Designs and Trade Marks, June 3, 2010) (unreported).

259 1056 Vol. 101 TMR Eve St. Leger, trading as Flair Confectionery, applied for the invalidation of the trademark registration for EVE Logo, 601 for chocolate and confectionery products and drinking chocolate in Class 30 (below, illustration at left). She claimed to enjoy a substantial reputation in Ireland under her mark EVE A LITTLE TEMPTATION & Logo, 602 registered in Class 30 for flour and preparations made from cereals, bread, pastry and confectionery, and chocolate (below, illustration at right). St. Leger argued that the word EVE was the dominant element of both marks and the respective goods were identical or similar. The proprietor of the EVE Logo mark, Ann Kilgallon, denied all the claims made by St. Leger. Kilgallon argued that the word EVE in her mark was presented in a stylised form and was distinguishable from St. Leger s trademark. Kilgallon s Mark St. Leger s Mark The Controller viewed all elements of St. Leger s mark the female name EVE, the fig leaves, and the phrase A LITTLE TEMPATION, with the notions of the Garden of Eden and a specific concept, that being the tempting of Adam by Eve. The applicant was clearly linking the goods, confectionery and chocolate, with temptation that was hard to resist. The concept of Kilgallon s mark was not so obvious to the Controller. While it contained a version of the word EVE, it was not readily identifiable with any particular woman called Eve; the figurative element, the ankh, which is the ancient Egyptian symbol for eternal life, did not help him to identify any particular Eve either, and some consumers might not even see the word element as EVE. So, on the one hand there was a concept of the Eve of the Garden of Eden, and on the other a concept of an Eve and eternal life. The Controller held that the visual dissimilarity between the marks was so obvious that the consumer would not likely be confused, 601. Trademark No , registered Aug. 23, Trademark No , registered July 25, 1994.

260 Vol. 101 TMR 1057 and accordingly the application for invalidation of the registration was rejected. 603 It was held that in order for a likelihood of confusion to exist, it must be present in the mind of the end consumer and arise when he or she is the person making the selection and has the opportunity to view and examine the trademark at first hand. Thus, in the case of a purchase made by telephone or where the consumer asks a third party to make the purchase, the question of likelihood of confusion will not be considered relevant. ISRAEL I.B.5. Suggestive Partner Communication Ltd. opposed the Israeli trademark SIMPLE, 604 in the form illustrated below, in Class 38, for local and international communications, Internet provider filed by Exphone 018 Ltd. Defendant s mark The opposer contended that the mark was descriptive because of the frequent use in communication services of the word simple in order to describe the simplicity of devices, and that it lacked distinctiveness because of its poor design. The Registrar of Trademarks stated that a mark is suggestive and not descriptive if consumers need a moment to associate the mark with the goods or services it denotes. 605 In this case, the logo suggested that the company provided SIM cards, and consumers would have to think for a moment in order to recognize the connection. As a result of the particular design and the fact that the trademark was suggestive in relation to the applicant s services, the Registrar held that it was distinctive. The opposer argued that generally the word simple is descriptive in communication services and its use cannot be restricted. The Registrar accepted this argument. Therefore, the mark could be 603. Eve St. Leger t/a Flair Confectionary v. Ann Kilgallon (Controller of Patents, Designs and Trade Marks, July 21, 2010) (unreported) Application No. 185, A. Zeligson, The Law of Trademark and Adjacent Laws 40 (1973).

261 1058 Vol. 101 TMR registered if the list of services were to include providing SIM cards for Internet and communication services. 606 Although some marks should remain open because of their frequent use as words in a particular commercial area, if they are both suggestive regarding specific goods and services and distinctive by a unique design, they can be registered. I.D.1. Similarity of Marks Yonatan Shriber applied to register NO-SPA (also in Hebrew, as - ) as an Israeli trademark in Class 5, for dietary supplement for relieving stomach aches. 606F607 The application was opposed by CHINOIN Gyogyszer Vegyeszety Termekek Gyara Rt. on the basis of likelihood of confusion with their registered trademarks NO-SPA,607F608 NO-SPA FORTE,608F609 and NO-SPALGIN609F610 and for their three-dimensional trademarks NO-SPA610F611 and SPA,611F612 all in Class 5. Pharmaceuticals and dietary supplements are similar goods if they are intended to treat the same disease or problem or to complete each other. In order to determine likelihood of confusion, there are three tests.612f613 The Registrar applied these three tests as follows and found that the tests supported a conclusion that the applicant s and opposer s marks would be easily confused: 1. Similar look and sound of the trademarks in question. In this case, both the look and sound of the two parties trademarks were similar, even though the applicant s mark was also in Hebrew. An Israeli consumer would think that the mark was merely translated. 2. Similar consumers and similar marketing channels. In this case, both products were sold in pharmacies to the same consumers. The applicant s product needed no prescription; therefore, confusion was more likely to happen. 3. Other circumstances. In this case, there was the possibility of the confusion of pharmaceuticals, which could be dangerous Partner Communication Ltd. v. Exphone 018 Ltd., Trademarks Registrar s Decision of Dec. 30, Available at 9AE2-46B B/24383/t doc (in Hebrew) Application No. 202, Registration No Registration No Registration No Registration No Registration No Taam Teva v. Ambrosia Suprherb, Case No. 5454/02, p.d. 57(2), 438 (Supreme Court).

262 Vol. 101 TMR 1059 Therefore, the Registrar sustained the opposition, and the application was denied. 614 ITALY I.D.1. Similarity of Marks Paioli S.p.A. and Paioli Meccanica S.p.A. (jointly, Paioli ) had registered, in Italy and the European Community, a mark consisting of a stylized letter P, for Paioli, surmounted by a dot and encompassed in either a circle or a square (below, illustrations at top). The mark, which symbolized a man riding a motorcycle, was used both as a house mark and to distinguish Paioli s products, which included suspensions for cars, bicycles, and motorcycles and fork blades for motorcycles and bicycles. Paioli s first domestic registration dated back to In 2005, Fiat Auto S.p.A. obtained an Italian registration for a mark formed by a stylized letter P surmounted by a dot (the Italian word for dot being punto), which symbolized a man driving a car (below, illustrations at bottom left). In 2006, Fiat registered the Community trademark PUNTO, 615 where the P of the word was formed by the P driver symbol of the national registration (below, illustration at bottom right). Both marks were used to distinguish a new model of car that Fiat was in the process of launching. In particular, the P mark was used inside the car on the passenger s seat, while the PUNTO mark was used on the rear of the car. The advertising campaign for the launch of the new Punto car was massive and centered on the P mark, which Fiat also used, with some modifications, on unrelated goods such as CDs. Paioli s Mark 614. CHINOIN Gyogyszer Vegyeszety Termekek Gyara Rt. v. Yonatan Shriber, Trademarks Registrar s Decision of January 23, Available at NR/rdonlyres/EB48A A-4D9B-B8D4-1DCCA1FCAA74/25203/t doc (in Hebrew) CTM No , filed May 18, 2005, registered May 22, 2006.

263 1060 Vol. 101 TMR Fiat s P Mark Fiat s PUNTO Mark After receiving a cease and desist letter from Paioli, Fiat commenced proceedings on the merits to obtain a declaratory judgment of non-infringement and lack of unfair competition. Paioli counterclaimed, arguing that Fiat s behavior amounted to trademark infringement under Article 20, paragraph 1(b) and (c) of the Industrial Property Code 616 and an act of unfair competition. Trademarks enjoying a reputation are afforded broader protection, which extends also to goods and services not covered by the relevant trademark registration. The aim is to prevent harm to the reputation and distinctive character of these marks caused by infringers exploiting their special power of attraction. In the case at hand, however, the court observed that despite the evidence it had submitted consisting of advertising figures, gadgets, and documentation relating to its participation in trade fairs Paioli had not shown that its trademark enjoyed a reputation. Moreover, even if reputation were given a broader interpretation in accordance with the European Community s leading case law, an opinion poll conducted on Fiat s behalf showed that Paioli s mark was not known by a wide segment of the relevant market. Therefore, given Paioli s failure to show that its trademark enjoyed a reputation, any assessment of unfair advantage or detriment to the mark was irrelevant, and the court held that Fiat s behavior did not amount to trademark infringement under Article 20, paragraph 1(c). The court also ruled in favor of Fiat with respect to trademark infringement under Article 20, paragraph 1(b). Preliminarily, it dismissed any similarity between Paioli s and Fiat s products, which, in the court s opinion, met the needs of different consumer bases: Fiat s marks were used on end products, that is, cars, while 616. Article 20, paragraph 1, provides, in pertinent part, that a trademark owner has the right to exclude others from using (b) any sign identical with or similar to the registered trademark for identical or similar products or services if, due to the identity or similarity of the signs and the identity or similarity of the products or services, there exists a likelihood of confusion on the part of the public which may also consist in the likelihood of association of the two signs; [or] (c) a sign identical with or confusingly similar to a trademark registered for products or services even if not similar to each other, if the registered trademark has a reputation in the State and the use of the sign without due cause allows the taking of unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trademark.

264 Vol. 101 TMR 1061 Paioli s mark was used as a house mark and to distinguish components for cars, bicycles, and motorcycles. Moreover, the court noted that even if cars and components for motor vehicles were considered similar products, no likelihood of confusion could arise on the part of the public, either in concrete or in abstract terms. Comparing the context in which the opposing marks were used, the court found that the great degree of attention paid by consumers buying Fiat s car or Paioli s components ruled out any concrete risk of confusion. In an abstract comparison of the conflicting marks taking into account the overall impression of their graphic, visual, and conceptual characteristics the court concluded that the differences between them involved the core of the mark and thus excluded any likelihood of confusion. In particular, in the court s view, the parties marks were conceptually different, as they depicted drivers of different vehicles, that is, a car and a motorcycle. Additionally, in their overall impression, the marks were graphically different: the lines of Paioli s mark were darker, the dot representing the head of the motorcycle rider was centered, and in at least two versions of the mark the image was inside a circle. In contrast, Fiat s mark was not inside a circle, and the dot which also evoked the name of the car was to one side. Finally, because there was no likelihood of confusion between the marks even in the form of likelihood of association the court also rejected Paioli s claim of reverse confusion, or, in other words, the claim that, as a result of Fiat s massive advertising and marketing policies, Fiat s P mark had become so famous that consumers, instead of recognizing the mark as an infringement of Paioli s mark, erroneously associated Paioli s mark and products with Fiat s business. Therefore, the Court of Bologna, upholding the plaintiff s claims, affirmed that Fiat s behavior did not amount to trademark infringement or an act of unfair competition and condemned Paioli to reimburse Fiat for the expenses of the action. 617 The case was very important for Fiat s enormous potential liability for damages. The decision is noteworthy because, despite a certain degree of similarity between the marks at issue, the court took into consideration all the other relevant aspects of the case to rule out the existence of a likelihood of confusion. II.C.1.g. Two- and Three-Dimensional Marks Artemide S.p.A. filed an application for a three-dimensional mark consisting of the shape of its famous Tolomeo lamp (see below), to distinguish a lighting apparatus in Class Fiat Auto S.p.A. v. Paioli S.p.A. & Paioli Meccanica S.p.A., Case No /05 R.G. (Court of Bologna, Nov , 2009) (to be published in Giur. Ann. Dir. Ind. 2010).

265 1062 Vol. 101 TMR The Italian Patent and Trademark Office (PTO) rejected the application on the basis of the provisions of Article 18(c) of the Italian Trademark Law. 618 In particular, the PTO held that the shape of the Tolomeo lamp could not be registered because it was imposed by the very nature of the good to obtain a given technical result. Moreover, because registration of a mark as a result of its acquired secondary meaning is applicable only to word marks, the alleged secondary meaning acquired by the shape of this lamp could not supersede the provisions of Article 18(c). The Tolomeo Lamp The Board of Appeal upheld the PTO s decision, and Artemide further appealed to the Supreme Court. It claimed that Article 18(c) provides for three different and independent grounds on the basis of which the shape of a product may be refused registration: (1) when the shape is imposed by the very nature of the good; (2) when the shape is necessary to obtain a technical result; and (3) when the shape gives substantial value to the good. In fact, according to the European Court of Justice s (ECJ s) case law, each of the grounds for refusal to register... is independent of the others and calls for separate examination. Furthermore, the various grounds for refusal must be interpreted in the light of the public interest underlying each of them The Trademark Law was repealed by Legislative Decree No. 30 of Feb. 10, 2005 (Industrial Property Code). Article 18(c) of the Trademark Law now Article 9 of the Industrial Property Code stated: [T]he following may not be subject to trademark registration:... signs consisting exclusively in the shape imposed by the very nature of the goods, of a shape of goods which is necessary to obtain a technical result or of a shape which gives substantial value to the goods See, to that effect, Linde AG v. Windward Industries Inc. & Rado Uhren AG, Joined Cases C-53/01 C-55/01, [2003] ECR I-3161, paras. 67, 71 (ECJ, Apr. 8, 2003); Koninklijke

266 Vol. 101 TMR 1063 The Board of Appeal, when stating that the shape of the Tolomeo lamp could not be registered because imposed by the very nature of the good to obtain a given technical result, had therefore mistakenly mixed the first two grounds of this provision. In addition, Artemide argued that the shape of its lamp was not for the purpose of obtaining a particular technical result but had mainly a distinctive character. It contended that the Tolomeo lamp was known throughout the world and consumers immediately recalled, in their minds, its famous manufacturer, Artemide. As affirmed also by the ECJ, As regards signs... consisting exclusively of the shape of the product necessary to obtain a technical result, Article 3(1)(e)... of the [European Trademarks] Directive... is intended to preclude the registration of shapes whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trade mark right would limit the possibility of competitors supplying a product incorporating such a function or at least limit their freedom of choice in regard to the technical solution they wish to adopt in order to incorporate such a function in their product. 620 Quite often, however, the shape of a product not only is necessary to obtain a technical result but also has a distinctive character. In these cases, some scholars maintain that the expression exclusively in Article 18(c) does not rule out the possibility of registering the shape of a product when it also has some other functions: for example, when it also has a distinctive character. Finally, Artemide appealed the part of the decision where the Board of Appeal concluded that secondary meaning could not be applied to a three-dimensional mark. Here again, Artemide cited ECJ case law, according to which the criteria for assessing the distinctive character of three-dimensional trademarks consisting of the shape of the product itself are no different from those applicable to other categories of trademarks. 621 The Supreme Court, in upholding Artemide s first ground of appeal, determined that the PTO had erred when applying Article 18(c), as it had mixed the first two grounds of this provision, thereby distorting their nature. The Court confirmed that each ground for refusal of registration of a three-dimensional mark calls for a separate and independent assessment and must be interpreted with an eye to the public interest underlying it. Moreover, the Court found that the Board also failed to clearly express the reason for its finding that the shape of Artemide s Philips Electronics NV v. Remington Consumer Products Ltd., Case C-299/99, [2002] ECR I-5475, para. 77 (ECJ, June 18, 2002) Philips, [2002] ECR I-5475 para Henkel KGaA v. OHIM, Case C-456/01, [2004] ECR I-5089 (ECJ, Apr. 29, 2004).

267 1064 Vol. 101 TMR lamp was imposed by the very nature of the good and necessary to obtain a technical result. Therefore, the Court reversed the Board s decision and condemned the Ministry of Productive Activity (now the Ministry of Economic Development) to bear the costs of the action. The case was sent back to the Board of Appeal for a new evaluation of whether the shape of Artemide s lamp was registrable as a threedimensional trademark. 622 In accordance with ECJ case law, the Supreme Court clearly distinguished among the three grounds on the basis of which the shape of a product may be refused registration, and stated that these grounds are independent and call for separate examination. III.A. Infringement and Other Forms of Unfair Competition Salvatore Ferragamo S.p.A., the famous Italian leather goods manufacturer, owns the trademarks FERRAGAMO and SALVATORE FERRAGAMO, registered and used worldwide since 1937 both as a word mark and in a particular graphic rendition (below, illustration at left). Carpan S.r.l. distributed shoes bearing the phonetically similar mark F.LLI FERRAZZANO, depicted in a similar graphic rendition and a similar kind of script (below, illustration at right). Ferragamo s Mark Carpan s Mark Ferragamo initiated injunctive proceedings against Carpan before the Court of Florence. The court rendered an interim decision in favor of the plaintiff, enjoining the defendant from further use of the F.LLI FERRAZZANO mark. Ferragamo subsequently brought an action on the merits, claiming that Carpan s behavior amounted to trademark infringement and an act of unfair competition under Article of the Civil Code. 623 This time, however, the court rejected Ferragamo s claims, 622. Artemide S.p.A. v. Ministero delle Attività Produttive, Case No /09 (Supreme Court, Oct. 29, 2009), published in Red. Giust. Civ. Mass. 2009, No Article of the Civil Code provides: Subject to the provisions concerning the protection of distinctive signs and patent rights, acts of unfair competition are performed by whoever: (1) uses names or distinctive signs which are likely to create confusion with the name or distinctive signs legitimately used by others, or closely imitates the products of a competitor, or performs, by any other means, acts which are likely to create confusion with the products and activities of a competitor.

268 Vol. 101 TMR 1065 deciding in favor of Carpan. Ferragamo appealed before the Court of Appeal of Florence, which reversed the first instance decision and condemned Carpan for trademark infringement and unfair competition. Carpan appealed the second instance decision before the Supreme Court. However, it did not appeal the part of the decision where the Court of Appeal found that the F.LLI FERRAZZANO mark infringed Ferragamo s marks. Instead, Carpan maintained only that the appellate court had erred in concluding that the use of the F.LLI FERRAZZANO mark on shoes gave rise to a risk of confusion under Article In fact, for a finding of unfair competition, the companies must be competitors and the unlawful acts must determine a concrete likelihood of confusion between the respective products. Because Ferragamo s clientele consisted of international high-end consumers and Carpan s consisted of local low-end consumers, Carpan argued that the companies were not competitors. Moreover, given that Ferragamo s goods were sold exclusively in its boutiques or by authorized retailers, no consumer could be misled as to the actual source of the products. The Supreme Court, upholding the decision of the Court of Appeal, observed that for a finding of unfair competition the entrepreneurs need only exercise the same industrial or commercial activity; it was not necessary to have a common clientele in concrete terms. In fact, the Court cautioned, clientele should not be interpreted to mean the actual individuals purchasing a specific product, but, rather, should be construed as a category of consumers characterized by a common need. Additionally, the Court explained that the difference in the quality of the companies goods and in the levels of the shops in which the goods were sold had no impact on the assessment of likelihood of confusion under Article In fact, the risk of confusion under this provision is not only a risk of confusion between products but also, and primarily, a risk of confusion as to the origin of the goods. In this respect, the use of a similar mark on the same type of goods may determine a likelihood of confusion in the form of a risk of association between the companies, in that a consumer may think that the less-expensive product is part of a cheaper line originating from the same entrepreneur. Consequently, in the case at hand, the Court held that consumers might believe that, although of lower quality and significantly less expensive, the shoes bearing the F.LLI FERRAZZANO mark originated from Ferragamo. The Supreme Court therefore rejected the appeal and upheld the decision rendered by the Court of Milan Calzature Carpan S.r.l. v. Salvatore Ferragamo Italia S.p.A., Case No /09 (Supreme Court, Apr. 7 July 22, 2009), published in Giur. Ann. Dir. Ind

269 1066 Vol. 101 TMR The Supreme Court, in line with its previous case law, confirmed that likelihood of confusion under Article of the Civil Code is not just a risk of confusion between the products but, primarily, a risk that consumers may be misled as to the origin of the goods. Accordingly, when competing goods are distinguished by similar marks, a different quality of the goods, a large price gap, or different points of sale do not preclude a finding of unfair competition, as consumers may think that the less-expensive products are part of a lower line originating from the same company. III.A.3.b. Criminal Actions Chanel S.A.S. owns the famous mark known as the Chanel monogram, used and registered in many countries of the world to distinguish a wide range of products and services (below, illustration at left). Ms. Wang Genlian was found in possession of several bags on which appeared reproductions of the Chanel monogram in an altered way. In particular, the two Cs of Chanel s mark appeared as two Os that were stitched only partially. In fact, they were stitched on the products as if they were two Cs, so that the outer parts could be removed, without damaging the product, to recreate the Chanel monogram (below, illustration at right). Ms. Genlian was charged with the crime of counterfeiting under Article 473 of the Criminal Code. 625 Chanel joined the proceedings as an aggrieved party to obtain the reimbursement of the damages suffered. Chanel s Mark Defendant s Design and Product 625. This decision applies former Article 473 of the Criminal Code, which stated that whoever counterfeits or alters national or foreign trademarks or distinctive signs... or, without taking part in the counterfeiting or alteration, uses these altered or counterfeit trademarks or distinctive signs shall be punished with imprisonment up to three years and a fine up to 2,065 Euros. However, this article was recently amended by Law No. 99 of July 23, 2009, which now sets the punishment at six months to three years of imprisonment and a fine of 2,500 to 25,000 euro. Moreover, the new Article 473 states, whoever, being in a position to know of an IP right, counterfeits or alters....

270 Vol. 101 TMR 1067 The court observed that the differences between Chanel s mark and Ms. Genlian s design were only apparent. If Ms. Genlian had wanted to reproduce on the bags a design formed by two Os, she would have stitched the letters differently. In the court s opinion, the fact that the letters were stitched as if they were two Cs indicated that Ms. Genlian intended to cut out an outer section of each O before selling the bags. The alteration of the two Cs of the Chanel monogram into two Os was a mere expedient used to avoid police authorities inspections. Moreover, the court found that Ms. Genlian also had the mens rea to commit the crime punished under Article 473 of the Criminal Code, because the facts showed that she was well aware that the Chanel monogram is a registered mark. In particular, the court observed that because the Chanel monogram had been registered for decades, Ms. Genlian could not have ignored this. Additionally, the tricks used in altering the mark so that Ms. Genlian s design was apparently different from the Chanel monogram, although still confusingly similar, proved that she knew that she was counterfeiting a registered trademark; a registered trademark may not be imitated, not even in part. 626 The court seemed to initially affirm that Ms. Genlian s design, formed by two Os in the same colors and size as the Chanel monogram, constituted an alteration of Chanel s mark. The court then gave more prominence to the facts and concluded that Ms. Genlian s design was an alteration of the Chanel monogram because the Os could be easily transformed into Cs. This decision is important because it provides a very broad interpretation of the concept of alteration under Article 473 of the Criminal Code. III.D.3. Parody Deutsche Grammophon GmbH owned the yellow frame figurative mark (below, illustration at top). The defendants, Hukapan S.p.A. and Sony Music Entertainment Italy S.p.A., distributed the album Gattini ( Kittens ), by the rock group Elio e Le Storie Tese, the cover of which bore a design similar to Deutsche Grammophon s mark (below, illustration at bottom left). Deutsche Grammophon and Universal Music Italia S.r.L. brought injunctive proceedings before the Court of Milan against Hukapan and Sony, claiming trademark infringement and unfair competition. Hukapan countered that there was no infringement because the yellow frame on the album s cover had a purely ironic and parodying intent and was not used as a source indicator. It also 626. Chanel S.A.S. v. Wang Genlian, Decision No. 6008/2009 (Court of Florence, Oct. 28, 2009 Jan. 20, 2010) (unpublished).

271 1068 Vol. 101 TMR argued that the differences in its mark (namely, the lack of the verbal component DEUTSCHE GRAMMOPHON and the different representation of the yellow frame) excluded any risk of confusion. Additionally, both defendants maintained that, even if the design on the Gattini album cover were judged to be an infringement of Deutsche Grammophon s mark, there would be no risk of an irreparable harm that would justify the interim remedies sought by the plaintiffs because the defendants had immediately changed the cover of the album, changing the frame design from rectangular to oval and the frame s color from yellow to pink (below, illustration at bottom right). Plaintiffs Mark Defendants Contested Mark Defendants Redesigned Mark The court preliminarily observed that the distinctive character of Deutsche Grammophon s mark was the result of the combination of its figurative element and its wording. However, because Deutsche Grammophon had, throughout the years, used the yellow frame to distinguish all of its products, the figurative component of the mark had acquired a predominant role. Therefore, in the comparison of the marks that took into account their overall impression, the court found that all the essential

272 Vol. 101 TMR 1069 characteristics of Deutsche Grammophon s mark had been reproduced in Hukapan s mark. Despite this, the court determined that Hukapan s mark neither confused consumers nor took a free ride on the reputation of Deutsche Grammophon s mark: it was only an ironic reference to that famous mark. More specifically, Hukapan s mark was a parody of Deutsche Grammophon s mark. Consequently, the court taking into account the way in which the public would perceive, in the context of the music industry, the message conveyed by the defendants mark viewed it as unlikely that a consumer of average intelligence, culture, and attention could be misled as to the origin of the goods or would establish a link with Deutsche Grammophon s mark. The court did not rule out the possibility that the parody at issue could be detrimental to the reputation of Deutsche Grammophon s mark. In the court s opinion, however, this assessment was not simple and could not be made in the course of injunctive proceedings. Finally, the court rejected the plaintiffs action for lack of the prerequisite of irreparable harm. It took the view that if a defendant in an infringement action proves to have taken measures to recall the contested goods from the market, those measures eliminate the risk of irreparable harm, even though some goods may still be found in the market. 627 This decision is important because it gives some guidelines for establishing the fine line between legitimate parody and trademark infringement. III.F.3. Forfeiture The Academy of Motion Picture Arts and Sciences (AMPAS) owns the mark OSCAR, registered for, inter alia, education and entertainment in Class 41. Unione Nazionale Proprietari Cavalli Purosangue ( National Union of Owners of Purebred Horses ) had registered the mark OSCAR DEL GALOPPO to distinguish organization of sports competition, in particular horse manifestations in Class 41. AMPAS instituted an action on the merits before the Court of Milan to obtain the cancellation of the mark OSCAR DEL GALOPPO and a judgment of infringement against Unione Nazionale. Unione Nazionale rebutted that the mark OSCAR had become the common name of any first prize given during any manifestation having a competitive nature and that it was 627. Deutsche Grammophon GmbH & Universal Music Italia S.r.L. v. Hukapan S.p.A. & Sony Music Entertainment Italy S.p.A. (Court of Milan, Dec. 31, 2009), published in Giur. Ann. Dir. Ind

273 1070 Vol. 101 TMR synonymous with excellence. It asked, therefore, that the court reject AMPAS s claims and declare AMPAS s mark invalid. The court found that Unione Nazionale s counterclaim that the mark OSCAR had become generic was not grounded on either an objective or a subjective basis. 628 In particular, from an objective standpoint, the court observed that the fact that the mark OSCAR had acquired the meaning of prize or recognition in a competition did not diminish its distinctive character with respect to the ceremony AMPAS organizes every year to celebrate the best performers, writers, and directors in the movie industry. In the court s view, the evidence submitted by Unione Nazionale consisting of definitions from several dictionaries did not affect this conclusion. In fact, in all the dictionaries brought to the court s attention, the first meaning given to the word Oscar was that of the statuette given every year during the ceremony AMPAS organizes to celebrate the best personalities in the movie industry. Only the further results, which gave a broader interpretation to this word, defined Oscar as the first prize given in any competition or manifestation. The court therefore concluded that the definitions in the various dictionaries were proof of the fact that the mark OSCAR, instead of losing its distinctive character during the years, had increased it. The court clearly affirmed, moreover, that the broader interpretation given to the mark OSCAR in the various dictionaries was a normal consequence of the fact that this mark enjoyed a reputation. Finally, from a subjective standpoint, the court held that the plaintiff had submitted evidence to prove that it had adequately protected its mark during the years, either by judicial action or extrajudicially. Therefore, AMPAS could not be considered to have been inactive against the infringements of its mark. With respect to the cancellation of the mark OSCAR DEL GALOPPO for lack of novelty, the court preliminarily noted that the heart of the defendant s mark was OSCAR because GALOPPO ( gallop ) was merely descriptive of the field in which the competition took place. Consequently, in view of the identity of the marks and the services they distinguished, and the clear likelihood of confusion, or at least of association, between the marks, the court determined that the defendant s mark lacked novelty. For the same reasons, the court found also that the OSCAR DEL GALOPPO mark infringed AMPAS s exclusive rights in the mark OSCAR and enjoined the defendant from further using the 628. Academy of Motion Picture Arts and Sciences v. Unione Nazionale Proprietari Cavalli Purosangue, Case No. 967/10, Decision No. 1159/10 (Court of Milan, Feb. 1, 2010) (to be published in Giur. Ann. Dir. Ind. 2010).

274 Vol. 101 TMR 1071 mark. The court also ordered that the decision be published in an Italian newspaper. In this decision, the Court of Milan, one of the leading Italian courts in the field of intellectual property, analyzed in detail the question of whether a mark should be forfeited because in the relevant trade it has become the common name of a good or service. The court clearly held that when determining whether a trademark should be declared forfeited, a court should take into account not only whether the mark has lost its distinctive character (i.e., the objective element) but also whether this phenomenon is the consequence of the owner s activity or inactivity (i.e., the subjective element). JAPAN I.C. Distinctiveness The Japanese company Kabushiki Kaisha Yakult applied for the registration of a three-dimensional trademark for the shape of its container for the probiotic fermented dairy drink called Yakult, after the firm s corporate name. Both the examiner and the Appeal Board of the Japan Patent Office rejected the application on the ground that the trademark applied for consisted solely of a mark indicating in a common way the shape of the container of the goods for which the mark was to be registered, contrary to Article 3(1) of the Japanese Trademark Act Law No. 127 of Apr. 13, 1959, as amended. Article 3(1)(iii) provides: Any trademark to be used in connection with goods or services relating to the business of an applicant may be registered, unless the trademark... consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision....

275 1072 Vol. 101 TMR The applicant brought suit before the Intellectual Property High Court, which reversed the Patent Office s decision. 630 The Court ruled that the applied-for mark had acquired distinctiveness, namely secondary meaning, under Article 3(2) of the Act 631 as a result of (1) use of the container for over 40 years; (2) the quality of the design, which had been awarded various prizes; (3) the YAKULT product s market share of over 50 percent; (4) the company s large outlay for advertising; and (5) a survey showing that 98.8 percent of respondents were reminded of the YAKULT beverage by the container shape. Thus, the Patent Office issued a further decision and allowed the mark to proceed to registration. This is the second case where the High Court has recognized that the distinctiveness of a beverage container was acquired by use. Previously, the Court reversed the Patent Office s decision and held that the returnable COCA-COLA bottle had acquired distinctiveness as a result of its vast use since 1957 in the Japanese market and the fact that the bottle s unique, characteristic design surpassed the trademark indication of COCA-COLA and other letters. 632 Three-dimensional trademarks have been available since 1996, and in cases where they have no connection with designated goods or services or are not combined with letters, words, or other identifiers, applicants have not had great difficulty in obtaining registration. On the other hand, whiskey bottles, perfumery bottles, or beverage containers often have been rejected, as they usually bear words or letters, or a device or other identifier, and thus it has been held that consumers and traders would identify the origin of the goods through those markings. As a result of this decision, however, a container whose shape is unique and well known among a broad range of consumers and traders in the relevant market may be registered as a trademark, even if there are words or letters affixed Kabushiki Kaisha Yakult v. Patent Office Commissioner, Case No. Heisei 22 (Gyo- Ke) No (Intellectual Property High Court, Nov. 16, 2010), available at (Supreme Court home page) (in Japanese) Article 3(2) provides: Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) through (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those relating to a business of a particular person Hanrei Jiho 36 (Intellectual Property High Court, May 29, 2008) (unpublished).

276 Vol. 101 TMR 1073 I.D.1. Similarity of Marks Kabushiki Kaisha Natural Plants filed a trademark application for LOVE COSMETIC in Japanese Katakana, to cover cosmetics for sexual use. The Patent Office rejected registration, finding that the mark was similar to several previously registered trademarks incorporating the word LOVE in Roman letters or Japanese Katakana. On appeal by the applicant, the Intellectual Property High Court held that the element COSMETIC did not distinguish the designated goods from the goods of competitors because the mark would be used for cosmetics. The Court held, moreover, that while the other element, LOVE, could function to distinguish the designated goods from other goods, the applicant s mark was at least similar to the previously registered trademark LOVE in Japanese Katakana. Consequently, the Court affirmed the Patent Office s decision. 633 This was the most recent in a series of cases involving Kabushiki Kaisha Natural Plants and its marks, all covering cosmetics for sexual use. In 2007, the company obtained a trademark registration for LOVE COSME in Japanese Katakana. A competitor, Kabushiki Kaisha Club Cosmetics, brought an action for invalidation of the registration, asserting that the contested mark was similar to its earlier-registered trademarks LOVE, LOVE in Japanese Katakana, etc., also covering cosmetics. The Patent Office upheld the action, finding that the word element COSME meant cosmetics and that the mark did not distinguish its designated goods from those of others. It further found that although the other element, LOVE, could function to distinguish the designated goods, it was similar to the plaintiff s registered LOVE trademarks. In response, Kabushiki Kaisha Natural Plants initiated a cancellation suit before the Intellectual Property High Court. The Court held that, when considered as a whole, the trademark LOVE COSME in Japanese Katakana distinguished its designated goods from other goods because general traders and consumers would not see the trademark as being separable into LOVE and COSME. Thus, it was not similar to the defendant s LOVE trademarks. Accordingly, the Court reversed the Patent Office s decision Kabushiki Kaisha Natural Plants v. Patent Office Commissioner, Case No. Heisei 21 (Gyo-Ke) 10021, 116 Hanrei Jiho 2075 (Intellectual Property High Court, July 16, 2009) (unpublished) Kabushiki Kaisha Natural Plants v. Kabushiki Kaisha Club Cosmetics, Heisei 20 (Gyo-Ke) 10380, 110 Hanrei Jiho 2075 (Intellectual Property High Court, Apr. 27, 2009) (unpublished).

277 1074 Vol. 101 TMR In a previous case involving these two parties, Kabushiki Kaisha Club Cosmetics brought an infringement action against Kabushiki Kaisha Natural Plants in the Osaka District Court, seeking prohibition of further use of the defendant s trademarks LOVE COSMETIC and LOVE COSME in Japanese Katakana and compensation for damages. The Court upheld the action, holding that LOVE, the main element of both the defendant s trademarks, was similar to the plaintiff s LOVE trademarks. Kabushiki Kaisha Natural Plants appealed to the Osaka High Court. The appellate court held that the LOVE element of the appellant s trademarks could not, by itself, function to distinguish the designated goods from those of other traders because LOVE was a very popular English word. It added, however, that, taken as a whole, the trademarks LOVE COSMETIC and LOVE COSME could function to distinguish their designated goods. The court was of the opinion that general consumers would not see the marks as being separable into LOVE and COSME(TIC) and that the word COSMETIC could function to distinguish the designated goods from other goods because for Japanese people it was not easy to understand. In addition, the High Court noted, the goods on which the defendant s trademark was put were cosmetics for sexual use, while those bearing the plaintiff s trademark were normal cosmetics. Thus, it was not likely that confusion would arise should the marks be allowed to coexist. Consequently, the Osaka High Court overturned the first instance decision. 635 Love, cosmetic, and Cosme seem to be commonly used English words or word elements in various countries. It will be very interesting to see whether the reasoning of the Japanese Patent Office and the courts will be followed by consumers, traders, and tribunals in other jurisdictions. III.A.2. Passing Off In 1982, the French company Agatha Diffusion obtained a trademark registration for AGATHA with respect to jewelry and accessories. Subsequently, a Japanese company, A-Smart Kabushiki Kaisha, began selling jewelry and accessories by mail order on its website, displaying a mark, AGATHA NAOMI, on the site on or before October 10, Kabushiki Kaisha Club Cosmetics v. Kabushiki Kaisha Natural Plants, Heisei 19 (Ne) 3057 and Heisei 20 (Ne) 420, 123 Hanrei Jiho 2075 (Osaka High Court, Nov. 7, 2008) (unpublished).

278 Vol. 101 TMR 1075 In response, Agatha Diffusion brought an infringement action against A-Smart for showing on its website a mark similar to the plaintiff s trademark AGATHA. The court of first instance (the Tokyo District Court) dismissed the action, holding that there was no similarity between the marks at issue. On appeal by Agatha Diffusion, the Intellectual Property High Court overturned the Tokyo District Court s judgment and ordered A-Smart to pay damages of 2,248. Damages were calculated in accordance with Article 38(3) of the Trademark Act, 636 based on the amount to be paid for the use of Agatha Diffusion s trademark, namely 5 percent of total sales from the date the infringing act took place (October 19, 2006) to the date the action was filed (August 27, 2008). 637 In addition, A-Smart was prohibited from showing the trademark AGATHA NAOMI on its website. 638 There have been many court decisions concerning similarity of combined marks (marks consisting of more than one basic mark), such as AGATHA NAOMI. In the Tokyo District Court s opinion, determination of similarity in this case should be made by comparing the defendant s combined mark AGATHA NAOMI as a whole and the plaintiff s trademark AGATHA. Such a comparison showed that the marks were distinguishable and, thus, dissimilar. The Intellectual Property High Court, on the other hand, found that AGATHA and NAOMI were not one inseparable word mark but two distinct elements, of which AGATHA clearly was well known. Thus, consumers would pay more attention to AGATHA than to NAOMI. The Court therefore held that the marks at issue were similar, and hence that the defendant s acts constituted infringement. Although a theory of examination of similarity has been established, the application of the principle to individual cases has varied. This case is one of the typical examples of difficulties and differences in the application. III.F.1. Non-Use The corporation Kabushiki Kaisha Hukumoto Denki was the holder of a trademark registration for DEEPSEA, covering 636. Article 38(3) provides: The holder of the trademark right or of an exclusive right to use may claim against an infringer compensation for damage sustained as a result of the intentional or negligent infringement of the trademark right or the exclusive license, by regarding the amount the holder of the trademark right or of the exclusive right to use would have been entitled to receive for the use of the registered trademark as the amount of damage sustained The plaintiff asserted that its total sales were 200 million, but the Court accepted the evidence submitted by the defendant and allowed only 44,972 as the sales amount Agatha Diffusion v. A-Smart Kabushiki Kaisha, Case No. Heisei 21 (Ne) 10031, 2062 Hanrei Jiho 139 (Intellectual Property High Court, Oct. 13, 2009) (unpublished).

279 1076 Vol. 101 TMR watches. 639 Rolex SA, the Swiss watch manufacturer, filed for cancellation of the mark under Article 50(1) of the Trademark Law 640 on the ground that the registrant had not used its mark during the previous three years. While the trademark DEEPSEA appeared on the dial of wristwatches sold by Hukumoto Denki, the Patent Office granted Rolex s demand for cancellation because it did not recognize that the mark distinguished the owner s goods from those of its competitors. On the upper part of the center of the dial of the watch is the name ELGIN INTERNATIONAL ; beneath it, AUTOMATIC DEEPSEA and 660ff=200M DATE appear in red color in a clearly distinctive way. Given that arrangement, the Patent Office held, DEEPSEA was not used as a trademark in order to distinguish that product from others; rather, it indicated that the watch could be worn under water to a depth of 200 meters (660 feet). Accordingly, the Patent Office held that use of the trademark at issue should be prohibited. On appeal by the trademark owner, the Intellectual Property High Court reversed the Patent Office s decision. 641 The High Court held that a mark can be understood to have more than one meaning or function. In the present case, the word DEEPSEA was not always understood to show generally that the watch was to be utilized in a deep-sea environment. Instead, it was intended to convey to consumers the idea of the deep sea or a mystic image of the sea, so they would identify the goods bearing the DEEPSEA mark as coming from Hukumoto Denki. In other words, the word DEEPSEA could both indicate the water resistance of the product and function as a mark to distinguish the designated goods from those of other manufacturers. This second function allowed the mark to avoid cancellation for non-use Trademark No , registered May 22, Article 50(1) provides: Where a registered trademark (including a trademark deemed identical from a common sense perspective with the registered trademark, including a trademark consisting of characters identical to the registered trademark but in different fonts, a trademark that is written in different characters, Hiragana characters, Katakana characters, or Latin alphabetic characters, from the registered trademark but identical with the registered trademark in terms of pronunciation and concept, and a trademark consisting of figures that are considered identical in terms of appearance to those of the registered trademark; hereinafter the same shall apply in this article) has not been used in Japan in connection with any of the designated goods and designated services for three consecutive years or longer by the holder of the trademark right, the exclusive right to use or the non-exclusive right to use, any person may file a request for a trial for rescission of such trademark registration in connection with the relevant designated goods or designated services Kabushiki Kaisha Fukumoto Denki v. Rolex SA, Case No. Heisei 21 (Gyo-Ke) 10141, 116 Hanrei Jiho 2066 (Intellectual Property High Court, Oct. 8, 2009) (unpublished).

280 Vol. 101 TMR 1077 It is arguable whether the use in a non-use cancellation action must be a trademark use. In this case, the High Court clearly held that the use should constitute use as a trademark. JORDAN I.B.1. Generic Raytheon Company, a U.S. company, filed an application for the trademark PAVEWAY covering laser-guided bomb kits in Class 13. Lockheed Martin Corporation, a U.S. company, filed an opposition against the registration on the basis that the PAVEWAY mark is a generic term and descriptive of Raytheon s goods. The Registrar accepted the notice of opposition, finding 642 that Lockheed Martin was able to prove that the word PAVEAY is known as the name of laser-guided bomb kits. On appeal, 643 the High Court of Justice affirmed the Registrar s decision, holding that the evidence submitted by Lockheed Martin confirmed that the word PAVEWAY is a generic term for the name of the products covered by Raytheon s application. I.D.1. Similarity of Marks Kraft Foods Holdings, Inc., a U.S. company, is the owner of the trademark DREAM WHIP, registered for dessert topping mix in Class Kraft filed an opposition against the registration by the Jordanian firm Al-Injazat Company for Projects of the trademark CREAM WHIP, covering whipped cream in Class The opposition was based on the ground that the marks were confusingly similar to the extent that there was a likelihood of public confusion. Plaintiff s mark Defendant s mark 642. Lockheed Martin Corp. v. Raytheon Co., Decision No. T/82848/12993 (Registrar of Trademarks, Apr. 18, 2010) (unpublished) Case No. 202/2010, Decision No. 32 (High Court of Justice, July 20, 2010) Registration No , granted Sept. 20, 1981, published in Official Gazette No. 76, Mar. 10, 1985, at Registration No , granted Oct. 16, 2005, published in Official Gazette No. 328, May 17, 2006, at 174.

281 1078 Vol. 101 TMR The Registrar accepted the notice of opposition. He held that Kraft was able to prove prior use and registration of its trademark in Jordan and other countries and that the marks were sufficiently similar that the registration of the opposed mark should be stopped in order to avoid public confusion. 646 The Health Aid Company, a U.K. company, is the owner of the trademark HEALTH AID, registered in several countries in Classes 3 and 5 since 1982, but not in Jordan (below, illustration at left). Bani Salameh & Abu Diab Co., a Jordanian company, filed for registration of the trademark HEALTH AID and Apple Logo on August 11, 2005 in Class 3 covering Cosmetics, shampoo, natural and herbal products (below, illustration at right). Plaintiff s mark Defendant s mark The Health Aid Company opposed registration of the trademark HEALTH AID and Apple Logo based on the identical nature of the terms HEALTH and AID to an extent that consumer confusion could be expected. The Registrar accepted the notice of opposition, finding 647 that The Health Aid Company was able to prove prior use of its mark online, and in view of the identical nature of the marks, holding that registration of the opposed trademark would result in public confusion. This decision is noteworthy in that it confirms that use of a mark online through a website is recognized as genuine use of a mark in Jordan. Hans Schwarzkopf GmbH & Co., a German company, is the owner of the trademark TAFT, which was registered in Jordan on May 28, 1959, covering perfumeries, means for body and beauty treatment, essential oils, soaps, washing and bleaching means, starch and starch products for cosmetic and laundry purposes in Class 3. Tars International Ltd., a Turkish company, filed for registration of the trademark HAFT on December 14, 2004, for perfumes; toilet water; eau de cologne; after shave lotions and oils; beauty and body care preparations; essential oils; soaps; cosmetics; anti-perspirants; deodorants for personal care; 646. Kraft Foods Holdings, Inc. v. Al-Injazat Company for Projects, Decision No. T/82306/27677 (Registrar of Trademarks, Sept. 14, 2009) (unpublished) The Health Aid Company v. Bani Salameh & Abu Diab Co., Decision No. T/81424/26203 (Registrar of Trademarks, Aug. 27, 2009) (not appealed and unpublished).

282 Vol. 101 TMR 1079 preparations for the hair, the scalp, the skin and the nails; shampoos, conditioners; hand and body lotions; shaving preparations; dyes for hair; body sprays; after shave preparations; pre-electric shaving preparations in Class 3. Plaintiff s mark Defendant s mark Hans Schwarzkopf filed a notice of opposition based on the confusing similarity of the HAFT mark to its TAFT mark, to the extent that consumer confusion could be expected to occur. The Registrar accepted the notice of opposition, finding 648 that Hans Schwarzkopf was able to prove prior use and registration of the TAFT mark in Jordan (as well as in other countries), and holding that the trademarks were confusingly similar so as to create consumer confusion. Rotana Hotel Management Corporation Ltd., a Guernsey company, owns a Jordanian registration for the trademark ROTANA (Arabic & English) HOTELS INNS SUITES & Device, which was registered on March 24, 1998, covering printed matter such as publications and periodicals, letterhead, playing cards, billing forms, schedules, brochures, calendars, stickers, advertisement boards, pens and pencils in Class 16 (below, illustration at left). Hussam Al-Zohlof Co., & Partner, a Jordanian company, filed for registration of the trademark Al-THURAYA & Device on April 24, 2005, covering household trading services in Class 42 (below, illustration at right). Plaintiff s mark Defendant s mark Rotana Hotel filed a notice of opposition based on the identical nature of the device element in Hussam Al-Zohlof s mark and on the basis of its prior common law rights in AL-THURAYA (the word element in Hussam Al-Zohlof s mark), which is the name of a ballroom at one of Rotana Hotel s hotels, claiming the use of which would be likely to cause consumer confusion and result in unfair competition Hans Schwarzkopf GmbH & Co. v. Tars International Ltd., Decision No. T/77908/23773 (Registrar of Trademarks, Sept. 3, 2009) (not appealed and unpublished).

283 1080 Vol. 101 TMR The Registrar accepted the notice of opposition as to the device element, stating that Rotana Hotel was able to prove prior use and registration of the identical device element in Jordan and in other countries but rejected the opposition as to the AL-THURAYA word element in the opposed trademark. The Registrar ordered an amendment of Hussam Al-Zohlof s mark, to remove the device element and the mark registered as a word mark only. 649 Consitex S.A., an Italian company, is the owner of the trademark Z ZEGNA, which was registered in Jordan on October 9, 2005, covering clothing, footwear, headgear, and all goods included in this class in Class 25 (below, illustration at left). Consitex also owns several other trademarks that contain the word ZEGNA in Class 25 and in other related classes. Jordan Clothing Company, a Jordanian company, filed for registration of the trademark XENA on September 20, 2006, in Class 25 covering clothes (below, illustration at right). Plaintiff s mark Defendant s mark Consitex opposed registration of the trademark XENA based on the confusing similarity to its trademark Z ZEGNA to the extent that consumer confusion could be expected to occur. The Registrar accepted the notice of opposition, finding 650 that Consitex was able to prove that its trademark Z ZEGNA is a famous trademark and is well-known and used by Jordanian consumers and holding the trademark XENA to be confusingly similar so as to create consumer confusion. McDonald s Corporation, a U.S. company, is the owner of the trademark McCAFE, which was registered in Jordan on October 9, 2005, covering goods in Classes 29, 30 and 32. McDonald s also owns numerous other trademarks containing the prefix Mc in several classes. Future Enterprises Ltd., a Singaporean company, filed for registration of the trademark MACCOFFEE & Device on March 6, 2006, covering coffee, tea coca based beverages, coffee-based 649. Rotana Hotel Management Corporation Ltd. v. Hussam Al-Zohlof Co., & Partner, Decision No. T/80922/27944 (Registrar of Trademarks, Sept. 16, 2009) (not appealed and unpublished) Consitex S.A. v. Jordan Clothing Company, Decision No. T/88826/37112 (Registrar of Trademarks, Dec. 7, 2009) (not appealed and unpublished).

284 Vol. 101 TMR 1081 beverages, artificial coffee, cappuccino cereal-based beverages, icecream, prepared meals; confectionery, namely candies, sweets, lollipops, liquorices, lozenges, pastilles, fruit candies, peppermint candy, caramel candy; cakes, bread, biscuits, jellies (confectionery) and puddings; pastries; crisps made of cereal, snack food products made from processed flour preparations and potato flour; cookies; corn snacks (other than confectionery); cereal-based food bars; rice crackers; muesli bars; wafers in Class 30 (below, illustration at right). McDonald s filed a notice of opposition against the registration of MACCOFFEE based on confusing similarity to its trademark McCAFE to the extent that consumer confusion could be expected to occur. The Registrar accepted the notice of opposition, finding that McDonald s was able to prove prior use and registration of its trademark in Jordan and in other countries and finding the McCAFE mark to be famous. The Registrar found the trademarks to be confusingly similar, phonetically and visually, so as to create consumer confusion and that registration of MACCOFFEE would result in unfair competition. The Concentrate Manufacturing Company, an Irish company (dba Seven-Up International, a Bermuda company) owns a Jordanian registration for the trademark SEVEN UP (English & Arabic), which was registered in 1958, covering goods in Class 32. The Concentrate Manufacturing Company is also the owner of several other trademarks containing 7UP in Class 32. Gulf Food Products Co., a Jordanian company, filed for registration of the trademark SUN UP (Stylized) (Arabic & English) on April 4, 2006, also covering goods in Class 32. The Concentrate Manufacturing Company filed a notice of opposition concerning registration of the trademark SUN UP and based on confusing similarity of the mark to its SEVEN UP and 7UP marks to the extent that consumer confusion could be expected to occur. The Registrar accepted the notice of opposition, finding 651 that The Concentrate Manufacturing Company was able to prove prior 651. The Concentrate Manufacturing Company v. Gulf Food Products Co., Decision No. T/84782/38208 (Registrar of Trademarks, Dec. 16, 2009) (not appealed and unpublished).

285 1082 Vol. 101 TMR use and registration of its trademarks in Jordan and in other countries and finding the trademarks to be famous. The Registrar added that the trademarks were confusingly similar, phonetically and visually, and that the registration of the opposed trademark would create consumer confusion and result in unfair competition. MIP Metro Group Intellectual Property GmbH & Co. KG., a German company, had been the owner of the trademark METRO, registered in Classes 5, 16, 25, 29, 31, 32, 33, 35, 36, 38, and 39 since March 22, Modern Arabian Business Corp., a Jordanian company, filed a trademark application for METROBEAM, covering Class 38 services on May 30, Plaintiff s mark Defendant s mark MIP Metro Group opposed registration of the trademark METROBEAM on the basis that the trademarks at issue were confusingly similar to the extent that consumer confusion could be expected. The Registrar accepted the notice of opposition, finding 652 that MIP Metro Group was able to prove prior use and registration of the trademark METRO and that the marks were similar to the extent that public confusion was likely. On appeal, 653 the High Court of Justice reversed the Registrar s decision, holding that the trademarks were not confusingly similar when viewed as a whole, and stating that the additional elements in the defendant s mark METROBEAM mark distinguished it from METRO. Henkel KGaA, a German company, is the owner of the trademark PATTEX, registered since 2004 in Class 16 for adhesives for household, stationery and do-it-yourself purposes. Henkel also owns several trademarks containing PATTEX registered in Classes 1 and 16. Anchor Allied Factory Ltd., a UAE company, filed a trademark application for PASTE-IT on June 13, 2007, covering goods in Class 1 (below, illustration at right) MIP Metro Group Intellectual Property GmbH & Co. KG. v. Modern Arabian Business Corp., Decision No. T/86372/29031 (Registrar of Trademarks, Oct. 1, 2009) (appealed and unpublished) Case No. 432/2009, Decision No. 21 (High Court of Justice, Jan. 14, 2010).

286 Vol. 101 TMR 1083 Plaintiff s mark Defendant s mark Henkel opposed registration of the trademark PASTE-IT on the basis that the marks at issue were confusingly similar to the extent that public confusion could be expected to occur. In addition, Henkel claimed that the defendant Anchor Allied Factory was using the same trade dress that it was using. The Registrar accepted the notice of opposition, finding 654 that Henkel was able to prove its PATTEX mark was famous and wellknown among Jordanian consumers through use. He held the marks to be confusingly similar, which would lead to public confusion. This decision is noteworthy in that the Registrar also found the unregistered trade dress of Anchor Allied Factory to be similar to that of Henkel s. Clorox Co., a U.S. company, is the owner of the trademark CLOROX, coined in 1913 and registered in Jordan at least as early as 1973, covering goods in Class 3. New Chemicals Co.-Kima, a Jordanian company, filed an application in 2006 to register the trademark CLOR KIMA, covering liquid dish detergents, cleaning gel, window cleaner, toilet cleaner, toilet soap, oven cleaner, bleaching cleaner, furniture and surface polish agent in Class 3 (below, illustration at right). Plaintiff s mark Defendant s mark Clorox opposed registration of the mark based on the confusing similarity between the marks at issue to an extent that public confusion was expected to occur. The Registrar accepted the notice of opposition, finding 655 that Clorox was able to prove its CLOROX mark to be famous and well known among Jordanian consumers through use of the mark in 654. Henkel KGaA v. Anchor Allied Factory Ltd., Decision No. T/93401/1061 (Registrar of Trademarks, Jan. 10, 2010) (not appealed and unpublished) Clorox Co. v. New Chemicals Co.-Kima, Decision No. T/87674/38608 (Registrar of Trademarks, Dec. 21, 2009) (appealed and unpublished).

287 1084 Vol. 101 TMR Jordan. He found the marks to be sufficiently similar so as to create public confusion and amount to unfair competition. On appeal, 656 the High Court of Justice reversed the Registrar s decision, finding that when viewed as a whole, the marks were not confusingly similar to the extent that public confusion could be expected to occur. Ferrero S.p.A., an Italian company, is the owner of the trademark KINDER SURPRISE registered as early as 1988 for goods in Class 30 (below, illustration at left and center). Ulker Gida Sanayi ve Ticaret A.S., a Turkish company, registered the trademark ULKER SURPRIZ in 2001, covering chocolates, coffee and coffee substances, cocoa, sugar, flour preparation made from cereals, bread biscuits, and cakes, pastry and confectionery in Class 30 (below, illustration at right). Plaintiff s marks Defendant s mark Ferrero filed a cancellation action against the trademark ULKER SURPRIZ based on confusing similarity to the extent that public confusion was expected to occur. The Registrar accepted the notice of cancellation, finding 657 that Ferrero was able to prove prior use and registration of the trademark KINDER SURPRISE and that the trademarks at issue were similar to the extent that public confusion could occur. The decision is noteworthy in that the Registrar found the marks to be confusingly similar despite the fact that the distinctive element in Ulker Gida s trademark was its company name. Dimensione Danza Studio S.R.L., an Italian company, filed an application in 2007 for the trademark DIMENSIONE DANZA, covering goods in Class 25. The application was rejected as a result of the existence of a prior trademark DANZA, registered in 2003, covering trousers, shirts, jackets, sweaters, pullovers, tee-shirts, suits, sport suits and shoes, in the name of Ahmad Alghoul Corp., a Jordanian company Case No. 21/2010, Decision No. 21 (High Court of Justice, Mar. 25, 2010) Ferrero S.p.A. v. Ulker Gida Sanayi ve Ticaret A.S., No. T/63322/18013 (Registrar of Trademarks, June 8, 2010) (not appealed and unpublished).

288 Vol. 101 TMR 1085 Upon receipt of the PTO s decision to reject its application, Dimensione Danza Studio initiated a cancellation action based on its prior rights in the trademark DIMENSIONE DANZA. The Registrar accepted the notice of cancellation, finding 658 that Dimensione Danza Studio was able to prove prior use and registration of its trademark in other countries and that the mark was famous. The Registrar held that the marks at issue were confusingly similar both phonetically and visually to the extent that registration would create public confusion and result in unfair competition. Société des Produits Nestlé S.A., a Swiss company, is the owner of the trademark MAGGI registered as early as 1960, and covering goods in Classes 29, 30, and 31. Alpha Trading & Shipping Agencies Ltd, a Saudi Arabian company, filed to register the trademark MAGIC (in both Arabic and English) for noodles, spaghetti, pasta and macaroni in Class 29. Plaintiff s mark Defendant s mark Nestlé opposed registration of the trademark MAGIC based on the confusing similarity between the marks that would likely lead to public confusion and be the basis of unfair competition. The Registrar accepted the notice of opposition, finding 659 that Nestlé was able to prove prior use and registration of the trademark MAGGI in other countries and that the mark was famous. The Registrar held that the marks were confusingly similar both phonetically and visually to the extent that registration of the mark would create public confusion and result in unfair competition. I.D.2. Similarity of Goods or Services SMS Demag AG, a Dutch company, is the owner of the trademark SMS, registered in 1982 for rolling, pressing, forging, 658. Dimensione Danza Studio S.R.L. v. Ahmad Alghoul Corp. for Clothes, Decision No. T/69499/18033 (Registrar of Trademarks, June 8, 2010) (not appealed and unpublished) Société des Produits Nestlé S.A. v. Alpha Trading & Shipping Agencies Ltd, Decision No. T/92897/24338 (Registrar of Trademarks, Aug. 10, 2010) (not appealed and unpublished).

289 1086 Vol. 101 TMR and casting plants for the molding of steel, nonferrous metals, plastics materials, organically based materials and for manufacturing rolled and pressed parts of metals and plastics materials, pumps, hydraulic drive machines, hydraulic and mechanical energy transmitting devices, machines and apparatus for removing, preparing, purifying and processing of accumulated by-products and waste products, metallurgical machines, casting machines, conveying and lifting apparatus in Class 7 (below, illustration at left). Saroof International Co., a Jordanian company, filed to register SMS (in Arabic and English) in covering all kind of software and hardware no matter of recording and transmission apparatus, any software recorded on magnetic data carriers or recording discs or downloaded from computer network in Class 9 (below, illustration at right). Plaintiff s mark Defendant s mark SMS Demag opposed registration of the mark based on confusing similarity between the marks to an extent that public confusion was expected to occur despite registration covering different classes. The Registrar rejected the notice of opposition, finding 660 that the marks were not confusingly similar and that consumer confusion was not expected because of the dissimilarity of the goods covered by each mark. I.D.3. Conflict Between Trademarks and Corporate Names The plaintiff in this case filed a cancellation action against the registration of the trademark MAWAL LEBANESE RESTAURANT based on non-use of the mark and on the basis that the mark was identical to the plaintiff s trade name for Mawal Restaurant, registered as a trade name in The defendant s trademark, MAWAL LEBANESE RESTAURANT, covered services for providing food and non-alcoholic drink; temporary accommodation, restaurants, cafeterias, catering services; provision of food, namely Lebanese food and non-alcoholic drinks; hotel, motel and accommodation services in Class SMS Demag AG v. Saroof International Co., Decision No. T/92524/23656 (Registrar of Trademarks, Aug. 3, 2010) (not appealed and unpublished).

290 Vol. 101 TMR The Registrar accepted the notice of cancellation, finding 661 that the plaintiff was able to prove that the mark was not being used in Jordan and the defendant was not able to submit proof of use. I.F. Famous and Well-Known Marks Colgate-Palmolive Co., a U.S. company, is the owner of the trademark PALMOLIVE, registered in Jordan since 1942, covering goods in Class 3. Jordan Premium for Investment & Trading L.L.C., a Jordanian company, filed to register the trademark PALMOLIEN, covering oils in Class 29 and goods in Classes 30 and 32. Plaintiff s mark Defendant s mark Colgate-Palmolive opposed registration of the mark in all three classes based on the confusing similarity between the marks to the extent that public confusion was expected to occur. The Registrar accepted the notice of opposition as to Class 29, finding 662 that Colgate-Palmolive was able to prove prior use and registration of PALMOLIVE in Jordan and other countries and that the mark was famous. The Registrar held the marks to be confusingly similar both phonetically and visually to the extent that registration would create public confusion and result in unfair competition. I.J. Coexistence Agreements Industrial Commercial and Agricultural Co., Ltd., a Jordanian company, registered the trademark IDEAL (English & Arabic) on October 15, 1980, covering toilet soap, liquid soap, soap, paste soap, detergent soap, bleaching, tooth paste and shaving paste in Class Jamal Anchasi & Partners Co. v. Mawal Hotels & Restaurants Management LLC, Decision No. T/75640/21893 (Registrar of Trademarks, July 19, 2010) (not appealed and unpublished) Colgate-Palmolive Co. v. Jordan Premium for Investment & Trading L.L.C., Decision No. T/92734/22838 (Registrar of Trademarks, July 27, 2010) (unpublished).

291 1088 Vol. 101 TMR Societe Bechara Baroodi S.A.R.L, a Lebanese company, filed for registration of the trademark IDEAL (Arabic & English) on December 21, 2004, covering the class heading in Class 3. Societe Bechara Baroodi S.A.R.L is also the owner of three prior Jordanian registrations for the trademark IDEAL, the earliest of which was filed on January 11, 1973, and all three covering goods in Class 3. Plaintiff s mark Defendant s marks Industrial Commercial and Agricultural Co. filed a notice of opposition against the registration of the trademark IDEAL based on the identical nature of the mark and goods to the extent that consumer confusion could be expected to occur. The Registrar rejected the notice of opposition, finding 663 that Societe Bechara Baroodi was able to prove prior use and registration of the trademark IDEAL (Arabic & English) in Jordan and finding that Industrial Commercial and Agricultural Co. registered and used the trademark IDEAL only after Societe Bechara Baroodi registered and used the same mark, noting that concurrent use of the identical marks took place absent confusion in the marketplace. Accordingly, because the IDEAL marks coexisted in Jordan, the Registrar dismissed the opposition and approved registration of the opposed trademark. On appeal, 664 the High Court of Justice reversed the Registrar s decision, finding that consumer confusion was likely in view of the similar goods claimed in the opposed trademark to those covered by Industrial Commercial and Agricultural Co., Ltd. s registration and that the concurrent use of the IDEAL mark by both parties would lead to consumer confusion and result in unfair competition. The High Court denied registration of the opposed trademark in order to avoid consumer confusion and prevent unfair competition. This decision is noteworthy in that it concerns the coexistence of identical trademarks. II.C. Registrability Al Wefag Factory, a Saudi Arabian company, is the owner of the trademark DANDORMAH (Arabic & English), registered in 663. Industrial Commercial and Agricultural Co., Ltd. v. Societe Bechara Baroodi S.A.R.L, Decision No. T/78232/19294 (Registrar of Trademarks, June 18, 2009) (appealed and unpublished) Case No. 412/2009, Decision No. 24 (High Court of Justice, Dec. 23, 2009).

292 Vol. 101 TMR 1089 several countries in Classes 30 and 32 since 1996, but not in Jordan (below, illustration at left). Myasser Abdul Rahman & Partner Co., National Factory for Juice, a Jordanian company, filed for registration of the trademark DANDORMAH in Arabic on June 12, 2000, covering fruit Juices in Class 32. Al Wefag Factory subsequently filed for registration of its trademark DANDORMAH (Arabic & English) in Class 32, which was rejected on the basis of Myasser Abdul Rahman s registration for the DANDORMAH in Arabic mark. Al Wefag Factory filed for cancellation of Myasser Abdul Rahman s registration. Plaintiff s mark Defendant s mark The Registrar accepted the notice of cancellation, finding 665 that Al Wefag Factory was able to prove prior use and registration of its trademark in Jordan and in other countries. The Registrar found the trademarks to be identical and found that the registration of Myasser Abdul Rahman s trademark would create consumer confusion and would result in unfair competition. On appeal, the High Court of Justice 666 held that the trademarks were not similar because Al Wefag Factory s mark was in English and Arabic whereas Myasser Abdul Rahman s mark was in Arabic only. KOSOVO III.A.4. Unfair, Unauthorized, or Improper Use In Renault Nissan Hrvatska v. Renault Center Muqiqi, 667 the Prishtina District Commercial Court held that the plaintiff, Renault Nissan Hrvatska d.o.o., an authorized representative of Renault s.a.s. France for the territories of Croatia, Bosnia and Herzegovina, Montenegro, Albania, and Kosovo, had standing to sue a third party that used without authorization the mark RENAULT in the territory of Kosovo Al Wefag Factory, v. Myasser Abdul Rahman & Partner Co., National Factory for Juice, Decision No. T/58096/25909 (Registrar of Trademarks, Aug. 27, 2009) (appealed and unpublished) Case No. 449/2009, Decision No. 20 (High Court of Justice, Jan. 14, 2010) Renault Nissan Hrvatska v. Renault Center Muqiqi (I.C. No. 356/2009 of Jan. 12, 2010).

293 1090 Vol. 101 TMR Responding to the plaintiff s complaint, the defendant, Renault Center Muqiqi, a Kosovo company whose main activities included the sale of vehicle parts and accessories, argued that Renault Nissan Hrvatska lacked standing to sue for trademark infringement, claiming that it (the defendant) had the right to use the mark RENAULT, as it conducted business directly with Renault s.a.s. France. In the present case, the plaintiff was concerned only with the unauthorized use of the mark RENAULT by the defendant. The plaintiff did not challenge the lawful business relationship established between the defendant and the parent company, Renault s.a.s. France. The plaintiff claimed that it had the right to register the mark RENAULT in its name in all countries where it was an authorized representative of Renault s.a.s. France, including Kosovo, as well as the right to undertake all actions to enforce such registration against third parties. As a result, the plaintiff applied for the registration of the mark RENAULT with the Kosovo Industrial Property Office (IPO). After considering the evidence, the court held that the plaintiff had standing to sue in the territory of Kosovo, as Renault s.a.s. France assigned to the plaintiff all rights to enforce Renault s trademarks in this territory. The fact that the defendant had established a business relationship with Renault s.a.s. France did not change the court s opinion. In its analysis, the court concluded that Renault s.a.s France did not assign to the defendant the right to use the mark RENAULT in the course of trade. Instead, Renault s.a.s. France only executed a contract for sale of vehicle parts and accessories with the defendant. Based on these findings, the Prishtina District Commercial Court found that the defendant had engaged in unauthorized use of the mark RENAULT, and ordered the defendant to cease using the logo and the word mark RENAULT within seven days of receipt of the decision. III.A.9. Infringement of Unregistered Trademarks In 2010, the plaintiff, Jaffa, a Serbian snack company, applied for re-registration 668 of the mark JAFFA CAKES logo 669 with the Kosovo IPO. Euro Food, the defendant, is a local Kosovo company in the business of manufacturing snack foods such as cocoa, chocolate, biscuits, condiments, and seasonings, including a 668. Kosovo used to be an autonomous province of the Former Soviet Socialist Federative Republic of Yugoslavia. Shortly before it declared independence in 2008, Kosovo established its own IPO in November Instead of filing new applications, it was decided that all Serbian trademark registrations could be re-registered JAFFA CAKES logo; RS Reg. No , RKS App. No. 4436, RKS App. Date: 10/16/2008, RKS Reg. No. 987.

294 Vol. 101 TMR 1091 product, with an identical name, jaffa cakes, without a trademark registration. The plaintiff filed suit (Jaffa v. Euro Food 670 ) against the defendant to prevent the defendant from using the identical trademark in Kosovo. The defendant argued that the plaintiff could not base its claim on the registration of the JAFFA CAKES logo because the registration was not yet published by the Kosovo IPO. The defendant argued that the rights provided by Article 13 of the Law on Trademarks 671 could not be exercised unless the conditions under Article of the Law were fulfilled. In addition, the defendant asserted that the two marks were not identical because the letters, the package, the colors, and all other elements were different. The court ruled that although the trademark law in Kosovo states that while in application stage one cannot file suit before the trademark is published in the Official Bulletin, a different rule applies for re-registrations. In such cases, publication is not necessary. The court held that the purpose of the law is to provide owners of trademarks with the ability to enforce their rights in accordance with the international conventions and the European Union legislation and practices. The court ruled that the publication of the registration of a mark is of no relevance when the owner of the mark owns a trademark registration with the European Union 670. Akcionarsko Drustvo Jaffa Fabrika Biskvita, Crvenka, Serbia v. Euro Food, Export- Import, Prizren, Kosovo (II.C. No. 18/2010 of May 20, 2010) Law on Trade Marks No. 02/L-54, adopted on Feb. 23, 2006, and promulgated by SRSG on June 28, 2006; Article 13 of the Law on Trademarks provides: The proprietor of a registered trademark shall have the exclusive right in relation to the goods or services covered by the registration to: a. use the trademark; b. authorize another to use the trademark; c. consent to the use of the trademark; or d. obtain judicial remedy for a violation of the trademark described in Article Violation of a registered trademark, as used in the present law, shall refer to any violation of the rights of the trademark proprietor The rights of the proprietor of a registered trademark shall have effect from the date of registration of the trademark, as determined under Article Notwithstanding Article 13.3: a. no violation proceedings may be initiated before the date of publication of the registration of the trademark, and b. no offense shall be regarded as committed under Article 82 by anything done before that date Article 41.5 of the Law provides that the registration procedure shall be regarded as completed on the date of publication under Article 41.4, and that the date shall be entered in the Trademark Register.

295 1092 Vol. 101 TMR countries, stressing that the same applies to the re-registration of trademarks with the Kosovo IPO. The court made a reference to the international registrations 673 owned by the plaintiff. When weighing the similarities and differences of the two product packages, the court emphasized the importance of the words jaffa cakes used by both companies. It ruled that the owner of the mark was under no obligation to provide evidence that there is actual confusion among consumers on account of the existence of two identical marks. It is sufficient to prove the likelihood of confusion, which existed because of the use of identical word marks. Based on these findings, the court ordered the defendant to remove the jaffa cakes products from the market and to cease producing products that would infringe the plaintiff s JAFFA CAKES logo. LATVIA I.F. Famous and Well-Known Marks The local beer producer Kimmels Riga brought a civil action against another local beer manufacturer Bruveris, claiming that the defendant s mark RIGAS ALUS GAISAIS & Design (below illustration, at right) was confusingly similar to the plaintiff s wellknown trademark KIMMEL RIGAS ORIGINALAIS & Design 674 (below illustration, at left) for goods in Class 32, because of visual and conceptual similarities. In turn, Bruveris brought a counterclaim requesting the cancellation of the trademark KIMMEL RIGAS ORIGINALAIS because of non-use. Plaintiff s trademark Defendant s label 673. International Registration Nos and Registration No. M

296 Vol. 101 TMR 1093 The Riga Regional Court decided that according to the provisions of the law 675 and World Intellectual Property Organization (WIPO) guidelines on the protection of well-known marks, 676 the plaintiff s trademark did not meet all the necessary criteria to be recognized as a well-known trademark, as a result of insufficient evidence being submitted by the plaintiff. 677 The evidence submitted by the plaintiff referred mainly to beer under the name Riga s Originalais, which was produced in Soviet times (before 1991), and there was no evidence that it was produced by the plaintiff. The evidence was therefore dismissed by the court as inapplicable to the particular case. The other evidence submitted by the plaintiff was, in the court s opinion, not sufficient to prove the well-known status of the trademark KIMMEL RIGAS ORIGINALAIS, especially because the plaintiff had stopped active marketing of its beer in On the other hand, the court rejected the defendant s claim to cancel the registration of the trademark KIMMEL RIGAS ORIGINALAIS & Design on the basis of non-use for a period of five successive years 678 because the plaintiff proved use of the trademark through The court set forth the main factors to be evaluated in order to establish that a trademark is well known and that such criteria can be used for future similar cases. Further, the court found it significant that the trademark KIMMEL RIGAS ORIGINALAIS was not recognized as a well-known mark in Latvia, because many local beer producers were using the denominations Riga/Riga s and Originalais in marking their beer, and these words themselves were descriptive and could not be registered as trademarks. The court also ruled that a small number of goods marked with the relevant trademark, even if the label is slightly different from the registered trademark, is sufficient to prove the use of the trademark. III.A.3.c. Customs Actions The plaintiff s trademark, a Latvian national registration of a graphic trademark, 679 was registered for goods in Class 25 (footwear for sports and recreation) and consisted of an image of footwear with three stripes on the side (below illustration, at left) Article 8 of Latvian Trademark Law (Law on Trademarks and Indications of Geographical Origin, June 16, 1999) WIPO Joint Recommendation Concerning Provisions on the Protection of Well- Known Marks, JSC Kimmels Riga v. Bruveris LLC, Case No. C-1402/2, Judgment of Collegium of Civil Cases (Riga Regional Court, June 8, 2010) Article 32.1 of Latvian Trademark Law (Law on Trademarks and Indications of Geographical Origin, June 16, 1999) Registration No. M

297 1094 Vol. 101 TMR The defendant s goods were sports footwear with four parallel stripes on both sides of the footwear (pictured below, at right), with a design similar to the design represented in the plaintiff s trademark. The famous sportswear manufacturer Adidas AG brought an infringement action against the Latvian company Baltic Trans LLC, the importer of clothes and footwear, basing it on likelihood of confusion between the plaintiff s registered trademark and the footwear imported by the defendant, claiming that consumers would be misled and thus the good reputation of the plaintiff s well-known trademark would suffer detriment, causing material and non-material damages to the plaintiff. 680 Plaintiff s mark Defendant s goods The Customs Office of the State Revenue Service of the Republic of Latvia imposed a fine on Baltic Trans LLC for importing counterfeit goods. 681 The defendant appealed the Customs Office s decision in the Administrative Court, which stated that this was a civil dispute, and therefore had to be resolved in a civil court in accordance with the corresponding law, stopping the administrative proceedings. The plaintiff brought a civil lawsuit to the Riga Regional Court, which decided in favor of the plaintiff, holding that there was a likelihood of confusion between the registered trademark and the product and obliging the defendant to destroy the goods. The defendant appealed the first instance decision. The Court of Appeal found that the plaintiff s trademark was a well-known trademark. Visual comparison of the goods imported by the defendant with the plaintiff s trademark showed that the design of the defendant s footwear was similar to the footwear design represented in the trademark; the same parallel stripes were used, but instead of three stripes, four stripes were used; however, this did not change the overall impression. In addition, the stripes were placed in the same position as those in the plaintiff s trademark, and in both cases the parallel stripes stood out on the contrasting background Article 4.6.2, 4.7, 4.8, 8.4, 8.5, 27, 28 and 28.1 of Latvian Trademark Law (Law on Trademarks and Indications of Geographical Origin, June 16, 1999) Part 3 of Article of the Code of Administrative Violations.

298 Vol. 101 TMR 1095 Declining the defendant s objections that the trademarks were different enough, the judgment indicated that in the case of a wellknown trademark, there is no need for the trademarks to be confusingly similar, as the only necessary condition is for the trademarks to be similar. Taking into account the registered trademark s good reputation and the fact that the trademark was well known, the court added that when establishing whether there is infringement of exclusive rights, the confusing similarities need not be evaluated; as there is a higher degree of protection for wellknown trademarks, it is enough to state the existence of a likelihood of confusion between the contested design and the trademark among relevant consumers and that the illegal use of the registered well-known trademark would create unfair advantages or damages to the distinctiveness or reputation of the said trademark. 682 The court also found that the defendant s argument that he was not responsible for the illegal use of the trademark because he was only the carrier of the goods and he did not use this trademark in his business could not serve as the basis for the defendant s release from the responsibility for the illegal use of the trademark because, in this case, when applying for the transport of the freight with the counterfeit goods, the defendant acted in its own name, independently from the owner of the goods, and should be considered to be the one responsible for the infringement of the intellectual property rights. Thus the Court of Appeal upheld the first instance court s decision. 683 The defendant has filed a cassation recourse, so the case is not yet finished. The case is extremely important because it held that Adidas three-stripes trademark is well known in Latvia, it confirmed the scope of protection for well-known marks, and it established that not only the distributor of counterfeit goods is responsible for trademark infringement, but the importer is responsible as well. LITHUANIA I.B.1. Generic OJSC Farmak is the owner of the trademarks VALIDOL and BAЛИДОЛ [VALIDOL in Cyrillic] VALIDOLUM (see below), both containing the distinctive word VALIDOL and both registered for goods in Classes 5 and Marca Mode v. Adidas AG, Case No. C-425/98 (ECJ, June 22, 2000) Adidas AG v. Baltic Trans LLC, Case No. PAC-0081 (C ), Chamber of Civil Cases (Supreme Court of the Republic of Latvia, May 5, 2010).

299 1096 Vol. 101 TMR Liuks Ltd. and Corpus Medica Ltd. filed a claim for invalidation of the trademarks on the ground that they had become generic. 684 OJSC Farmak filed a counterclaim demanding that the plaintiffs cease using its trademarks. The Vilnius County Court dismissed the counterclaim and satisfied the plaintiffs claim. It held that the word Validol had become customary in the current language and in bona fide and established trade practice. 685 Evidence of the use by numerous producers of medicine in the former Soviet Union of the word Validol for marking anodyne, and the wide usage of the word Validol by professionals and academicians to describe anodyne on the Internet, persuaded the court to recognize the marks as generic and, consequently, their registrations as invalid. The Appeal Court of Lithuania upheld the position of the Vilnius County Court. 686 It noted that pharmaceuticals known as Validol had been widely known for a hundred years. As a result, owing to its wide usage, Validol had become a customary word, and consumers now treated it as a synonym for anodyne. In addition, the Appeal Court found that consumers did not perceive VALIDOL as a trademark belonging to the defendant. On further appeal by OJSC Farmak, the Supreme Court of Lithuania upheld the main arguments presented by the Vilnius County Court and the Appeal Court and significantly elaborated on a mark s becoming generic. 687 First, the Supreme Court noted that the practice of European Court of Justice (ECJ), established in Canon, 688 should be followed when applying absolute grounds for invalidation of a mark, that is, 684. Article 6 of the Lithuanian Trademark Law (Law on Trademarks No. VIII-1981, Oct. 10, 2000, as amended) provides, in pertinent part:... [T]he registration of a registered mark shall be declared invalid if:... 2) the [mark] is devoid of any distinctive character; [or] 3) it has become customary in the current language or in the bona fide and established practices of the trade Case No /2008 (Vilnius County Court, Sept. 8, 2008) Case No. 2A-285/2009 (Appeal Court of Lithuania, Sept. 22, 2009) Liuks Ltd. & Corpus Medica Ltd. v. OJSC Farmak, Case No. 3K-3-105/2010 (Supreme Court of Lithuania, Mar. 2, 2010) Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc., Case C-39/97 (ECJ, Sept. 29, 1988).

300 Vol. 101 TMR 1097 a mark that does not fulfill the identification function may not be awarded trademark protection. Second, the practice of the ECJ established in Libertel 689 and Koninkljike KPN Nederland 690 was highlighted. The Court stated that in evaluating whether a trademark has become generic, it must be ascertained whether the concerned public distinguishes the particular goods of the particular producer under the trademark. The survey of public opinion in this case demonstrated that the vast majority of public perceives VALIDOL as a generic word rather than as the defendant s distinctive trademark. Third, the Court, citing the ECJ s judgment in BioID, 691 noted that the interest of third parties must be considered in order to ensure that some marks remain free and available for use by others. In addition, it observed that the word Validol was used in the figurative portions of other trademarks registered in Lithuania, and consequently it could not be distinctive itself. OJSC Farmak did not present any evidence of the current distinctiveness of the VALIDOL mark. It also failed to prove that the mark had become distinctive through longstanding use. The Court upheld the previous decisions in relation to pharmaceutical preparations in Class 5, but it returned the case to the Vilnius County Court in relation to the goods in Class 30. This case is important because it introduces guidance on what evidence is relevant in evaluating the generic nature of a mark. I.E. Bad Faith Rolex SA, the Swiss watch manufacturer, brought an invalidity action against the Indonesian tobacco manufacturer P.T. Permona for registering the trademark ROLEX with the State Patent Bureau of Lithuania in bad faith. 692 The plaintiff s trademark ROLEX, consisting of the word ROLEX and a crown over it (see below), was registered in Classes 9 and 14. The defendant s trademark ROLEX was registered in Class Libertel Groep BV v. Benelux-Merkenbureau, Case C-104/01 (ECJ, May 6, 2003) Koninkljike KPN Nederland NV v. Benelux-Merkenbureau, Case C-363/99 (ECJ, Feb. 12, 2004) BioID AG v. OHIM, Case C-37/03 (ECJ, Sept. 15, 2005) Article 7, Section 3 of the Trademark Law provides that registration of a mark may be declared invalid where it becomes evident that the application for the registration of the mark was filed in bad faith by the applicant.

301 1098 Vol. 101 TMR The Vilnius County Court dismissed the action, 693 holding that Rolex failed to prove that Permona had acted in bad faith. The court found that when registering its trademark, the defendant was aware of the plaintiff s trademark; however, it held that this fact alone was not sufficient for a finding of bad faith. The Appeal Court of Lithuania upheld the position of the Vilnius County Court. 694 It stated additionally that the lack of use of Permona s trademark was not sufficient for it to consider that Permona had acted in bad faith as well. The Appeal Court noted that the plaintiff s trademark had a reputation only among a certain narrow group of consumers, rather than among all consumers in Lithuania. It further noted that Rolex failed to prove that Permona intended to take advantage of the reputation of the ROLEX trademark and impair its distinctive character. The Supreme Court of Lithuania upheld the main arguments presented by the Vilnius County Court and the Appeal Court and significantly elaborated on the application of bad-faith provisions. First, the Court noted that in applying those provisions the practice of the ECJ established in Lindt & Sprüngli 695 should be followed that is, all the relevant factors that pertained at the time the defendant s trademark was registered should be taken into account, in particular, (1) the defendant s awareness of the plaintiff s trademark, (2) the defendant s intention to prevent the plaintiff from continuing to use its trademark, and (3) the degree of legal protection enjoyed by both marks. In respect to the second criterion, the Court explained that bad faith could be determined if lack of use of the defendant s trademark were accompanied by, for instance, the defendant s intention to prevent the plaintiff from continuing to use its trademark. However, the Court indicated that in this case the defendant did not perform any unlawful acts against the plaintiff s trademark. As to the third criterion, the Court noted that the reputation of the plaintiff s trademark may be relevant in determining the degree of legal protection enjoyed by it. However, it concluded that here there was not even a hypothetical opportunity for the defendant to harm or take advantage of the reputation of the plaintiff s trademark. Second, the Court noted that, contrary to the fact pattern in Lindt & Sprüngli, the trademarks in the ROLEX case were used for dissimilar goods. It reiterated that a bad faith claim is an ultima ratio means for protecting trademark rights, and stressed that the ultima ratio nature of such a claim should be particularly taken into account in cases where trademarks are used in 693. Case No /2008 (Vilnius County Court, Dec. 10, 2008) Case No. 2A-378/2009 (Appeal Court of Lithuania, May 26, 2009) Chocoladefabriken Lindt & Sprüngli AG v. Franz Hauswirth GmbH, Case C-529/07 (ECJ, June 11, 2009).

302 Vol. 101 TMR 1099 connection with dissimilar goods and services. In this respect the Court noted that deviation from the principle of specificity should be the exception rather than the rule. 696 This decision is important because it introduces guidance on determining bad faith in trademark registrations in Lithuania. In particular, it provides guidance for a finding of bad faith in cases where trademarks are used for dissimilar goods and services. NEW ZEALAND II.C.1.b. Personal Names The applicant, Higgins Coatings Pty Limited (HCPL), sought registration for the word mark HIGGINS COATINGS and a HIGGINS device for painting services. The opponent, Higgins Group Holdings Limited (HGHL), is one of New Zealand s largest roading contractors. It has used the trade mark HIGGINS and a HIGGINS device for roading materials and road and infrastructure building services. Applicant s mark and Opponent s marks HGHL opposed HCPL s applications on the basis that use of HCPL s trade marks would be likely to deceive or confuse because of HGHL s reputation in the HIGGINS trade mark. HGHL also argued that the trade mark HIGGINS was not distinctive. The Assistant Commissioner decided that the use of a HIGGINS device and the words HIGGINS COATINGS by the applicant was likely to cause confusion with the opponent s HIGGINS trade marks because the services were complementary. 697 The High Court of New Zealand refused to register the marks on the basis that the HIGGINS trade mark is merely a common family name and not distinctive. In doing so, the High Court 696. Rolex SA v. P.T. Permona, Case No. 3K-3-507/2009 (Supreme Court of Lithuania, Nov. 17, 2009) Higgins Coatings Pty Ltd v. Higgins Grp. Holdings Ltd., [2009] NZIPOTM 26 (Nov. 23, 2009), available at

303 1100 Vol. 101 TMR overturned the Assistant Commissioner s ruling about the likelihood of confusion. 698 While accepting that services do not need to be similar for there to be a likelihood of confusion, the High Court found that the closeness of the services was not sufficient of itself to create a real risk of confusion. In this case, affording HGHL exclusivity because the services were complementary would give HGHL too wide a monopoly. Although there were some instances of confusion, the High Court found that the evidence did not show that a substantial part of the relevant market would be confused. It stressed it was reluctant to grant HGHL a broad monopoly in a common family name. The High Court concluded that HIGGINS was a common family name and that by itself it did not have any distinctiveness. The High Court also found that the addition of the term COATINGS in HIGGINS COATINGS and the stylization of the device mark were not enough to make the mark distinctive. HGHL appealed the decision to the Court of Appeal. This is likely to be heard in the next 6 to 12 months. This case is important for its assessment of the registrability of marks comprising a common family name. It shows the unwillingness of the court to grant a trader a monopoly in a common family name. NIGERIA I.B.1. Generic The Smithkline Beecham Plc (Smithkline) registered its trademark 699 MILK OF MAGNESIA in Class 3 for pharmaceutical products on October 11, Smithkline sold its product, however, using the brand name PHILLIPS MILK OF MAGNESIA on the bottles. Farmex Limited (Farmex) manufactured, sold, and supplied pharmaceutical products bearing the trademark DR. MEYER S MILK OF MAGNESIA on its bottle. Smithkline brought an infringement action against Farmex for manufacturing, selling, and supplying pharmaceutical products using the trademark DR. MEYER S MILK OF MAGNESIA, similar to MILK OF MAGNESIA. The court of first instance (the High Court) upheld the position of Farmex and dismissed Smithkline s action. The court held that although Smithkline rightly pointed out that the words MILK OF MAGNESIA were distinctive in Nigeria at the time the trademark was registered, the trademark lost its distinctiveness over time; 698. Higgins Coatings Pty Ltd v. Higgins Grp. Holdings Ltd., CIV , [2010] NZHC 1098 (HC Wellington, June 30, 2010), available at nz/cases/nzhc/2010/1098.html Trademark No

304 Vol. 101 TMR 1101 the words milk of magnesia have now acquired the status of a generic mark both in the Nigerian medicinal and pharmaceutical world as well as to the layman. Hence the reputation and goodwill Smithkline purports to have acquired over the years is not as a result of the generic name milk of magnesia but because of its brand name Phillips. It further held that under the circumstances, DR. MEYER S MILK OF MAGNESIA did not infringe PHILLIPS MILK OF MAGNESIA and the brand names Phillips and Dr. Meyer s were the distinguishing features that easily differentiated the two products. Smithkline appealed. The court of appeal, in upholding the decision of the trial court, stated that the name milk of magnesia was available for use by all persons who manufacture the product. The court further held that Smithkline could not claim exclusive ownership of the name milk of magnesia because it was a generic or common or scientific name used freely in the medicinal and pharmaceutical world. The court of appeal ruled that trademark registration in Nigeria is territorially limited. The court also held that the obligation was on Smithkline to prove that MILK OF MAGNESIA was not a generic name and that it failed to discharge the burden; it did not provide evidence of any product being sold in the Nigerian market with the brand name MILK OF MAGNESIA without a prefix. The court further held that Smithkline s action in including the prefix PHILLIPS to distinguish its product from DR. MEYER S MILK OF MAGNESIA and other products in Nigeria bearing Milk of Magnesia along with a prefix, was an indication that it realized that milk of magnesia was a generic name. 700 It remains to be seen if the decision of the court will be set aside or upheld by the Supreme Court. The decision is novel because this is one of the first instances in which Nigerian courts have considered the matter of a registered mark becoming generic over time. III.A.4. Unfair, Unauthorized, or Improper Use The respondent, Saam Kolo International Enterprises Limited, had, since 1981, marketed shoe protectors under the name STEP and GUARD on behalf of its overseas principal and had its trademark registered in Nigeria in The appellant, Alliance International Limited, was the registered owner of a heel protector design known as STEP and sole protectors STEP for which it had a certificate of design issued by the Registrar of Designs in Nigeria. The respondent brought a claim against the appellant, seeking damages for and a perpetual injunction against infringement of its trademark in the Federal High Court of Nigeria. The respondent 700. Smithkline Beecham Plc v. Farmex Ltd., [2010] 1 NWLR Part 1175 C.A., at 285.

305 1102 Vol. 101 TMR alleged that the appellant infringed its trademarks STEP and GUARD in the sale of its heel and sole protectors with the name STEP. The court of first instance rejected the appellant s defence, which was that at the time of the alleged infringement it held a registered design for its heel protector known as STEP and for its sole protector STEP, and a certificate of design had been issued in its favour by the Registrar of Design. The court granted an injunction and awarded damages of N5.5 million against the appellant. The appellant was dissatisfied and appealed to the Court of Appeal of Nigeria. The court of appeal rejected the appellant s contention that a certificate of design was superior to a trademark certificate and held that neither certificate was superior to the other, but rather each was issued for a different purpose and performed a different function. 701 It confirmed that a certificate of trademark protects the integrity of the product while a certificate of design protects the creativity in the design of the product. The court of appeal further held that possession of a certificate of design under the Patents and Design Act 702 does not confer on the holder the right to use a mark already registered as a trademark. Consequently, the contention of the appellant that its use of the respondent s trademark STEP was covered by a certificate of design at the time of the alleged infringement was of no moment. The decision is important, as it confirms that neither certificate (certificate of trademark and certificate of design) takes priority over the other, as they each serve separate purposes. It also confirms that possession of a certificate of design will not afford the holder the right to use a registered trademark. NORWAY I.B.2. Merely Descriptive Mary Kay Inc., a U.S. company, applied for the registration of the trademark BEAUTY BLOTTERS, for face napkins made from linen paper and paper handkerchiefs for personal care in Class The First Division of the Norwegian Industrial Property Office (NIPO) refused registration 704 on the ground that the mark applied 701. Alliance Int l Ltd. v. Saam Kolo Int l Enters. Ltd., Case No. CA/L/14 7/ Patents and Design Act 1970 (Cap. 344 Laws of the Federation of Nigeria) Application No , filed July 6, Decision of Aug. 17, 2007.

306 Vol. 101 TMR 1103 for lacked the necessary distinctiveness required by Section 13 of the Norwegian Trademarks Act. 705 On appeal by Mary Kay, the NIPO s Board of Appeals overturned the first instance decision. 706 The First Division had given decisive weight to the fact that the word blotters had the dictionary meaning of blotting paper or paper with absorptive (absorbent) means and that the average consumer therefore would perceive the mark as descriptive for face napkins made from linen paper and paper handkerchiefs for personal care. The Board found no grounds for this assumption regarding the perception of the average consumer in Norway. On the contrary, it found that the word blotters most likely would not be very well known in Norway, and that the addition of BEAUTY did not give the mark the meaning that the First Division had ascribed to it. While blotters could be and had been used for the goods applied for, the Board did not find that such use had been very widespread. Under other circumstances, the Board found, the average consumer would not know this meaning of the word. This case is important because the NIPO often seems to interpret the regulation regarding distinctiveness relatively strictly. Further, the decision indicates that the dictionary meaning of a word, taken alone, should not be decisive in a consideration of the distinctiveness of a mark; rather, the decisive factor is how the average consumer will perceive the mark in question. I.D.1. Similarity of Marks Spar Kjøp AS, a Norwegian company, applied in May 2006 for the registration of the trademark MONAMI, 707 for clothing, footwear, and headgear in Class 25. The mark was registered in November of that year Act No. 4 of Mar. 3, 1961, as amended. Section 13, first paragraph, of the Act provides: A trademark which is to be registered must be capable of distinguishing the goods of the holder from those of others. The trademark may not exclusively, or with no more than minor alterations or additions, indicate the kind, quality, quantity, use, price or geographical origin of the goods or the date of their production. In deciding whether a trademark has a distinctive character, however, all factual circumstances shall be taken into consideration, in particular how long and how extensively the trademark has been in use Case No (Norwegian Industrial Property Office Board of Appeals, Dec. 22, 2009), available at /7787v.pdf (in Norwegian) Application No , filed May 9, Trademark No , registered Nov. 1, 2006.

307 1104 Vol. 101 TMR Opposition was filed by the German firm Bosch Textil GmbH based on its prior trademark registration for MONARI, 709 covering clothing for men, women, and children in Class 25. The NIPO s First Division held that there was no risk of confusion between the marks under Section 14 of the Trademarks Act 710 because the mark applied for would be understood as the French phrase mon ami ( my friend ). 711 It was of the opinion that this expression was relatively well known among consumers and that the average consumer would recognize it even if it were written as one word. The NIPO further found that the mark applied for would create a specific image in the mind of the average consumer, while the mark MONARI had no such meaning but could be understood as a name. Its decision was based on the semantic differences between the marks and the different associations that the respective marks would create. The Board of Appeals reversed the First Division s decision. 712 It found that the marks in question were related to identical goods, which called for a strict consideration of the similarity between the marks. The Board further found that the marks MONAMI and MONARI were very similar visually and phonetically, and, contrary to what the First Division had held, that neither of the marks would be perceived as a natural word with a specific meaning. In addition, the Board was of the opinion that the average consumer would not perceive MONAMI as the French expression mon ami. It regarded the marks as being so similar that there would be a risk of direct confusion if both were to be used for clothing in Class 25. The decision clearly shows that the semantic meaning of a trademark can be decisive in a consideration of the risk of confusion. I.F. Famous and Well-Known Marks In July 2003, Prolego, a Norwegian professional consultancy firm, filed a trademark application for PROLEGO, to cover 709. Trademark No , filed July 25, 1988 (Application No ), registered Dec. 23, Section 14, first paragraph, subparagraph 6 of the Act provides: A trademark may not be registered if it is liable to be confused with the name or business name of another person or with a trademark registered for another person in accordance with an application filed earlier, or which was established by use for another person at the time when the application for registration was filed Decision of Oct. 12, Bosch Textil GmbH v. Spar Kjøp AS, Case No (Norwegian Industrial Property Office Board of Appeals, Oct. 12, 2009), available at (in Norwegian).

308 Vol. 101 TMR 1105 services in Classes 35, 41, and The mark was registered a year later. 714 The registration was opposed by the Danish toy manufacturer Lego Juris A/S (Lego) based on risk of confusion with its wellknown prior-registered trademark LEGO. Lego is the owner of Norwegian trademark registrations for LEGO (word mark), 715 covering goods in Classes 3, 9, 11, 15, 16, 18, 19, 20, 22, 24, 25, 27, 28, and 30; LEGOLAND (word mark), 716 for goods in Class 28 and services in Class 41; LEGOTRONIC (word mark), 717 for all goods in Class 9; LEGO & Device, 718 for goods in Classes 16, 20, and 28 (below, illustration at left); LEGO DACTA & Device, 719 for all goods in Classes 9, 16, and 28 and services in Class 41 (below, illustration at right); and LEGO & Device, 720 for specific goods in Classes 12 and 18. The NIPO s First Division found that LEGO was a well-known mark for toys for children, including LEGO blocks. The question was whether the use of the mark PROLEGO would take unreasonable advantage of or lead to the deterioration of the LEGO mark s fame. The NIPO found that the services covered by the application and the services covered by the opponent s trademark registrations clearly were different, and they were directed at very different circles of trade. There was no connection between Lego s toys and Prolego s consultancy services. The First 713. Application No , filed July 11, Trademark No , registered June 30, These include Trademark No , filed Feb. 12, 1979 (Application No ), registered Sept. 9, 1982, and Trademark No , filed Apr. 7, 1983 (Application No ), registered Jan. 21, Trademark No , filed Oct. 28, 1969 (Application No ), registered May 28, Trademark No , filed Mar. 3, 1966 (Application No ), registered Oct. 16, Trademark No , filed Dec. 7, 1973 (Application No ), registered June 5, Trademark No , filed Dec. 7, 1973 (Application No ), registered June 5, Trademark No , filed June 22, 1999 (Application No ), registered Sept. 30, 1999.

309 1106 Vol. 101 TMR Division further found that the mark applied for did not give rise to any association with the prior-registered marks in the minds of consumers; they appeared to be coined words and, both phonetically and visually, were somewhat different. Consequently, the First Division concluded that there was no risk of confusion. 721 The Board of Appeals determined that LEGO was among the very well-known marks, the so-called world marks, and therefore was entitled to extended protection in accordance with Section 6 of the Trademarks Act. 722 Prolego s mark, however, did not include goods of the same kind as those for which Lego was well known, but only services that were rather far removed from them. The Board concluded that use of the PROLEGO mark for consultancy services would not give rise to an association with the opponent s LEGO marks. Rather, PROLEGO most likely would be perceived as one word, not as a combination of two independent elements. Even though likelihood of confusion of the marks was not a condition for protection under Section 6, it did have an impact on the determination of similarity. Given that, in the present case, the degree of similarity was absent and the applied-for mark was to be used for services that were very far from those goods for which the prior-registered marks were famous, it was not likely that use of the mark applied for in connection with the services covered by the application implied an unreasonable exploitation of the goodwill of the prior marks. Last, in analyzing the risk of confusion under Section 14, first paragraph, subparagraph 6 of the Trademarks Act, 723 the Board of Appeals found that the conditions for risk of confusion were not present. Consequently, it affirmed the First Division s decision. 724 This case is noteworthy because the Board of Appeals discussed guidelines with respect to the consideration of famous and wellknown marks and said something about the extent of the protection given to such marks under the Norwegian Trademarks Act Decision of Jan. 5, Section 6, second paragraph, of the Act provides: Moreover, signs that are similar shall be considered liable to be confused even if they do not relate to identical or similar goods, if the sign with the earlier right is so well known and established in this country that it would imply an unreasonable exploitation of or be detrimental to its goodwill if the other sign were to be used by someone else See supra note 710 and accompanying text Lego Juris A/S v. Prolego, Case No (Norwegian Industrial Property Office Board of Appeals, Oct. 12, 2009), available at 2avdeling_avgjorelser/varemerke/2009/7749v.pdf (in Norwegian).

310 Vol. 101 TMR 1107 II.C.1.e. Letters and Numbers The Japanese firm Toyota Jidosha Kabushiki Kaisha filed Norwegian trademark applications for the word marks IS-F 725 and IS F, 726 both covering automobiles and construction parts therefor in Class 12. In considering whether the marks applied for had sufficient distinctiveness to obtain registration, the NIPO s First Division was of the opinion that both marks would be apprehended as models in a series of products and not as trademarks. Thus, it refused registration. 727 The Board of Appeals reversed the decisions of the First Division. 728 It found that the letter combinations in question, IS F and IS-F, would not be perceived by the average consumer as descriptive abbreviations or models. No descriptive meaning had been shown for IS F or IS-F. Consequently, the Board found that the marks were sufficiently distinctive to be registered for the designated goods, and it allowed them to proceed to registration. 729 These cases are important because they mark a change in the administrative practice of refusing combinations of three-letter marks for vehicles in Class 12. Previously, such trademarks had, to an extreme extent, been regarded as unregistrable, the NIPO being of the opinion that they were not able to distinguish the goods of one producer from those of others, but only between various models from the same producers. The German firm BSH Bosch und Siemens Hausgeräte GmbH applied for the extension to Norway 730 of its International Registration for the word mark SR8, 731 for various goods in Classes 7, 9, and 11. In considering whether the mark had sufficient distinctiveness to obtain registration, the First Division opined that SR8 would be apprehended as a model in a series of products and not as a trademark. Thus, it was refused registration Application No , filed Nov. 9, Application No , filed Apr. 11, Decision of Apr. 15, 2009 (IS-F); Decision of Apr. 21, 2009 (IS F) Case Nos (IS F) and 7945 (IS-F) (Norwegian Intellectual Property Office Board of Appeals, May 10, 2010), available at 2avdeling_avgjorelser/varemerke/2010/7944v.pdf and 2avdeling_avgjorelser/varemerke/2010/7945v.pdf (in Norwegian) Trademark No , registered May 20, 2010 (IS F); Trademark No , registered June 14, 2010 (IS-F) Application No , filed July 20, IR No , registered Jan. 16, 2006, given effect in Norway Apr. 10, Decision of May 6, 2008.

311 1108 Vol. 101 TMR To the Board of Appeals, however, the letter and number combination SR8 did not appear to be a descriptive abbreviation. In contrast to the First Division, the Board s opinion was that the average consumer would not perceive SR8 as a model reference. The Board therefore concluded that the combination had sufficient distinctiveness, and it allowed the mark to be registered. 733 This case was decided in line with the rulings in the cases involving the trademarks IS-F and IS F. 734 The general prohibition in the Trademarks Act against registration of descriptive terms would, according to the Board, ensure that no one would be able to use descriptive combinations of letters and numbers. In addition, there would not often be a need for anyone to use a nondescriptive combination of several letters and/or numbers because of the many possible combinations of such letters and numbers and because such combinations in general would not be regarded as lacking sufficient distinctiveness. III.A.4. Unfair, Unauthorized or Improper Use Juritzen Forlag AS, a Norwegian publishing company, obtained in 2009 a trademark registration for PÅSKE KRIM KRIMNOVELLER FRA VERDENS BESTE FORFATTERE ( Easter Crime: Short Stories from the World s Greatest Authors ), 735 covering books, etc., in Class 16. In 2010, the firm filed for registration of the design mark DEN ORIGINALE PÅSKEKRIMMEN FRA JURITZEN FORLAG, 736 covering various goods and services in Classes 9, 16, and 41, and the word and design mark PÅSKE KRIM DEN ORIGINALE PÅSKEKRIMMEN FRA JURITZEN FORLAG, 737 for books and magazines in Class 16. The marks were used or intended to be used as covers for books and magazines with crime stories. Kraft Foods Norwegian subsidiaries (Kraft Foods Norge AS and Kraft Foods Norge Intellectual Property AS) hold Norwegian trademark registrations for KVIKK LUNSJ ( quick lunch ) and variations thereof, covering chocolates, etc., in Class 30; 738 goods in 733. Case No (Norwegian Intellectual Property Office Board of Appeals, May 12, 2010), available at /7867v.pdf (in Norwegian) See supra note 728 and accompanying text Trademark No , filed June 18, 2009 (Application No ), registered Dec. 21, The connection between crime stories and the Easter holiday probably is exclusive to Norway. Norwegians have a public Easter vacation of five days, and over the years a tradition of reading crime stories and crime novels during this vacation has evolved Application No , filed Feb. 24, Application No , filed Oct. 13, Trademark No , filed Aug. 16, 1957 (Application No ), registered Aug. 16, 1957.

312 Vol. 101 TMR 1109 Classes 29 and 30; 739 and goods in Classes 18, 22, 25, and The marks are used and well known in Norway for a chocolatecovered biscuit bar. 741 The subsidiaries brought an infringement action against Juritzen Forlag. They claimed that the defendant s book cover for the 2009 edition of the book Påske Krim ( Easter crime ) infringed the trademark rights related to the plaintiffs KVIKK LUNSJ chocolate and that the book cover planned for the 2011 edition would be an infringement as well. In addition, they sought the cancellation of the defendant s trademark registration for PÅSKE KRIM KRIMNOVELLER FRA VERDENS BESTE FORFATTERE. No Appl. No Appl. No No No Trademark No , filed July 10, 2001 (Application No ), registered Jan. 15, 2004; Trademark No , filed Aug. 27, 2003 (Application No ), registered Jan. 13, Trademark No , filed June 25, 2003 (Application No ), registered Nov. 20, The KVIKK LUNSJ chocolate is widely enjoyed as a snack during outdoor activities such as skiing. Skiing is particularly popular during the Easter holiday.

313 1110 Vol. 101 TMR The Oslo District Court found that both the trademark KVIKK LUNSJ and the packaging for this brand of chocolate were well known in Norway. The question was whether the trademark was so well known that it enjoyed protection against the use of an identical or similar trademark for goods of a different kind. 742 The court found that there was a large degree of similarity between the book cover for 2009 and the KVIKK LUNSJ packaging. It did not doubt that a link would be created between the defendant s and the plaintiffs products in the consciousness of the average consumer. With respect to the planned book cover for 2011, the court had doubts regarding the question of similarity, as it had a different typeface, added bullet holes, etc. On the other hand, the book cover for 2011 had to be evaluated in light of the use of the book cover for The court thought that the prior print might enhance recognition of common features between the book cover and the chocolate packaging. Thus, it held that the similarity to the plaintiffs packaging also was present in the case of the book cover for The court then discussed whether use of a book cover that was similar to the chocolate packaging would imply an unreasonable exploitation of the plaintiffs trademarks distinctiveness or goods. Specifically, the judge questioned whether it was reasonable to expect protection for the plaintiffs trademarks also to be enforced with respect to a product that was relatively dissimilar to chocolate. In the court s view, one had to take into consideration the fact that 25 percent of the annual sales of the KVIKK LUNSJ chocolate took place in connection with the Easter holiday in other words, at the same time as the release of the book. Both products would be associated with holidays and spare time, and they would, to a certain extent, be sold at the same points of sale. Thus, it was not unreasonable for the plaintiffs marks to be protected with respect to book publications. The defendant argued that freedom of speech and its artistic freedom as a publisher allowed the coexistence of the book covers and the plaintiffs trademarks, but the court found that the argument had no weight. In its opinion the choice of the book cover was motivated primarily by sales promotion, which was beyond the protection afforded by freedom of speech and artistic freedom. The court concluded that the marketing and sale of books with the PÅSKE KRIM cover was illegal, Accordingly, the court prohibited the defendant from marketing or selling books with a 742. Section 6, second paragraph, of the Trademarks Act provides that when a trademark is well known in this country, the trademark right implies that no one without consent from the trademark owner can use a mark that is identical or similar to the trademark for goods or services of the same or a different kind if the use would imply an unreasonable exploitation of or damage to the trademark s distinctiveness or goodwill.

314 Vol. 101 TMR 1111 cover bearing a mark such as that shown in its trademark registration (i.e., the book cover for 2009) or with the planned cover for the 2011 edition, as shown in its October 2010 trademark application. Finally, it ordered the cancellation of the trademark registration for PÅSKE KRIM KRIMNOVELLER FRA VERDENS BESTE FORFATTERE. 743 The case is important because it discusses the extent to which well-known marks are protected with respect to dissimilar goods and services. III.C.1. International Conventions AAAA Tøyen Tannlegevakt AS, a Norwegian company, registered a figurative mark in color, depicting a red cross with four As and a sparkling tooth, for dental technician services in Class 40 and dental treatment in Class 44 (see below). 744 The question in this case related to the use of the trademark: specifically, whether the trademark concerned had such a similarity to the sign for the International Red Cross that use would be illegal according to the Norwegian Criminal Code. The Norwegian Red Cross sent a notice to the company asking it to cease and desist from the use of the logo. When that request was not complied with, the company and its trademark use were reported to the police. The Chief of Police in Oslo issued a penalty notice against the company for violation of Section 328 of the Criminal Code for having used a sign or designation that was 743. Kraft Foods Norge AS & Kraft Foods Norge Intellectual Property AS v. Juritzen Forlag AS, Joined Cases TOSLO and TOSLO (Oslo District Court, Oct. 29, 2010), published Lovdata, available at (in Norwegian) Trademark No , filed Sept. 29, 2006 (Application No ), registered Feb. 15, 2007.

315 1112 Vol. 101 TMR protected by law. 745 As the company did not accept the penalty notice, the case was transferred to Oslo District Court, which acquitted the defendant. 746 The Borgarting Appeal Court affirmed the district court s decision, 747 and the case reached the Norwegian Supreme Court. The Supreme Court discussed whether the defendant s logo could easily be confused with the symbol of the International Red Cross. It found that the penalty in Section 328 of the Criminal Code was imposed to comply with Norway s obligations under the Geneva Convention. The Court opined that when assessing the extent of Norway s duties under the Geneva Convention, one had to take into consideration, as a starting point, that it was in situations of war that the Red Cross symbol first and foremost had significance. This point was crucial to the understanding of the expression can easily be confused with in Section 328. The Red Cross symbol must, said the Court, be able to be recognized and respected in situations of war. It was, therefore, not sufficient to consider whether confusion could take place under normal circumstances and at close range. One also had to take into consideration the impression that the logo would give when viewed from a distance and in relatively strained situations. Assessing the defendant s logo, the Court observed that it consisted of a red cross against a light green background, with all arms of the cross having the same length. In each arm there was an A, and in the middle of the cross there was a depiction of a tooth. There were elements that, when seen from up close, could impart distinctiveness, especially the four As, the tooth, and the light green background. From a distance, however, and particularly at evening time, when the light of the sign bearing the logo was turned on, those elements would lose their impact. The 745. Section 328, second paragraph, of the Norwegian Criminal Code provides: Any person shall be liable to the same penalty [fines or imprisonment for a term not exceeding three months] who without authority publicly or for an unlawful purpose uses: a) any designation recognized or commonly used in Norway or abroad of an international organization or any insignia or seal used by an international organization if Norway is a member of the said organization or has by international agreement undertaken to give protection against such use, b) any badge or designation which by international agreement binding on Norway is designed for use in connection with aid to the wounded and sick or the protection of cultural values in war, c) any designation, insignia, seal or badge which can easily be confused with for anything mentioned under [subparagraphs] a and b Case No. TOSLO (Oslo District Court, Oct. 2, 2009) Case No. LB (Borgarting Appeal Court, Jan. 18, 2010), published Lovdata, available at a&sok=fast (in Norwegian).

316 Vol. 101 TMR 1113 main element, the red cross, would then be the most significant element. As a result, the Supreme Court overturned the decision of the Borgarting Appeal Court. 748 The significance of this case lies in the Supreme Court s discussion of trademark use in relation to criminal law on the one hand and in relation to Norway s obligations under the Geneva Convention on the other. This is highly unusual. It should also be noted that the trademark registration in question still is valid, although use of the mark was prohibited. III.H. Court Proceedings Norsk Tipping AS, the corporation that runs the Norwegian national lottery, applied for the registration of the mark TIPPINGA ( the betting ), to cover advertising, business management, business administration, and office functions in Class 35; telecommunications, including television broadcasting, communications at computer terminals, and electronic billboards in Class 38; and education, providing of training, entertainment services, sporting and cultural activities, including lotteries and organizing of lotteries, gambling activities, and gambling services provided online in Class The NIPO s First Division refused registration on the ground that the word TIPPINGA was descriptive for entertainment services, gambling services, and organizing of lotteries. 750 For the other services, the mark was regarded as lacking the necessary distinctiveness. The NIPO s Board of Appeals maintained the refusal, but found that the application also covered services that would have been registrable. 751 Norsk Tipping AS then brought suit against the Ministry of Trade and Industry (Nærings- og Handelsdepartementet), of which the NIPO is a subordinate agency. The Oslo District Court upheld the Board of Appeals decision. 752 On the applicant s further appeal, the question to be considered by the Borgarting Appeal Court was whether the NIPO 748. Public Prosecuting Authority v. AAAA Tøyen Tannlegevakt AS, Case No. HR A (Supreme Court, May 12, 2010), published Lovdata, available at Norsk Retstidende 2010 at 593 (in Norwegian) Application No , filed Sept. 5, Decision of Oct. 25, Case No (Norwegian Industrial Property Office Board of Appeals, Sept. 12, 2008), available at /7720.pdf (in Norwegian) Case No. TOSLO (Oslo District Court, Apr. 17, 2009), published Lovdata, available at &button=S%F8k&sok=fast (in Norwegian).

317 1114 Vol. 101 TMR had made a procedural error that had affected the result of the case. The appeal court held that there were indeed procedural errors by the NIPO that might have had a critical effect on its decision. Specifically, the court found that the NIPO had acted contrary to Article 13 of the European Trademarks Directive 753 (grounds for refusal or revocation or invalidity relating to only some of the goods or services) in not notifying the applicant that the mark was registrable for some of the services applied for. Accordingly, the appeal court reversed the decisions by the NIPO and the Oslo District Court. 754 This case is important because the appeal court clearly ruled that the NIPO was obliged to comply with the European Trademarks Directive. In its opinion the court discussed to a certain extent whether the trademark applied for was established through use, and it gave guidelines for deciding how extensive the use of a trademark with a low degree of distinctiveness must be in order to obtain registration based on said use. The case is also interesting from a procedural point of view and with respect to the costs involved. Under Norwegian law, costs normally are awarded to the winning party. The appeal court discussed the question of costs but it did not grant costs to the appellant, as the question that was decisive to its determination had not been raised before the case reached the appellate stage. PARAGUAY II.I. Post-Registration Evidence of Use and Renewals The Paraguayan firm Embotelladora Central S.A.C.I. filed a cancellation action against The Coca-Cola Company, seeking the cancellation for non-use of Coca-Cola s trademark BONAQA, registered for products in Class 32. Embotelladora Central alleged that Coca-Cola had not used the trademark BONAQA in Paraguay since its registration, which was obtained on May 12, Article 27 of the Paraguayan Trademark Act (Act No. 1294/98) provides that the registration of a mark may be cancelled when its use has not commenced within five years immediately following its registration or has been 753. First Council Directive 89/104/EEC, Dec. 21, Article 13 provides: Where grounds for refusal of registration or for revocation or invalidity of a trade mark exist in respect of only some of the goods or services for which that trade mark has been applied for or registered, refusal of registration or revocation or invalidity shall cover those goods or services only Case No. LB (Borgarting Appeal Court, Dec. 15, 2009), published Lovdata, available at iv+lxsiv+lfsiv+lgsiv+lhsiv+lastr+lbstr+lestr+lxstr+lfstr+lgstr+lhstr&emne1=lb &button=s%f8k&sok=fast (in Norwegian).

318 Vol. 101 TMR 1115 suspended for more than five consecutive years. The decree that regulates the Act states that the use of the mark in any country will avoid cancellation for non-use. In its response, Coca-Cola alleged that the trademark BONAQA was being used in Latin American countries such as Uruguay. As evidence of such use it filed commercial invoices issued by the company that mentioned the sale of BONAQA products to Coca-Cola s Uruguayan licensee, Montevideo Refrescos S.R.L. The defendant also asserted that although it was true that the BONAQA mark was not in use in Paraguay, according to the regulatory decree for the Paraguayan Trademark Act, use of the mark was demonstrated with the evidence of its use in Uruguay. The judge stated that the Paraguayan Trademark Act and its regulatory decree were very clear regarding the use of a registered trademark. In this case he had no difficulty in reaching the conclusion that the use of the trademark BONAQA was sufficient to avoid its cancellation. Therefore, the judge rejected the judicial action filed by Embotelladora Central. 755 The plaintiff has appealed the decision. This decision is important because it demonstrates that a trademark owner may protect its registered trademark from cancellation for non-use by proving use of the mark in any foreign country. PERU I.B. Descriptiveness On June 30, 2009, The International Investment Group LLC (U.S.) applied for registration of the multi-class trademark THE INTERNATIONAL INVESTMENT GROUP to distinguish services in Class and Class In early 2010, the ex-officio court of first instance rejected 758 registration for THE INTERNATIONAL INVESTMENT GROUP for the following reasons: (1) the proposed trademark lacked distinctiveness (it was without a differentiating capacity that would have allowed it to designate an entrepreneurial source); (2) although the phrase THE INTERNATIONAL INVESTMENT GROUP came from the English language, its Spanish translation EL GRUPO INTERNACIONAL DE INVESTIONES would be 755. Embotelladora Central S.A.C.I. v. Coca-Cola Co., Decision No. 44 (Judge of First Instance in Civil and Commercial Matters, Feb. 25, 2009) Advertising, business management, business administration; office functions Including financial affairs, namely administration of investment funds and advisory and consultancy in matters of investment funds; monetary affairs, real state affairs Resolution No /DSD-INDECOPI (Administrative Court, Jan. 12, 2010).

319 1116 Vol. 101 TMR easily comprehended by the public, and was informative regarding the services provided by the company, as these services were rendered by or to international investment groups; (3) the phrase THE INTERNATIONAL INVESTMENT GROUP would directly inform users about one of the characteristics of the company s services, namely that these services would be rendered via an international group devoted to investments; and (4) THE INTERNATIONAL INVESTMENT GROUP would consequently have to remain in the public domain to be used by any entrepreneur or institution for providing suitable information regarding services in Classes 35 and 36. On February 4, 2010, The International Investments Group LLC appealed. In confirming the court of first instance s decision, the Administrative Court ruled 759 that albeit in the English language, the meaning of the phrase EL GRUPO INTERNACIONAL DE INVERSIONES would be understood by the targeted consumer to the extent that the terms that compose the phrase were frequently used in the market and that some of them were closely similar to those in the Spanish language. The court noted that INTERNATIONAL should be understood by the public as meaning INTERNACIONAL because of the similarity between both words. The court stated that the term INVESTMENT (in Spanish, INVERSION) should be understood by the pertinent sector of the public because it is commonly used in businesses and financial affairs. The Administrative Court added that it had verified that several entities included the term INVESTMENT in their corporate names, all of which advertised their services through the Yellow Pages, which fact demonstrated that the term was familiar to the consumer. The court also stated that the meaning of GROUP would be understood by the consumer because of its similarity to the Spanish term GRUPO. The court also established that a consumer would acknowledge the proposed trademark, when viewed as a whole, to mean EL GRUPO INTERNACIONAL DE INVERSIONES. In arriving at this conclusion, the court took into account the fact that the user of the services in Classes 35 and 36 would usually possess a certain level of academic preparation, and would most probably be familiar with the English language. I.C. Distinctiveness On January 7, 2010, Compañía de Promociones Internacionales de Servicios de Salud S.A. SOPRINSA (Colombia) applied to register the slogan LA SALUD QUE TU MERECES 759. Resolution No /TPI-INDECOPI (Administrative Court, Nov. 17, 2010).

320 Vol. 101 TMR 1117 (Spanish for THE HEALTH YOU DESERVE) to be used in association with the registered trademark COLSANITAS PERU 760 in Class 36. In a decision 761 dated April 26, 2010, the ex officio court of first instance rejected registration for this slogan, stating that: (1) the slogan LA SALUD QUE TU MERECES did not possess the necessary attribute of distinctiveness to indicate the registered trademark COLSANITAS PERU in advertising; (2) the slogan LA SALUD QUE TU MERECES did not transmit a creative or ingenious message that alluded indirectly to the qualities and/or virtues of the services distinguished by the registered trademark COLSANITAS and instead it merely made reference to the wellbeing that a health care service should provide to its clients consequently, it did not accomplish the function of a slogan, which is to reinforce the distinctiveness of the registered trademark. Rather, LA SALUD QUE TU MERECES was a simple phrase that was not particularly ingenious; and (3) the slogan in question could be freely used by the commercial media in fields related to Classes 35 and 36 and even in other fields, to attract the preference of the public, consisting of an advertising phrase that did not differ sufficiently from others used in the promotion of similar services. On May 18, 2010, SOPRINSA appealed this decision. On January 12, 2011, the Administrative Court rendered a decision, 762 ruling that: (1) the proposed slogan was not distinctive enough to advertise the services covered by the trademark COLSANITAS PERU, nor did it convey a creative or ingenious message that would have enhanced the qualities and/or virtues of the services advertised; (2) LA SALUD QUE TU MERECES was a simple phrase that did not accomplish the essential function of a slogan to reinforce the distinctiveness of the trademark proposed to be advertised. The proposed slogan was found to fall within the bar to registration established under Article 135 (b) of Andean Community Decision 486, which prohibits registration to marks that lack distinctiveness. The Administrative Court finally ruled that the rejection of registration was not an impediment for SOPRINSA to use the slogan LA SALUD QUE TU MERECES in the advertising and promotion of its services but stressed the fact that not being registrable, the slogan was to be used without exclusivity Certificate No Resolution No /DSD-INDECOPI (Administrative Court, Apr. 26, 2010) Resolution No /TPI-INDECOPI (Administrative Court, Jan. 5, 2011).

321 1118 Vol. 101 TMR II.H. Amendments On June 25, 2009, Juan Cristobal Távara Balladares (Peru) applied to register the trademark EFECTO AMBIENTAL EA RESPONSABILIDAD GLOBAL AND LOGO (see illustration below), to distinguish goods in Class This application was rejected by the court of first instance 764 based on pre-existing registrations by Editorial Escuela Activa S.A. (Peru), 765 both of which included the combination of letters EA plus a logo. On February 26, 2010, while appealing the resolution, the applicant, Juan Cristóbal Távar Balladares, requested the amendment of the proposed trademark, expressing that he sought to avoid confusion with the pre-existing registrations of Editorial Escuela Activa S.A. and no longer desired to claim protection on the combination of letters EA. Deciding on the petition for amendment, the Administrative Court took into account Article 143 of Andean Community Decision 486, which allows an applicant to modify its application at any time, insofar as the amendment does not imply a change in the substantive aspects of the sign or the amplification in the listing of goods and/or services initially covered. The Administrative Court also considered the criterion handled by the Andean Court of Justice dealing with Article 143 of Andean Decision 486, according to which secondary changes in an application consist of amendments that do not alter the general aspect of the trademark (size and type of lettering, spelling or typo errors, applicant s address, suppression of a generic or secondary element, etc.). The Administrative Court concluded that the requested modification consisted of a substantial amendment because the combination of the letters EA had a relevant position within the proposed trademark and thus the removal of such element would produce a significant change in the visual impression of the sign Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers type; printing blocks Resolution No /DSD-INDECOPI (Administrative Court, Feb ) Consisting of Certificates No and No

322 Vol. 101 TMR 1119 The amendment was refused and the application was rejected by the Administrative Court. 766 POLAND I.F. Famous and Well-Known Marks The well-known U.S. firm Tiffany and Company (Tiffany) is the owner of the famous trademark TIFFANY, identifying luxury products (jewelry, souvenirs). Tiffany filed with the Polish Patent Office a motion for cancellation of the word and design marks TIFFANY and TIFFANY & BROADWAY INC., registered for shoes in Class 25 in the name of another U.S. company, Tiffany & Broadway Inc. Division of Texpol Corporation. The plaintiff argued that the defendant s registration and use of the TIFFANY marks in connection with shoes constituted dilution, depreciation, and parasitic use of the reputation of its trademark, in violation of Article 8(1) of the Polish Trademarks Act. 767 Tiffany did not hold prior rights deriving from the trademark registration of TIFFANY in Poland and was not engaged in business activity in the Polish territory. The Polish Patent Office accepted Tiffany s motion, finding that protection under Article 8(1) is available for all renowned trademarks whether registered or not. 768 The Voivodeship Administrative Court in Warsaw upheld the Office s decision. 769 In response, Tiffany & Broadway filed a cassation complaint with the Supreme Administrative Court (SAC). The SAC reversed the first instance decision. 770 Notwithstanding procedural errors made in the evidentiary proceedings conducted before the Patent Office, the Court made a binding legal interpretation that Article 8(1) provides for the possibility of granting protection for nonregistered renowned trademarks. The SAC s interpretation was made in light of the provisions of the European Trademarks Directive, 771 the preamble to which states that the Member States of the European Union shall not be prevented from granting, at their option, extensive protection for those trademarks that have a reputation Resolution No /TPI-INDECOPI (Administrative Court, Oct. 6, 2010) Law on Trademarks, Jan. 31, 1985 (Journal of Laws 1985, No. 5, item 17), as amended. Article 8(1) provides: A trademark shall not be registrable if it is contrary to law or to the principles of society Decision Nos. Sp. 68/04, Sp. 69/04 (Mar. 19, 2007) Judgment Nos. VI SA/Wa 237/08, VI SA/Wa 238/08 (July 24, 2008) Judgment Nos. II GSK 1110/08, II GSK 1111/08 (July 8, 2009) First Council Directive 89/104/EEC, Dec. 21, 1988 (codified at Directive 2008/95/EC, Oct. 22, 2008).

323 1120 Vol. 101 TMR The SAC ruled that Article 4(4)(a) of the Directive 772 could not be interpreted as providing the maximum limitation for the protection of renowned marks in the national law. The SAC, by citing the judgment of the European Court of Justice in Davidoff, 773 indicated that the Directive could not be considered as an example of so-called complete harmonization, which exhaustively stipulates the protection standards and, consequently, precludes the national law from modifying such protection and from having wider protection for nonregistered renowned trademarks. The Court emphasized that the Directive itself allows for protection of nonregistered trademarks under Article 4(4)(b). 774 Accordingly, the SAC annulled the judgments of the Voivodeship Administrative Court and sent the case back to that court for reconsideration. II.E. Examination and Opposition Eurocos Cosmetics GmbH filed with the Polish Patent Office an opposition against the Office s decision granting protection for the trademark CARLO BOSSI. The opponent argued that the said registration infringed its rights in the registered and renowned trademark BOSS. However, in the course of the opposition proceedings, the trademark BOSS was assigned to Hugo Boss Trade Mark Management GmbH & Co. KG. Having examined the case, the Patent Office found that the opposition was subject to dismissal in view of the loss by Eurocos 772. Article 4(4)(a) provides: Any Member State may, in addition, provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that: the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark Davidoff & Cie SA et al. v. Gofkid Ltd, Case C-292/00, [2003] ECR I-389 (ECJ, Jan. 9, 2003), available at Rechercher&alldocs=alldocs&docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=C -292/00&datefs=&datefe=&nomusuel=&domaine=&mots=&resmax= Article 4(4)(b) provides: Any Member State may, in addition, provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that: rights to a non-registered trade mark or to another sign used in the course of trade were acquired prior to the date of application for registration of the subsequent trade mark, or the date of the priority claimed for the application for registration of the subsequent trade mark[,] and that non-registered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark....

324 Vol. 101 TMR 1121 Cosmetics of its trademark rights in BOSS. The authority stated that although, in compliance with the provisions of the Polish Industrial Property Law, 775 a party filing opposition is not obliged to evidence a legal interest, for the sake of effective claiming of cancellation of the protection right at issue, it must prove the infringement committed by the opposed trademark with respect to the rights held by the opponent and not with respect to the rights held by a third party. At the first appellate instance, the Voivodeship Administrative Court in Warsaw upheld the Patent Office s decision. However, the SAC, whose judgments are final and non-actionable, did not share the point of view adopted by the courts below. The SAC emphasized that a business entity, when filing an opposition, does not need to evidence a legal interest, either at the date of filing of such opposition or in the course of its examination (which takes the form of proceedings regarding cancellation of the trademark right). 776 The SAC highlighted that the opposition is close in its nature to the actio popularis, which, owing to substantial public interest, is available to every business entity that has the capacity to be a party to the proceedings, irrespective of direct relation to or interest in the case. Therefore, there were no grounds for restricting the right to file opposition only to the group of persons who had a legal interest. PORTUGAL I.B.2. Merely Descriptive This case concerned the distinctive character of four trademarks, all of which BELTRÓNICA Companhia de Comunicações, Lda. sought to register for goods and services in Classes 9, 38, and Industrial Property Law, June 30, 2000 (consolidated text: Journal of Laws 2003, No. 119, item 1117, as amended) Article 246 of the Industrial Property Law provides: 1. Within six months from the publication in Wiadomości Urzędu Patentowego [the official gazette] of the mention of the grant of a title of protection, any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right in registration. 2. The opposition referred to in paragraph (1) may be filed on the same grounds, on which a patent, a right of protection or a right in registration may be invalidated.

325 1122 Vol. 101 TMR The four trademarks were refused by the Portuguese Industrial Property Office (IPO), because the examiner deemed that the terms SERVER TELECOM and TELECOM SERVER had no distinctive character within the context of the activity carried out by the applicant, as they described, albeit in English, the type of goods and services for which they were designated, i.e., telecommunications and the respective servers. On appeal, the Portuguese Court of Commerce upheld the administrative decision of refusal given that the four marks had no distinctive character. 777 In the court s opinion, any person could view the trademarks as identifying telecommunications services through a server. Furthermore, although the word SERVER is used in the English language, it is precisely within the domain of IT telecommunications that this term is in current use. The importance of this decision lies in the fact that, even when presented as figurative compositions, this was not sufficient to confer distinctive character to the trademarks at issue. I.B.4. Geographically Primarily Descriptive/ Deceptively Misdescriptive The plaintiff s trademark, registered in Class 33, consisted of the word mark QUINTA DE SÃO JOSÉ DE PERAMANCA. The defendant s figurative mark, registered for goods in Class 33, consisted of the designation VINHO PERA-MANCA. The plaintiff filed a partial nullity action against the defendant s trademark registration on the grounds that the term PERAMANCA designates the geographical origin of the goods and therefore lacks distinctive character required to be registered as a trademark. The courts of first and second instance (District Court of Évora and High Court of Évora, respectively) dismissed the action on the 777. Case No. 639/05.8TYLSB (Portuguese Court of Commerce, 1st Instance, Nov. 11, 2009).

326 Vol. 101 TMR 1123 grounds that consumers, in the presence of the expression PÊRA MANCA, would immediately associate it with the defendant s goods. The Portuguese Supreme Court of Justice upheld the appealed decision. 778 Although PERAMANCA did constitute a geographical indication from the past, it was no longer known as such. Furthermore, when the mark reappeared on the market, it had acquired strong distinctiveness through its use by the defendant. The Court also considered that the elements that constitute the trademark in question and found that they did not demonstrate the defendant s intention that the mark indicate the origin of its wines, nor were they appropriate for this purpose. The Court also found that consumers did not acquire the product because they believed that it came from the region of Peramanca. The importance of this decision lies in the fact that a mark that is a geographical indication can acquire distinctive character through its use in the marketplace, and consequently, it can be registered as a trademark. I.D.1. Similarity of Marks The plaintiff s trademarks, registered in Classes 9, 16, 38, 41, and 42, consisted of the designation MAC. The defendant s trademark application was intended to designate goods in Classes 9, 38, and 42, and consists of the mark FORMAC. The plaintiff filed an appeal against the decision to grant the defendant s trademark registration that was issued by the Portuguese Industrial Property Office (IPO), because it claimed that the mark infringed its legitimate Industrial Property rights. The defendant s trademark registration for FORMAC was granted by the Portuguese IPO, because the examiner deemed that there was no risk of confusion with the plaintiff s word marks MAC. The Portuguese Court of Commerce reversed the IPO s decision, based on its finding that there was a risk of confusion between the trademarks. 779 In its opinion, the syllable FOR, included in the defendant s trademark, clearly signified a relationship with MAC, i.e., for MAC, although these elements were not separate. It also found that the question in this case was not the appropriation of the conjugation of the letters M A and C, by the plaintiff, but the non-existence of differences between the trademarks in order to make it possible to distinguish them. Moreover, the court considered the fact that FORMAC constituted 778. João Pedro de Vasconcelos e Sá Grave v. Fundação Eugénio de Almeida, Case No. 398/2002 (Portuguese Supreme Court of Justice, Dec. 3, 2009) Apple Computer Inc. v. Formac Elektronik GmbH, Case No. 921/07.0TYLSB (Portuguese Court of Commerce, 1st Instance, June 25, 2008).

327 1124 Vol. 101 TMR the characteristic element of the defendant s company name, an argument raised by the defendant, which was not sufficient to grant the registration of the trademark at issue. The importance of this decision lies in the fact that it is possible to verify a risk of confusion between a simple trademark and one that is more complex, if the more complex element has its own meaning, capable of being associated by consumers with a simple mark. In this case, FORMAC was interpreted by consumers as for MAC. The plaintiff was the owner of the word marks HOTEL LISBOA PLASA, HOTEL LISBOA PLAZA, PLASA, and PLAZA, all registered for services in Class 43. The defendant was the owner of the figurative mark CROWNE PLAZA (figurative), designating services in Class 42 (see below). The plaintiff appealed against the administrative decision and the judicial decision of the court of first instance, which granted the registration of the trademark CROWNE PLAZA, on the grounds that there was a likelihood of confusion between this trademark and its trademarks identified above. The examiner at the Portuguese Industrial Property Office and the court of first instance found that there was no confusion between the sign CROWNE PLAZA and the plaintiff s trademarks PLAZA / PLASA. The High Court of Lisbon upheld the appealed decisions. 780 The Court found that the designation PLAZA by itself was less prominent in its distinctive graphic and figurative arrangement, in which the element CROWNE was particularly prominent. The Court thus concluded that the overall perception of the defendant s trademark would easily create in consumers minds a clear difference between the signs at issue. Finally, the Court stated that the words PLAZA and PLASA could not be reserved for the exclusive use of a single economic agent because they were of a generic nature used for designating hotel services. The importance of this decision lies in the fact that the designations PLAZA and PLASA are considered to lack the distinctive character required in order to be registered as a trademark within the scope of hotel services Hotéis Plasa, S.A. v. Holiday Hospitality Corporation, Case No L1 (High Court of Lisbon, July 8, 2010).

328 Vol. 101 TMR 1125 The plaintiff was the applicant for registration of the trademark LUSOMILHÕES, which designates services in Class 41. The defendant s trademark consisted of the designation EUROMILHÕES, registered in Class 41. The examiner at the Portuguese Industrial Property Office refused the registration of the trademark LUSOMILHÕES on the ground of likelihood of confusion. The Court of Commerce of Lisbon, upholding the IPO s decision that there was a likelihood of confusion and association between the trademarks at issue. 781 The court considered that even though the initial parts of the trademarks were different, i.e., LUSO and EURO, the ideographic concept behind the signs was very similar. In fact, consumers would be attracted by the component milhões ( millions ) and by the appealing monetary prize that the game offered. In the presence of the trademark applied for, consumers would immediately think of the sign EUROMILHÕES, which identifies a game that is widely known among the public, thus leading to the inevitable conclusion that there would be a likelihood of association with a single business origin. The importance of this decision lies in the fact that even if two trademarks have different initial parts, they may be considered to be confusingly similar if they display similarities as a whole, a situation which is heightened when one of the trademarks is well known. The plaintiff was the applicant for registration of the trademark CARTIGEL, designating goods in Class 5. It was also the owner of the trademark CARTILOGEN, which was registered in Class 5 before the trademark of the defendant. The defendant s mark consisted of the figurative mark CARTIL, registered in Class 30. The plaintiff appealed against the administrative and judicial decision that refused its trademark CARTIGEL on the grounds that there was a risk of confusion with the defendant s trademark CARTIL. The plaintiff also stated that it was the owner of the trademark CARTILOGEN, which was registered prior to the defendant s mark. The High Court of Lisbon, holding that there is a likelihood of confusion and association between the trademarks CARTIGEL and CARTIL, upheld the previous decisions of refusal. 782 The Court found that although the trademarks designated goods in different classes, there was a relationship of affinity between the goods 781. Lusomilhões S.A. v. Santa Casa de Misericórdia de Lisboa, Case No. 115/08.7TYLSB (Court of Commerce of Lisbon, Jan. 1, 2010) DIETMED Produtos Dietéticos e Medicinais, Lda. v. NATIRIS Centro Dietético, Lda., Case No /09-6 (High Court of Lisbon, Feb. 15, 2010).

329 1126 Vol. 101 TMR concerned, and also that there was a likelihood of confusion and association between these signs because, when confronted with the trademark CARTIGEL, consumers would believe that they were in the presence of a derivative or variation of the defendant s product with the mark CARTIL. Finally, the Court held that the fact that the plaintiff already owned a trademark registration for CARTILOGEN did not constitute a precedent or imply that there was a duty on the part of the IPO or the judicial appellate bodies to accept the registration of the trademark CARTIGEL. The importance of this decision lies in the fact that even if the applicant was the owner of an earlier registration for a trademark that was similar to the one that it intended to protect, this registration could nevertheless be refused if the respective trademark was confusingly similar to another mark. ROMANIA I.C. Distinctiveness A cancellation petition was filed against the trademark EDITURA ALEXANDRIA 783 on the basis of alleged similarity with the earlier mark ALEXANDRIA LIBRARII. 784 The petition was granted by the Court of First Instance 785 and reversed by the Court of Appeals. The Court of Appeals examined two marks that both consisted of the same geographical indication (ALEXANDRIA) and a separate descriptive term: ALEXANDRIA LIBRARII (meaning ALEXANDRIA BOOKSTORES in Classes 16, , 787 and ) and EDITURA ALEXANDRIA (meaning ALEXANDRIA PUBLISHING ) in Classes 16 and 35. The court examined the marks with regard solely to the issue of distinctiveness between them and the potential confusion of the public and did not discuss the marks themselves or their actual distinctiveness as marks (given the fact that both consisted of a geographical indication Romania has a city by the name of Alexandria and the descriptive terms LIBRARII and EDITURA, respectively). It ruled that no risk of confusion existed between the two marks, as they 783. Registration No. M , granted Aug. 31, Registration No. M , granted Feb. 22, Decision No. 519 (Apr. 9, 2009) Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers type; printing blocks Advertising; business management; business administration; office functions Education; providing of training; entertainment; sporting and cultural activities.

330 Vol. 101 TMR 1127 were deemed to be visually, phonetically, and conceptually sufficiently distinct from each other. 789 The court s ruling on no risk of confusion heavily relied on the fact that the target group for each of the compared trademarks (book readers) were of extended intellectual development and anticipated attention. Moreover, as the prior registered mark was deemed to be a weak mark, consisting of a geographical indication and a descriptive term, the court considered it unfair to allow such a mark to act as the ground for prohibiting the registration of the subsequent mark. III.E.2. Damages A decision of the Court of First Instance 790 was appealed concerning infringement of trademark rights, seizure of counterfeit goods, dilution, damages calculation, and assessment of moral and material harm relating to the LACOSTE and Crocodile Device 791 for Eau de Toilette products (see below illustration). The decision was affirmed by the Court of Appeals in relation to damages. The Court of Appeals examined the issue of infringement, counterfeit goods, and damages and affirmed the earlier decision that had awarded damages to Lacoste because of infringement of its trademark rights. The court decided in favor of Lacoste and quashed the appeal filed by SC M.P. S.R.L. 792 Thousands of counterfeit LACOSTE perfumes were seized and a damages calculation formula was applied as 1 percent of the estimated total of sales of the infringer s seized goods; in doing so, the Court of Appeals held that no unfair burden of proof should be placed on the legitimate trademark owner by requesting disproportionate evidence of sales achieved by the infringer. The court considered that there may have been moral and material prejudice against the legitimate trademark owner SC Editura Alexandria S.R.L. v. Sedcomlibris SA, Decision No. 84A/ (Bucharest Court of Appeals, Section IX Civil Section/Intellectual Property Division, Mar. 25, 2010) Decision No. 229 (Feb. 17, 2009) IR Nos and , filed Apr. 25, SC M.P. SRL v. La Chemise Lacoste SA, Decision No. 35A/ (Bucharest Court of Appeals Section IX Civil Section/Intellectual Property Division, Feb. 4, 2010).

331 1128 Vol. 101 TMR RUSSIAN FEDERATION I.D.3. Conflict Between Trademarks and Corporate Names Noviy Knizniy Centre, LLC (New Book Centre LLC) initiated an administrative proceeding against an individual entrepreneur, Mr. Dontsov, in the Arbitrazh Court of the Chelyabinsk District alleging infringement of the trademark CHITAI-GOROD in Cyrillic letters (ЧИТАЙ - ГОРОД). 793 The Centre sought a court order (1) enjoining Mr. Dontsov from using the CHITAI-GOROD trademark, and (2) requiring the removal of all signage bearing the CHITAI-GOROD trademark from each of Mr. Dontsov s stores. The Centre also sought an award of RUR 100,000 (approximately USD 3,240) as damages for the infringement of those trademark rights. The Arbitrazh Court of the Chelyabinsk District dismissed the lawsuit on the following grounds: 1. Mr. Dontsov had used the designation CHITAI-GOROD as a trade name on signage for his book stores, stationery, and office supply stores and toy shops since 1997; 2. The trademark CHITAI-GOROD, which was registered in the name of Rosmen Kansler, LLC in 2002 for books, stationery and toys, was assigned to the Centre in 2009; 3. Mr. Dontsov s trade name was identical to the Centre s registered trademark and both were used by the parties in connection with the sale of books, office supplies and toys; and 4. Mr. Dontsov s use of the designation CHITAI-GOROD as a trade name predated the filing date of the Centre s trademark application for CHITAI-GOROD and the assignment. The court s decision was based upon item 6 of Article 1252 of the Fourth Part of the Civil Code of the Russian Federation, 794 which provides as follows: If various means of individualization (a firm name, trademark, service mark or trade name) turn out to be identical or confusingly similar, and as a result of this identity or similarity consumers and/or business partners may be 793. Case No. А / (Arbitrazh Court of the Chelyabinsk District, Nov. ember 05, 2009), available at (in Russian).794. Fourth Part of the Civil Code of the Russian Federation No. 230-FZ, Dec. 18, 2006 (adopted by State Duma Nov. 24, 2006, approved by Federation Council Dec. 8, 2006, effective Jan. 1, 2008) Fourth Part of the Civil Code of the Russian Federation No. 230-FZ, Dec. 18, 2006 (adopted by State Duma Nov. 24, 2006, approved by Federation Council Dec. 8, 2006, effective Jan. 1, 2008).

332 Vol. 101 TMR 1129 misled, then preference shall be for the means of individualization in which the exclusive right occurred earlier. The Centre appealed the decision to the Federal Arbitrazh Court of the Ural District. 795 The appeal was dismissed and the Centre, and then appealed to the Supreme Arbitrazh Court of the Russian Federation for a supervisory review of both rulings. 796 The Supreme Court found no basis for supervisory review of the lower courts decisions. This decision follows the line of the Supreme Arbitrazh Court rulings providing protection to trade names whose use has occurred earlier than the filing date of the conflicting registered trademark. II.C.1.c. Corporate and Trade Names PM, LLC, a company established by the former singers of the pop group called PREMIER MINISTR, submitted an application to the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) for registration of the trademark PREMIER MINISTR in Classes 9, 35, 41, and 42. The mark was refused registration because PREMIER MINISTER had been used as the name of a well-known pop group long before the filing date of the application by PM, LLC. PM, LLC appealed to the Moscow Arbitrazh Court, which affirmed the decision of Rospatent s Chamber for Patent Disputes. 797 The court pointed to the fact that producer Mr. Fridlyand had created the group and had authored a project called Creation of a pop group called PREMIER MINISTR prior to PM s application. After 6 months, PM, LLC again applied to the Moscow Arbitrazh Court, requesting it to revise its previous decision in the light of a decision from the Tver District Court of Moscow, which refused to recognize Mr. Fridlyand s copyright in the project. 798 The appellate court sustained the claim and vacated the previous Moscow Arbitrazh Court decision, holding that Rospatent and the Chamber for Patent Disputes erroneously applied Article 6.3 of the Federal Trademark Law, 799 which provides that: 795. Case No. F /10-С6 (Federal Arbitrazh Court of the Ural District, Mar. 3, 2010), available at (in Russian) Case No. VAS-8458/10 (Supreme Arbitrazh Court, June 28, 2010), available at (in Russian) Decision of the Chamber for Patent Disputes on trademark application No /50 (Feb. 4, 2007), available at / pdf Case No /07 (Tver District Court of Moscow, Sept. 18, 2007) Federal Law No On Trademarks, Service Marks and Appellations of Origin of Goods, Sept. 23, 1992, as amended by Federal Law No. 166-FL, Dec. 11, 2002; in force until Jan. 1, 2008.

333 1130 Vol. 101 TMR there shall not be allowed to register as trademarks designations representing or containing elements which are false or capable of misleading consumers with respect to a product or a manufacturer thereof. The court also relied on the decision from the Tver District Court of Moscow that denied Mr. Fridlyand s copyright in the description of the project. On appeal, the Ninth Appellate Arbitrazh Court reversed the lower court s decision, holding that the name of the pop group PREMIER MINISTR had been used and had become known before the filing date of PM, LLC s trademark. In particular, the appellate court ruled that the decision of the Tver District Court of Moscow had not denied the personal contribution of Mr. Fridlyand to the creation and the execution of the project, the disputed name had been in use since 1998, and the public had associated the PREMIER MINISTR pop group with Mr. Fridlyand. The appellate court also found that according to the contracts between the producer and the former singers of the group, the right to the name of the project belonged to the producer. 800 The Federal Arbitrazh Court of Moscow District affirmed the decision of the Ninth Appellate Arbitrazh Court. 801 The Supreme Arbitrazh Court of the Russian Federation affirmed the resolutions of the Ninth Appellate Arbitrazh Court and of the Federal Arbitrazh Court of the Moscow District. 802 The courts held that if the name of the musical group had been used by the producer (who was also the founder of the group and who was also the copyright owner of the intellectual property associated with the group in the same area of activity as covered by the specification of goods and services of the disputed trademark) and if the public had associated the name with the founder of the group, the right to such name should belong to such person and not to those who had performed in this group as singers and filed the trademark application. SERBIA I.C. Distinctiveness Visa International Service Association (Visa) filed an application with the Serbian Intellectual Property Office (IPO) to 800. Case No. 09АP-11663/2009, 09АP-11664/2009 (Ninth Appellate Arbitrazh Court, July 31, 2009), available at (in Russian) Case No. КА-А40/ (Federal Arbitrazh Court of Moscow District, Nov. 11, 2009), available at (in Russian) Case No. VAS-5752/08 (Supreme Arbitrazh Court, Mar. 10, 2010), available at (in Russian).

334 Vol. 101 TMR 1131 register the word mark MORE PEOPLE AROUND THE WORLD GO WITH VISA for the various services in Class 36 (insurance, financial affairs, monetary affairs, real estate affairs). The Serbian IPO objected to the application by issuing an official action. 803 The IPO stated that the applied-for trademark possessed no distinctive characteristics of the services and that it simply designated the type, purpose, and other characteristics of the services. 804 According to the IPO, the applied-for mark was descriptive, with no color claim and without any graphic element; it could not be recognized as a trademark because it was simply a statement that more people around the world travel with VISA. In an extensive response to the official action of the IPO, the applicant stated that all slogans have descriptive characteristics to a certain extent and that the purpose of a slogan is to be a memorable motto or phrase. In addition, their slogan, the applicant claimed, contained the registered trademark VISA; the applicant emphasized that numerous slogans had been granted as trademarks in the past. The IPO did not accept these arguments and rejected the applied-for trademark in the first instance decision, 805 showing stricter criteria for recognition of trademarks in the form of slogans, even if they contain previously registered trademarks of the applicant. II.D.6. Flags, Coats of Arms, and Other Insignia RE/MAX International, Inc. (RE/MAX) applied to register the device mark BAR DESIGN (IN COLOR) for the various services in Classes 35 (advertising, business management, business administration, office functions) and 36 (insurance, financial affairs, monetary affairs, real estate affairs). The Serbian IPO objected to the application by issuing an official action, 806 claiming that the applied-for trademark resembled the national flags of the Netherlands, Croatia, Luxembourg, and Paraguay No. Z /1 (Intellectual Property Office, Sept. 22, 2009) Article 5, Paragraph 1, p. 2, of the Trademark Law provides: A trademark shall not be used to protect a mark that has a general appearance that does not enable goods and/or services to be distinguished in the course of trade No. Z /2 (Intellectual Property Office, Jan. 12, 2010) No. Z /2 (Intellectual Property Office, Sept. 30, 2008) Article 5, Paragraph 1, p. 13, of the Trademark Law provides: A trademark shall not be used to protect a mark that comprises... state or other public coat of arms, flag or other emblem, name or abbreviation of the name of a country or of an international organization, or imitations thereof, unless the competent authority of the country or organization concerned has given its authorization for such use.

335 1132 Vol. 101 TMR The options in this matter were to obtain the corresponding authorizations required by Article 5, Paragraph 1 of the Trademark Law or to disclaim the proposed representation of the mark and inform the IPO that the applicant was interested only in protection of the particular color combination. The response was based on the following arguments: Additional heraldic elements on the flags created dissimilarities between the applied-for mark and the national flags of the Republic of Croatia and the Republic of Paraguay. The shades of red and blue on the applied-for mark were different from the shades on the Luxembourg flag. Geometrical characteristics of the mark (square) did not indicate that the mark represented a flag. The applicant was interested in protection of the applied-for color combination and had no intention of using the mark in a manner that would create an association with the flags of the respective countries. In support of these arguments the applicant submitted evidence of how the mark was, in fact, used on the market (as the background color combination for their advertisements, logos...). Evidence of registration was submitted concerning the applied-for mark and variations thereof in other jurisdictions. The IPO accepted the arguments against similarity of the applied-for mark to the flags of the Republic of Croatia and the Republic of Paraguay, because the flags of the said countries also comprised additional heraldic elements. However, the IPO did not change its position regarding the similarity of the mark to the Netherlands and Luxembourg flags and refused registration based on the following grounds: The applied-for mark resembled the Netherlands flag. The applied-for mark resembled the Luxembourg flag, notwithstanding the fact that the mark, on the one hand, and the flag, on the other, comprised different shades of red/blue. The IPO believed that the consumers would not be able at all times to directly compare the mark and the flag by viewing them side by side but would rely on vague recollection of the mark and the flag; therefore the consumer would not be able to notice the differences. The IPO stated that it was not obliged to take into consideration the decisions of foreign authorities (the fact that the applied-for mark had been granted protection in other jurisdictions), but instead could decide based on the

336 Vol. 101 TMR 1133 circumstances of the particular case under the relevant provisions of the Serbian Trademark Law. The actual use of the mark in commerce was not relevant when estimating whether the mark fulfilled the requirements for registration. 808 SINGAPORE I.A.4. Quantity and Quality of Use Louis Vuitton Malletier (LVM), a French company specialising in fashion products, brought an infringement action against City Chain Stores (S) Pte Ltd (CCS), part of a retail chain that is owned and operated by a Hong Kong company, for marketing a range of watches bearing flower devices on the dial and strap. LVM is the owner of a trade mark (the Flower Quatrefoil mark ) consisting of a circle surrounded by four identical-shaped petals arranged around the circle (below, illustration at left). The Flower Quatrefoil mark is registered in a number of classes. CCS s device (the Solvil flower device ) also consisted of a stylised fourpointed flower (below, illustration at right). The High Court of Singapore found CCS liable for trade mark infringement under Sections 27(1), (2), 810 and 808. No. Z /4 (Intellectual Property Office, June 30, 2010) Trade Marks Act, Act 46 of 1998, Cap 332, 2005 rev. ed. Section 27(1) of the Act provides: A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered Section 27(2) of the Act provides: A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered; or

337 1134 Vol. 101 TMR of the Singapore Trade Marks Act and for passing off. The trial judge held that CCS s argument that the use of the Solvil (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public Section 55 of the Act provides: (1) A well known trade mark shall be entitled to protection under this section (a) whether or not the trade mark has been registered in Singapore, or an application for the registration of the trade mark has been made to the Registrar; and (b) whether or not the proprietor of the trade mark carries on business, or has any goodwill, in Singapore. (2) Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore, in the course of trade and without the proprietor s consent, of any trade mark which, or an essential part of which, is identical with or similar to the proprietor s trade mark, in relation to identical or similar goods or services, where the use is likely to cause confusion. (3) Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore, in the course of trade and without the proprietor s consent, of any trade mark which, or an essential part of which, is identical with or similar to the proprietor s trade mark, in relation to any goods or services, where the use of the trade mark (a) would indicate a connection between those goods or services and the proprietor, and is likely to damage the interests of the proprietor; or (b) if the proprietor s trade mark is well known to the public at large in Singapore (i) would cause dilution in an unfair manner of the distinctive character of the proprietor s trade mark; or (ii) would take unfair advantage of the distinctive character of the proprietor s trade mark. (4) Subject to subsections (6) and (7), the proprietor of a well known trade mark shall be entitled to restrain by injunction the use in Singapore without the proprietor s consent of any business identifier which, or an essential part of which, is identical with or similar to the proprietor s trade mark, where the use of the business identifier (a) would indicate a connection between the business in respect of which it is used and the proprietor, and is likely to damage the interests of the proprietor; or (b) if the proprietor s trade mark is well known to the public at large in Singapore (i) would cause dilution in an unfair manner of the distinctive character of the proprietor s trade mark; or (ii) would take unfair advantage of the distinctive character of the proprietor s trade mark. (5) If the Court grants an injunction under subsection (4) restraining the use by any business of any business identifier, the Court may make such other order as the Court deems fit in respect of any entry in any record maintained by any person, body or authority which associates that business with that business identifier. (6) The proprietor shall not be entitled to the right referred to in subsection (2), (3) or (4) if the use of the trade mark or business identifier, as the case may be, began before the proprietor s trade mark became well known in Singapore, unless the trade mark or business identifier has been used in bad faith.

338 Vol. 101 TMR 1135 flower device as a mere decoration or embellishment meant that there was no trade mark use was not a defence found under Section 28 of the Act. 812 What was important was that the use of (7) The proprietor shall cease to be entitled to the right referred to in subsection (2), (3) or (4) if the proprietor has acquiesced for a continuous period of 5 years in the use of the trade mark or business identifier, as the case may be, in Singapore, being aware of that use, unless the trade mark or business identifier has been used in bad faith. (8) In deciding whether the trade mark or business identifier, as the case may be, has been used in bad faith, it shall be relevant to consider whether the person who used the trade mark or business identifier had, at the time he began to use the trade mark or business identifier, knowledge of, or reason to know of, the proprietor s trade mark. (9) Nothing in subsection (2) shall affect the continuation of any use referred to therein in good faith of a trade mark that was begun before 15th January (10) Nothing in subsection (3) or (4) shall affect the continuation of any use referred to therein in good faith of a trade mark or business identifier, as the case may be, that was begun before 1st July (11) For the purposes of this section and sections 55A, 56, 57 and 59, use, in relation to a trade mark, means use within the meaning of section 27(4) Section 28 of the Act provides: (1) Notwithstanding section 27, a person does not infringe a registered trade mark when (a) he uses (i) his name or the name of his place of business; or (ii) the name of his predecessor in business or the name of his predecessor s place of business; (b) he uses a sign to indicate (i) the kind, quality, quantity, intended purpose, value, geographical origin or other characteristic of goods or services; or (ii) the time of production of goods or of the rendering of services; or (c) he uses the trade mark to indicate the intended purpose of goods (in particular as accessories or spare parts) or services, and such use is in accordance with honest practices in industrial or commercial matters. (2) Notwithstanding section 27, a person does not infringe a registered trade mark by using an unregistered trade mark that is identical with or similar to the registered trade mark in relation to goods or services identical with or similar to those for which the trade mark is registered if he, or he and his predecessor in title, have continuously used in the course of trade the unregistered trade mark in relation to those goods or services from a time before (a) the date of registration of the registered trade mark; or (b) the date the proprietor of the registered trade mark, or a predecessor in title, or a person who was a registered user of the trade mark under the repealed Act, first used the trade mark, whichever is the earlier. (3) Notwithstanding section 27, a registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered. (4) Notwithstanding section 27, a person who uses a registered trade mark does not infringe the trade mark if such use

339 1136 Vol. 101 TMR the Solvil flower mark amounted to use in the course of trade within the meaning of Section 27. CCS appealed. The Court of Appeal reversed the trial judge s decision, holding that there was no trade mark infringement or passing off by CCS. 813 Pertinently, the court held that for an action for infringement under Section 27 to succeed, the offending use must be use of a trade mark. As CCS s use of the Solvil flower device was as a mere decoration, there was no infringement under Section 27. The Court of Appeal rejected the European Court of Justice s broader test of whether the infringing use is liable to affect the functions of the registered trade mark. It was concerned that this approach would unnecessarily broaden the monopoly rights granted to trade mark proprietors. While the court acknowledged that there were possible uses of marks outside of trade mark uses that might nevertheless affect the functions of a registered mark, it considered such uses likely to be few and far between. The stricter approach adopted was deemed to be more consistent with Article 5(5) of the European Trade Marks Directive 814 and with the object of trade mark law. This decision established Singapore s position on whether a registered mark needs to be used as a trade mark for there to be infringement. The Court of Appeal held that trade mark use was not required. SLOVENIA I.B.2. Merely Descriptive and Deceptive Pivovarna Laško d.d. applied for the registration of the word mark CIDER to cover goods and services in Classes 30, , , , 818 (a) constitutes fair use in comparative commercial advertising or promotion; (b) is for a non-commercial purpose; or (c) is for the purpose of news reporting or news commentary City Chain Stores (S) Pte Ltd v. Louis Vuitton Malletier, [2009] SGCA 53 (Court of Appeal of Singapore, Nov. 6, 2009) First Council Directive 89/104/EEC to Approximate the Laws of the Member States Relating to Trade Marks, Dec. 21, Article 5(5) of the Directive states: Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark Cocoa, sugar, artificial coffee, tapioca, sago, etc Cider, ice tea, ice tea with added fruit syrup, tea, tea-based beverages, chocolatebased beverages, etc Alcoholic beverages (except beer), rum, rum with less alcohol, etc.

340 Vol. 101 TMR 1137 and The Slovenian Intellectual Property Office rejected the mark CIDER for all the goods in Classes 30, 32, and 33 for being either descriptive (cider) or deceptive (all other products for which protection was sought in the above-stated classes). It allowed the continuation of the registration procedure for services in Classes 35 and 39. In its decision, the IP Office stated that the mark CIDER was a word mark with no graphical elements that would add to its distinctiveness. Furthermore, the applied-for mark was an English word, cider, which in Slovenian meant jabolčnik (apple wine). The registration of this mark for apple wine would allow its applicant the monopolization of the word cider, which had in its Slovenian translation a clear and undisputed meaning. The IP Office stated that English language was present in Slovenia to the extent that an average Slovenian consumer would recognize the meaning of the word cider, that is, the English translation for jabolčnik (cider wine). For the other goods in Classes 30, 32, and 33, the IP Office found the mark to be deceptive, because under the mark CIDER an average consumer would expect apple wine or goods consisting of apple wine. The Administrative Court, in its decision overruling the IP Office s decision, stated that a relevant consumer was a person who was reasonably well informed, attentive, and observant, while the level of attentiveness would vary depending on the sector. The consumer s attention would be lower with everyday goods and higher with more expensive goods. If a trademark protection were sought for the word in a foreign language, the success with the registration would depend on how broadly the language was spoken, how well known the word was, and how customary it was for the word to be used with regard to certain types of goods. In the court s opinion, the word CIDER was not well-known in Slovenia, because as a product consisting of alcohol this product was not well-known to the point that it could be concluded that an average Slovenian consumer would recognize its English translation. For the same reason the mark was found to be not deceptive in connection with the remaining goods. The court returned the matter to the IP Office with the instruction that when making its decision the IP Office must consider the court s legal opinion Wholesale and retail of beer, mineral waters and aerated waters and other soft drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages, drinking water, water with additives (non-alcoholic drink), advertising, marketing services, economic propaganda business management, business administration, office functions, administrative services, polls, auctioning, etc Bottling, packaging and storage of beverages, especially beer, beer mixtures, all types of beers, soft drinks, mineral waters, drinking water, table water, soda, juice, beer and juice blends, alcoholic beverages, transportation, organization of trips, storage of goods, etc.

341 1138 Vol. 101 TMR The decision is important because there is, in fact, a thin line between the foreign-language words whose meaning can be recognized by an average Slovenian consumer and those words whose meaning cannot be recognized. With this decision, the court set a certain legal standard with respect to the understanding of the average consumer. III.A.5. Domain Names The complainant, Hasbro Inc., claimed that it was the owner of the well-known trademarks HASBRO, PLAY-DOH, and MY LITTLE PONY, valid also in Slovenia. Hasbro also claimed that Spectra International d.o.o., the domain name holder of Hasbro.si, playdoh.si, and mylittlepony.si, had no legal interest in those names and was not connected to the complainant in any way. A distribution agreement was executed between Hasbro and Spectra in 2008, on the basis of which Spectra became the distributor of the complainant s products in Slovenia. In this agreement, Spectra bound itself not to infringe the complainant s IP rights and not to register or attempt to register, directly or indirectly, any patents, trademarks, or other property rights other than in the name of Hasbro. If, however, they had not entered into an agreement at the time of the registration of the domain names subject to this procedure, the bad faith of Spectra was even more evident. During the validity of the distribution agreement, the domain name holder did not transfer the domain names in question to the complainant, and when the agreement expired it even prolonged them, meaning that the domain names had been used in bad faith. Bad faith was also evident from the fact that the domain names had not been used even though they were registered three years ago. Spectra stated that the domain names were registered on the initiative of Hasbro, because, at the time, foreign entities were not allowed to register the domain names under the top level domain.si. The business cooperation was cancelled unilaterally by the complainant, and a procedure for a compulsory settlement was initiated against the domain name holder within which it refrained from asserting the right to separation. Spectra did not have the power of disposal because of the equal treatment of the creditors. The Arbitration Court concluded that the domain names were identical to the complainant s marks and that the domain name holder had no legal interest with respect to the domain names in question because the business cooperation between the complainant and the domain name holder no longer existed Pivovarna Laško d.d. v. Slovenian Intellectual Property Office, Case No. I U 1087/2009 (Slovenian Administrative Court, Mar. 9, 2010), available at

342 Vol. 101 TMR 1139 However, the Arbitration Court established that even though the business cooperation no longer existed, during its validity the use of the domain names was unquestionable and presumably even expressly supported by the complainant. Furthermore, the court found that as a result of the compulsory settlement procedure initiated against the domain name holder, the alleged use of the domain names in bad faith was doubtful. Consequently, the Arbitration Court rejected the complaint, since the complainant failed to prove that the domain names in question had been used in bad faith. 821 The decision is important because it established the practice regarding the use of a domain name in bad faith and because there are not many decisions concerning the top-level domain si. REPUBLIC OF SOUTH AFRICA III.A.3.b. Criminal Actions In Puma AG Rudolf Dassler Sport v. Rampar Trading (Pty) Ltd, 822 Puma was the registered proprietor of a trade mark registration for PUMA SPLIT FORM STRIP Device 823 in Class 25 in respect of, inter alia, footwear (see below). The Supreme Court of Appeal (SCA) was required to consider whether the footwear sold by Rampar (see below) constituted counterfeit goods Hasbro Inc. v. Spectra International d.o.o., ARDS 2010/37 (Arbitration Court, May 15, 2010) (59/10) [2010] ZASCA 140 (Nov. 19, 2010), available at courts/dl/system/courts/supreme_court/judgements/2010/4/1586_ pdf No. 2004/14412, registered Mar. 4, 2008.

343 1140 Vol. 101 TMR In September 2009, inspectors appointed under the Counterfeit Goods Act 824 detained a consignment of shoes imported by Rampar on suspicion that they were counterfeit. Subsequent to a complaint by Puma the police applied for and obtained a search and seizure warrant pursuant to Section 6 of the Act and the goods were removed to a counterfeit depot. Rampar brought an urgent application in the Durban High Court to set aside the warrant and the subsequent search and seizure, and it sought a declaration that the goods were not counterfeit. The first issue considered by the SCA was whether cloning was required. It observed that although the definition of counterfeiting in the Act was somewhat opaque, one thing is clear: it [counterfeiting] is not the same as copyright or trade mark infringement it requires more. In considering the background to the Counterfeit Goods Act, the SCA observed that the Act had its genesis in the TRIPS Agreement. It pointed out that there is a distinction between copyright piracy and trade mark counterfeiting, observing that the concepts in paragraph (b) 825 of the definition of counterfeiting, 824. Act No. 37 of 1997, as amended In terms of paragraph (b), counterfeiting means without the authority of the owner of any intellectual property right subsisting in the Republic in respect of protected goods, manufacturing, producing or making, or applying to goods, whether in the Republic or elsewhere, the subject matter of that intellectual property right, or a colourable imitation thereof[,] so that the other goods are calculated to be confused with or to be taken as being

344 Vol. 101 TMR 1141 namely colourable imitation and calculated to be confused, were cast in traditional trade mark terminology. The SCA concluded that paragraph (b) of the definition covered any particular class or kind of goods that might bear a registered trade mark but that had not yet been produced or to which the trade mark had not yet been applied with the authority of or by the IP owner. Having found that the goods protected by paragraph (b) were not actual goods but notional goods (i.e., goods to which the owner could have applied the trade mark), the Court further concluded that counterfeiting was possible without cloning and the fact that Puma might not have produced a shoe bearing the trade mark in question did not mean that Rampar s shoes could not be counterfeit. Turning to the second question, namely whether the shoes were counterfeit, the SCA said the test was not the same as the standard trade mark infringement test of likely to deceive or cause confusion because counterfeiting, by its very nature, amounts a fortiori to trade mark infringement. It described the test as follows: An imitation, in turn, is by definition a copy, and the adjective colourable reinforces the fact that the copy is counterfeit. In other words, the definition says no more than that a counterfeit must be counterfeit. That is why it must be calculated to be confused with or taken as being the registered mark and why it involves deliberate and fraudulent infringement of trade marks. 826 Comparing Rampar s shoes with Puma s SPLIT FORM STRIP Device trade mark, the Court had little difficulty in concluding that the shoes were calculated to be confused with or taken as being those of Puma and accordingly were counterfeit. Rampar had argued that the SPLIT FORM STRIP Device mark as used on its shoes would be perceived as decorative and not as trade mark use. The SCA rejected that argument: One also cannot use a trade mark and then argue that it was used as ornamentation. It could be different if one is dealing with changes to the mark, for instance, if the registered mark consists of three stripes it would be a question of fact whether the use of two or four stripes would be perceived as decorative or as trade mark use but one could not, I would think, use the same argument in relation to the use of three stripes. Accordingly, the SCA upheld the appeal, finding that the shoes constituted counterfeit goods. the protected goods of the said owner or any goods manufactured, produced or made under his or her licence (59/10) [2010] ZASCA 140 para. 23 (Nov. 19, 2010) (citations omitted).

345 1142 Vol. 101 TMR This case is significant for two reasons. First, it contains a clear interpretation of what constitutes counterfeit goods and clarifies that cloning is not a requirement. Second, it qualifies a statement made in an earlier decision 827 clarifying that one cannot use a trade mark and then argue that it was used as ornamentation. SOUTH KOREA I.C. Distinctiveness On October 13, 1998, Woori Finance Holdings Co., Ltd. applied for the registration of a service mark (see below) indicating a designated service business, including those in Class 36, such as banking, international finance, lending and safe rental business. The mark was registered on August 31, Kookmin Bank Co., Ltd. brought an action for invalidation of the mark on the grounds that (1) the mark lacked distinctiveness and (2) domination of the mark by a certain party would disrupt public order or run counter to public morals. The Korean Intellectual Property Tribunal dismissed the plaintiffs claim. 828 It found that an overall examination revealed that the contested mark had distinctiveness as it formed a distinctive new concept, 우리은행, among all the other banks, and its registration did not constitute a breach of public order or virtuous customs deemed to be the prevailing moral sense of the ordinary people, as stipulated in Article 7(1)(4) of the Trademark Act. The Patent Court reversed the Intellectual Property Tribunal s decision and revoked the defendant s registration, on the ground that the mark lacked distinctiveness with regard to banking, international finance, etc. among the designated service businesses. At the same time, however, the Patent Court dismissed the plaintiffs claim on the grounds that the mark had acquired distinctiveness by its use with regard to a certain designated service business for which the use of the registered service mark had been recognized, and that the mark did not violate Article 7(1)(4) of the Trademark Act Puma AG Rudolph Dassler Sport v. Global Warming (Pty) Ltd, Case No. 408/08, [2009] ZASCA 89 (Sept. 11, 2009), also reported at 100 TMR 627 (2010) Case No Dang 893 (Korean Intellectual Property Tribunal.

346 Vol. 101 TMR 1143 On appeal, the Supreme Court found that the defendant s mark was a service mark composed of two Korean words, 우리 and 은행. In Korean, 우리 (meaning we or our ) is a first person pronoun that refers to the speaker and the listener, or a multiple number of persons, including the speaker and the listener, and the word is so commonly used by the general public that its distinctiveness cannot be recognized easily. The word 은행 also lacked distinctiveness, as it was an indication of the designated service business. Further, the combination of the two words did not create a new concept or form new distinctiveness. For this reason, the mark constituted a service mark that does not enable consumers to recognize whose goods it indicates in connection with a person s business, as described in Article 6(1)(7) of the Trademark Act. In addition, granting registration of the service mark was likely to disrupt public order by interfering with the rights of the public to freely use the word 우리 and consequently undermined the public interest as a whole, and it violated a fair distribution order of service business by allowing the holder to dominate the interest in the word 우리, or by giving a favor to the holder, otherwise. As such, the service mark was unregistrable as it constituted a service mark that does not enable consumers to recognize whose goods it indicates in connection with a person s business, as described in Article 6(1)(7) of the Trademark Act. Therefore, registration of the mark could not be granted with regard to a certain designated service business for which the mark had acquired distinctiveness by its use. 829 This case is meaningful in that it provides criteria for judgment on a mark lacking distinctiveness, and gives a clear definition of a mark that is feared to disrupt public order or public morals. I.D.1. Similarity of Marks This case relates to invalidation of trademark registration on the grounds of the existence of a prior-registered trademark consisting of an identical or similar product and mark. Defendant Daeyoon Trade Co., Ltd. had filed on November 10, 2004, a trademark application for ESPRADA (below, illustration at left), indicating a designated product, including those in Class 24, such as padded blankets and mattress covers. Registration was granted in April Plaintiff Prada S.A. was the owner of the prior-registered trademark PRADA (below, illustration at right), 829. Kookmin Bank Co., Ltd. et al. v. Woori Finance Holdings Co., Ltd., Decision 2007 Hu 3301 (Supreme Court, May 28, 2009) Trademark No , registered Apr. 24, 2006.

347 1144 Vol. 101 TMR covering 13 designated products and services, including those in Class 24, such as mattress covers, cotton, etc. 831 The Korean Intellectual Property Tribunal dismissed the plaintiff s request for judgment, on the grounds that the defendant s trademark was not similar to the plaintiff s trademark. 832 The Patent Court disagreed. 833 The defendant s trademark appeared to be partially similar to the plaintiff s trademark, because only the letters ES were added and the other letters were identical, despite the difference in style. In addition, considering the degree to which the PRADA trademark was known in Korea at the time when the defendant applied for registration of its mark, as well as Koreans level of command of the English language, general consumers and traders were likely to regard the word element ES as a prefix and pronounce it as Is or Es with no stress given, while enunciating the latter part of the mark, PRADA, relatively strongly. Thus, the two marks were similar in terms of appellation. As the marks were similar in both appearance and appellation, they were deemed to be similar as a whole. This case provides criteria for the determination of similarities between a well-known mark and a trademark that has some letters in common with the well-known mark. On September 4, 2007, DAOU Tech, Inc. applied for the registration of the service mark DAOU & KIWOOM (below, illustration at left), to cover a designated service, including those in Class 37, such as renovation and foundation works of buildings, etc. The Korean Intellectual Property Office (KIPO) refused registration, citing the prior-registered service mark DOW (below, illustration at right), covering six designated services, including those in Class 37, such as construction of heat insulation facilities in buildings and audit of heat insulation plans for building construction Trademark No , filed Sept. 6, 2000, registered Jan. 29, Case No Dang 3283 (Korean Intellectual Property Tribunal Prada S.A. v. Daeyoon Trade Co., Ltd., Decision 2008 Heo (Patent Court, Apr. 17, 2009) Trademark No , filed Dec. 24, 1999, registered Jan. 14, 2002.

348 Vol. 101 TMR 1145 The Korean Intellectual Property Tribunal dismissed the plaintiff s request for judgment on the KIPO s decision, on the same grounds of refusal as mentioned above. 835 The Patent Court overturned the Tribunal s decision. 836 It found that the marks were similar in terms of appellation DAOU. However, the mark applied for was different from the priorregistered mark in terms of the entire appellation DAOU & KIWOOM. Moreover, the marks under comparison were significantly different, in appearance as well as in concept. Further, considering the proportion of DAOU against the service mark and the degree of its combination with other factors, and the location, overall composition, shape, and concept of the marks, the appellant s mark was unlikely to cause misunderstanding or confusion of its source among general consumers or traders. The importance of this case is that it provides criteria for determining whether marks composed of shapes and letters share similarities with each other. II.C.1.j. Slogans Nike, Inc. applied for the registration of the service mark JUST DO IT (see below), to cover a designated product, including those in Class 25, such as clothing and caps. 837 Registration was refused by the KIPO on the ground that the applied-for mark constituted a service mark that does not enable consumers to recognize whose goods it indicates in connection with a person s business, as described in Article 6(1)(7) of the Trademark Act. The Korean Intellectual Property Tribunal dismissed Nike s request for judgment on the Tribunal s decision, on the same grounds of refusal as mentioned above. 838 Nike appealed Case No Won 7458 (Korean Intellectual Property Tribunal DAOU Tech, Inc. v. Commissioner of the Korean Intellectual Property Office, Decision 2009 Heo 887 (Patent Court, Apr. 24, 2009) Application No , filed Nov. 27, Case No Won 5248 (Korean Intellectual Property Tribunal.

349 1146 Vol. 101 TMR The Patent Court sustained the appeal. 839 It held that if a mark has become conspicuously recognized among consumers or traders as a result of the applicant s use of the mark, notwithstanding that it seems to have no conspicuousness in terms of its concept and its relationship with the designated product, then the mark will no longer be regarded as a trademark having no conspicuousness unless the context requires otherwise, and the applicant will have no difficulty acquiring its registration. This case is important because it establishes clear criteria for judgment, and acquisition of distinctiveness by use, of a mark lacking distinctiveness, in connection with a catchphrase or a slogan of a product. SWITZERLAND I.D.1. Similarity of Marks A trademark owner relied on his Swiss trademark registration for FAIRSICHERUNGSBERATUNG, for consulting services relating to insurance in Class 36. The German word for insurance is Versicherung, which is phonetically almost identical to the word element FAIRSICHERUNG. The trademark owner requested a preliminary injunction against another company, which had filed a number of applications for trademarks containing the element SICHERUNG (e.g., LEBENSFAIRSICHERUNG, DIREKTFAIR- SICHERUNG, RECHTSCHUTZFAIRSICHERUNG), in order to prohibit use of the term FAIRSICHERUNG in business. District Court VIII of Bern-Laupen rejected the request, and an appeal at the Cantonal Court likewise met with no success. Thereupon the applicant appealed to the Federal Supreme Court, which upheld the lower courts rejection of the injunction request. 840 The Supreme Court discussed the issues of similarity of marks and similarity of services only under its limited discretion to decide whether the appealed decision was totally wrong. It found that it was not totally wrong to see a difference between the services rendered by the owner of the older trademark, namely consulting and advising in insurance matters, and the services for which the younger marks were intended to be used (issuing insurance policies). The Court also confirmed the lower courts decision that the mark FAIRSICHERUNGSBERATUNG and the word element FAIRSICHERUNG were similar, but without specific originality because phonetically they were identical to the generic word 839. Nike, Inc. v. Commissioner of the Korean Intellectual Property Office, Decision 2008 Heo (Patent Court, June 26, 2009) Case No. 4A.567/2008 (Federal Supreme Court, Feb. 23, 2009), sic! 5/2009, 348 (FAIRSICHERUNGSBERATUNG / FAIRSICHERUNG).

350 Vol. 101 TMR 1147 Versicherung. Consequently, the Supreme Court confirmed that it was not wrong to deny a danger of confusion. The Federal Administrative Court reversed the decision of the Federal Institute of Intellectual Property and held that the registered trademarks DERMOXANE and DERMASAN were not confusingly similar with regard to cosmetics in Class It found that the word element DERM or DERMO, which means skin in Greek, dominated both marks and therefore provided a very low distinctiveness for the claimed goods. The average consumer would understand this, and therefore the marks were entitled to only a small scope of protection. In fact, the consumer s attention would be directed to the second part of the marks, namely OXANE and SAN, and that was decisive only on the question of similarity of the marks. In its phonetical assessment of the marks, the Court noted that they were not of the same length, though that difference could hardly be recognized phonetically. The vocal sequence was different, being E-O-A-E for DERMOXANE and E-A-A for DERMASAN. In particular, the letter O led to a totally different sound sequence. Thus, one of the most important indications of similarity of marks was absent. Additionally, the Court noted the letter X was used very rarely. With regard to perception, the Court found that OXANE (the combining form of XANE) was a fancy element and SAN came from the Latin word sanus ( healthy ). Thus, the marks were similar in meaning only with respect to the first element, DERM. In summary, the difference in their pronunciation, the conspicuous X in the typeface used for the DERMOXANE mark, and the lack of congruence in meaning in the middle and end parts of the marks resulted in a determination that there was no likelihood of consumer confusion. II.C.1.d. Geographical Names The Federal Administrative Court held that the word mark PARK AVENUE, applied for to cover a magazine title, was registrable. 842 Even though Park Avenue is the name of a wellknown street in New York City, the court determined that the average consumer would recognize the trademark not as a geographic indication but rather as a symbol for luxury and lifestyle. The mark was, furthermore, distinctive because it did not directly describe the content of the publication Case No. B-2235/2008 (Federal Administrative Court, Mar. 3, 2010), sic! 9/2010, 635 (DERMOXANE/DERMASAN) Case No. B-2642/2008 (Federal Administrative Court, Sept. 30, 2009), sic! 3/2010, 173 (PARK AVENUE).

351 1148 Vol. 101 TMR The Federal Institute of Intellectual Property had rejected protection in Switzerland for the international trademark AFRI- COLA, 843 registered for goods in Classes 29 and 30, on the grounds that the mark was in the public domain and deceptive. On appeal, the Federal Administrative Court looked at the mark and the designated goods in detail and came to a more specific solution. 844 First, the court analyzed the trademark itself. It found that the element AFRI was a well-known indication for and abbreviation of Africa, a continent that was well known in Switzerland, and the term COLA was descriptive for a cola soft drink. The court went on to investigate whether the consumer would have specific expectations that the goods in Classes 29 and 30 would come from the African continent, based on an examination of the statistics for trade between Switzerland and Africa. It found that for most goods in Class 30 there was no such expectation on the part of consumers because there was no trade with Africa for such goods. On the other hand, for certain goods, such as coffee, tea, sugar, rice, spices, flour, [and] cereals, there was such trade; consequently, the court held that the mark was deceptive for those goods unless restricted to goods of African origin. The Federal Administrative Court held that the word and design mark CAPRI was misleading for goods in Class 34, namely cigarettes, tobacco, tobacco products, smoking articles, lighters, and matchsticks not originating in Italy IR No , registered Nov. 18, Case No. B-7412/2008 (Federal Administrative Court, Oct. 1, 2008), sic! 9/2009, 621 (AFRI-COLA) Case No. B-6959/2009 (Federal Administrative Court, June 21, 2010), sic! 11/2010, 796 (CAPRI (fig.)).

352 Vol. 101 TMR 1149 According to Swiss jurisprudence an expectation of origin in regard to a famous geographical indication must be negated if the place in question obviously could not qualify as the place of origin or trading of the said goods. In this regard it must be not only unlikely that the place of origin is located there, but in fact an obvious and objective impossibility. Although the growing of tobacco on the island of Capri could not be expected, it was not impossible, especially given the existing infrastructure and the good transport connections. A determination that the mark was misleading did not require that consumers expect that the goods in question indeed originated from Capri. Rather, it was sufficient that they saw in the mark in question an indication of a province from a suitable country. Because of the size of the country, the importance of its agriculture, and the Mediterranean climate, Italy is highly qualified for the growing of tobacco. Therefore, registration of the CAPRI mark was possible only with the limitation all goods originating from Italy for the claimed goods. The Court further noted that the graphic element of the mark, namely the stylized sunbeams, would not prevent a connection in the consumer s mind between those goods and the island of Capri. II.C.1.g. Two- and Three-Dimensional Marks A Swiss applicant that produces writing implements claimed protection for a three-dimensional mark showing different views of a ballpoint pen, to cover services in Classes 35, 40, and 42 (see below). According to Swiss trademark law a three-dimensional mark can be registered only if the form is distinctive, is not necessary to obtain a technical result, and does not result exclusively from the nature of the goods themselves. (The Swiss Trademark Act refers only to forms of goods; it does not refer to forms of services.) Article 2 of the Swiss Trademarks Act provides, in pertinent part, as follows: Excluded from trademark protection are:... b. Forms that do not result exclusively from the nature of the goods themselves and forms of the goods or package that are necessary to obtain a technical result....

353 1150 Vol. 101 TMR The Federal Administrative Court held that three-dimensional marks that claim protection for services can be excluded from protection under the rule of Article 2b of the Trademark Act if their form represents the essence of the services. Thus, while the Court denied trademark protection for the pictured form of a ball pen for certain services because of technical considerations and for other services because of lack of distinctiveness, it noted that this [holding] does not exclude... consideration [of the fact] that normally the theoretical link of a form does not take place with the same directness as in regard to a good, but always requires a further mental step. 847 The Court found that the ball pen illustrated in the mark was not necessary to obtain a technical result and did not result exclusively from the nature of the goods themselves with respect to services such as advertising and marketing, because those services were not essentially linked to a certain form of a ball pen and several further forms were possible. Indeed, the form in question not only was not technically necessary but also was not distinctive, even for the claimed services. However, for distribution of advertising material in Class 35 and services in connection with the personalization of writing utensils, especially by printing writing utensils in Class 40, the Court found that the mark was technically necessary, because from a practical perspective it monopolized the form of a ball pen as such. Experience has shown, said the Court, that ball pens constitute an essential part of the provision of these kinds of services. II.C.1.k. Nontraditional Marks In one of the very rare decisions regarding sound marks, the Federal Supreme Court confirmed the registrability of a melody with seven tones. The applicant had filed for the registration of the melody as a sound mark for chocolate and similar products. The Federal Institute rejected the application, and the Federal Administrative Court confirmed this rejection. On appeal by the applicant, the Federal Supreme Court made clear that short melodies as sound marks have become a rather usual element of communication in advertising and marketing. As long as it is not descriptive for the goods or services and as long as it is new and catchy, the melody must be treated just like any word or device mark. The Supreme Court saw these conditions as being 847. Case No. B-5456/2009 (Federal Administrative Court, June 8, 2010), sic! 1/2011, 34 (ball pen (3D)).

354 Vol. 101 TMR 1151 fulfilled in the case of the mark at issue, and accordingly it allowed registration. 848 II.D.6. Flags, Coats of Arms, and Other Insignia UNOX S.r.l., an Italian company, appealed the Federal Institute s rejection of its application for the extension to Switzerland of protection for the international trademark UNOX & Device, 849 covering goods in Class 11 (see below). The Federal Administrative Court overturned the Federal Institute s decision. On appeal by the Federal Institute, the Federal Supreme Court confirmed the initial rejection and issued a total refusal of registration. It ruled that the mark applied for violated the NZSchG, 850 which protects the name, coat of arms, etc., of the United Nations. 851 According to the Supreme Court, the trademark violated Article 1 of the NZSchG, which provides an absolute bar against use of the name of the United Nations, the abbreviation of which in German is UNO. It was irrelevant whether there was a danger of confusion in the marketplace. III.A.5.a. Cybersquatting The holder of the International Registration for REFODERM, designating Switzerland and claiming protection for goods in Classes 3, 5, 10, and 11, lodged a complaint against the former holder of the domain name Via this domain products of the same classes had been offered for sale until July The Commercial Court of St. Gallen affirmed the existence of trademark infringement and a violation in the area of unfair competition as well. 852 It clearly recognized, however, that the domain was not associated with the trademark holder: 848. Case No. 4A.566/2008 (Federal Supreme Court, Apr. 7, 2009), sic! 7/8/2009, 520 (MELODIE MIT 7 TÖNEN); see 100 TMR 640 (2010) IR No , registered Feb. 3, The abbreviation for Bundesgesetz zum Schutze von Namen und Zeichen der Organisation der Vereinten Nationen und anderer zwischenstaatlicher Organisationen ( Federal Law on the Protection of Names and Symbols of the United Nations Organization and Other International Organizations ) Case No. 4A.250/2009 (Federal Supreme Court, Sept. 10, 2009), sic! 3/2010, 168 (UNOX) Case No. HG (Commercial Court of St. Gallen, Mar. 25, 2010) (REFODERM).

355 1152 Vol. 101 TMR The first and most important element in judging a danger of confusion of a trademark with Internet use in a domain name is the domain name itself. Graphics, contents, or even disclaimers under websites that are displayed under the domain name are not decisive, because the average consumer assumes a connection between the trademark and the website by the simple similarity of the domain name to the trademark. In this case, the cancellation of the domain in question did not eliminate the complainant s legitimate interest in the proceedings, because the former holder did not formally relinquish the domain name as such. III.B. Procedure A German company that owns several service marks in the fields of energy and communications under the name YELLO brought an action for the annulment of the trademarks and domain names with the element YALLO owned by a Swiss provider of mobile communications, on non-use grounds. The court of first instance granted the action in part and declared the nullity of the defendant s trademarks and domain names insofar as the goods and services covered by the plaintiff s trademarks corresponded with the defendant s used and claimed goods and services. The Federal Supreme Court disagreed. It held that in filing an action for annulment for non-use against a trademark, the interest of the applicant in being unhindered in the free forming of marks was sufficient grounds. 853 Therefore, a limitation to the scope of protection of the applicant s trademark was improper. Exceptions were possible solely in cases where the use of the mark in question by the applicant was a priori excluded because of legal or practical grounds. Until the decision of the Federal Supreme Court a non-use action for annulment was possible only if the applicant asserted claims for omission, compensation, or cancellation or sought an exclusive right to use the trademark in question. 854 That meant that the possibilities for filing such an annulment action were limited to concurrent classes of goods and/or services covered by the marks at issue Case No. 4A.330/2008 (Federal Supreme Court, Jan. 27, 2010), sic! 6/2010, 436 (YALLO/YELLO) HGer ZH in Mitt (CALTEX).

356 Vol. 101 TMR 1153 III.F.1. Non-Use In a dispute concerning the well-known liquor brand JAEGERMEISTER, the Federal Administrative Court had to decide whether actual use that was not identical to the registered trademark was sufficient to validate JAEGERMEISTER s International Registration in Switzerland. Mast-Jägermeister AG, the owner of the JAEGERMEISTER brand, had opposed an application by William Grant and Sons Ltd. for registration of the device mark HIRSCH ( deer ) 855 based on its International Registration for a device mark for a deer. 856 In the opposition proceeding the applicant had alleged non-use, which argument was accepted by the Federal Institute. Below are seven examples of the mark as actually used and, at bottom right, the mark as shown in the registration. On appeal, the Federal Administrative Court reversed. The court held that examples 1 6 were sufficient use of the mark, but example 7 (RUDIPASS & Deer Device) was not sufficient. In particular, the court confirmed that minor graphic changes were allowed under Article 11, Section 2 of the Swiss Trademarks Act. 857 In addition, it found that the term JAEGERMEISTER did not alter the overall impression of the trademark but was just an addition. Taking all aspects into consideration, the court came to the conclusion that although this was a borderline case there was 855. Application filed Apr. 10, 2002, to cover Scotch whisky in Class 33. Registration No IR No , registered Oct. 4, Federal Law on Protection of Marks and Indications of Source, Aug. 28, Article 11, Section 2 provides: Use of a form of the mark that does not differ essentially from the mark as registered and use for export are comparable to use of the mark.

357 1154 Vol. 101 TMR sufficient use of Mast-Jägermeister s device mark for the opposition to succeed. 858 TAIWAN III.A.3.a. Civil Actions In Bonneterie Cevenole Sarl v. Mei-Wan-Sin Co., Ltd., the MONTAGUT case, Wang Chui Hong (Wang), the responsible person of Mei-Wan-Sin Co., Ltd. (MWS), was sued for violation of Article 81, Paragraph 1 of the Trademark Act 859 for manufacturing and selling children s shoes bearing the MONTAGUT mark. The district court found the defendant guilty as charged in a summary judgment, 860 which was later overturned by the same court on appeal by the defendant. 861 Dissatisfied with the finding, the district attorney s office filed an appeal with the Intellectual Property Court (IPC). The IPC revoked the district court s decision and found Wang guilty of trademark infringement. 862 In conjunction with the criminal suit, Bonneterie Cevenole Sarl (BC), the owner of the trademark MONTAGUT registered in Taiwan 863 (covering shoes), filed a supplemental civil action seeking remedies under Articles 61, 63, and 64 of the Trademark Act. The IPC granted an injunction and awarded damages under Articles 61 and 63, Paragraph 1, Item 3 of the Trademark Act, but denied the request for publication of judgment under Article 64 of the same Act Case No. B-648/2008 (Federal Administrative Court, Jan. 27, 2009) (unpublished) (HIRSCH) Article 81, Paragraph 1 of the Trademark Act provides: Any person who commits any of the following acts without prior consent of the trademark or the collective trademark rightholder thereof shall be charged with imprisonment for no more than three years, detention and, in addition thereto or in lieu thereof, a fine of no more than NT$200,000: 1. One who uses a mark identical to a registered trademark or collective trademark on the same goods or services; Chien-176 (Taiwan BainChiau District Court, May 4, 2009) Chien-San-1322 (Taiwan BainChiau District Court, June 30, 2010) Shien-Zi-San-Yi-71 (Intellectual Property Court, Dec. 30, 2010), available at (Chinese) Reg. No Article 61 of the Trademark Act provides: A trademark right holder may claim damages from the person infringing those trademark rights, and may request that the infringing acts be ceased; in the case of likelihood of infringement, the said right holder may also request the infringing acts be prevented. Using a trademark under the conditions stipulated by Paragraph 2 of Article 29 without consent from a trademark right holder shall constitute infringement of trademark rights.

358 Vol. 101 TMR 1155 MWS was an exclusive licensee of the trademark MONTAGUT registered by BC 865 in Taiwan. The license agreement expired on June 30, 2007, but according to the agreement, MWS was allowed to continue to sell off licensed products in stock until December 31, However, it was found that MWS continued selling the licensed products during the period of January to May Although the alleged infringing products seized were indeed manufactured during the effective term of the license agreement, the IPC ruled that the sale of these products, after the sell-off period, was unauthorized and could cause confusion on the part of general consumers, thus constituting trademark infringement. 866 Accordingly, under the Trademark Act, Wang and MWS were subject to joint civil liability in addition to the criminal penalty imposed on Wang for trademark infringement. With its decision in this case, the IPC established that the licensed products are considered legally in order only if both the manufacture and sales of the products are duly authorized under the license agreement concerned. Any manufacture or sales of the licensed products in violation of the license agreement, such as beyond the term or quantity agreed upon, may subject the licensee to civil liability as well as criminal penalty. The IPC also made it clear that a judgment of trademark infringement, which may be subject to the request for publication under Article 64 of the Trademark Act, is limited to the civil judgment only. III.A.3.b. Criminal Actions In the SWAROVSKI case, Kao Chuen Fang (Kao) and Chen Ming Chia (Chen), both Taiwanese nationals, were sued for violation of Article 81, Paragraphs 1, 2, & 3 and Article 82 of A trademark right holder, pursuant to the provisions of the preceding paragraph 1, may request for the destruction or other necessary disposal of the goods that are infringing the trademark rights, or the raw materials or equipments utilized for the infringement. Article 63, Paragraph 1, Item 3 of the same Act provides: When claiming damages, a trademark right holder may choose one of the following methods to estimate the amount thereof: Damages may be claimed in an amount equivalent to 500 to 1,500 times the unit retail price of the infringing goods. However, in the case where over 1,500 pieces of infringing goods are found, the amount of damages to be claimed shall be assessed based on the total sale price of the said infringing goods.... Article 64 of the same Act provides: A trademark right holder may request for publication in a newspaper, at the expense of the infringer, the contents, in full or in part, of the judicial decision in relation to a trademark infringement Registration No Fu-Min-San-14 (Intellectual Property Court, Dec. 30, 2010), available at (Chinese).

359 1156 Vol. 101 TMR Trademark Act 867 for their acts of manufacturing and selling spectacles bearing SWAROVSKI & Swan Device marks. The district court found the defendants not guilty. 868 Dissatisfied with the finding, the district attorney s office filed an appeal with the Intellectual Property Court (IPC). The IPC dismissed the appeal and upheld the district court s decision. 869 The defendant Kao, owner of spectacles companies in Taiwan and China, obtained a license in 2003 for the manufacture and sale of spectacles bearing the trademark SWAROVSKI & Swan Device, registered under Registration No The licensor Cheng Chuong Wen (Cheng), a Taiwanese national, was the successor owner of the licensed trademark, which was registered in 1994 by a Taiwanese company. The second defendant, Chen, owner of a spectacles chain store, purchased in early 2005 the alleged infringing spectacles from Kao for resale to the general consumers. Swarovski Aktiengesellschaft (SA), the complainant, after finding its trademarks plagiarized, filed in 2003 an invalidation action against Reg. No On January 16, 2006, the Intellectual Property Office (IPO) decided in favor of SA by invalidating Reg. No and granting SA the registrations for the trademarks SWAROVSKI & Swan Device. SA then filed a complaint for infringement of its trademarks and seized the allegedly infringing spectacles at Chen s stores in August Based on the seizure and the confession that the seized spectacles were indeed manufactured by Kao and purchased by Chen for resale, the district attorney s office indicted the defendants for violation of Articles 81 and 82 of the Trademark Act Article 81, Paragraphs 1, 2, & 3 of the Trademark Act provides: Any person who commits any of the following acts without prior consent of the trademark or the collective trademark right holder thereof shall be charged with imprisonment for no more than three years, detention and, in addition thereto or in lieu thereof, a fine of no more than NT$200,000: 1. One who uses a mark identical to a registered trademark or collective trademark on the same goods or services; 2. One who uses a mark identical to a registered trademark or collective trademark on similar goods or services, and hence has caused likelihood of confusion of or misled the relevant consumers; 3. One who uses a trademark that is similar to a registered trademark or collective trademark on the identical or similar goods or services, and hence has caused likelihood of confusion of the relevant consumers. Article 82 of the Trademark Act provides: Any person, who knowingly sells, displays for sale, exports or imports the goods referred to in the preceding article, shall be charged with imprisonment of no more than one year, detention, and, in addition thereto or in lieu thereof, a fine of no more than NT$50, Zi-Yi-12 (Taiwan BainChiau District Court, Aug. 6, 2010) Shien-Zi-San-Yi-82 (Intellectual Property Court, Jan. 24, 2011), available at (in Chinese).

360 Vol. 101 TMR 1157 The district court found the defendants not guilty, and the IPC upheld the decision based on the following findings: 1. The cited provisions of the Trademark Act can apply based only on valid trademark registration in Taiwan. Therefore, the defendants may be subject to the penalties under the cited provisions only if the allegedly infringing products were manufactured and/or sold between January 17, 2006 (the registration date of SA s trademarks in Taiwan) and August 11, 2006 (when the products were seized). 2. Between Kao and Cheng, there was a trademark license agreement with a valid term until October 24, 2005, and a repurchase agreement for the inventory dated November 22, 2005, wherein Kao agreed to stop manufacturing products bearing the licensed trademark. Both agreements paralleled testimonies by the witnesses, who attested that the allegedly infringing products were manufactured by Kao no later than November 22, 2005, i.e., before SA s trademarks were registered in Taiwan. 3. Article 82 of the Trademark Act will apply only if the seller distributes the infringing products with clear knowledge of the infringement. The evidence on file supported the fact that the allegedly infringing products seized in Chen s stores were purchased from Kao prior to 2005, when SA s trademarks had not yet been registered in Taiwan and that, when the products were seized in August 2006, Chen was given the impression that Reg. No was still in dispute and had not yet been officially voided. As a matter of fact, due to the appeals filed by Cheng, the registrant of Reg. No , the invalidation action was not finalized until January 17, 2008, and the invalidation of Reg. No was not officially published until May 16, As such, Chen did not meet the requirement of knowingly selling infringing products as provided under Article 82 of the Trademark Act. The case exemplifies the court s restrictive attitudes toward imposing criminal penalties against trademark infringement and the importance of evidence proving the intent of infringement beyond a reasonable doubt under Articles 81 and 82 of the Trademark Act. THAILAND I.D.1. Similarity of Marks In Arcor S.A.I.C. v. Department of Intellectual Property (Arcor), the Thai Supreme (Dika) Court affirmed the Intellectual

361 1158 Vol. 101 TMR Property and International Trade Court (IP&IT Court) s ruling and withdrew the earlier decisions of the Trademark Registrar and the Board of Trademarks. 870 In 2004, Arcor filed an application for the trademark ROCKLETS THE COLORS OF CHOCOLATE & Device (see illustration below) for the goods chocolate, candy, and sweets in Class The Trademark Registrar rejected the trademark application on the basis that this mark was confusingly similar to the prior-registered trademark LOCKETS. 872 Arcor filed an appeal with the Board of Trademarks, but the Board upheld the Registrar s decision. The Board reasoned that although the applied-for mark contained the phrase The colors of chocolate, this phrase was disclaimed and thus was not a material part of the mark. Additionally, the pronunciation of the applied-for mark and the prior-registered trademark were similar and the evidence of use submitted by Arcor was insufficient to prove that the mark had been widely distributed in Thailand. Therefore, the mark was not acceptable for registration. In an attempt to overcome the decisions by the Registrar and the Board, Arcor filed a complaint against Thailand s Department of Intellectual Property (DIP) with the IP&IT Court. In the complaint, Arcor contended that the decisions of the Registrar and the Board were incorrect and unlawful because its trademark was not similar to the prior-registered trademark. Furthermore, Arcor had used the mark in good faith for a substantial period of time to the extent that it had gained wide recognition, and thus it deserved to be registered under Section 27 of the Thai Trademark Act. 873 Arcor therefore requested that the IP&IT Court order that 870. Dika Case No. 3897/2552 (Supreme Court, Nov. 19, 2009) Application No (Class 30), filed Nov. 11, Application/Registration No /TM32314 (Class 30), filed July 16, Trademark Act, B.E (1991), as amended by Trademark Act (No. 2), B.E (2000). Section 27 provides: If the Registrar is of the opinion that there have been honest concurrent users or special circumstances which make it proper to do so, the Registrar may allow the registration by more than one owner of a trademark which is identical with or similar

362 Vol. 101 TMR 1159 its trademark application be considered registrable and that the decisions of the Registrar and the Board be revoked. In response, the DIP made the following arguments: The decisions of the Registrar and the Board were made in good faith under the law. As such, the decisions were correct and lawful. The Registrar instructed Arcor to disclaim the phrase The colors of chocolate and the image of the candies, and Arcor complied with this request. Based on this disclaimer, the applied-for trademark was similar to the prior-registered trademark LOCKETS. This similarity could cause public confusion as to the origin of the goods. Arcor s evidence of the sale of products in Thailand in 2005 was not sufficient to demonstrate that Arcor s trademark had been widely advertised or used. After weighing the arguments presented, the IP&IT Court found that the applied-for mark was not similar to the priorregistered trademark. The IP&IT Court ordered the revocation of the decisions of the Registrar and the Board. Dissatisfied with this decision, the DIP filed an appeal with the Dika Court. In rendering a judgment, the Dika Court first considered whether the applied-for mark was confusingly similar to the prior-registered trademark. The Dika Court held that the overall appearance of the applied-for mark was different from the prior-registered trademark. The Dika Court further ruled that Arcor s disclaimer of the phrase The colors of chocolate and the picture of candies did not mean that the wording and image should be excluded from consideration when viewing the trademark. This undermined the DIP s argument that, after the disclaimer, the word ROCKLETS was the only important element in the mark. Although both parties marks were used in the same class, the Dika Court ruled that the marks were sufficiently different so as not to cause public confusion as to the origin of the goods. The Dika Court therefore upheld the judgment of the IP&IT Court and dismissed the DIP s appeal. This was a noteworthy decision because the Thai Dika Court confirmed that, when considering the similarity of two marks, the to a registered trademark under Section 13 or to trademarks applied for under pending applications under Section 20 in respect of goods of the same class or goods of a different class but found by the Registrar to be of the same character subject to such conditions and limitations as to the mode or place of user or such other conditions and limitations as the Registrar may think fit to impose. The Registrar shall without delay notify the applicants and registered trademark owner in writing giving the grounds thereof. The applicant or registered trademark owner may appeal an order of the Registrar under the first paragraph to the Board within ninety days from the date of receipt thereof. Decisions of the Board under paragraph two shall be final.

363 1160 Vol. 101 TMR disclaimed element of a mark should be regarded as a substantial part of the mark and must be included in the comparison. TURKEY I.A.1. Prior Use Plaintiff Calzaturificio Casadei S.p.A. instituted an action against Çiçek Kundura Sanayi ve Ticaret Ltd. Şirketi for the cancellation of the defendant s trademark registration for CASADEI 874 on the grounds of the plaintiff s prior rights and longstanding extensive prior use and the defendant s bad faith. Calzaturificio Casadei brought this action after its application to register the word mark CASADEI before the World Intellectual Property Organization in Classes 3, 18, and 25 was refused because of Çiçek Kundura s prior-pending registration of the same trademark. Plaintiff Calzaturificio Casadei claimed that: it had registered the trademark CASADEI in Italy years ago and had used the mark in the fashion sector since that time; its international trademark CASADEI 875 was registered in many countries; its CASADEIbranded products had been sold in Turkey and abroad before defendant Çiçek Kundura Sanayi ve Ticaret Ltd. Şirketi registered the same mark; it was the proper owner of the trademark CASADEI and of the prior rights in that trademark; and the defendant was acting in bad faith. Therefore, the plaintiff requested the cancellation of the defendant s trademark registration for CASADEI. The defendant claimed that: it had properly registered the trademark CASADEI; its registration of the CASADEI trademark was appropriate under the principle of territoriality; the plaintiff s trademark was not well known; the plaintiff had not used the CASADEI trademark in Turkey; and the plaintiff was acting in bad faith by bringing the instant action. The court, in accordance with the evidence submitted, determined the following: (1) the trademark CASADEI was adopted by the plaintiff in 1958; (2) CASADEI-branded products have been regularly sold in Turkey since 1996; (3) the CASADEI trademark was registered in many countries in the plaintiff s name; (4) the plaintiff s trademark has been featured in many important fashion magazines, such as Marie Claire, Elle, and Vogue; (5) the plaintiff s trademark had achieved a considerable amount of consumer awareness before the defendant applied to register the same trademark; and (6) the denomination CASADEI 874. Registration No , granted Mar. 29, IR No , registered July 17, 1989.

364 Vol. 101 TMR 1161 constituted the distinctive portion of the plaintiff company s trade name. Although the plaintiff s trademark is not registered in Turkey, in light of the evidence submitted, the court made the following determinations: The plaintiff s trademark had acquired a notable distinctiveness. The plaintiff had acquired rights in the denomination CASADEI as a result of its use of the mark before the defendant had filed its trademark application for the same trademark. According to the principle of equal treatment set forth in the Paris Convention, the plaintiff had the right to claim its nonregistered rights. According to Supreme Court precedent, trademark registrations that were applied for in bad faith should not be protected. Therefore, the court cancelled the defendant s registration for CASADEI 876 and ordered a continuation of the injunction that the court had issued pending the finalization of the court s decision. 877 In doing so, the court established that unregistered trademarks are protectable in Turkey on the basis of extensive and longstanding prior use. I.D.1. Similarity of Marks Tefal instituted an action against Tamlas Oto Lastik Malzemeleri Sanayi Ticaret Ltd. Sti (Tamlas Oto) requesting the cancellation of defendant s PRACTICAL HOME EQUIPMENT BY TEFALY 878 trademark and domain name on grounds of notoriety and bad faith of defendant. Tefal claimed that: (1) the plaintiff owned registrations for the TEFAL trademark in International Classes 7, 8, 9, 11, and 21; (2) the denomination TEFALY in Tamlas Oto s trademark registration was similar to its well-known TEFAL trademarks; (3) TEFAL was one of the leading and most well-known trademarks around the world with regard to electrical home equipment, which is produced in Sarcelles, France. Tamlas Oto did not submit any response to Tefal s action Registration No. 2000/ Calzuturificio Casadei S.P.A. v. Çiçek Kundura San. ve Tic. Ltd. Şti., Case No. 2007/263, Decision No. 2009/46 (1st Istanbul Court of Intellectual and Industrial Property Rights, Mar. 3, 2009) Registration No in Class 21.

365 1162 Vol. 101 TMR Defendant s trademark Plaintiff s trademark The court asserted that: (1) the plaintiff had used the TEFAL trademark since at least 1954; (2) Tefal operated 152 stores in Turkey alone and offered its products in more than 120 countries around the world; (3) the plaintiff enjoyed 1.7 billion Euros of income; and (4) the plaintiff had registered its TEFAL trademark in many countries, including England, France, Russia, and Austria. In light of the evidence submitted, the court determined that the TEFAL trademark was well known according to Article 7/1(i) of the Decree-Law on the Protection of Trademarks ( Decree-Law No. 556 ) and Article 6bis of the Paris Convention for the Protection of Industrial Property ( Paris Convention ). The court also stated that because the denomination TEFALY, which constitutes the distinctive and dominant portion of the defendant s trademark at issue, was visually and phonetically similar to the plaintiff s TEFAL trademarks, and because the identification of goods and services of both trademarks fell into the same classes, the defendant s use of PRACTICAL HOME EQUIPMENTS BY TEFALY would lead to consumer confusion. Furthermore, considering that TEFAL did not have any meaning in the Turkish language, and because the defendant had an unlimited opportunity to create an original trademark, there was no doubt that defendant registered the PRACTICAL HOME EQUIPMENTS BY TEFALY trademark in bad faith. Based on the foregoing, the court ordered the cancellation of the PRACTICAL HOME EQUIPMENTS BY TEFALY trademark and domain name Plaintiff Romanson Co. Ltd. Şti. initiated an action to overturn the decision of the Higher Board of the Turkish Patent Institute refusing to register the plaintiff s trademark application for J. ESTINA & Device 880 for goods in Class 14 because of an opposition filed by the first defendant Festina Lotus S.A., which owns a registration for the trademark FESTINA & Device 881 for 879. Tefal v. Tamlas Oto Lastik Malzemeleri San. Tic. Ltd. Sti, Case No. 2009/15, Decision No. 2009/32 (Beyoğlu Court of Intellectual and Industrial Property Rights, June 16, 2009) Application No. 2005/56046, filed Dec. 23, Registration No

366 Vol. 101 TMR 1163 overlapping goods in Class 14. The plaintiff claimed that a likelihood of confusion existed between the trademarks at issue under Article 8/1-(b) of Decree-Law No Following the first defendant s opposition, the Turkish Patent Institute (TPI) and the TPI Higher Board of Examination refused registration of the plaintiff s trademark application for J. ESTINA & Device (illustration below, at left) because of the similarity of that trademark with the first defendant s FESTINA & Device trademark (illustration below, at right), as well as the similarity of the parties goods in Class 14, 883 based upon a likelihood of confusion. Plaintiff s trademark Defendant s trademark The plaintiff sought a cancellation of the Higher Board of the TPI s refusal to register its trademark application for J. ESTINA & Device based upon the following: The plaintiff, Romanson Co. Ltd. Şti., was a famous watch and jeweler producer that offered its products in over 60 countries. The plaintiff s trademark application for J. ESTINA & Device derived from a contraction of JOVANNA ESTINA, which was a registered Community trademark owned by the plaintiff Article 8 of Decree-Law No. 556 provides: Upon opposition by the proprietor of an application for registration of a trademark or of a registered trademark, the trademark applied for shall not be registered subject to the following conditions: (b) Where the trademark applied for is identical or similar to a registered trademark or to a trademark applied for registration under a prior date of filing and the registration is sought for identical or similar goods or services in that the likelihood of confusion includes the likelihood of association with the registered trademark or with the trademark applied for registration under a prior date of filing Class 14 consists of the following: Jewelry goods (including their imitation): gold, jewels, precious stones and jewelry made from these, cuff-links, necktie brooches and statues, knickknacks, vases, cups given during sports competitions... Watches and time measuring devices; (chronometers, metronomes (pendulums) and their parts, watch cordons).

367 1164 Vol. 101 TMR The trademarks at issue were not visually similar and were not phonetically the same because they were pronounced differently, especially in English. The plaintiff had registered its J. ESTINA & Device trademark in various countries and the mark had achieved the status of a well-known trademark. As the goods at issue were watches and jewelry, which were luxury items, the targeted consumers would be making careful purchasing decisions. Accordingly, the likely purchasers of the parties items would not view the trademarks as similar or be confused. In response, the first defendant requested that the court reject the case based on the following: The defendant had used the FESTINA trade name for over 100 years. The trademarks at issue and their device components were confusingly similar. Specifically, the only difference between the trademarks was the first letter of each trademark (i.e., J and F), and given the similarity of the logos at issue, this difference was not sufficient to distinguish the trademarks at issue. Turkish consumers could pronounce the J.ESTINA and FESTINA trademarks the same way, and could perceive them as similar as well. The second defendant also argued that the refusal decision of the Higher Board was justified. The court rejected the action and ruled that there was a risk of substantial consumer confusion between the trademarks at issue due to the similarity of the words J.ESTINA and FESTINA and the characteristics of the parties logos. 884 Accordingly, the Court held that actionable likelihood of confusion could be created by the overall impression conveyed by the word and device portion of a trademark. Plaintiff Aktiebolaget SKF sought to invalidate Fisek Hirdavat Tic. San. A.S. s trademark registration for the F.S.K. trademark on the grounds that it was almost identical with its well-known SFK trademark. The plaintiff sought relief under Paris Convention Articles 6bis, 7/1(b), 8, 8/1(b), and 8/ Romanson Co. Ltd. Şti. v. Festina Lotus S.A. & Türk Patent Enstitüsü Başkanliği, Case No. 2008/107, Decision No. 2009/313 (1st Ankara Specialized Court of Intellectual and Industrial Property Rights, Dec. 29, 2009) Aktiebolaget SKF v. Fisek Hirdavat Tic. San. A.S., Case No. 2008/69, Decision No. 2009/48 (Beyoğlu Civil Court of Intellectual and Industrial Rights, Oct. 11, 2009).

368 Vol. 101 TMR 1165 The plaintiff owns the following registrations for SKF and SKF-formative trademarks: SKF & Design 886 (see illustration below) in Classes 4, 6, 7, 8, 9, 11, 12, 16, 17, 35, 37, 38, 39, 40, 41, and 42; SKF 887 registered in Classes 4, 6, 7, 8, 9, 11, 12; SKF 888 registered in Classes 16, 35, 37, 39, 40, 41, 42; SKF 889 registered in Classes 4, 6, 7, 8, 9, 10, 12, 17; and SKF EXPLORER 890 registered in Classes 7 and 12. The defendant registered its trademark F.S.K 891 in Class 7. Plaintiff s marks Defendant s mark The court granted the plaintiff s request to cancel the defendant s trademark in light of the similarity between the plaintiff s SKF trademarks and the defendant s F.S.K. trademark, which the court found gave rise to a likelihood of confusion based upon the overall appearance of the marks at issue. In this regard, the court stated that the overall impressions of the trademarks should be considered when evaluating likelihood of confusion. Therefore, in cases in which the trademarks at issue bear an indistinguishable overall appearance to one another, this evidence of similarity is considered an objective reason to conclude that the trademarks at issue are likely to give rise to a likelihood of confusion. Moreover, in accordance with Supreme Court precedent, the court, in analyzing whether a likelihood of confusion exists, should consider the visual, phonetic, and conceptual similarities between the trademarks, the overall impressions of the trademarks, including any dominant and secondary elements, whether the trademarks are reminiscent of one another, the educational and social status of the target consumers, the cost of the good or services in connection with which the trademarks are used, and the time consumers typically spend making their decisions to purchase the goods or services at issue. Additionally, these 886. Registration No. 2005/48200 (IR No ) Registration No. 87/ Registration No. 2000/26385 (IR. No ) Registration No Registration No. 2006/15416 (IR No ) Registration No. 2005/52873.

369 1166 Vol. 101 TMR considerations should bear in mind how the the average consumer would view the above criteria. Furthermore, the court held that, in determining likelihood of confusion, the court should consider whether a likelihood of association exists. The court has also noted that an analysis of whether a likelihood of association exists is used to determine likelihood of confusion rather than serve as an alternative basis for finding trademark infringement. Accordingly, a finding of likelihood of association is not sufficient to establish a likelihood of confusion. In light of this, the court found that the trademarks were deemed to be indistinguishable and thus likely to give rise to a likelihood of confusion as well as a likelihood of association. Moreover, the court found that it was inconceivable that the defendant was not aware of the plaintiff s SKF trademarks when it adopted its F.S.K. mark, and, as a competitor, had a duty to act like a prudent businessman to avoid adopting a confusingly similar trademark. Therefore, the defendant was deemed to have registered the F.S.K. trademark in bad faith under Article 20 of Turkish Commercial Code and was considered to have acted with the intention of taking unfair advantage of the notoriety of the plaintiff s SKF trademarks. The court also held that the plaintiff s SKF trademarks were well-known trademarks under the Paris Convention on the basis of the evidence submitted, because the company owned numerous registrations worldwide and had used the marks for many years. Thus, on grounds of likelihood of confusion, the notoriety of the plaintiff s trademarks, and the defendant s bad faith under Articles 7/1(b), 8/1(b), and 6bis of the Paris Convention, and Articles 7/1(i), 8/IV, and 42 of Decree-Law No. 556, the court ruled to invalidate the defendant s trademark registration for F.S.K. in Class Plaintiff L Oreal brought an action against Gelisim Kozmetik San ve Tic. Ltd. Sti. to cancel the defendant s trademark G.L.S. MATRIX 893 (below, illustration at left) on grounds of likelihood of confusion, likelihood of association, and the notoriety of its wellknown MATRIX 894 trademark (below, illustration at right) registered in Class Aktiebolaget SKF v. Fisek Hirdavat Tic. San. A.S., Case No. 2008/69, Decision No. 2009/48 (Beyoğlu Civil Court of Intellectual and Industrial Rights, Oct., 2009) Registration No. 2006/ Registrations Nos. 2005/39099 and 2005/46348.

370 Vol. 101 TMR 1167 Defendant s mark Plaintiff s mark During the application phase, the plaintiff had filed an objection against the defendant s G.L.S. MATRIX trademark, but it was rejected by the TPI. In the present action, the plaintiff again claimed that the defendant s G.L.S. MATRIX trademark was confusingly similar to its MATRIX trademark. The defendant requested the rejection of the action on grounds that the trademarks were not confusingly similar. The court ruled that the denomination MATRIX constituted the essential and distinctive portion of defendant s G.L.S. MATRIX trademark, and that the term G.L.S has no distinctive character. Therefore, the court concluded that the G.L.S. MATRIX trademark would lead to consumer confusion and would deceive the public concerning the source of the parties trademarks. Accordingly, the court accepted the action and ordered the cancellation of the defendant s G.L.S. MATRIX trademark. 895 I.E. Bad Faith Plaintiff Nike International Ltd. instituted an action against Yardim Tekstil Sanayi ve Dis Ticaret Limited Sirketi, requesting the cancellation of the defendant s JORDAN, 896 BIG JORDAN, 897 and BIG JORDAN & Device 898 (shown below) trademarks based upon its rights in its well-known marks AIR JORDAN, JORDAN, MICHAEL JORDAN, and JUMPMAN DEVICE (with the silhouette of Michael Jordan) in Class 25, and because of the defendant s bad faith. Defendant s trademarks 895. L Oreal v. Gelisim Kozmetik San ve Tic. Ltd. Sti., Case No. 2009/257, Decision No. 2010/36 (Bakirkoy Court of Intellectual and Industrial Rights, Feb. 2010) Registration No , filed Jan. 14, 2003, in Classes 18 and Registration No , filed Jan. 14, 2003, in Classes 3, 18, and Registration No , filed July 23, 1997, in Class 25.

371 1168 Vol. 101 TMR Nike argued that: (1) it owns the JORDAN, AIR JORDAN, MICHAEL JORDAN, and JUMPMAN DEVICE trademarks; (2) Nike had used its trademarks in Turkey since 1984; (3) the trademarks AIR JORDAN, MICHAEL JORDAN, and JUMPMAN DEVICE are well known under Article 7/1(i) of the Decree-Law No. 556 and Article 6bis of the Paris Convention; and (4) the defendant s trademarks were similar to Michael Jordan, the wellknown basketball player, and Nike s trademark registrations for MICHAEL JORDAN and the JORDAN DEVICE trademark, which includes the silhouette of a basketball player and an American flag. Yardim Tekstil responded that: (1) its BIG JORDAN DEVICE trademark had been registered since July 23,1997; and (2) Nike s institution of the action after a long period of acquiescence was improper. The Court noted that: (1) the R letter covered in the defendant s JORDAN trademark had been designed in a style that resembles a jumping basketball player and that the J and O letters had been written in blue with stars in the background; (2) this design invokes the image of the well-known basketball player Michael Jordan; (3) the plaintiff s JORDAN and AIR JORDAN trademarks had been extensively used in Turkey since at least 1984 on shoes; and (4) the defendant s BIG JORDAN trademark was also similar to the plaintiff s AIR JORDAN and MICHAEL JORDAN trademarks. The Court noted that although cancellation actions concerning well-known trademarks must typically be instituted within five years from the registration date of the mark at issue, where the defendant has acted in bad faith, no such time limit is applied. In the present case, and in light of the evidence of record, the Court was not convinced that Defendant Yardim Tekstil selected its trademarks by accident. As Yardim Tekstil registered these trademarks in bad faith, the Court did not apply the five-year time limit. Accordingly, the court ordered the cancellation of Yardim Tekstil s trademark registrations based upon the plaintiff s extensive use of the JORDAN trademark in Turkey and the mark s notoriety and the defendant s bad faith. 899 I.F. Famous and Well-Known Marks Plaintiff Carlsberg A/S instituted an action against Kerem Kurtulus on the grounds of trademark infringement of its wellknown CARLSBERG and CALSBERG-formative trademarks because of the defendant s bad-faith use of CASBERG, and also 899. Nike Int l v. Yardim Tekstil Sanayi ve Dis Ticaret Ltd. Sirketi, Case No. 2009/10, Decision No. 2009/67 (Beyoğlu Court of Intellectual and Industrial Rights, Dec. 24, 2009).

372 Vol. 101 TMR 1169 sought to invalidate the defendant s registration for the CASBERG trademark. 900 The plaintiff owns the following trademark registrations in Turkey: CARLSBERG, 901 registered in Classes 32, 33, and 34; CARLSBERG BEER, 902 registered in Class 32; CARLSBERG PROBABLY THE BEST BEER IN THE WORLD, 903 registered in Class 32; CALSBERG PROBABLY THE BEST RITUAL IN THE WORLD, 904 registered in Classes 32 and 41; CARLSBERG PART OF THE GAME, 905 registered in Classes 25, 28, 32, 36, and 41; and CARLSBERG NON-ALCOHOLIC BEER, 906 registered in Class 32. The defendant s trademark at issue CASBERG 907 is registered in Classes 24, 25 and 35. The plaintiff sought to invalidate the defendant s registered trademark for CASBERG because it was almost identical to its CARLSBERG trademark, which is considered well known in Turkey under Articles 8/1(b), 908 8/4 909 of the Decree-Law No. 556 and Articles 6bis 910 and of the Paris Convention Carlsberg A/S v. Kerem Kurtulus, Docket No , Decision No (Beyoğlu Court of Intellectual and Industrial Property Rights, Jan. 29, 2009) Registration No. 2004/ Registration Nos. 2006/33842, 2006/33843, 2006/ Registration No. 2003/ Registration No. 2004/ Registration No. 2006/ Registration No. 2005/ Registration No. 2004/ The Article 8/1(b) of the Decree-Law No. 556 provides: Upon opposition by the proprietor of an application for registration of a trademark or of a registered trademark, the trademark applied for shall not be registered subject to the following conditions: (b) Where the trademark applied for is identical or similar to a registered trademark or to a trademark applied for registration under a prior date of filing and the registration is sought for identical or similar goods or services in that the likelihood of confusion includes the likelihood of association with the registered trademark or with the trademark applied for registration under a prior date of filing Article 8/4 paragraph 4, of Decree-Law No. 556 provides: A trademark applied for which is identical or similar to a registered trademark or to a trademark application with a prior date of filing may be used for different goods and services. However, where in the case of a registered trademark or of a trademark application with a prior date of filing, the trademark has a reputation and where the use without due cause of trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trademark or of the trademark application with a prior date of filing, upon opposition by the proprietor of the prior trademark registration or application, the trademark applied for shall be refused even if it is to be used in respect of differing goods and services Article 6bis, paragraph 1, of Decree-Law No. 556 provides: (1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a

373 1170 Vol. 101 TMR The plaintiff claimed that it was one of the world leaders in the beer industry and that its CARLSBERG registered trademark and trade name were well known in Turkey as a result of the beer company s widespread advertising and promotional activities. Also, CARLSBERG was ranked among the beer trademarks in Turkey with the highest unaided consumer awareness. Given its strong trademark rights, the plaintiff argued that defendant registered the trademark CARSBERG in Classes 24, 25, and 32 in bad faith and to benefit from the reputation of the plaintiff s well-known trademark, which was nearly visually and phonetically identical to the plaintiff s mark. The defendant argued that the case should be rejected for the following reasons: the competent court where the plaintiff should have brought its claim was the Istanbul Civil Court of Intellectual and Industrial Property Rights; the defendant was a well-known producer of suits under the CASBERG trademark; there was no similarity between the parties goods or trademarks; the fact that the plaintiff produces only beer but filed an action against a company that uses the trademark at issue only in connection with an unrelated product shows the plaintiff s lack of sincerity. In light of the declarations and evidence submitted by the parties, the court found that the plaintiff s trademark was a wellknown trademark as defined by WIPO. 912 Thus, the court held that the plaintiff was qualified to enjoy the rights provided under Article 7/1(i) of Decree-Law No. 556, 913 and ruled that the defendant could no longer use the CASBERG trademark, which the court determined was almost identical to the plaintiff s trademark. The court determined that the Paris Convention protects against the use of trademarks that are identical or similar to well-known trademarks even when used in connection with dissimilar goods or services. Consequently, the court accepted the action and ruled that the defendant s CASBERG trademark was registered in bad faith and infringed the plaintiff s well-known CARLSBERG trademark and 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 as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith Article 8 of Decree-Law No. 556 provides: A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark Recommendation No. A/34 13 of WIPO Article 7 of Decree-Law No. 556 provides: The following signs shall not be registered as a trademark: i) trademarks, well known in the sense of the Article 6bis of the Paris Convention, which have not been authorized by their owners.

374 Vol. 101 TMR 1171 trade name, and invalidated the defendant s CASBERG trademark registration. 914 Plaintiff Rapala VMC OYJ, owner of the well-known trademark RAPALA, 915 brought an action to cancel the trademark registration for RAPALA, 916 owned by defendant Ridvan Kasapoglu, an individual, on the grounds of likelihood of association and confusion between the parties trademarks, the notoriety of plaintiff s trademark, and defendant s bad faith. Defendant s mark Plaintiff s mark The court decided to cancel the defendants trademark registration. In reaching this decision, the court took into account the notoriety of the plaintiff s RAPALA trademark, and noted that RAPA was the surname of the plaintiff s founder and was also a part of the plaintiff s company name. The plaintiff had used the RAPALA trademark in Turkey since The defendant only registered its trademark in RAPALA had no meaning in Turkish and it was inconceivable that the defendant was unaware of the plaintiff s trademark when it adopted the RAPALA trademark. Accordingly, the court ruled that the RAPALA trademark was not a designation of origin that was open to use by 914. Carlsberg A/S v. Kerem Kurtulus, Docket No , Decision No (Beyoğlu Court of Intellectual and Industrial Property Rights, Jan. 29, 2009) Plaintiff Rapala VMC OYJ owns Registration No. 2002/13298 RAPALA for Fishing equipment in Class Registration No. 2006/19196 for the following goods in Class 18: Processed or unprocessed leather and hides, artificial leather, cowhide, lining leather... Articles made of leather, imitation leather and other materials not included in other classes: Bags, suitcases, wallets, portfolios, bags for carrying children (port-babies, kangaroos), leather or cowhide boxes and trunks, check book cases, card cases, empty vanity bags, empty tool set bags, leather key holders, money bags, sacks, back packs, briefcases, shopping and school bags... Umbrellas, parasols, sun visors, walking sticks... Whips, harness, saddlery, stirrups and saddle belts... Intestines, artificial intestines (used to fill sausages, salami and hot-dogs, etc.)... The trademark registration also covers the following goods in Class 25: Clothing (inner and outer clothing) made from all kinds of material, except clothing for protective purposes: Clothing made from cotton, knitwear, denim, leather, paper and similar materials; sports clothing; bath and beach clothing; underwear, gloves... Socks... Footwear: shoes, high boots, boots, slippers, bootees and parts thereof, sports shoes and pegs thereof, shoe parts namely, soles, heels, legs and upper parts... Headgear, hats, berets, caps, caps with visor... Special articles included in this class for babies: Cloths made of textile for babies, dipper cloth made of textile for babies baby shirts, nylon underwear, bibs (except paper bibs)... Neckties, bow-ties, foulards, shawls, head scarves, pareos, false collars, bandannas, wrist bands, muffs, arm bands, head bands, wrist bands... Belts, pant suspenders, garters....

375 1172 Vol. 101 TMR all competitors, as the trademark is both the surname of a real individual and the corporate name of the plaintiff s company. The court further explained that actionable likelihood of confusion can be found even where only a segment of likely consumers are at risk of confusion, rather than all consumers. Thus, the fact that the parties trademarks were registered in different classes did not impact the court s analysis of whether a likelihood of confusion existed. On the basis of the evidence submitted, the court held that the plaintiff s trademark RAPALA was well known according to the Paris Convention. Therefore, the defendant s registration of a trademark identical to plaintiff s mark was improper. The defendant s registration of the RAPALA trademark for goods in Classes 18 and 25 is evidence of the notoriety of the plaintiff s trademark, and suggested that the defendant intended to take unfair advantage of the plaintiff s trademark. The court refused to accept the possibility that the defendant adopted the plaintiff s trademark by chance, particularly considering the fact that RAPALA was the surname of the plaintiff s founder and owner, it was a word with no meaning, and was selected as a trademark by its actual owner. The defendant also failed to submit any evidence that established that he had conceived of the trademark himself or that the trademark had any specific meaning. The court found that the defendant had registered the RAPALA trademark for goods in Classes 18 and 25 in bad faith, and with the intention of taking unfair advantage of the plaintiff s well-known RAPALA trademark. Thus, on grounds of likelihood of confusion, notoriety, and bad faith under Article 6bis of the Paris Convention, and Articles 7/1 (i), 8/1(b), 8/IV and Article 42 of Decree-Law No. 556, the court invalidated the defendant s trademark registration for RAPALA. 917 Plaintiff Keppa Tekstil San. Tic. Ltd. Şti. (Keppa) instituted an action against the Turkish Patent Institute (TPI) and Kappa Basic Trademarks SA (Kappa) for the withdrawal of a decision of the Higher Board of Examination of the TPI rejecting Keppa s application to register KEPPA Sportswear & K Device 918 for goods in Classes 24, 25, and 26 (below, illustration at left) on grounds of similarity to and notoriety of Kappa s KAPPA trademarks. The defendant owns the following trademark registrations: KAPPA 919 in Classes 3, 9, 18, 25, and 28 (below, illustration at 917. Rapala VMC OYJ v. Ridvan Kasapoglu, Case No. 2008/38, Decision No. 2009/66 (Beyoğlu Court of Intellectual and Industrial Property Rights, Dec. 24, 2009) Application No. 2004/ Registration No

376 Vol. 101 TMR 1173 right); ROBE DI KAPPA 920 in Classes 9, 18, 25 and 28; ROBE DI KAPPA 921 in Class 25; and KAPPA 922 in Class 25. Plaintiff s mark Defendant s mark The plaintiff sought the cancellation of the decision of the Higher Board of Examination of the TPI to refuse registration of its application for KEPPA Sportswear K Device for the following reasons: The plaintiff acquired rights through a prior trademark registration for the KEPPA trademark and had used that mark for four years. The plaintiff s trademark application at issue had been created as a version of the prior one without changing any main character of the same. Even if the plaintiff s senior trademarks were well-known trademarks, there would be no similarity between trademarks and the parties goods under Paris Convention Articles 7/1(b), 8/1(b), 8/4, and 35, 923 because the defendant s trademark contained the additional word SPORTSWEAR. The first defendant requested that the court reject the action on the following basis: 920. Registration No Registration No Registration No Article 35 of Decree-Law No. 556 provides: Notices of opposition to the registration of trademark on the grounds that it may not be registered under the provisions of Articles 7 and 8, and notices of opposition on the ground that there exists bad faith in the application shall be submitted within three months of the publication of the application. The opposition made under the last paragraph of Article 8 shall be refused if the opposing party does not use his trademark during this period. Oppositions must be submitted in writing and contain the arguments. Institute may request further facts, evidence and documents to be complied within the period prescribed in the Implementing Regulation. Where the additional facts, evidence and documents requested are not submitted within the period prescribed by the Implementing Regulation the opposition shall be deemed to have not been made.

377 1174 Vol. 101 TMR Kappa s trademarks were well-known trademarks in Turkey as well as all over the world. Kappa s trademarks and the KEPPA trademark that the plaintiff was attempting to register were almost identical and a likelihood of confusion existed between them. The plaintiff s trademark application could damage the distinguishing character and reputation of Kappa s famous trademark and the plaintiff would unfairly benefit by taking advantage of the notoriety of Kappa s KAPPA trademark. The second defendant asserted that the refusal decision of the Higher Board was justified for the following reasons: Kappa s cited trademarks and the plaintiff s trademark application for KEPPA were almost identical and the two trademarks differed by only one letter. The addition of the word SPORTSWEAR, which was a descriptive word for both parties goods, to the plaintiff s trademark application was not enough to distinguish the parties trademarks. Consequently, the court rejected the plaintiff s action (for all goods) and found that there was a substantial risk of consumer confusion as a result of the strong similarity between the dominant portions of the KAPPA and KEPPA trademarks, because those marks were used in connection with identical goods, and based on the notoriety of the plaintiff s KAPPA trademarks. 924 Plaintiff Unilever N.V. instituted an action against Gida Pazarlama Anonim Sirketibased for the cancellation of the defendant s trademark registration for KIPTON 925 on the grounds of likelihood of confusion with the plaintiff s well-known LIPTON trademark and the defendant s bad faith. The plaintiff s LIPTON trademarks are registered in Classes 5, 29, 30, and 32, and the defendant s KIPTON trademark is registered in Classes 29, 30, and 32. Unilever claimed that its LIPTON trademark was a wellknown mark and submitted documentary evidence and information supporting that claim; the defendant s trademark KIPTON was confusingly similar to its well-known LIPTON trademark because they only differed by one letter and thus shared visual and phonetic similarities; the identifications of goods and services of the parties trademarks overlapped; both parties 924. Keppa Tekstil San. Tic. Ltd. Şti. v. Kappa Basic Trademarks SA & Turkish Patent Institute, Case No. 2008/297, Decision No. 2010/09 (3rd Ankara Civil Court of Intellectual and Industrial Rights, Jan. 26, 2010) Registration No

378 Vol. 101 TMR 1175 used their trademarks in connection with consumable products, regarding which consumers do not exercise a high degree of care when making purchases; and the defendant acted in bad faith with the goal of taking unfair advantage of the reputation of the plaintiff s trademarks by selecting the confusingly similar KIPTON trademark. Accordingly, the plaintiff requested that the court cancel the defendant s trademark registration for KIPTON. The defendant claimed the following: the trademark KIPTON was not confusingly similar to plaintiff s LIPTON trademark because the first letter of each trademark which created a strong and lasting impression upon consumers was different; the fact that the plaintiff s trademark was well known for specific goods in Classes 5 and 30 did not create a general awareness of the plaintiff s LIPTON trademark for goods in Classes 29 and 32. Thus, the defendant requested that the court reject the court action urged by the plaintiff. In light of the evidence submitted by the parties and the expert report, which was in the plaintiff s favor, the court determined the following: the plaintiff s trademark was deemed to have been a well-known trademark when the defendant filed an application to register the KIPTON trademark and therefore the LIPTON trademark enjoyed the rights and protection of wellknown marks under the Paris Convention; the LIPTON and KIPTON trademarks were visually and phonetically almost identical to one another; because the plaintiff's LIPTON trademark had acquired a high level of notoriety and was a trusted, quality brand, the defendant filed its trademark for KIPTON with the intent of taking unfair advantage of the reputation and advertising power of the plaintiff s well-known LIPTON trademark. As a result, the court ordered the cancellation of defendant s trademark registration for KIPTON and the deletion of any related records from the Turkish trademark registry, enjoined future use of KIPTON, and charged the defendant to pay all of the plaintiff s litigation costs and expenses. 926 Plaintiff Microsoft Corporation brought an action to invalidate defendant Betul Triko Tekstil Matbaacilik Reklamcilik Turizm Sanayi ve Ticaret Limited Sirketi s registered trademark for MSN MESSENGER & Device (illustration below, at left), 927 which is almost identical to the plaintiff s well-known MSN 928 trademark and domain name in 926. Unilever N.V. v. Karali Cay Sanayi Ticaret ve Gida Pazarlama Anonim Sirketi, Case No. 2009/36, Decision No. 2010/1 (Beyoğlu Court of Intellectual and Industrial Rights, Feb. 2010) Registration No. 2004/38099 registered in Classes 09, 35, 36, 38, 39, 41 and Registration No. 2000/10064 registered in Classes 24 and 25.

379 1176 Vol. 101 TMR Turkey under Articles 6, 8, 7/1(i), 8/4 of the Decree-Law No. 556 of the Paris Convention. The defendant urged the court to reject the action because of the differences in classes of the goods and services of the parties trademarks and the defendant s priority. The court rejected defendant s arguments. Defendant s mark Plaintiff s mark The court ruled that the plaintiff s MSN trademark (registered in Classes 9, 35, 36, 38, 39, 41, and 42) is a well-known trademark in Turkey. The court held that the MSN MESSENGER & Device trademark, which was visually and phonetically almost identical to the plaintiff s MSN trademark, was registered in bad faith, and was thus invalid. Furthermore, because the domain name registration for was based on the defendant s trademark registration at issue, the court also ruled that the offending domain name was invalid and ordered the deletion of from the registry. 929 Plaintiff Eti Gıda San. ve Tic. A.Ş. instituted an action against Caffe Nero Group PLC and the TPI for the cancellation of the final decision of the Higher Board of the TPI regarding its decision refusing the plaintiff s opposition against the defendant s CAFFE NERO 930 trademark application for goods in Classes 21, 25, 29, 30, and 32. The plaintiff argued that the defendant s CAFFE NERO trademark was confusingly similar with the plaintiff s well-known ETI NEGRO & HITITE Device 931 and ETI NEGRO & Package 932 trademarks, also registered for goods in Class 30, under Articles 8/1(b) and 8/4 of Decree-Law No. 556 on the grounds of likelihood of association, likelihood of confusion, and the notoriety of the plaintiff s trademarks Microsoft Corporation v. Betul Triko Tekstil Matbaacilik Reklamcilik Turizm Sanayi ve Ticaret Limited Sirketi (in liquidation), Case No , Decision No (Istanbul Beyoğlu Civil Court of Intellectual and Industrial Property Rights, Nov. 12, 2009) Registration No. 2007/ Registration No Registration No. 2001/26084.

380 Vol. 101 TMR 1177 Plaintiff s mark Defendant s marks The court ruled that the initial ETI portion of the plaintiff s trademark is well known in Turkey. Although the NEGRO-portion of the trademark could be understood to mean black, an apparent reference to the black-colored and chocolate-flavored biscuit, the court found that this would not be the understanding of a great majority of consumers in Turkey. Under a linguistic analysis of the defendant s CAFFE NERO trademark, the court found that the term CAFFE is generally understood as café and NERO means black in Italian and together CAFFE NERO means BLACK CAFÉ in English. The court, however, also found that the CAFFE NERO indication would be understood by the average consumer in Turkey the same way it is pronounced in Turkish as KAFE NERO. The court further explained that the defendant s CAFFE NERO trademark and trade name had been in use since 2001 and registered for restaurant services in Class 43 in Turkey since that time, and is known by consumers, especially in Istanbul, due to the defendant s efforts to target high-income consumers. The court also noted that the parties have concurrently used their respective trademarks without causing any confusion as to association. The court also held that it is very clear that the defendant did not intend to cause or create any likelihood of association. As a result of the above analysis and in light of the overall impressions of the trademarks and their phonetic and semantic aspects, the court ruled that both trademarks could be protected only in their entireties and it was not appropriate to analyze the risk of a likelihood of association by considering only one portion of the mark (i.e., NERO and NEGRO). 933 Accordingly, the court refused to cancel the defendant s trademark registration or overturn the decision of the Higher Board of the TPI. Plaintiff Rixos Licensing B.V. instituted an action against the TPI to cancel the TPI s decision rejecting plaintiff's application to 933. Eti Gida Sanayi ve Ticaret A.S. v. Caffe Nero Group PLC & Turkish Patent Institute, Case No. 2009/62 E, Decision No. 2010/122 (2d Ankara Court of Intellectual and Industrial Property Rights, June 3, 2010).

381 1178 Vol. 101 TMR determine that its RIXOS trademark is well known. The TPI is the first administrative authority to consider such an application. The plaintiff claimed that its RIXOS 934 mark is a well-known trademark under Articles 6bis and 7/1(i) of the Paris Convention. The defendant TPI asserted that RIXOS was not a coined term and that there were various third-party registrations for RIXOS on the trademark registry. The court found that the plaintiff had registered the RIXOS trademark in 20 countries and had used the mark in connection with hotel services; that the RIXOS hotel in Belek, Turkey, had been described as the most luxurious hotel in the world; and that the RIXOS trademark had a higher level of awareness with consumers in the tourism industry. Furthermore the expert s report determined that RIXOS is a well-known trademark for hotel services. Accordingly, the court accepted the action and ruled that the plaintiff had established that its RIXOS trademark was a wellknown trademark under the Paris Convention. 935 In doing so, the court held that even if a trademark is used only for limited services (e.g., temporary accommodation services), it can still be accepted as a well-known trademark. Plaintiff Toyota Jidosha Kabushiki Kaisha (Toyota Motor Corporation) instituted an action to cancel the TPI s decision to reject the plaintiff's application to determine that its LEXUS trademark (illustrated below) is well known under the Paris Convention Registrations Nos. 2001/12929 and 2001/ Rixos Licensing B.V. v. Turkish Patent Institute, Case No. 2008/252, Decision No. 2010/167 (4th Ankara Court of Intellectual and Industrial Rights, April 19, 2010).

382 Vol. 101 TMR 1179 The plaintiff s application for the determination of the wellknown status of its LEXUS trademark was rejected by the TPI. To support its claim that its mark LEXUS was well known, the plaintiff submitted evidence and various documents. The defendant TPI claimed that the plaintiff s LEXUS trademark did not have sufficient unaided awareness in connection with goods in Class 12 by a considerable part of relevant consumers. Therefore, TPI claimed, the mark s degree of recognition was not sufficient to deem the plaintiff s LEXUS trademarks as well known. The court stated that to enjoy the protections afforded by Article 6bis of the Paris Convention, a trademark that is considered well known worldwide need only be well known in some countries of the world. Furthermore, to be deemed a well-known trademark in Turkey, it is not necessary that goods or services bearing the trademark at issue are used or manufactured in, or imported to, Turkey. However, to establish the well-known status of a trademark under the Paris Convention, the trademark must be widely known in Turkey. The court emphasized the evidence the plaintiff offered supported its claim of notoriety and found that the TPI s decision was incorrect in light of the worldwide registration and use of the trademark LEXUS by the plaintiff, the value of that mark, sales figures, advertising activities, and rewards received, among other things. The court accepted the notoriety of the LEXUS trademark even though the plaintiff had not established extensive use of the mark in Turkey. The court accepted the action and ruled that the LEXUS 936 trademark is a well-known mark under the Paris Convention, and invalidated the TPI s decision to the contrary. 937 Therefore, in this case, the court accepted the notoriety of the plaintiff s well-known trademark despite an absence of extensive use in Turkey. III.A.4. Unfair, Unauthorized, or Improper Use Jaguar Cars Limited instituted an action against Jaguar Giyim San. ve Tic. Ltd. Sti. and Hasel Ayakkabi San ve Tic Ltd. Sti. on grounds of trademark infringement and unfair competition related to the defendants use of the JAGUAR and JAGUAR & Device trademarks, 938 and the plaintiff requested an injunction 936. Registration No Toyota Jidosha Kabushiki Kaisha (Toyota Motor Corporation) v. The Turkish Patent Institute (TPI), Case No. 2009/111, Decision No. 2010/147 (2nd Ankara Court of Intellectual and Industrial Rights, June 24, 2010) JAGUAR PRIVILEGE, JAGUAR, JAGUAR & Device, JAGUAR & Device, JAGUAR & Device, JAGUAR.

383 1180 Vol. 101 TMR against further trademark infringement and unfair competition. The plaintiff owns registrations for the JAGUAR trademark and a logo and device consisting of a jaguar s head in many different classes including Classes 12, 18 and 25. The defendants offer clothing products (in Class 25) that bear the JAGUAR trademark or the denomination JAGCLUB, or that use a jaguar logo very similar to the plaintiff s well-known jaguar symbol. The plaintiff claimed that: its trademarks for JAGUAR and JAGUAR & Device are well known; the defendants use of the trademarks JAGUAR, JAGUAR & Device, and JAGCLUB created confusion with the clothing products, product packaging, advertising materials, and commercial correspondence the plaintiff uses in connection with its JAGUAR trademarks; and the defendants were attempting to unfairly benefit from the reputation of plaintiff s JAGUAR trademarks through associating defendant s products with plaintiff s JAGUAR trademarks; after the plaintiff complained to the Office of the Director of Public Prosecutions, some of the defendant s infringing products and commercial materials were seized by the authorities; the defendants owned the domain name registrations for and and the JAGUAR mark appeared in the defendant s trade name, Jaguar Giyim Sanayi. The plaintiff requested that the court do the following: determine that the defendants use of JAGUAR, JAGUAR & Device, and JAGCLUB on clothes caused confusion with the plaintiff s JAGUAR trademarks and thus constituted trademark infringement and unfair competition; cancel the domain names that the defendants registered and order the defendants to compensate the plaintiff for the moral and material damages it suffered and for the harm the defendants caused to the reputation of the plaintiff s JAGUAR trademarks; remove the denomination JAGUAR from the defendant s trade name Jaguar Giyim San; destroy the materials used in the production of the defendants infringing products and commercial materials; announce the court s decision in a newspaper. The defendants denied the plaintiff s claims and argued that there was no trademark infringement, unfair competition, or confusion between the parties goods or trademarks. Accordingly, defendants requested that the court reject the court action. The two expert reports and additional reports submitted to the court during the action weighed in favor of the plaintiff, and the court accepted all of the plaintiff s claims. The TPI found that the defendant s use of the JAGUAR, JAGUAR & Device, and JAGCLUB marks constituted trademark infringement and unfair competition and that the plaintiff had been damaged.

384 Vol. 101 TMR 1181 Furthermore, the TPI accepted that the plaintiff s JAGUAR trademark had been well known since 1996, and therefore the owner of the trademark would enjoy extensive protection. In light of the arguments and evidence submitted, including the expert reports, the court partially accepted the action and held as follows: the court determined that the defendants use of JAGUAR and JAGUAR & Device trademarks on clothing products and advertising and commercial materials infringed the plaintiff's trademark rights and constituted unfair competition, and therefore the court enjoined such activity; the court determined that the defendants use of the word JAGCLUB together with the JAGUAR HEAD logo constituted trademark infringement and unfair competition and ordered the destruction of any infringing products, product packaging, and advertising and promotional materials; the court denied access from Turkey to the website registered in the name of the defendants and enjoined use of the JAGUAR trademark and JAGUAR HEAD logo in connection with the website the court ordered that the defendants compensate the plaintiff for the moral and material damages plaintiff suffered and for the harm to the reputation of plaintiff's JAGUAR trademarks; the court ordered the defendant to remove the word JAGUAR from its trade name, Jaguar Giyim Sanayi ve Ticaret Ltd. Sirketi; charged the defendants with all of the plaintiff s litigation costs; and issued an announcement of the summary of the court s final judgment in one of the three most-circulated newspapers in Turkey. 939 Plaintiff/Counter-defendant Basari Musavirlik Ticaret Ltd. Sti. instituted an action against Defendants/Counterclaimant Dunya Aktuel Dagitim AS, Dunya Super Dagitim AS, and Dunya Yayincilik AS. The plaintiff claimed that: It owned the trademark GENTLEMAN 940 registered in the Classes 3, 4, and 16. The defendants published a magazine that under the trademark GENTLEMAN and used that mark in advertising materials, and that the offending magazine had been distributed in Ankara. The defendants use of GENTLEMAN in connection with a magazine constituted trademark infringement and caused confusion with the plaintiff s products and advertising and commercial materials used with those products Jaguar Cars Ltd v. Jaguar Giyim San. ve Tic. Ltd. Şti. & Hasel Ayakkabi San. ve Tic. Ltd. Şti., Case No. 2006/46, Decision No. 2009/9 (4th Istanbul Court of Intellectual and Industrial Property Rights, Jan. 30, 2009) Registration No. 2003/36956.

385 1182 Vol. 101 TMR The plaintiff requested that the court: Determine that the defendants use of GENTLEMAN in connection with a magazine and related commercial materials constituted trademark infringement and unfair competition. Enter an order enjoining further acts of trademark infringement and unfair competition by the defendants. Order an announcement of the decision in a newspaper. Defendants/Counterclaimants disagreed with the plaintiff s claims and argued the following: The plaintiff was not the correct party to assert a claim because the actual owner of the asserted trademark was a third-party company named Milano Finanza Editori S.P.A. The defendant was the licensee of Milano Finanza Editori S.P.A. and had been using the trademark MF GENTLEMAN under a license agreement, which covered Classes 16,18, 25, 35, 38, and 42. The plaintiff filed the action in bad faith under Article 2 of Turkish Civil Law. The plaintiff registered the trademark GENTLEMAN incidentally and was misusing its rights in that trademark. Therefore, there was no actionable trademark infringement or unfair competition, and the court should reject the plaintiff s action. Furthermore, the defendant filed a counter-cancellation action on the basis of the plaintiff s non-use. The defendant claimed that the plaintiff had failed to sufficiently use the trademark GENTLEMAN in the five-year grace period before the date of the main action. Accordingly, the defendant requested that the court order the cancellation of the plaintiff s GENTLEMAN trademark on the basis of non-use under Articles 14 and 42 of the Turkish Trademark Decree Law. With regard to the plaintiff s main action, the court rejected it and declared that: The defendant offered sufficient evidence to establish that it had been the licensee of Milano Finanza Editori S.P.A., the non-party company that owned the trademark. The defendant was using the trademark MF GENTLEMAN under a license agreement with Milano Finanza Editori, and therefore the defendant s use of the trademark GENTLEMAN did not constitute trademark infringement. The plaintiff filed the action in bad faith because the plaintiff did not file the action within a reasonable period of

386 Vol. 101 TMR 1183 time and the defendant had been using the trademark at issue for many years. All of the defendant s litigation costs would be charged to the plaintiff. With respect to the defendant s counter-cancellation action, the court rejected it for the following reasons: The necessary usage period of the trademark, which is required under Articles 14 and 42 of the Decree Law, begins from the registration date of the trademark at issue. The plaintiff s trademark GENTLEMAN was registered on April 5, 2005, and the five-year grace period does not expire until April 5, Nevertheless, the defendant brought its action on September 29, 2009, and within the grace period. Accordingly, the court rejected the defendant s countercancellation action and charged all of the plaintiff s litigation to the defendant. 941 UKRAINE III.A.1. Dilution In 2005, the Japanese company Yamaha Corporation, manufacturer of musical instruments, motorcycles, power sports equipment, and electronics, filed with the court of first instance a cancellation action against the Ukrainian national trademark YAMAHA, 942 registered in the name of Saturn LLC, a small local company, for goods in Classes 11 (equipment for bathroom or kitchen) and 21 (home or kitchen products). Separately from the Saturn LLC case, in 2007, during the cancellation action, the plaintiff filed for a well-known status. Based on the evidence provided by Yamaha, the Appellate Board of the Ukrainian Patent Office issued a decision according to which the trademark YAMAHA was to be considered well known in Ukraine as of January 1, 2002, for goods in Classes 9, 12, and 15. In the Saturn LLC case, the plaintiff argued that on the date of registration, the YAMAHA trademark did not meet the requirements for protection as set forth in the Ukrainian Trademark Law. 943 Specifically, it referred to Article 25, Basari Musavirlik Ticaret Ltd. Sti. v. Dunya Aktuel Dagitim AS, Dunya Super Dagitim AS & Dunya Yayincilik AS, Case No. 2009/238, Decision No. 2010/100 (Ankara Court of Intellectual and Industrial Rights, May 6, 2010) Registration No , granted May 17, Law on Protection of Rights to Marks for Goods and Services, Dec. 15, 1993, as amended Article 25 provides, in pertinent part, as follows: 1. The protection of rights to a well-known mark is provided according to Article 6- bis of the Paris Convention for the Protection of Industrial Property and the present Law and is based on the recognition of the mark as a well-known mark by the

387 1184 Vol. 101 TMR according to which protection of well-known trademarks is extended to goods or services that are not similar to those in respect of which a trademark is considered well known in Ukraine, provided use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark and the interests of the owner of the well-known mark are likely to be damaged by such use. The defendant argued that the plaintiff did not provide the court with any evidence to prove likelihood of damages. The court of first instance ruled that the mere fact that the defendant s use of the trademark YAMAHA for goods in Classes 11 and 21 could be construed by consumers to indicate a business relationship between the defendant and the plaintiff, as the owner of the wellknown mark in Ukraine implied that the interests of the plaintiff were likely to be damaged by such use. For this reason the court ruled in favor of the plaintiff and cancelled the defendant s trademark registration. On appeal, the High Commercial Court upheld the rationale used by the court of first instance. It emphasized, moreover, that even though the decision on the well-known status of the plaintiff s mark was made after the application date for the defendant s mark, the YAMAHA trademark was acknowledged as well known in Ukraine from a date preceding the defendant s application date. Therefore, the High Commercial Court ruled that at the date of its registration, the defendant s trademark did not meet the requirements for protection in Ukraine, and, accordingly, it ordered that the Patent Office cancel the defendant s registration. 945 Although the Ukrainian Trademark Law does not specifically address dilution, this decision sets a precedent in showing an efficient application of legislation on well-known marks to prevent dilution of trademarks. Appellate Chamber or the court. The mark can be recognized as well-known irrespective of its registration in Ukraine. 4. The mark is protected in the same way as if the mark was filed for registration in Ukraine from the date from which the mark is recognized as a well-known mark in Ukraine by the decision of the Appellate Chamber or the court. The protection extends also to the goods and services that are not kindred to the goods and services for which the mark is recognized as a well-known mark in Ukraine provided that the use of the mark by another person with respect to such goods and services will be indicating a connection between the latter and the owner of the well-known mark, and his or her interests are likely to be damaged due to such a use Yamaha Corp. v. Saturn LLC (High Commercial Court of Ukraine, Mar. 23, 2010), available at (state online database of court decisions) (in Ukrainian).

388 Vol. 101 TMR 1185 II.C.6. Domain Names Compagnie Générale des Établissements Michelin, the famous tire manufacturer, is the owner of a number of International Registrations for the trademark MICHELIN in Ukraine. In 2004, the plaintiff became aware, a few months after the domains were registered, of the use of its trademark in the domain names and by Autoland LLC, a local company selling tires and different car parts, which originally registered both domains and later transferred them to the second defendant (Consul Avtomotiv LLC, a reseller of car parts) and the third defendant (an individual). In 2006, the plaintiff filed a court action seeking to prevent the defendants from using its registered trademark MICHELIN in the domain names and At the date of filing of the cancellation action, the above-mentioned domain names were owned by Consul Avtomotiv LLC. On the websites one could buy different automobile products, including those of Michelin. Later on, the domain name was transferred to the third defendant. The second and third defendants were brought into the proceedings by order of the court. The court of first instance ruled that the use of the trademark MICHELIN by the defendants in the domain names and constituted infringement of the plaintiff s rights in its numerous trademark registrations. The defendants were ordered to stop using the trademark MICHELIN as part of the two domain names being disputed. The decision of the court of first instance was upheld by the Court of Appeal. The High Commercial Court of Ukraine upheld the decisions of the previous instances with respect to the infringement of the plaintiff s rights by use of the trademark MICHELIN in the domain name by Autoland LLC and Consul Avtomotiv LLC. However, it reversed the decisions of the court of first instance with respect to trademark infringement of the plaintiff s rights by use of the trademark MICHELIN in the domain name by the third defendant. 946 In its decision the court referred to Article 16, paragraph 6, of the Ukrainian Trademark Law, 947 according to which the exclusive 946. Compagnie Generale des Établissements Michelin v. Consul Avtomotiv LLC et al. (High Commercial Court of Ukraine, June 8, 2010), available at (in Ukrainian) Article 16, paragraph 6, provides as follows: The exclusive right of a proprietor of a certificate to prohibit the use of the registered mark by other persons without his permission does not extend to: exercising of any right acquired before the date of filing the application or, if the application priority was claimed, before the priority date;

389 1186 Vol. 101 TMR right of the trademark owner to prevent any third party from using a sign that is identical or similar to the registered trademark does not extend to noncommercial use of the sign. Unlike the domain name which was used by the first and second defendants for the purpose of promoting and advertising goods and services that were similar to those for which the plaintiff s trademarks were registered, the domain name was not being used by the third defendant for any purpose. More specifically, the website was inactive. In view of the claims of the third defendant that it had obtained registration of the domain name for use in noncommercial activities and in the absence of any evidence by the plaintiff to the contrary, the High Commercial Court ruled that use of the mark MICHELIN by the third defendant as part of the domain name owned by him did not constitute infringement of the plaintiff s rights according to the Ukrainian law. The court did not take into account the fact that the domain name was initially registered by Autoland LLC and then transferred to Consul Avtomotiv LLC and, later, to the third defendant. Neither did the court consider that the extension.com was derived from the word commercial, meaning that this website was originally intended for a commercial activity. This decision is significant because the High Commercial Court held that use of a third party s trademark as a domain name could be considered trademark infringement depending on the purpose of the registration and the use of the domain name. UNITED KINGDOM I.J. Coexistence Agreements In Omega Engineering Inc. v. Omega SA, 948 the English High Court commented on the practice of OHIM (Office for Harmonisation in the Internal Market) concerning the consideration and recognition of coexistence agreements. the use of the mark for the goods introduced into the commercial turnover under this mark by the proprietor of the certificate or by his permission, provided that the proprietor of the certificate has no essential reasons to prohibit such a use in connection with the following selling of the goods, in particular in case when the condition of goods changed or the quality of the goods lowered after its introducing into the commercial turnover; the non-commercial use of the mark; all forms of broadcasting and commentaries in news; conscientious use of the names or addresses by them [2010] EWHC 1211 (Ch.) (May 28, 2010), available at ew/cases/ewhc/ch/2010/1211.html.

390 Vol. 101 TMR 1187 The history of the case was unusual. Omega Engineering, a U.S. corporation, had sought to register the mark OMEGA in Class 14, and that registration was opposed by the Swiss watchmaker Omega SA on the basis of a number of earlier marks. The U.K. Trade Marks Registry dismissed the opposition on the ground that the correct interpretation of the preexisting coexistence agreement between the parties was that Omega SA had consented to Omega Engineering s application. 949 Omega SA appealed to the High Court. At that point Omega Engineering brought suit against Omega SA, alleging breach of contract under the coexistence agreement and seeking an injunction to restrain the defendant from prosecuting the appeal and an award of damages. The High Court considered both an application for summary judgment in relation to the breach of contract claim and, at the same time, the appeal from the registry s decision. Mr. Justice Arnold held that the coexistence agreement precluded Omega SA from opposing Omega Engineering s application, that he did have the jurisdiction to grant an injunction of the sort sought, 950 and that it was a proper exercise of that jurisdiction to restrain Omega SA s appeal. On the appeal itself, Omega SA had argued that any consent evidenced in the co-existence agreement was irrelevant. Omega SA contended that the decision of the European Court of First Instance (CFI) in Omega SA v. OHIM 951 was authority for the proposition that an agreement by an opponent to consent to registration of a trade mark by an applicant was irrelevant to an objection by the opponent on relative grounds under Article 8 of the Community Trade Marks Regulation (CTMR). 952 The reasons for that alleged irrelevance were not set out in the CFI s decision, and the judge felt that it was not clear that the CFI had actually said what Omega SA alleged. However, an article that had been published in a personal capacity by the individual who had represented OHIM on the appeal 953 asserted that the Opposition Division generally refused to give weight to private agreements when assessing likelihood of confusion and that while the Boards of Appeal did take unequivocal coexistence agreements into account, they were said to be reluctant to interpret provisions 949. See BL O (Registrar of Trade Marks, Nov. 12, 2009), available at Relying upon In re Connolly Brothers Ltd, [1911] 1 Ch 731, and accepting that comments to the contrary (11 Halsbury s Laws 494 (5th ed.)) did not represent the current state of the law Case T-90/05, [2007] ECR II-145 (CFI, Nov. 6, 2007) Council Regulation (EC) No. 207/2009, Feb. 26, Arnaud Folliard-Monguiral, Coexistence in Community Trade Mark Disputes: Conditions and Implications, [2006] JIPLP 703, 708.

391 1188 Vol. 101 TMR that left room for ambiguity. According to the author, although such agreements were enforceable in the competent national courts, the Opposition Division believed that it lacked jurisdiction to interpret and enforce them. The judge was unconvinced by this argument. In his view, the existence of an agreement between the parties was a fact (even if, as a matter of English law, the meaning of an agreement was classed as a question of law) that could be taken into account by OHIM under Article 74(1) of the CTMR. Further, given that it was clear under Article 52(3) (now Article 53(3)) of the CTMR that consent was a bar to an invalidation action, it would be bizarre if consent were not a bar to opposition proceedings. It remains to be seen to what extent OHIM and the European courts will take any notice of the reasoning of the English court in this respect. II.C.1.j. Slogans A recent appeal brought by the Coca-Cola Company in relation to the refusal of the Registrar of Trade Marks 954 to register the mark NO HALF MEASURES in respect of various educational, entertainment, and sporting services in Class 41 raised the question of how to assess whether a slogan has sufficient distinctiveness to allow registration. Hearing the appeal, the Appointed Person had the benefit of the recent decision of the Court of Justice of the European Union (CJEU) (formerly the European Court of Justice (ECJ)) in Audi AG v. OHIM 955 in respect of the mark VORSPRUNG DURCH TECHNIK. According to the Appointed Person, Professor Ruth Annand, that case suggested that there had been some misunderstanding or over-enthusiastic application of the ECJ s earlier decision in OHIM v. Erpo Möbelwerk GmbH. 956 In particular, it was now clear that the fact that a mark was perceived by the relevant public as a promotional formula and that, because of its laudatory nature, it could in principle be used by other undertakings was not by itself sufficient to support the conclusion that the mark was devoid of distinctive character. 957 Further, the hearing officer had wrongly relied on the ECJ s statement in Wrigley v. OHIM (the DOUBLEMINT case) that [a] 954. BL O/113/09 (Apr. 30, 2008), available at Case C-398/08 P (ECJ, Jan. 21, 2010), available at jurisp/cgi-bin/form.pl?lang=en&submit=rechercher&alldocs=alldocs&docj=docj&docop=doco p&docor=docor&docjo=docjo&numaff=c-398/08.p&datefs=&datefe=&nomusuel=&domaine= &mots=&resmax= Case C-64/02 P, [2004] ECR I (ECJ, Oct. 21, 2004) (involving the mark DAS PRINZIP DER BEQUEMLICHKEIT) See Audi AG v. OHIM, Case C-398/08 P, para. 44 (ECJ, Jan. 21, 2010).

392 Vol. 101 TMR 1189 sign must therefore be refused registration under [CTMR Article 7(1)(c)] if at least one of its possible meanings designates a characteristic of the goods or services concerned. 958 Absolute grounds for refusal of registration have to be considered separately and according to the public interest underlying each of them. The purpose of Article 7(1)(c) of the CTMR (Section 3(1)(c) of the Trade Marks Act 1994 (TMA)) was to ensure that descriptive signs or indications could be freely used by all. 959 There was no objection on that ground in this case. The objection was instead under Section 3(1)(b) of the TMA (i.e., that the term was devoid of distinctive character), the general interest behind which was to guarantee the identity of origin of the designated goods or services. As far as the mark NO HALF MEASURES was concerned, the Appointed Person was of the view that the phrase was possessed of distinctive character even if in respect of some of the services it could be seen as conveying some other meaning. It was a mark that, though conveying an objective message, nevertheless could still act as an indication of origin. Coca-Cola s appeal was therefore successful. II.D.6. Flags, Coats of Arms, and Other Insignia An interesting and rare decision of the Trade Marks Registrar 960 involved a case in which the UK Intellectual Property Office (UKIPO) refused the registration of a mark based on its inclusion of a crown (see below). The TMA precludes the registration of a trade mark that includes a representation of the Royal crown (Section 4(1)(b)) or words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation (Section 4(1)(d)). Further, a trade mark that contains the national flag of the United Kingdom shall not be registered if it appears to the registrar that the use of the trade mark would be misleading or grossly offensive (Section 4(2)(a)). The crown portrayed in the mark was not the Royal crown. However, the fact that (1) the mark contained the Union Flag, which was often associated with Royalty and the official organs of state; (2) the textual elements of the mark made reference to the armed forces, with which the Royal family has a well-known 958. Wm. Wrigley Jr. Co. v. OHIM, Case C-191/01 P, [2003] ECR I para. 32 (ECJ, Oct. 23, 2003) The provision excludes from registration trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services In re Application No by David George Robson & Opposition Thereto Under No by BAFF (2006) Ltd trading as British Armed Forces Federation, BL O (July 24, 2009), available at

393 1190 Vol. 101 TMR association; and (3) the crown used in the mark had a passing resemblance to the first of the three representations of the Royal crowns that are set out below meant that, in the view of the hearing officer, the average consumer would conclude that the user of the mark had royal patronage or was an organ of the state. The mark was, therefore, refused as offending against Sections 4(1)(d) and 4(2)(a). Applicant s mark Representations of the Royal Crown III.A.2. Passing Off In Diageo North America, Inc v. Intercontinental Brands (ICB) Ltd, the English courts held that the law of extended passing off can be relied upon to protect a class of products as broad as vodka. ICB had sold products under the name VODKAT in various forms of packaging (see photographs of two of the products, below). VODKAT was a clear, virtually tasteless alcoholic drink made from a mixture of vodka and naturally fermented alcohol with an ABV (alcohol by volume) of 22 percent. The alcoholic content of VODKAT was significantly less than the minimum of 37.5 percent for vodka, making the duty payable on the product approximately one-third of the amount payable on vodka. As a consequence, it could be sold at a significantly cheaper price.

394 Vol. 101 TMR 1191 Diageo brought proceedings for extended passing off, alleging that it was one of a member of a class that held protectable goodwill in the term vodka, that the term VODKAT and the bottle in which the product had been packaged misrepresented to consumers that the product was vodka when it was not, and that Diageo had suffered damage as a result. The first main issue that the judge had to decide at first instance 961 was whether vodka denotes a class of goods with a reputation and hence has a protectable goodwill for the purposes of extended passing-off proceedings. This question could be broken down into two parts: (1) whether the term clearly defines a class of goods, and (2) whether that class has a reputation giving rise to goodwill among a significant section of the public. Vodka was defined in various European regulations in relation to spirits. The definitions in those regulations were broad (e.g., not limiting the starting materials from which the product was made or the country of manufacture), but in the judge s view, vodka nevertheless constituted a clearly defined class. The judge also considered that it had a reputation as a drink with recognisable qualities of appearance, taste and satisfaction. 962 On the issue of misrepresentation, the judge held that the name VODKAT suggested that the product either was vodka or contained or was made from vodka. While it would probably have been possible for ICB to use the name if sufficient care had been taken clearly to inform consumers what the product was and to differentiate it from vodka, ICB had not done so. Although this was not a marginal case, there was additional evidence of actual 961. Diageo North America, Inc v. Intercontinental Brands (ICB) Ltd, [2010] EWHC 17 (Ch., Jan. 19, 2010), available at /17.html A quote taken from the first instance decision in Erven Warnink BV v. J. Townend & Sons Ltd, [1978] FSR 1 (Goulfing, J.).

395 1192 Vol. 101 TMR confusion among a substantial number of members of the public to further support the finding of misrepresentation. Finally, as to damage, the judge was satisfied with the evidence that Diageo would have lost some sales of its SMIRNOFF product as a result of confusion between VODKAT and vodka. Further, and in any event, ICB s marketing of VODKAT was such that it was likely to erode the distinctiveness of the term vodka ; this was sufficient for a finding that Diageo had suffered damage. On appeal, 963 the defendants submitted that a claim for extended passing off is limited to products that have a cachet in the sense of being of superior quality or of being what one might describe as a premium product. They contended that all the previous case law in this area, involving champagne, 964 sherry, 965 and Scotch whisky, 966 was of this sort. This limitation, it was argued, was necessary to limit cases of extended passing off appropriately. Without it, the defendants submitted, the courts would be faced with actions in respect of the terms for ordinary products, such as beer, butter, unleaded petrol, or white paint. The appeal was rejected. The Court of Appeal noted that if such a term is to qualify for protection under the extended form of passing off, it can only be because the product has acquired a reputation and goodwill by dint of the qualities or characteristics that it possesses. Vodka qualified for protection because, like champagne, it had come to be known and recognised for its distinctive qualities as a particular type of alcoholic drink. There was no requirement that the product be recognised as possessing superior or special qualities. The court rejected the defendants contention that this might lead to actions by a wide class of claimants in respect of a large and diffuse class of goods. Relying on the comments of Lord Diplock in Erven Warnink BV v. J. Townend & Sons Ltd 967 (the Avocaat case), it believed that the extended version of passing off was essentially self-limiting. The product must by name have acquired a distinctive reputation and therefore goodwill. A claimant would also have to show that he was entitled to that goodwill and had suffered loss. The larger the class, the more difficult it would be to show the term had acquired a public reputation and goodwill. Also the more difficult it would be to individual members of the class to show that the goodwill of the 963. [2010] EWCA Civ 920 (July 30, 2010), available at cases/ewca/civ/2010/920.html E.g., J. Bollinger v. Costa Brava Wine Co Ltd, [1960] RPC 16; H.P. Bulmer Ltd v. J. Bollinger SA, [1978] RPC Vine Products Ltd v. Mackenzie & Co Ltd, (1969) RPC John Walker & Sons v. Henry Ost & Co Ltd, [1970] RPC [1980] RPC 31.

396 Vol. 101 TMR 1193 business had sustained more than minimal damage. New entrants to the class would also have to have used the term long enough in relation to their own goods to have built up goodwill in their businesses. The larger the class and the more precise the term, the more difficult the case would be. The only hesitation from the Court of Appeal came in the separate judgment of Lord Justice Rix. While agreeing with the other judges, he noted that the previous cases before the courts had involved subcategories, either geographically or by reason of a narrow submarket of more general classes of products. In his view, care needed to be taken to ensure that the extended form of passing off should not by dint of extensions upon extensions trespass beyond the legitimate area of protection of goodwill into an illegitimate area of anticompetitiveness. III.A.6. Other Internet Issues A previous edition of this publication reported the decision of Interflora, Inc v. Marks & Spencer Plc, 968 in which Mr. Justice Arnold decided to refer a large number of questions to the CJEU for a preliminary ruling. The questions concerned the legality of the use of the trade mark of another as a Google AdWord. In March 2010, the CJEU wrote to the High Court to request clarification of the reference, including whether the High Court wished to maintain its reference for a preliminary ruling in light of the CJEU s judgment in Google France and Google. 969 Responding, in a further judgment, 970 Mr. Justice Arnold accepted that it was now clear (following the CJEU s Google rulings) that a search engine operation is not considered to use a trade mark (for EU trade mark law purposes) when including it in search bars located at the top and bottom of search pages, in the summary of the search results, by way of alternate suggestion, by presenting a competitor s sponsored link or when adopting the Internet user s use of the sign by presenting the user with search results pages containing the competitor s sponsored link. Accordingly, five of the ten questions previously put to the CJEU fell away and were withdrawn. However, the remaining questions were maintained. Particularly important was question 3(b), which sought to establish under what circumstances an advertiser that makes use as an AdWord of a sign identical to the well-known trade mark of a 968. [2009] EWHC 1095 (Ch., May 22, 2009), also reported at 100 TMR 695 (2010) Joined Cases C-236/08 C-238/08 (CJEU, Mar. 23, 2010), available at &docj=docj&docop=docop&docor=docor&docjo=docjo&numaff=c-236/08&datefs=&datefe=& nomusuel=&domaine=&mots=&resmax= Interflora Inc v. Marks & Spencer Plc, [2010] EWHC 925 (Ch., Apr. 29, 2010), available at

397 1194 Vol. 101 TMR competitor must be regarded as acting in a manner detrimental to the distinctive character of that trade mark (dilution) and/or as taking unfair advantage of the distinctive character or repute of that trade mark (free-riding). Underlying this issue, it remained unclear what the CJEU considered the functions of a trade mark to be. In L Oréal SA v. Bellure NV, 971 the ECJ had held that an effect on any of the functions of the trade mark, and not just the origin function, was sufficient to sustain a claim under Article 5(1)(a) of the European Trade Marks Directive, which deals with infringement in double-identity cases (i.e., identical mark/sign and identical goods/services). However, the CJEU had done little to define (1) precisely what the functions of a trade mark are that may be affected by use of a sign, (2) precisely what is required in order to establish that such functions are liable to be affected in order to found a claim under Article 5(1)(a); and (3) in a doubleidentity case, what the relationship is between a claim under Article 5(1)(a) and a claim under Article 5(2). In this respect the judge also noted that the European Commission, in its written submission in the present case, had suggested that the law in this area lacked the required degree of clarity and the CJEU should take the opportunity to clarify these issues and to reconsider its decision in L Oréal. Many would applaud the judge s call in this case for greater clarity as to the functions of a mark. III.A.7. Advertising In L Oréal SA v. Bellure NV, 972 the Court of Appeal, in a judgment of Lord Justice Jacob with which the other Lord Justices agreed, robustly expressed its dissatisfaction with the answers provided to it by the CJEU on the questions of the nature of the protective functions of a trade mark, the meaning of the phrase imitations or replicas in comparative advertising law, and the scope of the unfair advantage provision (Article 5(2)) of the European Trade Marks Directive. 973 The background to the case is described in detail in previous editions of The Trademark Reporter. 974 In summary, the defendants sold ranges of perfume that smelt like a famous, 971. Case C-487/07, [2009] ECR I-5185 (CJEU, June 18, 2009), also reported in 100 TMR 481 (2010) [2010] EWCA Civ 535 (May 5, 2010), available at ew/cases/ewca/civ/2010/535.html First Council Directive 89/104/EC to approximate the laws of the Member States relating to trade marks, Dec. 21, 1988 (codified as Directive 2008/95/EC, Oct. 22, 2008) L Oreal SA v. Bellure NV, [2007] EWCA Civ 968 (Oct. 10, 2007), also reported at 99 TMR 722, 727, 733 (2009), an appeal from the first instance decision in L Oreal SA v. Bellure NV, [2006] EWHC 2355 (Ch., Oct. 4, 2006), also reported at 98 TMR 686, 702, 703, 710, 711, 719 (2008).

398 Vol. 101 TMR 1195 luxury-branded perfume sold under well-known registered trade marks. L Oréal alleged that the defendant s use of comparison lists showing which of its products corresponded to the L Oréal perfumes they were intended to imitate infringed its registered trade marks for those perfumes. The court had previously concluded that it was lawful to make and sell smell-alike products, indicating that the best and only practical way of doing this was by reference in comparison lists. The defendants gained a major advantage by selling the goods in this way, but no customer was ever deceived, Further, the selling method did not tarnish or blur the reputation of L Oreal s marks, and it did note impair its sales. According to the Court of Appeal, the question was whether European trade mark law muzzled the seller of the smell-alike products from telling the truth that the products smelt the same. The Court of Appeal held that the CJEU s decision 975 did have what in its opinion was that undesirable effect. It proceeded to cite Article 19(2) of the Universal Declaration on Human Rights, Article 10(1) of the European Convention on Human Rights and Article 11(1) of the Charter of the Fundamental Rights of the European Union. While it recognised that the right of free expression was not unqualified, any rule of law that stood in its way ought to be scrutinised with particular care. It also noted that in Laugh It Off Promotions v. South African Breweries 976 the Constitutional Court of South Africa had held that free speech might trump trade mark rights. The Court of Appeal expressed regret that the CJEU had not addressed the competition aspects and consequences of the prohibition of what the CJEU had described as riding on the coattails of another s mark and had failed to provide clear rules by which a trade knew clearly what he could and could not do. It cited academic criticism of the decision. 977 It also suggested that the CJEU s stance meant that the European Union had a more protective approach to trade mark law than other major trading areas or blocs. Nevertheless, the Court of Appeal considered itself bound by the CJEU s decision. It was clear that the CJEU had concluded that use of another s mark on a comparative price list was use within the scope of Article 5(1)(a) of the Trade Marks Directive. It expressed 975. Case C-487/07 (ECJ, June 8, 2009) Case No. CCT 42/04, 2005 (8) BCLR 743 (CC, May 27, 2005), also reported at 96 TMR 504 (2006) Meale & Smith, Enforcing a trade mark when nobody s confused: Where the law stands after L Oréal and Intel, 5 Journal of Intellectual Property Law Practice 96, 103 (2010); Gangjee & Burrell, Because You re Worth It: L Oréal and the Prohibition on Free Riding, 73 Modern Law Review 282 (2010); and Jonathan D.C. Turner, in Intellectual Property and EU Competition Law (Oxford 2010).

399 1196 Vol. 101 TMR difficulty with the reasoning of the CJEU that Article 5(1)(a) of the Trade Marks Directive protected other functions of a trade mark, namely, the functions of communication, investment or advertising, even where the essential function of a trade mark, which is to indicate the origin of the goods or services, was not harmed. These other functions were not mentioned in the underlying legislation and were conceptually vague and illdefined. The Court of Appeal suggested that the matter could have been dealt with in a far more direct manner by asserting that this was a case of same mark/same goods and that there was an escape only if Article 6(1)(b) of the Directive applied (i.e., an indication concerning a characteristic of the goods/services used for honest practices in the course of business). The CJEU had held that the Comparative Advertising Directive provided no defence given that, in the CJEU s view, smell-alike products fell within the scope of the term imitations or replicas in Article 3a(1)(h) of that Directive. However, the Court of Appeal remarked that this involved a departure from the approach of the CJEU in Toshiba 978 and Pippig, 979 where the CJEU had declared that the conditions required of comparative advertising must be interpreted in the sense most favourable to it. The Court of Appeal could see no rational basis for this rule and suggested more generally that Article 3a(1)(h) should be reconsidered for reform. Last, the Court of Appeal addressed the question of the CJEU s interpretation of the unfair advantage aspect of Article 5(2) of the Trade Marks Directive. So far as it could tell, the CJEU had held that all free-riding on the reputation of another was unfair. The court did not agree with or welcome this conclusion, which provided what it considered to be a pointless monopoly ; however, it was the court s duty to apply it. III.A.8. Parallel Imports/Gray Marketing In Oracle America, Inc. (formerly Sun Microsystems, Inc.) v. M- Tech Data Ltd, 980 the Court of Appeal allowed an appeal against a finding of summary judgment in favour of a trade mark owner, where the defendant had raised defences alleging that the trade mark owner had breached the freedom of movement and anticompetitive agreement provisions of the EC Treaty. The defendant imported into the United Kingdom disk drives bearing the claimant s SUN trade mark. The courts had previously 978. Toshiba Europe GmbH v. Kaitun Germany GmbH, Case C-112/99, [2001] ECR I (ECJ, Oct. 25, 2001) Pippig Augenoptik GmbH & Co. KG v. Hartlauer Handelsgesellschaft mbh, Case C-44/01, [2003] ECR I-3095 (ECJ, Apr. 8, 2003) [2010] EWCA Civ 997 (Aug. 28, 2010), available at ew/cases/ewca/civ/2010/997.html.

400 Vol. 101 TMR 1197 held as a matter of fact that these goods had been first placed on the market in China, Chile, and the United States, and that Oracle s rights to sue for trade mark infringement in relation to dealings in those products in the European Economic Area (EEA) had not been exhausted. Oracle did not publish information that would enable independent resellers to identify whether particular items of Oracle hardware had been first placed on the market in the EEA. The defendant alleged that Oracle had deliberately adopted a policy of not publishing its database to make trade in genuine EEA first-marketed goods difficult. It further claimed that Oracle s policy of aggressively pursuing the independent resellers for trade mark infringement if the goods were first marketed outside the EEA deterred those retailers from generally dealing in these products regardless of where they had first been placed on the market. This was argued to be contrary to Articles 28 and 30 of the EC Treaty (now Articles 34 and 36 of the Treaty on the Functioning of the European Union (TFEU)), which prevent Member States from adopting and maintaining unjustified restrictions on intra-eu trade. Further, they claimed that Oracle had made it a term of its agreements with distributors and resellers that they could purchase its equipment, whether new or second-hand, from outside its supply network only if that supply network could not supply it, and that as a consequence trade in the independent network had largely disappeared. The defendants claimed that it would be contrary to Article 81 of the EC Treaty (now Article 101 of the TFEU) for Oracle to be able to enforce its trade mark rights in those circumstances. These arguments were rejected by the High Court, 981 which concluded that they had no real prospect of succeeding. According to the court, Articles 5 and 7 of the Trade Marks Directive (which specify the acts of infringement and exhaustion) embodied a complete code harmonising the rules relating to the rights conferred by a mark. To read in a limitation on the ability to bring infringement proceedings in the circumstances alleged would be inconsistent with a trade mark owner s right to control the first marketing within the EEA of goods bearing the mark. Further, the judge also accepted that, even if Oracle s agreements with its distributors and resellers were to offend against Article 81 of the EC Treaty (which the High Court was prepared to assume for the purposes of the summary judgment application), there was insufficient connection between the breach and the enforcement of its trade mark rights. According to the judge, the disappearance of the secondary market was not due to these agreements but to the 981. Sun Microsystems Inc v. M-Tech Data Ltd, [2009] EWHC 2992 (Pat., Nov. 25, 2009), available at

401 1198 Vol. 101 TMR inability of the independent resellers to verify the provenance of the Oracle hardware that they had sourced. The Court of Appeal disagreed. In its view, it was properly arguable that Articles 5 and 7 of the Trade Marks Directive might be interpreted by reference to Articles 28 and 30 of the EC Treaty, and that on the facts and matters pleaded, a breach of Article 28 would be established that would not be capable of being justified under Article 30 of the EC Treaty or Article 7 of the Trade Marks Directive and that would affect Oracle s right to sue M-Tech as a parallel importer for infringement of its marks. Similarly, the Court of Appeal considered it properly arguable that the complete code to which the judge had referred was to be restricted to the aspects of the enforcement of trade mark rights in issue before the CJEU in earlier parallel imports cases, Silhouette International Schmied GmbH & Co. KG v. Hartlauer Handelsgesellschaft mbh 982 and Zino Davidoff SA v. A & G Imports, Levi Strauss & Co v. Tesco Stores and Costco Wholesale Ltd, 983 rather than the issues present in this case. As to the issue of whether Article 81 of the EC Treaty could provide a defence to trade mark infringement proceedings, the court noted that in Sportswear Spa v. Stonestyle Ltd 984 the Court of Appeal had concluded that a broad approach should be taken to the question of showing a connection between the alleged problematic terms and infringement proceedings. There was an arguable point on connection in this case 985 given that it was alleged by the defendant that the agreements with distributors and resellers formed part of an overall scheme for excluding secondary traders from the market. The Court of Appeal asserted that the issue in this case clearly ha[d] important financial and economic implications not just for the parties but also for others involved in the grey market in Oracle, and possibly other, computer hardware and goods. It therefore ruled that the case should be sent back to the High Court for possible directions as to an expedited trial, commenting that if the defendant s allegations were established at trial there might well be a good reason for the judge then to make a reference to the CJEU without waiting for the case to be referred to the Court of Appeal once again. However, the course of this action has subsequently taken a different tack, as Oracle has obtained leave to appeal to the Supreme Court of the United Kingdom Case C-355/96, [1998] ECR I-4799 (ECJ, July 16, 1998) Joined Cases C-414/99 416/99, [2001] ECR I-8691 (ECJ, Nov. 20, 2001) [2006] EWCA Civ 380 (Apr. 11, 2006), also reported at 97 TMR 657 (2007) Notwithstanding the statement (Kerly on Trade Marks et seq. (14th ed. 2005)) that the ECJ has moved away from using competition law as a means of regulating the exercise of trade mark rights to using the free movement rules.

402 Vol. 101 TMR 1199 Some disquiet has been expressed among commentators that the effect of this decision, although perhaps justified by the state of uncertainty of European law on these issues, might lead to parallel traders routinely pleading Euro-defences to avoid summary judgment and thereby delay the judicial resolution of cases brought against them. Further clarification of the law is awaited. III.C.1. International Conventions In Pocket Kings Ltd v. Safenames Ltd & Commonwealth of Kentucky, 986 the English High Court had to consider the unusual question of whether it should grant a declaration that would enforce an earlier U.S. state court order that required the forfeiture of a UK registrant s domain name fulltiltpoker.com. The High Court ruled that it was unenforceable under English law. The order arose out of civil in rem forfeiture proceedings that the Commonwealth of Kentucky ( Kentucky ) had commenced in respect of 141 domain names in the course of enforcing its criminal law and gaming regulations. 987 The domain name was of importance to the complainant s business, and so it began proceedings against both Kentucky and the English registrar of the domain name, Safenames Ltd, for a declaration that the order was unenforceable in the English courts. Kentucky did not take part in the proceedings, but judgment in default was not automatic. The High Court also examined whether, as a matter of UK legislation, it should decline to consider the matter on the ground that Kentucky was entitled to state immunity in civil proceedings under the State Immunity Act The court concluded that, whatever might previously have been the case, under the common law, Kentucky was not recognised as a state capable of claiming that kind of immunity. The Act did not apply to constituent territories, such as Kentucky, of federal states, such as the United States. Also, Kentucky could not be said to be exercising the United States sovereign authority. As a matter of U.S. constitutional law, Kentucky s authority in relation to gambling matters had not been devolved upon it by the federal government but had been reserved to it under the U.S. Constitution. Although at first sight that might seem odd, according to the court, the intention of the U.K. legislation was only to give protection in respect of the acts of a state that was an actor on the international plane. Kentucky was not such an actor [2009] EWHC 2529 (Ch., Oct. 16, 2009), available at cases/ewhc/ch/2009/2529.html Commonwealth of Kentucky v. 141 Internet Domain Names, No. 08-C (Franklin Cir. Ct., Div. II, Sept. 18, 2008).

403 1200 Vol. 101 TMR The court also concluded that Kentucky had been validly served with the proceedings, even though they were served through the Foreign and Commonwealth Office to the U.S. State Department, and the State Department had refused service on behalf of Kentucky. The process for service on constituent territories of a state was mandated by the State Immunity Act 1987, and the correct procedure had been followed in this case. In any event, it was clear that Kentucky had also been informally served with the proceedings and was aware of the nature and content of those proceedings. III.D. Defenses In Hotel Cipriani Srl v. Cipriani (Grosvenor Street) Ltd, 988 the Court of Appeal considered the scope of the own name defence in European trade mark law and in what circumstances a foreignbased service business could claim sufficient goodwill in the United Kingdom to succeed in passing-off proceedings in the United Kingdom. In doing so it adopted an approach to these questions that was somewhat different from that of the court at first instance, an approach that, although leading to the same outcome on the facts, might prove significant in future cases. In summary, the background to the case is that both parties could trace the use of the term Cipriani to Giuseppe Cipriani, who had opened Harry s Bar in Venice in 1931 and thereafter had opened various hotels using the Cipriani name. The claimant operated the famous Hotel Cipriani, the Locanda Cipriani guest house, Hotel Villa Cipriani, and Harry s Bar, all located in and near Venice, and held a Community trade mark (CTM) registration for CIPRIANI in respect of various goods and services, including hotels, hotel reservation, restaurants, cafeterias, public eating places, bars, catering; delivery of drinks and beverages for immediate consumption. They claimed that the defendant s use of the name Cipriani in respect of a restaurant in London infringed that mark and also involved acts of passing off. The defendant claimed that it was entitled to an own name defence to the trade mark infringement claim on the basis that Cipriani was its trade name. It had failed at first instance, 989 primarily as a result of the judge s assessment that previous case law showed that the own name defence was not available to a company in respect of any name other than its true corporate name, and that a trade name would not qualify for this purpose. The Court of Appeal reached a different conclusion. It held that a correct reading of the decisions in Asprey & Garrard Ltd v. WRA 988. [2010] EWCA Civ 110 (Feb. 24, 2010), available at cases/ewca/civ/2010/110.html [2008] EWHC 3032 (Ch., Dec. 9, 2008), also reported at 100 TMR 677 (2010).

404 Vol. 101 TMR 1201 (Guns) Ltd 990 and Premier Luggage & Bags Ltd v. Premier Co (UK) Ltd 991 did not preclude a finding that an ownname defence might apply in relation to a trading name. It was unlikely that such a defence would succeed in a case where a newly adopted trade name conflicted with a preexisting mark. However, that was because according to the relevant legislation own name use had to be use in accordance with honest practices and in these circumstances the use was unlikely to satisfy that test. Ultimately that difference in approach did not assist the defendant. First, as a matter of fact, the defendant had adopted the trade name Cipriani London and yet the claims made against it also extended to the use of Cipriani alone. Second, the Court of Appeal agreed with the judge s secondary position that the circumstances surrounding the defendant s use of the Cipriani name had not been use in accordance with honest practices because it had failed, inter alia, to address its mind to the likelihood of confusion with the reputation of the claimant. Another interesting aspect of the Court of Appeal decision is its analysis of the nature and degree of the goodwill necessary for an entity based outside the United Kingdom to bring proceedings for passing off. It concluded that the decision in Anheuser-Busch v. Budejovicky Budvar NP 992 (which was binding on the court) was authority for the proposition that an undertaking that seeks to establish goodwill in relation to a mark for goods cannot do so, however great the mark s reputation in the United Kingdom, unless it has customers among the general public in the United Kingdom for those products. So far as services performed abroad were concerned, the first instance judge had concluded that for goodwill to exist in the United Kingdom it was sufficient that services were booked by customers in the United Kingdom. (He also had noted that in Pete Waterman Ltd v. CBS UK Ltd 993 the judge had gone further and held that goodwill could exist in the United Kingdom if a foreign service provider had customers there, whether or not their business was placed directly from the United Kingdom). The Court of Appeal again took a somewhat different approach, holding that on the facts the claimant had goodwill on the basis that at the relevant time it had a substantial reputation in England and a substantial body of customers from England, in part as a result of significant marketing efforts directed at the relevant public there, and in part because a significant volume of 990. [2001] EWCA Civ [2002] EWCA Civ [1984] FSR [1993] EMLR 27.

405 1202 Vol. 101 TMR business was placed directly from this country, either by individual clients by telephone or the like, or via travel agents or tour operators. The international reputation of Hotel Cipriani, and the use of the mark Cipriani, were an attractive force that brought in business from England; accordingly, the business had goodwill in England at the relevant time. The Court of Appeal declined to lay down a line of distinction between, on the one hand, businesses abroad with a genuinely international reputation and clientèle and, on the other hand, those that had English customers abroad, and therefore might be known in this country, but whose reputation here did not in practice bring in significant custom from the public in England. However, it did comment that in the circumstances of the present day, where services and facilities could be booked directly from anywhere in the world, the direct bookings test might be increasingly outmoded, and that this test should be reviewed in future in an appropriate case. III.F.5. Nullification In the latest skirmish in the Budweiser wars between the American brewer Anheuser-Busch, Inc. (AB) and its Czech rival Budĕjovický Budvar, národní podnik (BB), the English Court of Appeal made a reference to the CJEU as to the meaning of acquiescence and the proper calculation of the five-year period beyond which it is not possible to bring invalidity proceedings in relation to a mark. 994 The facts of the case are set out in detail in this publication s report of the first instance decision. 995 In summary, by 2000, the English courts had determined that both parties were entitled to use the marks BUD and BUDWEISER given their honest concurrent use. On May 19, 2000, Anheuser-Busch AB) and BB were granted registered trade marks in the United Kingdom for the term BUDWEISER, with AB as the owner of the earlier trade mark. Four years and 364 days after the registrations, AB, relying on its earlier mark, initiated proceedings in the U.K. Trade Marks Registry seeking to invalidate BB s BUDWEISER trade mark. Article 4 of the Trade Marks Directive provides that invalidity proceedings cannot be brought in relation to a mark after five years of acquiescence. Therefore, AB s last-minute application meant that BB was unable to retaliate with an application for invalidity against AB s mark on the basis of an even earlier registration for BUD Budĕjovický Budvar, národní podnik v. Anheuser-Busch, Inc., [2009] EWCA Civ 1022 (Oct. 20, 2009), available at TMR 743 & n.1064 (2009). See also [2008] EWHC 263 (Ch., Feb. 19, 2008).

406 Vol. 101 TMR 1203 As both parties use of the term BUDWEISER had long predated their registrations of this term as a mark, the question arose whether it was possible to acquiesce in the use of a mark of another prior to the date when one s own mark had become registered. According to the court, it was at least arguable that the word acquiescence should be understood to have a meaning that was wider than standing by when in a position to stop a rival s use. The court also concluded, having analysed the relevant travaux préparatoires (legislative working papers), that there was nothing in these materials that suggested that acquiescence of the later mark only started from the date that the earlier mark was registered. Further, even if acquiescence required the person acquiescing having the power to stop the relevant activity, there was the fact that the Paris Convention imposed on all countries in the EU a requirement that a certain minimal level of protection against acts that create confusion. Finally, the court accepted that as the Court of Justice had recognised exceptions to the absolute protection granted in respect of the use of an identical mark to a trade mark in relation to identical goods, 996 it might recognise a further exception in cases of honest concurrent user such as that now before the court. Accordingly, the Court of Appeal decided to refer this issue to the CJEU. 997 It is noteworthy that in doing so the court was broadly supportive of BB s position. Interestingly, one member of the court, Mr. Justice Warren, also went so far as to record that his earlier decision on this point as a first instance judge in Sunrider Corp. v. Vitasoy International Holdings 998 (which had been relied upon by the judge at first instance in the present case) might be wrong. Further, given that goodwill was recognised as valuable property at least under the law of England and Ireland, the court noted that a decision against BB would result in an expropriation of that property, the legality of which might ultimately find its way before the European Court of Human Rights in Strasbourg. Another of the judges in the case rather wearily recommended mediation and a lasting truce to hostilities between the parties. As matters stand, however, this seems unlikely. Trade mark owners will await with interest the CJEU s pronouncements as to whether European trade mark law can, in a case such as this, accommodate the concept of coexistence Referring to Adam Opel v. Autec, Case C-48/05, [2007] ECR I-1017 (ECJ, Jan. 25, 2007), and Celine v. Celine, Case C-17/06, [2007] ECR I-7041 (ECJ, Sept. 11, 2007) The exact question put to the court can be found at jurisp/cgi-bin/gettext.pl?where=&lang=en&num= c &doc=t&ouvert=t&s eance=ddp_comm [2007] EWHC 29 (Ch., Jan. 22, 2007).

407 1204 Vol. 101 TMR III.H.6.a. Jurisdiction and Authority The decision of Mr. Justice Arnold in Maslyukov v. Diageo Distilling Ltd 999 raised two questions of interest: (1) the extent to which it is possible to appeal against a win in opposition proceedings where some of the grounds of opposition are rejected, and (2) the circumstances in which it is possible to oppose a mark on the basis of goodwill where the business that initially generated that goodwill no longer trades. Mr. Maslykov sought to register a series of trade marks in relation to a number of brands of Scotch whisky, including DALLAS DHU, CONVALMORE, and PITTYVAICH. The distilleries that had initially created these whiskies no longer traded, but limited amounts of these whiskies, whether taken from retained casks or retained bottles, had been released and sold to the public from time to time, albeit in some cases by independent bottlers. Diageo opposed the applications and they were refused by the UKIPO 1000 on the basis that the applications had been made in bad faith, contrary to Section 3(6) of the Trade Marks Act However, the hearing officer had rejected Diageo s contention that the applications ought also to be refused under Section 5(4)(a) of the Act 1002 on the ground that the use of the marks would be prevented under the English law of passing off. Mr. Justice Arnold held that Diageo s appeal in this respect was inadmissible. The general rule is that it is not possible to appeal from a decision in respect of which you had been successful. In the judge s opinion there was only one decision in the present case, that is, to allow the opposition. As this issue had been decided in favour of Diageo, it could not be appealed by Diageo. Diageo s reason for bringing the appeal was based on a concern that it would be estopped as a result of the hearing officer s conclusions in other proceedings between the parties. However, the judge considered that concern to be misplaced, endorsing Spencer Bower and Handley s statement that there would be no estoppel in these circumstances [2010] EWHC 443 (Ch., Mar. 17, 2010) See BL O/188/09 (July 7, 2009), available at Implementing Article 3(2)(d) of First Council Directive 89/104/EC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (now codified as Directive 2008/95/EC of 22 October 2008) Implementing Article 4(4)(b) of the Directive George Spencer Bower & Hon. Mr. Justice Kenneth R. Handley, Res Judicata 8.25 (4th ed. 2009) ( A decision of fact or law against the party who succeeded or one which was not necessary to the decision will not found an estoppel because it cannot be fundamental to the decision. It would be unjust for such a decision to create an estoppel because the person who failed on that issue cannot effectively appeal against it. ).

408 Vol. 101 TMR 1205 Nevertheless, Mr. Justice Arnold was able to consider the substance of Diageo s argument under Section 5(4)(a). This was because Mr. Maslykov had brought his own appeal against the hearing officer s decision, and in turn this had enabled Diageo to raise these points in a respondent s notice. The judge rejected Mr. Maslyov s appeal against the finding on bad faith, and therefore strictly it was not necessary to address Diageo s arguments in his decision. However, as it might be relevant to costs and he had formed a clear view that the hearing officer was wrong, the judge decided to do so. Particularly significant in this respect was the judge s acceptance that even in those cases where the whiskies had been matured, bottled, and marketed by independent bottlers, they were acting with the implied licence of Diageo as the successor in title to the owners of those distilleries. In such circumstances, the judge was of the view that the implied licensees of the relevant marks would not have acquired any goodwill by reason of their dealings, and instead the goodwill would have accrued for the benefit of Diageo. The judge went further and declared that it was not necessary even to imply licence. According to him, if goods manufactured under a mark are purchased by another who adds to or improves them in some way and resells them in such a way that the mark is still used to denote the original provenance of the goods, this will generate goodwill that will accrue to the mark s owner, regardless of whether the addition, improvement, and resale are with consent. Mr. Justice Arnold also rejected the suggestion that goodwill, and thereby the right to commence proceedings in passing off, had been abandoned. Goodwill could be abandoned, but the mere cessation of an activity did not amount to abandonment of the associated goodwill. Last, he held that the hearing officer had been wrong to reject Diageo s claims in passing off, on the ground that Diageo had not suffered damage in the form of lost sales. Erosion of distinctiveness of the marks was sufficient URUGUAY I.F. Famous and Well-Known Marks Fábricas Agrupadas de Muñecas de Onil S.A., a Spanish company, applied for the registration of the mark HUGGY, to cover toys, toy building blocks, dolls, doll beds, doll clothes, baby bottles for dolls, dollhouses, doll rooms, marionettes, masks (toys), toy mobile phones, toy cars, accessories and toys for parties or Citing Sir Robert McAlpine Ltd v. Alfred McAlpine plc, [2004] EWHC 630 (Ch., Mar. 31, 2004), and cases referred to therein.

409 1206 Vol. 101 TMR dances, stuffed toys, action figures, water toys, remote control toys, rocking horses, slides for toy accessories, bubble makers, spinning tops, toy pools, teddy bears, play masks, doll carriages, twirling batons in Class The U.S. corporation Kimberly-Clark Worldwide, Inc. (KCWW) filed an opposition against the application, arguing that the HUGGY mark would infringe its trademark HUGGIES, registered in Classes 3, 16, and 25 and identifying mainly impregnated wipes, disposable diapers, baby training pants and clothing for children, including diapers and underwear. The opposition was based on (1) the similarity between the marks; (2) the relationship between the goods covered by both marks, as both were directed at children; (3) KCWW s advertisement campaigns, where, with each pack of diapers they bought, consumers were given a toy identified with the trademark HUGGIES; and (4) the worldwide notoriety of KCWW s mark. KCWW furnished abundant evidence in support of its arguments. The Patent and Trademark Office supported KCWW s action and rejected the application for HUGGY The decision was based on a Legal Advisor s opinion, which reads as follows: As for the evidence furnished and with respect to the opposing mark s multiple registrations in other countries, it should be noted that while these do not constitute irrefutable proof that the trademark is famous, and despite the fact that the protection granted through registration is limited to the territory in which the trademark is registered, it is no less true that such registrations are always an indication of a trademark s fame. Moreover, in view of the evidence submitted and without even considering the widespread presence that the opposing mark has in international markets, including the long-standing presence in this country and its permanence in the domestic market, it is a well-known fact that HUGGIES is a famous trademark throughout the world. In addition, and even bearing in mind that neither term means anything specifically, a quick look at the two word marks leaves no doubt as to the great similarity that exists between them that is, between the requested mark, HUGGY, and the opposing trademark, HUGGIES. Furthermore, it is a recognized fact that a trademark is in itself an indication of the existence of a market and a price. The use of a mark by somebody other than its owner, whether directly or indirectly, by taking advantage of the prestige of the mark or of the manufacturer of the products identified by the mark, entails immediate and specific damage. When an act Application No , filed July 24, Uruguayan Patent and Trademark Office, Sept. 16, 2009.

410 Vol. 101 TMR 1207 of unfair competition is committed as is the case with the registration requested by the applicant such act represents without a doubt a potential damage, even if such damage never effectively materializes. It should be noted that the law does not require damage to have actually occurred, the presumption of intent to commit an act of unfair competition being enough. Such presumption is absolute, and that is what has occurred in the case at hand. The fact that the mark applied for is almost identical to the previously registered trademark, compounded with the well-known status of the latter regardless of the classes for which it is registered leads the undersigned to believe that the challenged applicant was seeking to get a free ride, by profiting freely from the efforts of others. Even though the applicant sought registration for its mark in a class the existing mark is not registered in, there is undoubtedly an evident connection between the international class requested for the new trademark and the international classes in which the opposing party s famous mark has been registered, and there is also a connection between the consumers targeted by the products identified by the two trademarks. [This is especially] so considering that [the owner of the trademark] HUGGIES distributes products covered under international class 28 as corporate gifts free of charge. From this it can be concluded that, given the history of the mark in question, the applicant was seeking to use the fame and prestige of a well-known trademark, with many years in the international market, for its own advantage, and that if the trademark applied for were to be granted [registration], once the products identified by it were on the market it would remind consumers of the famous trademark, leading them to associate it with the same origin This decision is important because the legal opinion on which it is based expressly recognizes that the use of a notorious mark by somebody other than its owner entails immediate and specific damage, even if such damage never effectively materializes A Legal Advisor s opinion is not binding upon the Director of the PTO, who has the option of ruling to the contrary if he decides to do so. However, said technical opinion must be considered in all cases prosecuted before the Trademark Office before a final decision is made.

411 1208 Vol. 101 TMR VIETNAM III.A.9. Infringement of Unregistered Trademarks Nguyen Hoang Exim Co., Ltd. (Vietnam) (Nguyen Hoang) owns the registration for the trademark KICO (see below, illustration on left) for clothes in Class 25 for buying and selling clothes in Class 35 in Vietnam, as well as in many other countries. In Vietnam, the mark was registered in 2003 and was granted a Trademark Certificate in Later, Nguyen Hoang found that there was a baby clothes product named KIKO, which had been imported and sold in Vietnam since KIKO had never been registered as a trademark in Vietnam. KIKO Registered trademark Opposed mark Nguyen Hoang then filed an application to The Vietnam Intellectual Property Research Institute (VIPRI), requesting the VIPRI to examine whether the use of KIKO was an infringement in this case. In 2010, the VIPRI issued a decision 1009 on this matter, in which they pointed out that the word KIKO was highly similar to the word KICO, with respect to structure, pronunciation, and meaning (both words are meaningless). It made these marks confusingly similar to each other. Moreover, both marks were heading to the same channel consumers. Consequently, the VIPRI concluded that the use of the mark KIKO on baby clothes products was infringing Based on the decision of the VIPRI and by request of Nguyen Hoang, the Market Control Department of Hanoi city (MCD) had stopped such infringement by seizing all products bearing the mark KIKO Registration No , granted July 26, Decision No. NH YC/KLGD (2010) In this decision, VIPRI stated: Since the Registration No is still being protected, to use the mark KIKO on baby clothes products without the consent of Nguyen Hoang Exim Co., Ltd. is an infringement against mark KICO/ Registration No of Nguyen Hoang Exim Co., Ltd (according to Article No a and c, Vietnamese Law on Intellectual Property).