Class 46 - for your European trade mark news

If you are reading this ...

2009-10-05T12:39:00.002+01:00

... you have come through to the wrong page!

Class 46, the European trade mark weblog, has migrated to its lovely new home at www.marques.org/Class46/

If you'd like to become an email subscriber or RSS feeder, details of how to do so can be found on the new site.

Tonight's the night ...

2009-09-30T05:56:00.007+01:00

Following its successful migration to the MARQUES website, the Class 46 weblog will be available exclusively at its new address at www.marques.org/Class46/ from midnight tonight and its old address at http://class46.blogspot.com will no longer be publicly accessible.

Don't worry! The entire archive of over searchable 1,500 news items and comments, going back to 2007, has already been ported to its new home. What's more, the team remains the same and it's about to be strengthened by the addition of one of this year's Lewis Gaze essay prize winners, Alexandra (Sasha) Yelnik, who will be helping cover decisions from the Court of First Instance of the European Communities.

If you are an email subscriber, don't worry either: all existing subscribers will continue to receive new posts and prospective subscribers can sign up on the new page.

The new Class 46 RSS feed is www.marques.org/Class46/RSSSubscribe.asp

The ECJ's President sounds the alarm on workload: a separate ECJ court for trade mark cases?

2009-09-24T21:00:00.003+01:00

The President of the ECJ Marc Jaeger is concerned about the workload of cases reaching the ECJ. Jaeger sounds the alarm in a publication distributed to the media in connection with the 20th anniversary of the ECJ this week. In 20 years the amount of cases have exploded. In 1998 238 cases went up to the ECJ while last year some 629 cases were pending. According to Jaeger the continuity of justice is in danger. A considerable amount of trade mark cases takes up the time of the ECJ. Marc Jaeger pleads amongst others for a separate special court for trade mark cases. The institution of such a court is however still a difficult matter since a unanimous decision of the Member States is needed. But this might change if the EC Lisbon Treaty is ratified (a decisive referendum will be held in Ireland next week): according to that Treaty a qualified majority will do.

Class 46 service announcement

2009-09-24T07:58:00.009+01:00

As most readers are now aware, the Class 46 European trade mark law weblog has been adopted by MARQUES and, suitably smartened up, now appears in its new home at www.marques.org/Class46/. Quite soon the new home will be replace the old one completely. You can still post comments, subscribe by email, read by RSS and do internal site searches, as well as browse the archive.

Over the next week or so there are bound to be some odd problems and glitches, so please bear with us. One thing you'll note is that items posted on the current URL will appear on the new one too, but items posted on the new one do not appear on the old one. It is suggested, therefore, that if the old Class 46 page is your home page or is saved to your computer as a Favourite, you re-set it to www.marques.org/Class46/.

Email subscribers will continue to receive posts as requested. If you are an RSS feed reader, please note the new RSS feed details which you can find at www.marques.org/Class46/RSSSubscribe.asp

If you have problems that don't resolve themselves smoothly in a short time, the best person to contact is Robert Harrison, the MARQUES webmaster, who lives at info@marques.org.

The AG's opinion on "AdWords/Keywords": the conclusions

2009-09-22T12:29:00.004+01:00

Further to Frederic's earlier post (see here), Class 46 can now report on the conclusions of Advocate General Luís Miguel Poiares Pessoa Maduro in the "French AdWord/keyword referrals" (joined Cases C‑236/08, C‑237/08 and C‑238/08). After a quick perusal of the opinion this member of Class 46 believes that this opinion contains mostly good news for Google.

This Class 46 member has not had much time to study the opinion in detail but has noted that some of the AG's reasoning is rather similar to the approach traditionally taken by the German courts, i.e. paragraphs 89 - 92 (see below). In short: the average consumer will not be confused by sponsored links. Very interesting are also the AG's arguments with regard to Article 5(2).

89. Google’s search engine is no more than a tool: the link that it establishes between keywords corresponding to trade marks and natural results, even the more relevant sites, is not enough to lead to confusion. Internet users only decide on the origin of the goods or services offered on the sites by reading their description and, ultimately, by leaving Google and entering those sites.
90. Internet users process ads in the same way as they process natural results. By using AdWords, advertisers are in fact attempting to make their ads benefit from the same expectation of being relevant to the search – that is why they are displayed alongside the more relevant natural results. However, even assuming that the internet users are searching for the site of the trade mark proprietor, there is no risk of confusion if they are also presented with ads.
91. As with natural results, internet users will only make an assessment as to the origin of the goods or services advertised on the basis of the content of the ad and by visiting the advertised sites; no assessment will be based solely on the fact that the ads are displayed in response to keywords corresponding to trade marks. The risk of confusion lies in the ad and in the advertised sites, but, as has already been pointed out, the Court is not being asked about such uses by third parties: it is being asked only about the use by Google of keywords which correspond to trade marks.
92. It must be concluded, therefore, that neither the display of ads nor the display of natural results in response to keywords which correspond to trade marks leads to a risk of confusion as to the origin of goods and services. Accordingly, neither AdWords nor Google’s search engine affects or is in danger of affecting the essential function of the trade mark.

It also appears from the above that the AG focuses mostly on the essential function of a trade mark as an indicator of trade origin rather than a trade mark's "other functions", such as the advertising function etc. (in contrast perhaps to the ECJ's recent decision in L'Oreal/Bellure...?) See paragraphs 92 pp and in particular paragraph 102 pp of the AG's opinion:

"...the protection afforded to innovation and investment, it is never absolute."

The Advocate General's conclusions are set out below (Para 155 of his opinion). Additions in bold by Class 46. A lot to read and discuss... :

".... I propose that the Court state in answer to the questions referred by the Cour de cassation:
(1) The selection by an economic operator, by means of an agreement on paid internet referencing, of a keyword which will trigger, in the event of a request using that word, the display of a link proposing connection to a site operated by that economic operator for the purposes of offering for sale goods or services, and which reproduces or imitates a trade mark registered by a third party and covering identical or similar goods, without the authorisation of the proprietor of that trade mark, does not constitute in itself an infringement of the exclusive right guaranteed to the latter under Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.
(2) Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that a trade mark proprietor may not prevent the provider of a paid referencing service from making available to advertisers keywords which reproduce or imitate registered trade marks or from arranging under the referencing agreement for advertising links to sites to be created and favourably displayed, on the basis of those keywords.
(3) In the event that the trade marks have a reputation, the trade mark proprietor may not oppose such use under Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94.
(4) The provider of the paid referencing service cannot be regarded as providing an information society service consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the internal market (‘Directive on electronic commerce’).
The full opinion can be retrieved by clicking here. The language of the opinion is English.

Trying to claim damages in Greece ALL DAY

2009-09-22T09:54:00.005+01:00

In a recently published judgment, the Court of Appeal of Thessaloniki confirmed the tough reality of damages claims in Greece. The plaintiff, based in Veroia, engaged in the fast food /restaurant business and owner of the registered trade mark "RP ABEE ALL DAY" sued the respondent, also restaurant owner, for trade mark infringement over use of the "ALL DAY" mark to designate his business. In addition to injunction, non-pecuniary damages were claimed (the text of the decision does not mention the amount claimed). The case reached the Court of Appeal of Thessaloniki, which, under judgment 869/2009, held that there indeed was a likelihood of confusion between the marks involved mainly on account that the ALL DAY indication was the prominent feature of the earlier mark (though peculiarly the court also held that it is the RP ABEE that is the source indicator of the services designated) and ordered an injunction. As far as damages are concerned, the court held that the plaintiff suffered moral damage and awarded 5,000 euros for non pecuniary damages. This Class46 member feels that it wouldn't hurt if the non pecuniary damages generally awarded by Greek courts could were higher, particularly since pecuniary damages are really difficult to obtain.

AdWords: first glimpse on Advocate General's conclusions in Vuitton / Google

2009-09-22T09:39:00.007+01:00

Today the conclusions of advocate general Luís Miguel Poiares Pessoa Maduro are expected in the first series of ECJ preliminary rulings regarding sponsored links.

Before the conclusions are published, the Court released a statement which quotes parts of Mr Maduro opinion:

“Internet users’ access to information concerning the trademark should not be limited to or by the trademark owner”
"Google has not infringed trademark rights by allowing advertisers to buy keywords corresponding to registered trademarks"

According to Bloomberg, Mr Maduro deems that "Google can’t be stopped from selling trademark-protected words as keywords that link Internet searches and advertisements".

However, The Wall Street Journal notes, "Google may be liable for featuring content in its adwords program that directly violates trademarks".

Spain - Massive e-filing made easier.

2009-09-21T15:26:00.003+01:00

In fulfillment of the Act 11/2007 on the Electronic Access of Citizens to Public Services, the Spanish Patents and Trade Marks Office (SPTO) has recently announced that it will be facilitating its users a new filing system that will enable applications to be made in batches.

The SPTO considers this new on-line tool to be of "special use" for professionals and large users. It will be put into practice in the second fortnight of next October, alongside with the already existing individual electronic application system.

CFI: shape of handle not distinctive

2009-09-21T12:55:00.003+01:00

In a decision of 16 September 2009 which appears to be available only in French and German so far, the Court of First Instance dismissed an appeal against the Board of Appeal's refusal to register the shape of a handle (depicted) for gardening tools.

The CFI confirms that the Board of Appeal was right in concluding that the shape of the handle is rather ordinary for handles of the kind of products claimed. Even if the relevant consumers would notice certain peculiarities of the shape, they would not perceive the shape as an indication of source.

Acquired distinctiveness was not claimed. I'd say this case was rather easy to handle...

Decision (in German) here.

Citroën mini brand name: brilliant or revolting?

2009-09-21T09:21:00.007+01:00

Writing on BrandChannel today, Paola Norambuena has some harsh words for the choice of Revolte/REVOLTe for Citroën’s new mini car. The resonance with the English adjective "revolting" is strong, but perhaps it no longer matters for cars, after the strange (to English eyes) Seat became accepted as a car brand.

Class 46 wonders whether readers feel the same as Ms Norambuena. Do let us know.

Marques conference: meet some of the Class 46 bloggers

2009-09-20T17:17:00.008+01:00

Our readers know that this has been an exciting week for the Class 46 blog. Not only has this weblog now been formally adopted by MARQUES (the blog still appears on http://class46.eu/ as well when clicking here), the MARQUES conference in Brighton also gave (some of) the pan-European team of bloggers the chance to meet as well as get to know some of our readers. Hopefully the whole Class 46 team will be able to meet up sometime soon. Below are some photos marking this special and happy occasion on 17 September 2009 at the MARQUES conference.

Jeremy Phillips, IP Blog-Meister extraordinaire and founder of the Class 46 blog, making a toast

A happy round of conference attendees chatting about the Marques conferences, trade marks and blogging...

Class 46 bloggers Gino van Roeyen, Birgit Clark and Mark Schweizer

Gino, David Goldring of Novagraaf UK and Class 46 blogger Nikos Prentoulis enjoy some fresh sea air and sunshine outside the conference hotel

Class 46 bloggers Jeremy, Gino, Mark, Birgit and Nikos

A big thank you for all their hard work also goes to Class 46 bloggers Daniela Ampollini, Frédéric Glaize, Janne Britt Hansen, Mikael Kolehmainen, Ignacio Marqués and Tomasz Rychlicki who were not able to attend the conference in Brighton.

France: eBay liable for use of LVMH trade marks

2009-09-18T23:03:00.008+01:00

AFP reports that on 18 September 2009 a Paris first instance court found eBay liable for using keywords that referred to trade marks for perfumes, such as "Ange ou Démon" (by Givenchy) or "L'Heure Bleue" (by Guerlain).

The exact terms of the judgment are yet still unknown. According to press reports and both parties press releases, the court held that by using keywords that were identical to various trade marks owned by the LVMH group, eBay was responsible for infringing these trade marks.

Those keywords (which might have been used as AdWords) were used to promote eBay sites selling such products. Apparently the perfumes at stake were authentic products, but sold outside their exclusive distribution channels.

LVMH was awarded 60,000 euros in damages and 20,000 euros as compensation for legal fees.

In declarations issued on the same day as the court decision, both parties said they were satisfied. LVMH was satisfied that eBay was held liable for infringing the luxury giant's trade marks and eBay said it was satisfied that the court only granted limited damages to its adversary, who initially asked for 4 millions.

MARQUES 2009: the final day dawns

2009-09-18T09:44:00.021+01:00

A trade mark may last forever, if properly managed. In sharp contrast is the MARQUES Annual General Meeting which, if properly managed, should not last longer than 194 seconds, inclusive of time spent asking for the level of the lighting to be raised so that the raised hands of dissentient participants can be more easily perceived.

Following the AGM, but always likely to take a lot more than 194 seconds, was the session on "ICANN and the New gTLD Programme", chaired by Nick Wood (Com Laude), who also did a valuable job in setting the scene and explaining the way in which top-level domains are set to bloom uncontrollably, to the great concern of many. While many in-house IP practitioners despair of this opening-up of the gTLD sector, said Nick, their marketing colleagues in the same businss are generally very enthusiastic. He identified some positive aspects of an expanded system if properly (self)-regulated, for example if a dot-bank gTLD were introduced for internet banks and only properly accredited banks were able to use it.

Nick then considered the issues involved in resolving disputes as to the registration of gTLDs, whether involving brand owner or public interests. ICANN has yet to clarify the consequences of objections too: will they be published, for example, and what will happen in the case of multiple objections to the same gTLD? He explained ICANN proposals for an IP clearing house, to save brand owners having to deposit the same details of their rights with many different domain name registries, and for a uniform rapid suspension scheme for active websites that infringe IP rights.

Next to speak was ICANN's Karla Valente (another billed speaker, Bart Lieben of Laga, was struck down by illness: get well soon, Bart!). Karla's pre-ICANN background was in brand protection, so she has a first-hand understanding of the pain felt by brand owners over the new gTLDs. The best way for IP interests to express their position was by participating with ICANN's processes; indeed, IP interests are represented in its Board of Directors. Karla explained the evolution and continued development of gTLDs, particularly in the light of the desire of the Chinese, the Arabs and others to have their own language on the right hand side of the dot.

Left: an excited applicant awaits the dot-dog domain

Karla's message was a positive one: the new scheme must be understood as a set of opportunities and as establishing a new set of conditions in which businesses can deploy their brands. ICANN is also examining overarching issues such as increased measures to combat malicious conduct, as well as security and stability of the system. A voluntary high security certification service is also under consideration.

Following this session, the annual Lewis Gaze Memorial Prizes were awarded. The prize winners this year are Colm Maguire, Rasmus Laustsen and Sasha Yelnik. All prize winners receive a year's subscription to the European Trade Mark Reports; the first prize winner additionally receives a year's electronic subscription to the Journal of Intellectual Property Law & Practice.

Denmark: Unilever’s ice cream KING CONE did not infringe Danish trademark KING COOL

2009-09-18T06:38:00.003+01:00

In a recent ruling from the Copenhagen Maritime and Commercial Court, the Court stated that Unilever’s use of the term KING CONE as the name for an ice cream cone did not constitute an infringement of a prior trademark right KING COOL owned by Hjem-Is Europa A/S for inter alia “ices” in class 30. Neither was the use regarded as an infringement in accordance with the Danish Marketing Practices Act.

The Danish Company, Hjem-Is Europa A/S - specialising in the selling and delivering of ice creams in boxes from an ice cream van to private households - obtained a Danish registration of the trademark KING COOL in 1992. The registration covered inter alia “ices” in class 30, and since 1998, the trademark had been used as the name for an ice cream lolly.

In 2003, Unilever obtained a Danish registration of the trademark KING CONE for goods in class 30. In the Danish PTO’s search report, Hjem-Is Europas’s prior right to the trademark KING COOL was mentioned. However, Hjem-Is Europa did not oppose Unilever’s registration.

Hjem-Is Europa took action against Unilever when it noticed Unilever’s marketing in Denmark of the ice cream cone named KING CONE. Unilever’s ice cream cone was being sold from a large number of petrol stations and kiosks.

In its assessment of the alleged likelihood of confusion between the marks, the Court emphasized the conceptual differences between the marks. Due to the fact that CONE and COOL were terms with completely different meanings, the Court found that the identical term KING would be perceived differently when combined with CONE and COOL respectively. Thus, in connection with CONE, the term KING would be perceived as “large”, whereas in connection with COOL (meaning “cold” or “smart”), the term KING would be perceived as “special”.

Primarily based on these differences between the trademarks, the Court found that Unilever’s use of the term KING CONE did not constitute an infringement of Hjem-Is Europa’s prior rights.

So...? Kiss Me (Not In Court)

2009-09-17T15:47:00.003+01:00

On Tuesday 4 Procter & Gamble (P&G) companies (three of them located in the Netherlands and one in Switzerland) won a trade mark infringement case – summary proceedings - before the Presiding Judge of the District Court of The Hague (G.R.B. van Peursem). Plaintiffs Debonair (a Madeira based company) and Incos Limited (based in the UK and licensee of Debonair) argued that the defendants infringed Debonair’s trade mark rights due to the use of ‘Naomi Campbell Cat Deluxe With Kisses’ cosmetic products. Debonair is the owner of CTM 004243713 depicting a lipstick kiss print and uses the trade mark on its ‘SO…?’, ‘SO…? KISS ME?’and ‘SO…? KISS ME ALL OVER’ products (perfumes and related products) with which she aims at young wives and teenagers.

P&G used all defense possibilities available to overcome the trade mark infringement claims of Debonair: it had not only started invalidity proceedings before OHIM, but also filed a request for revocation based on lack of use. Furthermore P&G had started proceedings on the merits requesting a declaration that P&G did not infringe the trade mark rights of Debonair. The case has also elements of copyright and passing off but I leave those issues aside and concentrate on the trade mark part.

P&G had filed a market research report in the summary proceedings to prove – to be very short – that the relevant consumers did not recognise the kiss trade mark of Debonair as a trade mark and furthermore did not connect the Naomi Campbell Kisses products with that of Debonair. Next to that P&G filed evidence of packaging on which competitors also used kisses as an ornament. Debonair argued that she had started trade mark infringement proceedings against two of those competitors and that she was on the edge reaching a settlement with one of them.

First of all the Presiding Judge had to take care of the preliminary defense of P&G that the Presiding Judge had no jurisdiction with regard to the Swiss based P&G company – P&G Prestige Beauté - because – according to P&G - that company had only activities outside the Netherlands. Since that company is not based in the EU according to art. 97 par. 2 of the CTMR the infringement claim should be started in Portugal – the country where Debonair is based – being the country where the plaintiff is based. According to art. 97 par. 5 CTMR a decision in favour of Debonair should be limited in its effects to the Netherlands. To make its jurisdiction defense complete P&G argued that the Presiding Judge had no jurisdiction with regard to the Dutch based P&G companies (P&G Nederland and P&G Professional Care).

Taking recourse to the ECJ’s decision in the Somafer case (case C-33/78) Debonair argued that she was forced to go forward against the 4 P&G companies together since it was not clear what the responsibilities of each company were and that Dutch based P&G Nederland should be regarded as a sort of branch of P&G Prestige Beauté, while Dutch based P&G Prestige Products should be seen as an extension of P&G Prestige Beauté, amongst others while they almost have the same name.

The Presiding Judge establishes as a general principle that the statements of the plaintiff in the writ of summons are decisive for the jurisdiction question. On that ground only the Presiding Judge overrules the jurisdiction defense of P&G that P&G Nederland and P&G Professional Care, contrary to what Debonair argued, do not have any activities in the perfume area. The Presiding Judge establishes furthermore that the Presiding Judge has no jurisdiction over the Swiss based P&G company as far as the Debonair claims are based on its trade mark. The basis for jurisdiction with regard to the Dutch based P&G companies finds the Presiding Judge in art. 97 par. 1 of the CTMR, because these defendants are based in the Netherlands. The Presiding Judge of the District Court The Hague has in such a case exclusive jurisdiction.

With regard to the trade mark infringement claim on itself the Presiding Judge qualifies P&G use of a lickstick kiss as ornamental use referring to the ECJ’s Adidas cases (Adidas/Fitnessworld and Adidas/Marca and H&M). The Presiding Judge decides that it has not been proven that the relevant public observes the P&G kiss as a trade mark. In this respect the Presiding Judge follows to a certain extent the observations in P&G market survey. Furthermore the Presiding Judge takes into account – weighs – that the trade mark is found to have a limited distinctive character, that similar signs are used by third parties too, that the level of similarity between the trade mark and the sign is low due to the use by P&G of Naomi Campbells name and the sign ‘Cat Deluxe’. Moreover the Presiding Judge finds no risk of confusion (even you would take the similarity hurdle). According to the Presiding Judge a great similarity between the trade mark and the sign is needed since kissing lips signs are used a lot in the perfume business as an ornament. The Presiding Judge finds backing for this finding in the market survey that the public does not connect the P&G sign with the trade mark at all.

Last but not least the Presiding Judge finds that there is no trade mark infringement according to art. 9 par. 1 sub b CTMR due to the fact that P&G uses the lipstick kiss sign only in connection with its Cat Deluxe sing and Naomi Campbell’s name and/or a picture of Naomi Campbell. This combined designation is qualified by the Presiding Judge as quite well known due to the sales of the P&G products and the celibrity that Naomi Cambell is in the relevant circles of the public.

Art. 9 par. 1 sub a CTMR could not be used as a basis for Debonair’s claim since that provision can only be applied in cases where the similarity between a trade mark and a sign is so high that they are almost identical. Art. 9 par. 1 sub c CTMR failed could not be invoked since the Presiding Judge found that the trade mark was not well known.

MARQUES conference: modesty forbids ...

2009-09-17T13:13:00.001+01:00

The pleasant task of Class 46 (after coffee, which was itself a pleasure) was to listen to Hanne Weywardt (MAQS Law Firm) guide MARQUES conference participants through the features on the new website -- which you can check out here. These features include Class 46 itself. This weblog has now been formally adopted by MARQUES and a rather smart version of the page that still appears on http://class46.eu/ can be found by clicking here. There is still a little work to be done on the MARQUES version, but it's pretty functional already. The Class 46 team says "thanks" to MARQUES -- and to Hanne and the members of the organisation's Publication and Website Team, which she chairs -- for their patience and their efforts over the past two years in seeing this project from its earliest infancy to its recent coming of age. I'd like to add personal "thank you" to the members of the Class 46 team past and present for their help, support and congenial company.

Stop press: if you're in Brighton while you're reading this, please note: from around 4.15pm today, various members of the Class 46 team will be meeting in the Metropole Bar, on the entrance to the Hilton Metropole Hotel, to have an informal drink and a chat with anyone who'd like to say hello. Please feel free to join us!

The conference continued with the annual WIPO session, chaired by Jochen Hohfeld (Klunker Schmidtt-Nilson Hirsch). In this session Ernesto Rubbio (WIPO Assistant DG) and Grégoire Bisson (WIPO Deputy Director and Head, International Registrations Division) spoke of the latest additions and improvements to the Madrid System for international registration, as well as some welcome improvements in communications between the International Bureau and those awaiting the fate of their applications.

Norway's proposal to eliminate the "basic mark" requirement was reviewed. This would require international treaty reform and is currently under review by the relevant WIPO Working Group. Ernesto mentioned the issue of what would happen if the core concept of "central attack" were removed and whether it would be necessary to introduce fresh balances to replace it. Developments in electronic filing were reviewed, and the Madrid Portfolio Manager and Madrid g&s database were explained. Good news was the fact that the Singapore Treaty on the Law of Trademarks has now exceeded its quorum of 10 states, with 15 countries already signed up for it. Future work for WIPO, via the Standing Committee, deal with the registration of certification and collective marks, as well as the use and effects of letters of consent.

Grégoire then spoke about international design registration and the (dis)similarities of the Madrid and Hague systems. Giving some statistics and with some very pretty coloured PowerPoints, he demonstrated the distribution of countries between the London, Hague and Geneva Acts, pointing to the fact that 10 nations have signed up for the Geneva Act in the past year. Grégoire urged users to create a critical mass of Hague filings in order to make it worthwhile devoting resources to the improvement of the system.

Ernesto finally returned to the podium, addressing the Lisbon Agreement for the protection of appellations of origin and international registration. Though Lisbon has only 26 members, they are well spread around the world and there is some momentum towards its growth, some five countries having joined in the past year. This has prompted initiatives to see how it can be made more attractive for users.

MARQUES conference, Day 2, session 1

2009-09-17T10:26:00.001+01:00

The vast auditorium of the Hilton Metropole was sparsely populated when today's session began. This was not because conference registrants had fled Brighton in fear of a repetition of the previous night's performance of 'Ode to Joy' in the Brighton Dome by the massed bagpipers of the Balmoral Pipe and Dance Squad. Rather, it was an inevitable consequence of the intensive networking which followed the pipers, when the nocturnal silence of the city was disturbed by the constant sound of business cards being exchanged.

The session, chaired by Kay Uwe Jonas (Jonas Rechtsanwaltsgesellschaft GmbH), addressed the theme of sustainability of brands in the food and healthcare sectors. Jorge J Casals Ide (Red Bull) described the tribulations of a single-brand company in policing its brand against what one might call bull-alike products, among others. He showed many examples of encroachment on the name, colour combination and trapezoid motif that characterised his company's ubiquitous product and observed that some jurisdictions seemed rather reluctant to grant pan-European relief. Sometimes, he sighed, it was even necessary to sue one's own distributors. All forms of legal relief have been utilised: trade mark infringement, unfair competition, passing off ...

Nestlé regulatory affairs manager Karen Perceval spoke next, tackling the interface between the message of a brand and the claims made for it in advertising statements and slogans, claims like "fair trade", "prevents cancer", "strengthens teeth and bones" and "A Mars a day helps you work, rest and play". There is a long history of things going wrong with food, which stands in stark contrast with the consistently positively message of the brand. This is why both the manufacture of food products and their labelling are legally regulated. Standardisation is needed: if the brand is the same in every country, the laws protecting health etc should be constant as between jurisdiction too.

Concluding the session, DSM's Ralph Thomas spoke of his company's history and evolution into a diverse quality-of-life enhancing operation with some 800 business-to-business trade marks and more than 15,000 patents. DSM is involved in the United Nations World Food Programme, as part of its commitment to its social aims. DSM also scores top marks in the Dow Jones Sustainability Index. He explained the manner in which micronutrients and foods containing them can be deployed in order to combat hunger and malnutrition. The engagement of the company's employees and the raising of awareness among the wider community are also important planks in its policy, a specific example being "Walk the World". where sponsors participate in a walk of 5km, symbolic of the distance walked by poor children around the world each day in their quest for education.

Final MARQUES report for Day 1

2009-09-16T17:18:00.002+01:00

Clare Speed (Reckitt Benckiser plc) kick-started the final session on "A Luxury and a Necessity" (chaired by Shane Smyth himself) with a tour of her company's products -- which most of us just flush down the toilet or pour down the drain -- and explained how sustainability in the light of both economic and enviuronmental challenges could be both innovative and fun. Not just the products but their packaging were the focus of constant re-evaluation, with the shift from plastics to biodegradable carbboard saving some 700 tonnes of plastic a year. Good news for the environment, but bad news for those who sell plastics and their ingredients.

Clare was followed by a lengthy Q&A session that covered issues such as green-washing, comparative advertising, liability for what a sustainable brand can communicate to the outside world. Green-washing, Clare observed, was not worth the risk. Shane then brought the session to a close with a statement of intent that he believed in having an enjoyable evening.

MARQUES, day 1: the afternoon sessions

2009-09-16T15:50:00.002+01:00

Chaired by Patricia McGovern (DFMG Solicitors), this session was loosely entitled "Arriving at a sustainable destination". First to speak, Leo Longauer (UBS AG), summarised the concerns relating to brand sustainability as viewed by brand owners, following which Margaret Ramage (Alexander Ramage Associates) gave a checklist, based on her own vast and varied experience, of the actions that must be taken in terms of trade mark watch, monitoring of competitors and identifying the battles that can most affordably be fought by any trade mark owner. All this was very worthy, but well within the framework of the understanding of most of the members of the audience. Margaret, in the Q&A session following the speakers' presentations, also made mention of the repositioning and rehabilitation of Lucozade, originally a fizzy drink full of sugar but subsequently restyled as an energy-giving beverage for fitness enthusiasts.

Against this backdrop, the introduction of the third speaker, Marjolijn Vencjken (Trouble in Paradise, sustainable strategies) had huge shock value. Backed with some powerful videoclips illustrating corporate denial of social responsibility and the marketing of what passes as corporate conscience, Marjolijn argued in favour of the sharing of responsibility between companies as brand owners and customers as consumers . A lawyer-turned-policy-analysis-expert, she combined powerful advocacy with some compelling arguments that one rarely gets to hear at IP conferences. Showing an entire Land Rover/myclimate clip and drawing on examples drawn from Heineken, Philips, M&S and Liberty Mutual, she showed how corporate messages are now used as a means of demonstrating the existence of a social conscience, engaging with consumers, sometimes even in markets for which the brand owner has no products.

More from MARQUES

2009-09-16T12:57:00.001+01:00

Following a gratifyingly long and tasty coffee break, the 500+ conference participants were herded back from their networking and treated to some pretty miserable stuff from the next speaker, myclimate's René Estermann. His report on the effects of global warming, deforestation, carbon emissions and so on was gloomy enough, without the thought that most of us were shuffling uncomfortably in our seats as we realised how small and inadequate has been our response to date -- as reflected in the minimal show of hands in response to the question whether we were taking advantage of the carbon credits scheme when we travel, to offset the damage we do by turning up at MARQUES conferences (among others). René also discussed the myclimate brand itself, together with its Climatop certification mark. The brand, with its strongly voluntary and non-profit ethos, protects the planet and educates it -- but it too needs a protection and marketing policy and has to thrive in its own market.

Next up was Dr Markus Müller (Müller Fottner Steinecke), who tackled the topic of certification marks, considering both their necessity and their sustainability. First among these was the celebrated Grüne Punkt (note: the licensing of this mark has been the subject of much litigation before the ECJ, reviewed here); he also discussed another recently-litigated certification mark, that which relates to Bavarian beers made only with natural ingredients.

Markus reminded us that not every jurisdiction within Europe has separate rules for such marks, since Germany and Austria for instance treat them broadly as regular marks, subject to the exercise of some official discretion when handling them. Surprisingly, some certification marks are not registered in respect of licensing services, while their specification contains all manner of goods other than those for which the certification is granted or sought. The danger of revocation for non-use was mentioned at this point. In concluding, Markus drew attention to various factors that might direct an applicant to opt for certification marks over trade marks, such as their relative flexibility and the short- or long-term nature of the venture to which the mark will be attached.

The third speaker in this session, Michael Keogh, hailed from the increasingly green BP brand -- even though he was wearing an anything-but-green red tie. He spoke of the move from the old 'BP shield' logo, which was one of the best-known logos in the world, with the green and enviromentally-allusive 'helios' (left). Discussing the policing of logos, Michael praised the beta-trialled Google Similar Images Lab, as well as various tricks to identify spammers and fraudsters.

An unusual subject Michael raised was that of inadequate debranding -- making sure that as much evidence of the existence of old livery, etc, can be destroyed or obliterated in order to minimise bad publicity generated by third parties driving decommissioned petrol tankers where the old logo is still visible.

MARQUES conference, "sustainable brands", opens

2009-09-16T11:32:00.000+01:00

This year's MARQUES conference, "Sustainable Brands: a Luxury or a Necessity?", is being held in Brighton's splendid faded-glory icon, the (Hilton) Metropole Hotel, where some 515 participants have gathered together to share their experiences of bracing sea-breezes, Twitter, trade mark enforcement and the merits of window-frames held together with transparent adhesive tape.

This year's event was opened by MARQUES president Guido Baumgartner (Coty Prestige Lancaster Group), whose warm and well-phrased introduction soon gave way to Andrew Layton (Director of Trade Marks and Designs, IPO), who described the constant and ongoing commitment of the UK's efforts not merely to provide a set of administrative services but to address the specific needs of their users with regard to advice on registrations, company names and other issues, to reduce the risk faced by users of IPO services in difficult trading conditions and to increase user awareness of the issues they must face.

Shane Smyth (FR Kelly) then explained the conference theme, with some amusing asides as to how various confectionery brands have succeeded on the basis that their products contained either (i) a hole or (ii) air. He observed that it was not just the environment that had to be sustained, but brands themselves. "Beware of greenwashing", he cautioned, asking whether "green" -- particularly in the context of cosmetic and perfumery packaging -- was a luxury or an essential part of the product.

Siân Croxon (DLA Piper) then introduced the local mayor, Ann Norman, who arrived in chains. She spoke about Brighton and Hove's sustainable business strategy and climate change -- no doubt giving MARQUES participants confirmation that their jobs not as much fun as sorting out local bus services and 'personal door-to-door active public transport'. Next up was David Green ("Green by name, Green by nature"), an internet expert with experience at Deloitte. David gave the audience a tour of the concepts that currently drive consumer interest and consciousness that brand owners ignore at their peril. He also reminded us of the threats of genericity to brands that can't sustain their distinctive character, and of brand abuse on the internet.

The final speaker before coffee was business ethics and strategy expert Nel Hofstra (Ereasmus University, Rotterdam). Her theme, "Creating more value with less impact", touched on the environmental impact of brand marketing itself. The ability of a business to explain its brand's own sustainable characteristics is an important part of the way the brand communicates with the public and the failure of economic models to bring non-economic (human) factors into brand development is a major criticism of our values as well as a cause of our wasteful use of resources, she explained. More attention must be given to the concept of nature: it's not an isolated phenomenon part the host of the holistic system within which we all interact. Homo economicus is a dangerous concept, which presupposes the hegemony of economic man over nature.

CFI: no similarity between "MANGO adorably" and ADIORABLE

2009-09-16T11:18:00.004+01:00

Parfums Christian Dior was unsuccessful in its opposition against the registration of "MANGO adorably" (fig.) for perfumes and cosmetics.

Dior relied on its older marks ADIORABLE and J'ADORE (French for I admire), also claiming protection for perfumes.

ADIORABLE and the element "adorably" of the younger mark were not identical. The term MANGO dominates the younger mark and exlcudes any similarity.

Because of the lack of similarity, Dior could not invoke art. 8(5) of Council Regulation 40/94 providing marks "with a reputation" with protection against younger marks taking unfair advantage of the distinctive character of the older mark. The court did not need to examine the reputation of ADIORABLE and J'ADORE because the first of the three requirements of art. 8(5), the similarity of the marks, was not met.

French text of the decision here.

LOGORAMA - the movie

2009-09-16T11:12:00.013+01:00

French directors within a graphic studio H5 - François Alaux, Hervé de Crécy and Ludovic Houplain made a short movie on the over-marketed world built of logotypes. More details regarding this project are available at www.logorama-themovie.com website. According to www.boingboing.net post:

The entire universe of this film, even the characters within (a talking "Pringles" man, and a villainous Ronald McDonald), even the city of Los Angeles itself -- are all composed of repurposed corporate logo art, all of which is used without permission.

CFI finds likelihood of confusion between sensixx and Centrixx

2009-09-16T11:09:00.002+01:00

Royal Appliance International GmbH applied in 2003 for the CTM Centrixx for vacuum cleaners and other household appliances. Bosch and Siemens Hausgeräte GmbH opposed based on its older German mark sensixx, also claiming protection for household appliances. The opposition division found no likelihood of confusion. The 4th Board of Appeal reversed. The CFI affirmed.

The CFI noted that Centrixx would be pronounced "as an English word" by German speakers, i.e. as "Sentrixx", not "TSentrixx". "Sentrixx" and "sensixx" were phonetically very close. Neither mark had a clear meaning that would be immediately understood and help to tell the marks apart. There was a risk of confusion.

Three from the CFI: latest Community trade mark appeals

2009-09-16T02:02:00.009+01:00

The Court of First Instance of the European Communities gave judgment in three Community trade mark appeals yesterday. The cases are

* Case T-308/08 Parfums Christian Dior v OHIM - Consolidated Artists (MANGO adorably): judgment available in French only;
* Case T-446/07 Royal Appliance International v OHIM - BSH Bosch und Siemens Hausgeräte (Centrixx): judgment available in French and German;
* Case T-471/07 Wella v OHIM (TAME IT): "the mark TAME IT, in relation to hair lotions, hair cosmetics and essential oils which may be used on hair, and in so far as it incites the consumer to use those products and/or informs him about the desired effect of using them, will immediately be perceived by the relevant public as an advertising message rather than as an indication of the commercial origin of those products."

If any reader has the time and inclination to explain briefly the two decisions that are not yet in English, I should be most grateful.