Master of Europe
On Thursday the IPKat mentioned the Euromaster case, which was not available in English. He has since received a very helpful note on it from his friend Mélanie Lemeunier, who is currently studying IP in London. Mélanie explains:
Jesus Gomez Fria applied to register as a Community trade mark a figurative mark containing the word euroMASTER in relation to transport services in class 39 and sports competitions in class 41. Eurodrive Services and Distribution NV opposed, relying on its earlier multi-national registration (in France, Spain, Austria, Benelux, Denmark, Finland, the UK, Greece, Ireland, Italy and Portugal) of the word trade mark EUROMASTER for goods and services in Classes 12 and 37, particularly in relation to tyres and car repairs.Thanks a million, Mélanie, says the IPKat.
The OHIM Opposition Decision upheld the opposition for transport services in class 39, considering that the goods and services in question were similar, as were the related signs. The opposition was however rejected in so far as it relied on a French registered trade mark as the opponent hadn't proved it owned it. The opposition was also rejected concerning class 41 as these goods and services were not considered similar.
Both parties appealed unsuccessfully against that decision, the First Board of Appeal employing the same arguments as the Opposition Division. Eurodrive then appealed to the Court of First Instance (CFI). They argued first that goods in class 41 were also similar and that there was a risk of confusion with the goods and services of the earlier registered trade mark (tyres could be associated with the sports competition especially because of their complementarity and the extreme similarity of the signs). They also argued that the OHIM decision had not been properly reasoned.
The CFI dismissed Eurodrive's appeal, considering that the public for class 12 and 37 were different (the organisers of sports competitions being specialised and particularly aware), the goods and services were different and not complementary (rejecting the comparison with the ALADIN case) and that there was no likelihood of confusion; the CFI also considered that the decision had been properly reasoned.
LLADRO: another retro case on Lawtel
Lladro Commercial SA v Rosa Ma Lladro Castello, a decision of Lord Chancellor's Appointed Person Geoffrey Hobbs QC way back on 16 January, suddenly made its way on to Lawtel's daily list this week. Although Lawtel is usually very good at noting up highly current cases, every so often it delivers batches of retro trade mark cases with no apparent reason: this is one of them.
This case involved an appeal by Lladro against the dismissal of its opposition under the Trade Marks Act 1994 s.5(3) and s.5(4)(a) to Rosa's application to register a series of two CONDE DE LLADRO ffigurative marks for use in relation to alcoholic beverages except beer. Lladro, a Spanish company that commercialised fine porcelain and chinaware articles that were sold internationally, owned a number of UK and Community trade marks for the mark LLADRO in various classes, Rosa being a daughter of one of Lladro's founders. Lladro argued that use of the marks in relation to goods of the kind specified in the application for registration would infringe its earlier marks and that use of Rosa's marks for the goods specified in her application was likely to give rise to the mistaken belief that the goods were connected with Lladro.
The hearing officer held that Lladro had a reputation in its trade marks for porcelain and ceramic goods. While the respective marks were similar aurally, visually and conceptually, use of Rosa's mark for alcoholic drinks would not take unfair advantage of, or be detrimental to, the distinctive character or repute of Lladro's marks under s.5(3), nor would there be a likelihood of misrepresentation so as to support a passing-off action under s.5(4)(a).
Right: Lladro ceramics - the IPKat is not amused ...
Geoffrey Hobbs QC dismissed Lladro's appeal.
* There was no evidence to support the inference that consumers would be led by experience, expectation or extrapolation to make a connection between the marks.The IPKat's pleased to see a sensible decision that recognises the scope of reasonable protection afforded by s.5(3) and doesn't seek to suffocate uses that are never likely to impinge on the earlier registrant's commercial interests or brand ethos. Merpel says, it's just because you don't like Lladro china, isn't it ...?
* While the high degree of individuality possessed by the word LLADRO and the strength of its reputation acquired through use were factors that could not be denied, the hearing officer was right to say that they provided insufficient basis on which to make the inference he was being asked to make.
* Even if the hearing officer was wrong on that point, the presence in the marketplace of marks and signs that called each other to mind was not itself sufficient to satisfy the requirements of s.5(3) [at this point Geoffrey Hobbs QC cited his own decision in Electrocoin Automatics Ltd v Coinworld Ltd (2004) EWHC 1498.
* Section 5(3) sought to prevent the Hobbsian concept of cross-pollination between a mark and a sign that are identical or similar, i.e. the linkage in people's minds between the use of one mark with the use of the other. For such a "link" to be productive of an advantage or detriment of the kind required under s.5(3), the "link" established in the minds of people in the marketplace had to be liable to have an effect on their economic behaviour, which was not the case here.
You can read the full decision of Geoffrey Hobbs QC, which carries a proper illustration of Rosa's marks here
Ferro, Ferrero ... MIDAS!
The IPKat's friend Bonita Trimmer (Wragge & Co) writes:
"Reading your blog on Athinaiki Oikogeniaki Artopoiia AVEE v OHIM, Ferrero OHG mbH reminded me of the recent MIDAS Community registered invalidity decision re a registered 2D logo community design invalidated by an earlier stylised word registered trade mark (see here, here, here and here).Thanks, Bonita, even if you've just set the IPKat and Merpel some more weekend homework ...
I don't think you have covered this in your blog - in my view it was the right decision (i.e. in view of likelihood of confusion figurative/word TM cases such as the above) but the reasons actually given were far from solid gold".
Myth of King Midas here
King Midas in Reverse here