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Wednesday, 22 November 2006

FORTHCOMING DISTRACTIONS FROM THE ECJ


Forthcoming distractions from the ECJ

The European Court of Justice has quite a bit in the pipeline over the next few weeks, but much of it is in the form of hearings rather than the Opinions and Judgments the IPKat craves. So what tangible results of the ECJ's cogitations are on their way between now and the Winterval?

Next week, on Thursday 30 November, the Advocate General will be giving his Opinion in Case C-381/05 De Lantsheer Emmanuel v Comité Interprofessionnel du vin de Champagne (CIVC) and Veuve Clicquot Ponsardin. This is a reference for a preliminary ruling from the Cour d'appel de Bruxelles on the following questions:

"1. Does the definition of comparative advertising cover advertisements in which the advertiser refers only to a type of product, so that in those circumstances such advertisements must be regarded as referring to all undertakings which offer that type of product, and each of them can claim to have been identified?

2. With a view to determining whether there is a competitive relationship between the advertiser and the undertaking to which reference is made within the meaning of Article 2a of Directive 84/450 [on misleading advertising]:

(a) On the basis in particular of a comparison of Article 2a with paragraph (b) of Article 3a, should any undertaking which can be identified in the advertising be regarded as a competitor within the meaning of Article 2a, whatever the goods or services it offers?

(b) In the event of a negative response to that question and if other conditions are required in order for a competitive relationship to be established, is it necessary to consider the current state of the market and drinking habits in the Community or is it necessary also to consider how those habits might evolve?

(c) Must any investigation be confined to that part of the Community territory in which the advertising is disseminated?

(d) Is it necessary to consider the competitive relationship in relation to the types of products being compared and the way in which those types of products are generally perceived, or is it necessary, in order to assess the degree of substitution possible, to take into account also the particular characteristics of the product which the advertiser intends to promote in the advertising concerned and of the image he intends to give it?

(e) Are the criteria by which a competitive relationship within the meaning of Article 2(2a) can be established identical to the criteria for verifying whether the comparison satisfies the condition referred to in paragraph (b) of Article 3a?

3. Does a comparison of Article 2(2a) of Directive 84/450 1 with Article 3a of that directive mean that

(a) either any comparative advertising is unlawful which enables a type of product to be identified where a competitor or the goods offered by him cannot be identified from the wording?

(b) or the lawfulness of the comparison must be considered in the light only of national legislation other than that by which the provisions of the directive on comparative advertising are transposed, which could lead to reduced protection for consumers or undertakings offering the type of product being compared with the product offered by the advertiser?

4. If it should be concluded that there has been comparative advertising within the meaning of Article 2(2a), must it be inferred from Article 3a(1)(f) of the Directive that any comparison is unlawful which, in respect of products without designation of origin, relates to products with designation of origin?".
The IPKat, being fascinated by the points of intersection between trade mark infringement and unlawful comparative/referential advertising, awaits the Opinion with excitement. Merpel says, never mind the law - what were the facts that gave rise to the dispute in the first place? Has someone been slagging off Champagne without specifying whose Champagne? In which case does Directive 84/450 cover multiple-sourced products covered by PGI and PDO protection too?


A prima facie doomed appeal is likely to be rejected on Thursday 30 November when the CFI gives judgment in Case T-43/05 Camper, S.L. v OHIM, JC AB. Camper is appealing against OHIM's refusal to register as a Community trade mark the figurative BROTHERS by CAMPER for all products in class 25 (clothing, footwear and headgear). JC opposed, citing earlier Swedish, Finnish and Danish figurative mark "Brothers" for goods in the same class. According to the appellant the conflicting trade marks are similar to the extent that there exists a likelihood of confusion. Click here to view both marks.


On Thursday 14 December the Advocate General gives his Opinion in Case C-273/05 P Celltech R&D Ltd v OHIM. This is an appeal by OHIM against the judgment of the Court of First Instance (CFI) in Case T-260/031. The CFI overturned the Board of Appeal's decision to affirm the examiner's decision to reject the application to register the word CELLTECH for goods and services in various classes. The Board had agreed with the examiner that, because the word CELLTECH consisted of the grammatically correct combination of the two terms ‘cell’ and ‘tech’ (an abbreviation of ‘technical’ or ‘technology’), it could not serve as an indicator of origin for the goods and services in respect of which registration was sought, all of which fell within the field of cell technology.

OHIM's appeal is based on five arguments:
1. Although the CFI recognised "that at least one meaning of the word mark CELLTECH is 'cell technology'", it incorrectly required the Board of Appeal to give "an explanation of the meaning in scientific terms of cell technology" in order to explain "in what way those terms give any information about the intended purpose and nature of the goods and services referred to in the application for registration, in particular about the way in which those goods and services would be applied to cell technology or how they would result from it";

2. The CFI wrongly disregarded the principle following which a mere combination of elements, each of which is descriptive of characteristics of the goods or services in question, without any unusual variations as to syntax or meaning, remains descriptive of those characteristics for the purposes of Article 7(1)(c) CTMR;

3. The Court's statement that a finding of descriptiveness or of lack of distinctiveness requires a description of the "intended purpose" of the goods and services in question is erroneous as a matter of law. Although the Court recognised that "cell technology" is an "area of use" for the goods and services in question, it wrongly held that the description of such an "area of use" would be insufficient to establish that the sign CELLTECH is descriptive and therefore devoid of distinctiveness;

4. The Court incorrectly considered that the description of a process for the production or the supplying of the goods and services in question does not fall within the ambit of Article 7(1)(c) CTMR;

5. The Court also failed to give reasons in support of the latter finding.
Never a kat to prejudge the issue, the IPKat fancies OHIM to win this one [nb thanks are due to Trevor Cook, Bird & Bird, who spotted a monstrous error in the original version of this post which has since been rectified].


Finally, and also on 14 December, the CFI gives judgment in Case T-81/03 Mast-Jägermeister AG v OHIM. This is an application to annul the decision of the Board of Appeal (Case R 412/2002-1) arising from Zacapeneca's application to register as a Community trade mark its VENADO figurative mark for goods in Classes 32 and 33 (inter alia mineral and aerated waters and other non-alcoholic drinks, rum, rum-based liqueurs, brandy). MJ owned an earlier mark (right) consisting of a stag's head with a cross, registered for goods in Classes 18, 25, 32 and 33 (inter alia umbrellas, clothing, non-alcoholic beverages in so far as included in Class 32, wines and spirits). MJ's opposition failed both before the Opposition Division and on appeal. MJ's further appeal maintains that the principles relating to likelihood of confusion had been incorrectly applied.

The IPKat couldn't get a decent image of either mark to stick, unfortunately, but they can both be seen here. Although they're quite similar, the Board of Appeal had this to say at paragraph 32:
"The Board took the liberty of sampling the United Kingdom trade marks register and discovered that the deer or deer’s head motif is also found to be a common feature on trade marks covering beverages. It is not difficult to see why. Traders in beverages – particularly alcoholic beverages – like to associate in the mind of the consumer, their product with unspoilt wilderness, highland areas, of rugged and manly pursuits such as hunting game. This mental association brings with it the notions of purity, nature and tradition, all important selling points for drinks".

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