For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Friday, 6 July 2007

"Pimp my Trade Mark"; Next week in the Court of First Instance

The subscription-only World Trademark Report carries news (submitted by Sung-Nam Kim and Alex Hyon Cho of Kim & Chang, Seoul) of a 14 June 2007 decision from the Korean Patent Court, reversing an earlier ruling that the trade mark PIMP MY RIDE was contrary to public order or morality. This mark is the title of an MTV television programme in which a motor car in poor condition is restored and customised. Viacom, MTV's parent, applied to register it for Class 9 goods and for (moral)
services in Classes 38 and 41. The examiner and the Intellectual Property Tribunal both refused the application: they considered that the words "pimp" and "ride" both had suggestive sexual connotations and that the mark, construed as a whole, could be perceived as meaning 'to pimp a prostitute'.

On appeal to the Patent Court Viacom argued that the mark, whether taken as a whole or bit by bit, did not contravene public order or morality, particular for Korean consumers who did not speak good English. The company also pressed the fact the TV show was famous in many countries, to the extent that the expression "pimp my…'" has become a widely used catchphrase which is used to convey the idea of improving an item. The court, allowing the appeal, conceded that PIMP MY RIDE may have a dictionary meaning that contravenes public order or morality, but accepted Viacom's contentions.

The IPKat certainly sees the force of Viacom's contentions with regard to the expression "Pimp my ...", which looks to him as though, having also been used by Hewlett-Packard in its "Pimp my Printer" campaign, it has gone the way of "R-Us" and has become common property. Merpel says, I bet that in this context the word "pimp" is really just a mis-heard "primp" - which probably doesn't cause much offence down at the Korean Intellectual Property Office on a normal working day.

Pimp my Cat here


Next week in the Court of First Instance of the European Communities there's loads of action. According to the Curia website we can look forward to the following attractions:

* On Wednesday 11 July there's the hearing in Case T-181/05 Citigroup (formerly Citicorp) and Citibank v OHIM - Citi (CITI). This is an action brought by the owners of national and international word and figurative marks containing the term CITI for services in Class 36 against the Board of Appeal's decision to annul in part the decision of the Opposition Division, which itself refusing to register the word and figurative mark CITI in respect of services in Class 36 in the face of an opposition.

* On the same date the CFI gives judgment in Case T-263/03 Mülhens v OHIM - Conceria Toska (TOSKA). This is an action for annulment brought by the owner of the national word mark TOSCA for perfumes against the Board of Appeal's dismissal of an appeal from the Opposition Division, which rejected its opposition against the application for registration of the word mark TOSKA for goods in Class 18

* Confusingly similar but actually quite different is Case T-150/04 Mülhens v OHIM - Minoronzoni (TOSCA BLU). This is an application for annulment brought by the proprietor of the national word mark TOSCA for perfumery products against the Board of Appeal's decision to dismiss its appeal against the decision of the Opposition Division, which refused the opposition to the application for registration of the Community figurative mark TOSCA BLU for goods in Classes 18 and 25.

* On what is definitely a busy day for Mülhens there's also judgment in Case T-28/04 Mülhens v OHIM - Cara (TOSKA LEATHER). This is an action for annulment brought by the owner of the national word mark TOSCA for perfumes against the Board of Appeal's decision to reject the Opposition Division's decision, which itself partially rejected the opposition to the application to register the figurative trade mark TOSKA LEATHER in respect of products falling in Classes 16, 18 and 25.

* There's also judgment in Case T-192/04 Flex Equipos de Descanso v OHIM - Leggett & Platt (LURA-FLEX). This is an action for annulment brought by the holder of the national figurative mark FLEX for products in Classes 6 and 20 against the Board of Appeal's rejection of the appeal brought against the Opposition Division, which rejected the opposition to the application for registration of the word mark LURA-FLEX for products in Classes 6 and 20.

* On the same day the Fourth Board of the CFI is sitting in an "extended composition" to give judgment in Case T-443/05 El Corte Inglés v OHIM - Bolaños Sabri (PiraÑAM diseño original Juan Bolaños). This is an action brought by the owner of the national word marks PIRANHA, for goods in Classes 18 and 25, against the Board of Appeal's decision, in respect of the figurative mark 'Pirañam' for goods in Class 25, annulling the decision of the Opposition Division - which refused registration in respect of goods in Class 25.

* The next day, Thursday 12 July, the Fourth Chamber gives judgment in a copyright/competition dispute, Case T-229/05 AEPI v Commission. This is an action for annulment of a Commission decision in 2005 to reject a complaint alleging infringement of Article 81 and/or Article 82 EC by three Greek bodies for the collective management of related rights - Erato, Apollon and Grammo - which are stated to have applied unreasonable rates for payments by radio and television stations in respect of the related rights of singers, musicians and record producers. Erato, Apollon and Grammo represent singers, musicians and recording companies respectively.

3 comments:

Anonymous said...

Isn't it about time the poor old CFI had a little rest from trade marks ? All that cutting and pasting from a dozen earlier decisions - only to be told by the ECJ that they got it wrong yet again.

And to cap it all, constant sniping criticism from "commentators" - many of whom frequent this particular blog.

So, to honour this "Be kind to the CFI, Friday", I'd like to propose that, forthwith, all decisions on likelihood of confusion be taken by an online poll (in Blair speak, a "people's panel") of average consumers across Europe - specially selected for their common sense and complete ignorance of trade mark law.

Philip Eagle said...

Sadly, despite Merpel's fond hopes, the use of the word "pimp" here has nothing to do with "primp", but is a reference to the stereotypical fondness of the American procurer for extremely ostentatious vehicles.

Anonymous said...

Tangentially related ... does anyone around here think that Jeane Palfrey will be able to uphold the terms of her IP release?

"... she is making a pre-condition requiring recipients of the phone records to comply with several conditions, including one stipulating that the numbers not be published, traded or sold to third parties.

They must also agree not to disclose the identity of any woman who worked for Palfrey's business without first obtaining the woman's permission.
"

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