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Thursday, 25 October 2007

Caipi capers

The IPKat earlier this week posted information concerning a Court of First Instance decision on a Community trade mark application for the word CAIPI that was available only in French and German. His old friend and inspiration Tibor Gold makes him the following kind offer (as well as giving his take on the case):

"Next time we meet I will treat you to a delicious cocktail called caipirinha, based on a Brazilian spirit called cachaça, very refreshing …

“Caipi” was refused at all instances below as descriptive, Art. 7(1)(c)).

Here the evidence appeared to establish that ‘caipi’ was a common abbreviation of caipirinha in at least some EU countries, especially in Germany. The fact that caipi has other significations had no effect on the correctness of the decisions below (DOUBLEMINT) nor was the Board of Appeal wrong to go beyond analysing the current market situation and also consider possible future developments, and nor again was there a duty on the BoA to prove that the contested sign was a dictionary word (PAPERLAB).

Next, the usual short shrift was given to arguments based on the word having been registered nationally in some EU Member States (electronica; BioID). Lastly on descriptiveness, an argument based on Art 12 CTMR was also dismissed, it appears the appellant ran a sort of Gerolsteiner type of argument that his registration would not impede third parties selling caipirinha cocktails with others’ ingredients so long as they are honest, but this found no favour having regard to the duty on OHIM to examibe strictly so as not to register invalid signs (LIBERTEL) and the finding in OLDENBURGER that Art 12 has no role to play in ex parte examination.

It followed from the finding of descriptiveness under Art. 7(1)(c)) that the sign also offended against ‘distinctive character’ in Art 7(1)(b). The appeal failed".

Verena von Bomhard (who heads Lovells' Alicante office) offers some sage advice to anyone who might overdo it:
"Caipi is Caipirinha, a Brazilian Cachaca-based drink with limes, brown sugar and crushed ice, refreshing to body and mind (until the second one, then it's DANGEROUS). Caipi is not a dictionary term but very commonly used in many countries as an abbreviation for Caipirinha.

There is also Caipirovka, the same but instead of Cachaca they use Vodka - that is NOT a "Caipi". And it's not Brazilian".
Charles Swan (Swan Turton) cites what looks like a formal definition:
"The word "caipirinha" is the diminutive version of the word "caipira", which refers to someone from the countryside, being an almost exact equivalent of the American English hillbilly. The word may be used as either a masculine or a feminine noun, but when referring to this drink it is only feminine (usage of diminutives is conspicuous in Brazil). However, a Brazilian hardly ever thinks of a "country person" when ordering a "Caipirinha". In the mind of a Brazilian, the word "Caipirinha" is mostly associated with the drink itself".
He adds:
"Isn’t caipi just a silly abbreviation of caipirinha for the benefit of non-Portuguese speakers who aren’t sure how to pronounce the word and don’t want to embarrass themselves at the bar by getting it wrong?"

3 comments:

Nicola said...

To quibble over the minutiae - I believe the caipiroska is Brazilian. I remember having them in 1995 in Brazil before the drink became popular worldwide. Of course, the drink may have affected my memory!

Anonymous said...

DANGEROUS after one? Some people ought to get out more.

Jeremy said...

Apologies to Michel JP Le Marc, who wrote this to the IPKat (who didn't spot it when it arrived):

"The IPKat should really learn French and drink more (drunkards would immediately notice that CAIPI is the name of an alcoholic cocktail).

The applicant tried to register CAIPI (verbal tm) for alcoholic beverages (except for beer), in class 33 (German prior tm was relied on).

Examiner said no and then the Board of Appeal upheld its decision because CAIPI is the abbreviate for caipirinha (abbreviate used by many people, and not only a few), an alcoholic beverage (see wiki here). Everyone should therefore be allowed to use that sign and no right should be granted in the word CAIPI. Tm applicant did not give up and took its case to the CFI.

CFI's decision: public is the average German consumer, general public commonly uses the expression CAIPI to designate cocktails. Since the sign is intended to be used in relation to class 33 goods in general (the application did not exclude the actual Caipirinha cocktail), it is descriptive and cannot be registered.

CFI found that the fact that the word CAIPI was not in a dictionary was irrelevant. The fact that, at the time of the application the sign was not actually used in trade to describe the product is also ireelevant, what matters is how the sign is perceived by the public and the fact that the sign could be used to describe the product.

Sign has to remain available to both the marketing of ready-made cocktails and the marketing of ingredients that can be used to prepare the cocktail.

CFI also found that a previous national registration is just an element OHIM has to take into account but which does not bind OHIM (even if the registrability had already been challenged before the national tm office).

The appellant's last two arguments are frivolous and quickly dismissed by the CFI.

That decision's not unusual and this case only proves that registering cocktail names is quite complicated (in France a tm owner lost its rights in the sign "Pina Colada" designating alcoholic beverages, the sign had become generic and designated the so-called cocktail, described here)".

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