C-371/06 Benetton v G-Star, T-508/08 Bang & Olufsen (illustrated right) and Hauck/Stokke (the TRIPP TRAPP case, discussed in the previous report), together with the various "prongs" of Article 7(1)(e) the Community Trade Mark Regulation,
(i) the shape which results from the nature of the goods themselves;How do these apply, how far do they apply and how consistently do they apply? Leaving us with these questions and a round of applause, Annette was then followed by Grégoire Bisson (WIPO),
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods;
Grégoire promised to do more than merely advertise the facility of filing for design protection under the Hague System, though it was plain that he was enthusiastically committed to it. International design filings are rising at a far faster rate than patents and trade marks, though it was sad to say that most applications are made by domestic applicants. Still, every domestic applicant is potentially an applicant for registration in other countries, so there is at least the potential for improvement.
Madrid System international trademark coverage. Embedded intelligence is making Hague even more intelligence: it will help applicants to avoid losing out by filing designs for classes that are not protected in specific jurisdictions (like trying to register a design for "logos" in Locarno Class 32 in Korea).
Should logos be registered as designs under Class 32? This was controversial when introduced and in 2011 some 6% of registrations were for logos. By 2014 this had fallen to 4% and it seems that applicants are being more sensible with their logo-as-design registration policy. There are further problems with classification of what are apparently word marks, which don't really fit in with the Vienna system for the classification of the figurative element of marks either.
Theophile cited a number of overlaps with logos registered designs and logos, with some being registered as both. Shapes departing significantly from the customs of the relevant sector were those that could be registered both as designs and trade marks. He ran through the salient registration criteria of Community trade marks and designs and added that no mark would be refused on the basis that it was already registered as a design. Conflicts between Community trade marks and designs was Theophile's next subject, since the prior registration of each by a third party was capable of destroying the other. He reviewed the manner in which the respective mark and design were contrasted with one another: was it the "likelihood of confusion" test or was it based on the impression of the informed user -- or both, depending on which was the earlier?