TIME NOT OF THE ESSENCE; INDIANS PICK UP AMERICAN SPELLING

Time not of the essence in TM appeal

In his excitement last Thursday on seeing the European Court of Justice rulings in the Ruiz-Picasso and Deutsche SiSi cases (both blogged here), the IPKat completely overlooked a decision of the Court of First Instance in Case T-147/03 Devinlec Développement Innovation Leclerc SA v OHIM, T.I.M.E. ART Uluslararasi Saat Ticareti ve diş Ticaret AŞ. This is what it was all about.

T.I.M.E. applied to register as a Community trade mark a figurative mark containing the word "quantum" for watches, clocks, straps and related items in Class 14 (top right). Devinlec opposed, citing an earlier French registration of a figurative mark containing the word "quantieme" for much the same goods in Classes 14 and 18, citing a likelihood of confusion (see smudgy illustration, left). After being challenged as to earlier use, Devinlec showed evidence that the mark had been used in a rather more legible form (right).

The Opposition Division held that there had been proof of prior use that did not alter the fundamental character of the mark; the marks were similar; the parties' respective goods were identical/similar and that there was a likelihood of confusion. The Board of Appeal disagreed: notwithstanding the identity and similarity of the goods covered by the marks, it was necessary to take account of the circumstances in which the goods covered by the earlier mark were marketed. Devinlec's watches and watch straps bearing its Quantieme mark were sold to the end consumer only in E. Leclerc shopping centres. This being so, the visual and phonetic similarities between the marks and their possible common allusion to the notion of quantity would not lead the average consumer, were he to see the mark applied for on ‘watches, clocks, watch straps, watch chains/bracelets, watch bands, cases for watches and for clocks’ in outlets other than E. Leclerc stores, to consider that the goods covered by the marks originated from the same undertaking or from connected undertakings. Devinlec's appeal was allowed by the Court of First Instance, which nullified the Board of Appeal decision. The CFI said (with the Kat's emphases):

"104 Consideration of the objective circumstances in which the goods covered by the marks are marketed is fully justified. The examination of the likelihood of confusion which the OHIM authorities are called on to carry out is a prospective examination. Since the particular circumstances in which the goods covered by the marks are marketed may vary in time and depending on the wishes of the proprietors of the trade marks, the prospective analysis of the likelihood of confusion between two marks, which pursues an aim in the general interest, that is, the aim that the relevant public may not be exposed to the risk of being misled as to the commercial origin of the goods in question, cannot be dependent on the commercial intentions, whether carried out or not, and naturally subjective, of the trade mark proprietors.

105 On the other hand, the OHIM authorities are permitted to take into account the objective conditions under which the goods are marketed, in particular in order to determine the respective weight to be given to the visual, phonetic and conceptual aspects of the marks. Thus, if the goods covered by a given mark are only sold on oral request, the phonetic aspects of the sign in question are bound to have greater significance for the relevant public than the visual aspects (citations omitted).

106 In that respect, the Court cannot accept the intervener’s argument that the Board of Appeal did indeed take into consideration, in this case, the objective circumstances in which the applicant’s goods are marketed in so far as those goods are covered by a category of marks which is sui generis, namely private labels or store brands. That claim fails to have regard, first, to the fact that the goods bearing the earlier mark are not present on the shelves of E. Leclerc shopping centres but in specialised points of sale which may be situated in the shopping arcade surrounding those centres, and, secondly, the fact that, including in shopping centres, store brands coexist on the market with other brands, covering identical or similar goods, of other proprietors.

107 It follows that by taking into consideration in the assessment of the likelihood of confusion between the marks the particular circumstances in which the goods covered by the earlier mark are marketed, the temporal effect of which is bound to be limited and necessarily dependent solely on the business strategy of the proprietor of the mark, the Board of Appeal erred in law".

The IPKat thinks this must be right, though he has little sympathy for anyone who submits such a blodgy, splodgy mess and calls it an earlier figurative mark. Merpel adds, have you seen the time-line for this case?

Application: October 1997
Opposition: November 1998
Opposition Division decision: November 2001
Appeal filed: January 2002
Appeal heard by Board of Appeal: January 2003
Court of First Instance ruling: January 2006

How ironic that it is a case involving watches that seems to take so much time ...
The thief of time here and here


Shock, horror - US patents riddled with errors

The IPKat has received this "Presse release" (it's sent by his friend Charlotte Presse, from CPA). The interesting bits read as follows:

"According to statistics gathered by examining the proofreading activity of the Intellevate support staff in India, mistakes were identified in 98% of the sample patents. Of the 98%, 56% were made by the US Patent and Trademark Office (USPTO) and a further 44% by the prosecuting firm. Proofreaders found that 2% of the patents contained serious mistakes that weakened the core claims. Certificates of Correction were filed for an estimated 34% of the proofread patents.

Intellevate's Indian legal support center has proofread its 5,000th issued patent and Intellevate expects to proofread 4% of the patents issued by the USPTO in 2006.

Proofreading is an important last step in the process of obtaining a patent because it can identify errors that can affect the patent’s enforceability. According to Leon Steinberg, Intellevate’s CEO: “We find errors in every issued patent we review. Many of the errors are unimportant, but others, such as missing claim, can impair the enforceability of the patent. We identify the errors so that our clients can decide if they want to file a Certificate of Correction.”

The IPKat is not surprised at the high level of spelling mistakes anywhere that spell-checks are used, since people don't check to see whether their sometimes correct spellings have been miscorrected. He is however surprised in the high level of mistakes in patents, where (i) sensitivity to the meanings of words and (ii) the frequency with which unusual words and neologisms are used usually attracts a higher level of initial proofing than in legal writing in general.

Spelling test here
Scripps spelling bee here