Slogans and trademark: new turn in the Community practice
Written by Jun Ito Monday, 08 March 2010 15:32
On January 21, 2010, the CJCE issued a favorable decision for the slogan “Vorsprung durch Technik” (i.e “Advancement through technology”) filed as Community word trademark by AUDI AG in 2003 and covering classes 9, 12, 14, 16, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 45.
The Examiner, then the Second Board of Appeal and then the Court of First Instance had rejected the mark because it lacked distinctiveness. The CJCE set aside and annulled their previous findings and raised that :
- the minimal level of distinctiveness of slogans cannot rely on “imaginativeness” or “conceptual tension creating surprise and so making a striking impression”;
- the perception of a mark as a promotional formula does not exclude it from distinctiveness as long as the public perceive the sign as an indication of the commercial origin or goods or services;
- characteristics such as having a number of meanings, or constituting a play on words or being perceived as imaginative, surprising or unexpected are likely to endow a slogan filed as trademark with distinctive character.
This CJCE decision may likely be a new start for successfully filling slogans as Community trademarks on the basis of a case by case analysis and provided that the Community case law soften the very strict approach which was applied until now.
By the way, our deep study of the situation as to trademarks and slogans will shortly be featured in a next issue of the WIPO MAGAZIN – watch out for it!
eBay: Act IV in the battle of LVMH
Written by Jean Philippe Bresson Tuesday, 02 March 2010 14:48
First Instance Court just upheld last Thursday (Feb 11, 2010) in favor of LVMH, granting them damages of 200.000 €.
The circumstances of the matter are indeed quite similar with those of the earlier ruling of September 18, 2009. In the decision of September, several companies of the Louis Vuitton Group which sued eBay for trademark infringement because of the reservation on several search engines (GOOGLE, MSN and AOL SEARCH) of key words reproducing and imitating trademarks hold by these companies such as “Ange ou demon”, “Hot Couture”, “L’heure bleue”, “(parfum) Habit rouge” or “Kenzo” which drove internet users to eBay.fr and eBay.com websites. In decision of Last Thursday, LVMH also complained about reservations of keywords on various search engines.
The solution also seems to be the same between last Thursday findings and the findings of last September: use of the marks was then regarded as serving only a promotional purpose and excluded any informative approach. The judge considered that only an informative approach could have rendered necessary a reference to the marks involved.
So what’s new in comparison with these previous findings? First, no trademark of sub companies was involved. The claim was based on the reputed trademark, the company name, the board sign and even the domain name for the house mark and brand “LOUIS VUITTON” only. So everything was just around the “LOUIS VUITTON” sign but with a larger nature of earlier signs raised. Secondly, whereas the Court granted “only” a total of 60.000 € to Louis Vuitton group in September, the Judge allowed this time 200.000 € as damages.
More detailed are yet to come but this truly shows the definitive willingness of LVMH.
"chemicals used in the pharmaceutical and medical industry” are … dissimilar with “pharmaceutical”!!!
Written by Jean Philippe Bresson Friday, 15 January 2010 09:45
January 4, 2010- OHIM
On January 4, 2010, the Opposition Division of the OHIM rejected the opposition involving the marks DROSETUX and DROSETIL to the extent that “chemicals used in the pharmaceutical and medical industry” (class 1) were regarded as dissimilar with “pharmaceutical, veterinary and dietetic preparations adapted for medical use” (class 5).
For the OHIM, said chemicals are normally bought by pharmaceutical companies in high quantities on the wholesale level to form part of pharmaceuticals packaged and sold as units over the counter in pharmacies or drugstores.
The commercial channels were also pointed out as being different, the products at hands being not marketed alongside each other: chemicals of class 1 are manufactured in chemical production plants and processed in chemical laboratories or pharmaceutical companies where the finished products are made; pharmaceuticals of class 5 move from the pharmaceutical companies to pharmacies, hospitals, clinics and other healthcare institutions.
The OHIM consequently took the view that consumers of pharmaceutical products have no interest in large-scale purchasing of the applicant’s chemicals and are not concerned with the origin of the ingredients contained within the pharmaceuticals. Equally, the customers of the chemicals undertakings have no interest in buying final pharmaceutical products. Additionally, whereas products are admittedly used for the manufacturing of pharmaceuticals, this connection is very tenuous.
These differences in nature, purpose, method of use, distribution channels, targeted consumers were considered as significant by the Office what contradicts with the most current European case-law. This (dis)similarity situation will have to be further monitored to know whether this remains an isolated case or whether the usual tendency is now changing.
Generics: to reduce or not to reduce TM monopoly?
Written by Jean Philippe Bresson Tuesday, 05 January 2010 16:47
The French Senate voted on the law ‘Financing the National Social Security for 2010’ which was supposed to amend the Public Health Code by introducing the article L. 5121-10-3 relating to generics and worded as follows:
“The owner of an intellectual property right that protects the appearance and the texture of oral pharmaceutical forms of a reference product within the meaning of article L. 5121-1 may not prohibit the oral pharmaceutical forms of a generic drug substitutable to this product under article L. 5125-23, from showing a similar or identical texture or appearance.”
The manufacturers of generic drugs would then have been in a position to freely imitate the shape and/or color of the tablets proper to the original marked pharmaceutical.
The planned article however did not went through the filter of the French Constitutional Council which upheld on December 22, 2009, that said provision was contrary to the French Constitution and could not consequently be enacted.
The ground retained by the Constitutional Council is the lack or the very limited effect that the provision in concerns would have on the compulsory expenses of the social security…
The intended exception to pharmaceutical trademarks monopoly is not consequently radically excluded in itself and it might be that it surfaces again at some later stage and out of the particular context attached to the yearly Social Security law...
MERRY CHRISTMAS AND HAPPY NEW YEAR
Written by Séverine Fitoussi Thursday, 24 December 2009 13:04
All IP TALK team wishes you a very happy Christmas and happy new year 2010More Articles...
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