Daves stop making waves

News has reached the IPKat from his friend Lee Curtis (Harrison Goddard Foote) that a truce may have been reached in the War of the Daves. As Lee explains:

"Marketing Week has just reported that a branding consultancy known as Dave has withdrawn its opposition to a Community trade mark application to register the word DAVE by the TV channel which is also known by the brand Dave ("the home of witty banter"). This dispute has been ongoing for some time, with the branding consultancy’s opposition appearing to be based on claims of prior common law rights under the tort of passing based on past use of the DAVE brand. 

The cessation of hostilities in the War of the Daves comes as a surprise, as the brand consultancy was at least partially successful in its opposition to TV Dave’s application. Although that decision [a case note on the legal issues, published in JIPLP, can be read here] was under appeal with the TV channel branding OHIM's decision as being based on a "fundamental misunderstanding" of the UK law of passing off and an "entirely wrong assessment of the factual circumstances", it now appears that peace has broken out on the Dave front. 

Marketing Week quotes representatives for both parties: "We are currently in dialogue and, while it would be premature to pre-empt the outcome of those discussions, we can say we are pleased with the constructive approach that both parties have chosen to take." [Merpel bets this is a coded message that one of the Daves is paying the other a tidy sum ...] 

It appears in the paraphrase that well known anti Vietnam War slogan of the sixties it is better to come up with ingeniously named TV channels and branding consultancy’s than to make war".

Daves here, here and here
Davos here
Davis here and, not so innocent, here

"Advantage Becker ..., er, Barbara, that is ..."

Having been quite puzzled both by the reasoning and the result of the Court of First Instance's decision in Case C‑51/09 P Barbara Becker, the IPKat is heartened by the Advocate General's Opinion in her appeal against the Court's decision that her full name is confusingly similar to her husband's surname.

Right: "Barbara Becker appeals to the Court of Justice" -- in more ways than one?

So what's the story? Barbara Becker, formerly married to tennis champion Boris Becker, applied to register her name as a Community word mark for a variety of goods in Class 9 (including, notes the amused Kat, automatic vending machines and mechanisms for coin operated apparatus; cash registers and calculating machines). Harman Int. Industries opposed, citing its earlier Community word mark BECKER ONLINE PRO and an application for the Community word mark BECKER, both for identical and similar goods in Class 9. The Opposition Division, taking the view that there was a likelihood of confusion between the signs at issue, upheld the opposition. Barbara Becker appealed successfully to the First Board of Appeal. Considering, for reasons of procedural economy, only the earlier word mark BECKER and the mark Barbara Becker for which registration was sought, the Board of Appeal merely found that visually and phonetically there was some degree of similarity between the signs at issue, given that another component, the first name Barbara, was placed at the start of the trade mark applied for. Conceptually the signs at issue were clearly distinct since the surname Becker was not the dominant and distinctive element of the trade mark applied for, on account of the fact that the relevant public would perceive the mark in its entirety, that is to say Barbara Becker, rather than as a combination of the first name and surname. It also noted that Barbara Becker had ‘acquired celebrity status’ in Germany, while the name Becker was generally recognised as an ordinary and widespread surname. Dilution under Article 8(5) of Regulation 40/94 was a non-starter too, since it requires such a degree of similarity between the marks at issue that the relevant public establishes a link between them, but this had not been satisfied.

Harman Int. Industries brought an action before the Court of First Instance, which held that the Board of Appeal had wrongly stated that the marks at issue were clearly distinct. Regardless of the greater or lesser differences between the two marks visually and phonetically, the Court rejected the Board of Appeal’s assessment of the relative importance of the component ‘Becker’ compared to the component ‘Barbara’ in the mark Barbara Becker based on the following reasoning.

First, the Court considered that, even if the perception of marks consisting of personal names can vary in the different countries in the Community, at least in Italy, consumers generally attribute greater distinctiveness to the surname than to the forename contained in trade marks: it followed that the surname Becker is likely to have attributed to it a stronger distinctive character than the first name Barbara in the mark Barbara Becker. Secondly the Court rejected the argument that the fact that Barbara Becker enjoys celebrity status in Germany as the former wife of Boris Becker does not mean that, conceptually, the marks at issue are not similar, as both marks refer to the same surname Becker. Indeed, such similarity was reinforced by the fact that, in part of the Community, the component ‘becker’ is likely to be attributed a stronger distinctive character than the component ‘barbara’, which is simply a first name. Thirdly the Court cited the judgment in Case C-120/04 Medion, where a composite mark, created by the juxtaposition of a component and the sign of another earlier registered mark, may be regarded as similar to that other mark where the latter has an independent distinctive role in the composite mark, although it is not the dominant component. Applying that criterion, the component ‘becker’ was a surname which is commonly used to describe a person, retaining an independent distinctive role in the mark Barbara Becker, which was sufficient for a finding of a likelihood of confusion. Finally, given that the parties did not deny that the goods at issue were identical or similar, and also taking account of the visual and phonetic similarities of the marks Barbara Becker and BECKER, there was a likelihood of confusion between the marks, even though the goods were directed at a public with a relatively high level of attention.

Barbara Becker then appealed to the Court of Justice and on Thursday, while the rest of us were sifting the entrails of its decision last Tuesday in Google France v Louis Vuitton, Advocate General Cruz Villalón quietly delivered an Opinion strongly critical of the Court of First Instance decision.

"56. It is abundantly clear from all of the foregoing that, if the Court in the judgment under appeal wished to base its reasoning definitively on the doctrine in Medion in order to assess the likelihood of confusion between the marks at issue,... it had to explain why exceptionally in that case it was necessary to dispense with the general requirement with respect to an application for a composite trade mark to examine the overall impression, bearing in mind, in particular, its distinctive and dominant components. In other words, it should have dealt with, in that context, the possible conceptual similarity between ‘barbara becker’ and ‘becker’, because in this case it is not necessary for the component ‘becker’ to have a dominant position in the mark as a whole.

57. However, none of that is to be found in the reasoning in the judgment under appeal. Instead, there is scarcely any consideration to be found other than that ... that ‘becker’ is a surname, which is not in dispute, and which would be hard to refute. It is on that basis that the Court directly concludes that ‘becker’ and ‘barbara becker’ are similar ... and, therefore that the Board of Appeal had erred in law...

58. ... the judgment now under appeal makes no observations or assessment of the surname Becker in order to determine whether it retains an independent distinctive role, without necessarily constituting the dominant element in the mark as a whole, to which the judgment in Medion refers, whereas, in the circumstances of the case, it was essential to carry out an assessment of the distinctive character of the earlier mark BECKER. Since the latter had enjoyed a high level of notoriety with the public, any other mark which sought to designate identical goods would have more difficulties in appropriating that surname.

59. To sum up, based on a generalised understanding, in part incorrect, of the combined effects of the judgments in Fusco and Medion, the judgment under appeal may give rise to the belief, wrong in itself, that, in principle, any surname which coincides with an earlier mark may effectively prevent registration of a composite mark including a first name and the surname in question on the basis of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

60. In other words, the result of adding a purported rule of principle derived from a previous judgment of the Court of First Instance to another from a judgment of the Court of Justice, appears to lead to a result which is almost inevitable, which is that the issue of conceptual similarity is practically superseded in as much as the Court failed to take account of all the facts of the case, as it was required to do in accordance with the case-law. Most particularly, it failed to examine the influence of the first name from a conceptual point of view of the mark Barbara Becker and the greater or lesser degree of distinctiveness of a mark composed of a single surname.

61. In the light of the foregoing, I consider that the judgment under appeal is vitiated by an error of law, and that the single ground of appeal should be upheld and the judgment set aside.

62. As the error detected may be remedied only by undertaking the assessments of fact referred to in the preceding paragraph, ... I propose that the case should be referred back to the General Court in order for the latter to undertake those assessments and to give another ruling consistent with them".

Bravo, says the IPKat -- now here's an Advocate General who speaks his mind and knows how to give the Court of First Instance -- now the General Court -- a sharp cuff around the ear when necessary. He will be a worthy successor to the sadly mourned Advocate General Ruiz-Jarabo Colomer whom he so speedily replaced.

More on Barbara Becker here

Another person with whom to confuse Barbara Becker here

Why are CTM applications through the Madrid System less often opposed?

IPKat reader Alfred Strahlberg of Strahlberg & Partners, Switzerland, points to an interesting statistic: roughly 17% of all CTMs filed directly with the OHIM are opposed (see table above, click on it to enlarge - I know it's impossible to read). However, CTMs filed using the Madrid System - i.e. international marks seeking extension to the EU - are only opposed in about 8% of all cases (see table below).

The difference is quite large and definitely not due to chance. The IPKat thinks that one reason why "IR CTMs" are opposed less often is that the opponent may oppose the base registration instead and kill the IR mark once and for all ("central attack"). Only when that was not possible or seems unadvisable (home turf advantage for the registrant?) would he or she chose to oppose before the OHIM. This would mean that the combined rate of opposition - base registration and before OHIM - should be about the same for international marks as for directly filed CTMs; the IPKat lacks the empirical data to back this up, though (in Switzerland, roughly 5% of all national registrations were opposed in 2008; adding this figure to the 8% opposition rate for "IR CTMs" one arrives at a combined opposition rate of about 13% - still not quite 18%, but getting closer).

Do the IPKat readers have other explanations for the difference in opposition rates?

OHIM: "discrepancies" in opposition figures? ... and a new watch service too

No, this is not another post concerning a potential OHIM scandal (see here). The IPKat's good friend Alfred Strahlberg has contacted the Kat with an interesting observation concerning the numbers of oppositions filed against "normal" Community Trade Mark applications (average 17.45%) and the significantly lower number of oppositions filed against European Community designations of international marks under the Madrid system (8.3%). Alfred has helpfully and with Swiss precision calculated the above percentage numbers for the Kat, who in turn apologises that the picture below is a little blurry. So what is the reason for the discrepancy in the numbers of oppositions filed against CTMs and IRs designating the EU? Alfred speculates that

"...one reason may be because the republication of an IR occurs six months prior to the opposition period and the end date of the opposition period is not indicated, making it hard to monitor. Also CTM Online as regards IRs is sometimes not updated when the opposition period is open."

This Kat too has noticed that there appear to be some general problems with the updating of information on CTM Online - but could this really affect the numbers of oppositions significantly? Fellow MARQUES Class 46 blogger Mark Schweizer has another plausible explanation:

"Could it also be that IR marks, as they need a basis registration/application, are less likely to be opposed at OHIM, but rather at the central level? At least if I have a choice as opponent - i.e., I also have a mark in the "home country" of the IR - I'd probably prefer to oppose the base registration and kill it once and for all."

While writing this post, the IPKat noticed a message on the OHIM's website concerning a new "CTM watch service" which as of today's date could potentially help with monitoring the progress of any type of application:

"Users of MyPage, the password-protected platform making it easier to do business with OHIM, will have access to a new feature allowing them to track the progress of CTM applications as well as international applications from 1 October. [IPKat: should this read "European Community designations of international trade mark registrations"...? OHIM's explanatory leaflet refers to "International Registrations".]

Using the CTM Watch service, users will be able to select any CTM application or international application and receive an e-mail alert when the application status changes. For example, a user can ask to be informed when a CTM/IR is published or registered. For more information on CTM Watch see our leaflet."

Image from "cat-behavior-explained.com"

This particular Kat is very interested in the new watch service and rather optimistically hopes it will be fed with up date data. Mark's explanation above makes a lot of sense and he certainly describes a preferred strategy within the first 5 years of the IR's life. However, could there be more obscure reasons for the discrepancy in opposition figures? If so, what other reasons could there be? Have any of our readers experienced problems with inaccurate data on CTM Online and so perhaps miscalculated or even missed an opposition deadline? While we would all contact the Office to seek clarification, sometimes there just is not enough time...

This Kat is interested in our readers' views, experiences and theories.

Wine and glass "not complementary", says ECJ

The Court of Justice of the European Communities gave its decision today in Case C‑398/07 P, Waterford Wedgwood plc v Assembled Investments (Proprietary) Ltd, Office for Harmonisation in the Internal Market, a Community trade mark opposition which has been running for eight and a half years.

In December 1999, Assembled Investments applied to register the figurative sign on the right as a Community trade mark for "alcoholic beverages, namely wines produced in the Stellenbosch district, South Africa" (Class 33). Waterford opposed, citing its earlier Community word mark WATERFORD for 'articles of glassware, earthenware, chinaware and porcelain’ (Class 21).  The serious opposition was based on (i) likelihood of confusion under Article 8(1)(a)(b)  of Council Regulation 40/94 and taking of unfair advantage of its reputation without due cause under Article 8(5).

The Opposition Division rejected the opposition in its entirety: there was no likelihood of confusion since the goods were not similar (the fact that wine is generally drunk in a glass being insufficient in this respect) and the evidence provided by Waterford was insufficient to establish the repute of the trade mark on which the opposition was based.  Waterford succeeded however on appeal, where the Board of Appeal found that the trade mark applied for and the WATERFORD mark were highly similar on the visual, phonetic and conceptual levels for the relevant consumers in the United Kingdom and Ireland and that wine and articles of glassware were similar on account of the high degree to which they were complementary. Finding for Waterford under Article 8(1)(b), the Board of Appeal concluded that there was no need to rule on the Article 8(5) ground of opposition.

Assembled Investments appealed to the Court of First Instance, which overturned the Board of Appeal's decision. In the CFI's view, wine and glasses are distinct by their nature and their use, being neither in competition with one another nor substitutable, and not produced in the same areas. In the case of a wine glass and a bottle of wine being distributed together, the CFI found that this is normally perceived by the consumers concerned as a promotional attempt to increase sales of wine rather than as an indication that the producer concerned devotes part of his activity to the distribution of articles of glassware. Any complementarity was insufficiently pronounced for it to be accepted that, from the consumer’s point of view, the goods in question were similar within the terms of Article 8(1)(b).

Waterford then appealed to the Court of Justice, which today dismissed its appeal. Said that Court:

"... the Court of First Instance ... carried out a detailed assessment of the similarity of the goods in question on the basis of the factors [laid down by the Court of Justice]. ... it cannot be alleged that the Court of First Instance did not did not take into account the distinctiveness of the earlier trade mark when carrying out that assessment, since the strong reputation of that trade mark relied on by Waterford Wedgwood can only offset a low degree of similarity of goods for the purpose of assessing the likelihood of confusion, and cannot make up for the total absence of similarity. Since the Court of First Instance found ... that the goods in question were not similar, one of the conditions necessary in order to establish a likelihood of confusion was lacking ... and therefore, the Court of First Instance was right to hold that there was no such likelihood".

The IPKat is always anxious about cases in which complementarity of inherently dissimilar goods is argued, since what constitutes complementary goods (or services) is bound to differ as between economic sectors and cultural preferences.  Merpel says, this disposes of the Article 8(1)(b) point -- but whatever happened to the Article 8(5) opposition ground? Can anyone let us know?

Waterford crystal here and here

Glass recycling here

Stellenbosch here