"Would you care for a glass of CANNABIS, Sir?"

Drink and drugs were the main preoccupation of some of Europe's finest legal brains this morning, when the Court of First Instance rendered its decision in Case T‑234/06, Giampietro Torresan v Office for Harmonisation in the Internal Market, Klosterbrauerei Weissenohe GmbH & Co. KG, a decision which some of the IPKat's readers may feel to have been reached while under the influence of one or other of those popular commodities.

Over ten years ago, in February 1999, Giampietro Torresan applied to register as a Community trade mark the word CANNABIS for (i) ‘Beers’ (Class 32); (ii) ‘Wine, spirits, liqueurs, sparkling beverages, sparkling wine, champagne’ (Class 33) and (iii) ‘Providing of food and drink, restaurants, self-service restaurants, public houses, ice cream parlours, pizzerias’ (Class 42). The mark was registered in April 2003. Two months later, Klosterbrauerei applied for a declaration that the mark was invalid as regards the alcoholic beverages in Classes 32 and 33. The Cancellation Division agreed, concluding that CANNABIS was descriptive of the goods in question. In 2005 the Board of Appeal dismissed the appeal: in its view (i) the word ‘cannabis’ designated, in everyday language, either a textile plant or a narcotic substance and (ii) 'cannabis' was, for the average consumer, a clear and direct indication of the characteristics of goods in Classes 32 and 33.

The Court of First Instance dismissed Mr Torresan's appeal.

* It noted that cannabis has three meanings: (i) a textile plant the market in which is regulated within the Community framework and the production of which is subject to very strict legislation as regards the content of tetrahydrocannabinol (THC), the active ingredient of cannabis; (ii) a narcotic which is prohibited in a great number of Member States; (iii) the possible therapeutic use of which is under review. Further, when referred to as ‘hemp’, cannabis is used in a non-psychotropic form in the food sector in oils, herbal teas, pasta, bakery and biscuits, alcoholic and non-alcoholic beverages etc.

* The Court then summarised the principles under which a sign is deemed descriptive, i.e. where there is a sufficiently direct and specific relationship between it and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question. The descriptiveness of a sign may be assessed only in relation to the relevant public’s understanding of that sign and in relation to the goods or services in question.

* The relevant public in this case consisted of the average consumer of that type of goods.

* The key question here is whether the average consumer, who is reasonably well informed and reasonably observant and circumspect, may think, merely on seeing a beverage which bears as a trade mark the word sign CANNABIS, and no other additional element, that the mark at issue constitutes a description of the characteristics of the goods in question.

* There is a material link between the sign CANNABIS and certain characteristics of the abovementioned goods. Cannabis is habitually used in the manufacture of numerous foodstuffs, including beer and certain beverages.

* When he sees an alcoholic beverage or a beer bearing the trade mark CANNABIS, the average Community consumer will immediately perceive, without further thought, a description of the characteristics of cannabis, it being one of the ingredients which may be used as a flavouring in its manufacture.

* As the Board of Appeal pointed out, ‘those who purchase a beer bearing the trade mark CANNABIS will very probably do so because they are convinced that it contains cannabis and are attracted by the possibility of obtaining from the beverage the same, or at the very least similar, sensations as they obtain from the consumption of cannabis in another form’. Thus the fact that cannabis is a components of the drink constitutes a characteristic which determines the decision the consumer makes when he effects his purchase and therefore constitutes a fundamental characteristic of the goods for which the mark was registered, which is taken into account when a choice is made by the target public.

The IPKat is a little surprised by all of this. While he is not worldly-wise in the ways of cannabis, he has always enjoyed a good beer or three and greatly appreciates his wines and whiskies too. It would never have occurred to him that the presence of the word CANNABIS on the bottle indicated that its purchase and consumption would contain a promise of the sensation of taking cannabis, any more than it would occur to him that a bottle bearing the words BULLS' BLOOD would offer him the buzz of consuming that particular liquid.

Merpel says, I've occasionally heard people say they fancy a BLUE NUN ...

Why cats don't like cannabis here and here

Is Barbie just a brat? Does the UK IPO hold the key?

Hello Dolly


The BBC (and lots of others) report that the trial which says the makers of Barbie, Mattel, take on MGA, the makers of the Bratz dolls in the US. The claim isn't that the Bratz are too similar to Barbie. Instead, it's that Mattel actually owns the rights to the Bratz dolls because their designer was working for Mattel at the time the dolls were thought up and then defected to MGA.

The IPKat notes that this one's a jury trial, just to add that little wildcard factor.

Does this describe a key?


The UKIPO thinks it does (see decision here). According to Mr Hearing Officer Pike, "In relation to the goods in question [“Metal keys, metal key blanks, metal locks (other than electric)”] it is my view that this mark will be perceived as no more than an outline of a key." The Hearing Officer drew attention to the fact that shops which offered a range of goods (rather than being specialist key cutters) might need to use such images to draw attention to the fact that they also cut keys.

The IPKat reckons that this is one of the relatively rare decisions where the need to keep certain marks free under s.3(1)(c) has actually made a difference. He's not sure though. Will consumers really see this as the outline of a key? Even if they do, isn't it just a part of a key, which gives it a sort of abstract quality?

Fake footballers' signatures; kikoi returns

Trade marks send pair to jail

The IPKat learns from the BBC that Graeme Walker and Faisal Madani, who respectively sold and supplied fake football memorabilia, have received custodial sentences for fraudulent trading, breaches of the Trade Descriptions Act and infringement of the criminal provisions of the Trade Marks Act. The pair sold fake autographs of sporting personalities including Sir Alex Ferguson, Cristiano Ronaldo, Roy Keane, Steven Gerrard and Jonny Wilkinson. However, Walker was cleared of the headline-maker: selling a signed photograph of Michael Owen.

The IPKat was curious as to what the relevant trade marks actually are. A quick look at the Trade Marks Register suggests in the names in plain script, rather than the signatures themselves. The Kat wonders whether the footballers could have got their signatures registered. Would they have been memorable enough for consumers to use them to distinguish?

KIKOY applicant skirts the issue

Readers with good medium term memories may remember an application filed to protect KIKOY as a UK trade mark noted on the IPKat just over a year ago. This was controversial because it is the phonetic equivalent of ‘kikoi’, a form of Kenyan fabric used for skirts. The Daily Nation reports that the application has failed. However, none of the exciting trade mark issues (phonetic equivalent of a descriptive word, the morality of ‘locking out’ the tranditional users from marketing goods under the name in the UK) got an airing. Instead, the application was thrown out because the applicant failed to file a TM8.

The IPKat wonders if the applicant saw the outcry and thought better of it.

Spicy decisions from the Trade Marks Registry

The IPKat brings you some highlights of the Trade Mark Registry's recent decisions:

• Application to invalidate MASALA - the word mark MASALA was invalidated by Mr Hearing Officer Foley. He found that the sign, a constituent verbal component of various Indian spice mixtures, was both descriptive and customary in the trade for“cooked vegetables” in the Class 29 specification, “preparations made from cereals” in the Class 30 specification, and “foodstuffs comprising or made from any of the aforesaid goods”. The mark was merely descriptive for “infusions” and “tea and tea-based beverages”. However, it was valid in relation to beers and soft drinks. The IPKat thinks this is the right decision - he's not sure how this one got on the Register in the first place.
  
• PUCCI Designer Petwear - the designer Emilio Pucci successfully opposed this mark under s.5(4) (earlier right protected by passing off). The decision is interesting from the passing off point of view as proof that you really don't need a common field of activity to succeed in a passing off claim. Mr Hearing Officer Landau found that the misrepresentation came as a result of the fact that a number of other designers had branched out into the petwear field. The damage came not only from potentially confused consumers, but also from the fact that there was a risk that the trade mark applicant would make low quality goods. The IPKat notes that such reasoning has been rejected by the Registry for the purposes of establishing detriment to repute under s.5(3).
  
• MFI Make It Happen - Royal Bank of Scotland failed to convince Mr Hearing Office Reynolds that it had the goodwill in the slogan 'Make It Happen' that would allow it to assert an earlier right protected by passing off because it had used the slogan extensively with its housemark RBS. The IPKat notes that there appear to be an awful lot of s.5(4) cases floating around at the moment and wonders if there's a particular reason for it.