The car might zoom, but the mark limps along ...

TDI: "Total Design for Infants"?

The trouble with registering a set of initials as a trade mark is that sometimes they stand for something. Knowing nothing of motor cars, this Kat would not have instantly recognised 'TDI' as standing for turbo(charged) diesel injection. He does have a car, but it's not very turbocharged, doesn't have a diesel engine and seems to cope quite well without injections (or is there something the car should be vaccinated against?). With this in mind, the Kat brings news of today's General Court decision in Case T‑318/09, Audi AG and Volkswagen AG v Office for Harmonisation in the Internal Market.

In May 2003 Audi and Volkswagen applied to register as a Community trade mark the word sign TDI, for ‘vehicles and constructive parts thereof’ (Class 12). No, said the examiner: TDI was descriptive, lacked distinctive quality and couldn't be shown to have been accepted as a trade mark by the public.  The Board of Appeal agreed, adding that the acquisition of distinctive character through use had to be proved throughout the European Union, but there was no such evidence in respect of Denmark, The Netherlands and Ireland [what a remarkable coincidence, chortles the IPKat: DTI is the initial letters of Denmark, The Netherlands and Ireland]. Even regarding the rest of the EU, the evidence furnished was not capable of proving acceptance of the sign applied for in so far as it did not show that that mark enabled consumers from those countries to identify the commercial origin of the goods in question.

This morning the General Court dismissed Audi's and VW's further appeals on every imaginable ground (or so it seems: misapplication of rules barring registration of descriptive and distinctive signs, failing to apply correct test for acquisition of distinctive character through use, not letting them get away with registration when it had been registered elsewhere, allowing other initials to be registered but not theirs, breach of natural justice, failure to examine the evidence, prejudice against men with moustaches ...).  Significantly, the Kat dredged this little gem out of another sadly long judgment:

"71 Contrary to the applicants’ contentions, the Board of Appeal did not find that there had been no use as a trade mark on the basis of circular reasoning in assuming that, as the sign is descriptive, it could not be used as a trade mark.

72 ... the Board of Appeal analysed a number of advertisements submitted by the applicants. ... [A]s the Board of Appeal rightly found, that advertising material clearly gives the relevant public the impression that the sign TDI was not used to identify the commercial origin of the goods in question, but to describe a characteristic of the motor vehicles in that material, namely that of being equipped with a direct fuel-injection diesel engine.

73 In addition, in the advertising material submitted by the applicants and included in the administrative file, the sign TDI always appears with another mark belonging to the applicants, such as the trade marks Audi, VW or Volkswagen [Just look at that! Remember how Sir Robin Jacob characterised "limping marks" and got a bit of a ticking off from the Court of Appeal in Philips v Remington? Isn't this exactly what he was talking about?]. The Court has, however, held on numerous occasions that advertising material on which a sign which is devoid of any distinctive character always appears with other marks which, by contrast, do have such distinctive character does not constitute proof that the public perceives the sign applied for as a mark which indicates the commercial origin of the goods ... [No problem here, then, says Merpel. Audi should start selling cars and parts that are devoid of any branding except 'TDI', then come back to Alicante later ...]. ...".

T-D-M here

Return of the Chocolate Bunnies

Just when you thought it was safe to go back to the confectioners, Europe's chocolate bunnies have announced their return.  The Curia website brings news of the appeal which has been lodged by Chocoladefabriken Lindt & Sprüngli AG against the judgment of the General Court (First Chamber) in Case T-336/08 Chocoladefabriken Lindt & Sprüngli AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs).  For those of you who are new to this weblog, that was the ruling last Christmas on the registrability of the shape of Easter bunnies as Community trade marks (see here for background).

The appeal has been given a brand-new case reference number (Case C-98/11 P) and, for those folk who appreciate legal details, where are the pleas in law and main arguments:

The present appeal is brought against the judgment of the General Court, by which it dismissed the appellant's claim seeking annulment of the Decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM) of 11 June 2008 on the rejection of its application for registration of a three-dimensional mark comprising the shape of a chocolate rabbit with a red band. 

The appellant bases its appeal on an infringement of Article 7(1)(b) and Article 7(3) of Regulation No 40/94. 

As regards the first ground of appeal, concerning the assessment of the marks' distinctive character, neither the assessment by OHIM nor the judicial review by the General Court satisfied the requirements in law, since both decisions were based on conjecture. OHIM speculated that the finding that a chocolate Easter bunny is a typical shape for Easter is valid for all Member States of the European Union and that that was not in dispute. That assertion has, however, always been in dispute, since the appellant has expressly disputed that assertion, adducing substantial evidence. OHIM and the General Court should have taken that into account in order correctly to fulfil their obligation of assessment under Article 74(1) of Regulation No 40/94. Further, the General Court reached the conclusion that the use of gold foil to wrap chocolate Easter bunnies is usual on the market, despite the fact that the judgment referred to only three other kinds wrapped in gold foil. Such a small number of goods cannot, in the view of the appellant, lead to that feature being regarded as 'usual in the market'. 

The fact that the assumption made by the General Court, that the mark has no inherent distinctive character throughout the European Union, is unfounded also becomes clear from the fact that the mark in question is registered as a trade mark in 15 Member States of the European Union. 

The second ground of appeal concerns the ruling of the General Court that the mark must have acquired distinctive character through use throughout the European Union, which is incorrect for two reasons. 

First, the General Court misses the point that distinctive character must be acquired by use only in those places where the mark has no inherent distinctive character. In the 15 Member States where the mark in question has inherent distinctive character, there is no need to require the acquisition of distinctive character through use. If the view were to be accepted that, as part of the assessment, distinctive character had to be ascertained again in the individual Member States, the factual circumstances pertaining there would have to be established. Since, pursuant to Article 74 of the regulation, distinctive character is to be assessed by OHIM of its own motion, OHIM should thus have made specific findings for each individual Member State of the European Union. OHIM and the General Court failed to do so. 

Second, the considerations of the General Court cannot be reconciled with the principle of homogeneity of Community trade marks. In an assessment of registrability and, specifically in this case, distinctive character, the European Union is to be regarded as a common homogeneous market. If, as regards a significant part of the total population of the European Union, there is inherent distinctive character, that must also be sufficient for protection throughout the European market. That approach alone ensures that current national entities continue, despite their actual size, to be regarded as smaller or larger as necessary.

The IPKat is not saying anything at all about the over-intellectualisation of European trade mark law: he just wishes he could say with confidence that he understands what is meant by "That approach alone ensures that current national entities continue, despite their actual size, to be regarded as smaller or larger as necessary".  Merpel says, the funny thing about cases involving rabbits is that you start off with just a couple of them and, before you know it, they're all over the place ...

Why bunnies shouldn't eat chocolate here
Why are young rabbits called bunnies? here
Bunny boiler here
Vampire rabbit here

WARNING: CIGARETTE PACKETS CAN BE HARMFUL TO YOUR WEALTH

Although he is famed and feted throughout Europe for his lack of linguistic skill, the IPKat still managed to work out what was happening in Case T-140/06, a ruling of the Court of First Instance in September 2007 in which the Court, in a decision recorded solely in French, dismissed the appeal of Philip Morris Products SA against OHIM's persistent refusal to register as a Community trade mark the three-dimensional shape depicted above. This, for those of you who might otherwise have no clue as to what it is, is a representation of a cigarette packet (or "Forme d’un paquet de cigarettes", as the French so eloquently put it), which Philip Morris wanted to register in respect of, er, cigarettes in Class 34. Philip Morris was also "condamnée aux dépens", which presumably didn't bankrupt them because their next step was to appeal to the European Court of Justice (ECJ). According to the appellants:

"... the Court of First Instance infringed Articles 4 and 7(1)(b) of Council Regulation ... 40/94 ... first, [it] based its assessment on a bias against the category of marks in which the mark applied for falls. In finding that consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or of the shape of their packaging, the Court of First Instance made a factual finding which has no scientific foundation whatsoever and misconstrues the human perception of signs in general, and of shapes in particular.

Second, ... the Court of First Instance carried out an incorrect legal analysis of the relevant public's perception of the mark. That error arises, on the one hand, from the fact that the Court envisaged use of the mark only through its incorporation into a packet of cigarettes, although the shape of packaging for a given product can be perceived by the public in a multitude of other forms, such as graphic or three-dimensional representations of the mark in advertising material. The error of assessment arises, on the other hand, from the fact that the Court of First Instance reduced the concept of a mark to its part which is perceptible by a prospective purchaser at the moment immediately prior to his purchase, whilst the public concerned by a mark is composed of all those who may be faced with it in the course of normal use of the mark, which occurs both during the advertising of the product before it has been purchased and during use or consumption of the product after it has been purchased.

The appellant claims, thirdly and lastly, that the grounds of the judgment under appeal are contradictory".

This week the Curia website published the Order, made by the ECJ in June, dismissing the appeal. The IPKat's not surprised that the appeal was dismissed, but he is surprised that it took so long for information concerning the Order to be posted on the Curia website. The operative part of the Order consisted of just 11 words, three of which were "Philip Morris SA". Other traders with similar types of mark may be kept in suspense for ages, awaiting news of pending appeals before deciding on their own advertising, marketing and trade mark portfolio strategy. Merpel says, I'd have liked to hear the arguments based on bias: this is an allegation that is usually made against individual applicants or nationalities, rather than classes of the Nice Classification. Tufty, making a rare comment on a trade mark topic, adds: I had to read the second ground of appeal several times before I could convince myself that I couldn't understand a word of it.

If you want to know more about cigarette packets, try:
Up In Smoke here
Cigarette Packet Collectors Club of Great Britain here
Collecting Cigarette Packets from All Over the World here

One step beyond Praktiker: shopping centres as trade mark applicants

The English, it has been said, are a nation of shopkeepers. How strange, then, that a matter as fundamental as the right of a shopping centre operator to register its name as a trade mark should have had to wait so long for a definitive ruling. This has now been given, last Friday, by Mr Justice Floyd (Chancery Division, England and Wales) in Land Securities plc, Capital Shopping Centres plc and Hammerson plc v Registrar of Trade Marks [2008] EWHC 1744 (Pat).

This was a decision in respect of three joined cases, which were heard together in order to determine the question of whether the operator of a shopping centre could register a trade mark for the services it might provide (White Rose, Victoria Centre and Eden Quarter being the names at stake). In each case an application was made by a shopping centre operator and registration was refused. The applicants collectively maintained that, although shopping centre operators did not generally retail goods to the public, they offered a number of services, including

(i) selecting an attractive location with good transport links; (ii) providing a well-designed building or group of buildings, with a suitable layout; (iii) selecting and attracting a suitable mix of retail outlets; (iv) selecting and attracting a suitable mix of other facilities; (v) providing an attractive and comfortable ambience; (vi) providing facilities such as car parks, toilets and creches; (vii) providing convenient opening hours; (viii) providing information and assistance to customers; (ix) providing specialist assistance such as language assistance and facilities for the disabled; and (x) providing loyalty schemes of various kinds.

In support of the applications, evidence was furnished that shopping centres made extensive use of branding, undertaking advertising, publishing magazines and issuing loyalty cards. The Registrar was unmoved by their please. In his view (i) the services specified in the applications were not services within the meaning of Council Directive 89/104 and (ii) the specifications of the services lacked the requisite degree of clarity.

Floyd J allowed the applicants' appeals. In his view

* the word "services" within meant services which were of the kind that were "normally provided for remuneration". However, the definition of "remuneration" did not have to be a narrow one, relating to income that was separately itemised separate invoices. Thus it could include the services of a shopping centre operator, which carried on activities of "a commercial character". Nor was there was no reason in principle why a shopping centre operator could not be said to be providing services.

* one would not expect legislation concerned with trade marks to afford protection to activities which were wholly altruistic. Though a shopping centre operator might be remunerated in a way that was directly related to the custom which it attracted, even if that was not so, its services were not provided in a purely disinterested fashion.

* in each of these three cases the applicants had been providing services.

* the applications should be remitted so that the specification of goods/services could be properly designated.

The IPKat agrees with the judge's analysis and also with his conclusion that no reference to the European Court of Justce for a ruling on a preliminary question was needed here, since necessary principles could be extrapolated from its earlier ruling in Case C-418/02 Praktiker Bau- und Heimwerkermärkte AG [2005] ECR I-5873 (see IPKat notes here and here) where the applicant was a provider of retail services rather than, as here, a shopping centre operator. Merpel says, my favourite bit of the shopping centre is where you line up to take things back ...

Shopping for cats here
Cats in need of retail therapy here

Enercon appeal dismissed

This morning the Court of First Instance (CFI) of the European Communities dismissed the appeal in Case T‑329/06, Enercon GmbH v OHIM. This decision is so far available only in French and German.

So far as the IPKat can tell, this was an application to register as a Community trade mark a word sign consisting solely of the letter 'E' for various products relating to the generation of energy in the form of electricity in Classes 7, 9 and 19. He thinks the application was refused for lack of distinctive character and for its descriptive nature ("e" being an abbreviation of obvious application in this commercial sector). It seems that the Board of Appeal and the CFI agreed.

The IPKat wonders if one of his more linguistically talented readers could tell him a little more.

Click here for coverage of Rechtssache T‑71/06 Enercon GmbH v OHIM, in which Enercon applied to register as a Community trade mark a shape consisting of an American football-shaped wind turbine.