AdWords - the Spanish point of view

AdWords are a hot topic and there is an ongoing interest in the various national legal view points concerning them, in particular after the Advocate General's opinion of 22 September 2009 (see the IPKat's post here).

In the light of this, the IPKat is proud to share the Spanish view point with his readers courtesy of Manuel Lobato and Fidel Porcuna (both Bird & Bird), who have co-authored "The liability of service providers in the information society. Reflections about the Opinion of the Advocate General delivered on 22 September 2009 in joined cases C-236 to 238 /08 Google v. Louis Vuitton and others before the ECJ."

Manuel, Fidel and their publisher have very kindly agreed to have their article posted on the IPKat and even provided an English translation. This Kat is a bit of an AdWords "addict" and very much enjoyed their insightful article, in particular their "Criticism of the position of the Advocate General" which is well worth a read!

The original Spanish version can be retrieved by clicking here.
The English translation (!) can be retrieved here.

Update: if anyone cannot open the links above, please e-mail Birgit with "Spanish AdWord paper" in the subject header.

A weighty trade mark issue for the US courts

The IPKat has learned from Reuters that Weight Watchers is suing Nestle for trade mark infringement in the District Court of Southern New York. Weight Watchers claims that Nestle has displayed trade marks relating to Weight Watchers and its points system on its Skinny Cow ice creams and Lean Cuisine ready meals. Weight Watchers fears that this may confuse consumers into thinking that it has endorsed Nestle's products. Nestle meanwhile runs its own weightloss programme, Jenny Craig Inc.

This looks to the IPKat like a rather unconventional interoperability case. Can you use someone else's trade mark to tell them that you food fits into their diet programme? Even if you can, should you do it in a way which doesn't cause confusion?

McDonald's final defeat by McCurry

The IPKat has learned from The Star that McDonald's has lost its final appeal against a Malaysian restaurant's use of the name McCurry (see previous coverage from the IPKat here). The Malaysian Federal Court refused leave to appeal against an earlier decision holding that confusion between the fast food chain and McCurry, which sells Malaysian chicken and fish head curries, was unlikely. McDonald's was also ordered to pay costs after failing to adquately explain how the earlier decision was flawed.

The IPKat has a sneaking sympathy for McDonald's here. He agrees that confusion is unlikely (he can't see fish heads appearing on McDonald's menus any time soon). However, he can't help but wonder if there wasn't just a tiny intention to create an association. Even if the 'Mc' stands for 'Malysian Chicken' as the owner has suggested, isn't it a little odd that a small 'c' is used. What really puzzles the IPKat though is whether an association with McDonald's would really help to shift chicken curry.

Trade mark victory for the Queen

The IPKat has come across a rare instance of a mark being refused registration because of the inclusion of a crown, contrary to Sections 4(1)(d) and 4(2)(a) of the Trade Marks Act 1994.

The Combined Armed Forces Federation, a trade association for members of the armed forces, applied to register a mark (right) consisting of the words 'THE COMBINED ARMED FORCES FEDERATION EST 2004', together with a Union Jack featuring a crown in its centre. The registration was opposed by another armed forces trade association, the British Armed Forces Federation. Instead of arguing that there would be confusion with its operations, the BAFF argued that the logo included the Royal crown (a problem in itself) and as a consequence suggested Royal patronage. Additionally, the use of the Union Jack suggested authorisation by the either the armed forces or the British Government.

The opposition succeeded. Following its initial filing of the mark, the CAFF had, on the advice of the IPO, written to the Lord Chamberlain, seeking permission to use the Crown in its logo. The request was refused, but the Lord Chamberlain provided the CAFF with examples of alternative crowns, less similar to the Royal crown, which could be used. The CAFF adopted one of these other crowns. However, according to Mr Hearing Officer Salthouse, this was not the end of the matter. The use of the crown could still be blocked in case consumers would think that the crown depicted was the Royal crown. While consumers would not know what the Royal crown looked like, and so would not take the crown to indicate Royal patronage, the combination of the Union Jack, the crown and the words 'Armed Forces' (the armed forces being a state body) could mislead the average consumer into believing that the CAFF had Royal Patronage, or was an organ of the state. While the Lord Chamberlain had permitted the use, he did not have any expertise in trade mark issues, and did not have to consider the same criteria as the Hearing Officer.

The IPKat notes that this is a neat demonstration of the fact that, although the Lord Chamberlain's main concerns are to protect the property of the Queen, and also perhaps her reputation, the Registry maintains a role to protect consumers from being confused (although Merpel pipes up, hasn't the Registry limited this role with the changes to relative grounds examination, since it leaves it for trade mark owners to decide whether to oppose confusing marks?)

Indian Supreme Court fails to hit the bottle

The IPKat has learnt from Times of India that lovers of finest Indian whisky can breath a sigh of relief. The Indian Supreme Court has ruled that Indian distiller Khoday India Ltd remains at liberty to sell its whisky under the Peter Scot name. In a case which took only 20 years to proceed through the Indian judicial system, the Scotch Whisky Association challenged the Peter Scot trade marks, which was registered in 1974. Khoday argued that because the SWA waited 13 years to challenge the trade mark, its claim was time-barred.

Reports don't make it clear whether the Supreme Court decided in Khoday's favour because consumers just wouldn't be confused, or because the SWA waited so long to bring its action. The IPKat though can see the merits of the reasoning based on lapse of time. If an IP owner knows that someone else may be infringing its IP, but stands by and watches as that someone invests extensively in a business built on that IP, it is unconscionable for the IP owner to decide to challenge the business at a much later date.

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?

Don't cross the Red Cross says judge

The New York Times reports that Johnson & Johnson hasn't met with a great deal of success in its US trade mark claims against the Red Cross. The companies had shared the use of the symbol since 1895 under a coexistence agreement. However, Johnson & Johnson got tetchy once it began licensing the symbol to commercial organisations to raise funds. However, this week, Judge Jed S. Rakoff, a Manhattan-based District Court judge ruled that the Congressional Charter under which the Red Cross operates allows it to use the red cross symbol for business purposes. The judge also found that the charitable motivation behind the activities strengthened the Red Cross' claim.

The IPKat reckons that the Congressional protection granted to the Red Cross organisation makes this into a special case, but as a matter of principle, there's a balance to be struck: charities shouldn't be able to ride roughshod over the rights of others, particularly when there are other alternatives, but companies take their reputations into their own hands when they decide to sue a charity.

Dr Who-ha

The IPKat is mildly amused by the coverage of the steps taken by the BBC against any anonymous online knitting affectionado (see the Telegraph's report). The lady in question created knitting patterns for creating replicas of popular Dr Who baddies, and posted them on the internet. The BBC responded by threatening copyright and trade mark infringement.

The IPKat reckons that this has all the makings of a good exam question. What is the copyright position of a person who creates a knitting pattern (presumably a literary work) from a television picture of a CGI character (an artistic work) or a costume (artistic work, or perhaps work of artistic craftsmanship)? And what about the trade mark position of someone who gives away knitting patterns, the results of which, when knitted, may end up on eBay? And that's not to mention passing off... One thing's for sure - in this country, the fact that it may or may not be transformative use won't help you. Merpel, however, can't understand why anyone will willingly spend time knitting models of characters which are meant to be made out of blobs of human fat.

Mc's Back; the day is ended

Not so McSweet

King5 reports that McDonalds is opposing a US application to register McSweet as a trade mark for pickled garnishes such as onions. The application is in the name of one Jim McCaslin, who bought the business from a man named Leo McIntyre. McCaslin has said that McDonalds has indicated that it will allow him to use the name, as long as he drops the trade mark registration.

The IPKat can see why McDonald's might want to stop people taking advantage of its brand, but he's not convinced that going after a man called Mac, who bought his business from a man called Mac is the way to go, particularly in the light of the burger chain's reputation for seeking to "monopolise" the Mac prefix.

World IP Day

It was World Intellectual Property Day over the weekend, but since it was on a Saturday, the IPKat missed it. The IPKat reckons that if the annual IP fest is to be taken seriously, there should be some way to move it to the working week if it falls at the weekend.

The IPKat (right) missed the party

Citibank wins dilution case

Citigroup, the company responsible for Citibank has won a dilution case before the Court of First Instance.

Citi applied to register CITI in fancy script as a CTM for ‘customs agencies, property valuers, real estate agents, evaluation and administration of house contents’. Citigroup opposed, based on its family of marks consisting of or containing the word "Citi".

OHIM rejected the opposition with regard to the services of customs agencies under Art.8(5). The Board found that Citigroup didn't have a reputation in a family of marks containing the "citi" element. Only the CITIBANK mark had a reputation, and that reputation was limited to banking. Moreover, the applied-for CITI mark and the CITIBANK mark weren't similar.

The CFI avoided ruling on whether there was a family of "citi" marks with a reputation because it was possible to proceed on the basis of the CITIBANK mark having a reputation.

However, OHIM had slipped up in finding that CITI and CITIBANK were not similar since "citi" was the distinctive and dominant element of both marks. Thus the marks were visually, aurally and conceptually similar to the required degree.

OHIM hadn't got as far as ruling on whether there was dilution of the sort required to satisfy Art.8(5). Here there was an overlap between the two parties' clients, and those clients would most probably be familiar with CITIBANK, which could

"lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark CITIBANK and the considerable investments undertaken by the applicants to achieve that reputation. That use of the trade mark applied for, CITI, could also lead to the perception that the intervener is associated with or belongs to the applicants and, therefore, could facilitate the marketing of services covered by the trade mark applied for. That risk is further increased because the applicants are the holders of several trade marks containing the component ‘citi’".

The IPKat reckons this was the correct decision. The Board's position on similarity of marks was always a bit strange here - so strange in fact that OHIM appears to have been arguing against the Board's decision. The Board saw the CITIBANK mark as a whole and didn't see CITI as distinctive or dominant. Moreover, Citigroup's reputation for CITIBANK bolstered the need to treat the mark as a whole, and not to single out the CITI element. The Kat is somewhat disappointed by the unfair advantage analysis though. In particular, rather a lot of it seems to come down to a likelihood of consumers being confused. If the EU wants a ground based on confusion where the parties' goods are disimilar, this should be explicit, rather than hiding behind unfair advantage.

Trade mark trolls reach the UK

The IPKat has been tipped off about this story from the BBC about a trade mark "troll" who has registered or applied to register trade marks which correspond with the names of existing Scottish businesses and have then offered to sell or "lease" them to the businesses in question for large sums of money. The person in question appears to be targeting the juice bar sector and has registered 40-odd juice-related names.

The IPKat notes that the existing businesses may be able to oppose or invalidate registrations based on marks protected by passing off, and perhaps to rely on bad faith grounds. However, the Kat has a niggling doubt - is it truly bad faith to register in a first to file system?

Fianna didn't Fail

The IPKat has come across a rare example of two major political parties working together with a single aim. The two parties in question are the Irish parties, Fianna Fail and Fine Gael and the aim was to defeat an application by a third party to register their names (and that of Sinn Fein) as UK trade marks.

The third party was a Mr Patrick Melly. He applied to register the three names as trade marks for fresh fruit, vegetables and salad, potatoes, tomatoes, malt, all the produce of Ireland, lemons, bananas in Class 31 and business administration, office functions in Class 35.

He then sent letters to the General Secretaries of Finna Fail and Fine Gael which read:

We are instructed by Fine Gael Limited, a Company registered in England under registration number 05473574. The Company has recently filed an application to register the name “Fine Gael” with the UK Patent Office and the European Trade Mark Office as a Trade Mark.

Our client is now planning to commence trading in Northern Ireland and the Republic in the name of Fine Gael Limited and intends to fully enforce its rights as the proprietor of the trademark. It would appear to our client that your party may inadvertently breach the terms of the trademark and it would not wish to see your client embarrassed by having to make any public retractions or apologies to our client. Our client would also not wish to put the party into a position whereby it is forced to change its name in some material way.

Our client would wish to enter into negotiations with your party for the grant of a license for the use of the trademark “Fine Gael” and would hope that this is of interest to your party.

Melly also appears to have written to the UK Treasury Solicitor indicating that if he did grant licences to the parties, he would place political conditions on them relating to the way in which public appointments were made.

The remarkable (though understandable on the state of the law) thing is that the Hearing Officer held that the parties could not oppose the registration.

Mr Geoffrey Hobbs QC reached the same argument on three of the four arguments put forward by the parties.

The party names could not benefit from Art.6bis protection as famous marks because there was no proof that the party names had been used as (unregistered) trade marks, nor was the evidence submitted sufficient to establish that they were well known in the UK.

The party names were also not protected by passing off as the parties had no goodwill in the UK.

The ban on registering deception marks also couldn’t help the parties. Mr Hobbs QC divided deceptive registration situations into two types: absolute and relative. Absolute covers deception as to what is being made available, relative covers deception as to who is making it available. The ban on registering deceptive marks was said to only be absolute deception. Concerns about who is making it available should be left to the relative grounds for the refusal of registration. The fear was that UK consumers would wrongly believe that the parties were using their name for fundraising purposes, which would be a relative type of deception, and consequently not covered under the absolute grounds.

However, the parties did succeed in showing bad faith. Although there is no ECJ case law on bad faith, the LCAP thought it legitimate to pay attention to the well-established Community law principle that “Community law should be interpreted and applied so as to confer no legitimacy on improper behaviour. Returning to the theme of absolutes and relatives, the LCAP found that the hearing officer was entitled to find that the relative position of the parties was not harmed, in that they would still be able to continue with their previous activities, even if Mr Melly’s application proceeded to registration. However, the hearing officer had paid insufficient attention to the absolute position of Mr Melly, who displayed a lack of integrity in threating to use the registrations in a way which would stop the parties from using their names or, more seriously (because the previous threat could probably be avoided with some good legal advice), by forcing the parties to distance themselves from his use of their names.

The IPKat finds it remarkable that the application for registration almost got away with registering the name of the major political parties in our very near neighbour. The parties didn’t help themselves here by failing to adduce evidence of recognition in the that went beyond mere assertions. Even if they had though, this wouldn’t have helped too much because the problem here was essentially lack of use as a trade mark. This put pay to both Art.6bis and goodwill for the purposes of passing off.

Boehringer Ingelheim v Swingward decision: and the show's not over yet...

The Court of Appeal has delivered its verdict in Boehringer Ingelheim v Swingward. (Readers will be excused if they have a sense of deja vu as they read those words). This is in the light of the ECJ's reponse to the second set of questions referred to it in this case. The ultimate result is Jacob LJ's statement "what I would do for the present is hold that the defendants have complied with BMS condition 4 and in particular that their activities by way of re-boxing and re-labelling have not caused and will not cause damage to the reputation of the claimants' trade marks.". The for now element is a result of a request from the claimants that the Court of Appeal hold off from making its final decison in the light of the fact that there is a pending Austrian reference to the ECJ asking the following questions:

1(a) Are Article 7 of the Trade Marks Directive [full title set out] and the case-law of the Court of Justice of the European Communities which has been pronounced on it to be interpreted as meaning that proof that reliance on the trade mark would contribute to an artificial partitioning of the market must be furnished not only as regards the repackaging in itself, but also as regards the presentation of the new packaging?

If the answer to this question is in the negative:

(b) Is the presentation of the new packaging to be measured against the principle of minimum intervention or (only) against whether it is such as to damage the reputation of the trade mark and its proprietor?

The IPKat can only agree with Jacob LJ's introductory comments:

Notwithstanding the two references to the ECJ and its answers, each "side" claims to have won...That is a sorry state of affairs. European trade mark law seems to have arrived at such a state of uncertainty that no one really knows what the rules are, outside the obviously core case of straightforward infringement (the use of a mark as a trade mark for the defendant's goods which is the same as or confusingly similar to a plaintiff's registered mark registered for the same or similar goods). Big brand owners want bigger rights; smaller players, no change or less. The compromises which have emerged have very fuzzy lines. So it is that in this case, notwithstanding two references (and a host of cases about relabelling parallel imports going back at least 30 years...), there is still room for argument. There is indeed a yet further reference about the subject still pending before the ECJ, see below.

The only winners here seem to be the lawyers (and of course the academics who get to write about the whole sorry mess).

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.
  

French connections

France backs term extension for sound recordings

It seems that the show’s not over for an extension to the copyright term of sound recordings. According to an article in Friday’s Times, France is due to make the extension a priority of its upcoming six-month presidency of the EU, despite opposition from the UK and Germany. According to the French Culture Minister, Christine Albanel

“Today, whole swathes of the recording catalogue of the 1950s and 1960s, representing a significant part of the national pop heritage, are falling progressively into the public domain…That creates an obvious problem of fairness. Artists who began their careers very young are being stripped today of all remuneration from their first recordings.”

The IPKat can’t quite share Ms Albanel’s indignation. There aren’t many other industries where success in your youth guarantees you an income for life.

For French-speakers only

Speaking of the French, they will be the only people able to understand last week’s Art.8(5) (dilution and unfair advantage) CFI case regarding the CAMEL trade mark, which still isn’t available in English. Even worse, Professor Lionel Bently has informed the IPKat that the ECJ’s judgment in Procter & Gamble v. OHIM, Case C-107/03P (23 Sept 2004) is not available in English from the ECJ’s website. The IPKat could (very very grudgingly) understand why a CFI judgment mightn’t be translated instantly, but a more than three year wait for an ECJ decision is very poor.

AG'S Opinion in O2 v H3G

Advocate General Mengozzi has delivered his Opinion from the UK reference in Case C-533/06 O2 Holdings v Hutchison 3G (the case concerning comparative advertising using bubbles).

He concludes:

... I propose that the Court give the following answer to the questions referred by the Court of Appeal (England and Wales):

(1) The use of a sign identical or similar to the registered trade mark of a competitor in an advertisement which compares the characteristics of goods or services marketed by that competitor under that trade mark with the characteristics of goods or services supplied by the advertiser is covered exhaustively by Article 3a of Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising, as amended by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997, and is not subject to the application of Article 5(1)(a) or (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.

(2) Article 3a of Directive 84/450 is not to be interpreted as permitting the use, in a comparative advertisement, of a sign identical or similar to the registered trade mark of a competitor only when that use is indispensable for the purpose of identifying the competitor or the goods or services concerned.

More from the IPKat when he's had a chance to digest...

Adidas v H&M

Thanks to the many people who have sent in translations. You can find one example in the comments section on this post.

A couple of weeks ago, the IPKat warned readers that Adidas v H&M was on the way. This is a reference concerning the role of the need to keep certain marks free for other traders once a mark has acquired distinctiveness, and also on the role of consumers' perceptions that the mark is an embellishment.

The decision of AG Ruiz-Colomer is now out, but sadly only in languages that the IPKat isn't clever enough to speak. Still, for the benefit of French-speaking readers, he concludes as follows:

Au vu des considérations qui précèdent, je propose à la Cour de répondre au Hoge Raad de la façon suivante:

«En appréciant l’étendue de la protection d’une marque qui ne consiste qu’en un signe correspondant à une des indications visées à l’article 3, paragraphe 1, sous c), de la première directive 89/104/CEE, du Conseil, du 21 décembre 1988, rapprochant les législations des États membres sur les marques, mais qui a acquis un caractère distinctif par l’usage et qui a été enregistrée en tant que telle, il convient de tenir compte de l’intérêt général à ne pas restreindre indûment la disponibilité de certains signes pour les autres opérateurs offrant des produits ou services semblables.

En revanche, lorsque le signe évoqué était initialement dépourvu de caractère distinctif, mais qu’il l’a acquis postérieurement par l’usage, les droits du titulaire de la marque ne sauraient être examinés à la lumière de l’impératif de disponibilité.»

Can anyone help the more linguistically challenged?

STOP PRESS!!

Olivier Van Droogenbroek (Crowell & Moring, Brussels) has just emailed the IPKat to say:

"I read the Dutch version of the AG's opinion.

„Bij de bepaling van de beschermingsomvang van een merk dat wordt gevormd door een aanduiding die beantwoordt aan de omschrijving in artikel 3, lid 1, sub c, van de Eerste richtlijn (89/104/EEG) van de Raad van 21 december 1988 betreffende de aanpassing van het merkenrecht der lidstaten, maar door het gebruik onderscheidend vermogen heeft verkregen en is ingeschreven, moet rekening worden gehouden met het algemene belang, dat de beschikbaarheid van bepaalde tekens niet ongerechtvaardigd wordt beperkt voor de andere marktdeelnemers die soortgelijke waren of diensten aanbieden.

Wanneer ditzelfde teken daarentegen geen intrinsiek onderscheidend vermogen bezit, maar later onderscheidend vermogen heeft verkregen als gevolg van het gebruik dat ervan is gemaakt, kunnen de rechten van de merkhouder niet aan de vrijhoudingsbehoefte worden getoetst.”

This means

"When determining the scope of protection of a trade mark which consists of an indication corresponding to the description given by article 3 § 1 sub c of the First Directive 89/104/EEC of the Council of 21 December 1988 to approximate the laws of the Member States relating to trade marks, but which through use has obtained distinctiveness and is registered, one must take account of the general interest that the availability of certain signs is not unduly limited to other market players offering similar goods or services.

When on the contrary said sign has no intrinsic distinctiveness, but obtained distinctiveness later on as a result of its use, the rights of the trade mark holder cannot be tested to the freihaltebedurfnis".

Olivier adds: "Don't know if it makes sense".

Ringing the changes

Will Obama change 'Change Rocks'

The IPKat has learnt of another setback for US presidential hopeful Barack Obama. A university student, Stefan Doyno, has challenged his use of the 'Change Rocks' slogan, claiming that he has a registered trade mark over the phrase, which he uses on jewellery where you can indeed change the rocks. A visit to the USPTO's website reveals that the student does have a trade mark which was applied for in January 2005 - two years before Obama announced his candidacy.

According to the student's lawyer

"Mr. Doyno would be more than willing to grant Mr. Obama a license on quite favorable terms to use the Change Rocks trademark in connection with products other than jewelry...Mr. Doyno is far more interested in exploring possible synergies ... than he is in preventing Mr. Obama from using the mark in connection with his campaign."

Obama's campaign has rather sweetly answered

"We invite him to be part of our grassroots campaign. He can come down and volunteer and wear his T-shirt [which features the 'Change Rocks' slogan]."

A spokesman also notes that no memrobillia has been sold under the slogan.

The IPKat reckons that Donyo would do well to remember that a trade mark registration doesn't give you a monopoly over every use of the phrase which constitutes your mark. However, he's secretly hoping this one will go all the way to court and give us a juicy case about the status of political uses of trade marks.

UK plc - change in IP personel


The IPKat may well be the last to have learnt that Lord Triesman, Parliamentary Under Secretary of State in the Department for Innovation responsible for IP is to become the Football Association's first independent chairman (see the BBC article here). Being part of the government is somewhat incompatible with being independent and consequently he will step down from this position.

The IPKat wishes Lord Triesman well in his new post, but feels it's rather a shame that he's leaving so soon after taking up the job. Merpel adds 'giving up IP for football - he must be mad!'

Coq au vin?

The IPKat was bemused to learn from News10.net that winemakers E & J Gallo are suing the makers of ceramic chickens for trade mark dilution. The said chickens, together with a range of kitchenware, are being sold under the name Gallo de Oro by their Texan makers, Fitz and Floyd.

The IPKat says that behind the amusement value, there’s a serious issue. One might wonder whether consumers would view GALLO as being distinctive, since it’s not English, but then if one thinks about it, the US has a sizeable Hispanic population, who would see the word as descriptive, particularly when used in the context of this context. This all goes to show that if we choose to create a cause of action which spans uses across all classes, we need to think carefully about uses which may be distinctive in one class but descriptive in others.

If you should meet a crocodile...

You probably haven’t been able to miss coverage of Lacoste’s unsuccessful attempt to oppose a dental practice’s application to register a crocodile device, together with the words ‘The Dental Practice’, but the reasoning of the decision demands a closer look.

The first thing to note is that this was an Art.5(2)(b) opposition, i.e. Lacoste was claiming similarity of goods. It seems that they have a registration for ‘medical services’ in Class 44, which the IPKat finds a little disturbing. Ever the dapper feline, he usually tries not to confuse his dentist with his tailor.

The Appointed Person, Professor Ruth Annand, was asked by Lacoste to find that the words ‘The Dental Practice’ were wholly descriptive, and therefore should have been ignored in comparing the marks, leaving a crocodile for crocodile comparison.

Professor Annand found that this was not the correct approach. One has to distinguish between descriptiveness and similarity of marks. In assessing similarity, the marks must be compared overall. Distinctive elements of a mark will not make it more or less similar to other marks, although the distinctiveness of the mark as a whole may expand its scope of protection.

It was true that the words in the applied for mark were descriptive. Ordinarily, but not inevitably, descriptive elements will not be dominant. However, the Hearing Officer was entitled to find in this case that they were dominant. This, together with the differences between the two crocodile devices, meant that the Hearing Officer was entitled to find that the two marks, when taken as a whole, were not similar.

The IPKat wonders if the Appointed Person has gone a bit far here. Granted, the ECJ has told us to look at marks as a whole, but it has also told us that we can take their distinctive and dominant elements into account. It must be a very rare case where a descriptive term will also be dominant. Having said that, she was exercising what is essentially a reviewing function, and so once she found that in some, probably rare, cases the descriptive element could dominate, it was hard for her to find that the Hearing Officer’s decision was clearly wrong. What’s missing though from the decision is the underlying issue – can a company really claim a monopoly in all depictions of a particular animal?