Posted by Emil A. Georgiev on 29 January, 2010
You have certainly heard, seen or otherwise perceived (by the way who hasn’t?) that couple of days ago Apple presented its iPad to the public. However surprisingly, the fancy product name “iPad” that seems to perfectly fit into the iFamily of “iBook”, “iPod” and “iPhone”, could now enter the hostile territory of trade mark infringement.
It is funny, but the sign “iPad” has in recent years been really coveted by enterprises around the globe . So much, as some of these have undertaken trade mark registrations under different jurisdictions. For instance, the The Trade Marks and Designs Registration Office of the European Union (OHIM) has granted the word mark “iPAD” for motors, engines and drives to Siemens and the word mark “IPAD” to the French Company STMICROELECTRONICS SA for, in particular, integrated circuits and termination lines that, however, may be also applied in cellular phones, computers and computer peripherals.
OHIM has further received an application for registration on 18 January 2010 and this is filed by a US company named IP Application LLC. The application covers products and services classes such as computers, printed matter, toys, telecommunications and web services that just hardly fail to fit into Apple’s marketing target. It has been said in news reports that in 2009 Apple have used a proxy to file for a registration on Trinidad and Tobago in order to secure a priority date. This same Trinidadian registration is mentioned in IP Applications LLC’s application before OHIM. Any doubts why may be behind that act?
The above application, however, may cause some problems to its applicant. The Community Trade Mark Regulation states a so called relative ground for refusal where a trade mark applied for is identical with an earlier trade mark and the goods or services for which registration is sought are identical with the goods or services for which the earlier trade mark is protected. Consequently, STMICROELECTRONICS SA might successfully oppose Apple’s European registration.
As if that were not enough, the war clouds for Apple are gathering over another – much more promising – battlespace.
2002 Fujitsu came up with a handheld computer named “iPad” for use by shop assistants and has since then attempted to file for a trade mark registration with the US Patent and Trade Mark Office (USPTO). Fujitsu’s application to register iPad name was deterred by an earlier filing by Magtek, an information technology security company based in Seal Beach, California, for a handheld number-encrypting device. The consequence was that the USPTO listed Fujitsu’s application as abandoned in the beginning of 2009, but the Tokyo company managed to revive its application in June 2009. In the autumn of the same year, Apple is believed to have filed requests of opposition before the USPTO and has now time until 28 February 2010 to submit its final opposition statement.
See whether the Canadian lingerie manufacturing company Coconut Grove, to which the USPTO assigned the trade mark “IPAD” for padded bras, will join the technology giants’ war game.
Posted in trade mark | Tagged: Apple, fujitsu, ipad, OHIM, padded bras, relative ground for refusal, trade mark dispute, USPTO | 5 Comments »
Posted by Emil A. Georgiev on 14 January, 2010
I have always known that Russia and Russians are different. So totally different that they can hardly be compared with other nations’ representatives. And this appears to be true also with respect to their dealings with intellectual property.
According to the Russian newspaper Komersant, Vostochniy Express, a Russian bank, has successfully registered with Rospatent words like “new year”, “Christmas”, “holiday” as well as derivates thereof as trade marks. Not surprisingly, many banks issue promotional offers specially at Christmas or at year’s end. As a consequence of its trade mark grant however, Vostochniy Express has served such banks with cease and desist notices. The proprietor bank has alternatively offered to license the use of its “trade marks” against payment of license fees.
Vostochniy Express demonstrate they are a way ahead in making business with their IP assets. This bank’s business drive could, however, be barred since the registration of the “trade marks” in suit has been referred to a board of appeal within Rospatent. Pursuant to the Russian trade mark practitioner Vassily Moiseev, the board of appeal is very likely to vacate Rospatent’s grant as it has frequently done in the past.
In my view Rospatent had to reject the registration as these very words are not really capable of distinguishing the products or services of Vostochniy Express from those of other banks. See whether the board of appeal will deliver a judgment consistent with mine.
Posted in trade mark | Tagged: absurd, Rospatent, Russia, trade mark | Leave a Comment »
Posted by Emil A. Georgiev on 23 November, 2009
Debates on the use of keywords that equate registered trade marks have brought new challenges for legal professionals. As well-known, the majority of lawsuits on keywords advertising were based on alleged trade marks infringement. However, the courts’ ambivalent treatment of such trade marks proprietors’ claims (see Google AdWords Litigation update for the US and Advocate General Poiares Maduro’s opinion on Google’s AdWords to the ECJ for Europe) might have brought a Wisconsin law firm to observe this set of problems through a different angle.
Representatives of Habush, Habush & Rottier have discovered that when their law firm’s name is sought over internet searching engines, the name of Cannon & Dunphy, a rival law firm, showed up. Accordingly, Habush have filed an action against the rival who does not even deny the purchase of a keyword containing claimant’s name. However, whether based on reasons stated above or not, Habush is not willing to rely on trade marks law, but on Wisconsin’s law on privacy.
In my view a really promissing case. We will see as to whether it will bring some freshness into the keyword advertising complexity.
Posted in privacy, trade mark, unfair competition | Tagged: adwords, google, keywords, privacy, search engines, wisconsin | 2 Comments »
Posted by Emil A. Georgiev on 19 November, 2009
In its judgment delivered today the Court of First Instance dismissed Giampietro Torresan’s appeal against the earlier decision of OHIM’s Cancellation Division. OHIM’s decision had declared the (previously obtained) registration of the Community trade mark “CANNABIS” to be invalid with respect to goods in Classes 32 (beers) and 33 (alcocholic beverages except beers) of the Nice Agreement. In its decision OHIM found that the trade mark “CANNABIS” was descriptive in terms of Article 7(1)(c) of Regulation No 40/94.Curiously, it was the same OHIM that registered the word sign “CANNABIS” as a Community trade mark for beers, wine and spirits some years ago, namely on 16 April 2003.
However, few weeks thereafter the German Klosterbrauerei Weissenohe GmbH & Co. KG, applied to OHIM to declare the trade mark’s invalidity with regard to Classes 32 and 33. OHIM found in favour of the Germans, Giampietro then appealed and – eventually – lost.
These are the facts. Much more interesting are the findings of the CFI.
The Court pointed out that “cannabis” or “hemp” had three possible meanings: (1) a textile plant which is subject to very strict legislation as regards the content of it sactive ingredient (tetrahydrocannabinol: THC); (2) a narcotic which is prohibited by a great number of Member States; and (3) a substance the therapeutic use of which is under discussion.
The Court then pointed out that cannabis, given its very low concentration of THC, was used in the food sector. Equally important, the word “cannabis” was a Latin scientific term which was well known, was present in a number of European Community languages and has had a lot of media coverage. Based on that, the Court opined that the average consumer would perceive the trade mark “CANNABIS” as a description of one of the characteristics of the goods bearing that mark.
The Regulation on Community trade marks prohibits the registration of descriptive signs. Such signs are deemed incapable of fulfilling the indication-of-origin function which forms an integral part of a trade mark. The Court finally went on applying ECJ’s well established authority on the assessment of a mark’s descriptive character that is to be undertaken in relation to the goods for which the mark was registered and in the light of the presumed perception of an average consumer of those goods, who is reasonably well informed and reasonably observant and circumspect (eg Nestle SA vs Mars UK Ltd).
Having read this ruling, I made a quick research using OHIM’s search engine. I sought for registrations containing the word combination “Mary Jane” and, found 5 matches. Two of them are registered in the Class 32 and one in Class 33.
By the way, what would be the “well informed” and “reasonably observant and circumspect” consumer’s perception of “Mary Jane” on beer or liquor bottles?
Posted in trade mark | Tagged: cannabis, CFI, OHIM, registration, trade mark | Leave a Comment »
Posted by Emil A. Georgiev on 25 September, 2009
Google has been no stranger to legal controversy in recent years. One of the hotly contested issues courts are currently debating involves the legality of Google AdWords, Google’s lucrative advertising program that is the source of nearly half of its revenue. The AdWords program allows advertisers to purchase words or phrases related to their businesses that will bring up their websites under “sponsored links” when those keywords are typed into Google’s search engine.
The issue at the center of the controversy is whether Google can legally sell and advertise those words which are trademarked terms. For businesses looking to protect their trade marks, Google’s practice of selling and advertising trademarked terms has raised questions as to its liability for trade mark infringement.
The French Cour de Cassation has recently made a referral to the European Court of Justice (ECJ) with questions concerning the use of Google AdWords. These issues arose out of litigation brought against Google by trade mark owners, including Louis Vuitton, who object to the reservation by Google customers of search keywords matching their registered trade marks.
In his Opinion, Advocate General Poiares Maduro suggests that Google has not committed a trade mark infringement by allowing advertisers to select, in AdWords, keywords corresponding to trade marks.
The Advocate General further recalls that trade mark rights cannot be construed as classical property rights enabling the trade mark owner to exclude any other use. Accordingly, internet users’ access to information concerning the trade mark should not be limited to or by the trade mark owner even if it involves a trade mark which has a reputation.
Advocate General’s opinions are not binding on the ECJ, though the Court follws them in about 80% of all cases.
In my personal view this Advocate General’s opinion is very problematic for trade mark proprietors as, given a coresponding judgment of the Court, it will weaken proprietors’ position and ease springboard marketers and imitators to exploit the goodwill and reputation arising out of the trade marks in question.
Posted in trade mark | Tagged: ad words, advocate general, ECJ, google, louis vuitton, poiares maduro, trade mark infringement | 5 Comments »
