18 March 2010

When a rapper equals a tazo


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Do you remember when you lastly unleashed a pog from a bottle or a cup containing a light drink? Such pogs are also referred to as “rappers” or – in Spain and Mexico – as “tazos”. Never mind when, I bet you never thought of those things as of subjects of intellectual property protection. Well, that being not enough, I guess you will be surprised again to find out that such rappers/tazos caused the Court of First Instance or, the General Court of the European Union, as it was renamed in the course of the Treaty of Lisbon, to deliver its first ruling on a Community Design case ever.

The Court had to deal with the request of the claimant Grupo Promer Mon Graphic to annul OHIM‘s grant of a Community Design to the defendant PepsiCo Inc.

The defendant had obtained a Community Design for the shape of a “rapper” (see the drawings in the ruling), but faced claimant’s application for a declaration of invalidity based on claimant’s senior Community Design for a “tazo” (see the drawings in the ruling) in pursuance to which defendant’s design lacked the novelty required by Regulation No 6/2002. Claimant further alleged that they had made their design available to defendant on a private and confidential basis and that such disclosure equated with a making available to the public. Thereupon the Invalidity Division of OHIM declared the contested design invalid on the basis of Article 25 (1) (d) of above regulation. PepsiCo appealed against this decision and as a result the Third Board of Appeal of OHIM annulled the decision of the Invalidity Division and dismissed the application for a declaration of invalidity. Accordingly, the Board of Appeal concluded that the difference in the profile of the designs at issue was sufficient to conclude that they produced a different overall impression on the informed user.

Grupo Promer Mon Graphic was reluctant to put up with such an outcome and went to the General Court requesting it to annul the decision of OHIM’s Board of Appeal. In particular, the claimant raised three pleas in law, alleging, (i) defendant’s bad faith and a restrictive interpretation of Regulation No 6/2002 in the contested decision, (ii) lack of novelty of the contested design and, (iii) infringement of Article 25 (1) (d) of Regulation No 6/2002.

With respect to allegations (i) and (ii) the Court made an interesting finding: Article 25 (1) of Regulation No 6/2002 lists the grounds on which a Community design may be declared invalid exhaustively and there is no reference to the bad faith of the proprietor of a contested design. Further, a disclosure on a private and confidential basis cannot be relied upon as it did not target the public and hence did not bar the defendant from novelty.

With respect to allegation (iii) the Court first opined that Article 25 (1) (d) of Regulation No 6/2002 must be interpreted as meaning that a Community design is in conflict with a prior design when that design does not produce  a different overall impression on the informed user from that produced by the prior design. Of course, when determining the above,  the informed user needs to take into consideration the freedom of the designer in developing the Community design. In applying this interpretation to the instant case, the Court held that the two additional circles of the contested design as well as its degree of curvature – when compared to the prior design – were insufficient for the contested design to produce a different overall impression on the informed user. Accordingly, OHIM’s Board of Appeal’s decision had to be annulled.

In my view this decision is very important for two reasons: (i) it is the first ruling of a Court of the European Union that deals with a Community Design and (ii) the Court utilises its ruling to provide for a useful guidance on infringement due to similarity and hence a lack of a different impression on an informed user.

 

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19 November 2009

CFI rejects "CANNABIS" trade mark’s registration for beverages


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photo © 2006 olga.palma | more info (via: Wylio)

In its judgment delivered today the Court of First Instance dismissed Giampietro Torresan’s appeal against an earlier decision of OHIM‘s Cancellation Division. OHIM’s decision had declared the (previously obtained) registration of the Community trade mark

“CANNABIS” invalid

with respect to goods in Classes 32 (beers) and 33 (alcoholic 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 active 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?