6 November 2012

Pussy Riot Trade Mark Prepares to Enter the Market


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Image: Grafite para Pussy Riot by Cayoo via Wikimedia Commons
Grafite para Pussy Riot

During the trial of the Russian punk rock band Pussy Riot there were voices of concern that the three young ladies would not really care for their political message, but would rather be looking for cheap popularity, which they eventually could transform into cash.

The information I recently came across (here in English as well as here, here and here in Russian) show that there have indeed been

aspirations to exploit the current media hype

although the latter should not be attributed to the meanwhile jailed musicians, but to a company related to their lawyer Mark Feygin.

According to the quoted sources, the OOO Kinokompania WEB-BIO has applied for the registration of the trade mark “Pussy Riot” not only with the Russian Patent Office Rospatent, but also with Office for Harmonisation in the Internal Market (OHIM), which administers the so called Community Trade Marks.

Unfortunately, one could not reasonably accuse Rospatent of being particularly transparent, so the only trade mark  application accessible online is the one with OHIM (filed under number 011 182 367).

The latter provides us with the basic information about

the large number of classes applied for

(3, 9, 10, 13, 14, 16, 18, 25, 26, 28, 32, 33, 34, 35, 38, 41, 42, 45) evidencing for the strong entrepreneurial vigour with which Web-BIO is obviously intending to enter the market.

Weird trade mark applications and registrations are not unusual, when it comes to Russia.

During the last couple of years market participants managed to successfully register brands such as “Christmas” and “New Year” for banking services (read more here and here) as well as “Anna Chapman” for clothing and beverages (read more here).

As I am particularly interested in Russian trade marks, I will follow also the story of the Pussy Riot brand, thus – stay tuned.

21 May 2011

Apple’s Appstore Or Tradmarking Descriptiveness


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Image by Rudi Riet on Flickr

365162021_7c71853ba9_z

Let me ask you a funny question: should a keeper of a greengrocer’s shop be granted the trade mark “greengrocery” for, say, class 31?

I can almost hear you shouting “No, for God’s sake, he should not!”

Well, I was joking, but why actually not? Is it because if the good greengrocer monopolised an everyday’s term for his trading purposes no other greengrocer would be able to run its shop?

Let me address this question in the story and consecutive analysis I am going to present below.

Believe it or not, but Apple managed to register the word marks

Appstore And App Store

with the Office For The Harmonization In The Internal Market (OHIM), which has authority to grant Community Trade Marks (CTM). Appstore bears the number 005554779 and is registered for classes 35 and 42. App Store bears the number 007078314 and is registered for classes 35, 37, 38 and 42.
If you like, you can conduct your own search using OHIM’s search application.

What both marks have in common is the fact that their registrations are pending cancellation.

Funnily, a broad front consisting of large technology companies such as Microsoft, HTC, Nokia and Sony Ericsson each filed formal applications for declaration of

Invalidity

of Apple’s two trade marks with OHIM.
The Intellectual Property Watch has the story and I strongly recommend you to read it.

Anyway, what could have been the reasoning of the tech companies, what could they have claimed? That is easy – what did we talk about at the beginning of this article, huh?
Yes, we talked about the monopolising of an everyday’s term. Everyday’s terms are generally considered descriptive for the purposes of trade mark law.
The CTM Regulation (207/2009) provides in its Article 7 (1) (c) that no registration shall be granted to

trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

In other words, the tech giants have very likely claimed that the Apple’s trade marks are descriptive and therefore should have never been granted. Since OHIM granted them once to Apple, they should now be invalidated.

But wait a minute, what about

Baby-Dry

and what if Apple relied on it as authority?

Indeed, Baby-Dry was the high point of the European Court’s liberal attitude to registrability of descriptive marks. However, if I was to advise Apple in this instant case, I would not recommend them to rely on Baby-Dry.
Because in its later

Doublemint

judgment the Court realised that matters had gone too far in Baby-Dry and needed to be reined in.
In Doublemint the Court referred to the so called principle of availability, which says that there is a public interest that descriptive terms may be freely used by all traders.

Let me wrap it up: Appstore and App Store are (very likely) descriptive and OHIM might rule that they should be free for all.
By the way, have you read about Nokia’s plan to launch a co-branded App Store?

My Conclusion

We must not forget that trade marks provide their proprietor with a limited monopoly over the use of a sign in connection with the marketing of goods and/or services.
However and since Baby-Dry is no longer reliable authority, Apple’s adversaries have a strong case and good arguments to invalidate Apple’s registered trade marks.

Finally, you do not want Apple to trademark the descriptiveness, do you?

29 January 2010

Whose iPad is it anyway?


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iPad Casephoto © 2010 Yutaka Tsutano | more info (via: Wylio)

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 iPad. Courtesy to TheRegister

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.

Magtek IPAD. Courtesy to Magtek.

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.

 

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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?