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Giulio C. Zanetti Torino, Italy Director of Training and Networks Department 5-7 November, 2012IDLO

TRADEMARKS

WELCOME TO ...

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What is a trade mark? What is a trade mark?

Any visual sign capable of distinguishing the goods/services of one natural person/legal entity ... from others, including ….

TRIPS: art 15

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MARKSMARKS

MARKS

Trademarks Service Marks

PRINCIPLE OF SPECIFICITY

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3) The public / consumers

1) The applicant (TM owner)

2) The competitors

INTERESTS TO BE CONSIDEREDINTERESTS TO BE CONSIDERED

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examples

WORDS (word marks)

Adidas Starbucks Whirlpool Nestlé Volkswagen

Sony Harley Davidson Philips Just Do It Orange

Siemens Lays Red Bull Java Vodafone JVC

Gatorade Coca Cola Shell Ford Apple Levis

Rolex Microsoft PepsiCo RayBan Zippo Bic

MGM Petronor Herbalife EMI Sellotape Pfeizer

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examples

LOGOS (figurative marks)

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examples

OBJECTS (3-D marks)

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examples

COLOURS OR COMBINATIONS (colour marks)

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examples

SOUNDS and SMELL marks

(Sound of tennis balls being hit)

(Tarzan yell)

(Popping)

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- NOT Misleading, Descriptive, Generic Contrary to public order/morality ...

+ Distinctiveness

+ “Novelty” (availability)

CHARACTERISTICSCHARACTERISTICS

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Laws/Jurisprudence

Average Consumer

of country concerned (Principle of

Territoriality)

Assessed in Relation with:

Goods/Services (Principle of Specificity)

DISTINCTIVENESSDISTINCTIVENESS

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1) Special script

2) Special colour (colour claim/limitation)

3) Logo (non descriptive)

4) G/S limitation

Want to increase the Want to increase the distinctiveness?distinctiveness?

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> Vulgarization

> Secondary Meaning ... how can you prove it?

DISTINCTIVENESS DISTINCTIVENESS (cont.)(cont.)

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Hells Angels Motorcycle Corporation

v.

Amazon.com

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1) Prior identical or similar signs

2) For identical or similar goods/services

- If similarity: risk of confusion/likelihood of association

- If identical TMs for identical g/s = presumption

““NOVELTYNOVELTY”” (availability)(availability)

TRIPS: art 16(1)

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3 criteria:

1) Conceptual similarity

2) Visual similarity

3) Phonetic similarity

SIMILARITY b/w signsSIMILARITY b/w signs

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VISUAL SIMILARITYVISUAL SIMILARITY

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CONCEPTUAL similarityCONCEPTUAL similarity

DOUGHBOY v.

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CONCEPTUAL similarityCONCEPTUAL similarity

THE SOUTH BUTT

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Similarity?Similarity?

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Similarity?Similarity?

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Similarity?Similarity?

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CONCEPTUAL / PHONETIC / CONCEPTUAL / PHONETIC / VISUAL similarityVISUAL similarity

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Criteria:

1) Same class? … not necessarily

2) Same purpose

3) Same public (consumers)

4) Same channels of distribution

5) “Cross-substitutability”

SIMILARITY b/w SIMILARITY b/w goods/servicesgoods/services

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1) the “CORE PART” of the mark

2) the “OVERALL IMPRESSION” of the mark

LEGAL ARGUMENTSLEGAL ARGUMENTS

The “Ciao Napoli” case

“Ciao Napoli” (cont.)

- food

- drinks

- Restaurants, bars

Community application

(CIAO Srl, Napoli)(CIAO Srl, Napoli)

il caso “Ciao Napoli” (cont)

- food

- drinks

- Restaurants, bars

Prior CTM

CIAO RISTORANTE

(Autogrill SpA)(Autogrill SpA)

“Ciao Napoli” (cont.)

Examiner

1. “CIAO” is not distinctive as it is a common way of greeting (in Italy)

2. The presence of “ciao”in both marks does not imply confusion

3. The design of the marks is different.

4. The consumer CAN distinguish them

5. Therefore: no risk of confusion

“Ciao Napoli” (cont.)

Board of Appeal

1. The fact that “ciao” is a typical way to greet in Italy is not relevent to its distinctivenenss

2. Distinctivenenss must be analyzed only vis-à-vis the products and services.

3. “Ciao” is not a common word to distinguish food or restaurants

4. Therefore: it’s distinctive ….. Therefore ….

“Ciao Napoli” (cont)

5. “Ciao” is the core part of both marks

6. The marks are therefore SIMILAR

7. The products and services are IDENTICAL

8. Therefore: risk of confusion in Italy (and elsewhere)

9. The application is thus: rejected

Decision R 36/2004-1 of July 20 2004

The “Roberto Cavalli” case

“Roberto Cavalli” (cont)

“Roberto Cavalli” (cont)

- Clothing- Leather products- Glasses

CTM application

(CP3 Srl, Sesto Fiorentino)(CP3 Srl, Sesto Fiorentino)

“Roberto Cavalli” (cont)

- Clothing- Leather products- Glasses

Prior CTM

(Sig. Roberto Cavalli)(Sig. Roberto Cavalli)

“Roberto Cavalli” (cont)

Examiner

1. The core part of the TMs is respectively:

ROBERTO and CAVALLI

2. The 2 names are different

3. The surname is more important than the name

4. Both are written in common characters

5. Therefore no risk of confusion

6. …even if the products are identical

“Roberto Cavalli” (cont)

Board of Appeal

1. “Very suspicious” the similarity in the grafic style of the letters: ‘b’ ‘e’ ‘r’

2. Both are in lower cases

3. The letter ‘c’ (again in lower cases!) may allude to ‘cavalli’

4. the visul impression is very similar, and

… too many coincidences!!!!

“Roberto Cavalli” (cont)

5. The graphic style of a mark in the fashion industry is … key

6. Even the absence of the full surname does not eliminate the similarity

7. Risk of association

8. The applcation is thus: rejected

Decision R 533/2005-1 of April 26 2006

“Roberto Cavalli” (cont)

Let’s think together …

1. The graphic aspect of a mark can in some cases determine similarity even though the marks are conceptually and phonetially different.

2. … especially in the fashion sector where the average consumer is particularly attentive to the look (of the products and of the marks)

3. Example of di “risk of association”

The “Pepe Jeans” case

“Pepe Jeans” (cont)

“Pepe Jeans” (cont)

- Clothing- Leather products- Parfumes

CTM application

(José Jiménez Arellano SA, Madrid)

“Pepe Jeans” (cont)

Pepe JeansPepe JeansPEPEPEPE

Pepe Jeans PortobelloPepe Jeans Portobello

KhakiKhaki by Pepe Jeansby Pepe Jeans

Denim de Luxe Denim de Luxe by Pepe Jeansby Pepe Jeans

Pepe Jeans 73Pepe Jeans 73

Pepe F4Pepe F4

Pepe 2 XLPepe 2 XL

Pepe Jeans M2Pepe Jeans M2

prior marks

(Pepe Jeans Company) NB: in Spain

“Pepe Jeans” (cont)

Opponent

1. “Pepe” is the core part of both marks (“Jeans” = generic)

2. All marks“Pepe” represent a‘family’. Consumers may think that “Pepe Arellano” belongs to the same family

3. Marks “Pepe” are well known

4. Risk of confusion

“Pepe Jeans” (cont)

Examiner

1. The marks “Pepe Jeans” are very well known in Spain

2. They all belong to the same “family”

3. The element “Pepe” makes “Pepe Arellano” similarly confusing with “Pepe Jeans”

4. Opposition accepted, mark “Pepe Arellano” rejected

“Pepe Jeans” (cont)

Boar d of Appeal

1. The marks are NOT confusingly similar as:

- The role of “Pepe” in different i the 2 marks

- It is dominant in “Pepe Jeans”, secondary in “Pepe Arellano”

- The core part of “Pepe Arellano” is “Arellano” (the surname)

“Pepe Jeans” (cont)

2. There is no “family” of marks

- the public must already know the

family- “family” must be on the market and not only on the register

- In reality the public only knows …

“Pepe Jeans” (cont)

3. No confusion because:- Different structure of the marks:

“Pepe” + generic name / “Pepe” + surname

- Different graphic style:

- A careful consumer would not believe that the 2 marks belong to the same “family”

“Pepe Jeans” (cont)

4. There is no taking advantage of the well known character of the prior mark as the 2 marks are NOT similar

Decision R 117/2006-1 of february 15 2007

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DESCRIPTIVE (in the broad sense)

GENERIC

MISLEADING / deceptive

CONTARY TO PUBLIC ORDER andMORALITY

A MARK MUST NOT BEA MARK MUST NOT BE

The “Garum” case

“Garum” (cont)

Fish preserves

(Compagnie Générale de Diététique, France)

CTM applcation CTM applcation

“Garum”

Plinio : “sauce beased on rotten fish”

Garum =Delicious seasoning based on fermented fish,

commomly used by the ancient romans

“Garum” (cont)

Board of Appeal

1. generic name for seasonings during the time of the ancient romans

2. cited by “Larousse Gastronomique” dictionary

3. term unknown to the wide public but ….. known to the experts of the sector

4. generic mark = refused

Decision R 1401/2005-1 of september 7 2006

The “Screw You” case

“Screw You” (cont)

“Screw You” (cont)

• Sun glasses• condoms• Artificial breasts, erotic toys• clothing, shoes• Sport articles • Alcoholic beverages

What do you think? What do you think?

(Mr Kenneth Jebaraj, known as “Screw You”, London)

“Screw You” (cont)

Board of Appeal

1. refused for:sun glasses, clothing, sport items and beverages

2. granted for : all items relating to sex

“Screw You” (cont)

A. the expression is highly vulgar in english

B. but you have to determine the level of tolerance of the public concerned

C. it varies depending on the type of product (and type of consumer)

“Screw You” (cont)

A. For products meant for mass market (large public) the level is lower the mark is vulgar

B. For products relating to sexuality the mark is valid

Decision R 495/2005-G of 6 July2006

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For restaurants

What do you think?

Contrary to public order / morality

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Art 6 ter Art 6 ter

MS will refuse/invalidate TMs = to:

- Armorial bearings, flags, emblems, other signs of STATES

- Armorial bearings, flags, emblems, abbreviations, names of INT. INTERGOVT. ORG.

COMMUNICATION to other MS through WIPO- Facultative for States- Obligatory for IGOs 12 m. for objections

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1) Well-known marks

2) Geographical marks

3) 3-D marks

4) Collective/Certification marks

5) Names and surnames

6) Letters and numbers

“Special” marks

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Well known marks

- What is a W-K mark? (criteria)

- Consequences:

Exception to 2 principles !!!a) if not registered = for identical/similar g/sb) if registered = for identical + similar + dissimilar g/s

Paris Conv: art 6bisTRIPS: art 16(2)

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WELL KNOWN TMs cont.

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Similarity?Similarity?

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Bad news!!

Geographical marks

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Marks & GIs: differences

Both distinctive signs, but ....

A. Ownership (not to identify g/s produced by one or more enterprises, but to identify goods originating from a particular geo. area)

B. Compliance with quality standards

Ergo: all enterprises operating in that geo. area in accordance with standards can use G.I.

The “Lego” case

“Lego” (cont)

“Lego” (cont)

Board of Appeal

The little brick was protected as a patent (expired)

= proof that it’s a functional shape

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Only if shape is:

1) distinctive (often after use)

2) not necessary

3) not a technical result

3-D marks 3-D marks

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COLLECTIVE TMs: signes used to distinguish the g/s of the members of an association (+Regulation of Use) from those of other undertakings

CERTIFICATION TMs: sign used to indicate that the g/s in connection with which it is used are certified by the proprietor of the sign in respect of origin, materials, mode of manufacture, quality, accuracy or other characteristics

Collective / Certification marks

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- Can you use your surname as TM?

- What can you do if someone has a TM = to your surname?

- Criteria for registering: 1) commonnes of name 2) No of undertaking engaged in same trade

- Surnames with meaning?

- Variations?

- Single first names: for services? for goods?

- Full names?

First names and surnames

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... AND MY NAME?

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LETTERS and NUMBERS

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Duration: 7 years (TRIPS), but:

10 years … for ever!

…………….. Why?

Renewal

Priority: 6 months

The life of a MARKThe life of a MARK

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National Legislation

Paris Convention

TRIPs

Madrid Agr./Protocol, CTM, Bagui Agr. / Bajul Protocol

Nice Classification

TLT / Singapore treaty

NORMATIVE FRAMEWORKNORMATIVE FRAMEWORK

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ENFORCEMENTENFORCEMENT

Condicio sine qua non for existence of an IP system

Procedures

EffectiveFairExpeditio

usConstitute a

deterrentNot complicatedNot

costly

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TipsTips

Avoid Litigation!!!

• “Create around” or License

• Be your own policeman!

• Other “friendly” agreements

• Cease and Desist letter

• Negotiate an out-of-court attempt

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Action Before National IP Action Before National IP OfficeOffice

•Decision of examiner can be appealed with:

• Appeals Board (administrative)

• Court of First Instance

• Court of Appeal

• Opposition: 2-3 months

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Action Before Action Before Court Court Civil Action Civil Action

WRIT by IP Holder:

• Statement of own right Copy of Certificate

• Alleged infringement

• Evidence

• Remedy Sought

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CANCELLATION FOR CANCELLATION FOR LACK OF USELACK OF USE

NO USE:

⇒ Uninterrupted period

⇒ Of at least 3 years

⇒ Without valid reasons

⇒ Total or partial

-Use by another person?

TRIPS: art. 19

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ACQUIESCENCE

Tolerance for 5 years

(except if bad faith)

coexistence of marks

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Action Before Action Before Court Court

CANCELLATION

• Contrary to absolute requirements

• Contrary to relative requirements

• Registration in bad faith

• Violates other prior IPR (eg: geo indic., ind. design)

• (Time limit: 5 years from registration date)

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CRIMINAL ACTIONSCRIMINAL ACTIONS

Only for SERIOUS offenses

⇒ TM Counterfeiting

⇒ (Identical TMs)

Knowingly

Action by

Right holder (coop. with police)

Enforcement officers

Custom authorities

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REQUESTS OF THE PARTIESREQUESTS OF THE PARTIES

1.Plaintiff ⇒ Infringement of own TM

• Injunction (preliminary/final/ex parte)

• Damages

• Destruction

• Declaration of Validity + Infringement

2.Defendant ⇒ Cancellation of TM because not

valid

Lost salesProfit of Infringer

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EVIDENCE OF OWNERSHIP OF EVIDENCE OF OWNERSHIP OF TMTM

⇒ Certified Copy of Certificate

Attention to:

Representation of TM

List of goods/services

Date

Name of Proprietor

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EVIDENCEEVIDENCE• Direct Evidence vs. Secondary Evidence

• Documentary Evidence:

File History (application/registration, objections by IP office, arguments, contracts)

Market Surveys/statistics

Photos

Sales Figures

Description +

Source

• Real Evidence• Expert Evidence• Witnesses

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BURDEN OF PROOFBURDEN OF PROOF

RULE: up to the plaintiff

(ownership, similarity, violation, confusion for the public)

Exception: identical sign for identical g/s

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- … 3 legal characteristics + well-known

secondary meaning /vulgarization

- risk of confusion / likeliwood of association

- the “core part” of the mark

-the “overall impression” of the mark

- coexistence between marks

- complex marks (protection of various elements)

Legal arguments … most

common

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Thank you!!!

gzanetti@idlo.int