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The EGC (European General Court) decided that a yellow curved line cannot be registered as a position mark as it as it lacks distinctiveness (Decision T-331/12 dated 26 February 2014).
Introduction
In order to decide if a mark lacks the necessary distinctiveness or not, various aspects need to be taken into account. First of all, the court has to analyze the specific goods and services of the applied for trademark, and furthermore it has to determine if intended brand is capable to enable the average consumers to identify the product’s origin.
Background of the Case and Subject Matter
In the present case, the German applicant Sartorius Lab Instruments GmbH & Co. KG, filed for the following Community Trademark, a yellow curved line - so called “position mark” – as seen below:
The applicant is convinced that the yellow line (as seen above) at the bottom of an electronic screen is recognized by the average consumer. The applicant is not of the opinion that the customer perceives the yellow line as decorative element. For these reasons, the applicant argued, the yellow curved line, should be registered as a trademark as the average, generally well-informed consumer will recognize the product’s origin.
Decision of the EGC
The EGC asserts that it is not unusual to include an element of color around a screen. Therefore the average customer does not connect a colored ornament with a special trademark. The yellow curved line does not have any recall value. Finally, the EGC decided the “yellow line” will not be recognized by the customers as an indication to the origin of the product. For this reason it cannot be registered as a Community Trademark.
The applicant is convinced that the yellow line (as seen above) at the bottom of an electronic screen is recognized by the average consumer. The applicant is not of the opinion that the customer perceives the yellow line as decorative element. For these reasons, the applicant argued, the yellow curved line, should be registered as a trademark as the average, generally well-informed consumer will recognize the product’s origin.
Decision of the EGC
The EGC asserts that it is not unusual to include an element of color around a screen. Therefore the average customer does not connect a colored ornament with a special trademark. The yellow curved line does not have any recall value. Finally, the EGC decided the “yellow line” will not be recognized by the customers as an indication to the origin of the product. For this reason it cannot be registered as a Community Trademark.
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OHIM’s Second Board of Appeal decided on 29 January 2014 that Parobook is to be registered because no liklihood of confusion to Facebook is given (Case R 254/2013-2).
Introduction
In order to assess whether marks are confusingly similar or not, various factors need to be taken into account. On the one hand side, the specific goods and services of the applied for mark and the earlier sign need to be evaluated. On the other hand, OHIM has to compare the script, sound and meaning of the two trademarks and also take the distinctiveness and reputation of the earlier sign into account.
Background of the Case and Subject Matter
In the present case, the well-known trademark “Facebook” filed an opposition against the Community Trademark Application “Parobook”. Both designations are aword/design creations. Facebook is of the opinion that “Parobook” is too similar to Facebook, especially because “Facebook” has gained a high reputation - even outside the field of social networking.
Decision
The Second Board of Appeal carefully compared the signs and took note of the fact that both designations both share the word “book”. “Book”, however, is a descriptive word, which is understandable by the general public. The significant differences are in the word beginnings, namely “paro” and “face”. They are are visually as well as aurally totally different. In addition, “Facebook” is white over blue and “Parobook” is white over red. As a result the signs differ significantly.
When comparing the specific goods and services of both trademarks, the Second Board of Appeal found some concurrent services, especially in the field of social networking. But, there are differences in relation to the target group. “Parobook” wants to bring Spanish people without work together with the ambition and aim that they support each other and to make it easier to be informed about new job openings. Facebook instead gives people all over the world the chance to communicate via private chats to each other, share information, pictures, post various information to their friends.
Contrary to the first instance decision, the Second Board of Appeal at OHIM decided, that despite the reputation of Facebook, there is no likelihood of confusion between “Facebook” and “Parobook”.
It is rather likely that this decision will be appealed by Facebook – and we will keep you posted.
vs.
Decision
The Second Board of Appeal carefully compared the signs and took note of the fact that both designations both share the word “book”. “Book”, however, is a descriptive word, which is understandable by the general public. The significant differences are in the word beginnings, namely “paro” and “face”. They are are visually as well as aurally totally different. In addition, “Facebook” is white over blue and “Parobook” is white over red. As a result the signs differ significantly.
When comparing the specific goods and services of both trademarks, the Second Board of Appeal found some concurrent services, especially in the field of social networking. But, there are differences in relation to the target group. “Parobook” wants to bring Spanish people without work together with the ambition and aim that they support each other and to make it easier to be informed about new job openings. Facebook instead gives people all over the world the chance to communicate via private chats to each other, share information, pictures, post various information to their friends.
Contrary to the first instance decision, the Second Board of Appeal at OHIM decided, that despite the reputation of Facebook, there is no likelihood of confusion between “Facebook” and “Parobook”.
It is rather likely that this decision will be appealed by Facebook – and we will keep you posted.
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The WIPO 2013 Report was published recently and reveals new statistics and information about the great influence and importance of brands in our society, in the global economy and with resepct to innovation infrastructure.
Conclusion
The report contains about 140 slides and contains too much information to summarize here. But, we can only recommend you to take a look at the full report.
Conclusion
The report contains about 140 slides and contains too much information to summarize here. But, we can only recommend you to take a look at the full report.
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The Brand Finance Banking 500 was published in the February 2014 edition of ‘The Banker’ magazine. The largest banks of the world are ranked by the value of their trademarks. The annual study reflects the industry trends and indicates future developments.
Introduction
The value of a company also includes the value of brands. Customers often associate positive experiences with a well-known brand name. These feelings are reinforced by advertisement. Through their high distinctive character the holder of “more” valuable brands can request more money for their products or services and thereby increase their customer basis. For this reason it is so important for every company to apply for and seek registration for their brand name. If the brand is not protected properly, anybody can take part in or “capitalize” on the companies’ success by using their brand name or symbol. If a brand is protected and enforced, a unique value is created.
There are a variety of different, complex models in order to determine the value of a brand.
Some industries conduct rankings about the value of their brands. Those rankings are a good possibility for the specific business or company to appreciate its own economic increase, reveal new trends and to prognosticate future developments.
Brand value of banks worldwide
Below is an extract of the 2014 annual worldwide ranking about the trademark value of banks. Because of the high participation of 500 banks, the ranking is quite significant.
The most valuable bank name in 2014 in the world is Wells Fargo with a value of approximately 30 billion US-Dollars. This example shows, how important and worthwhile a good protected brand is.
Altogether, the banks of the industrial western countries can be quite pleased with the outcome of the ranking this year. Especially the banks “BNP Paribas”, “HSBC”, “UBS” from Europe and the “Bank of America” and “Citygroup” from the United States significantly increased their brand values.
Brand value of banks in Germany
Finally, we take a closer look at the value of German Bank Brands. The trademark value of “Deutsche Bank” declined this year. The difference is about one billion US Dollar between 2013 and 2014. But, nonetheless, it is still worth approximately 13.5 billion US Dollars which makes it to the most valuable bank brand of Germany and is ranked 15 in the world. For more information on the German ranking, see the chart below.
Conclusion
This ranking shows how powerful, important and worthwhile it is to protect the brands in all industries. A good and professional trademark strategy and protection is a significant part of the company value.
Brand value of banks in Germany
Finally, we take a closer look at the value of German Bank Brands. The trademark value of “Deutsche Bank” declined this year. The difference is about one billion US Dollar between 2013 and 2014. But, nonetheless, it is still worth approximately 13.5 billion US Dollars which makes it to the most valuable bank brand of Germany and is ranked 15 in the world. For more information on the German ranking, see the chart below.
Conclusion
This ranking shows how powerful, important and worthwhile it is to protect the brands in all industries. A good and professional trademark strategy and protection is a significant part of the company value.
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A global campaign by the United Nations Office on Drugs and Crime (UNODC) was launched on 14 January 2014 in order to raise awareness among consumers of the $250 billion a year illicit trafficking of counterfeit goods. The
"COUNTERFEIT - DON'T BUY INTO ORGANIZED CRIME" CAMPAIGN
informs consumers that by buying counterfeit goods organized criminal groups are funded and consumer health and safety risks are at stake. The unlawful trafficking and sale of counterfeit goods provides criminals with a significant source of income and facilitates the laundering of other illicit proceeds.As a crime which touches virtually everyone in one way or another, counterfeit goods pose a serious risk to consumer health and safety. With limited legal regulation and very little recourse, consumers are at risk from unsafe and ineffective products and faulty counterfeit goods can lead to injury and, in some cases, death. Tyres, brake pads and airbags, aeroplane parts, electrical consumer goods, baby formula and children’s toys are just some of the many different items which have been counterfeited.
For more information please see UNODOC's executive summary and focus sheet as well as the official video below.
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On 16 January 2014 the European General Court (EGC) decided that a button in the middle of the ear of a toy teddy bear (a so-called “position mark”) cannot be registered as a Community Trademark as it lacks distinctiveness (Decision T‑434/12 of 16.01.14).
Introduction
In order to assess whether a mark possesses the necessary distinctiveness or not, various factors need to be taken into account. On the one hand side, the court has to review the specific goods and services of the applied for trademark, and, on the other hand, it has to determine if intended brand is capable to enable the average consumer to recognize the source of origin.
Background of the Case and Subject Matter
In the present case, the in Germany in 1880 founded well-known and high-end plush toy manufacturer, Margarete Steiff GmbH, filed for the following Community Trademark, in this specific case the “button in the ear” as a so called “position mark” – as seen below:
The applicant is convinced that its stuffed animals are recognized by the average consumer because of the unusual placement and positioning of the button on the left ear in addition to the fact that it is made of metal and therefore stands out from the rest of the plush toy. For these reasons, the applicant argued, the bottom for the stuffed animals should be registered as a trademark as the average, generally well-informed consumer will recognize the product’s origin. The applicant uses the said button on its plush toys as follows:
Decision of the EGC
The EGC is of the opinion that the consumer is accustomed to a wide range of stuffed animals with many different designs and in countless variations. Buttons placed on different parts of the stuffed animals are nothing special. Neither the material of the button, northe asymmetric application - only on the left ear - is unusual according to the EGC. As a consequence, the court decided that the button as a typical design element does not give the consumer any information as to the products origin. As a result and for the reasons outlined briefly above, the EGC decided that the applied for “button” as a so-called “position mark” lacks distinctiveness and in this case cannot be registered as a Community Trademark.
The applicant is convinced that its stuffed animals are recognized by the average consumer because of the unusual placement and positioning of the button on the left ear in addition to the fact that it is made of metal and therefore stands out from the rest of the plush toy. For these reasons, the applicant argued, the bottom for the stuffed animals should be registered as a trademark as the average, generally well-informed consumer will recognize the product’s origin. The applicant uses the said button on its plush toys as follows:
Decision of the EGC
The EGC is of the opinion that the consumer is accustomed to a wide range of stuffed animals with many different designs and in countless variations. Buttons placed on different parts of the stuffed animals are nothing special. Neither the material of the button, northe asymmetric application - only on the left ear - is unusual according to the EGC. As a consequence, the court decided that the button as a typical design element does not give the consumer any information as to the products origin. As a result and for the reasons outlined briefly above, the EGC decided that the applied for “button” as a so-called “position mark” lacks distinctiveness and in this case cannot be registered as a Community Trademark.
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INTA in cooperation with the Munich Bar Association (Rechtsanwaltskammer München) will hold Munich’s 2nd Roundtable designed specifically for Paralegals and Trademark Administrators under the title:
________________________________________________________________
________________________________________________________________
DATE: Thursday, March 13, 2014
TIME: 2:00 pm – 6:00 pm
LOCATION: Munich Bar Association (Rechtsanwaltskammer München)
Tal 33
80331 Munich – GERMANY
________________________________________________________________ The Roundtable will be held in German and has been developed specifically for:- Paralegals (Patentanwaltsfachangestellte/r, Rechtsanwaltsfachangestellte/r, Markensachbearbeiter/in)
- Trademark Administrators (TMAs)
- Hot Topics: IP, trademark and domain name issues.
- Update from the German Patent and Trademark Office (GPTO).
- Discussing and comparing the roles of in-house and law firm paralegals.
- Tips to enhance your career, including continued legal education possibilities for paralegals.
- Corsearch - a Wolters Kluwer business
- GSI Office Management GmbH – IP Management Solutions
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TMclass helps applicants to search for and classify goods and services (terms) needed to apply for trademark protection.
The German Patent and Trademark Office (GPTO') is as of 12 November 2013 part of the Common Harmonized Database of goods and services for trademark classification. The GPTO is now offering German translations of Harmonized Database to their efiling users. This successful harmonization is the result of joint effort and collaborative work within the framework of the European Trade Mark and Design Network. The GPTO´s integration into the Harmonization Project for goods and services marks another step forward in improving predictability, which in turn benefits users. The Harmonized Database, with its new member, the GPTO, is also available through TMclass at: http://tmclass.tmdn.org
The German Patent and Trademark Office (GPTO') is as of 12 November 2013 part of the Common Harmonized Database of goods and services for trademark classification. The GPTO is now offering German translations of Harmonized Database to their efiling users. This successful harmonization is the result of joint effort and collaborative work within the framework of the European Trade Mark and Design Network. The GPTO´s integration into the Harmonization Project for goods and services marks another step forward in improving predictability, which in turn benefits users. The Harmonized Database, with its new member, the GPTO, is also available through TMclass at: http://tmclass.tmdn.org
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Today, on 17 October 2013, the 40th anniversary of the signature of the European Patent Convention (EPC) in Munich, Germany, is being celebrated. The festivities are taking place at the Headquarters of the European Patent Office (EPO), the German Technological Museum ("Deutsches Museum") and the Munich Residenz, where the celebration ends after a concert given by the Patent Orchestra Munich. Please find the full program of the 40th anniversary, including the winners of the EPO Innovation Contest here:
What is the EPC and what makes it so unique?
The European Patent Convention (EPC) is a multilateral treaty providing an autonomous legal system according to which European patents are granted. The term "European patent" is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally-enforceable, nationally-revocable patents,subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.
The EPC provides a legal framework for the granting of European patents,via a single, harmonised procedure before the European Patent Office (EPO). A single patent application, in one language, may be filed at the European Patent Office or at a national patent office of a Contracting State, if the national law of the State so permits.
What will the future bring?
In 2012, representatives of the EU Member States finally - after years of discussions - have decided to implement the European unitary patent. The European unitary patent will soon guarantee supranational protection for inventions in 25 countries across Europe.
The regulations entered into force on 20 January 2013. However, they will only apply from 1 January 2014 or the date of entry into force of the Agreement on a Unified Patent Court, whichever is the later.
For more information, please see the EPO's website:
What is the EPC and what makes it so unique?
The European Patent Convention (EPC) is a multilateral treaty providing an autonomous legal system according to which European patents are granted. The term "European patent" is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally-enforceable, nationally-revocable patents,subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.
The EPC provides a legal framework for the granting of European patents,via a single, harmonised procedure before the European Patent Office (EPO). A single patent application, in one language, may be filed at the European Patent Office or at a national patent office of a Contracting State, if the national law of the State so permits.
What will the future bring?
In 2012, representatives of the EU Member States finally - after years of discussions - have decided to implement the European unitary patent. The European unitary patent will soon guarantee supranational protection for inventions in 25 countries across Europe.
The regulations entered into force on 20 January 2013. However, they will only apply from 1 January 2014 or the date of entry into force of the Agreement on a Unified Patent Court, whichever is the later.
For more information, please see the EPO's website:
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ICANN will launch more than 1,000 new Top Level Domains (TLDs). Starting in early 2014, new TLDs like .shop, .web or .hotel will have a huge impact on how we find and distribute information online.
From a trademark perspective the question is: How can I protect my brand? What do I need to know before the launch of the new TLDs? What can I do? What mechanisms exist? All these legal, technical and strategic questions will be discussed in-depth at the upcoming newdomains.org Munich Conference on new TLDs from 26 - 28 October 2013.
Keynote speaker of the conference is ICANN's President and CEO, Mr. Fade Chehadé. This conference is hosted by united-domains AG and under the patronage of the German Federal Ministry of Economics and Technology. The two day agenda consists of workshops relating to Brand Risk Manangement, Marketing & Google's gTLD Strategy to ICANN's policies and contracts.
For more information and in order to sign up, please see: www.newdomains.org
Keynote speaker of the conference is ICANN's President and CEO, Mr. Fade Chehadé. This conference is hosted by united-domains AG and under the patronage of the German Federal Ministry of Economics and Technology. The two day agenda consists of workshops relating to Brand Risk Manangement, Marketing & Google's gTLD Strategy to ICANN's policies and contracts.
For more information and in order to sign up, please see: www.newdomains.org