As always, we are eager to share publications from DLA Piper’s Trademark teams across the world. Here is the latest version of France’s Trademark and Design February/March newsletter.
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NEWS
Argentina: Trademark Oppositions/Changes in Mediation Procedure
According to the new mediation law, the introduction of a mediation procedure, which is still a preliminary and compulsory stage in opposition proceedings, now suspends the one year period during which the applicant had to obtain amicable withdrawal of the opposition. In the absence of settlement between the parties, the applicant must challenge the opposition before Court in order to avoid withdrawal of its trademark application.
The term for completing the mediation procedure has been set to sixty (60) days from its start, but can be extended with the agreement of the parties.
The one year period resumes twenty (20) days after closing of the mediation procedure.
The Trademark Office will therefore require, if initiation of a complaint or withdrawal of opposition takes place one year after the notification of opposition to the applicant, in order to avoid the application being considered abandoned, that the interested party justifies that the terms have been suspended.
Brazil: Trademark Database for Use by Law Enforcement Officials as part of the National Plan to Combat Piracy
Within the frame of the national plan to Combat Piracy elaborated by the National Council to Combat Piracy and Intellectual Property Crimes (referred to as “CNCP”, and formed in November 2004), the Brazilian Department of Justice is developing a database called the National Directory of Trademarks, which purpose is to compile information on trademark rights and on the person to be contacted by the local authorities in case of infringement.
CASE LAW
European Union: There is no confusion between the mark applied for (F1-Live & logo) and Formula One Licensing’s marks (word mark F1 and logotype F1 Formula 1), given the low degree of similarity between the marks and the descriptive character that the public attributes to the abbreviation ‘F1’.
The General Court, in case T-10/09, dated on February 17, 2011, confirmed that the Board of Appeal was correct in making a distinction between the word mark F1 and the logotype F1, and in concluding that the public would perceive the logotype as the trade mark that Formula One Licensing uses in relation to its commercial activities and the abbreviation ‘F1’ as the common abbreviation of “Formula 1”, which is commonly used in everyday language to designate a category of racing car and of races involving such cars.
The General Court considered that the Board of Appeal was right to find that the designation ‘F1’, in ordinary typeset, had only a weak distinctive character in relation to the goods and services covered and that the reputation in the European Union was essentially linked to the logo itself. In consequence, Formula One Licensing’s arguments that the designation ‘F1’ had a particularly pronounced distinctive character and that ‘F1’, in standard typeset, had a reputation equal to that of the F1 Formula 1 logotype, have been declared unfounded.
The Court therefore concluded that there was no likelihood of confusion between the ‘F1’ word marks and the figurative mark applied for, since consumers would not connect the ‘F1’ element in the mark applied for with Formula One Licensing because the only sign that they had learned to associate with the latter was the logotype and because they would regard the designation ‘F1’ in ordinary typeset as descriptive.
As regards the figurative mark (the F1 Formula 1 logotype), the General Court also held that there was no likelihood of confusion between that mark and the mark applied for since there was no visual similarity between them and there were only limited phonetic and conceptual similarities.
At last, the General Court added that “the fact that the public attributes a generic meaning to the sign F1 means that it will understand that the mark applied for concerns Formula 1, but, because of its totally different layout, the public will not make a connection between that mark and the activities of the applicant.”
T-10/09, February 17, 2011, Formula One Licensing BV v. OHIM
European Union: There is no likelihood of confusion between the trademark mark application PPT (word mark) and the earlier trademark rights PPTV & logo, given the low degree of similarity between the marks and the fact that the relevant public will perceive the last two letters of the earlier mark as the abbreviation of the word “television”.
The General Court, in case T-118/07 dated on February 18, 2011, confirmed the Board of Appeal decision according to which the relevant public to take into account for “video cassette distribution services on a revenue sharing or use fee basis and the distribution of video tapes” claimed in the trademark application in class 41 was the business public, more attentive than the average consumer, “despite the fact that the average consumer may order large quantities of DVDs or video cassettes via the internet or that such services are available on the internet”. The Court admitted nevertheless that for the remaining services claimed in class 41 (rental of videos and DVDs, rental of video recorders and DVD players, distribution of video tapes, rental of videos, DVDs, video recorders and DVD players on-line via the global computer network) the relevant public was the average consumer.
The Court also approved the Board of Appeal in its findings that there was a remote similarity between “rental services for video and DVD” claimed in the trademark application and the services of “education, entertainment and information concerning sporting and cultural activities” covered by the earlier trademark, which although different in nature and purpose, were complementary because videos and DVDs were one of the vehicles normally used for the provision of services connected with education, entertainment and sporting and cultural activities.
The Court noted that such connection was sufficiently close to consider that the consumers may think that video, DVD, video recorder and DVD player rental services, on the one hand, and services connected with education, entertainment and sporting and cultural activities, on the other, were provided by the same company.
The “distribution services” claimed by the trademark application have however not been considered as complementary with the services of “education, entertainment and information concerning sporting and cultural activities”, as they were not intended for the same public, one being professional and the other general, so that they could not be regarded either as substitutable or as being in competition with each other.
As regards the comparison of signs, the Court ruled out that since the earlier mark covered televised entertainment services, the last two letters of the mark – ‘T’ and ‘V’ – would be perceived by the relevant public as the abbreviation of the word ‘television’ and that the figurative element of a striped ball within a square was not dominant but could not be regarded as totally negligible.
The Court therefore concluded that because the earlier mark had a clear and specific conceptual dimension for the relevant public, which the mark applied for had not, it counteracted the phonetic and visual similarities resulting from the common sequence of letters (‘PPT’).
T-118/07, February 18, 2011 P.P.TV – Publicidade de Portugal e Televisao, SA v. OHIM
European Union: The surrender of the later in date trademark application against which a declaration for invalidity is filed is not in itself capable of rendering the appeal in invalidity proceedings devoid of any purpose.
The Court considered that the appellant, the company Ferrero SpA retained a legal interest in lodging an appeal in so far as the effects of a surrender and those of a declaration of invalidity were not the same. That is to say, whereas a Community trademark which has been surrendered ceases to have effects only as from the registration of that surrender, a Community trademark which has been declared invalid will be deemed, in accordance with Article 54(2) of Regulation No. 40/94, not to have had any effects from the outset, with all the consequences that such invalidity implies.
C-552/09 P, March 24, 2011 Ferrero SpA v. OHIM
CONTACTS
This e-newsletter is written by the Trademark department of DLA Piper France. For more information about the articles or the trademark services of DLA Piper, please contact:
Laurence Julien-Raes
Head of Trademark Counselling (FR) and
Trademark Prosecution (EMEA)
DLA Piper France
T +33 (0)1 40 15 25 37
laurence.julien-raes@dlapiper.com
Karine Disdier-Mikus
Senior Associate
Trademark Counsel
DLA Piper France
T +33 (0)1 40 15 25 32
karine.disdier-mikus@dlapiper.com
DLA Piper is an international legal practice with over 3,500 lawyers across 71 offices and 29 countries. Along with a dedicated Trademark team, Laurence Julien-Raes and Karine Disdier-Mikus advises on every trademark aspects, including portfolio management and worldwide protection strategies. Find out more on www.dlapiper.com/france.