ptmg 2015 international case roundup - delegate.com · 25. märz 2015 ptmg 2015 - international...

25. März 2015

PTMG 2015

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International Case Roundup Dr. Morton Douglas Venice, 23 March 2015

Agenda

1. EU Decisions

2. National Decisions

3. Use Decisions

4. Discussion

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Seite 2

1. EU Decisions

1.1 Overview absolute Grounds – Rejections of the BoA in Class 5

Mydiet

Acidomix

BioSign

Lipoburn

Brain Chip

NanoXray

Phytopower

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1. EU Decisions


Opticare

Neurovision

Golden special

Keeps you going

Happy Baby

Best Body

Train like a beast

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1. EU Decisions


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1. EU Decisions

1.1 Wet Dust can‘t fly, T-133/13 decision of 22 January 2015

Applicant [of the cancellation action] has not produce any docu-

ment to establish that the combination of the words ‘dust’ and ‘wet’

is commonly used in the context of filters and cleaning systems.

The concept of ‘wet dust’ is literally inaccurate, since dust is no

longer dust when it is wet. Consequently, the juxtaposition of those

two words gives that concept a fanciful and distinctive character.

The expression ‘wet dust can’t fly’ calls for an interpretative effort

on the part of consumers, who will be unable to associate it

immediately with the goods and services in question, since the

intended purpose of the goods and services in question is not to

‘wet the dust in order to prevent it from flying’.

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1. EU Decisions

1.1 Overview absolute grounds

OHIM (-)

DE, BX, ES, AT, DK, SI, SK,

PL, IT, FR, GB, SE, BG, EE,

LV, LT, CZ, CY (+)

HU, IE, PT, RO, HR, GR (-)

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1. EU Decisions

1.2 Overview Relative Grounds – Decisions of the GC

Decision of 9 April 2014, T-501/12 – PENTASA / OCTASA

Preparations are containing active ingredient 5-ASA

The suffix ‘asa’ is not descriptive from the perspective of the end-

users in all the Member States

The differences between ‘pen’ and ‘oc’, despite their position at

the beginning of the marks, are incapable of negating a certain

degree of visual and phonetic similarity in the overall impression.

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1. EU Decisions


Decision of 28 April 2014, T-473/11 MENOCHRON / MENODORON

For the average consumer, the elements MENO, CHRON and

DORON have no meaning

The signs are visually highly similar and phonetically similat to an

average degree

The visual similarity is not of lesser importance than the phonetic

similarity

Confirmed ECJ, Decision of 20 January 2015, C-311/14P

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1. EU Decisions


Decision of 1 July 2014, T-239/12 CERCON / ZIECON (fig.)

The figurative element has only a very limited degree of

distinctiveness

The differences at the word beginnings is not rendering the overall

visual impression dissimilar

The marks are phonetically highly similar

Therefore, the signs are confusingly similar

Confirmed by ECJ, decision of 20 February 2015, C-420/14P

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1. EU Decisions


Decision of 16 July 2014, T-324/13 FEMIBION / FEMIVIA (fig.)

The prefix ‘fem’ has a weak distinctive character for the goods

covered by the marks at issue

That fact does not mean that the prefix ‘fem’ cannot be taken into

account when comparing the signs at issue.

The fact that the relevant public will be more attentive to the

identity of the producer or provider of the goods of which it wishes

to avail itself does not mean, however, that it will examine the

mark before it in the slightest detail or that it will compare it in

great detail to another mark.

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1. EU Decisions


Decision of 24 September 2014, T-493/12 DELPRAL / GEPRAL

‘pharmaceutical preparations for the treatment of the disorders of

the central nervous system’, and ‘oncological preparations and

preparations for cardiovascular treatments’ are only similar to a

low degree

The marks share a high degree of visual similarity and at least an

average degree of phonetic similarity

Despite the low degree of similarity of goods the similarity of signs

is sufficient to render the marks confusingly similar

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1. EU Decisions


Decision of 16 October 2014, T-444/12 LINEX / LINES PERLA

“hygienic diapers” and “pharmaceutical preparations containing

lactobacillus acidophilus” are only remotely similar

The therapeutic benefits of lactobacillus acidophilus as a

treatment for incontinence may not be considered to be either

proven or well known. Therefore it must be considered that

‘pharmaceutical preparations containing lactobacillus acidophilus’

are not connected with the medical treatment for incontinence.

The degree of visual and phonetic similarity between the marks is

rather low,

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1. EU Decisions


Decision of 2 December 2014, T-75/13 Lonarid / Momarid

the level of attention of end consumers who purchase

pharmaceutical preparations for the reduction of pain and fever is

above average

Furthermore, inasmuch as the pharmaceutical preparations for the

reduction of pain and fever covered by the earlier mark are

included in the broader category of ‘chemicals for pharmaceutical

use’,

The degree of visual and phonetic similarity between the signs at

issue is slightly above average.

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1. EU Decisions


Decision of 2 December 2014, T-173/13 SELESYN / SELOGYN

The signs are not very short

The signs are visually and phonetically similar

A significant portion of the consumers will not understand the

reference within the signs

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1. EU Decisions


Decision of 27 January 2015, T-227/13 INTERFACE / INTERFOG

As the signs have the first 6 letters in common, they are visually

similar to an average degree

If the relevant public is capable of attributing a meaning to the

word ‘interface’ which constitutes the mark applied for, this word

none the less relates to an abstract idea which, in the context of

the goods concerned, will not have associations liable to facilitate

the recollection of the mark on the basis of that meaning.

The conceptual difference which exists between the marks at

issue is therefore liable to escape the attention of the relevant

public.

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1. EU Decisions


Decision of 10 February 2015, T-75/13 ANGIPAX / ANTISTAX

The consumer will perceive the conceptual differences created by

the terms “ANGI-”, “ANTI-” and “-PAX”.

The differences within the pronunciation shall be sufficient to keep

the signs safely apart

Court confirmed that the marks are not confusingly similar

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1. EU Decisions


Decision of 3 March 2015, T-366/11 ZEBINIX / ZEBEXIR

the groups of letters ‘inix’ in the earlier mark and ‘exir’ in the mark

applied for, are not sufficient to cancel out the impression of

similarity created by the common first part ‘zeb’ of the signs at

issue

the common letter ‘x’, which is visually striking, reinforces the

similarity created by the common first part of the two signs

The sounds of the marks “ZE-BI-NIX” and “ZE-BE-XIR” is

sufficiently similar

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2.1 Court of Appeal, decision of 6 February 2015, Speciality European

Pharma Ltd v. Doncaster Pharmaceuticals Group Ltd & Another [2015]

EWCA Civ 54,

Necessity test – when is rebranding necessary?

The branded market for the medicine REGURIN was only 8.61%

of the total market for trospium chloride medicines, for which over

88% of prescriptions were written generically.

UK prescription rules allow a prescription written generically to be

satisfied by a branded or non-branded product, but a prescription

written for a brand, for example REGURIN, can only be satisfied

by that branded product.

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2.1 Court of Appeal, decision of 6 February 2015, Speciality European

Pharma Ltd v. Doncaster Pharmaceuticals Group Ltd & Another [2015]

EWCA Civ 54,

Therefore, in determining whether it is necessary to re-brand, the

court must consider what alternatives exist for the parallel

importer, and whether they are realistic.

competing with the generics was not possible because of the price

Parallel trade would have to satisfy branded prescriptions and

could not do this unless it established the foreign brand or its own

brand in the United Kingdom.

A relatively small branded market may warrant re-branding.

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2.2 Brazilian Courts recognize pharmaceutical companies’ right to use

trademarks in vaccines

Manufacturers have a right to use Trademarks in connection with

vaccines

The use of trademarks is in the interest of public safety

Prohibiting the use of TM for vaccines is infringing the provisions

of TRIPs

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2.3 Spanish Supreme Court, decision of 14 October 2014, 520/2014

If the owner of the previous registered Spanish trademark wanted

to prohibit the use of the later registered Spanish trademark, he

would have to seek its invalidation first

This doctrine has been abolished the owner of the later trademark

had no use utendi which could be alleged against the owner of a

previous trademark.

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2.4 OLG Köln, decision of 25.7.2014 (6 U 197/13)

Interim injunction – Knowledge of the infringment

The deadline for applying for an interim injunction starts when an

employee becomes aware of the facts, who is competent to

identify an trademark infringement and it is reasonable that he

informs the competent department.

Decision is a Guidline for the question when the deadlines starts

running – both for trademark owners and potential infringer…..

„L-Thyrox“ is very weak as it is an abbrevation of the active agent

L-Thyroxin; however it keeps an independent distictive position

within the compesite sign „L-Thyrox-Companyname“

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2.5 German Supreme Court, Decision of 10 July 2014 (I ZB 81/13)

Registeratbility of the term „FOR YOU“

The term „FOR YOU“ is not descriptive as it will not be perceived

as an indication that the goods are customised in order to meet

the needs of the consumer.

Whether the term „FOR YOU“ might be descriptive in combination

with other terms is irrelevant as the mark consists of „FOR YOU“

only

It is irrelevant whether or not the term „YOU“ must be available for

all competitors as the termin question is „FOR YOU“.

A mark can be both an indication of origin and a promotional claim

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3. Proof of use

3.1 OLG Köln, decision of 19. 5. 2014 - 6 U 195/08 (2. decision)

Use on the product:

Use in the invoice:

PROTI PLUS / PROTI POWER

The mere use in invoices shall be sufficient to establish genuine

use

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Seite 25 Thema: Grundzüge der

gewerblichen Schutzrechte

3. Proof of use

3.2 German Supreme Court decision of 8 January 2014 (I ZR 38/13)

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3. Proof of use


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3. Proof of use


OLG Munich: Due to the very low degree of distinctiveness of the

marks „Probiotik“ and „Präbiotik“, the change in color and the

additional elements are changing the distinctive character

Reversed: Court had failed to examine whether the additional

elements will be perceived as also being an indication of origin

only being decorative.

Impact of the ® of the percepton of the signs.

Case remitted: Is milk pudding falling under milk products?

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3. Proof of use

3.3 Fourth BoA, decision of 24 November 2014 (R 2041/2013-4)

Registered sign Used sign

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3. Proof of use

3.3 Fourth BoA, decision of 24 November 2014 (R 2041/2013-4)

No genuine use of the registered mark

The change of the color is significant

The word element has only a very low degree of distinctiveness in

Germany

It complies with CP4 even though the BoA is not bound by the

statement (Art. 136 (4) CTMR)

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3. Proof of use

3.4 Second BoA, decision of 13 February 2014 (R 1260/2013-2)

Proof of use for re-filings

There is no legitimate reason to allow the extension of the grace

period.

The earlier mark according to Art. 42 (2) and (3) CTMR must not

necessarily understood as having the registration number

The goods and services must not be identical, as it is not

acceptable to circumvent the use requirement by adding godds

and services.

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4. Discussion

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OHIM is getting stricter and stricter on absolute grounds

OHIM and the GC is quite generous on relative grounds

The question of use becomes more and more important

Comeback of national trademark registrations?

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Contact

Dr. Morton Douglas,

Attorney

Kaiser-Joseph-Straße 284

79098 Freiburg

Germany

Tel.: +49 (0) 761 21808-346

Mail: [email protected]

ptmg 2015 international case roundup - delegate.com · 25. märz 2015 ptmg 2015 - international...

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