Thursday Miscellany

1 Some serious merchandise grade constabulary from the IPKat ... for a change.

Both IPKat blogmeisters receive got articles inward the electrical flow number of IIC (in full: the International Review of Intellectual Property in addition to Competition Law), which is published 6 times a twelvemonth past times Verlag C. H. Beck (Munich) in addition to past times Hart Publishing (Oxford). The 2 articles are

* "Trade Mark Law in addition to the Need to Keep Free", past times Jeremy, and

* "How Does 'Essential Function' Doctrine Drive European Trade Mark Law?", past times Ilanah.

Both articles originated alongside papers delivered at the annual Fordham University IP conference, March 2004.


2 BIKER MILES ruling

The Court of First Instance of the European Communities has given its ruling inward Case T-385/03, Miles Handelsgesellschaft International mbH v Office for Harmonisation inward the Internal Market, Biker Miles Motorrad Handels- und Vertriebsgesellschaft mbH, intervening. Biker Miles applied to register every bit a Community merchandise grade this attractive logo for goods inward Classes 9, 12 in addition to 25 that included "equipment in addition to article of apparel for riders of two‑wheeled vehicles, namely boots, shoes, gloves, scarves, rainwear, weather condition protection clothing, pullovers, helmets, kidney protectors, leather clothing, faux leather clothing". Miles opposed, citing its before Community merchandise grade MILES, registered for "clothing, including sportswear" inward Class 25. The Opposition Division bizarrely considered at that topographic point to endure a likelihood of confusion; the Board of Appeal disagreed. In its opinion, nonetheless the identical nature of roughly of the parties' respective goods, the verbal divergence betwixt the 2 marks in addition to the fact that 1 of them was a logo killed whatsoever run a jeopardy that consumers mightiness endure confused. Today the CFI restored insanity past times allowing the opponent's appeal, taking the take in that the dominant chemical ingredient of each grade was the same in addition to that consumers would accordingly endure confused. hopes that Biker Miles volition either appeal to the European Court of Justice or only larn ahead in addition to utilization its logo, to run into whether or non a existent courtroom would consider that at that topographic point was whatsoever genuine likelihood of confusion. Merpel says, "sssh! you lot shouldn't endure proverb things similar that ..."

3 Parts of chemical compound slogans may endure registered every bit merchandise marks ...

The European Court of Justice has ruled today inward Case C-353/03 Société des produits Nestlé SA v Mars U.K. Ltd that a sign which constitutes role of a well-known slogan that itself incorporates a well-known merchandise grade is non excluded from registration for lack of distinctiveness. This is because it may larn distinctive graphic symbol regardless of whether it is used inward conjunction alongside roughly other merchandise mark. Thus, on the facts of the number referred to the Court, HAVE Influenza A virus subtype H5N1 BREAK may larn distinctiveness through its utilization every bit role of the slogan "Have a pause ... Have a KIT-KAT". This determination was really brusk in addition to cited nigh no representative law, perchance indicating that the Court felt that at that topographic point was no major number of regulation to determine.

4 ... every bit may marks inward abide by of retail sales services

Another of today's events is the European Court of Justice's ruling inward Case C-418/02, Praktiker Bau- und Heimwerkermärkte AG on a reference from the High German Bundespatentgericht. Praktiker Märkte applied to register alongside the Deutsches Patent- und Markenamt the give-and-take grade PRAKTIKER for "retail merchandise inward building, habitation improvement in addition to gardening goods for the do-it-yourself sector". The Office rejected the application on the dry reason that service marks were non available for retail trade. Praktiker Märkte appealed to the Bundespatentgericht, which stayed the proceedings in addition to sought the ECJ's guidance inward the course of written report of a preliminary ruling. The ECJ ruled every bit follows:

"1. The concept of ‘services’ referred to past times Council Directive 89/104, inward special inward Article 2, covers services provided inward connectedness alongside retail merchandise inward goods.

2. For the purposes of registration of a merchandise grade for such services, it is non necessary to specify inward special the service(s) inward question. However, details must endure provided alongside regard to the goods or types of goods to which those services relate".

is delighted alongside this decision, which OHIM reached roughly years ago. Merpel is non in addition to then sure: how does this touching the hard number of whether retail sale of goods in addition to the goods themselves are inward do 'similar' for the purposes of likelihood of confusion? The courtroom has said:

"48 There is zilch to hollo for that whatsoever problems resulting from the registration of merchandise marks for retail services could non endure resolved on the dry reason of the 2 relevant provisions of the directive, every bit they receive got been interpreted past times the Court. In that regard, it should endure recalled that, according to the Court’s case‑law, the likelihood of confusion must endure assessed globally, taking into draw of piece of employment concern human relationship all the factors relevant to the circumstances of the representative (see Case C-251/95 SABEL [1997] ECR I‑6191, paragraph 22, in addition to Case C-39/97 Canon [1998] ECR I-5507, paragraph 16). In the context of that global assessment, it is possible to receive got into consideration, if hollo for be, the special features of the concept of ‘retail services’ that are connected alongside its broad scope, having due regard to the legitimate interests of all interested parties.

49 In those circumstances, for the purposes of registration of a merchandise grade roofing services provided inward connectedness alongside retail trade, it is non necessary to specify inward special the service(s) for which that registration is sought. To put those services, it is sufficient to utilization full general wording such every bit ‘bringing together of a diversity of goods, enabling customers to conveniently take in in addition to buy those goods’".

But volition this aid resolve the evidentiary in addition to practical issues that are probable to arise? Also, the ruling doesn't advert online sales services. Will these automatically endure covered past times the same full general principles?