Trademarks and inheritance – European court’s decision

juropean-justiceThe European court has ruled in Case C‑341/16 Hanssen Beleggingen BV v Tanja Prast-Knipping, which concerns the following:

On 7 September 1979, a company incorporated under German law owned by Mr Helmut Knipping, operating in the production of building components, in particular windows, applied to the Benelux Intellectual Property Office (Trade Marks and Designs) (‘BIPO’) for registration as a Benelux trade mark of the following word and figurative sign:

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BIPO registered that trade mark in black and white under No 361604 (‘trade mark No 361604’).

Hanssen is a company incorporated under Dutch law operating in the door and window trade. It is the proprietor of Benelux word and figurative trade mark No 0684759. That trade mark is comprised of the same word and figurative sign as that covered by trade mark No 361604, but is registered in blue and yellow.

On 9 October 1995, Mr Knipping died.

On 14 November 2003, Ms Prast-Knipping, on providing a certificate stating that she was the sole heiress of Mr Knipping, requested BIPO to register her as the proprietor of trade mark No 361604.

BIPO complied with the request for registration.

Hanssen contests the registration. It claims that trade mark No 361604 had, prior to the death of Mr Knipping, been assigned several times and was no longer part of his estate at the time of his death. The registration of Ms Prast-Knipping as the proprietor of that trade mark was therefore unjustified.

Since the dispute was unable to be resolved by amicable agreement, on 8 June 2012, Hanssen brought an action against Ms Prast-Knipping before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), the court of the place where Ms Prast-Knipping is domiciled. Hanssen founded its action on unjustified enrichment under Paragraph 812 of the German Civil Code and sought an order that Ms Prast-Knipping declare at BIPO that she is not entitled to the trade mark in question and to waive the registration of her name as proprietor.

In a judgment of 24 June 2015, the Landgericht Düsseldorf (Regional Court, Düsseldorf) dismissed that action on the ground that, at the time when Mr Knipping died, trade mark No 361604 formed part of his estate and had therefore been correctly transferred to Ms Prast-Knipping by universal succession.

Hanssen brought an appeal against that judgment before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany).

That court harbours doubts as to the jurisdiction of the German courts to hear the case. It considers that whilst jurisdiction could derive from Article 2(1) of Regulation No 44/2001, it is also possible that the courts of the Member State in which registration of the trade mark at issue in the main proceedings has taken place — namely the Netherlands, since the seat of BIPO is located at The Hague — have exclusive jurisdiction under Article 22(4) of that regulation.

Since jurisdiction must be assessed of the court’s own motion, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) wishes the matter to be clarified.

25      According to the referring court, it is necessary, in particular, to determine whether an action such as that brought by Hanssen amounts to proceedings ‘concerned with the registration or validity of … trade marks’ within the meaning of Article 22(4) of the regulation. The judgment of 15 November 1983, Duijnstee (288/82, EU:C:1983:326), provides indicia suggesting that that question be answered in the negative, but, in the light of the development of trade mark law since that judgment, it is not certain that that judgment must still be taken into account.

As regards the development of trade mark law, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) cites, inter alia, Article 18 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (‘Regulation No 207/2009’).

The referring court also mentions the fact that, as regards jurisdiction, Benelux trade marks are characterised by certain specific features.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does the notion of proceedings which are “concerned with the registration or validity of … trade marks”, within the meaning of Article 22(4) of Regulation [No 44/2001], also cover a claim, brought against the formal proprietor of a Benelux trade mark registered in the Benelux trade mark register, which seeks an order requiring that defendant to make a declaration to [BIPO] that she has no entitlement to the contested mark and that she waives registration as the proprietor of that mark?’

The Court’s decision:

Article 22(4) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as not applying to proceedings to determine whether a person was correctly registered as the proprietor of a trade mark.

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Trademark and design clearance and risk assessment

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Kate Swaine from Gowling WLG (UK) published a quite interesting article which concerns how a company should carry out a brand and design clearance that in turn could prevent future collisions with third party’s intellectual property rights.

When we talk about clearance in that case we mean more or less the following:

  • Searching in the official Patent Offices’ databases for earlier registered trademarks and industrial designs. This should be done at the stage of brand and design building which will help any problems to be avoided in time before more time and money to be invested;
  • Searching for identical or similar internet domain names that can secure the use of the relevant mark on the internet;
  • Searching whether the trademark name resembles any company name that can create possible legal collisions;
  • Searching in Google for earlier similar unregistered trademarks of designs;
  • Making a risk assessment based on the information from the different searches above. This will give a clear picture about whether the relevant marks and designs can be used without legal hurdles or whether such use can lead to costly lawsuits.

For more information here.

Brief IP news

briefs_1131. Interbrand: Best Global Brands 2017. For more information here.  

2. Microsoft v Motorola. For more information here.

3. Leibniz: Biscuits vs. the University of Hannover. For more information here.

Information from Intellectual Property Center at the UNWE. More information can be found here

Booking.com is eligible for trademark protection in US

The U.S. District Court for the Eastern District of Virginia has ruled that the following US trademark applied for Class 43 – hotel reservations is eligible for registration as a trademark for that class:

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Initially, the USPTO refused to register this sign because of its descriptiveness and low distinctive character for the services from Classes 39 and 43.

According to the Court, however, the applicant was given enough pieces of evidence which show that the sign had acquired a secondary distinctiveness for the services from Class 43.

Because of that, the Court ordered the USPTO to register that mark for that class and to analyze whether it is suitable for registration in class 39  taking into account the color and font combination.

As it is well-known even low distinctive signs can receive trademark protection but only if they show acquired secondary meaning through intensive and prolong market use which to suggest that consumers perceive them as a trade source.

Source: The TTABlog.

Ferrari can lose its Testarossa trademark in Germany

model-car-2093994_960_720The Italian sports cars manufacturer Ferrari is on the way to lose its rights over the trademark Testarossa in Germany, which was been used in the past for one of its famous cars.

In the case at hand, the German company Autec AG filed an application for trademark Testarossa for bicycles. Against this application, an opposition was filed by Ferrari which in turn provoked a request for revocation of the mark based on alleged non-use of the mark for 5 consequence years.

According to the Court in Düsseldorf Ferrari failed to prove a genuine use of its trademark. All piece of evidence for after-sales and maintenance of the car was rejected because the used brand was only Ferrari.

Most likely the Italian company will appeal this decision.

Source: Lexology.

 

 

PostModern or just Post – a trademark decision by the General Court

addtext_com_MDQyMDMyNjkyNgThe General Court of the EU ruled in Case T-13/15; Deutsche Post AG v EUIPO. The case at hand concerns an attempt for registration of an EU trademark PostModern for Class 39 – for various transport and postal services.

Against this mark was filed an opposition based on earlier German trademarks POST and Deutsche Post for Class 39 too.

The EUIPO opposition division initially upheld the opposition but after that, the Board of ѝppeal annulled this decision.  The reasons behind this reversal were that the signs have a low level of similarity. Moreover, they share the Post part which has a low distinctiveness for the services at hand.

The later mark PostModern has a different conceptional meaning which is an additional argument for the lack of similarity between the signs especially in the case of Deutsche post which has completely different meaning.

Taking into account the visual and phonetic differences between the marks, The Board of Appeal dismissed the opposition in its entirety.

Source: Alicantenews.

Usain Bolt’s trademarks

7734344062_c400fb3191_kThe legendary Jamaican sprinter Usain Bolt has put an end of its professional career recently but this doesn’t mean that the merchandising business regarding his persona has ended too.

As many other well-known sportsmen such as Michael Jorden, for example, Bolt will continue to use its name for different merchandising and endorsement campaigns.

One of the reasons behind this conclusion is not only the Bolt’s celebrity status but the existence of many registered trademarks for his name. A quick check in the TM View database shows the following results:

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