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Official Journal of the International Trademark Association

ANNUAL REVIEW

B. The Ninth AnnualInternational Review of

Trademark Jurisprudence

Vol. 92 March-April, 2002 No. 2

®

(USPS 636-080)Copyright 2002, by the International Trademark Association

All Rights Reserved

Vol. 92 March-April, 2002 No. 2

TABLE OF CONTENTS

ARTICLES AND REPORTS

ANNUAL REVIEW

B. The Ninth Annual International Review ofTrademark Jurisprudence

Editor’s Note .................................................................................. 229

Part I. Acquisition of Rights and Registrability.............................*

A. Acquisition of Rights ...................................................................*1. Bases for Acquisition .............................................. 280, 389

a. Functionality ..................................................................*b. Quality and Quantity of Use .........................................*c. Appropriation of a Trademark.......................................*

2. Assignments ............................................................ 265, 5323. Licenses ........................................................................... 2814. Protection for a Non-Renewed Trademark .........................*5. Bankruptcy...........................................................................*

B. Registrability .......................................................................... 3261. Generic Names ........................................ 255, 384, 440, 4632. Merely Descriptive Terms ..... 255, 347, 362, 364, 367, 406,

425, 441, 473, 489, 509, 517, 534

(continued on next page)

* The headings followed by an asterisk denote that there were no cases reported in thissubject/topic.

This issue of THE TRADEMARK REPORTER® (TMR) should be cited as 92 TMR ___ (2002).

®


3. Not Merely Descriptive Terms ...... 256, 274, 284, 349, 407,473, 510, 535

4. Geographical Names ....... 285, 318, 364, 389, 474, 478, 4905. Personal or Surnames............................. 315, 365, 391, 5366. Letters and Numbers ...................................... 414, 536, 5717. Device and Design Marks ....................... 425, 478, 484, 5188. Likelihood of Confusion .......... 235, 285, 373, 384, 440, 485

a. Similarity of Marks .......... 235, 251, 286, 327, 363, 374,392, 421, 423, 427, 430, 434,474, 479, 488, 510, 520, 538

b. Similarity of Goods/Services ............. 385, 416, 422, 480c. Conflict Between Trademarks and

Corporate Names....................................................... 417d. Illicit Acts .......................................................................*

9. No Likelihood of Confusion..... 242, 287, 374, 393, 424, 474a. No Similarity of Marks .... 244, 288, 333, 353, 368, 376,

378, 394, 422, 424, 430, 435,464, 481, 485, 492, 511, 540, 571

b. No Similarity of Goods/Services ............... 251, 353, 39410. Deceptive Marks.............................................. 395, 508, 54211. Other Objectionable Features ................................ 366, 521

a. Copyright Protection ......................................................*b. Official Names ................................................................*c. Violation of Public Order .......................................... 366d. Scandalous Mark....................................................... 543e. Bad Faith ........................................................... 354, 543

12. Famous Marks........................ 274, 288, 315, 363, 378, 396,417, 431, 436, 457, 482, 512, 522, 569

13. First to Apply Versus First to Use ................. 442, 524, 54414. House Marks ........................................................................*15. Foreign Registrations ..................................................... 53116. Trade Dress ..........................................................................*17. Disclaimers.............................................................. 319, 47518. Joint Ownership.............................................................. 54519. Slogans............................................................................. 41420. Color/Shape ..................................... 289, 380, 431, 466, 50821. Trade Names ................................................... 276, 337, 45822. Distinctiveness ........................ 374, 385, 415, 454, 513, 54623. Official and Certified Marks........................................... 29024. Service Marks.................................................................. 45425. Sound Marks ........................................................................*26. Detriment/Unfair Advantage ......................................... 546


27. Three-Dimensional Marks...................... 355, 455, 467, 54728. Scent Marks..................................................................... 548

Part II. Procedural Matters ................................................. 376, 398

A. Formalities for Acceptable Filings................. 293, 356, 377, 399

B. Identification of Goods or Services ................................ 359, 549

C. Disclaimers and Consents...........................................................*

D. Appellate Procedure ....................................................... 294, 3711. Jurisdiction/Authority ............................................ 377, 3992. Who May Appeal ..................................................................*3. Improper Pleadings......................................................... 442

E. Forum Conflicts ...................................................... 257, 400, 550

F. International Issues ............................................................... 257

G. Evidence.......................................................................... 378, 469

Part III. Post Registration Issues ......................................................*

A. Infringement and Defenses............................................ 265, 5511. Famous Marks................. 266, 319, 338, 401, 418, 490, 5252. Likelihood of Confusion .......... 253, 266, 276, 339, 368, 386

401, 418, 445, 476, 496, 572a. Similarity of Goods/Services ..................... 294, 455, 553b. Similarity of Marks ................................... 340, 432, 555

3. Prior User ........................................................................ 3414. Disclaimers...................................................................... 4985. Fair Use ................................................................... 369, 5566. International Conventions...................... 258, 342, 372, 5067. Symbols............................................................................ 2688. Infringement of Unregistered Trademarks ........... 366, 4699. Standing .......................................................................... 26810. Nonuse of Trademark ..................... 268, 402, 428, 437, 52711. No Likelihood of Confusion..................... 258, 343, 475, 557

a. No Similarity of Marks ..... 269, 277, 344, 469, 493, 528b. No Similarity of Goods/Services ............................... 456


12. Lack of Distinctiveness ........................................... 269, 40313. File Wrapper.........................................................................*14. Parody...................................................................................*15. Deceptive Use.................................................................. 49516. Absence of Willful Intent .....................................................*17. Descriptive Use ............................................................... 34418. Equitable Defenses ..............................................................*19. Family of Marks .............................................................. 29520. Guarantee.............................................................................*21. Staying of Court Action .......................................................*22. Trade Dress ..................................................................... 49923. Abuse of Process...................................................................*24. Personal Names .............................................................. 558

B. Unfair Competition ................................................ 259, 316, 4031. Passing Off .............................. 277, 295, 443, 470, 500, 5592. Character Marks ..................................................................*3. Statutory Issues ...................................................................*4. Advertising .............................................................. 404, 4465. Compensation.......................................................................*6. Configuration of Goods ................................................... 4047. Color................................................................................. 4048. Slavish Imitation..................................................... 387, 419

C. Injunctions and Damages ..................... 298, 320, 438, 447, 453,470, 475, 529, 564

D. Seizures........................................................................... 303, 4051. Civil Actions ............................................................ 270, 2782. Criminal Actions ............................................................. 507

E. Valuation and Tax Treatment ....................................................*

F. Loss of Trademark Rights...................................................... 4481. Forfeiture................................................................. 278, 4482. Lapsing of Registration................................................... 4833. Nullity...................................................................... 271, 4564. Attachment of Trademark ...................................................*5. Cancellation.................... 259, 271, 306, 318, 388, 419, 444,

449, 457, 458, 460, 483, 485, 501, 5646. Dilution............................................................ 272, 310, 492


G. Post Registration Evidence of Use and Renewals ... 345, 502, 512

H. Amendments................................................................................*1. Amendments to Marks.........................................................*2. Amendments to Registrations .............................................*

I. Trademark Agent in a Litigation ...............................................*

J. Gray Marketing and Counterfeiting .... 260, 311, 321, 370, 381,420, 471, 476

K. Criminal Actions............................................................. 450, 515

L. Opposition/Cancellation Procedure ....... 360, 459, 472, 514, 530

M. Licensing Issues ............................................................. 504, 565

N. Counsel, Conflicts................................................................... 312

Part IV. Personality Rights........................................................... 313

Part V. Internet Issues ........................................ 262, 272, 451, 566

A. Domain Names .............................. 264, 272, 279, 314, 324, 370,420, 424, 432, 444, 452, 567

Table of Marks .............................................................................. 575

COUNTRY INDEX

Argentina................................235Australia .................................251Austria ....................................255Benelux ...................................265Brazil.......................................274Canada....................................280Chile........................................315China, People’s Republic of ......318Colombia .................................326Community Trademark .........347Costa Rica...............................362Czech Republic .......................364Denmark.................................367Ecuador...................................371Egypt.......................................373El Salvador .............................374Estonia....................................378European Community............380Finland....................................384France .....................................389Germany .................................406Greece .....................................416Guatemala ..............................421Honduras ................................423Hong Kong ..............................425Iceland ....................................430India........................................432Indonesia ................................434Iran .........................................440

Ireland.................................... 440Israel....................................... 443Italy ........................................ 445Jamaica .................................. 453Japan...................................... 454Jordan..................................... 457Lithuania................................ 460New Zealand .......................... 463Nigeria.................................... 469Norway ................................... 473Pakistan ................................. 476Panama .................................. 478Paraguay ................................ 484Peru ........................................ 485Philippines ............................. 488Portugal.................................. 489Republic of South Africa........ 492Russian Federation ............... 495Singapore ............................... 496Spain....................................... 506Sweden ................................... 508Switzerland ............................ 509Taiwan.................................... 513Thailand ................................. 515Turkey .................................... 517United Arab Emirates........... 531United Kingdom .................... 532Uruguay ................................. 569Vietnam.................................. 571

Vol. 92 TMR 229

ANNUAL REVIEW

B. THE NINTH ANNUALINTERNATIONAL REVIEW OF

TRADEMARK JURISPRUDENCE

Editor’s Note

The TMR wishes to welcome you to the Ninth Annual Inter-national Review of Trademark Jurisprudence.

This edition of the Review was edited by a Task Force of theTMR co-chaired by Clifford W. Browning and RosemarieChristofolo, who were assisted by TMR members Daniel R.Bereskin, Lisa W. Greene, Kwan-Tao Li, Purvi Patel, E. LynnPerry, Pier Luigi Roncaglia and Cynthia C. Weber; and JohnMorales, TMR Assistant Editor, and Randi Mustello, TMRManaging Editor.

As was the case last year, the Review is organized in countryorder with each country divided by subject and topic. Also, forTable of Contents continuity, if a particular subject or topic is notcovered in this edition, it will be so noted on the Table of Contentsby an asterisk (*).

The Editorial Board wishes to thank not only those who havecontributed, but also those who continue to monitor developmentsin their jurisdictions.

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230 Vol. 92 TMR

Contributors are listed below, and due to the increase injurisdiction coverage, multiple jurisdictions are listed for acontributor.

Jurisdiction Name Firm Address

Africa (majority)of thecontinent) andChannelIslands(Guernseyand Jersey)

W.R. McA. SpenceWayne Meiring

Spoor and Fisher St. Helier, Jersey

Andorra Manuel PujadasJoan Casal i Mateu

Asturgo, Mateu &Associates

Andorra la Vella,Principality ofAndorra

Argentina Ernesto AracamaZorraquin

Marval, O’Farrell &Mairal

Buenos Aires,Argentina

Australia andPapua NewGuinea

Janice Luck Davies Collison &Cave

Melbourne, Australia

Austria Peter Israiloff Barger, Piso &Partner

Vienna, Austria

Barbados Diana Douglin George WaltonPayne & Co.

Bridgetown,Barbados, W.I.

Benelux Peter Ch. Hendriks MerkenbureauHendriks & Co.C.V.

Bussum, Netherlands

Bermuda Donna M. Pilgrim Conyers, Dill &Pearman

Hamilton, Bermuda

Brazil Valdir RochaPatricia Gouvêa

Veirano &AdvogadosAssociados

Rio de Janeiro, Brazil

Canada Christopher C. Hale Blake, Cassels &Graydon

Toronto, Canada

Paul Tackaberry Baker & McKenzie Toronto, Canada

Chile Rodrigo Velasco Estudio ArturoAlessandri

Santiago, Chile

China, People’sRepublic of

Hailing Zhang Pennie & Edmonds New York, New York

Colombia Germán Cavelier Cavelier Abogados Bogota, Colombia

CommunityTrademark

Elaine Rowley Marks & Clerk London, England

Costa Rica Denise Garnier Soler-Cartin-Garnier San Jose, Costa Rica

Cuba J. Sanchelima Sanchelima &Associates, P.A.

Miami, Florida

Czech Republic Thomas E. Mudd Zeiner & Zeiner Prague, CzechRepublic

Vol. 92 TMR 231


Denmark Peter Gustav Olson Plesner SvaneGronborg

Copenhagen,Denmark

DominicanRepublic

Orlando Jorge MeraPatricia Villegas

Jorge Mera &Villegas

Santo Domingo,Dominican Republic

Eastern Europeand someformer USSR

Gerhild Buchholz-Szilagyi

Kropp-Olbertz,Schulte-Franzheim,Seibert

Cologne, Germany

Ecuador Maria CeciliaRomoleroux

Corral & Rosales Quito, Ecuador

Egypt Nazeeh A. Elias A. Sadek Elias LawOffice

Cairo, Egypt

El Salvador Edy GuadalupePortal de Velasco

Portal & Asociados San Salvador, ElSalvador

Estonia Jüri KäosaarKaie Puur

Käosaar & Co. Tartu, Estonia

EuropeanCommunity

Adam N. Cooke Wragge & Co. London, England

Finland Seija Saaristo Benjon Ltd. SeijaSaaristo

Helsinki, Finland

France andFrenchTerritories(DOM andTOM)

Marc-Roger Hirsch Cabinet Hirsch Paris, France

Germany Kay-Uwe Jonas LinklatersOppenhoff &Rädler

Cologne, Germany

Carmen Lichtenstein Lichtenstein,Köerner &Partners

Stuttgart, Germany

Greece Helen PapaconstantinouArsinoi Lainiotis

Theodorides &Papaconstantinou

Athens, Greece

Guatemala Analucia Carrillo Carrillo y Asociados Guatamala City,Guatamala

Gulf States(Kuwait,Saudi Arabia,United ArabEmirates andYemen),Bahrain,Oman andQatar

M. Farrukh IrfanKhan

United Trademark &Patent Services

Lahore, Pakistan

Honduras Ricardo Anibal Mejia Bufete Mejia &Asociados

San Pedro Sula,Honduras

232 Vol. 92 TMR


Hong Kong,Cambodia,Laos andMacao

Barry J. Yen So Keung Yip & Sin Central Hong Kong

Iceland Skúli Th. Fjeldsted Fjeldsted, Blöndal &Fjeldsted

Reykjavik, Iceland

India, Bhutanand Nepal

Amar Raj Lall Lall Lahiri &Salhotra

Gurgaon, India

Indonesia Erna L. Kusoy Hadiputranto,Hadinoto &Partners

Jakarta, Indonesia

Iran Alireza Laghaee Dr. Ali Laghaee &Associates

Tehran, Iran

Ireland Brenda O’ReganNeil McVeigh

F.R. Kelly & Co. Dublin, Ireland

Israel Shlomo Cohen Dr. Shlomo Cohen &Co.

Tel-Aviv, Israel

Italy and SanMarino

Pier Luigi RoncagliaGabriele Lazzeretti

Societá ItalianaBrevetti

Florence, Italy

Jamaica Anne-Marie C. WhiteFeanny

Suzanne Allicock

Livingston,Alexander & Levy

Kingston, Jamaica

Japan Kazuko Matsuo Nakamura &Partners

Tokyo, Japan

Jordan Mazen K. DajaniGhaida’ M. Ala’

Eddein

Saba & Co. Amman, Jordan

Korea Byong Ho LeeJunghoon Kenneth

Oh

CentralInternational LawFirm

Seoul, Korea

Latvia andLithuania

Marius JakulisJason

A.A.A. Baltic ServiceCompany

Vilnius, Lithuania

Lebanon Ketty Meshaka W.T.H. Mulford Beirut, Lebanon

Malaysia andSingapore

Gladys MirandahPonnampalam

Sivakumar

Ella Cheong & G.Mirandah

Singapore

Malta and Gazo Richard CamilleriAntoine Camilleri

Mamo TCVAdvocates

Valletta, Malta

Mexico Antonio BelaunzaranLuis Schmidt

Olivares & Cia. Mexico City, Mexico

New Zealand John B. HackettBlair Morris

A J Park Auckland, NewZealand

Nicaragua Guy Jose Bendana-Guerrero

Guy Jose Bendana-Guerrero

Managua, Nicaragua

Vol. 92 TMR 233


Nigeria Theophilus I.Emuwa

Anga & Emuwa Lagos, Nigeria

Norway Egil Lassen Actio Lassen AS Bergen, Norway

Pakistan andBangladesh

Hasan Irfan Khan United Trademark &Patent Services

Lahore, Pakistan

Panama Nadia Pedreschi deHalman

Pedreschi &Pedreschi

Panama City,Panama

Paraguay Gladys E. Bareiro deModica

Bareiro Modica &Asociados

Asuncion, Paraguay

Peru Jose BarredaMicaela Mujica

Barreda Moller Lima, Peru

Philippines Rogelio Nicandro Romulo, Malanta,Bonaventura,Sayoc & De LosAngeles

Manila, Philippines

Portugal Rosario Cruz GarciaNuno Cruz

J. Pereira da Cruz,S.A.

Lisbon, Portugal

Puerto Rico Federico Calaf-Legrand

Reichard & Calaf San Juan, Puerto Rico

Republic ofSouth Africa,Botswana,Lesotho,Namibia,Swazilandand Zambia

Charles E. Webster Spoor and Fisher Pretoria, Republic ofSouth Africa

RussianFederation

Eugene A. Arievich Baker & McKenzie Moscow, Russia CIS

Spain Pablo Gonzalez-Bueno

Elzaburu S.A. Madrid, Spain

St. Kitts-Nevis Lindsay F.P. Grant Veira, Grant &Associates

Basseterre, St. Kitts

Sweden Bengt Nihlmark B. Nihlmark AB Stockholm, Sweden

Switzerland Peter E. Wild Wild Schnyder AG Zurich, Switzerland

Syria Ibrahim A. Tarazi Saba & Co. Damascus, Syria

Taiwan Kwan-Tao LiC.V. Chen

Lee and Li Taipei, Taiwan

Thailand Parichart JaravigitEdward J. Kelly

Tilleke & Gibbins Bangkok, Thailand

Turkey M.N. Aydin Deris Deris Patents &TrademarksAgency Ltd.

Istanbul, Turkey

United Kingdom Christopher J.L.Ryan

Norton Rose London, England

234 Vol. 92 TMR


Uruguay Juan A. Pittaluga Juan A. Pittaluga &Associates

Montevideo, Uruguay

Venezuela Rafael A. MarquezLosada

Marquez & MarquezAbogados

Caracas, Venezuela

Vietnam Nguyen Tran Bat Investconsult Group Hanoi, Vietnam

Dang T.H. Thuy D&N IntellectualProperty Bureau

Hanoi, Vietnam

Le Xuan Thao Invenco Hanoi, Vietnam

Vol. 92 TMR 235

ARGENTINA

I.B.8. Likelihood of Confusion

In Arnet Pharmaceutical Corp v. Aceitera General OchezaS.A.,1 the plaintiff applied to register the trademark NATURAVIGOR for products in Class 5.

The First Instance Judge found the mark confusingly similarto Aceitera’s mark NATURA and dismissed the complaint. TheFederal Court of Appeal of Buenos Aires affirmed the decision onthe ground that the trademark NATURA is a well-known mark inArgentina in the field of edible oils. Consequently, the registrationof said sign in Class 5 cannot be considered as “defensive.” On thecontrary, Aceitera has a justified interest to manufacture someproducts in Class 5, and to avoid, in such category, the dilution ofthe distinctive power of the trademark NATURA. The addition ofVIGOR to the word NATURA does not differentiate the new signto the extent of ruling out any risk of confusion with the markNATURA. In fact, the word VIGOR can be related to a vitaminicproduct and to a food product as well.

Mater Dei Asociacion Civil applied to register the mark MSDfor “dietetic substances for medical use” in Class 5. Merck and Co.Inc. had registered the same mark MSD in the same Class 5 for,among others, “dietetic products for medical use.” The FirstInstance Judge and the Federal Court of Appeals of Buenos Airesdecided that the marks were identical and cannot coexist.2

I.B.8.a. Similarity of Marks

The application to register the mark POMMETTE filed byLancôme Perfume et Beaute & Cie for products in Class 3 wasopposed by Carlos Lizardi, owner of the marks POMMEVERTEand POMME VERTE registered in the same class.

The First Instance Judge dismissed Lancôme’s complaintholding that French is foreign to a large part of the population andthe different meaning of the words POMMETTE andPOMMEVERTE was not duly understood by them. The FederalCourt of Appeals of Buenos Aires affirmed the decision taking intoconsideration that the same word “pomme” appears at the

1. Federal Court of Appeals of Buenos Aires, Room III, Case 20.496/96, decided March

1, 2001.

2. Mater Dei Asociacion Civil v. Merck & Co. Inc., Federal Court of Appeals of BuenosAires, Room I, Case 5432/99, decided April 10, 2001.

236 Vol. 92 TMR

beginning of the marks and their last phoneme TTE and TE haseuphonic identity.3

Jose Campos Perez applied to register the mark SKINWELLfor products in Class 3.4 Laboratorios Medical Arche S.R.L.opposed based on its registration of KEENWELL in the sameClass 3.

The Federal Court of Appeals of Buenos Aires held theopposition well founded. The marks share the identical suffixWELL and their prefixes KEEN and SKIN do not substantiallydiffer, creating a likelihood of confusion.

Industria Cosmética Cooper Ltda. registered the trademarkELLE ELLA in Class 3, limited to “a deodorant product for thebody with hydrating properties.” Cooper obtained such registrationthrough an agreement according to which Hachette FilipacchiPresse withdrew the opposition it had filed based on its markELLE registered in Classes 9 and 16.

The agreement obliged Cooper not to derive any right throughthe use or registration of the trademark ELLE ELLA against theuse of the mark ELLE. Hachette in turn accepted not to fileoppositions to future renewal applications and/or new registrationsof Cooper’s mark.

Hachette then applied to register the trademark ELLE inClass 3 and Cooper opposed. The Federal Court of Appeals ofBuenos Aires dismissed the complaint filed by Hachette, holdingthe agreement entered by the parties could not sidestep the publicorder—in this case the interest of the potential consumer—byauthorizing the registration of a mark obviously confusinglysimilar to another mark already registered.5

Galletas Artiach S.A. applied to register the trademarkARTINATA for products in Class 30. Bagley S.A. opposed based onits trademark TRAVIATA also in Class 30. The First InstanceJudge and the Federal Court of Appeals of Buenos Aires held thatthe marks are similar. The ending ATA is of common use in Class30 and the remaining elements do not sufficiently differ. Theparticle ARTIN of the plaintiff’s mark does not present sufficientnovelty to rule out all risk of confusion with TRAVIATA. Thebeginning of the marks consists of the same letters (ART andTRA). Summing up, the marks are fanciful names that have noconceptual content but, from the graphic and phonetic point of

3. Lancôme Perfums et Beauté & Cie v. Lizardi, Carlos, Federal Court of Appeals of

Buenos Aires, Room II, Case 224/98, decided February 22, 2001.

4. Campos Perez, José v. Laboratorios Medical Arche S.R.L., Federal Court of Appealsof Buenos Aires, Room I, Case 19.468, decided February 27, 2001.

5. Hachette Filipacchi Presse v. Industria Cosmética Cooper Ltda., Federal Court ofAppeals of Buenos Aires, Room 1, Case 6161/98, decided February 27, 2001.

Vol. 92 TMR 237

view the similarities are so strong that the danger of confusion isreal.6

Reswill S.A. applied to register the trademarks NIKE ROBOTand NIKE DUKE for products in Class 25. Nike InternationalLtd.7 opposed based on its well-known mark NIKE registered inClasses 9, 15 and 16 of the old Argentine classification becausemany of the products included in those classes overlap withproducts in International Class 25. Nike based the opposition onits applications in old Class 19 and in International Class 25.

Based on its registrations of the marks NIKE FERALDY inInternational Class 25, ROBOT in the same class, and DUKE inold Argentine Class 16 and International Class 25, Reswillinstituted a legal action to set aside Nike’s opposition.

The First Instance Judge dismissed the complaint consideringthat the opposition filed by Nike International Ltd. was wellfounded. He took into consideration a judicial agreement enteredinto by the parties through which Reswill restricted the use of themark NIKE FERALDY, admitted that NIKE is a famoustrademark and that it could not be accidental that it tried to bringits mark near the defendant’s sign through the applicationsopposed by the latter. Furthermore, the Judge considered that theownership of the mark NIKE FERALDY does not entitle ReswillS.A. to substitute as many times as it wishes the second word ofthe ensemble because this would cause confusion to consumers,thus violating good commercial practices and infringing Article 3 ofthe Argentine Trademark Act and Article 953 of the Civil Code.

The Federal Court of Appeals of Buenos Aires upheld thedecision on the following grounds: Reswill S.A. started using themark NIKE FERALDY to distinguish sport shoes in June 1982—before such date it was used for cosmetics, perfumery andtoiletries—but by that date NIKE was already a famous mark forsport shoes; and Reswill S.A. has the exclusive right to use thetrademark NIKE FERALDY as a whole but it cannot use the wordNIKE for articles in Class 25 and related ones, alone or forming acombination with other words, as agreed in Article 6 of the abovementioned judicial agreement.

Fundacion Rontag applied to register the mark FUNDACIONUNIVERSIDAD-EMPRESA in Classes 16, 35, 38, 41 and 42 andUniversidad Argentina de la Empresa opposed based on itsregistrations UNIVERSIDAD ARGENTINA DE LA EMPRESA inthe same classes and UNIVERSIDAD ARGENTINA DE LAEMPRESA GRADUADOS in Class 41. The First Instance Judgedismissed the complaint filed by Fundacion Rontag in order to set

6. Galletas Artiach S.A. v. Bagley S.A., Federal Court of Appeals of Buenos Aires,Room III, Case 1101/97, decided March 8, 2001.

7. Reswill S.A. v. Nike International Ltd., Federal Court of Appeals of Buenos Aires,Room III, Case 4.445/94, decided April 24, 2001.

238 Vol. 92 TMR

aside the oppositions on the ground that the ensembles wereconfusingly similar.

On appeal, the Federal Court of Appeals of Buenos Airesupheld the decision, considering that if the words UNIVERSIDADand EMPRESA separately taken are of common use, theassociation of said words in a trademark only appeared in thedefendant’s mark.

From another point of view it must be taken into account thatUNIVERSIDAD ARGENTINA DE LA EMPRESA is a notoriousname which, as such, does not need to be proved.8

Pedro Lopez e Hijos S.A. opposed the registration by JorgeRicardo Loprete of the service mark METROCARGO in Class 39based on its prior registrations of METRO in Classes 1, 29, 30, 31,32, 33, 35 and 42.

The First Instance Judge found the opposition ill founded but,on appeal, the Federal Court of Appeals of Buenos Aires reversedthe decision on the grounds that METROCARGO could deceiveconsumers as to the source or origin of the services.9

NIMBLEX and BINVEX were declared confusingly similar inClass 5 in Wellcome Foundation Limited v. LaboratoriosArmstrong S.A.10 The plaintiff applied to register the NIMBEXmark for a “neuromuscular block adding agent” in Class 5 and thedefendant opposed based on its BINVEX registration for allproducts in the same class. The First Instance Judge and theCourt of Appeals decided that the signs share the same suffix -EX,which is of generalized use in Class 5, and the beginning of thewords, which are crucial for the sound as well as the visual effectof the mark, show very little distinctiveness.

Nuvo Argentina S.A. applied to register the mark HABITATfor products in Class 3. Compaer S.A. opposed based on its markHABITUÉ also registered in Class 3 and used to distinguishdeodorants and perfumes.

The First Instance Judge decided that HABITAT andHABITUÉ, words of the French language, could be considered asincorporated into the Argentine national language in which theyhave a different and well defined conceptual content.Consequently, it admitted the complaint filed by the plaintiff.

The Federal Court of Appeals of Buenos Aires reversed thedecision on the grounds that, in principle, foreign languages areconsidered unknown to the majority of the consumers and themarks consisting of foreign words are considered as fanciful signs.

8. Fundacion Rontag v. Universidad Argentina de la Empresa, Federal Court of

Appeals of Buenos Aires, Room II, Case 1860/98, decided April 30, 2001.

9. Loprete, Jorge Ricardo v. Pedro Lopez e Hijos S.A., Federal Court of Appeals ofBuenos Aires, Room II, Case 1.491/98, decided April 5, 2001.

10. Federal Court of Appeals of Buenos Aires, Room III, Case 17.240/96, decided April4, 2001.

Vol. 92 TMR 239

In this case the Court decided that HABITAT was not clearlydissimilar to HABITUÉ and that they could not coexist withoutinducing the consumer into error.11

Cerveceria y Malteria Paysandu S.A., a well-knownUruguayan brewery, applied to register in Argentina its famous(in Uruguay) trademark NORTE in Classes 32 and 33.

Cerveceria y Malteria Quilmes S.A. opposed on the ground ofsimilarity with its NORTEÑA trademark. Later Quilmes, beforeINPI, added as another ground for its opposition the existence ofthe trademark NORTE.12

The Federal Court of Appeals declared the trademark NORTEregistered by Quilmes, forfeited for nonuse but decided thatNORTEÑA was confusingly similar to NORTE.13

The First Instance Judge dismissed the complaint filed byHoechst A.G. against Laboratorios Casasco S.A. and upheld theopposition lodged by the defendant, owner of the mark TRIPRIN inClass 5, against the plaintiff’s trademark application for the markTRIAPIN for pharmaceutical preparations for heart illnesses inClass 5.

The Federal Court of Appeals upheld the decision finding themarks confusingly similar in that they have the same number ofletters (seven), the same beginning (TRI) and the same ending(IN). Out of the seven letters only one was different: the first A inTRIA. All the remaining letters were identical and were placed inthe same position.14

New Pharma S.A. applied to register the trademarkDISCIPLIN for products in Class 5. Microsules y Bernabo S.A.opposed based on its mark DISIPAN also in Class 5.

The First Instance Judge admitted the complaint filed by NewPharma. The Court of Appeals reversed the decision on thegrounds that the marks are confusingly similar. The beginning ofthe marks DISCIP and DISIP have the same pronunciation andthe plaintiff did not argue that they were of generalized use. Theendings LIN and PAN are not sufficiently different to avoidconfusion.15

Campo Andino S.A. applied to register the trademark CAMPOANDINO for limited products in Classes 20, 30 and 31. Molinos

11. Nuvo Argentina S.A. v. Compaer S.A., Federal Court of Appeals of Buenos Aires,

Room II, Case 6176/98, decided April 18, 2001.

12. The inclusion of new reasons for the opposition is permitted by Article 14 of theArgentine Trademark Act 22.362.

13. Cerveceria y Malteria Paysandu S.A. v. Cerveceria y Malteria Quilmes S.A.,Federal Court of Appeals of Buenos Aires, Room I, Case 47.536/95, decided June 5, 2001.

14. Hoechst A.G. v. Laboratorios Casasco S.A., Federal Court of Appeals of BuenosAires, Room III, Case 6.085/97, decided May 29, 2001.

15. New Pharma S.A. v. Microsules y Bernabo S.A., Federal Court of Appeals of BuenosAires, Room III, Case 3.439/98, decided May 8, 2001.

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Río de la Plata S.A. opposed based on its registered marksHUERTA ANDINA, ANDINO and ANDINA in Classes 31,ANDINO and ANDINA in Class 29 and ANDINO in Class 30.

The First Instance Judge dismissed the complaint and theFederal Court of Appeals upheld the decision on the ground thatthe confronted marks are confusingly similar because CAMPO andHUERTA are confusingly similar, at least, from a conceptual pointof view. The plaintiff had not proved that ANDINO - ANDINAwere of generalized use in Classes 29, 30 and 31 or that it hadused the marks HUERTA ANDINA and ANDINO ANDINA beforeMolinos Río de la Plata S.A. had registered them.16

Darrow Laboratorios S.A. applied to register the trademarkFLEXVIAL DARROW for parenteral solutions of small volumes inClass 5. P.A. Rivero & Cía. S.A. opposed based on its trademarkVIAFLEX in Classes 5 and 10. The First Instance Judge held thatthe marks were not confusingly similar but the Federal Court ofAppeals of Buenos Aires reversed, holding that the marks aresimilar.17 For the Court of Appeals the most important issue wasthat VIAFLEX and FLEXVIAL were similar. The word DARROWwas considered by the Court as having a secondary role.

Liquimoly Chile S.A. applied to register the trademarkVISCOPLUS for additives in Class 4. The British PetroleumCompany P.L.C. opposed based on its trademark VISCO registeredin the same class for lubricants.

The First Instance Judge held that the opposition was well-founded and the Federal Court of Appeals of Buenos Airesaffirmed the decision. The elemental principle in this matter isthat the marks must be clearly distinguishable. And when theconflicting signs have a common prefix or suffix, the dissimilarpart should have sufficient distinctiveness to be capable toovercome, in the totality of the sign, the nearness caused by thecommon elements. In this case the Federal Court of Appeals ofBuenos Aires judged that the ending PLUS, added by the plaintiffto the mark VISCO was not enough to create dissimilarity betweenthe marks because PLUS means more and actually brings themcloser.18

Johnson & Johnson is the owner in Argentina of thetrademark DUROGESIC for all products in Class 5. WhenLaboratorio Chile S.A. applied to register TURBOGESIC forproducts also in Class 5, Johnson & Johnson opposed on theground that the marks are confusingly similar. The First Instance

16. Campo Andino S.A. v. Molinos Río de la Plata S.A., Federal Court of Appeals of

Buenos Aires, Room I, Case 3399/98, decided June 24, 2001.

17. Darrow Laboratorios S.A. v. P.A. Rivero & Cía. S.A., Federal Court of Appeals ofBuenos Aires, Room II, Case 2209/99, decided August 4, 2001.

18. Liquimoly Chile S.A. v. The British Petroleum Company P.L.C., Federal Court ofAppeals of Buenos Aires, Room III, Case 24.451/95, decided August 4, 2001.

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Judge allowed the complaint instituted by Laboratorio Chile andthe Federal Court of Appeals of Buenos Aires upheld thedecision.19 The Court found the portion GESIC is common in Class5 and TURBO and DURO are similar. Three of the five letters ofTURBO also appear in DURO and the two vowels—U and O—areidentical and are placed in the same order. If it is true thatTURBO and DURO have different meanings, considered with theending GESIC to which they are united, TURBOGESIC andDUROGESIC evoke the same product, an analgesic.

Abbot Laboratories applied to register the trademarkNORVIRA for products in Class 5. Searle Argentina S.R.L.opposed on the ground of confusing similarity with its trademarkRONVIR registered in the same class. The First Instance Judgedismissed the complaint lodged by Abbot Laboratories on thegrounds that the signs are confusingly similar and used onproducts for treatment of the same illness. The Federal Court ofAppeals of Buenos Aires upheld the decision. The Court of Appealsfound identity in six letters, all the letters in the defendant’smarks were reproduced in the plaintiff’s sign and identity in thedistribution. Only two letters (R-N) changed place and the othershad the same sequence. The final A is not an element capable ofdiminishing the similarity caused by all the elements shared byNORVIRA and RONVIR. Furthermore, the marks had nomeaning.20

Based on its trademark RONTAG registered for all products inClass 5, Laboratorios Rontag S.A. opposed an application filed bySmithkline Beecham Corporation to register CONTAC for amedicine for coughs and colds also in Class 5. The First InstanceJudge dismissed the complaint instituted by Smithkline and theFederal Court of Appeals of Buenos Aires affirmed the decision.21

In Mülhems K.G. v. Unilever N.V., the Federal Court ofAppeals of Buenos Aires decided that the trademark MAGNETICapplied by the plaintiff for products in Class 5 was confusinglysimilar to IMPULSE MAGNETIC registered by Unilever in thesame class.22 The Federal Court of Appeals, upholding the FirstInstance decision, took into consideration that IMPULSEMAGNETIC had been in the market since 1980 and that in 1996and 1997 Unilever had sold more than 6,000,000 units of productswith the mark IMPULSE MAGNETIC in Argentina. The Court

19. Laboratorio Chile S.A. v. Johnson & Johnson, Federal Court of Appeals of Buenos

Aires, Room I, Case 3991/97, decided August 9, 2001.

20. Abbot Laboratories v. Searle Argentina S.R.L., Federal Court of Appeals of BuenosAires, Room III, Case 5.663/98, decided October 30, 2001.

21. Smithkline Beecham Corporation v. Laboratorios Rontag S.A., Federal Court ofAppeals of Buenos Aires, Room III, Case 14.005/96, decided October 30, 2001.

22. Federal Court of Appeals of Buenos Aires, Room III, Case 26.864/94, decidedOctober 23, 2001.

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applied a strict criterion to compare MAGNETIC and IMPULSEMAGNETIC, finding it possible that consumers might thinkIMPULSE MAGNETIC is a variant of MAGNETIC. It found thatsuch a possibility justified the prohibition to register it.

Ordesa S.A. applied to register the trademark BLEMIL fordietetic products for children and sick persons and baby foods inClass 5. Federación Argentina de Cooperativas FarmacéuticasCoop. Ltda, opposed based on its trademark LEMIL registered forproducts in Class 5. The First Instance Judge and the FederalCourt of Appeals of Buenos Aires decided that BLEMIL andLEMIL are confusingly similar and cannot coexist.23

I.B.9. No Likelihood of Confusion

Societé des Produits Nestlé S.A. instituted two complaints toset aside the oppositions to the registrations of the trademarksTRIX for “processed cereals” and NESTLE TRIX in respect ofbreakfast cereals in Class 30 filed by Growseed A.G. based on itsprior application of the mark TREX to distinguish “confectionery,chewing gum and candies” also in Class 30.

The First Instance Judge dismissed the complaint anddeclared well founded the opposition filed by Growseed A.G. to theregistration of the mark TRIX. As for NESTLE TRIX, thecomplaint against the opposition was admitted to the NESTLETRIX application on the ground that any approximation betweenTREX and NESTLE TRIX is impossible because NESTLE is awell-known mark.

The Federal Court of Appeals of Buenos Aires reversed thedecision concerning the conflict between the trademarks TRIX andTREX on the ground of dissimilarity of products and affirmed thedecision on the conflict between the marks NESTLE TRIX andTRIX finding both the marks and the products are not similar.24

In Boehringer Ingelheim KG v. Dexter KG,25 the FirstInstance Judge set aside the opposition to the application for themark PULMAT for “human use pharmaceutical preparations forthe treatment of the respiratory tract” in Class 5. The oppositionwas based on the trademark PULSAR in the same class in respectof “antiemetic, gastrocinetic, activator of gastrointestinal motility.”

The Federal Court of Appeals of Buenos Aires held that theprefix PUL is of general use in Class 5 and that PULMAT as awhole is different enough to rule out any risk of confusion.

23. Ordesa S.A. v. Federación Argentina de Cooperativas Farmacéuticas Coop. Ltda.,Federal Court of Appeals of Buenos Aires, Room II, Case 26.171/94, decided October 4, 2001.

24. Societé des Produits Nestlé S.A. v. Growseed A.G. and Societé des Produits NestléS.A. v. Growseed A.G., Federal Court of Appeals of Buenos Aires, Room I, Cases 25696/95and 1324/97, respectively, decided April 24, 2001.

25. Federal Court of Appeals of Buenos Aires, Room III, Case 17815/94, decided April5, 2001.

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Furthermore, the respective products have substantially differentpurposes.

Plastipren S.A. applied to register the mark ALIPACKMULTICAPA PASTIPREN for products in Class 17. C & KAluminio S.A. opposed based on its marks ALUPAQ registered inClasses 6, 16 and 21.

The First Instance Judge deemed that the plastic products inClass 17 and Classes 16 and 21 are to be regarded as similar andthe words ALIPACK and ALUPAQ are confusingly similar, bothgraphically and phonetically.

The Federal Court of Appeals of Buenos Aires reversed thedecision and decided that the defendant’s opposition was illfounded. The Appeals Court decided that the products in Class 17are different from those in Class 16 and that their consumers arealso different.

The Court furthermore considered that the mark ALUPAQ inClass 16 was only a defensive mark, thus a less vigorouscomparison criterion could be adopted and, also, that it is a weakmark. Consequently, the Court decided that ALIPACKMULTICAPA PLASTIPREN in Class 17 is not confusingly similarto ALUPAQ in Classes 10, 16 and 21.26

Craveri S.A. applied to register the trademark DIRARETAMfor all products in Class 5 and Etam S.A. opposed based on itsmark ETAM registered in the same class.27

Craveri S.A. instituted a legal action to set aside theopposition and the Federal Judge accepted it and decided thatDIRARETAM and ETAM are not confusingly similar.

The Federal Court of Buenos Aires upheld the decision on theground that Etam S.A. is a firm operating in the clothing business.Craveri S.A. is a pharmaceutical laboratory and Etam S.A. hasnever produced or sold medicinal products. Furthermore, it doesnot appear that Craveri S.A. tried to take advantage of theprestige of the defendant or to damage it when applying to registerthe mark DIRARETAM.

The Court also stated that the marks DIRARETAM andETAM have different number of letters (9 and 4) and syllables (4and 2) and that the orthographic accent is different. Therefore, themarks are not confusingly similar and can coexist without risk forthe consumer.

26. Plastipren S.A. v. C & K Aluminio S.A., Federal Court of Appeals of Buenos Aires,

Room I, Case 53807/95, decided June 28, 2001.

27. Craveri S.A. v. Etam S.A., Federal Court of Appeals of Buenos Aires, Room III,Case 1587/96, decided May 31, 2001.

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I.B.9.a. No Similarity of Marks

Synthelabo applied to register the mark ZOLNOCT forproducts in Class 5. Química Montpellier opposed on the groundthat the application is confusingly similar to its FORNOCT andFULNOCT marks also registered in Class 5.

The First Instance Judge dismissed the complaint filed bySynthelabo. To him the marks were confusingly similar becauseNOCT is in common use in Class 5 and FOR and FUL, theelements which had to be different to ZOL, were not.

The Federal Court of Appeals of Buenos Aires reversed thedecision on the ground that the word ZOL is graphically andphonetically different from FOR and FUL.28

Casino Iguazú S.A. applied to register the service markCASINO IGUAZU for services in Class 36.29 Zurich Iguazú Cía. deSeguros S.A. opposed on the ground of confusing similarity with itsmarks IGUAZU SEGUROS and IGUAZU CIA SEGUROS S.A.registered in Class 36 but limited to “all services related toinsurances in general.” The First Instance Judge decided that themarks were not likely to be confused. The Federal Court ofAppeals of Buenos Aires partially reversed the decision, decidingthat the CASINO IGUAZU mark could be registered in Class 36with the exclusion of “insurances in general.”

New Pharma S.A. opposed an application to register thetrademark LEVADIT filed by Boehringer Mannheim ArgentinaS.A. for a dietetic medicinal product in Class 5. The opposerconsidered it confusingly similar to its trademark LEVEDADgranted in respect to “products to control obesity” also in Class 5.

The First Instance Judge and the Federal Court of Appeals ofBuenos Aires dismissed the opposition taking into account theconceptual value of the word LEVEDAD which does not exist inLEVADIT.30

Juan José Schubert, owner of the mark KRONDIAMANregistered in respect of products in Class 6, opposed theapplication of the mark DIAMOND filed by Guanzhou LightIndustrial Products Import & Export for products in the sameclass.

The First Instance Judge decided that the marks were notconfusingly similar. The Federal Court of Appeals of Buenos Aires

28. Synthelabo v. Química Montpellier S.A., Federal Court of Appeals of Buenos Aires,

Room III, Case 2674/97, decided March 29, 2001.

29. Casino Iguazú S.A. v. Zurich Iguazú Cía. de Seguros S.A., Federal Court of Appealsof Buenos Aires, Room II, Case 5111/98, decided February 27, 2001.

30. Boehringer Mannheim Argentina S.A. v. New Pharma S.A., Federal Court ofAppeals of Buenos Aires, Room II, Case 147/97, decided February 13, 2001.

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affirmed the decision because the marks were clearly differentgraphically, phonetically and conceptually.31

In National Amusements Inc. v. Artes Gráficas RioplatensesS.A., the First Instance Judge decided that the trademarks N andNR in Class 35 were not confusingly similar.

The Federal Court of Appeals of Buenos Aires affirmed thedecision taking into consideration the graphic differences existingbetween the marks, namely the presence of the letter R in thedefendant’s mark, the graphic characteristics of the plaintiff’smark, and the obvious phonetic difference between the signs. TheCourt held that those who register a letter of the alphabet enjoylimited protection and cannot expect to monopolize it.32

Molinos Río de la Plata S.A. applied to register the sloganPROBALO, SE DESHACE EN TU BOCA for products in Class 30.Mars Incorporated opposed based on its trademark ELCHOCOLATE SE DERRITE EN TU BOCA Y NO EN TU MANOalso in Class 30. The First Instance Judge held that the oppositionwas well founded and dismissed the complaint instituted byMolinos. The Federal Court of Appeals held the two phrases arenot confusingly similar upon a graphic, phonetic and conceptualanalysis.33

Avon Products Inc. opposed the registration of the trademarkTOCADE sought by Parfums Rochas for products in Class 3 on thebasis of its mark TOPAZE registered for all products in Class 3.34

The First Instance Judge held that the opposition was ill foundedbecause the marks have “substantial differences” from aconceptual point of view. In fact, “topaze” means “topaz” and“tocade” means “caprice” in colloquial French. The Federal Court ofAppeals of Buenos Aires affirmed the decision, even though theword “tocade” should be regarded as a fanciful word, since theFrench language cannot be considered known by the main part ofthe Argentine consumers. The Court reasoned that from a graphicand phonetic point of view the marks are sufficiently different toavoid the risk of confusion. The “cade” and “paze” endings are sodissimilar that they confer a different character to the signs.

Calvin Klein Trademark Trust applied to register the marksCK in Classes 20, 21 and 24; CK (design) in Class 3; and CKCALVIN KLEIN in Classes 16 and 24. Club Ken S.R.L. opposed

31. Guanzhou Light Industrial Products Import & Export v. Schubert, Juan José,

Federal Court of Appeals of Buenos Aires, Room III, Case 4.510/98, decided February 6,2001.

32. Federal Court of Appeals of Buenos Aires, Room I, Case 547/98, decided February27, 2001.

33. Molinos Río de la Plata S.A. v. Mars Incorporated, Federal Court of Appeals ofBuenos Aires, Room I, Case 7298/98, decided March 6, 2001.

34. Parfums Rochas v. Avon Products Inc., Federal Court of Appeals of Buenos Aires,Room III, Case 19.610/96, decided March 22, 2001.

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claiming that such marks are confusingly similar to its trademarkapplications CK CLUB KEN in Class 25. The applications filed byCalvin Klein Trademark Trust to register the mark C CALVINKLEIN for goods in Classes 4, 8, 20, 21, 26, 27, 28 and 35 wereopposed by Club Ken S.R.L. based on its CK Jeans and CK ClubKen Jeans trademark applications in Class 25.

Calvin Klein Trademark Trust instituted a legal action to setaside the oppositions. The First Instance Judge held that theoppositions were ill founded and upheld the complaint. TheFederal Court of Appeals of Buenos Aires affirmed the decision onthe basis that there is no overlapping between Classes 4, 8, 20, 21,26, 27, 28 and 35 in respect of which the plaintiff had filed itsapplications and Class 25, where the defendant had its trademarkapplications.35

Laboratorios König S.A. applied to register the wordAVOMETIC for products in Class 5. Merial LLC opposed based onits mark IVOMEC covering only “antihelmintic preparations forveterinary use.” Later Laboratorios König restricted its applicationto “veterinary products” in Class 5, but Merial LLC did notwithdraw its opposition. Laboratorios König instituted a legalaction to set aside the opposition, but the First Instance Judgeheld that AVOMETIC and IVOMEC are confusingly similar anddismissed the complaint.

On appeal, the Federal Court of Appeals of Buenos Airesreversed the decision on the grounds that although the productshave the same application, AVOMETIC and IVOMEC are notconfusingly similar; the two terms comprise a different number ofsyllables (four and three) and letters (eight and six), the vowels aredifferent and those in common have a different position (AOEI andIOE), begin with a different vowel (A and I), have a differentspelling and sound, and also end in different syllables (TIC-MEC).36

Lancôme Parfums et Beauté et Cie applied to register themark LIP BRIO for products in Class 3. Instituto Sidus S.A.opposed based on its marks BIOLIP and DUOLIP in Classes 3 and5.

The First Instance Court dismissed the complaint institutedby Lancôme but on appeal the Federal Court of Appeals of BuenosAires reversed the decision. The Court decided that the word LIPis of generalized use in Class 3, and consequently, BIOLIP is aweak mark that deserves only restricted protection. It is sufficientto add a strong distinctive element to a weak mark to avoidconfusion and BRIO complies with such requirement. In the

35. Calvin Klein Trademark Trust v. Club Ken S.R.L., Federal Court of Appeals ofBuenos Aires, Room I, Case 1912/98, decided May 10, 2001.

36. Laboratorios König S.A. v. Merial LLC, Federal Court of Appeals of Buenos Aires,Room II, Case 3677/98, decided April 18, 2001.

Vol. 92 TMR 247

overall impression, which has to be analyzed when evaluating thelikelihood of confusion, BIOLIP and LIP BRIO are not confusinglysimilar. A first difference is in the position of the word LIP, placedin opposite parts of the marks. Furthermore, BIOLIP consists ofonly one word and LIP BRIO of two. Finally, the pronunciation ofthe letter R in BRIO attenuates the similarity with BIO andconfers an idea of energy or strength to the mark LIP BRIO whichpermits its coexistence with BIOLIP.37

In Campo Juan Alejandro v. Arte Gráfico Editorial ArgentinaS.A., the Federal Court of Appeals of Buenos Aires decided thatthe mark CLAIRE RION is not confusingly similar to the CLARINmark in Class 3.38

The First Instance Judge so decided, considering that thecosmetic and toiletries products in Class 3 for which the plaintiffhad filed its application were targeted to women in general whowould not relate them to the famous CLARIN newspaper mark,which in Class 3 was only a defensive mark. The Court alsoconsidered that the marks are not confusingly similar. Oneconsists of a word (CLARIN), which refers to a musical instrumentand the other is a fanciful two word name (CLAIRE RION), as ithas no meaning in Spanish.

On appeal, the Federal Court of Appeals of Buenos Airesupheld the decision on the same grounds. It also added that thepronunciation of CLAIRE RION was different than the one ofCLARIN, and that use of the CLAIRE RION mark does not affector damage the interests of the CLARIN owner. Much less, itcannot dilute the defendant’s mark.

Adidas A.G. applied to register the trademark ADIPRENE forshoes in Class 25. Ruben Marcelo Foiguel opposed based on itstrademarks NEOPRENE and NEOPRENE BASIC registered inthe same class. Adidas A.G. argued that the registration of thetrademark NEOPRENE was null and void because NEOPRENEconstituted the necessary or usual designation of the product, isdescriptive of its nature, qualities or function and, as such, is notcapable of registration according to Article 2 of ArgentineTrademark Law No. 22.362. With regard to the trademarkNEOPRENE BASIC, Adidas alleged that ADIPRENE was notconfusingly similar to it.

The First Instance Court declared the nullity of theNEOPRENE registration taking into account the evidence existingin the file. It also decided that ADIPRENE was not confusinglysimilar to NEOPRENE BASIC because they have peculiaritiesthat permit their coexistence. Their structures are visibly different

37. Lâncome Parfums et Beauté & Cie. v. Instituto Sidus, S.A. Federal Court ofAppeals of Buenos Aires, Room III, Case 3053/99, decided April 5, 2001.

38. Federal Court of Appeals of Buenos Aires, Room I, Case 3041/97, decided June 19,2001.

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and their evocative contents are also different. The Federal Courtof Appeals of Buenos Aires upheld the decision.39

An application filed by Daikin Industries Ltd. to register thetrademark VRV for air conditioning equipment, its parts andaccessories in Class 11 was opposed by Radio Victoria S.A. basedon its R.V. and ERREVE prior registrations in Class 11. The FirstInstance Judge dismissed the opposition and the Federal Court ofAppeals of Buenos Aires affirmed the decision. The Court ruled forDaikin on the grounds that Radio Victoria’s marks had expiredduring the proceedings, that the opposing R.V. mark was not R.V.but R.V.I. and that the defendant was using the R.V. markexclusively as a logotype on its commercial documentation (theproducts bear the HITACHI mark). Furthermore, the Court ofAppeals took into consideration the fact that the mark R.V. hadnot been included in the opposition, and consequently the signcould not be compared with the mark R.V. because it would exceedthe limit fixed in the opposition with detriment to the coherenceprinciple.40

Based on the mark MIRA DROR for all products in Class 3,Diana Norma Kahan opposed the applications filed by Bayer A.G.to register the trademark MIRA for preparations for animal carealso in Class 3, and pharmaceutical preparations for veterinarianuse in Class 5. The First Instance Judge dismissed the complaintlodged by Bayer on the grounds of overlapping of products inClasses 3 and 5 and confusing similarity of the marks MIRA andMIRA DROR. The Federal Court of Appeals of Buenos Airesreversed the judge’s decision based on the fact that veterinarianproducts in Class 3 and pharmaceutical products for veterinarianuse in Class 5 are not confusingly similar with the cosmeticproducts prepared by Ms. Kahan. According to the Court ofAppeals, the trademarks MIRA and MIRA DROR can peacefullycoexist because they refer to totally different products, withdifferent consumers and channels of trade.41

Rafael Salafia e Hijos S.R.L. applied for the registration of thetrademark ROCIO DEL VALLE for products in Class 33. Theapplication was opposed by Virginio Luis Saccani on the ground ofconfusing similarity with his mark SIDRA DEL VALLE registeredin the same Class 33. The First Instance Judge accepted thecomplaint filed by Rafael Salafia to set aside the opposition. The

39. Adidas A.G. v. Foiguel, Ruben Marcelo, Federal Court of Appeals of Buenos Aires,

Room III, Case 4673/94, decided August 16, 2001.

40. Daikin Industries Ltd. v. Radio Victoria S.A., Federal Court of Appeals of BuenosAires, Room III, Case 47803/95, decided August 16, 2001.

41. Bayer A.G. v. Kahan, Diana Norma, Federal Court of Appeals of Buenos Aires,Room III, Case 17.919.196, decided July 10, 2001.

Vol. 92 TMR 249

Federal Court of Appeals of Buenos Aires upheld the decision onthe ground that the marks were not confusingly similar.42

The Belgian oil corporation Petrofina S.A. applied to registerFINA (and design) for products in Classes 39 and 42. EdgardoDaniel Severino opposed on the ground of likelihood of confusionbased on its trademark MISTURA FINA registered in manyclasses. Mr. Severino, for at least ten years, operated in themanufacturing and selling of clothing and sport clothing. TheFederal Court of Appeals of Buenos Aires affirmed the FirstInstance Judge’s decision, holding that FINA is not confusinglysimilar to MISTURA FINA specifically because the products areabsolutely different, and also had different channels of trade.Furthermore, the defendant’s mark was only a defensive mark inClasses 39 and 42 and contained the word MISTURA that had aclear meaning in the Spanish language, which prevented areasonable possibility of confusion.43

Tremp S.A., owner of the trademark SEI for perfumes,cosmetics and toiletries in Class 3, opposed an application toregister the trademark ES (and design) filed by Escada A.G. for allproducts in Class 3. The First Instance Judge set aside theopposition, and the Federal Court of Appeals of Buenos Airesaffirmed the decision based on the fact that ES and SEI are notconfusingly similar. Graphically, the Court of Appeals consideredthat there is a difference. ES had applied for its mark with specialwriting whereas SEI is a mere word mark. Phonetically they arenot similar.44

In Canning 210 S.A. v. Trimboli, Hugo Antonio, the FederalCourt of Appeals of Buenos Aires affirmed a decision of the FirstInstance Judge allowing a complaint to set aside an oppositionfiled by Mr. Trimboli against the registration of the trademarkLECAF filed by Canning 210 for products in Class 25. Mr.Trimboli alleged that LECAF was confusingly similar to his markCAFE registered in the same class. The Federal Court of Appealsheld the marks are not confusingly similar. LE CAF is formed bytwo words and CAFE by only one. LE CAF has five letters andCAFE has four, with a different sequence in the vowels.Furthermore, the plaintiff’s sign has no meaning and CAFE has aclear conceptual content.45

42. Rafael Salafia e Hijos S.R.L. v. Saccani, Virginio Luis, Federal Court of Appeals of

Buenos Aires, Room III, Case 19.673/96, decided July 10, 2001.

43. Petrofina S.A. v. Severino, Edgardo Daniel, Federal Court of Appeals of BuenosAires, Room II, Case 5322/97, decided August 7, 2001.

44. Escada A.G. v. Tremp S.A., Federal Court of Appeals of Buenos Aires, Room II,Case 6374/98, decided July 5, 2001.

45. Federal Court of Appeals of Buenos Aires, Room I, Case 3659/99, decided August16, 2001.

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Café Bom Día Ltda. applied to register in Class 30 threetrademarks consisting of the design of a small cup of coffee placedon a dish with a small spoon. Productos Alimenticios El ContinenteS.A. opposed based on its trademark EL CONTINENTE. EL CAFEDE LA TACITA, also in Class 30.46 In its complaint, instituted toset aside the opposition, Café Bom Día stated that the trademarkEL CONTINENTE. EL CAFE DE LA TACITA had been declaredabandoned by the administrative authority. In its answerProductos Alimenticios admitted the abandonment, but using theright granted by the Argentine Trademark Act 22.362 (Art. 14),sustained the opposition alleging that the plaintiff’s applicationswere confusingly similar to other prior applications, which wereindividualized and also to the trademark EL CONTINENTE. ELCAFE DE LA TACITA, which was used de facto. The FirstInstance Judge decided that the signs were not similar andallowed the complaint. The Federal Court of Appeals upheld thedecision. After examining the evidence filed by the parties itconcluded that the representation of a small coffee cup is ofcommon use and cannot be monopolized. The rights conferred bysuch representation are limited to its peculiar characteristics andin this case the coffee cup used by the plaintiff was clearlydissimilar to the defendant’s cup. Furthermore, there was noevidence that Productos Alimenticios had used the trademark ELCAFE DE LA TACITA.

Arcor S.A. applied to register the trademark MACANITAS inClass 30. Establecimiento Modelo Terrabusi S.A. opposed on theground of confusing similarity with its trademark MACANUDAregistered also in Class 30. The First Instance Judge and theFederal Court of Appeals of Buenos Aires decided that the markscould coexist because they were not confusingly similar. They havedifferent meanings in the Spanish language.47

Based on its trademark FA-PLAC registered in Classes 17, 19and 20, Faplac S.A. opposed the application filed by AbelardoNorberto Dalul to register the trademark T-PLAK in Classes 16,19 and 40. The First Instance Judge decided that the oppositionwas ill founded. The Federal Court of Appeals of Buenos Airesupheld the decision. It was proven that “plac” is of general use inClass 19 and consequently cannot be monopolized. This implies thenecessity to pay special attention to the eventual differentelements that the marks have. In T-PLAK it is “T” and in

46. Café Bom Día Ltda. v. Productos Alimenticios El Continente S.A., Federal Court of

Appeals of Buenos Aires, Room II, Case 10.941/95, decided October 25, 2001.

47. Arcor S.A. v. Establecimiento Modelo Terrabusi S.A., Federal Court of Appeals ofBuenos Aires, Room I, Case 5220, decided October 25, 2001.

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FA-PLAC it is “FA,” and they are graphically and phoneticallydistinguishable as they do not share any one of their elements.48

Pharmer S.C.A. applied to register the trademarkCINEPLANETA for services in Classes 38 and 41. Planeta Cableopposed on the ground of confusing similarity with its trademarkPLANETA C.A.B.L.E. registered in the same classes.49 The FirstInstance Judge allowed the plaintiff Pharmer’s complaint, and theFederal Court of Appeals of Buenos Aires upheld the decision,rejecting the opposition. The Court stated that it was proven that“planet” or “planeta” are of common use in Classes 38 and 41 withthe result that, on the one hand, it is impossible to confer amonopoly on it, and, on the other hand, it is necessary to payspecial attention to the differentiating element.

I.B.9.b. No Similarity of Goods/Services

National Amusements Inc. applied to register the trademarkN-LOGO for services in Class 35. New Balance Athletic Shoe Inc.opposed based on its marks NB (design) registered in Classes 25,28, 18 and 41 and N (design) in Class 25.

The First Instance Judge accepted the complaint instituted byNational Amusements Inc. On appeal the Federal Court of Appealsof Buenos Aires50 upheld the judge’s decision on the grounds thatgoods in Classes 25, 28 and 18 are different from services in Class35, and are addressed to different consumers. Further, there is nosimilarity between the services in Class 41 and those in Class 35.

AUSTRALIA


In McCormick and Company Inc. v. McCormick (September2000),51 the applicant company opposed Mary McCormick’sapplication to register McCORMICK’S and McCORMICK’SINSTANT BATTER SIMPLY ADD WATER as trademarks forinstant batter. Mary McCormick had used McCORMICK’S as atrademark for instant batter since the early 1970s, but the bulk ofher sales had taken place in the state of Queensland. She appliedto register her trademarks on March 9, 1992.

48. Dalul, Abelardo Norberto y otro v. Faplac S.A., Federal Court of Appeals of Buenos

Aires, Room I, Case 1252/98, decided October 4, 2001.

49. Pharmer S.C.A. v. Planeta Cable, Federal Court of Appeals of Buenos Aires, RoomI, Case 1473/99, decided October 2, 2001.

50. National Amusements Inc. v. New Balance Athletic Shoe Inc., Federal Court ofAppeals of Buenos Aires, Room I, Case 550/9, decided June 26, 2001.

51. (2001) 51 IPR 102.

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In the trial before Judge Kenny of the Federal Court, theapplicant company relied on its prior registered trademarks andits reputation in those trademarks as grounds for opposingregistration of Mary McCormick’s trademarks, respectively underSections 44 and 60 of the Trade Marks Act 1995. The applicantcompany had various trademark registrations for composite marksthat prominently featured McCORMICK for spices, condiments,seasonings, extracts and essences for flavoring foods, mayonnaiseand other food dressings, herbs, sauces and gravies. The applicantcompany had commenced selling its goods in Australia in 1962.The volume of sales of goods bearing one or other of the applicantcompany’s registered trademarks was very large across allAustralian states, and expenditure on advertising and promotingthese goods was substantial.

Before Judge Kenny, Mary McCormick in effect conceded shewas seeking to register marks deceptively similar to the applicantcompany’s registered trademarks. Her Honour found that thegoods covered by the applicant company’s registrations were goodsof the same description as instant batter. As a result, MaryMcCormick’s application must be rejected unless she couldestablish honest concurrent use or other circumstances warrantingthe exercise of discretion to allow registration provided in Section44 of the Act. Mary McCormick gave evidence that she and herhusband chose McCORMICK’S for their instant batter productbecause it was their surname. She conceded that at that time sheknew of the applicant company’s goods and trademarks but saidthat she did not think her use of McCORMICK’S would result inany confusion. Judge Kenny held that as of March 9, 1992, MaryMcCormick’s use of her marks was an honest use, and after takingall the circumstances into account, her Honour concluded that shewould exercise discretion and accept Mary McCormick’sapplication on the basis that registration be limited to the state ofQueensland.

Judge Kenny, however, found in favor of the applicantcompany in relation to its reputation-based ground of oppositionunder Section 60. Her Honour held she was satisfied that theapplicant company had acquired a reputation in its registeredtrademarks in Australia before March 1992. Because of thatreputation, use of the marks Mary McCormick was seeking toregister would be likely to cause confusion. Most significantly,Judge Kenny held that under the new Trade Marks Act 1995,unlike the situation under the previous Act, Mary McCormick’shonest concurrent use could not operate as an exception to theSection 60 ground of opposition. Thus, Her Honour ordered thatMary McCormick’s trademark application be refused.

Vol. 92 TMR 253

III.A.2. Likelihood of Confusion

CA Henschke and Co and Ors v. Rosemount Estates Pty Ltd(October 2001)52 is a decision of the Full Federal Court. The firstappellant is a partnership which since 1958 has made and soldwine under the name “Hill of Grace.” Hill of Grace wine is a shirazwine made in low volume from grapes of old vines in a single,relatively small vineyard, and is a wine of exceptional quality andsells in the $170 range. The second appellants are the executors ofthe estate of CA Henschke and are the registered owners of theHILL OF GRACE mark which is registered in Class 33 in respectof wines, spirits and liqueurs. Rosemount is a large and successfulwine producer. It acquired a vineyard and winery already knownas HILL OF GOLD, and an earlier owner had made wine underthat name. In late 1997, Rosemount decided to producechardonnay, shiraz and cabernet sauvignon under the HILL OFGOLD mark with a projected price range of between $20-$25 withthe price likely to rise. The appellants sued Rosemount formisleading and deceptive conduct and trademark infringement.

The appellants’ case that the conduct of Rosemount wasmisleading or deceptive in contravention of the provisions in theTrade Practices Act 1974, proscribing such conduct, was notsuccessful. The decision on this part of the appellants’ case isinteresting in that the Full Court upheld the trial judge’s holdingthat none of the experienced wine writer, wine merchant orrestaurateur witnesses was proved to have appropriate expertiseto express an opinion on the question of whether consumers mightbe misled or confused by the HILL OF GOLD mark.

In the circumstances of this case, use of the HILL OF GOLDmark would infringe the second appellants’ registration if themark was deceptively similar to the HILL OF GRACE mark.Under Australian law, deceptive similarity is determined bycomparing the impression based on recollection of the registeredtrademark that consumers of ordinary intelligence and memorywould have with the impression such persons would get from thealleged infringer’s mark. The Full Court accepted that expressionsbeginning with “Hill of …” are almost invariably usedmetaphorically rather than as references to typographical orgeographical features, and that this was the case in relation to thetwo marks under consideration. However, the Full Courtconsidered that it was the word “Grace” that gave the appellants’mark its distinctive character and that the use of the word “Gold”turns the “Hill of …” phrase into one of a significantly differentcharacter. The Court reasoned that “Grace” and “Gold” sounddifferent and evoke quite distinct impressions. “Gold” has a muchmore earthbound, even mercenary, signification than “Grace.” The

52. (2001) 52 IPR 42.

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amazement that may be invoked by “grace” is of a character quitedifferent from any usual responses to “gold.” Thus, the Full Courtheld that the mark HILL OF GOLD was not deceptively similar tothe HILL OF GRACE mark.

The case is particularly important for its reiteration thatdetermining whether a mark is deceptively similar to anothermark, at least in infringement proceedings, essentially involves acomparison of the two marks. The test is thus not concerned withdetermining whether the alleged infringer’s use of his or her markis deceptive. Two previous Full Federal Court decisions had takenthe reputation of a trademark into account in determiningdeceptive similarity. The Full Court held that these cases areauthority for no wider proposition than that in assessing thenature of a consumer’s imperfect recollection of a mark, the factthat the mark, or perhaps an important element of it, is soubiquitous and of such long standing that consumers generallymust be taken to be familiar with it and with its use in relation toparticular goods or services is a relevant consideration. The FullCourt held that the HILL OF GRACE mark clearly did not fallwithin this category of mark.

In the case, Rosemount counterclaimed for removal of theHILL OF GRACE registration on the basis of nonuse. As indicatedabove, this mark is owned by the executors of the estate of CAHenschke (“the executors”) but is used by the appellantpartnership. It had not been possible for the executors to finalizeCA Henschke’s estate and thus distribute the HILL OF GRACEmark. The members of the appellant partnership, the executorsand the beneficiaries of the trademark registration under CAHenschke’s will are all immediate members of the Henschkefamily. Nevertheless, unless the appellant partnership is anauthorized user of the mark under the Act, a ground for removingthe HILL OF GRACE mark for nonuse will be made out. Underthe Act, a person is an authorized user of the trademark if theperson uses the trademark under the control of the owner of thetrademark. Control is nonexhaustedly defined to include controlover the quality of the user’s goods or services or financial controlover the user’s relevant trading activities. There was no evidencethat the executors exercised any relevant quality or financialcontrol over the appellant partnership, and, unlike the trial judge,the Full Court was not prepared to find that the executorsexercised sufficient control so as to constitute the appellantpartnership as an authorized user. The Full Court considered thatthe authorized use provisions, introduced by the new Trade MarksAct 1995, broadly represented a significant departure from theregime of the earlier legislation and pointed out that the newprovisions had not yet been substantively considered by a court.The Full Court thus preferred to find in favor of the appellants on

Vol. 92 TMR 255

the basis of the exercise of the discretion given by the Act to allowa trademark to remain registered even if a ground for removal fornonuse had been established. The Full Court in effect upheld thetrial judge’s decision on this point, the trial judge having beenparticularly influenced by the fact that the HILL OF GRACEtrademark is and will remain within the Henschke family.

AUSTRIA

I.B.1. Generic Names

The Supreme Patent and Trademark Board ruled that theword mark and word and device mark TABASCO was a generallyused, generic name that should not have been allowed registration.The trademark owner appealed to the Constitutional Court on thegrounds of violation of its constitutionally guaranteed rights toproceedings before a court of law, of inviolability of ownership, aswell as to fair proceedings. The appellant argued that Austria hadnot entirely implemented the European Community TrademarkDirective, and that therefore the Board should have sought apreliminary ruling from the European Court of Justice (“ECJ”).

This argument was dismissed by the Constitutional Court,which held that the legal situation on the date of registration(1968) was decisive for the cancellation of the mark. TheTrademark Directive had not then existed. The plea of violation ofownership from cancellation of the trademark was rejected by theConstitutional Court because ownership would have been violatedonly if the cancellation had been based on an unconstitutional lawor had been unlawful altogether. The plea of unfair behavior waslikewise rejected as unfounded because the Board had not changedits views in the repeated courses of law. Therefore theConstitutional Court dismissed the appeal in its entirety. Theruling that TABASCO is a generic name is now final withinAustria.53

I.B.2. Merely Descriptive Terms

In Austria there are several companies whose names arecomprised of the word MANPOWER. Some are affiliates ofManpower Inc., USA. Others are former licensees, while some donot have any legal association with Manpower Inc., USA. Thesecompanies’ legal disputes have been ongoing.

In one of these proceedings, Manpower Inc., USA, whichowns trademark rights to MANPOWER, demanded that acompetitor refrain from using the word MANPOWER in itscompany name. The Supreme Court pointed out that the courts

53. Constitutional Court, November 30, 1999, B 889/97—Pbl 2000, 144.

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were not bound by the opinion of the trademark authorities and,therefore, had to decide independently whether a mark wasregistrable. A court can deny registration even if the trademarkauthority affirms that it is distinctive and has registered the mark.

With respect to MANPOWER, the Supreme Court statedthat the mark had been descriptive on the date of the variousregistrations (1965, 1985, 1992) and should only have beenregistered if it had acquired distinctiveness, which the registrantwould be required to prove. Being an established fact thatManpower Inc. had used the trademark solely through licensees, itwould be decisive whether the licensees used the MANPOWERmark in a manner from which it can be concluded they acted forthe licensor. The case was referred back to the Court of FirstInstance to take further evidence.54

The Appeals Division of the Austrian Patent Office refused toregister the mark EURO for printed matter in Class 16,advertising in Class 35 and insurance and financial services inClass 36, finding it constituted an “exclusive indication in words”of the kind, contents and price conditions of the goods and servicesand thus of their property. EURO was excluded from registrationunder Section 4(2) of the Austrian Trademark Protection Act,which would require proof that the mark has acquireddistinctiveness. The trademark owner’s subsequent appeal to theAdministrative Court was unsuccessful.55

I.B.3. Not Merely Descriptive Terms

The Supreme Court ruled that the markWIRTSCHAFTSWOCHE, which is German for “business week,”was distinctive despite containing indications of the property andcontents of the magazine. The ground given was that the markpossessed a certain originality—a holding contrary to the rulingwith respect to FERNSEHWOCHE, which is German for“television week.”56 In that case, the title of a weekly supplementto a daily newspaper comprising the television program was heldmerely descriptive without being distinctive.

The Supreme Court ruled that although the designationWIRTSCHAFTSWOCHE suggested a certain quality of the weeklymagazine, it did not concretely or comprehensively describe it.Words that require a mental effort to recognize the quality of theproduct or that refer to the features of the product only in the

54. Supreme Court, January 18, 2000, 4 Ob 325/99v, MANPOWER—ÖBl 2000, 175.

55. Administrative Court, December 22, 1999, No. 99/04/0180—Pbl 2000, 172.

56. Supreme Court, December 3, 1991, 4 Ob 1/92— ÖBl 1992, 160.

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figurative sense—by suggestion—may be registered as distinctivecharacterizations.57

II.E. Forum Conflicts

Austrian customs authorities stopped the shipment ofallegedly counterfeit tee shirts marked POLO/RALPH LAURENthat were both sent from and headed to non-European Union(“EU”) countries. The question arose as to which Court of FirstInstance had local jurisdiction to bring an action for injunction.Legal precedents did not apply because previously jurisdictionarose in the district where the infringing object had arrived at itsdestination after its scheduled route of transport. No Austriancourt would have had jurisdiction for goods in transit.

However, the Supreme Court conformed to Community lawand ruled that the concept of arrival should be interpreted morebroadly, stating, “If goods in transit are stopped by the customsauthorities applying a Community regulation (in the present caseAntipiracy Regulation) in Austria, such goods have arrived at theplace of stoppage; this applies also if the consignor and theconsignee of the goods have their domiciles in third countries.”Therefore, the Court in whose district the goods were stopped inand stored is the Court of First Instance with jurisdiction over anaction for injunction.58

II.F. International Issues

The validity of the internationally registered FINALEtrademark had been contested for nonuse in Austria. In the courseof its rejoinder, the trademark owner stated it had restricted itslist of goods. However, the International Bureau of IntellectualProperty (WIPO) received the restricted list after the time limit forthe rejoinder had expired. As a result of an oral hearing, theproceedings were discontinued and each party was sentenced tobear its own costs.

The trademark owner appealed and demanded refund of thecosts of the Court of First Instance. The Supreme Patent andTrademark Board rejected this position on the grounds therestriction of the list of goods could become effective on receipt bythe competent authority at the earliest. However, it was receivedby WIPO only after the expiration of the time limit for submittingthe rejoinder.59

57. Supreme Court, September 13, 1999, 4 Ob 115/99m, Wirtschaftswoche—ÖBl 2000,

125.

58. Supreme Court, May 3, 2000, 4 Ob 118/00g, Polo T-Shirts III—ÖBl 2000, 237.

59. Supreme Patent and Trademark Board, March 29, 2000, Om 59 (Nm 177/97)—Pbl2000, 113.

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III.A.6. International Conventions

BUDWEISER brand beer from Ceske Budejovice is wellknown in Austria—just like all over Europe. The signsBUDWEISER, BUDVAR, and BUD are protected by numerousinternational trademark registrations. There is a bilateral statetreaty between Austria and CSSR on the protection of indicationsand designations of origin. The Czech Republic and Slovakia arethe successor states to CSSR.

Recently, a United States company registered AMERICANBUD in Austria for beer. It has a later priority date than theabove-mentioned marks. At about the same time, sales of the“Original American Budweiser” started in Austria. The owner ofthe earlier rights filed an action for injunction against such sales.The defendant argued that there was no likelihood of confusionbetween AMERICAN BUD and BUDWEISER or BUDVAR, andthat BUD had never been used as an abbreviation for, or as analternative reference to, Ceske Budejovice or Budweis in Austria.

However, the Supreme Court dismissed the defendant’sarguments, holding that the Austrian-Czech Agreement on Originsof 1976 protected the designation BUD, irrespective of whetherthere was a likelihood of confusion or deception. The agreementwas entered into before Austria acceded to the EU and thereforewas not affected by EU treaties. The protection of BUD did notviolate the principle of the free movement of goods under Article 28of the European Community (“EC”) Treaty as long as it was notproved that the term BUD used in connection with beer was notunderstood in the Czech Republic as indicating the origin. Suchbilateral protection conforms to the EC Regulation No. 2081/92 onthe protection of geographical indications and designations oforigin for agricultural products and foodstuffs, because thatRegulation would not afford Austria any protection of thedesignation BUD.60

III.A.11. No Likelihood of Confusion

The owner of three international word and device marks forROTHMANNS ROYALS, registered for unprocessed and processedtobacco, smokers’ articles, and matches, filed a petition forcancellation of the Austrian part of the international word anddevice mark KARELIA ROYAL for the same goods. The ownerbased its cancellation on likelihood of confusion, based upon thecommon word ROYAL(S) and likelihood of deception, based uponthe word KARELIA. The petition failed in both instances.

The Supreme Patent and Trademark Board found that thecommon weak portion ROYAL was less significant than the

60. Supreme Court, February 1, 2000, 4 Ob 13/00, Bud—GRUR Int 2000, 791.

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dominant portions ROTHMANNS and KARELIA. It denied anylikelihood of confusion or deception, stating Karelia is not knownas a tobacco producing country and the origination of goods fromthis area, if any, is not an essential factor in the decision to buy.61

III.B. Unfair Competition

In the spring of 1992, an ADOLF LOOS ARCHITECTURALCONTEST was advertised for the first time in Austria and gainedgreat publicity among experts. Adolf Loos was a famous architect.In the fall of 1992, a competitor registered the trademark ADOLFLOOS for the organization of contests and prize competitions andthen took action against the original organizer of the contest onthe grounds of trademark infringement. The Supreme Courtrejected the claim for injunction in all instances, as the trademarkacquisition proved to be contrary to public policy because of thecompetitor’s intention to impede. The Court stated, “The intent toimpede need not be the only motive of the applicant; it suffices if itis an essential motive.”62

III.F.5. Cancellation

A petition for cancellation was filed against the Austriantrademarks MANPOWER ARBEIT NACH MASS andMANPOWER. As the trademark owner had not submitted itsrejoinder within the time limit, the trademarks were canceledwithout further procedure. The trademark owner filed a petitionfor reinstatement on the ground that the owner thought therejoinders had been submitted, but a change in representativesand several cases of litigation caused the mistake to occur. Thepetition for reinstatement was rejected both in the Courts of Firstand Second Instances because the trademark owner did not provean unforeseeable or unavoidable event prevented it from observingthe original time limit. An excusable error or a lesser oversightcould also not be ascertained.63

The Austrian Patent Office ordered cancellation of theAustrian trademark STADLAUER because the trademark ownerhad not submitted a rejoinder to a petition for cancellation. In theperiod in question, the trademark owner was not capable of actingand a court had granted the Republic of Austria the right ofseizure of the mark in execution. Based on that title, the Republicof Austria sought reinstatement into the former time limit forsubmitting a rejoinder on the grounds that it had become the

61. Supreme Patent and Trademark Board, February 3, 2000 (Nm 5/97)—Pbl 2000, 85.

62. Supreme Court, November 9, 1999, 4 Ob 199/99i, Adolf-Loos-Architekturpreis—ÖBl2000, 71.

63. Supreme Patent and Trademark Board, October 11, 2000, Om 4,5/00 (Nm161,162/96)—Pbl 2000, 187.

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successor in interest of the trademark owner as a result of theseizure in execution, and that it could have proved that theprerequisites for cancellation did not apply if it had been informedby the trademark owner in good time. Reinstatement was refusedon the basis that when trademark rights are seized, the petitioningcreditor may request an authorization to exercise the rights of thedebtor and the creditor assumes the debtor’s legal position only bysuch an authorization or by an assignment of the debtor’s rights.However, such a concrete court order had not been requested orissued.64

A petition for the partial cancellation of the Austriantrademark MOZART was filed for nonuse. The trademark ownerfiled a timely rejoinder, unaware the petition for partialcancellation had been withdrawn. The Austrian Patent Office hadnot yet served the request for withdrawal on the trademark ownerat the time the rejoinder was submitted. Upon withdrawal, theNullity Division of the Austrian Patent Office closed theproceedings and awarded all costs to the trademark owner. Thepetitioner appealed unsuccessfully. The Supreme Patent andTrademark Board held that a respondent is not required to verifywhether a petition has been withdrawn before submitting arejoinder.65

A petition for cancellation of the Austrian trademark ASINTOhad been filed for nonuse. The trademark owner voluntarilycanceled the trademark within the term for submitting therejoinder, but demanded an award of costs because the petitionhad not given grounds for the cancellation. The Nullity Divisionthen awarded minimum costs under tariff item 1 of the Austrianlaw regarding tariffs of attorneys at law (Rechtsanwaltstarif-gesetz). On appeal, the Supreme Patent and Trademark Boardruled the trademark owner was entitled to a refund of costs undertariff item 2 on the basis of a minimum amount in controversy ofATS 500,000.00, because the rejoinder had neither been a merepetition for ascertaining the costs (tariff item 1) nor a statement ofdefense (tariff item 3A).66

III.J. Gray Marketing and Counterfeiting

The owner of the Austrian trademark BLAUSIEGEL (withlogo), registered for condoms, proceeded against the parallelimportation of goods from Germany by a trading company. The

64. Supreme Patent and Trademark Board, October 25, 2000, Om 3/00 (Nm 89/98)—

Pbl 2000, 188.

65. Supreme Patent and Trademark Board, June 28, 2000, Om 7/99 (Nm 31/97)—Pbl2000, 175.

66. Supreme Patent and Trademark Board, March 29, 2000, Om 6/99 (Nm 110/99)—Pbl 2000, 126.

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owner of the German mark had originally been associated with theAustrian owner, but had sold its German share to a thirdcompany. The Austrian and the German trademark owners hadentered a valid agreement on territorial protection of the mark.

The defendant argued it was lawfully permitted to selltrademarked products in Austria once these had been brought onto the market in Germany. This is known as the principle ofexhaustion, which is valid in the European Economic Area(“EEA”). While the Courts of Lower Instances ruled for thedefendant, the Supreme Court issued a cease and desist order,holding the exhaustion of national trademark law applies onlywhen the trademark owner itself lawfully brought the goods on themarket of another member state, or such was done with itsconsent. “An exhaustion of trademark rights is only justified if thetrademark owner also had the opportunity to control the quality ofthe goods labeled with its mark.” When trademark rights arevoluntarily split to independent companies, each former co-partnermay proceed against the importation of goods labeled with theregistered mark in that member state in which its trademarkrights exist.

The Supreme Court rejected the defendant’s argument thatthis constituted an inadmissible cartel, stating agreementsbetween former partners to refrain from using the mark on goodsin the other’s territory is not an anticompetitive agreement inbreach of Article 81 of the EC Treaty.67

After a parallel importer was prohibited from sellingpharmaceuticals under the marks PROSCAR and CO-RENITEC ina repacked form in Austria, it tried to offer the pharmaceuticals forsale in the original packaging with stickers covering the entiresurface. The packages had approximately the same appearance asthe prohibited repackaging.

The Supreme Court prohibited this practice as well, holdingthe decisive factor is that the parallel importer changed theoutward appearance of the goods. The Court stated, “The consumeror ultimate buyer must be sure that marked goods offered to himwere not changed by a third party without the trademark owner’sconsent in a preceding marketing step affecting the originalcondition of the goods.” It has been held even the mere relabelingof goods risks an adulteration of the guarantee of origin.

However, the trademark owner must prove the sale of therepackaged goods under the mark would not contribute to anartificial partitioning of the markets between member states.68

Hugo Boss AG granted an exclusive license to sell spectacleframes under its trademark BOSS/HUGO BOSS. The licensee

67. Supreme Court, September 28, 1999, 4 Ob 206/99v, BLAUSIEGEL—ÖBl 2000, 77.

68. Supreme Court, February 15, 2000, 4 Ob 33/00g Schuberverpackung II—ÖBl 2000,272—GRUR Int 2000, 788.

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established a distribution network across the EEA. When spectacleframes under the trademark BOSS/HUGO BOSS appeared on theAustrian market through another distribution channel, theexclusive licensee filed for an interim injunction. The defendantclaimed it could not completely trace back its supplier’sdistribution channel and that it had been assured that the goodshad been brought on the market in the EEA with the trademarkowner’s consent. Moreover, the defendant contested the licensee’sright to sue.

The Supreme Court held that the owner of an exclusivelicense that is effective against third parties is entitled to takeaction against infringers without the trademark owner’s consent,but the holder of a mere permission to use is not entitled to sue,nor can he be empowered to sue by the trademark owner.

Further, when the trademark owner cannot disclose the routeof goods from production to the first buyer, it must in any caseprove the existence of an EEA-wide distribution system, itsimpermeability and the fact that the goods have not come to thedefendant through that distribution system. It lies with thedefendant to allege and prove that he has the trademark owner’sconsent required under Section 10, paragraph 1, number 1 of theAustrian Trademark Protection Act.69 The Court referred the caseback to the Court of First Instance for further proceedings.

An Indonesian company wanted to pass tee shirts markedPOLO/RALPH LAUREN, suspected of being counterfeit, throughAustria into a third country. At the request of the trademarkowner, who is not domiciled in Austria, the goods were retained bythe Austrian customs authorities. The Supreme Court sought apreliminary ruling on whether the EC Antipiracy Regulationapplied. The ECJ decided the EC Antipiracy Regulation isapplicable, stating it applies where goods imported from a thirdcountry and in transit to another third country are temporarilyretained by the customs authorities of the member state at therequest of an owner alleging infringement, even where the owneris domiciled in a third state.70

V. Internet Issues

A publishing house announced the publication of a newmagazine with the title Format in the Fall of 1998. The same day,a competitor reserved the Internet domain name “format.at.” Thepublishing house, also the owner of the word and device markFORMAT registered for printed matter in 1980, sued thecompetitor for an injunction, alleging intent to impede. The action

69. Supreme Court, February 15, 2000, 4 Ob 29/00v, BOSS-Brillen—ÖBl 2000, 178—

GRUR Int 2000, 785.

70. European Court of Justice, April 6, 2000, C-383/98, Polo/Lauren—ÖBl 2000, 233.

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also demanded that the competitor agree to the cancellation andtransfer of the domain name “format.at.”

The Supreme Court granted part of the injunction on theground that the unauthorized use of a registered trademark as anInternet address for identical goods or services infringed thepublishing house’s trademark rights as well as its identicalcompany name.

As the trademark FORMAT had been used only for papergoods so far, the Supreme Court held that FORMAT in fact was arelatively fanciful name for paper goods, but denied any similaritybetween paper goods and magazines or printed media, in view ofthe production process and the completely different intended uses.

The Supreme Court refused to order cancellation of thedomain name because interim injunction proceedings could relateonly to a provisional regulation. An interim injunction must notcreate a situation that cannot be reversed, otherwise it would beimpossible to restore the original condition if the judgment in themain trial did not justify the interim injunction. The Court heldcancellation creates an irreversible condition, and therefore mustnot be issued in provisional proceedings.71

The owner of the magazine Gewinn, which is German for“profit,” filed an action for injunction against an organizer ofcompetitive games who had owned the domain name “gewinn.at”since 1997. The magazine, published since 1982, was theauthorized user of the GEWINN trademark registrations formagazines and news transmission. It also had owned the domainname “gewinn.co.at” since 1996. The plaintiff claimed likelihood ofconfusion and intent to impede.

As to confusion, the Supreme Court ruled that it was notalways present when identical or almost identical signs competewith each other. It found no likelihood of confusion between thepublisher of a business magazine and an organizer of competitivegames. In view of the wealth of information available on theInternet and because of the technical features of the Internet, anInternet user will usually not assume an economic ororganizational connection of all suppliers of Internet informationwho offer their information under similar domain names.

As to the intent to impede, the Supreme Court held domainnames are subject to principles of fair competition. As the Court ofFirst Instance had not taken sufficient evidence in that respect,the Supreme Court referred the case back to the lower court.72

71. Supreme Court, September 13, 1999, 4 Ob 180/99w, Format—ÖBl 2000, 72.

72. Supreme Court, August 17, 2000, 4 Ob 158/00i, gewinn.at—ÖBl 2001, 26.

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V.A. Domain Names

Freiheitliche Partei Österreichs, which is German for“Austrian Freedom Party,” has a homepage at “fpoe.at.” It sued theAustrian domain name administrator, “nic.at,” for giving thedomain “fpo.at” to a United States citizen. The claim, based on analleged violation of the name right, honor and business reputation,was dismissed in all three instances. The Supreme Court held theAustrian Freedom Party, as a legal entity, had the right of nameand had acquired distinctiveness. However, it denied that thedomain administrator was the proper defendant based uponprinciples developed for cases of indirect participation in anuisance. There, an abettor is defined as someone who deliberatelypromotes the offender. The Court held that the domainadministrator had no obligation of examination before, or inconnection with, the registration of a second-level domain.

It is interesting that the Supreme Court discussed underwhat conditions the administrator might be liable, namely, “if theaggrieved party, stating the relevant facts, demands intervention,and if infringement of the right is obvious also to a layman withoutany further inquiries.”73

A private person reserved the domain name “bundesheer.at,”which is German for “(Austrian) Federal Armed Forces,” underwhich it operated a platform on the topics of neutrality and thefederal armed forces. The owner expressly noted the homepagewas not operated by the Austrian Federal Ministry for Defense,and gave the Ministry’s official website address, “bmlv.gv.at.” TheSupreme Court dismissed the claim for interim injunction basedupon confusion and dilution. Although it confirmed that theRepublic of Austria enjoyed protection against unauthorized usewith respect to the term “Bundesheer,” the Supreme Court foundno confusion. The homepage expressly notifies viewers the websiteis not operated by the Federal Ministry for Defense and refers tothe latter’s website address. The Court found such a homepagewould not make it considerably more difficult for the interestedperson seeking information about the armed forces to find suchinformation on the Internet.74

A company with the surname “Ortig” in its company name wasasked by an enterprise specializing in reserving domain names if itwas interested in reserving the domain name “ortig.” When thecompany declined, the Internet provider applied for the domain“ortig.at,” which it alleged to be the acronym of OrganisationRegionaler Technologie- und Informationsgesellschaften, acompany that was never established. The bearer of the surnameobtained a preliminary injunction from the Supreme Court

73. Supreme Court, September 13, 2000, 4 Ob 166/00s, fpo.at—ÖBl 2001, 30.

74. Supreme Court, September 13, 2000, 4 Ob 198/00x, bundesheer.at—ÖBl 2001, 35.

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prohibiting the Internet provider from competing in business byusing the name “Ortig” to designate an Internet homepage or fromallowing a third party to do so. Accordingly, the Supreme Courtfound the use of the domain name “ortig.at,” without a right of itsown or a right derived from an authorized user, infringed the rightto the surname “Ortig.” The bearer of that name who alreadyoffers Internet services has an interest warranting protection toget access to the Internet under an address made up from hissurname.75

BENELUX

I.A.2. Assignments

In the TAE BO case,76 complications arose because thetrademark registrations at issue were in the process of beingassigned from plaintiff Billy Blanks to plaintiff NCP MarketingGroup Incorporated, but the plaintiffs had not filed a Deed ofAssignment with the Trademarks Office until just before thematter was heard on appeal.77 Because an application for recordalof the assignment was not timely filed with the Trademarks Office,the lower court refused to take the trademark registration intoaccount, and this decision was upheld by the Court of Appeal.Since the mark at issue was held to be generic, a timelyassignment would not have helped the plaintiffs anyway, but thematter clearly demonstrates the need to keep ownership ofregistrations up-to-date at all times.

III.A. Infringement and Defenses

Union des Associations Européennes de Football (UEFA) isthe owner of a number of registrations for EURO 2000 word anddevice marks. It sold its tickets for the 2000 soccer tournamentsthrough a closed system, which included sales via the nationalsoccer teams who resold them to interested fans. Tickets wereissued in the name of the purchaser and were non-transferable,except for special reasons. European Tickets 2000 B.V. offered topurchase these tickets on its website from anyone and then offeredthem for resale. It subsequently requested UEFA to change the

75. Supreme Court, December 21, 1999, 4 Ob 320/99h, ortig.at—ÖBl 2000, 134—GRUR

Int 2000, 1001.

76. Billy Blanks and NCP Marketing Group Incorporated v. Romeo’s Sports et al.,Court of Appeal, Bois-le-Duc, September 25, 2000, IER 4 (2001). The judgment in the firstinstance can be found at IER 57 (2000). See also discussion at infra III.A.12. Lack ofDistinctiveness.

77. Under Article 11 sub c of the Benelux Trademarks Law, an assignment cannot beheld against third parties until after the same has been made of record.

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record of ownership into the name of the new owner. UEFA thensued European Tickets 2000 B.V. for trademark infringement.78

The Court held that given the special security that soccertournaments require, the closed selling system is acceptable andconstitutes no abuse of law. The Court also held that UEFA cannotbe required to process name changes for a large number of tickets.Since national soccer teams are known to sell unnamed tickets toresellers, namely tour operators, a practice condoned by UEFA, thedefendant was enjoined from trading EURO 2000 tickets, exceptfor purchases it made from national soccer teams.

III.A.1. Famous Marks

In the case In re General Motors Corporation v. Yplon S.A.,79

questions were put before the European Court of Justice (“ECJ”)by the Commercial Court of Doornik on the exact meaning of thewords “well known” in the amended Benelux Trademarks Law.80

General Motors claimed its CHEVY mark, registered for motorcars since 1961, is well known. Defendant Yplon had used andregistered the same mark in 1991 for detergents and in 1988 forother goods in Classes 1, 3 and 5. In 1995, General Motors filed acancellation proceeding against Yplon. In order for General Motorsto be successful in its attempt to cancel the registration of aCHEVY mark for dissimilar goods, it had to rely upon its CHEVYmark being well known. The ECJ ruled that it suffices that thesenior mark is known to a large part of the relevant public in asubstantial part of the member state. In this connection, theBenelux area is to be considered one member state, not three.81 Asa result, it is not necessary to prove that a mark is well known inthe entire Benelux area.


Plaintiff is the owner of the trademark PASSENDALE in agothic lettering and a number of registrations in color of thetypical shapes of its well-known brown cheese (resembling a roundbread), including several cross-sections thereof. Defendant wasenjoined from use of its differently shaped but similarly coloredand structured cheese and from use of its trademark

78. Union des Associations Européennes de Football (UEFA) et al. v. European Tickets

2000 B.V., President of the District Court, The Hague, May 12, 2000, IER 44 (2000).

79. ECJ, September 14, 1999, IER 51 (1999), BMM 3 (2000).

80. Article 13A sub c of the Benelux Trademarks Law (1971), as amended by Protocoldated December 2, 1992, in force January 1, 1996.

81. Benelux consists of the three EU member states: Belgium, The Netherlands andLuxembourg. However, Article 1 of the Directive considers Benelux as the equivalent of onemember state. This is not illogical since the Benelux Trademarks Law also considers theBenelux as one indivisible area.

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BOERENGOUD (“farmer’s gold”), likewise in gothic letters.82 Thecase demonstrates that the registration of various trademarkelements of a composite mark can be very helpful.

In another matter, Gillette, owner of the trademarks SENSORand GILLETTE for razors and razor blades, was the defendant ina cassation appeal.83 The plaintiff, A&P, was marketing razorblades from a different source; but there were several references onits razor blade packaging to Gillette’s trademarks, such as, “Theserazor blades fit the Sensor apparatus from Gillette” and “Gilletteand Sensor are registered trademarks of The Gillette Company.”The Court of Appeal had ordered A&P to cease infringing Gillette’strademarks, except for the rider, “These razor blades do notoriginate from The Gillette Company. However, they can be usedwith Gillette’s Sensor holder.”

The Supreme Court referred the matter back to the Court ofAppeal, since it had failed to rule on the question whether therazor blades were an autonomous product or a part of the razor.The difference may seem trivial, but Article 13,6,c, BeneluxTrademarks Law permits use of a trademark of a third party toindicate a spare part or accessory for the trademark owner’sproduct. Consequently, if razor blades would be considered to bean autonomous product, the protection of Article 13,6,c would notbe available and any reference to Gillette would be held to be aninfringement. In addition, the Court of Appeal had failed toinvestigate whether the razor blades would also fit other brands ofrazors. A&P’s manufacturer made at least one other brand of razorblades. In such a case, a reference to the generic term by which theshaving system was known would have been sufficient, and anyreference to Gillette’s marks could only be intended to encroachupon the well-known Gillette brand.

Shortly before Christmas, defendant Xenos B.V. startedmarketing, as a gimmick, a candle in the size and shape of achampagne bottle, showing the word Champagne on a gold coloredlabel that resembled Champagne Moët & Chandon S.A.’s famouschampagne bottle. Champagne Moët & Chandon S.A. and theFrench Champagne Board sued to stop what they felt was not onlytrademark infringement but also dilution of the image ofchampagne. The Court held that the use of the word champagneon a candle was indeed detrimental to the quality image of

82. N.V. Kaasmakerij Passendale v. Vanhoutte Lode a.k.a. Damse Kaasmakerij,

President of the Commercial Court, Dendermonde, May 17, 2000, IER 53 (2000).

83. Hermans Groep B.V., a.k.a. A&P v. Gillette Nederland B.V. et al., Supreme Courtof The Netherlands, October 6, 2000, IER 23 (2001).

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champagne, and that the label infringed Champagne Moët &Chandon S.A.’s trademark.84

III.A.7. Symbols

There is nothing in the Benelux Trademarks Law thatregulates the use of the registered trademark symbol, ®, or similarsymbols. Cases that deal with the use or lack of use of the symbolare very rare. In the matter of Beecham v. Unilever,85 the Court ofAppeal considered the lack of use of the registered trademarksymbol adjacent to both the plaintiff’s and the defendant’s devices,which consisted of multicolored stripes of toothpaste. The omissionof the ® symbol, in addition to the dominant position of eachparty’s word mark, failed to convey the message to the purchasingpublic that either party’s device was intended to be a trademark.

III.A.9. Standing

Defendant Hyundai Motor Co. had previously enjoinedplaintiff Van Vliet Trucks Holland B.V. from importing intoBenelux Hyundai motor cars that were originally intended forAfrica.86 Thereafter, plaintiff had added a disclaimer to theHyundai cars offered for sale on its Internet site, stating, “OnlyExport Outside EU.” The disclaimer was only shown when theuser clicked on the Hyundai cars in the stock list. Hyundai MotorCo., overlooking the disclaimer, subsequently claimed someUS $60,000 in punitive damages. However, upon the plaintiff’srequest, the District Court enjoined defendant Hyundai Motor Co.from claiming punitive damages.87 The Court reasoned that theBenelux Trademarks Law limits itself to use of trademarks ineconomic intercourse within the Benelux area. Thus, an “offeringfor sale” must be understood to mean that such offering is intendedor has as a result that such goods are brought into the Beneluxmarket. This appeared not to be the case.

III.A.10. Nonuse of Trademark

The children’s television program “Teletubbies” is produced byplaintiff Ragdoll Productions (UK) Ltd., which is also the owner ofa number of Benelux and CTM registrations for the word mark

84. Comité Interprofessionel du Vin de Champagne and Champagne Moët & Chandon

S.A. v. Xenos B.V., President of the District Court, The Hague, December 6, 2000, IER 9(2001).

85. Beecham Group P.L.C. v. S.A. Unilever Belgium N.V., Court of Appeal, The Hague,June 29, 2000, IER 61 (2000).

86. See 91 TMR 292 fn 119 (2001).

87. Van Vliet Trucks Holland B.V. et al. v. Hyundai Motor Company et al., President ofthe District Court, The Hague, June 9, 2000, IER 43 (2000).

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TELETUBBIES. Shortly before the television program was firstaired in The Netherlands, defendant John AroenkumarJadnanansing applied for a Benelux trademark registration of thesame mark for goods not covered by the plaintiff’s registrations.The Court held that the use of the Teletubbies name on all kinds ofmerchandising products was not trademark usage but onlyreferred to the television program.88 As a result, the claim thatdefendant had registered its mark in bad faith failed, since badfaith can only exist vis-a-vis other trademarks. Subsequently, theDistrict Court ordered partial cancellation of the defendant’sregistration for the goods that were held to be similar to thosecovered by the plaintiff’s prior registrations. Curiously, eventhough the service “general advertising for teletubbies” appearedin the defendant’s registration, the plaintiff’s claim in this regardfailed as well.89 The case shows both that broad trademarkregistration of character marks is unnecessary and that suchregistrations can never be broad enough.

III.A.11.a. No Similarity of Marks

Beecham Group P.L.C. is the owner of a registered trademarkconsisting of a blue and white striped length of toothpaste,marketed under the trademark AQUAFRESH. Defendant S.A.Unilever Belgium N.V. marketed a green and white stripedtoothpaste under its trademark SIGNAL. The Court of Appeal, in avery detailed judgment, held that the picture of a length of blueand white toothpaste had only limited distinctiveness, and thedefendant’s picture of green gel with narrow white stripes was notan infringement.90

III.A.12. Lack of Distinctiveness

The European Soccer Association (UEFA) failed in an actionfor trademark infringement against Daewoo Motor Benelux B.V.91

Defendant had advertised that it would “sponsor” each purchaserof a new Daewoo automobile with an amount of “2000 EURO,”using a fancy device of a shield that was completely dissimilar tothe UEFA device. Defendant was not an official sponsor of theEURO 2000 soccer tournament, and UEFA sued for infringementof its registered EURO 2000 word and device marks. The DistrictCourt held that although EURO 2000 initially lacked any

88. See also the case of Disney’s MULAN, reported in 91 TMR 287 fn 97 (2001).

89. Ragdoll Productions (UK) Ltd. v. John Aroenkumar Jadnanansing, District Court,The Hague, August 2, 2000, IER 62 (2000). Appeal pending.

90. Supra note 85.

91. Union des Associations Européenes de Football et al. v. Daewoo Motor BeneluxB.V., President of the District Court, Amsterdam, June 26, 2000, IER 58 (2000).

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distinctiveness, as had previously been held by the Court ofAppeal,92 it had meanwhile acquired some distinctiveness byestablishing itself in the market. Nevertheless, the Court decidedthat the trademark EURO 2000 was still sufficiently descriptivethat the use of 2000 EURO within the context of defendant’sadvertising could not be considered to be an infringement.

Plaintiff Billy Blanks is the inventor of a kick-boxing fitnessmethod, marketed under the name TAE BO, which became ratherpopular in Benelux after its introduction in 1999, which wasfollowed by large scale advertising. Defendants’ fitness studiosused the name TAE BO for their fitness programs of the sametype. The District Court, upheld by the Court of Appeal, held thatsince the trademark owner had failed to use a generic term for itsTAE BO method, TAE BO had become the worldwide generic termfor this type of fitness method from the outset and refused therequested remedies.93 For the same reason, the BeneluxTrademarks Office had previously refused an application forregistration of TAE BO. Plaintiff had not based its claim upon itsown CTM registration for TAE BO in the initial stage, evenexpressly renouncing to do so, possibly since it assumed that thechosen forum was not eligible. Plaintiff tried to remedy this in theappeal, but the Court of Appeal rejected this augmentation of thebasis on which the claims were founded.

III.D.1. Civil Actions

Defendant Nike International Ltd. is the owner of the famousNIKE trademark in almost all countries of the world, with theexception of Spain. In Spain, another party obtained registration ofthe mark long before Nike International Ltd. made NIKE a famousglobal brand. Plaintiff Cidesport is a licensee of the Spaintrademark registration. The parties have had a long history oflitigation in Spain, but at the end of the day, Nike InternationalLtd. lost its right to the NIKE mark in that country.

Cidesport had a sample collection of NIKE shoesmanufactured in China. This collection was to be transported toSpain via KLM Airlines, which made the transport throughAmsterdam Schiphol Airport in The Netherlands. There the goodswere temporarily stored by customs waiting for furthertransportation to their final destination in Spain. The goods were

92. European Unique Resource Organisation B.V. v. Het Benelux-Merkenbureau,

Court of Appeal, The Hague, February 2, 2000, case number 99/680. Unpublished, but thecase can be viewed at the Internet site of the Benelux Trademarks Office at www.bmb-bbm.org (Dutch and French only). The seeming discrepancy with the earlier registration ofthe word mark by UEFA is caused by the fact that the Benelux Trademarks Office only hashad the authority to refuse the registration on the basis of lacking distinctiveness since1996.

93. Supra note 76.

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subsequently seized at the airport on the basis of the CommonMarket Anti-Piracy Regulation.94 The Regulation was held to beinapplicable since it only relates to goods that cannot be legallymarketed anywhere within the Common Market. The DistrictCourt held that there was no infringement on the basis of theBenelux Trademarks Law since the goods were not used ineconomic intercourse in Benelux, and there was no imminentthreat that Cidesport would dare to put the shoes into the Beneluxmarket or anywhere else in the Common Market, except in Spain.Subsequently, the seizure was lifted.95

III.F.3. Nullity

Unilever N.V. registered the taco-shape of its ice-cream bar,but only after it became acquainted with prior use of a similar ice-cream bar design by Artic N.V. On Artic N.V.’s appeal of theDistrict Court’s adverse decision, the Court of Appeal held thatUnilever N.V. obtained its registration in bad faith. However, theCourt of Appeal upheld the earlier decision of the District Courtthat Artic N.V.’s EL TACO mark infringed Unilever N.V.’sWINNER TACO mark. Artic N.V. had to cease use of its EL TACObrand, but the District Court’s initial recall order was consideredtoo severe and was subsequently reversed.96


The owner of the trademark KING CORN for bread productshad not used the mark for at least fifteen years. Nevertheless, themark is still well known in The Netherlands, mainly because of thehigh impact of past television commercials. Some token use wasmade of the mark in 1992 and 1993 that the District Court, andthe Court of Appeal, held to be insufficient to repair the loss oftrademark rights. Defendant registered the KING CORN markand successfully sued for cancellation of plaintiff’s KING CORNregistrations based upon nonuse.97 The Court of Appeal held thatalthough the mark may still be well known in Benelux, theplaintiff could not claim protection from Article 6bis of the ParisConvention, since the KING CORN mark was not protected in anyone of the other Union countries.98

94. Council Regulation (EC) No. 241/1999 amending Regulation (EC) No. 3294/94.

95. Comercial Iberica Exclusivas Deportivas S.A. a.k.a. Cidesport v. Nike InternationalLtd., President of the District Court, Haarlem, September 8, 2000, BIE 14 (2001).

96. Artic N.V. et al. v. Unilever N.V. et al., Court of Appeal, The Hague, November 2,2000, IER 7 (2001), BMM 85 (2000). Cassation appeal pending.

97. Reported in 90 TMR 248 fn 80 (2000).

98. Quality Bakers (Nederland) B.V. v. Stichting De Ambachtshof, Court of Appeal,The Hague, April 27, 2000, IER 47 (2000), BIE 99 (2000).

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III.F.6. Dilution

Plaintiff is the owner of the registered trademark WE, inaddition to a number of registrations of similar marks, such asHIM, YOU, HIJ (he) and ZIJ (she), for articles of clothing andother goods in Classes 3 and 18. Plaintiff runs 140 fashion shops inThe Netherlands, and its shops and trademarks are well known.Defendant had chosen the name ME for its new television andradio stations. The District Court held the marks to be dissimilar,but nevertheless enjoined the defendant from using its markbecause of the risk of dilution of the plaintiff’s marks.99 Bothparties aimed at approximately the same consumers, and theproposed life-style television programs would have had a greatimpact upon those consumers.

V. Internet Issues

In 1999, the District Court had enjoined the use of the magnetword INTERMEDIAIR (intermediary) on the Internet site of asearch engine. Searching for that word triggered an advertisingbanner that linked to the defendant The Monster Board B.V.100

Plaintiff VNU Business Publications B.V., owner of the trademarkINTERMEDIAIR for a well-known magazine, appealed. The Courtof Appeal reversed the decision of the District Court. It ruled thatthe word intermediar was only used descriptively in thedefendant’s Internet site.101 The judgment demonstrates thelimitations of descriptive trademarks, even after they have becomewell established.

V.A. Domain Names

As in most countries, many domain name conflicts have beenbrought to trial in Benelux. Most go in favor of the trademarkowners. Some typical cases are reported here. Many other casescan be viewed at www.domeinnaam-jurisprudentie.nl (mostlyreported in Dutch).

AC Passies Internationale Verhuisbedrijven B.V. is aninternational moving company. Its service mark PASSIES, whichtranslates as “passions,” is registered in Benelux. Gaos BVobtained the domain name “passies.com,” as well as a largenumber of other domain names, for the sole purpose of sellingthese for a profit. Gaos BV made no use of the “passies.com”domain name and its plea that it had the intention to use the

99. WE Netherlands B.V. v. RTL Veronica/De Holland Media Groep S.A., President of

the District Court, Utrecht, March 23, 2001, IER 24 (2001).

100. Reported in 91 TMR 293 fn 123 (2001).

101. VNU Business Publications B.V. v. The Monster Board B.V., Court of Appeal, TheHague, March 8, 2001, Mediaforum 5 (2001). Cassation appeal pending.

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domain for people with an “unspecified” passion was held to beonly made “pour besoin de la cause” since no serious preparationsfor such a site could be shown. The balance of the parties’interests, weighed by the District Court and upheld by the Court ofAppeal, went in favor of the moving company. In addition, theCourt of Appeal reasoned that the mere existence of the Internetsite could be considered to be an infringement of the PASSIEStrademark. Subsequently, the transfer of the domain name wasordered. Since the domain name was not obtained in bad faith,however, Gaos BV had to be compensated by AC PassiesInternationale for the costs of acquiring the domain name.102

Another case concerned the Amsterdam stock exchange (AEX),which is run by plaintiff Amsterdam Exchanges B.V. at theaddress Beursplein 5 in Amsterdam. BEURSPLEIN 5 is registeredas a service mark for financial services. In the course of the years,the address acquired secondary meaning.103 Defendant Blue 7 B.V.had claimed the domain name “Beursplein5.nl” which wasallegedly to become a portal for financial information. On appeal,the Court of Appeal considered the domain name to be aninfringement of AEX’s BEURSPLEIN 5 mark and ordered transferof the domain name to AEX.104

That the trademark owner cannot always rely on his priortrademark rights, and should therefore register necessary domainnames with some urgency, is shown in the following case.

Defendant Bouman Hotelbenodigdheden B.V. is one of manyofficial dealers of BRAVILOR coffee machines in The Netherlands.Bravilor Bonamat B.V. owns the registered trademarkBRAVILOR. Defendant obtained the domain name “bravilor.nl,”which was opposed by plaintiff. The District Court rejectedplaintiff’s claim for transfer of the domain name.105 The Courtreasoned that there was exhaustion of trademark rights, since thedefendant was an official dealer. Plaintiff already owned the“bravilor.com” domain name, and the Court considered that forthat reason there was no absolute necessity for plaintiff to alsoacquire the “bravilor.nl” domain name.

102. Gaos B.V. v. AC Passies Internationale Verhuisbedrijven B.V., Court of Appeal,

Amsterdam, December 7, 2000, IER 10 (2001).

103. Cf. Wall Street.

104. Amsterdam Exchanges N.V. et al. v. Blue 7 B.V., Court of Appeal, Amsterdam, July27, 2000, IER 63 (2000), BIE 21 (2001), BMM 4 (2000).

105. Bravilor Bonamat B.V. v. Bouman Hotelbenodigdheden B.V., President of theDistrict Court, Amsterdam, August 10, 2000, BMM 3 (2000).

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BRAZIL


Sterling Software Inc. filed a lawsuit against the Patent andTrademark Office (“PTO”), seeking to nullify the rejection of itstrademark STERLING SOFTWARE in old local Class 40.34,covering consulting and engineering design services for computersystems and software.106

The PTO’s rejection decision was based on Article 65, items 6,13 and 20 of the now revoked Brazilian Code of Industrial Property(Law No. 5772/71), which stated that generic denominations andtechnical terms were not registrable as trademarks.

The plaintiff argued that Sterling Software, Inc., a companyfounded in 1981 by its president, Mr. Sterling L. Williams, wasnamed after the owner based upon his own concepts. His firstname, rather than his surname, was chosen because the word hasrelatively stronger phonetic features when associated with theword “software.” The plaintiff also pointed out that SterlingSoftware, Inc. had obtained worldwide registrations, including inEnglish-speaking countries where confusion about the meaning ofthe term “sterling” might arise as the word itself also stands forsomething of high quality.

The PTO acknowledged the validity of the plaintiff’s allegationupon reexamination of the matter. Therefore, the 35th FederalCourt of Rio de Janeiro dismissed the case upon review on themerits and ordered that the STERLING SOFTWARE trademarkapplication be published for opposition.107

I.B.12. Famous Marks

Ebel International Ltd. (“Ebel Bermuda”) sued Ebel S/A (“EbelSwitzerland”) and the PTO, seeking to nullify the PTO’s rejectionof its trademark applications for EBEL INTERNATIONAL,FRESH AND FREE DE EBEL, BIO BALANCE DE EBEL, SPADE EBEL, MERCI DE EBEL, AQUA LOTION DE EBEL, EBEL BPLUS, MUSK DE EBEL and BEL NATUR DE EBEL. Theapplications were all in old local Class 03.20, covering perfume,hygiene products and toiletry articles in general. The rejection wasbased on the prior Brazilian registrations for EBEL in the name ofEbel S/A in old local Classes 34.20, 14.30, 09.45 and 09.05,covering articles of smokers, jewelry and imitation jewelry,reproduction, photographic, motion-picture, optical and teaching

106. Decision published in the Official Bulletin No. 1428, November 1, 1994 (Application

No. 817.773.215).

107. Decision published in the Official Gazette April 20, 2001.

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apparatus and instruments and chronometers, clocks/watches andtheir parts.

Ebel Bermuda raised the following arguments: (1) that themark EBEL constitutes part of its corporate name, which is thecombination of the name of the company’s partner EduardoBelmont; (2) that it had used the trademark EBEL to covertoiletry products for over fourteen years; (3) that the plaintiff’strademark EBEL is well known in Latin American countries; (4)that special protection is granted to the plaintiff’s trademarkEBEL, regardless of whether it had been previously applied for orregistered in Brazil, under the terms of Article 126 of the BrazilianIndustrial Property Law; and (5) that there is no likelihood ofconfusion by consumers between the plaintiff’s trademark EBELand the defendant’s trademark EBEL because the productsinvolved—toiletry products and watches—are not the same.

On the other hand, Ebel Switzerland alleged (1) that itstrademark EBEL is famous in Brazil, and therefore a specialprotection in all fields of activity is guaranteed, according to theterms of Article 125 of the Brazilian Industrial Property Law; (2)that the trademarks registered by the plaintiff reproduce itsfamous registered trademark for EBEL; and (3) that thecoexistence of the trademarks in question would mislead theconsumer and consequently depreciate the commercial value of itsregistered trademarks.

The PTO, also a defendant in the case, declared that Ebel S/Ahad the exclusive right to the mark EBEL in Brazil, which hadalso been the corporate name of the company since 1934. The 19thFederal Court of Rio de Janeiro rejected the plaintiff’s pleadingsand maintained the PTO’s decision not to allow registration.108

The Chase Manhattan Bank N.A. (“Chase”) applied to registerthe trademark CHASE and design in old local Class 16.20 to coverbooks, albums, paper patterns and printed matter in general.

The PTO found Chase’s application unsuitable based on theprior existence of an application for PAPERCHASE in Class 16 inthe name of Pulvitec S/A Indústria e Comércio covering paper,cardboard and goods made from these materials, printed matter,bookbinding material, photographs stationery, artists materials,paint brushes, typewriters and office requisites, instructional andteaching materials, plastic materials for packing, playing cards,printers’ type, and printing blocks.109 The trademark applicationfor CHASE and design was thus kept in abeyance until a finaldecision was rendered on the referred anticipation.

Nevertheless, Chase filed a petition with the Brazilian PTOcontesting the non-viability decision based upon the worldwide

108. Civil Action No. 2000.5101001493-5, July 18, 2000.

109. Decision published in the Official Bulletin No. 1292, September 5, 1995.

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fame of the mark CHASE and on the protection given to itscorporate name. The visual distinctiveness between the conflictingmarks was also pointed out.

Upon reexamination of the matter by the Trademark Board ofAppeals, the PTO acknowledged the validity of Chase’s allegationand granted registration to the CHASE mark.

I.B.21. Trade Names

The Mokiti Okada Foundation (“M.O.A.”) filed a lawsuitagainst M.O.A.—Associação Mokiti Okada do Brasil, requestingthat the latter refrain from using its trade name, subject to thepayment of 50 OTNs, which is an index factor.

Both groups invoke in their services liturgies and catechismactivities, and the name and teachings of Master Mokiti Okada.The fact is, however, that there is no explicit rule of law for thetrade names of non-economic companies; the legislationcontemplates only the trade name of companies that assume theperformance of organized business activities.

The Superior Court of Appeals found that the name MokitiOkada, while it identified a religious master, belongs to no one,and may be displayed, pronounced and used by all his followers.The plaintiff filed an appeal to the Superior Court of Justiceagainst the terms of such decision. The Superior Court of Justice110

did not accept the appeal, as there was no violation of the federallaw in the specific case, which is the requirement for considerationof an appeal by such Court. In this manner, the decision renderedby the Superior Court of Appeals became final.


Bradesco Seguros S/A sued the PTO and Idéia Corretora deSeguros S/C Ltda. in the 5th Federal Court of Rio de Janeiro,seeking a preliminary injunction to nullify the PTO’s act grantingIdéia’s registration for word mark TOP VIDA in old BrazilianClass 36.70, for services ancillary to or correlated with financialactivities.111 The preliminary injunction’s purpose was todetermine whether to enjoin the defendant’s use of the mark TOPVIDA. The defendant filed its application with the PTO onSeptember 18, 1998, and registration was granted on September30, 1999.

The plaintiff argued that: (1) the plaintiff has used the markTOP VIDA BRADESCO throughout the Brazilian territory since1997 to identify services related to life and accident insurance; (2)the plaintiff applied for registration of its mark on October 2, 1998,

110. Decision published in the Official Gazette of June 19, 2000, Appeal No. 66.529.

111. Decision published in the Official Bulletin No. 1502, of September 30, 1999.

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in old Brazilian Class 36.30 to cover insurance and reinsuranceservices, which matured into a registration;112 and (3) the plaintiffwrongly received a letter from Procon, the Brazilian ConsumerProtection Agency, requesting clarification on a sweepstake calledTOP VIDA, which was unrelated to plaintiff’s business, but whichwas being organized by the defendant.

The 5th Federal Court of Rio de Janeiro113 accepted theplaintiff’s pleading and granted the preliminary injunction,claiming that the similarity of the activities developed by theplaintiff and the defendant might confuse consumers, as evidencedby the confusion regarding Procon. The Court further found thatthe defendant’s improper use of the trademark would damage theplaintiff’s image.


Comercial Canes Ltda. filed a lawsuit against the PTO,seeking to nullify the PTO’s administrative act of rejecting thetrademark application114 for the mark CHICO MINEIRO in oldBrazilian Class 38.60 for food services. The PTO’s rejectiondecision was based on the ground that the mark CHICO MINEIROis confusingly similar to the mark CHICO HAMBURGER,registered in same Class 38.60 in the name of Lanches HamburgerFrancisco Ltda. The plaintiff argued that there is no conflictbetween the marks CHICO MINEIRO and CHICO HAMBURGER,because they have distinct expressions, and there is no risk oferror or confusion by consumers.

The PTO acknowledged the validity of the plaintiff’s allegationupon the reexamination of the matter by its Trademark Board ofAppeals.115 The PTO concluded that the marks in question aredifferent and not liable to create confusion among consumers.Considering that the PTO acknowledged the validity of theplaintiff’s position, the 22nd Federal Court of Rio de Janeiro116

dismissed the case upon judgment on the merits of the case.

III.B.1. Passing Off

Microsoft Corporation sought a writ of mandamus against thePTO’s Trademark Director’s decision to: (1) grant the trademarkapplication for the composite mark FINANCE PARA WINDOWS117

112. Decision published in the Official Bulletin No. 1460, of December 29, 1998.

113. Decision published in the Official Gazette of May 5, 2000, Civil Lawsuit No.2000.5101006514-1.

114. Decision published in the Official Bulletin No. 1111, of March 17, 1992.

115. Decision published in the Official Bulletin No. 1494, of August 24, 1999.

116. Decision published in the Official Gazette of May 25, 2000, Civil Lawsuit No.990000864-2.

117. Decision published in the Official Bulletin No. 1448, of September 22, 1998.

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in old Brazilian Class 40.34 to distinguish data processing serviceswith a disclaimer, establishing that there is no exclusivity in use ofthe word WINDOWS; and (2) grant the trademark application forthe word mark BUSINESS PARA WINDOWS118 in old BrazilianClass 40.34 to cover data processing services without a disclaimer.The plaintiff also requested the summons of the company PiovesanEngenharia e Informática Ltda., owner of these registrations.

Microsoft alleged that it is a company widely known in Braziland the world for developing computer software, especially itsoperating system WINDOWS. Moreover, the plaintiff is the holderof two registrations for the mark WINDOWS, which is a mark ofhigh commercial value.

The 21st Federal Court of Rio de Janeiro119 found thatMicrosoft is the owner of the mark WINDOWS and annuled theregistrations of FINANCE PARA WINDOWS and BUSINESSPARA WINDOWS because consumers could erroneously concludethat there was some relationship between the plaintiff and thedefendant.

III.D.1. Civil Actions

Wrangler Apparel Corporation and VF do Brasil Ltda. filed anaction for injunctive relief for search and seizure against AderoConfecções Ltda., alleging that the defendant has beencommercializing infringing products bearing the trademarkRANGLER. The 2nd Civil Court of Rio do Sul,120 state of SantaCatarina, granted the plaintiff a preliminary injunction for searchand seizure of the counterfeit goods.

On April 19, 2001, a raid was conducted and 8,285 infringingproducts were seized. The defendant has not yet presented arebuttal to the provisional remedy. However, the defendant’sattorney has contacted the plaintiff’s attorneys to negotiate asettlement.

III.F.1. Forfeiture

Société Anonyme Financière et Auxiliaire filed a lawsuitagainst De Millus Comércio Indústria de Roupas Ltda. and thePTO, seeking to reestablish the validity of the registration for theword mark SCANDALE in old Brazilian Class 25.10/20/30 to coverclothes and clothing accessories for common use, accessories foruse in sports and accessories for professional use. The PTOdeclared the forfeiture of the registration,121 as per the defendant’s

118. Decision published in the Official Bulletin No. 1440, of July 28, 1998.

119. Decision published in the Official Gazette of March 28, 2000, Writ No. 9800211578.

120. Decision published in the Official Gazette of April 18, 2001, Search and SeizureLawsuit No. 054.01.001675-2.

121. Decision published in the Official Bulletin No. 1071, of June 11, 1991.

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request. The plaintiff alleged that the forfeiture should not havebeen declared, because reasons of force majeure prevented its useof the mark, namely the issuance of certain circulars by theCentral Bank of Brazil suspending the emission of import licensesfor certain products, including the products commercialized by theplaintiff under the mark SCANDALE.

In its rebuttal, the PTO revoked its decision granted on theadministrative level and accepted the plaintiff’s allegation. The22nd Federal Court of Rio de Janeiro122 found that the prohibitionof importation of certain products by the government is alegitimate reason for the inapplicability of the forfeiture andsustained the plaintiff’s pleading.

V.A. Domain Names

In a lawsuit brought by a Brazilian company named E-Relacionamentos Consultoria e Assessoria em Informática S/CLtda. against a Brazilian individual, the 17th Civil Court of theCity of São Paulo ordered the defendant to withdraw itsregistration of the domain name “descasados.com” fromRegister.com in the United States and to pay a fine of R$1,000(approximately US$400) per day.123

The decision is an important precedent, as the Brazilian Courtfully understood that it was competent to decide disputes involvinga foreign domain name registration under which the registrant is aBrazilian resident and the damages caused by the undue use of thedomain name might be reflected within Brazil.

The decision was grounded on the plaintiff’s trademarkDESCASADOS in International Classes 35 and 41 as well as onthe plaintiff’s previous domain name “descasados.com.br”registered in Brazil on August 20, 2000.

The decision is also highly relevant for other trademarkowners because DESCASADOS is not a famous or well-knowntrademark, and the Court considered only the fact that suchexpression was previously used and applied for as a trademarkand as a domain name by the plaintiff.

The defendant appealed the decision, which is still underreview by the Court of Appeals of the State of São Paulo.

122. Decision published in the Official Gazette of May 24, 2000, Civil Lawsuit No.

94.0007793-9.

123. Civil Action No. 01.006.458-3, July 10, 2001.

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CANADA

I.A.1. Bases for Acquisition

The scope of “services” received consideration in Sim &McBurney v. Gesco Industries,124 an appeal of a Section 45125

cancellation proceeding. At first instance,126 a question arose as towhether the trademark STAINSHIELD, registered for use inassociation with “services of stain-resistant treatment forapplication to carpets, rugs,” was in use, where the evidence of useconsisted of advertising material indicating that theSTAINSHIELD treatment was applied to certain lines of carpetsold by the registrant. The Hearing Officer held that theadvertising matter was in respect of goods, not services; use withservices had therefore not been proven, and the mark should beexpunged.127 The matter was appealed to the Federal Court, TrialDivision, which held that the Hearing Officer had jurisdiction onlyto determine whether use had occurred. Having gone on to assesswhether the use related to goods or to services, the Hearing Officerhad exceeded her jurisdiction.128 Since there was evidence of use,the trial court allowed the appeal. The requesting party thenfurther appealed to the Federal Court of Appeal.

Dealing first with the question of jurisdiction, the Court ofAppeal noted that Section 45 directs that the question of use mustbe assessed with respect to each of the goods and servicesidentified in the registration.129 The Court of Appeal overruled thetrial judge, holding that the Hearing Officer had acted entirelywithin her jurisdiction.

However, the Court of Appeal then determined that theHearing Officer was incorrect in determining that use had notoccurred in association with services. In the eyes of the Court,implicit in the Hearing Officer’s decision was a determination thatuse can only occur with services independent of goods, and notservices that are incidental or ancillary to the sale of goods. TheCourt of Appeal found no support for this proposition in Section

124. (2000) 9 CPR(4th) 480 (Federal Court of Appeal).

125. Upon receipt of such notice, the registrant must submit evidence showing that thesubject mark had been used in the normal course of trade within the three year periodpreceding the date of the notice, or alternatively establish special circumstances excusingthe absence of use, failing which the registration will be canceled.

126. Decision rendered October 17, 1996 (unreported).

127. (1997) 76 CPR(3d) 289 (Federal Court, Trial Division).

128. In point of fact, the jurisdiction is that of the Registrar of Trade-marks. In §45proceedings, the Registrar’s responsibility is delegated to the Hearing Officer.

129. Section 45(3) requires a determination of use “either with respect to all of the waresand services specified in the registration, or with respect to any of those wares and services.”(emphasis added).

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4(2) of the Act,130 and cited jurisprudence supporting a contraryview.131 Here, the Court of Appeal held that although theregistrant’s services were ancillary to its goods, nevertheless, themark had been used with those services. Therefore, although theCourt of Appeal’s reasoning was entirely different than that of thetrial court, the appeal was rejected.

I.A.3. Licenses

Licensing and notices were central to the resolution of anopposition in Warner-Lambert Co. v. Lander.132 Warner-LambertCo. opposed Lander’s application to register ARCTIC ICE formouthwashes and rinses, relying in part upon registrations forARCTIC FRESH and ARCTIC MINT for use in association withmouthwash. Warner-Lambert Co.’s evidence was given by arepresentative of its Canadian subsidiary, Warner-LambertCanada. Sample invoices over a period of three and one-half yearsindicated in almost every case that Warner Wellcome, apartnership of Warner-Lambert Canada and another company,sold the mouthwash products to wholesalers and retailers. Thesample labels bore the following notice: “®™/MC Warner-LambertCo., mfr. by/fab par Warner-Lambert Canada Inc. for /pour WarnerWellcome, lic. use/sous lic….” The invoices and the form of noticewere consistent with evidence given on cross-examination,indicating that Warner-Lambert Canada manufactured theproducts and sold them to Warner Wellcome, which in turn soldthem to wholesalers and retailers. Warner-Lambert Canada heldan exclusive license for use of Warner-Lambert Co.’s marks inCanada; Warner Wellcome was not a licensee of those marks.

In considering whether Lander’s mark was confusing withWarner-Lambert Co.’s registered marks, and thereforeunregistrable, the Board focused on Warner-Lambert Co.’sevidence of use. The Board held that the notices on packaging andthe invoices indicated that Warner Wellcome, as the entity forwhom the goods were manufactured, would be perceived by thepublic as the source. Warner Wellcome, therefore, was the user ofthe marks. Since Warner Wellcome was not a licensee, its use

130. Section 4(2): “A trade-mark is deemed to be used in association with services if it is

used or displayed in the performance or advertising of those services.”

131. In Kraft v. Canada (1984), 1 CPR(3d) 457 (Federal Court, Trial Division), the courtalso concluded that “services” did not exclude those which were incidental or ancillary to thesale of the goods, noting the absence of a definition of “services” in the Act. The court alsoconsidered the views of the United States Court of Customs and Patent Appeals inAmerican International Reinsurance v. Airco, 197 U.S.P.Q. 69 (C.C.P.A. 1978), whichliberally construed the term “services,” taking the view that the absence of a definition ofservices in the Lanham Act permitted this latitude.

132. (2000) 10 CPR(4th) 112 (Trade-marks Opposition Board).

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could not accrue to the benefit of Warner-Lambert Co.133 TheBoard also noted as an additional surrounding circumstance134

that extensive use of the Warner-Lambert Co.’s marks by anunlicensed third party had undermined the distinctiveness of thosemarks, such that small differences would suffice to distinguishLander’s marks. The Board determined that the marks were notconfusing. The Board noted that if the alleged use had been shownto have been made by Warner-Lambert Co. or Warner-LambertCanada, the first ground would likely have been decideddifferently. This case serves as a reminder that a form of noticeshould be crafted to fit the circumstances.

The Federal Court of Appeal considered licensing issues in EliLilly v. Novopharm.135 Eli Lilly sold fluoxetine hydrochloride, morecommonly known by the trademark PROZAC, in capsules whichwere half green and half either cream or pale gray, depending onthe dosage. Eli Lilly’s Canadian subsidiary (“EL Canada”)marketed these products in Canada under license. When Eli Lilly’spatents for fluoxetine hydrochloride expired, Novopharmcommenced marketing the drug in capsules of essentially the sameappearance; Eli Lilly sued for passing off.

A 1991 agreement between Eli Lilly and EL Canada gave thelatter the right to use certain identified trademarks, which did notinclude the trade dress of the PROZAC capsules. EL Canada wasgranted a further license with respect to formulas, processes,designs and other scientific and technical data, and also “thelabelling and packaging of [the licensed products].” The FederalCourt, Trial Division, had determined that the trade dress was notused under license, because it was not identified within theschedule of trademarks. The Federal Court of Appeal disagreed,finding that the further license regarding “labelling andpackaging” was not necessarily limited to product containers, butextended to the capsules themselves. At trial, Eli Lilly hadpresented evidence that it had directed EL Canada to have thecapsules appear in a certain size, shape and color. The trial courthad accepted that Eli Lilly had exercised control, but concludedthat the parties had not treated these elements of appearance as atrademark. The Federal Court of Appeal felt that this approachwas too narrow, believing that the parties had worded the licensebroadly so as to allow them to protect (and presumably to assert

133. The implied position of the court was that the evidence cast Warner-LambertCanada as a mere manufacturer (in effect, a co-packer).

134. Section 6(5) of the Act sets out several specific factors to be considered in theassessment of confusion, but also provides that the tier of fact “shall have regard to all thesurrounding circumstances” so that the list of relevant factors is not closed. See, e.g.,Panavision v. Matsushita Electric Industrial, (1992) 40 CPR(3d) 486, 494-95 (Federal Court,Trial Division).

135. (2000) 10 CPR(4th) 10 (Federal Court of Appeal), upholding (1997) 73 CPR(3d) 371(Federal Court, Trial Division).

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rights in) intellectual property rights that might not have beenclearly understood or defined at the time of entering into theagreement.

Eli Lilly and EL Canada had, in 1995, entered into a furtheragreement, including a “confirmatory” license which expresslyreferenced “the trade dress, i.e., the colour, size, shape and otherindicia….” The trial court had given very little weight to theconfirmatory license. The Federal Court of Appeal took the viewthat if its interpretation of the original license was overly broad,the confirmatory license completely cured any defect. The Court ofAppeal noted it had previously held that Section 50(1) allowed alicensor to rely upon an existing license agreement to cure a loss ofdistinctiveness arising from the licensor’s failure to adhere to theregistered user scheme that Section 50(1)136 replaced. This caseappears to go further by endorsing the effectiveness of retroactivelicenses.

In Consumer Electronics v. Radio Shack Division of TandyCorp.,137 the Hearing Officer considered summary cancellationproceedings in respect of Tandy’s registration for NOVA forloudspeakers and headphones. The evidence showed that InterTanCanada had sold headphones with the NOVA trademark inCanada. The evidence established that this company used thetrademark under license from Radio Shack, but there was noevidence regarding control, and the Hearing Officer felt unable toconclude that the requirements of Section 50(1) of the Act had beensatisfied.138 She then went on to consider the effect of Section50(2).139 An instruction and warranty leaflet accompanying theproduct bore the following notice:

Manufactured in China. Imported for/Importe PourInterTAN Canada Ltd., Barrie, Canada,L4M 4W5InterTAN Australia Ltd., …InterTAN U.K. Ltd., …

136. See, e.g., Enterprise Rent-A-Car v. Singer, (1996) 66 CPR(3d) 453 (Federal Court,

Trial Division), aff’d (1998) 79 CPR(3d) 45 (Federal Court of Appeal).

137. (2001) 14 CPR(4th) 390 (Hearing Officer).

138. Section 50(1): “For the purposes of this Act, if an entity is licenced by or with theauthority of the owner of a trade-mark to use the trade-mark in a country and the ownerhas, under the licence, direct or indirect control of the character or quality of the wares orservices, then the use, advertisement or display of the trade-mark in that country as or in atrade-mark, trade name or otherwise by that entity has, and esteemed always to have had,the same effect as such a use, advertisement or display of the trade-mark in that country bythe owner.”

139. Section 50(2): “For the purposes of this Act to the extent that public notice is givenof the fact that the use of a trade-mark is a licenced use and of the identity of the owner, itshall be presumed, unless the contrary is proven, that the use is licenced by the owner of thetrade-mark and the character or quality of the wares or services is under the control of theowner.”

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REGISTERED TRADEMARK LICENSED BY RADIOSHACKDIVISION OF TANDY CORPORATION (U.S.A.)Although this notice did not clearly state that it is related to

the NOVA trademark, the Hearing Officer concluded that it wassufficient for the purposes of Section 50(2). Accordingly, theregistration was maintained.


Two decisions, Dairy Farmers of Canada v. Hunt-Wesson140

and Ralston Purina Canada v. H.J. Heinz Co. of Canada,141 shedlight on the circumstances in which a trademark will be consideredunregistrable due to descriptiveness. In the Dairy Farmers case,142

the Federal Court, Trial Division, held that the trademark must beconsidered as a whole, and not as it appeared on labels orpackaging. Dairy Farmers was appealing the Registrar of Trade-marks’ (the “Registrar”) dismissal of its opposition to Hunt-Wesson’s application for GOÛT DE BEURRE COMME AUCINÉMA (which translates loosely as CINEMA BUTTER TASTE)for popping corn. According to the Court, the Registrar’s conclusionwas reasonable, because the descriptiveness of the trademark wasconsidered as a whole, and the trademark was not simply GOÛTDE BEURRE (BUTTER TASTE) but GOÛT DE BEURRECOMME AU CINÉMA. The mark was considered to have tooimprecise a meaning to be clearly descriptive of popcorn. Rather,the mark as a whole merely suggested that Hunt-Wesson’spopping corn had some type of butter flavor, and consumers wouldnot be misled into thinking that dairy butter was a componentthereof. Dairy Farmers’ survey evidence was rejected because thequestions it comprised mandated a consideration of the packaging.The issue was whether the trademark per se was descriptive, notwhether the trademark as it appeared on a particular label orpackage was descriptive.

In the Ralston Purina case,143 the Board provided guidance asto the form of evidence necessary to support an allegation ofdescriptiveness. Ralston Purina alleged that Heinz’s trademarkMEDI CAL and design was unregistrable due to descriptivenessbecause it was the phonetic equivalent of “medical.” RalstonPurina argued that many pet owners want to alter their pets’ dietin an effort to maintain health or to attempt to manage a disease.The opposition failed because Ralston Purina failed to address howthe average Canadian would respond to Heinz’s mark. Even if it

140. (2000) 8 CPR(4th) 20 (Federal Court, Trial Division). Notice of appeal filedSeptember 14, 2000 (Court File No. A-545-00).


142. Supra note 140.


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was assumed that diets are altered to maintain health, this did notmean that the average Canadian purchaser of pet food understoodRalston Purina’s mark to be the word “medical.”

I.B.4. Geographical Names

While General Motors of Canada v. Decarie Motors144 relatedprimarily to cancellation proceedings, the court considered severalpoints relating to registrability of a geographical name. DecarieMotors’s application to register DECARIE was initially refused onthe basis that DECARIE was primarily merely a surname, andtherefore unregistrable, in light of Section 12(1)(a) of the Act.145

Decarie Motors responded by filing affidavit evidence, pursuant toSection 12(2).146 The affiant, a member of the family that hadowned Decarie Motors for many years, gave evidence that he was“not aware of anyone having the surname ‘Decarie’ being in thebusiness of selling, leasing, repairing or servicing motor vehicles.”Eventually, the registration was granted.

Later, in Federal Court proceedings to cancel the DECARIEregistration, General Motors tendered evidence that DecarieMotors had taken steps to restrain the third party use of the tradenames “Passport Decarie Automobiles” and “Decarie Saturn SaabIzuzu.” General Motors alleged that in light of that knowledge, theaffidavit filed in the course of prosecuting the trademarkapplication constituted a fraudulent misrepresentation. TheFederal Court of Appeal disagreed. There was no evidence that theanswer was false.147 The affiant had responded directly to thelimited question posed by the Examiner based on the statutoryrequirements. General Motors also argued that Decarie Motors hasfaced a statutory duty to provide other information known to itregarding other dealers using the proposed mark. Again, theFederal Court of Appeal disagreed, stating that neither thelegislation nor the case law imposed any such duty.


The Federal Court of Appeal has clarified the manner in whichthe test of the likelihood of confusion should be applied, in a


145. Section 12(1)(a): “Subject to Section 13, a trade-mark is registrable if it is not aword that is primarily merely the name or the surname of an individual who is living or whohas died within the preceding thirty years.”

146. Section 12(2): “A trade-mark that is not registrable by reason of paragraph (1)(a) or(b) is registrable if it has been so used in Canada by the applicant or his predecessor in titleas to have become distinctive at the date of filing an application for its registration.”

147. General Motors submitted no evidence that anyone with the surname Decarie wasinvolved in the sales of automobiles, let alone evidence that the affiant has been aware ofsuch involvement.

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bilingual context, in Smithkline Beecham v. Pierre FabreMédicament.148 Pierre Fabre applied to register IXEL for use withantidepressants. Smithkline Beecham opposed on the grounds ofconfusion with its registered trademark PAXIL. The Board hadconcluded that confusion should be determined with reference tothe average bilingual anglophone or francophone consumer. Onappeal, the Trial Judge had concurred with the Board. On furtherappeal, the Federal Court of Appeal disagreed, holding that thetest for confusion required reference to the perceptions ofunilingual anglophone and francophones. The Court of Appealnoted two prior decisions of the Federal Court, Trial Division.149 Ineach of those cases, after assessing confusion in unilingualcontexts, it was held necessary to consider the impact of theapplicant’s mark and the opponent’s mark or marks upon abilingual person. The Court of Appeal accepted that suchassessment might be appropriate in addition to, but not in place of,assessment of the reaction of unilingual anglophone andfrancophones. The court allowed the appeal, but felt that it couldnot render a decision based on the record, and accordingly sent thematter back to the Trial Division for determination.


The case of Canada Post Corporation v. PaxtonDevelopments150 turned principally on survey evidence. CanadaPost, relying upon its extensive family of MAIL marks, some ofwhich were registered for use in association withtelecommunication services, opposed Paxton’s application toregister VIDEOMAIL for use in association with telecommunica-tions services. The Board concluded that the subject mark wouldmore likely be associated by consumers with terms such as“voicemail,” “electronic mail” or “e-mail,” rather than CanadaPost’s marks, and rejected the opposition. On appeal, Canada Postfiled survey evidence. Half of the consumers surveyed were askedto identify the offeror of a telecommunications services identifiedby VIDEOMAIL. The remaining participants were asked the samequestion with respect to the mark VIDEOROUTE.151 In the survey,six percent of respondents identified Canada Post as the source ofVIDEOMAIL services, and a further three percent identifiedCanada Post as a second choice. Only 0.3 percent of respondents

148. (2001) 11 CPR(4th) 1, reversing (2000) 8 CPR (4th) 389 (Federal Court, Trial

Division).

149. Boy Scouts of Canada v. Alfred Sternjakob, (1984) 2 CPR(3d) 407 (Federal Court,Trial Division) and Scott Paper v. Beghin-say, (1985) 5 CPR(3d) 225 (Federal Court, TrialDivision).

150. (2000) 9 CPR(4th) 429 (Federal Court, Trial Division).

151. The latter half formed the control group for the survey.

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identified Canada Post as a first choice for VIDEOROUTEservices, and no other respondents identified it as a second choice.Rogers Cable, a cable television services provider, was identified asthe provider of VIDEOMAIL services by 9.3 percent of respondentsas a first choice, and by a further 4.1 percent as a second choice.Rogers Cable was also identified as a first choice by 7.6 percent ofthe respondents to the questions regarding the VIDEOROUTEtrademark.

The threshold issue was the percentage of consumers thatmust be misled before confusion would be established. The courtindicated that the quantity must be “substantial,” more than deminimus, but less than a majority. In this particular case, thecourt determined that 9.3 percent identifying Canada Post as thesource of VIDEOMAIL services, in light of the negligibleidentification of Canada Post as a source of VIDEOROUTEservices (but notwithstanding the greater identification withRogers Cable) was sufficient to evidence actual confusion. Afteraccounting for the other relevant factors, the court determinedthat the marks were confusing, and allowed the appeal.


In Stink v. Salt & Pepper Holdings,152 the Federal Court, TrialDivision, permitted Salt & Pepper, the Canadian owner of anItalian restaurant, to register THE STINKING ROSE, whichtrademark was identical to the name of an Italian restaurant inSan Francisco. Stink was appealing the Board’s finding that itsmark was not well known in Canada in 1993 when Salt & Pepperopened its restaurant. Stink’s argument that its mark was wellknown was based upon the following activities in Canada: (a)several instances of actual confusion by visitors to Salt & Pepper’srestaurant; and (b) promotional pieces and articles, includingtravel brochures, newspapers and books, which mentioned Stink’srestaurant.

The court rejected Stink’s arguments because: (a) four articlesin Canadian publications that mentioned Stink were really aboutother subjects and made only one-sentence references to Stink’srestaurant; and (b) several articles in American publications thatmade only a passing reference to Stink’s restaurant received onlyminimal circulation in Canada. In conclusion, it could not be saidthe Board’s findings of fact were unreasonable, that is, clearlywrong. Stink was in fact asking the court to re-weigh the factualfindings of the Board, which the court refused to do.

152. Federal Court, Trial Division (Justice Lemieux), May 18, 2001, Court File T-406-00

(unreported).

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In Compagnie Génerale des Établissements Michelin v.Continental General Tire Canada,153 the court heard Michelin’sappeal of the Board’s decision to reject an opposition to a series ofapplications filed by Continental for six trademarks comprising XP2000 alone or in conjunction with other elements, and two markscomprising AMERI WAY XT, all for use with tires. Michelinopposed, relying upon 35 registered marks consisting of the letterX plus other letters and numbers, all for use with tires. The mainpoint of interest relates to the Board’s characterization of theparties’ marks as “secondary,” as they were used in conjunctionwith “primary” marks, namely MICHELIN and GENERAL TIRE.Michelin argued, and the court agreed, that it was not bound touse its X marks in this manner. Nevertheless, the court said it was“common experience” that marks composed of letters or acombination of letters and numbers, in the manner of a productcode, are often distinguished only in small ways. The courtexpressed the view that consumers may well exercise more care indealing with such marks, and may also seek out furtherdistinguishing matter, particularly the primary marks. The otherfactor that appeared to weigh most heavily upon the Registrar andthe court was evidence of ten years of contemporaneous use withno corresponding evidence of actual confusion. There was alsosome evidence of third party use of X marks with tires.


In Rover Group v. Victor,154 the Board found that a trademarkowner wishing to prove its mark is famous must tender surveyevidence to counter low sales volumes and advertisingexpenditures. Rover was opposing Victor’s application for LANDROVER RANGE ROVER for blankets, cushions and towels.Rover’s opposition was based on its registrations for trademarksfor automobiles comprising LAND ROVER and RANGE ROVER.Rover alleged that its marks were famous. From 1990 to 1997,total Canadian sales of LAND ROVER vehicles, including theRANGE ROVER model, comprised 3765 units. Advertisingexpenditures since 1990 were in excess of $6,000,000 (CDN). Thesesales figures were described by the Board as “not large relative toother automobile distributors in Canada.” In regard to Rover’s“limited sales and far from extensive advertising” the Boardconcluded that the only way Rover could demonstrate that itsmarks had become famous in Canada was by way of survey

153. (2000) 8 CPR(4th) 417 (Federal Court, Trial Division), upholding (1996) 74 CPR

(3d) 115 (Trade-marks Opposition Board).


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evidence. The evidence of record was deemed inadequate for thispurpose. In the end, Victor’s application was refused becauseconfusion with Rover’s less-than-famous marks was likely.

In Asahi v. Pentax,155 the Board concluded that PENTAX forpumps would not be confused with the familiar camera markPENTAX. The Board accepted that Pentax’s PENTAX mark hadbecome well known in Canada. However, the resemblance betweenthe marks and the renown of Pentax’s PENTAX mark were notnecessarily determinative of the issue of confusion. The Boardadopted the Federal Court of Appeal’s reasoning in United Artistsv. Pink Panther Beauty156 that the wide scope of protectionafforded by the fame of an opponent’s mark only becomes relevantwhen applying it to a connection between the parties’ trades andservices, stating, “No matter how famous a mark is, it cannot beused to create a connection that does not exist.” The Boardconcluded there was no reasonable likelihood of confusionconsidering, in particular, the divergence between the parties’goods and that Asahi’s pumps were purchased by sophisticatedbuyers after a careful consideration of the product’s technicalspecifications.

I.B.20. Color/Shape

An opposition to a distinguishing guise application to protectthe shape of a pharmaceutical tablet was the subject of GlaxoWellcome v. Novopharm.157 Glaxo Wellcome marketed the drugacyclovir under the trademark ZOVIRAX. ZOVIRAX tablets werein the shape of a six-sided “shield,” with beveled edges. GlaxoWellcome’s distinguishing guise (product configuration) applica-tion for the tablet shape was opposed by Novopharm. The Boardrejected the application, and Glaxo Wellcome appealed.

The first significant issue was the onus imposed bySection 13(1) of the Act upon an applicant for a distinguishingguise.158 The Board expressed the view that the applicant wasrequired to show that “most adult Canadians recognized theapplicant’s distinguishing guise as such.” The court disagreed withthese conclusions, and held that an applicant was required toestablish distinctiveness on a balance of probabilities.


156. (1998) 80 CPR(3rd) 247 (Federal Court of Appeal). Summarized in 89 TMR 191,227 (1999).


158. Section 13(1): “A distinguishing guise is registrable only if:

(a) it has been so used in Canada by the applicant or his predecessor in title as to havebecome distinctive at the date of filing and application for its registration;

(b) the exclusive use by the applicant of the distinguishing guide in association withthe wares or services with which it has been used is not likely unreasonably to limitthe development of any art or industry.”

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The Board also expressed the view that product shapesgenerally result in weak marks. The court agreed, indicating thatthis view was “commonly accepted.” This comment should beunderstood in context. In the case of a pill, the size and shapecannot be chosen entirely arbitrarily, since the pill must beswallowed, and in such circumstances, differences will likely besmall, and marks relatively weak. In the case of other products orpackaging, where shape can be more arbitrary, it should bepossible to have strong marks. However, this distinction did notreceive express consideration by the court.

The court then turned to the evidence regardingdistinctiveness. One of Glaxo Wellcome’s affiants, the director ofcorporate affairs of one of the company’s predecessors, stated, “Ithink so” when asked if he could distinguish a ZOVIRAX tabletmerely by its shape, i.e., without the presence of the ZOVIRAXmark and another triangular design that appeared onNovopharm’s tablets. Glaxo Wellcome also put forward evidence ofa gynecologist. In cross examination, he was confronted withexcerpts from a recent advertisement in a medical journal thatdepicted numerous shield-shaped tablets. The court characterizedthe evidence from the Novopharm’s own witnesses as “uncertain,”which made it “incumbent” on Novopharm to elicit evidence frompatients. No such evidence had been filed. Accordingly, althoughdisagreeing with the onus imposed by the Board, the court agreedwith the ultimate conclusion that Novopharm had failed toestablish distinctiveness of the distinguishing guise.

I.B.23. Official and Certified Marks

As discussed in last year’s Review,159 the Federal Court ofAppeal declined to decide whether the appropriate procedure forchallenging the Registrar’s decision to grant an official mark wasan appeal or an application for judicial review.160 This year, inthree cases, Ontario Association of Architects v. Association ofArchitectural Technologists of Ontario;161 Canada Post v. PostOffice;162 and Maple Leaf Meats v. Consorzio Del Prosciutto DiParma;163 the Federal Court, Trial Division, for the first timeconsidered the substance of a challenge to the Registrar’s decisionto grant official mark status.

In the first case,164 Ontario Association of Architects (“OAA”)sought an order reversing the Registrar’s decision to give public

159. 91 TMR 245, 313 (2001).

160. COA v. USA Hockey, (1999) 3 CPR(4th) 2 (Federal Court of Appeal).





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notice of the use and adoption by Association of ArchitecturalTechnologists of Ontario (“AATO”) of several official markscomprising the word ARCHITECTURAL or the French languageequivalent (the “AATO Marks”). The issues before the court were:(1) could a third party request a review of a decision of theRegistrar to give public notice of an official mark, and if so, whatwas the proper avenue, appeal or judicial review; (2) what was theappropriate standard of review; (3) was AATO a “public authority”for the purposes of Section 9 of the Act; and (4) had AATO adoptedand used its marks as required under Section 9.

Regarding the first issue, it was noted that OAA was not aparty to the matter before the Registrar and therefore had nostanding to proceed by way of appeal. However, OAA had aninterest in AATO’s marks and the Registrar’s decision becauseSection 11 of the Act prohibited any person from using, as atrademark or otherwise, any official mark. Where no other avenueof appeal was available, judicial review was appropriate. Thestandard of review was described as reasonableness simpliciter asdefined by the Federal Court of Appeal in Molson Breweries v.John Labatt.165

In deciding whether AATO was a public authority, the courtconsidered the three-part test set out in Canada v. CanadianOlympic Association:166 (a) the organization must have a duty tothe public; (b) there must be a significant degree of governmentalcontrol over the organization; and (c) any profit earned by theorganization must be for the benefit of the public. AATO satisfiedall three aspects of this test. It was not significant to the court thatthe degree of government control exercised over AATO did notdiffer in any significant way from that exercised over regularprivate sector corporations. The court found that OAA failed tomeet its onus to provide some evidence to substantiate itsallegation that AATO had adopted and used its official marks priorto the public notice. Further, there was some evidence that AATOhad done so. OAA’s application for judicial review was dismissed.

Canada Post v. Post Office167 also involved a challenge to theRegistrar’s decision to give public notice of the adoption and use ofan official mark, that is, the adoption and use of MAILSORT bythe Post Office (a division of the British Royal Mail). Originally,Canada Post filed an appeal to the Federal Court, Trial Division,under Section 56 of the Act. By order of Justice Pinard, CanadaPost was granted leave to amend its Notice of Application to addjudicial review pursuant to Section 18.1(1) of the Federal Court

165. (2000) 5 CPR(4th) 180 (Federal Court of Appeal), leave to appeal to the Supreme

Court of Canada refused 7 CPR (4th) vi. Summarized in 91 TMR 245 (2001).

166. (1983) 67 CPR(2nd) 59 (Federal Court of Appeal).


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Act168 as a further procedural ground for setting aside theRegistrar’s decision. The court considered four issues: (a) didCanada Post have standing to appeal or seek judicial review; (b)was the Post Office required to be a Canadian public authority forthe purposes of Section 9; and (c) had the Post Office adopted andused MAILSORT prior to the Registrar’s publication.

On the first issue, the court noted that there was someuncertainty as to the appropriate procedure for challenging adecision of the Registrar to publish an alleged official mark. As inthe OAA case,169 the court was of the opinion that the judicialreview route appeared to be more appropriate considering thatCanada Post was not a party to the Registrar’s notice. While theissue was specifically left to be decided by the Federal Court ofAppeal, the court was satisfied that Canada Post had the standingto both seek judicial review and to appeal the Registrar’s decision.Canada Post had an interest in the Registrar’s decision to acceptMAILSORT as an official mark because Canada Post operated apostal service and, in this capacity, used numerous trademarksincorporating MAIL. On the second issue, a plain reading ofSection 9 dictated that the term “public authority” was notrestricted to Canadian public authorities. The third issue wasresolved against the Post Office because the evidence did notindicate any use of MAILSORT in Canada by the Post Office or itsalleged Canadian licensees prior to the public notice. In any event,the court would have held that Section 50 of the Act—whichprovided that in certain situations the use of a trademark by alicensee is deemed to be the use by the owner—did not apply toofficial marks. Section 9(2) of the Act170 was said to provide a codefor the use of official marks, and that provision did not deem thatuse by consent accrued to the benefit of the owner of an officialmark. Canada Post’s application was therefore granted.

In Maple Leaf Meats v. Consorzio Del Prosciutto Di Parma,171

Justice O’Keefe agreed with his Federal Court colleagues in theOAA172 and Canada Post173 cases and concluded that Maple Leafdid not have standing to appeal the Registrar’s decision thatConsorzio was a public authority. Consorzio was a consortium ofapproximately 210 Italian ham producers from the province of

168. RSC 1985, c. F-7.


170. Section 9(2) states: “Nothing in this section prevents the adoption, use orregistration as a trade-mark or otherwise, in connection with a business, of any markdescribed in subsection (1) with the consent of Her Majesty or such other person, society,authority or organization as may be considered to have been intended to be protected by thissection….”




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Parma in Italy, the object of which consortium was to ensure thatproduction standards were met and to prevent unauthorized use ofConsorzio’s trademarks. Maple Leaf was a producer of hamproducts and the owner of the registered trademark PARMA,which was first used by Maple Leaf in the 1960s. In 1984,Consorzio applied to register PARMA HAM, PARMA and designand PROSCIUTTO DI PARMA as certification marks. Theseapplications were rejected by the Registrar on the basis that themarks were confusing with Maple Leaf’s PARMA mark. In 1997,Consorzio requested the Registrar to give public notice of theadoption and use of PARMA and design as an official mark, whichthe Registrar did. Maple Leaf appealed to the Federal Court, TrialDivision, seeking a declaration that Consorzio was not a publicauthority and that the public notice was void and of no force andeffect.

The court identified two issues: (a) did Maple Leaf have a rightof appeal; and (b) if so, did the Registrar err in giving public noticeof the official mark by Consorzio. Since the court decided thatMaple Leaf did not have a right of appeal, it was not necessary toconsider the second issue. Maple Leaf’s major difficulty was that itwas not a party to the proceedings before the Registrar. This wasnot about an appeal by an applicant who was refused publicationof its official mark; rather, it was an appeal by a third party whowas purportedly affected by such a publication. Maple Leaf thenasked the court to convert its appeal into an application for judicialreview. The court accepted Consorzio’s arguments that Maple Leafshould be required to obtain an extension of time to file its judicialreview application, and that the judicial review and application forextension of time should be fully argued with proper evidence. Thecourt went on to state that its decision with respect to theunavailability of an appeal did not serve to bar Maple Leaf fromapplying for an extension of time to file a judicial reviewapplication or to convert its appeal to a judicial review, consideringthat Maple Leaf raised these issues only at the hearing that led tothis decision. Both parties have appealed this decision to theFederal Court of Appeal.174

II.A. Formalities for Acceptable Filings

In Calvin Klein Trademark Trust v. Calvin Corporation,175

Calvin Klein was opposing Calvin Corporation’s application toregister CALVIN plus a design consisting of a shield bearing adepiction of a lion. Calvin Klein’s evidence included an invoiceshowing a sale predating by six months the filing of CalvinCorporation’s application, which was based on proposed use. The

174. Court File Nos. A-835-00 and A-836-00.


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Board held that the proposed use application did not comply withthe requirements of the Act176 because the mark was already inuse at the filing date. The Board rejected the application.

II.D. Appellate Procedure

In Polo Ralph Lauren v. U.S. Polo Association,177 the FederalCourt of Appeal applied the test for the standard of review of adecision of the Board set out in Molson Breweries v. JohnLabatt.178 There, the Federal Court of Appeal concluded thatdecisions of the Board should be reviewed pursuant to a standardof reasonableness simpliciter, unless additional evidence had beenadduced on appeal that would have materially affected the Board’sfindings of fact or the exercise of its discretion, in which case theFederal Court, Trial Division, should come to its own conclusionregarding the correctness of the Board’s decision.179 Here, materialnew evidence was filed on appeal in the form of an “exhaustive”search of the Canadian register, which suggested that the word“polo” had been generally adopted and widely used by Canadianretail businesses. Since, in the Court of Appeal’s opinion, thisevidence would have materially affected the Board’s findings offact, the appropriate standard of review was correctness.

III.A.2.a. Similarity of Goods/Services

In Polo Ralph Lauren v. U.S. Polo Association,180 the FederalCourt of Appeal affirmed the decision of the Federal Court, TrialDivision,181 that the polo marks of the parties could coexist inCanada without confusion. In 1985, U.S. Polo applied to registerseveral trademarks comprising POLO in association with apparel.Polo Ralph Lauren opposed the applications, primarily on the basisof confusion with its various registered and pending markscomprising POLO. U.S. Polo’s appeal of the Board’s rejection182 ofits applications was allowed by the Federal Court, Trial Division.

176. Section 30(e): “An applicant for the registration of a trade-mark shall file with theRegistrar an application containing … in the case of a proposed trade-mark, a statementthat the applicant, by itself or through a licencee, or by itself and through a licencee, intendsto use the trade-mark in Canada.”

177. (2000) 9 CPR(4th) 51 (Federal Court of Appeal). For a discussion of the facts of thiscase, see the summary under the heading infra at “III.A.2.a. Similarity of Goods/Services.”

178. (2000) 5 CPR(4th) 180 (Federal Court of Appeal). Summarized in 91 TMR 245, 298(2001).

179. (2000) 5 CPR(4th) 180 (Federal Court of Appeal). Summarized in 91 TMR 245, 298(2001).

180. Supra note 177. Also summarized under the heading supra at “II.D. AppellateProcedure.”

181. (2000) 87 CPR(3d) 193 (Federal Court, Trial Division).

182. (1995) 65 CPR(3d) 246 (Trade-marks Opposition Board); 59 CPR(3d) 543 (Trade-marks Opposition Board).

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Polo Ralph Lauren then appealed this decision to the FederalCourt of Appeal, arguing that the Federal Court, Trial Division,erred in law by failing to apply the proper test for likelihood ofconfusion.

The Court of Appeal noted that the only difference betweenthe approaches taken by the Trial Division Judge and the Boardrelated to the assessment of the degree of resemblance between thetrademarks in appearance, sound and in the ideas suggested bythem. The Trial Division Judge found that while both parties’marks suggested the idea of the sport of polo, the U.S. Polo marksuggested an affiliation with a polo club while Polo Ralph Lauren’smark suggested an affiliation with clothing designed by RalphLauren. In the Court of Appeal’s opinion, this analysis incorrectlyconsidered the U.S. Polo marks in isolation with the sport of poloinstead of in association with the articles of clothing in respect ofwhich registration was sought. This analysis also failed to considerthe degree of resemblance as a matter of first impression. Whilethe Court of Appeal acknowledged that the parties’ marks boresome degree of physical resemblance (i.e., both depicted a horseand a mallet), it was impressed by the 16 third party POLOregistrations for clothing and 15 third party registrations for avariety of goods including eye apparel, luggage, perfume, jewelryand cosmetics. In conclusion, there was no likelihood of confusionbetween U.S. Polo’s marks and those of Polo Ralph Lauren,considering the state of the register. It could be reasonablyinferred that Canadian clothing consumers were accustomed tomaking minor distinctions between the various POLO marks.

III.A.19. Family of Marks

In Michelin v. Continental General Tire Canada,183 Michelin’sposition was primarily based on an allegation of confusion with itsfamily of X marks. The court did not draw upon case law dealingexpressly with issues regarding families of marks. However, thecourt’s conclusion, that “product code” marks may be distinguishedby small differences, may make it more difficult for the owners offamilies of such marks to claim exclusivity in common elementsamong those marks, especially an unremarkable common elementsuch as a single letter.


The intersection of trademark rights and the right of freedomof expression was considered in British Columbia AutomobileAssn. (“BCAA”) v. Office and Professional Employees’


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International Union, Local 378 (“OPEIU”).184 BCAA had used itsregistered trademark BCAA, and under license the CAA mark ofthe Canadian Automobile Association, extensively in associationwith goods and services since 1983. For several years, BCAA hadoffered goods and services through its website available atwww.bcaa.com.

In January 1999, BCAA employees, represented by OPEIUtook strike action and, in March 1999, established the websitebcaaonstrike.com. The website initially had the same appearance,color scheme, layout and metatags as that of BCAA’s website, andwelcomed users with the phrase “Greetings, BCAA is on strike.”Following complaints from the BCAA, OPEIU made severalchanges: the CAA mark was removed; the BCAA mark wasdisplayed in lower case lettering; the “Greetings” phrase wasrepositioned; and certain metatags were amended. OPEIU latermade further adjustments: the BCAA mark was removed from thewebsite, although not the domain name; significant changes weremade to the color scheme and layout of the website; the“Greetings” phrase now read “Greetings, the OPEIU is on strikeagainst the BCAA”; and the metatags were amended to exclude theCAA mark and the mark BCAA by itself. BCAA sued. The causesof action included passing off and damage to goodwill contrary toSection 22 of the Act.185

As OPEIU did not dispute the existence of goodwill in BCAA’strademarks, the court focused on the second element of the actionof passing off: whether the OPEIU website constituted amisrepresentation leading the public to believe that there wassome association between the parties. BCAA argued that themetatags were intended by OPEIU to divert users to the wrongwebsite and that the OPEIU website included nothing to indicatethat it was not connected with BCAA, thereby causing confusion.OPEIU argued that the domain name “bcaaonstrike.com” clearlyindicated a labor dispute with the BCAA and that the use of themarks was in a noncommercial context, not giving rise to passingoff.

OPEIU relied on several American cases involving “protectsites,” including Brookfield Communications, Inc. v. West CoastEntertainment Corp.,186 BigStar Entertainment, Inc. v. Next BigStar, Inc.187 and Bally Total Fitness Holding Corp. v. Faber,188 inwhich the courts considered many factors in assessing theplaintiff’s assertion of confusion, including: the similarity of the

184. (2001) 10 CPR(4th) 423 (British Columbia Supreme Court).

185. Discussed infra note 226 under the heading “III.F.6. Dilution.”

186. 174 F.3d 1036, 50 U.S.P.Q.2d 1545 (9th Cir. 1999).

187. 105 F. Supp. 2d 185, 54 U.S.P.Q.2d 1685 (S.D.N.Y. 2000).

188. 29 F. Supp. 2d 1161, 50 U.S.P.Q.2d 1840 (C.D. Cal. 1998).

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marks and domain names in question; the proximity of the parties’goods or services; the strength of the plaintiff’s mark; marketingchannels; the degree of care likely to be exercised by a consumer inselecting the goods or services; the defendant’s intention inselecting its name; and evidence of actual confusion.

The court also accepted OPEIU’s argument that both statuteand common law should be read consistently with the Charter ofRights and Freedoms and that, where a website is used forexpression in a labor relations dispute, as opposed to commercialcompetition, a reasonable balance must be struck between oneparty’s intellectual property rights and the other party’s rights ofexpression. OPEIU argued that the relevant recipient in assessingwhether a misrepresentation had occurred was a “reasonablyprudent internet user,” but the court preferred the ordinaryaverage consumer, finding support in Ciba Geigy Canada v.Apotex.189

The court held that the first version of the website amountedto passing off since it had the same get-up (trade dress) as theBCAA website, the “Greetings, BCAA is on strike” phrase wasinherently confusing, and the metatags were identical to those ofBCAA. In the second and third versions, the lessened similarities,weighed in the context of the purpose of the site and the right offreedom of expression, were held not to constitute passing off. Thecourt was not oblivious to the fact that persons seeking the BCAA’sservices would be drawn to the OPEIU site (initial interestconfusion, although not characterized as such by the court).However, the court appeared to be willing to countenance suchactivity for OPEIU’s purpose of disseminating information,provided that the OPEIU site dispelled the confusion once theobserver’s attention was attracted. The court awarded BCAAnominal damages for passing off but declined to award apermanent injunction, since the revisions to the website hadrendered the issues moot.

Passing off was also the cause of action in Molson Canada v.Oland Breweries.190 Molson, one of Canada’s two largest breweries,sold its products under its MOLSON house brand, and one of itsprincipal products was an ale marketed under the EXPORTtrademark. Oland191 marketed beer under its house brandOLAND, including an ale identified with the EXPORT trademark.Oland owned a registered trademark for OLAND EXPORT anddesign. Oland’s sales had historically been largely restricted to theMaritime provinces192 until it launched EXPORT ale in Ontario,

189. (1992) 44 CPR(3d) 289 (Supreme Court of Canada).

190. (2001) 11 CPR(4th) 199 (Ontario Superior Court of Justice).

191. A subsidiary of John Labatt, Canada’s other large brewer.

192. Nova Scotia, New Brunswick and Prince Edward Island.

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one of Molson’s principal markets. Molson brought an action forpassing off at common law, and pursuant to Section 7(b) of theAct.193

The court first reviewed Section 7(b), and determined that itwas a statutory statement of the common law action of passing off.Therefore, the two causes of action were analyzed in an identicalfashion, with reference to the classical components: the existenceof goodwill; deception to the public due to a misrepresentation; andactual or potential damage to the plaintiff.

Assessing the issue of goodwill, the court noted the recentdecision of the Federal Court of Appeal in Molson Breweries v.John Labatt,194 where Molson’s application to register EXPORTwas successfully opposed. The court also considered the extensiveevidence of sales, and concluded that EXPORT per se was notdistinctive of Molson’s products, since the packaging and virtuallyall of the advertising for the mark prominently featured theMOLSON house mark.

In considering deception, the court asked whether there hadbeen “some unethical, underhanded, surreptitious conduct on thepart of Oland.”195 Noting that the Supreme Court of Canada hadpreviously held that no intent to deceive is required,196 the courtwent on to compare deception with the confusion required toestablish infringement, taking the view that passing off is adistinct remedy, and indicated that the authorities demandedsome element of causation that to some degree demonstratedconduct offensive to some particular ethical standard involvingunfair competition. The court did not go on to more clearlydelineate this distinction. The net result was that, according to theBritish Columbia Supreme Court, a finding of passing off requiresconduct that is unethical, but need not have risen (or fallen, if oneprefers) to an intent to deceive.

III.C. Injunctions and Damages

In LifeScan v. Novopharm,197 the Federal Court, TrialDivision, dismissed LifeScan’s application for an interlocutoryinjunction because LifeScan failed to prove it would suffer harm ifthe injunction was not granted. LifeScan was applying for an

193. Section 7(b) reads as follows: “No person shall direct public attention to his wares,services or business in such a way as to cause or be likely to cause confusion in Canada, atthe time he commenced so to direct attention to them, between his wares, services orbusiness and the wares, services or business of another.”


195. Id. at 211-12.

196. In Consumers Distributing v. Seiko Time Canada, (1984) 1 CPR(3rd) 1 (SupremeCourt of Canada), the court noted with respect to the action of passing off that “the originalrequirement of an intent to deceive died out in the mid-1800s.” Id. at 15.


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interlocutory injunction restraining Novopharm from stating onpackaging or product inserts that its NOVO-GLUCOSE bloodglucose strips were “for use with all ONE TOUCH® METRES.”LifeScan was a wholly owned subsidiary of Johnson & Johnsonand owner of a patent entitled “Whole Blood Glucose Test Strip,”which related to a whole blood glucose test strip adapted for use ina meter capable of measuring glucose by way of reflectance at twodifferent wave lengths. Johnson & Johnson—not a party toLifeScan’s action or to the interlocutory injunction proceedings—was the owner in Canada of ONE TOUCH, which was registered inassociation with in vitro diagnostic reagent test strips and handheld diagnostic blood testing devices used by diabetics to test theirblood glucose levels. Novopharm was selling NOVO GLUCOSEblood glucose test strips that could only be used with LifeScan’sONE TOUCH hand-held meter. Underlying Novopharm’s activitieswas a 1994 Settlement Agreement and License pursuant to whichLifeScan granted Diagnostic Solutions, Inc. (“DSI”) a nonexclusive,worldwide license under the LifeScan patents to make and sellcertain blood glucose monitoring test strips. The grant to DSIincluded a license for anyone to use the licensed productsmanufactured by or for DSI.

In the court’s view, the issues raised in the case (i.e., whetherthe test strips which Novopharm purchased from DSI fell withinthe LifeScan license and the propriety of any oral trademarklicense from Johnson & Johnson to LifeScan) were neitherfrivolous nor vexatious. However, the court found that LifeScanfailed the irreparable harm test because its evidence did notclearly show harm would result or whether such harm, if proven,would be irreparable. LifeScan’s evidence on confusion was notconvincing when weighed against that of Novopharm for severalreasons: (a) diabetes patients played a major role in theirtreatment and they were advised by professionals on variousglucose monitoring systems; (b) test strips were sold inpharmacies, which may have them behind the counter and whereprescriptions may be necessary for insurance reimbursement; (c)pharmacists and other professionals were involved in answeringquestions about the accuracy of meter readings and the source ofproblems, if any; (d) the differences in packaging; (e) a notice sentto pharmacies by LifeScan stating it neither approved norendorsed the Novopharm test strips; and (f) the lack of anyevidence of confusion. Moreover, the balance of conveniencefavored Novopharm because: (a) to grant the injunction wouldprevent Novopharm from entering into the test strip marketplaceafter obtaining regulatory approval. On the other hand, LifeScan’sevidence of harm was described as “scant and flimsy” andquantifiable by an adequate remedy; (b) there were potentialproblems arising out of the fact that Johnson & Johnson, the

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owner of ONE TOUCH, was not a party to the proceedings; and (c)LifeScan waited over a year after commencing the action to applyfor an interlocutory injunction.

In Itravel2000.com v. Fagan,198 the Ontario Supreme Court ofJustice dismissed Itravel’s interlocutory injunction application torestrain Fagan from selling or using the Internet domain name“itravel.ca” or, in the alternative, requiring Fagan to transferownership of the domain name to Itravel. Itravel was a travelretailer and wholesaler that, since 1998, had conducted a largevolume of Internet sales at its main website located atitravel2000.com. On November 1, 2000, responsibility for the .cadomain system was transferred from the University of BritishColumbia (“UBC”) to Canadian Internet Registration Authority(“CIRA”). On October 26, 2000, Itravel filed an application withUBC to register the domain name “itravel.ca.” At the time of thetransition from UBC to CIRA, Itravel had a preregistrationapplication pending with CIRA to register itravel.ca. In November,2000, Itravel learned that the domain name “itravel.ca” had beenregistered to Fagan on October 22, 2000. Fagan, who was notinvolved in the travel business, offered to sell the name to Itravelfor CDN$75,000. Both parties had applied to register itravel.ca asa trademark; Itravel claimed a first use date of October 1998,which preceded Fagan’s claimed first use date by several months.

On the issue of irreparable harm, Itravel argued that it wouldbe impossible to quantify the amount of damages it would suffershould the domain name be transferred to another party,particularly if that party were outside the jurisdiction of theCanadian courts. Itravel also asserted it would be impossible toidentify the users of the Internet. Relying upon the United Statesdecision Panavision International v. Toeppen,199 the courtcharacterized Fagan as a cybersquatter. It was clear to the courtthat Itravel had been using the domain name in its business for alonger period of time than Fagan, and that Fagan had acquired thedomain name for the purpose of selling it to Itravel or otherinterested buyers. In the end, the court enjoined Fagan fromselling the domain name.

In Boehringer Ingelheim v. Pharmacia Canada,200 the OntarioSuperior Court of Justice refused an interlocutory injunction dueto concerns over freedom of expression. Boehringer was seeking aninterlocutory injunction restraining Pharmacia from claiming thatBoehringer’s drug Mobicox: (a) was a “traditional” non-steroidalanti-inflammatory drug (“NSAID”); (b) was a “nonselective” cyclo-

198. (2001) 11 CPR(4th) 164 (Ontario Supreme Court of Justice). Also summarized

under the heading infra “V.A. Domain Names.”

199. 141 F.3d 1316, 46 U.S.P.Q.2d 1511 (9th Cir. 1998).

200. (2001) 12 CPR(4th) 317 (Ontario Superior Court of Justice).

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oxygenase (“COX”) inhibitor, i.e., it would inhibit not only theundesirable isoform COX-2, but the desirable isoform COX-1; or (c)was not a COX-2 inhibitor. NSAIDs are used to treat pain andinflammation arising from injuries, osteoarthritis and rheumatoidarthritis. One of the central issues was whether MOBICOXoperated as efficaciously as did Pharmacia’s drugs celecoxib androfecoxib (both referred to as “coxibs”), associated with thetrademarks CELEBREX and VIOXX respectively. Pharmaciacontended that MOBICOX: (a) had the effect of substantiallyinhibiting COX-1 at higher dosages; (b) did not operate aseffectively as coxibs at lower dosages; and (c) was not as safe asCELEBREX and VIOXX. Boehringer contended that: (a)Pharmacia was telling physicians and pharmacists thatMOBICOX was not a true COX-2 inhibitor or was not COX-2selective; and (b) these statements were untrue. Boehringeralleged that these statements caused physicians and pharmaciststo: (a) become concerned about the safety of MOBICOX therebymaking them reluctant to prescribe it for their patients; and (b)question the ethics and honesty of Boehringer. Boehringer’s actionwas based on: (a) Section 7(a) of the Act (i.e., that Pharmacia madefalse or misleading statements tending to discredit Boehringer’sbusiness and goods); (b) Section 7(d) of the Act (i.e., thatPharmacia made use, in association with goods, of a descriptionthat was false in a material respect and was likely to mislead thepublic); and (c) Section 52 of the Competition Act201 (i.e., thatPharmacia had knowingly or recklessly made representations tothe public that were false or misleading in a material respect).

The court began its analysis by stating that the relativestrength of Boehringer’s case should play some role in the overallconsideration of whether injunctive relief should be granted. IfBoehringer’s case was strong, then injunctive relief would moreeasily be justified. Because there was a long-standing concernregarding the constitutional validity of Section 7 of the Act, thecourt was reluctant to base any award of injunctive relief solely onthat ground. Even if Section 7 was constitutionally valid in“certain respects” (e.g., in the context of disputes regardingtrademark ownership) the court had reservations as to whether itapplied here because there was little evidence that Boehringer’strademark was being misused. The remaining causes of actionwere dealt with together since they all involved similarrequirements, that is, a false or misleading statement intended toinjure made through illegal, dishonest or reckless means whichwould cause economic loss. The court accepted that Pharmaciamade false statements insofar as their representatives said thatMOBICOX was not a true COX-2 inhibitor. Nevertheless,

201. RSC 1985, c. C-34.

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Boehringer had not demonstrated that there was a real prospectthat it would be able to establish that such statements were maderecklessly or through illegal means or for a dishonest motive. Itwas clear that there was an ongoing and very real scientific andmedical debate about Boehringer’s drug that would only be settledover time. It was also clear that there was arguably a qualitativedifference between the parties’ drugs. Moreover, Boehringer hadnot shown that it would suffer economic loss as a result ofPharmacia’s statements. In summary, the court had “very gravedoubts” as to the strength of Boehringer’s case. On the issue ofirreparable harm, the court accepted that: (a) there were severedifficulties in proving the actual number of customers thatBoehringer might lose from the refusal of physicians to prescribeBoehringer’s drug for their patients, and that this could constituteirreparable harm; and (b) there was a reasonable prospect thatBoehringer’s business reputation could be damaged by suchmisstatements. Nevertheless, the court was not satisfied thatBoehringer had shown that any such damage would be irrevocable.It had not been established that Boehringer could not, through itssales representatives, counter the effects arising from the conductof Pharmacia. The court noted in closing that it was concerned thatthe injunction being sought would have a very real impact onfreedom of speech and, as a consequence, carried the genuineprospect of creating a chilling effect on persons who have alegitimate interest in engaging in the debate, which the courtappeared to view as an important one (in fact, one affiant statedthat such risk existed).

In Rolls-Royce v. Fitzwilliam,202 Rolls-Royce was attempting tohalt Fitzwilliam’s campaign of correspondence whereby he wasadvising third parties in writing that The Rolls Royce MotorMuseum, a trading style under which he operated, had “assumedfull and complete responsibility for the worldwide protection andmanagement of the Rolls-Royce trademarks in relation to classicmotor cars.” On September 19, 2000, the court enjoinedFitzwilliam for a period of fourteen days from issuing any ceaseand desist letters or otherwise asserting that he had rights in theROLLS-ROYCE trademark. This interim injunction had beencontinued pending the determination of Rolls-Royce’s motion foran interlocutory injunction. However, after the interim injunctionwas issued, Fitzwilliam commenced a new campaign ofcorrespondence, in which he threatened actual legal proceedingsagainst Rolls-Royce and others and wrongly suggested thatfactions within the Rolls-Royce “family” were warring amongthemselves. Rolls-Royce was requesting: (a) leave to amend itsstatement of claim to allege a breach of Section 7(b) of the Act;203



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and (b) an interim injunction restraining Fitzwilliam fromthreatening legal proceedings against, or alleging fraud on the partof Rolls-Royce or suggesting that he was associated with theowners of the ROLLS-ROYCE or BENTLEY trademarks.

Regarding the amendment to the Rolls-Royce statement ofclaim, the court was satisfied that no prejudice would be sufferedby Fitzwilliam. The amendment contained material facts uponwhich Rolls-Royce relied, and it was noted that Rolls-Royce wasnot expected to prove its case to the standard of proof required attrial. Fitzwilliam would not be surprised, nor would he sufferprejudice, since he was well aware of the factual grounds of theproposed amendments. Regarding the interim injunctionapplication, the court noted that the threshold to establish aserious issue was rather low. Considering that Rolls-Royce was theowner of the ROLLS-ROYCE trademark in Canada, the court wasof the view that there was clearly a serious issue to be tried. Thecourt was also satisfied that Rolls-Royce would suffer irreparableharm for two reasons: (a) the tone of Fitzwilliam’s letters wasthreatening and could damage valuable business relationships forRolls-Royce, particularly if the letters were sent to authorizedusers of the ROLLS-ROYCE trademark, or to customers of suchusers; and (b) even if the letters were sent only to unauthorizedusers, and the intention and effect were positive, Fitzwilliam’sassertion that “Rolls Royce Motor Museum [had] assumed full andcomplete responsibility for the worldwide protection andmanagement of the Rolls-Royce name and trademarks in relationto classic motor cars” was inconsistent with the desires of Rolls-Royce. The court also thought the balance of convenience favoredRolls-Royce. Fitzwilliam has appealed this decision to the FederalCourt of Appeal.204

III.D. Seizures

Four decisions of the Federal Court, Trial Division,demonstrate the limitations and procedural pitfalls associatedwith seizing counterfeit goods being sold in Canada. In LouisVuitton v. Bags O’Fun,205 the court ordered that seized counterfeitgoods be returned because the order permitting the seizure wasnot properly served, and the seizure was not properly reviewed. OnJuly 10, 2000, Justice Rouleau issued a routine Anton Piller order(the “Rouleau Order”), requiring several persons including “JohnDoe’s and Jane Doe’s operating market stalls in Vancouver, B.C.”to consent to a search of their premises and to deliver up allinfringing goods. Vuitton was required to ensure that the courtreviewed its execution of the order within 14 days of service

204. Court File No. A-814-00.


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thereof. When the Rouleau Order was executed on July 15, 2000,counterfeit goods were seized, but there were difficulties withservice. The occupants of one stall refused to accept the documentsthat were tendered to them in an envelope, so Vuitton’s lawyer leftthe documents on the vendor’s stool behind the stall. When thepersons in charge of another stall refused to take responsibility forthe documents, Vuitton’s lawyer took the documents away withher. When Vuitton discovered that confidential information hadinadvertently been included in the Rouleau Order, Vuittonpersuaded Justice Heneghan to issue a replacement order (the“Heneghan Order”) in much the same terms as the Rouleau Orderbut deleting the confidential information. The Heneghan Order didnot make any reference to the Rouleau Order. Envelopescontaining the Heneghan Order were left with adults at the homeof the operators of one of the stalls selling the seized goods. OnAugust 14, 2000, Vuitton appeared before the court to review theJuly 15 seizure.

The court noted that both the Rouleau Order and theHeneghan Order provided that the defendants were required toconsent to the removal of their goods only upon service of theorder. Vuitton had no legal authority to seize the goods exceptunder the terms of the orders. It was no answer to say that thepersons in the stalls would not accept service of the documents;service was not a matter of acceptance. According to the court, thedocuments should have been removed from the envelopes and leftwith the occupants. The effect of the lack of service was notattenuated by the consent of the occupants of the stall. Courtswould not issue ex parte orders if they could not rely upon thoseobtaining them to comply with them strictly in their execution.The obligation was owed to the court, not the operators of thestalls. Moreover, Vuitton’s failure to seek review of the executionwithin 14 days of service could not be avoided by failing to servethe order. It was the seizure of the goods that called for the review,and time began to run from that date. By failing to have the ordersreviewed within 14 days of execution, Vuitton breached them andbreached the confidence it owed to the court. That the goods werein fact counterfeit and that the persons whose property had beenseized failed to defend their interests did not excuse Vuitton’sbreaches. The purpose of the review was to allow the court toassess Vuitton’s execution of an extraordinary remedy. The courttherefore dismissed Vuitton’s motion and ordered the return of theseized goods. The court was careful to state that it had notapproved the sale of the returned goods. This dismissal of Vuitton’smotion was without prejudice to its right to apply for a new order,but upon fresh evidence only, should it be shown that counterfeitgoods were being sold by the defendants.

Vol. 92 TMR 305

The form and substance of an expert’s opinion to the effectthat goods seized pursuant to an Anton Piller order wereinfringing was discussed in Tommy Hilfiger v. Jane Doe.206 Thedecision arose out of Hilfiger’s motion: (a) to review the June 21,2000, execution of a rolling Anton Piller order against thedefendant Kattoura; and (b) for an interlocutory injunction torestrain the sale of counterfeit goods by Kattoura. At the review ofthe execution of the Anton Piller order, the plaintiff must provideevidence that the seized goods were indeed infringing. In thisregard, Hilfiger submitted the affidavit of its trademark attorney,who concluded that the goods Hilfiger seized were counterfeit onthe basis that: (a) Hilfiger did not manufacture the particularproduct; (b) there were no valid neck labels, hang tags orpackaging as required by Hilfiger; and (c) the products wereclearly of inferior quality. What troubled the court was the absenceof a reference to specific trademarks or to specific goods, whichrendered it impossible for the court to form an independentjudgement as to the validity of the expert’s conclusions. One couldnot infringe a trademark, or pass one’s goods off, at large. Suchconduct was always in reference to a specific mark. Hilfiger’sevidence did not meet the appropriate standard because it wasimpossible to determine which trademarks were infringed bywhich goods. Because there was no evidence of a serious issue to betried, the court dismissed Hilfiger’s application for an interlocutoryinjunction and ordered the return of the seized goods.

In Walt Disney v. Jane Doe,207 the Federal Court, TrialDivision, declared that it lacked the jurisdiction to consider acounterclaim by a defendant who objected to the manner in whichan Anton Piller order was executed. On May 23, 1999, Walt Disneyexecuted a rolling Anton Piller order upon the defendants. In theirstatements of defense and counterclaim, the defendants soughtcompensation for the manner in which the seizures took place,which the defendants described as: (a) “done in the presence ofchildren with absolute disregard of the future effects of witnessingsuch an occurrence”; (b) “extremely intimidating and brutal”; and(c) “high-handed and officious.” Walt Disney moved to strike outthe counterclaims on the ground that they were frivolous andvexatious or an abuse of process as they put into issue mattersthat were decided on the motion to review the Anton Piller motion.Walt Disney also pleaded the doctrines of issue estoppel and resjudicata.

In the court’s view, the main issue was the jurisdiction of thecourt to entertain the defendants’ counterclaim. While Section 53.2of the Act gave the Federal Court jurisdiction to hear an allegation



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by an interested party that any act has been done contrary to theAct, this did not confer jurisdiction to deal with any other claimsarising between subject and subject, even though such claimsarose in the context of a claim that was within the court’sjurisdiction. The defendants’ counterclaims were in substanceactions between private individuals for wrongful seizure. Whilelogically related to the court’s trademark jurisdiction, Section 53.2did not allow the court to adjudicate such a claim. Only aprovincial court had jurisdiction to hear the defendants’counterclaims. To the extent the defendants argued that thewrongful execution of the Anton Piller orders was an abuse ofprocess, it was an attempt to relitigate the issues raised in thereview motion; it was a matter which had already been decided,and that decision was binding on the parties.

Oakley v. Jane Doe208 discussed the appropriate quantum of“nominal damages” and costs when multiple plaintiffs use thesame search team and lawyers. Nine plaintiffs’ lawyers had seizedcertain counterfeit products from the defendant’s businesspursuant to a rolling Anton Piller order. When the defendant didnot appear on the return of the plaintiffs’ motion, it was noted indefault. The plaintiffs were asking the Federal Court, TrialDivision, to award them each “nominal” damages of CDN$3000209

and costs of CDN$1750 for a grand total of CDN$42,750.The court accepted the line of cases that fixed $3000 as

minimum nominal damages in counterfeit cases. Was $3000 perplaintiff appropriate where multiple plaintiffs acted in concert?According to the court, the conventional damage award of $3000was not made less fair simply because multiple plaintiffs actedtogether. That there were multiple plaintiffs was a result of thedefendant’s conduct, not the plaintiffs’. However, a differentprinciple applied to the costs issue. It was noted that costs awards:(a) should not be punitive; and (b) should not allow multipleplaintiffs to benefit from economies of scale. Several plaintiffs whoutilize a single legal counsel should not thereby reap adisproportionate reward in costs. The court set the costs atCDN$750 per plaintiff, as opposed to the CDN$1750 requested bythe plaintiffs.


In Cullman Ventures v. Quo Vadis International,210 theFederal Court, Trial Division, heard an appeal of summarycancellation proceedings for nonuse, under Section 45 of the Act.Quo Vadis owned trademark registrations for YOUR YEAR’S


209. All dollar figures are expressed in Canadian currency.


Vol. 92 TMR 307

HORIZONTAL PLANNING AT A SINGLE GLANCE and theFrench language equivalent (the “challenged marks”), for use inassociation with agendas and calendars. Quo Vadis filed evidence,including samples showing use of the English and Frenchlanguage challenged marks, with slight variations, and precededby the trademark DIARIZON (marked with ®), within interiorpages of agendas. Similar evidence was put forward with respect tothe English language mark for calendars. The Hearing Officermaintained the registration for the English language challengedmark in association with agendas and calendars, and for theFrench language challenged mark in association with agendas.

On appeal, the court ordered that the registrations for thechallenged marks should be canceled. The court first consideredthe issue of the DIARIZON mark, and held that the display of thismark in close proximity to the challenged marks created single,indistinguishable marks. The court placed no significance upon thepresence of the ® symbol. The court also considered the issue of theplacement of the challenged marks only on interior pages of theagendas. The agendas bore the trademark AGENDA PLANNING(marked with ®) or a French equivalent, on the cover page and the“introductory inside page.” In some cases other registeredtrademarks also appeared. Further, in the various samples putforward, one or more words were often omitted from the challengedmarks. The overall impression formed by the court was that theAGENDA PLANNING marks were “dominant,” and that depictionof the challenged marks on some of the interior pages of theagendas did not constitute trademark use.

Bereskin & Parr v. Loblaws211 involved Section 45 proceedingsagainst Loblaws’ MEMORIES OF trademark. Loblaws’ evidencecontained sample labels and packaging material bearing the wordsMEMORIES OF SAN FRANCISCO, MEMORIES OF KOBE, andMEMORIES OF ALBERTA. In each case, MEMORIES OF wasfollowed by the ™ symbol. In contrast to the court’s approach inthe Cullman212 case, the Hearing Officer agreed that placing the ™or ® symbols after one or more words sends the message that sameis a trademark. However, the Hearing Officer found that thematerials did not show use of MEMORIES OF as a trademark. Shefound that the ™ symbol was either barely visible, or positioned insuch a manner that it might refer to the entire expression, e.g.,MEMORIES OF SAN FRANCISCO, rather than MEMORIES OF.She also noted that in a number of the samples, the geographicdescriptor appeared on the same line and the same style of scriptas MEMORIES OF. The Hearing Officer was reinforced in herview by similar findings in two oppositions in which Loblaws had



308 Vol. 92 TMR

relied upon its MEMORIES OF mark.213 The registration wasordered canceled.

In General Motors of Canada v. Decarie,214 the Federal Courtof Appeal considered an application under Section 18 of the Act forcancellation of the registration for DECARIE. Decarie Motors hadobtained the registration on the basis of Section 12(2) evidence.215

General Motors asserted that the mark should not have beenregistered. However, the court opted to focus on the alternativeground for cancellation, namely whether the mark was distinctiveat the time of the cancellation proceedings.216 The affidavitevidence comprised advertisements and other documents, whichgenerally showed the word DECARIE used more frequently andmore prominently as part of DECARIE MOTORS, rather than byitself. The court also noted that there were other entities unrelatedto Decarie Motors using DECARIE in trade names associated withthe sale of automobiles. Decarie Motors submitted that evidencerelating to these two parties should not be considered, becausethey might be found to be infringers. While accepting that DecarieMotors did not have to establish exclusivity in order to show thatthe marks remained distinctive, the court concluded that use bythese other parties was relevant to an assessment ofdistinctiveness, “particularly where the mark is inherentlyweak.”217 The court held that DECARIE was not distinctive ofDecarie Motors and ordered that the subject trademarkregistration be canceled.

Invoices were the central issue in Riches, McKenzie & Herbertv. Pepper King,218 which involved summary cancellationproceedings against Pepper King’s registration for VOLCANO forhot pepper sauce. The Hearing Officer held that the sample labelscomprising Pepper King’s evidence showed use of VOLCANO HOTrather than the registered mark. However, sample invoices didrefer to VOLCANO. The Hearing Officer assumed that the invoiceswould have accompanied the goods at the time of sale, and

213. Loblaws v. Tritap Food Broker, (1999) 3 CPR (4th) 108 (Trade-marks Opposition

Board) and Loblaws v. Premium Label Foods, (2000) 6 CPR(4th) 8 (Trade-marks OppositionBoard); see also Loblaws v. Premium Label Foods, (2000) 4 CPR(4th) 536 (Trade-marksOpposition Board).

214. (2000) 9 CPR(4th) 368 (Federal Court of Appeal). This case is also discussed underthe heading supra “I.B.4. Geographical Names.”

215. Id.

216. Section 18(1) of the Act provides the registration of a trade-mark is invalid if

(a) the trade-mark was not registrable at the date of registration,

(b) the trade-mark is not distinctive at the time of proceedings bringing the validity ofthe trade-mark into question are commenced….

217. Supra note 214 at 378.


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therefore found that they constituted use within the meaning ofSection 4(1) of the Act.219

The Federal Court, Trial Division, disagreed. While acceptingthat a trademark appearing on an invoice may be considered as“use” in some circumstances, the court held that in summarycancellation proceedings (where only the registrant has theopportunity to file evidence), it was incumbent upon the registrantto explain, in its affidavit evidence, how the mark was associatedwith the goods. Here, the assumption made by the HearingsOfficer entirely displaced the evidentiary onus that should haverested with the registrant. Moreover, the court noted that PepperKing had had the benefit of the Hearing Officer’s decision, andopted not to file evidence to remedy the deficiency (nor in fact didit participate in argument before the court). The court ordered thatthe registration be expunged.

In summary cancellation proceedings, a registrant that cannotshow use may nevertheless be able to maintain its registration if itcan show special circumstances that excuse nonuse.220 In Sim &McBurney v. Renault,221 Renault attempted to maintain itsregistration for ESPACE used in association with automobiles andrelated goods. Apparently the trademark had been registered inCanada in 1986 on the basis of use and registration in anothercountry. Renault admitted that the mark had never been used inCanada. Renault submitted evidence referencing “drasticdifferences” between European and North American regulationsrelating to automobiles, which necessitated an expensive “completere-engineering” of its vehicles for the North American market. Theevidence also referenced studies, research and development thatRenault was conducting. However, the Hearing Officer found theevidence unclear as to whether any of this activity had occurredprior to the commencement of the cancellation proceedings. TheHearing Officer concluded that Renault’s decision not to complywith government regulatory requirements was voluntary. Further,an intention to use the mark in the near future was not sufficientto excuse the more than thirteen years of nonuse. The registrationwas ordered to be canceled.

219. Section 4(1): “A trade-mark is deemed to be used in association with wares if, at the

time of the transfer of the property in or possession of the wares, in the normal course oftrade, it is marked on the wares themselves or on the packages in which they aredistributed or it is in any other manner or so associated with the wares that notice of theassociation is then given to the person to whom the property or possession is transferred.” Id.at 475 (the emphasis is that given by the Court).

220. Section 45(3): “Where, by reason of the evidence furnished to the Registrar … itappears to the Registrar that a trade-mark … was not used in Canada at any time duringthe three year period immediately preceding the date of the notice and that the absence ofuse has not been due to special circumstances that excuse the absence of use, the registrationof the trade-mark is liable to be expunged or amended accordingly” (emphasis added).


310 Vol. 92 TMR

In Shapiro Cohen v. Trapeze Software,222 Trapeze Softwarewas required to show evidence of use of its registered markTRAPEZE in association with computer software and relatedservices. The evidence was held to show use by Trapeze Software,but also by two other entities. The Hearing Officer maintained theregistration, because evidence of use by the registrant had beenshown. The Hearing Officer expressed the view thatdistinctiveness was not an issue in a Section 45 proceeding.Shapiro Cohen argued in the alternative that the registrationshould be restricted to the particular function and area of use forthe software.223 The Hearing Officer determined that nothing inSection 45 granted her the authority to do so.

In Swabey Ogilvy Renault v. Golden Brand Clothing,224

Golden Brand responded to summary cancellation proceedings byfiling evidence of use of its trademark LE COLLEZIONI(TRADIZIONI) DI SUCCESSO for use in association with men’sclothing. The evidence showed use and advertisement of the markin association with various clothing items, which Golden Brandmanufactured and then sold to Moores The Suit People, a relatedcompany. Moores then re-sold the goods to the public. There wasno documentary evidence (e.g., invoices) regarding these sales.Labels on the goods showed the trademark accompanied by thewords “par/by Moores.”

The Hearing Officer concluded that the registration should bemaintained. She noted that the wording on the labels might leadconsumers to believe that Moores was the source of the goods;however, she determined that such message went to the issue ofdistinctiveness, an issue “not to be decided in Section 45proceedings.”225 For the purposes of summary cancellationproceedings, the Hearing Officer determined that the evidence wasadequate.

III.F.6. Dilution

In BCAA v. OPEIU,226 the court considered three issues inassessing BCAA’s claim under Section 22: whether there was arequirement that the infringing conduct had a commercialelement; whether OPEIU’s activities were services to whichSection 22 applies; and, finally, whether there had been adepreciation of goodwill.


223. Which would be consistent with current Trade-mark’s Office practice regardingsoftware—see Trade-marks Examination Wares and Services Manual, CanadianIntellectual Property Office, 1996, p. 66.


225. Id. at 278.


Vol. 92 TMR 311

The court concluded the Act required that OPEIU’s activity becommercial in nature. On the second issue, the court found thatthe activities on OPEIU’s websites had no commercial element, asthe services were neither sold nor advertised, fees were notcharged and a profit was not sought. Without this commercialaspect, the activities on the website were not “services” ascontemplated under Section 22, but were better characterized asinformation meant to elicit support in the labor dispute. Someweight was also given to OPEIU’s argument that if this non-commercial activity were found to be infringing, it would undulyrestrict free speech. With respect to the final issue, the court foundthat any depreciation of goodwill in the BCAA marks would haveresulted not from OPEIU’s use of the marks, but from OPEIU’sarguments. OPEIU was entitled to freely express its position andhad not infringed Section 22.


In Polaroid Canada v. Continent-Wide Enterprises,227 theFederal Court of Appeal considered the legality of Polaroid’s exportpricing policy. Continent-Wide was appealing the order of the trialjudge awarding Polaroid damages for breach of contract anddismissing Continent-Wide’s counterclaim. Continent-Wide was adistributor of a wide range of consumer and industrial goods,including Polaroid photographic products. The dispute centered onthe practice of “transhipping” whereby Continent-Wide acquiredgoods from Polaroid in Canada and exported these goods for resalein another jurisdiction, thereby taking advantage of favorablecurrency exchange rates. However, the practice adversely affectedPolaroid’s global export systems and led to price and supplyproblems in Canada. In response, Polaroid: (a) introduced anexport price policy (the “Policy”) whereby it charged its Canadiandealers who sold its products outside Canada a higher price thanthe domestic price for goods sold in Canada; (b) demanded but didnot receive payment of the export price for certain goods alreadysold to Continent-Wide; and (c) thereafter sold to Continent-Wideonly at export prices and if Continent-Wide could show that goodsit so purchased were actually sold in Canada, Polaroid would remitthe amount of excess payment. In the end, Polaroid terminated itsrelationship with Continent-Wide and commenced this action.

The trial judge had concluded that: (a) Polaroid was at libertyto change its terms of business with Continent-Wide; (b) Polaroidwas not precluded from imposing the Policy; (c) Continent-Widebecame contractually bound by the Policy when it received propernotice of the Policy on October 10, 1986; and (d) Polaroid had notwaived the Policy. In the Court of Appeal’s view, these findings of


312 Vol. 92 TMR

the trial judge were all reasonable and supported by the evidence.The court rejected Continent-Wide’s argument that the Policy wasunenforceable because it constituted an illegal contract in restraintof trade and agreed with the trial judge that the Policy wasreasonable in the interests of the parties and not contrary to thepublic interest or the Competition Act.228 Continent-Wide’sargument that the Policy was a penalty clause was also rejected.According to the Court of Appeal, a penalty clause was anobligation to pay damages by reason of a breach of an agreement,but here, the Policy applied regardless of any breach.

III.N. Counsel, Conflicts

In Jonathan Boutiques v. Jay-Gur International,229 theFederal Court, Trial Division, removed a trademark lawyer due toconflict of interest concerns. When Jonathan Boutiquescommenced an action against Jay-Gur for infringement of theJONATHAN G trademark, Jay-Gur asked the court to removelawyer Levy of the firm Spiegel Sohmer as solicitors of record forJonathan Boutiques. From 1996-1997, Raich, another lawyer withSpiegel Sohmer, acted as counsel for Jay-Gur. In this capacity,Raich: (a) had discussions with Jay-Gur’s executives andaccountant and received confidential information regarding Jay-Gur’s expenses, sales figures, taxation structure and businessstrategies; and (b) attended at least one meeting where the agendalisted sales figures, customer lists and business strategies,including the JONATHAN G product line. Spiegel Sohmer arguedthat there was no conflict of interest on the basis that Raich andLevy agreed not to discuss any issues relating to the JONATHANG dispute.

In deciding whether Spiegel Sohmer was in a conflict ofinterest position, the court applied a two-part test: (a) did Raichreceive confidential information attributable to a solicitor andclient relationship relevant to the JONATHAN G dispute; and (b)if so, was there a risk that such information would be used to theprejudice of Jay-Gur. Regarding the first element, once it wasshown that there existed a previous relationship that wassufficiently related to the JONATHAN G dispute, the court wasobliged to infer that confidential information was imparted unlessthe court was satisfied that the information could not be relevant.This was described as a “difficult burden to discharge.” The court’sdegree of satisfaction must be such that it would withstand thescrutiny of the reasonably informed member of the public and theburden must be discharged without revealing the specifics of theprivileged communication. Here, the court found that: (a) the



Vol. 92 TMR 313

relationship between Raich and Gurman was sufficiently related tothe dispute between Jonathan Boutiques and Jay-Gur to infer thatconfidential information was imparted; and (b) such informationwas attributable to a solicitor and client relationship relevant tothe JONATHAN G dispute. As to whether there was a risk thatthe confidential information would be used to the prejudice of Jay-Gur, the court noted that there was a strong inference thatlawyers who work together share confidences. Such an inferenceshould be drawn unless it was clear that all reasonable measures(e.g., Chinese walls and codes of silence) were taken to ensure thatno disclosure would occur by the “tainted” lawyer to the firmmember(s) who were engaged against the former client. Themeasures taken by Spiegel Sohmer here (i.e., storing theRaich/Jay-Gur file at an outside location) were insufficient.Moreover, the “self-governing” undertaking (i.e., that Raich andLevy would not discuss the JONATHAN G dispute) was simply notsufficient to meet the burden established by the relevant case law.In particular, it was noted that Spiegel Sohmer failed to formallysegregate the file.

IV. Personality Rights

Dubrulle v. Dubrulle French Culinary School Ltd.230 concernedthe use of an individual’s name in association with a cookingschool. In 1984, the plaintiff Dubrulle, an individual, and one ofthe defendants, Diane Becker, founded Pierre Dubrulle CulinarySchool Ltd. (“Company”). Each of them held (indirectly through aholding company) 50 percent of the shares. Through twotransactions in 1988 and 1989, Becker acquired all of the shares ofthe Company held by Dubrulle’s holding company. The net effectwas that Dubrulle consented to the continued use of the nameTHE PIERRE DUBRULLE CULINARY SCHOOL as long asBecker or her holding company owned shares in the company orcompanies that carried on the cooking school business. The nameof the Company was subsequently changed to “Dubrulle FrenchCulinary School Ltd.” Finally, Becker and her holding companysold all of their shares in the Company to a third party, andBecker’s holding company took shares in that third party. Dubrullecommenced an action claiming misappropriation of personality, aviolation of the British Columbia Privacy Act231 and a

230. (2000) 8 CPR(4th) 180 (British Columbia Supreme Court).

231. RSBC (1996), c. 373. The relevant provisions were §§3(2) and (3):

(2) It is a tort, actionable without proof of damage, for a person to use the name orportrait of another for the purpose of advertising or promoting the sale of, or othertrading in, property or services, unless that other, or a person entitled to consent onhis or her behalf, consents to the use for that purpose.

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contravention of Section 9(1)(k) of the Act.232 Dubrulle sought onlyinjunctive relief.

The court dismissed Dubrulle’s action. The court held thatDubrulle had consented to the use of his name in 1984, and thatthe subsequent agreements made that consent subject to a singlecondition: that either Becker or her holding company continuedholding shares in whatever company carried on the cooking schoolbusiness, which continued to be the case. Further, it was foundthat the Company had built up an independent goodwill in“Dubrulle.” Dubrulle argued that he should be allowed toterminate the agreement on reasonable notice. The court held that:(a) there was no general rule to this effect, and (b) terminationwould be directly contrary to the clear meaning of the agreementbetween the parties.

V.A. Domain Names

Canada does not have legislation comparable to the UnitedStates Anticybersquatting Consumer Protection Act.233 Mostcommentators agree that Canadian courts should determinedisputes regarding entitlement to domain names pursuant totraditional trademark principles, assuming the domain names inissue are not subject to mandatory dispute resolution. InItravel2000.com v. Fagan,234 the Ontario Supreme Court of Justiceenjoined Fagan from disposing of the domain name “itravel.ca,”which he had acquired in accordance with the “.ca” domain nameregime in place prior to November 1, 2000. The court noted that:(a) Itravel claimed a date of first use of Itravel that precededFagan’s first use date by several months; and (b) Fagan was acybersquatter who was not involved in the travel business. Thecourt appeared to address the crucial issue of the parties’trademark rights in a somewhat cursory manner.

(3) A person is not liable to another for the use for the purposes stated in subsection (2)

of a name identical with, or so similar as to be capable of being mistaken for, that ofthe other, unless the court is satisfied that

(a) the defendant specifically intended to refer to the plaintiff or to exploit his orher name or reputation, or

(b) either on the same occasion or on some other occasion in the course of aprogram of advertisement or promotion, the name was connected, expressly orimpliedly, with other material or details sufficient to distinguish the plaintiff, tothe public at large or to the members of the community in which he or she livesor works, from others of the same name.

232. Section 9(1)(k): “No person shall adopt in connection with a business as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to bemistaken for, … any matter that may falsely suggest a connection with any livingindividual.”

233. Pub. L. No. 106-113, 113 Stat. 1501 (1999).

234. Supra note 198. Facts summarized under heading supra “III.C. Injunctions andDamages.”

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CHILE

I.B.5. Personal or Surnames

The Head of the Industrial Property Department decided infavor of the opposition filed by the world renowned Brazilian soccerplayer Edson Arantes Do Nascimento (pseudonym “Pele”) toregistration of the mark CAFE PELE filed by Braschile Ltda. forcoffee in Class 30. The opposer claimed that he had not authorizeduse of his pseudonym by the applicant, and, furthermore, provedthat he had previously registered the PELE trademark in manycountries for several products, including those in Class 30.

In his decision, the Head of the Industrial PropertyDepartment pointed out that the relevant and determining featureof the mark of the opposed application was the word PELE and theinclusion of the word CAFE, a secondary element, did not alter thefact that PELE is a term identical to the opponent’s pseudonym.Therefore, should the requested CAFE PELE registration begranted, it would cause error and confusion among consumers,especially regarding the coffee product’s business origin.

The decision also upheld Edson Arantes Do Nascimento’sargument that there had been an attempt by Braschile Ltda. totake advantage of the PELE mark’s fame and notoriety for its ownproducts, an act contrary to fair competition and business ethics.235


Citing the worldwide fame and notoriety of the Pfizer Inc.VIAGRA trademark to distinguish a renowned Class 5 product,Pfizer filed an opposition to registration of the BIAGRARESTAURANTmark by a Chilean private individual for restaurants, cafeterias,pizza parlors, tea-rooms, bars, and other similar Class 42establishments.

The Head of the Industrial Property Department agreed withPfizer, in view of the VIAGRA brand product’s wide fame andnotoriety in both the domestic and foreign markets. According tothe decision, should the requested registration ofBIAGRARESTAURANT be granted, users and consumers wouldbe misled or deceived regarding the business origin of the servicesidentified in the application even though they are in a differentclass than the VIAGRA products.236

Helena Rubinstein, the cosmetics company, filed an oppositionto the registration of the F.P. RUBINSTEIN mark filed by an

235. Decision of the Head of the Industrial Property Department, May 23, 2001, case

No. 1605-99, Edson Arantes Do Nascimento v. Braschile Ltda.

236. Decision of the Head of the Industrial Property Department, November 30, 2000,case No. 6216-98, Pfizer Inc. v. Yalily Alejandra Chiple.

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individual, Federico Pablo Rubinstein, for several Class 42services, such as a cosmetology, beauty and hair salon; sauna;medical and clinical laboratory; cafeteria and restaurant. Thebasis for the opposition was that HELENA RUBINSTEIN is aworldwide famous and notorious mark that is registered in anumber of classes in addition to Class 3, in which cosmetics areclassified. It was shown that in Chile, Helena Rubinstein ownsregistrations in classes such as 9, 14, 18, 23, and 25, as well as inClass 3.

The Head of the Industrial Property Department decided forthe opponent, holding that HELENA RUBINSTEIN is, in fact, aninternationally famous and notorious sign distinguishing beautysupplies and thereby is protectible beyond the precise goods andservices set forth in the international trademark classifications. Inview of this, eventual market coexistence of the famous HELENARUBINSTEIN mark and the F.P. RUBINSTEIN mark wouldcreate error and confusion, especially regarding the business originof the services being distinguished.

The decision also upheld the opponent’s argument that it couldbe assumed that the applicant was trying to take advantage of theregistered mark’s fame and notoriety to distinguish his ownservices, an act that is against fair competition and businessethics.

Thus, the application for registration of the F.P.RUBINSTEIN mark for Class 42 services was denied.237


The Central Preventive Commission (Comisión PreventivaCentral) (“Commission”), created under Chile’s Antitrust Law, hasruled in several cases that registration in Chile of a famous markalready registered abroad for the purpose of preventing sales oflegitimate products manufactured in another country is contraryto free competition. Such registrations have become commonplaceamong distributors or potential importers desiring to becomeforeign product distributors as a means of putting pressure onforeign manufacturers and exporters, who are threatened withlegal actions for trademark infringement when attempting to selltheir products in the local market without permission from themark’s owner in Chile.

In response to a legal opinion requested in July 2000 by VimarS.R.L., an Italian company that owns the VIMAR mark, which isregistered in Italy as well as other countries where VIMAR brandproducts are manufactured and sold, the Commission ruled thatthe Chilean owner of the mark VIMAR for electric appliances

237. Decision of the Head of the Industrial Property Department, June 6, 2001, case No.

3711-99, Helena Rubinstein v. Federico Pablo Rubinstein.

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“should refrain from acts intended to prevent sales in Chile ofVIMAR products by Vimar S.R.L.”238

Vimar S.R.L. showed that it had been in contact with theowner of the mark in Chile, Marisio S.A., as a potential VIMARproducts distributor.

A similar situation occurred in August 2000, in relation to themark PICADILLY for Class 25 products. Almiro Grings y CiaLtda., a Brazilian company, showed that as creator and owner ofthe PICADILLY mark in Brazil, it had produced and sold Class 25products under its trademark in several countries, including Chile,since at least 1972. In its ruling, the Commission pointed out thatthe Chilean owner of the mark for Classes 23, 24, and 25, could notprevent the sale in Chile of the legitimate PICADILLY productsmanufactured in Brazil, as that act would be contrary to freecompetition and would constitute an abuse of rights.239

In September 2000, the Commission reaffirmed thisconclusion. Calzados Bibi Ltda. (“Bibi”), a Brazilian firm,requested the Commission to rule on whether a Chilean companythat had registered the mark BIBI COLLOKY in Chile for Class 25products, could legitimately prevent Bibi from selling the sameclass of products in Chile under its own BIBI mark. Bibi showedthat it had registered the BIBI mark in Brazil in1985 and that ithad sold BIBI brand products in Chile since 1992. Bibi also showedthat its BIBI products were imported into Chile by the Chileancompany, among others, that had registered the BIBI COLLOKYmark. In its decision, the Commission pointed out that

any obstruction to imports of BIBI mark products from Brazil,whether by the company owning the BIBI COLLOKY mark inChile or others, is against free competition. According to theprecedent we have already set, it is illegitimate for thirdparties, even if owners of a trademark, to prevent the sale inChile of products legitimately manufactured in a foreigncountry, regardless of whether said products’ mark is similarto the mark registered in Chile, when the foreign mark hasbeen previously registered in the country of origin and theproducts distinguished by it are legitimate. Therefore, ourruling is that the Chilean company must refrain from any actsintended to obstruct or prevent access to the Chilean marketof Class 25 products under the mark BIBI owned by theBrazilian company CALZADOS BIBI LTDA.240

238. Decision of the Comisión Preventiva Central, dated July 7, 2000, cases No. 146-00

and No. 259-00.

239. Decision of the Comisión Preventiva Central, dated August 11, 2000, case No. 244-00.

240. Decision of the Comisión Preventiva Central, dated September 1, 2000, case No.1136.

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A petition for cancellation of the SHAKESPEARE trademarkregistration for Class 28 products in Chile was filed by petitionerShakespeare Company (“Shakespeare”). Said mark had beenregistered by the respondent Chilean importer of Shakespeare’sproducts, namely fishing gear, specially reels and rods. During theproceedings, Shakespeare introduced ample documentary evidenceshowing that SHAKESPEARE brand products were imported andsold in Chile by the respondent and that Shakespeare was thelegitimate manufacturer and worldwide seller of Class 28SHAKESPEARE brand products.

The respondent argued that since the SHAKESPEARE markhad not been created by Shakespeare, but rather was the surnameof a renowned English playwright, there was no misappropriationof the mark.

The Head of the Industrial Property Department ruled infavor of Shakespeare, annulling the SHAKESPEARE markregistration for Class 28 in Chile on the basis that the respondenthad obtained said registration knowing that, in addition to being afamous and well-known mark, the mark was already registeredabroad. Thus, since the respondent had acted in a mannercontrary to business ethics and accepted business practices,cancellation of the registration was a suitable penalty.241

CHINA, PEOPLE’S REPUBLIC OF


In 1999, the name of a famous Chinese dish, yangchow friedrice, was the mark of an application for trademark registrationfiled by the City of Yangzhou with the Chinese TrademarkOffice.242 Yangchow fried rice is the name of a dish made andserved in the City of Yangzhou, which can be traced back to theZhou Dynasty over 4,000 years ago. Many local restaurants nowprovide the dish named yangchow fried rice, although some withtoo much oil, and some with rice stuck together, which do notactually resemble the tasty dish.

The Yangzhou City Culinary Institute has published astandard recipe for the dish. Now, only top restaurants approvedby the country, or the city, or specially appointed as providers offood for tourists by the provincial authority are qualified to provide

241. Decision of the Head of the Industrial Property Department, March 13, 2001, case

No. 6064-96, Shakespeare Company v. Sparta Deportes S.A.

242. Application Filed to Register Trademark Yangchow Fried Rice, Yangzhi EveningNews, August 28, 2000.

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the dish and to print yangchow fried rice on their menus. Chefscooking the dish must obtain certificates as Level II Chefs first.

Although the YANGCHOW FRIED RICE mark of the pendingregistration application contains the name of a city, it probablywill be granted registration by the Chinese Trademark Officebecause over a long history the mark has evolved into anindication of a specific dish cooked with the unique cooking processthat is known throughout China and the world. It refers to adelicious fried rice dish that contains several specific ingredients.Registration of the name of the dish as a trademark will enable theCity of Yangzhou to protect its tourist resources and to maintainthe quality of one of its most famous traditional dishes.

I.B.17. Disclaimers

When a trademark lacks distinctiveness, even if the applicantdisclaims the exclusive right to certain element(s) of the mark, themark will not be registered. For instance, for the mark DATAMEDIA and diamond design, the applicant disclaimed theexclusive right to use the words DATA MEDIA apart from themark as a whole. Nevertheless, the Chinese Examiner stillrejected registration of the mark, finding the diamond design notsufficiently distinctive.243

If a mark is complex and contains several elements, most ofwhich are nondistinctive, the Chinese Trademark Office willrequest deletion of the nondistinctive elements from the markinstead of a single disclaimer. If the elements are intertwined andcannot be distinguished, the mark will be rejected if filed as onemark. For instance, the HOT DOG and design mark for hot dogproducts contains the words “Gorik,” “8 Premium,” “Hot Dogs,” and“Holland Village” in English, and “Golden Brand Sausages,”“Dutch Hot Dogs,” and “Eat Happily” in Chinese characters, and acircle, a hot dog and a ribbon design. The Examiner has requestedthe applicant to file separate applications to register eachelement.244


The publisher of The Economist sued a Sichuan magazine ofthe same title in Chinese characters before the China TrademarkReview and Adjudication Board.245 The publisher of The Economistargued that although THE ECONOMIST mark is not registered inChina, it should enjoy broad protection and exclude others from

243. Examination of Abandonment of Partial Exclusive Trademark Right, Cao Xinwei,64, No. 1, China Patents & Trademarks, p. 63, 2001.

244. Id.

245. More Effective Protection of Trademark Rights Upon Joining WTO, CCTV, August3, 2001.

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using the same mark on publications because it is a well-knownmark.

Under the existing Trademark Law in China, the publisher ofThe Economist will not succeed because the overall impression ofeach mark, although identical in meaning, appears differentvisually. However, once the draft Chinese Trademark Lawbecomes effective, the result of the case will be totally different.

According to the draft new law, an application to register acopy, imitation or translation of an unregistered famous markowned by another party and used on the same or similar goods orservices will be rejected, because such registration will likely causeconfusion in the market.

This is one of the important amendments made by China tothe existing Trademark Law and is meant to fully enforce theTRIPS Agreement when China joins the World TradeOrganization. The revisions of the Trademark Law, once passed,will more effectively protect trademarks, and especially famousforeign marks, in China.


The Second Intermediate People’s Court of Shanghai,rendering a decision of first instance, ordered four defendants tostop infringing the trademark of a Swedish office supplycompany.246 The court also ordered the defendants to make apublic apology and to pay RMB500,000 to the plaintiff as damages.One of the defendants has also been fined.

The plaintiff, Esaberg Company,247 is a multinational companyspecialized in the manufacture of staplers. THE RAPID R 106 andRAPID R 65 series electric staplers and the RAPID 66/6 andRAPID 66/8 series staplers are well-known products that are soldin the United States and in many countries in Europe and Asia,including China. The plaintiff obtained two registrations from theChinese Trademark Office in March 1998 for RAPID and designmarks, which are protected under international treaties and theChinese laws.

According to the plaintiff, the company spotted one of thedefendants, Old Town Debao Office Appliance Factory, using thetrademark RAPID, the same product name, the same packaging,and the plaintiff’s company name and product specification tomanufacture and sell counterfeit electric staplers withoutauthorization of the plaintiff. The defendant also used a packagingsimilar to the packaging for plaintiff’s RAPID R 65 series electric

246. Shanghai Rendered Decisions in Two Intellectual Property Lawsuits Involving

Foreign Parties, People’s Party (Overseas Edition), July 23, 2001.

247. This is a transliteration of the company’s name in Chinese as shown in the court’sdecision.

Vol. 92 TMR 321

staplers to sell electric staplers branded XIAODINGDANG R 68.The defendant used pictures of plaintiff’s RAPID R 106 products indefendant’s advertisements and brochures of its XIAODINGDANGelectric staplers.

The plaintiff claimed that the defendant’s infringementscaused customer confusion, and that the other three defendants,Zhongshan City Old Town Trading Development Company,Zhongshan City Old Town Overseas Chinese Material Companyand Shanghai Huahan Office Equipment Limited Company,willfully sold the infringing products when they knew or shouldhave known the products offered for sale were counterfeits. Thus,they also engaged in trademark infringement and unfaircompetition.

Based on the Paris Convention, the Chinese Anti-UnfairCompetition Law, the Trademark Law and the Civil Procedures ofthe Civil Law of the People’s Republic of China, the Court foundthe four defendants’ acts infringed upon the plaintiff’s legitimaterights and disrupted the normal economic order, and ordered thedefendants to stop the infringement. In addition, one of thedefendants, Zhongshan City Old Town Debao Office EquipmentFactory, was fined RMB100,000 for its serious infringing acts.


Long Jing Tea refers to green tea produced in the West LakeDistrict of Hangzhou City in the Zhejiang Province of China. Thetea is famous for its light and fragrant flavor and is distinguishedby its dark green color and the flat shape of the dry tea leaves.248

In March 2001, the West Lake District Administrationannounced that all Long Jing Tea produced by the tea farms thatoccupy specified one hundred sixty-eight square kilometers woulduse a standard anticounterfeit label to indicate the source of originof the Long Jing Tea products. All new Long Jing Tea productsfrom this area will be put in the new packages with theseanticounterfeit labels.

The labels are made using two-dimensional code technologyand computer network technology and are divided into twocategories: one for tea growers and another for stores selling anddistributing tea products. A Long Jing Tea grower is required toput on each of his/her tea products an anticounterfeit label for teagrowers as an indication of the origin of the product. Each labelcorresponds to a particular tea grower. When scanned by acomputer system, the label will enable people to identify the name,address, telephone number and approved quantity of the teaproducts that the particular tea grower produces.

248. Anti-counterfeit Labels Corresponding to Each Tea Grower, Genuine Long Jing Tea

Now Has Anti-counterfeit Packages, Xinming Evening News, March 20, 2001.

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Use of the two types of anticounterfeit labels is monitored andadministered by the local Administration of Industry andCommerce. If an infringement or passing off case is spotted, or ifanyone makes counterfeit anticounterfeit labels or transfers orsells the same without authorization of the government, theviolators will be punished according to the law.

On April 27, 2001, the First World Intellectual Property Day,the Beijing High People’s Court announced that the cases heard bycourts in Beijing involving intellectual property rights rose by 42percent in 2000. The total number of cases heard in 2000 was 659,which was an increase of 100 percent of the total cases heard in1995.249 The trademark dispute cases rose significantly. Comparedwith 1998, the trademark dispute cases doubled in 2000, tenpercent of which involved foreign companies as parties.

Aside from judicial resources, various local governments inChina have passed regulations to encourage reporting ofcounterfeiting activities by citizens. For instance, in Shanghai, thelocal Administration of Industry and Commerce published anofficial procedure to award citizens who reported counterfeitproducts.250 If a person gives information leading to confiscation ofcounterfeit goods and to fines against the offenders, the persongiving the tip will be awarded ten percent of the total value of thecounterfeit goods confiscated, or the amount fined, with themaximum amount not to exceed RMB10,000 yuan.

Under special circumstances, an award to a person whoprovides tips is not limited by the cap. Even for those cases wherethe goods are not confiscated or the owner is not fined, the reporterof tips may still be awarded an amount not to exceed RMB5,000yuan.

The procedure is to encourage the public to report themanufacture of counterfeit products, unauthorized use of famousmarks, packaging and designs, and the unauthorized use of others’trade names or the falsification of origin of goods, etc. Theprocedure also lets the public monitor government enforcementagencies and report on their inaction against trademarkinfringements when a case is reported if their inaction violates thelaw.

Other cities have taken similar actions to protect their localtrademarks, and especially famous marks. In Tianjin, one of themost famous marks in the city is the DOGS DON’T CARE brandfor steamed meat dumplings. The restaurant with the DOGSDON’T CARE trade name was at one time surrounded by several

249. The IP cases in Beijing have doubled in five years, China News Agency, April 27,

2001.

250. Reporters Are Awarded, Shanghai Awards Tips against Counterfeits, People’sDaily (Overseas Edition), p. 5, February 12, 2001.

Vol. 92 TMR 323

imitators, each using the same name, which confused manycustomers, especially tourists from other cities.251

The local Administration of Industry and Commerce, assistedby the police, has since closed down all the imitators and orderedthem to pay damages. Now there are no more fake DOGS DON’TCARE products or counterfeit meat dumplings bearing the samemark in Tianjin. The mark has once again become a reliableindication of the source of the unique local dish.

Earlier in 2001, Shanghai prosecuted five defendants formaking and selling counterfeit products.252 The five defendantswere sentenced to jail terms ranging from eight months to sixyears, with fines up to RMB300,000 yuan.

The Shanghai Anti-counterfeiting Office destroyed over450,000 pieces of counterfeit products valued at overRMB12,000,000 yuan. The trials and announcement of thejudgments were made public to raise awareness of the public of theexistence of illegal counterfeiting activities and to encourage thepublic to participate in the campaign against counterfeit products.

Many companies also cooperate with the police and the localAdministration of Industry and Commerce and report suspectedoffenders to the authorities for prosecution. For instance, inSeptember 2000, the local police of Hong Kou District in Shanghaireceived a tip from a manufacturer that counterfeit SMG productsbearing brands such as FINGERED CITRAN and DOUBLEBRIDGES were being distributed and sold by a counterfeit ring,and were disrupting the local market. After careful investigation,the police traced the supplier to the neighboring Zhejiang Provinceand seized the truck loaded with the counterfeit SMG productswhen it entered Shanghai at dawn one day. They seized largequantities of counterfeit SMG products, brought criminal actionagainst the ring leaders, and quickly restored the market toorder.253

Shenzhen authorities raided Luohu Commercial City in anaction against counterfeit products before the long weekend ofLabor Day in May 2001.254 Luohu Commercial City is a shoppingcenter in the city where daily customers total 50,000 people. Onholidays, the number of customers can easily be doubled. It haslong been praised as a shopping paradise for people from HongKong.

251. Protect Famous Marks Such as Dogs Don’t Care, Tianjin Extends Anti-counterfeiting Campaign Citiwide, World Journal, p. A9, July 2, 2001.

252. Everyone Condemns Manufacture and Sale of Counterfeits, The City Publicly TriedCases and Destroyed Counterfeits Today, Xinming Evening News, March 15, 2001.

253. Hong Kou District Captured Counterfeit Ring Leaders, Putting 4 Criminals to Jail,Xinming Evening News, September 1, 2000.

254. Actively Taking Action against Counterfeiting, Luohu Commercial City Plans 10Major Measures to Correct and Improve the Local Market, World Journal, p. A9, April 17,2001.

324 Vol. 92 TMR

In recent years, however, some stores have sold counterfeitgoods bearing famous marks. Before Labor Day in May 2001, thecity’s Administration of Industry and Commerce requested allstores to sign an undertaking not to sell counterfeit goods. For theleather good stores that are notorious for their sale of counterfeitproducts, the government sent each store a notice orderingcorrection and improvement of their practice. The landlords of thestores were required to be responsible for sale of counterfeit goodsby the stores on their premises. All leather goods stores andtimepiece stores were required to provide certificates ofregistrations for trademarks they own or a license or authorizationif the marks they use are owned by others.

The Administration of Industry and Commerce in Shenzhenthen sent out over 500 officers to monitor the local market. Theyseized over 897 pieces of counterfeit leather goods, 1,085 watches,1,800 pairs of sport shoes, 1,204 pieces of tee shirts, all bearingother people’s trademarks illegally. The estimated value of theseized goods is about RMB740,000 yuan. The seizure is expected toset up a better competitive order in the local market.

V.A. Domain Names

On April 23, 2001, the Beijing No. 2 Intermediate People’sCourt began the trial of Kentucky v. Guangzhou YuejingInformation Network Company.255 The plaintiff, KFCInternational Holding Company, claimed it registered KFC andKENTUCKY in Chinese characters in China in 1993. To raise theawareness of the company among Chinese customers, the plaintiffalso registered the top level domain name “www.kfc.com.”However, when the company applied to register the domain name“www.kfc.com.cn” with China Internet Network InformationCenter, it found that the domain name had already been registeredby the defendant in May 1998 and was thus not available toplaintiff.

Citing the Provisional Regulations for Recognition ofAdministration of Well-known Marks, Provisional Regulations ofRegistration of Chinese Domain Names, the Paris Convention, andthe Trademark Law of the People’s Republic of China, the plaintiffalleged that the defendant committed trademark infringement,counterfeiting and unfair competition.

The plaintiff stated that KENTUCKY in Chinese characters isa famous mark in China and in the rest of the world that enjoyspopularity and fame. The mark indicates the source of itsKentucky Fried Chicken, a fast food product that is popular inChina.

255. Trial of Kentucky v. A Network Company Is Scheduled for Today, China News

Agency, April 23, 2001.

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According to the plaintiff, the defendant’s registration of theChinese domain name constitutes unfair competition because itdeprives the plaintiff of its right to use and register a domainname that is vital to its business activities in China. Moreover,registration of the domain name by the defendant will causeconfusion in the market because the Chinese domain name isvirtually the same as the one the plaintiff registered abroadearlier.

The defendant rebutted the plaintiff’s claim, arguing that KFCis not a famous mark in China and as such is not entitled to broadprotection under the Chinese law. The defendant further statedthat “kfc” in the defendant’s Chinese domain name means to beat(others) in money making. The defendant has registered anotherdomain name containing “cocacola,” which, according to thedefendant, means to gather fortune together.256

The case is still pending. Although there is no decision yet, itis assumed the plaintiff stands a good chance to prevail. Thedefendant’s registration of domain names that contain famousmarks such as KFC and COCA-COLA can be construed as acts ofunfair competition and the defendant’s interpretation of themeaning of the domain names is at best not convincing.

With the development of websites, cybersquatting has becomean important issue. The courts in China are expected to play anactive role in upholding trademark owners’ rights over theirdomain names.

A similar case was heard on January 2, 2001, by the BeijingNo. 2 Intermediate People’s Court. The Swiss watch company,Rolex Watch Co., Ltd., sued Beijing Guowang Information Co. Ltd.for the latter’s registration of the domain name “rolex.com.cn.”257

The plaintiff registered ROLEX, ROLEX in Chinese characters,and the Crown design with the Chinese Trademark Office in 1982.The plaintiff has also registered the top level domain name“rolex.com.” The defendant, a local information company, however,registered “rolex.com.cn” in China, thus preventing the plaintifffrom using and registering the same domain name, and thatcontains its house brand in China.

The case is still pending. The Court’s decision will provide anindication of what to expect from the Chinese judiciary ininterpreting the laws and in fighting cybersquatting in thecountry. According to Mr. Ziheng Zhang, Director of NetworkSolutions, Inc., for Asia, registration of domain names increases

256. Dispute Over Domain Name: KFC in Chinese Characters, 63, No. 2, China Patents

& Trademarks, p. 89, 2001.

257. Dispute Over Domain Name: ROLEX in Chinese Characters, 63, No. 2, ChinaPatents & Trademarks, p. 90, 2001.

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every year.258 In Asia, China is ranked fifth in the race to registerdomain names. As of June 2000, registration of top level domainnames containing “.cn” has reached 96,000. With more domainname registrations, disputes will likely increase accordingly.

The best approach is to apply for trademark registration of adomain name when registering the domain name and visa versa.In this sense, a domain name is the electronic version of one’strademark. To meet with the increasing requests for registration ofChinese domain names, the National Quality Monitoring Bureaurecently put to a test a national standard system for standardChinese domain names in July 2001, in an attempt to standardizeexamination and registration procedures of Chinese domain namesto effectively prevent cybersquatting of Chinese domain names.259

COLOMBIA

I.B. Registrability

A derivative trademark is a sign that constitutes an approachto, or derivation from a trademark previously registered by thesame proprietor for identical products or services.

The Superintendency of Industry and Commerce of Colombia(“SIC”) issued a recent pronouncement in favor of the registrationof derivative trademarks, provided that the following requirementsare met:

1. The sign of the new application is based upon the signpreviously registered, in such a manner that the mostoutstanding element of the registered mark is included in thenew sign or with not substantial variations or with variationsthat affect only accessory elements.

2. The new application is filed by the proprietor of theoriginal mark and refers to the same products or services.According to SIC, if the proprietor of a trademark is

authorized to use it with non-substantial variations, provided suchfact does not lessen its protection, it is logical that such utilizationmay potentially be registered by the very same proprietor.

The pronouncement was issued for resolving an oppositionfiled by the proprietors of the trademark LÍDER in Ecuadoragainst an application for registration of the composite trademarkLIDER (nominative and graphic) filed in Colombia by CompañíaColombiana de Tabaco to cover products in Class 34.

258. Outsmart Cyber Squatter; Discuss with Famous Domain Name RegistrationAgency of Protective Action in Registration of Domain Names, Xinming Evening News,August 30, 2000.

259. Operation of National Standard Test System for Chinese Domain Names, XinmingEvening News, February 15, 2001.

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SIC authorized such registration and denied the opposition,having found that in the case under reference, all therequirements were present for registering a derivative trademark;the Compañía Colombiana de Tabaco was the original proprietor ofa registration for LIDER in Colombia for the same class and itsapplication referred to an identical mark with non-substantialvariations.

SIC clarified that derivative trademarks cannot be the subjectmatter of an assignment or license independently from theirprincipal trademark, and that the examination process forregistration shall be limited exclusively to the new elements.260


The Council of State rejected the application for registrationfor the trademark FENISODIL to cover goods in InternationalClass 5 (pharmaceutical, veterinary and hygienic goods) due to itsresemblance with the previously registered trademark FENISTILfor the same kind of goods. In so doing, the Council of State foundthat the comparative analysis of pharmaceutical trademarks mustbe done more carefully than the analysis performed between othertrademarks

to avoid a consumer requesting a product thinking he isrequesting another, which could cause irreparable damage tohis health. At many drugstores, medicines, even those thatmust be cautiously used, are sold without prescription on thesole advice of the pharmacist who happens to be available.The plaintiff, Laboratorios Bussie S.A., had lodged a

restoration of rights and nullity action against the decision of theColombian Patent and Trademark Office (“PTO”) denyingregistration of its mark FENISODIL, alleging that said trademarkhad enough distinctive characteristics and that the prefix “feni” iscommonly used in other pharmacological products.

During the processing of the application, the Council of Staterequested a pre-judicial interpretation from the Andean Tribunalof Justice. It stated the following rules in determining thesimilarities between two trademarks:

1. The confusion must result from the overall impressionarisen from both trademarks.

2. The trademarks must be examined successively, notsimultaneously.

260. Superintendency of Industry and Commerce of Colombia, Resolution No. 32090 of

September 28, 2001.

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3. Anyone who becomes aware of the similarity must puthimself in the place of a potential buyer and regard the natureof the product.

4. The existing similarities between the trademarks, notthe differences, are to be considered.The Council of State applied this interpretation and added the

following rules regarding phonetic comparison:1. If the compared trademarks have vowels that are

identical and located in the same order, it may be assumedthat the signs are similar because such vowel distributionorder produces an impression that will be recalled by theconsumers. FENISODIL and FENISTIL have three identicalvowels, two of which appear in the same order.

2. If the accented syllables of the compared trademarksare coincidental, it may also be concluded that the marks aresimilar. The accented syllable in FENISODIL is “dil” and inFENISTIL is “til” which makes them similar.

3. If the accented syllable and the first syllable are equal,the similarity is more significant; if, on the contrary, theaccented syllable is divergent and the first syllable iscoincidental, the probability of similarity would be lessened.In the case at hand, the first syllables in both trademarks areequal and the accented ones are coincidental which increasetheir degree of similarity.The Council of State added that since the goods at issue were

pharmaceutical products, the judge should be more careful indetermining their similarities because coexistence may generate aserious risk to human health, especially considering that they areproducts sold without prescription.

After applying these criteria, the Council of State concludedthat the marks FENISODIL and FENISTIL (previously registered)were similar in their spelling, phonetic and graphic aspects anddenied registration for the trademark FENISODIL.261

Laboratorios Bussie S.A. filed an action to nullify theresolution from the PTO that denied the registration of trademarkEFFER for pharmaceutical products, alleging that such trademarkpresented no likelihood of confusion with the trademarkEFFEXOR previously registered by the American Home ProductsCorporation.

261. Pre-judicial Interpretation of the Court of Justice of the Andean Community, dated

September 27, 2000, in Council of State, Proceeding No. 57-IP-2000, Official Gazette No.612. Sentence of February 22, 2001 (not yet published) in Laboratories Bussie S.A v.Superintendence of Industry and Commerce, File No. 5823 (not yet published). Decision 344of the Andean Pact, Articles 81, 82 and 83.

Vol. 92 TMR 329

Specifically, the plaintiff argued that the denial of theregistration infringed Articles 81 and 83(a) of Decision 344 of theAndean Pact because its trademark EFFER had sufficientindividuality and singularity to avoid confusion among consumers.

The Council of State applied for a pre-judicial interpretationfrom the Court of Justice of the Andean Community, whichexplained the rules for trademark comparison, and recalled thatwhen relating to medical products, the comparison betweentrademarks ought to be rigorous.

The Council of State determined that from the spelling andthe phonetical points of view the trademarks EFFER andEFFEXOR were more similar than different, since the wordportion “effe” constituted almost the entirety of the trademarkEFFER and it constituted the major factor in the trademarkEFFEXOR.

Additionally, the Council of State followed the rule ofphonetical comparison from which, if the trademarks subject tocomparison contain identical vowels placed in the same order, itmay be inferred that the marks are similar. Thus, similarity existsbetween the two marks because EFFER and EFFEXOR contain anidentical vowel, namely “e,” which is repeated and is placed in thesame order. Another phonetical comparison rule used was that ofthe tonic syllable, which states that there exists similarity betweentwo marks when the tonic syllable of the denominations comparedis similar and in a coincident position.

Based on the referred comparisons, the Council of Stateconcluded that the trademark EFFER was integrated in itsentirety by grammatical elements belonging to the trademarkEFFEXOR, placed exactly in the same order, which rendered theformer confusingly similar to the latter in such a manner thatcoexistence of the marks in the market might generate a seriousrisk of confusion.

Thus, the Council of State refused the application for nullityand confirmed the decision of the PTO denying the registration ofthe trademark EFFER.262

The provision according to which examiners must comparetrademarks as units, that is to say, that the comparative study oftwo trademarks must be based on “a simple glance of the signs andthe structure must prevail over the individual elements,” does notapply when pharmaceutical marks are compared. This was soestablished by the Council of State.


September 6, 2000, in Council of State, Proceeding No. 56-IP-2000, Official Gazette No. 602.Sentence of February 14, 2001 (not yet published) in Laboratorios Bussie S.A v.Superintendence of Industry and Commerce, File 5770 (not yet published). Decision 344 ofthe Andean Pact, Articles 81 and 83(a).

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The reason is that pharmaceutical trademarks usually usegeneric prefixes or suffixes (e.g., oxy for oxygen) that are ofcommon use in medicine and pharmacy, so individuals may notclaim exclusive use of same.

The case in which this was established in Colombia was GlaxoGroup Limited v. Superintendence of Industry and Commerce(SIC). The pharmaceutical corporation Glaxo Group Limitedinstituted a nullity action against the resolution that refused theregistration of the trademark OXISTAT to cover a prescribeddermatological drug.

SIC had refused the registration of this trademark, deeming itcapable of generating confusion among consumers, because thetrademark OXITAL had already been registered in Colombia byItalmex (today SmithKline Beecham Colombia S.A.).

The Court of Justice of the Andean Community,263 in the pre-judicial interpretation requested by the Council of State, ruled thatthe generic elements (prefixes or suffixes commonly used forpharmaceutical products) should not be taken into account whencomparing pharmaceutical signs.

Given that both OXITAL and OXISTAT refer topharmaceutical products, and that OXI is a generic or commonlyused element that indicated a content of oxygen (oxígeno inSpanish), the Council of State left this element out in making theanalysis, and concentrated on the suffixes TAL and STAT.

The Council of State found them visually similar because,although one had three and the other had four letters, they sharetwo of them (T and A), which are placed consecutively.

Regarding the phonetic aspect, the Council of State observedthat the suffixes were not sufficiently distinctive to avoid confusionof the consumer public.

Finally, from the ideological point of view, the Council of Statestated that while STAT has no meaning at all, the suffix TAL hasa number of meanings in Spanish “though this does not eliminatethe possibility of their being confused.”

Consequently, the Council of State rejected the claims of thedemand, ruling that OXISTAT was not registrable pursuant toArticle 83(a) of Decision No. 344 of 1993,264 since although beingcapable of graphic representation, it lacked sufficient strength todistinguish the product intended to be identified thereby.

Novartis AG filed a nullity action with the Council of Stateagainst the resolution that denied the registration of the word

263. Sentence of August 16, 2001, of the Council of State in Glaxo Group Limited v.

Superintendency of Industry and Commerce (File No. 5714) (not yet published). Pre-judicialInterpretation by the Andean Community Court of Justice, dated January 24, 2001(Proceeding No. 85-IP-2000). Interpretation of Decision 344, Article 83(a).

264. Decision 344 of 1993 was superseded by Decision 486 of 2000, and contains asimilar provision in Article 136(a).

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mark CLOROTIR, used to distinguish products in InternationalClass 5, namely pharmaceutical, veterinary and sanitarypreparations.

Novartis AG argued that SIC was wrong when it denied theregistration because the mark CLOROTIR was not confusinglysimilar to CLOROPTIC, which had been previously registered byAllergan Inc.

The Council of State applied for a pre-judicial interpretationfrom the Court of Justice of the Andean Community and this Courtstated that when intending to establish the risk of confusionbetween trademarks for pharmaceutical products, it must be takeninto account that the majority thereof utilize elements or words ofcommon or generalized usage in the medical or pharmaceuticalfields, which should not be subject to comparison.

Along such framework, the Council of State omitted theanalysis of the common prefix CLORO, and it limited its finding tocomparing the expressions OTIR and OPTIC of the trademarks.

When applying the general rules set by the Court forcomparing trademarks to the specific case, the Council of Stateobserved that OTIR and OPTIC constitute two word marks appliedto the same class of products that resembled each other from thepoint of view of their spelling, due to both marks containing thevowels “O” and “I” and the consonant “T.”

It likewise found from the visual point of view that bothtrademarks, despite having a different number of letters projecteda similar vision as a unit.

On the other hand, it observed that there existed greatsimilarity from a phonetic point of view between the trademarks,since the letters P and C of OPTIC and R of OTIR vanish at thetime of being pronounced, providing greater intonation to theletters OTI, which coincide in both marks.

As a consequence of the foregoing, the Council of State rejectedNovartis’ petition and denied the registration of the trademarkCLOROTIR.

It is worth pointing out that the Council of State establishedthat when relating to the examination of trademarks ofpharmaceutical products, the lawmaker shall be more carefulbecause what must be avoided is the consumer mistakenlyordering one product instead of another, “which under certainspecific circumstance may cause irretrievable damage to humanhealth, moreover taking into account that, in some establishments,medicaments of careful use are sold without prescription and uponthe mere advice by the pharmacist on duty.”

The Council of State explained, additionally, that the above-mentioned represents the latest position of the Court of Justice ofthe Andean Community, since such entity held several years agothat trademarks of pharmaceutical products had to be compared

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benevolently, given the fact that consumers themselves were themost interested, hence being the utmost careful in examining whatthey purchased.265

A well-known trademark enjoys, under the community law,greater protection than a common trademark since, while acommon trademark is protected within the area of its specialty,namely for certain types of products, a well-known trademark isprotected for all products or services under any Class.

This was affirmed in a ruling of the Council of State providedwhen sentencing a complaint for nullity filed by Warner LambertCompany, proprietor of the trademark CHICLETS, against SIC forhaving granted registration to the trademark SIXLETS in favor ofLeaf Inc.

Upon reviewing the complaint and the evidence submitted, theCouncil of State acknowledged that the trademarks CHICLETSand SIXLETS were confusingly similar for the following reasons.In both cases they relate to word marks that present a similargrammatical structure: they are formed by two syllables and arewritten in sustained capital letters in identical letter types. Bothtrademarks contain the same vowels “I” and “E” located in asimilar position, where in their order they belong to the first andsecond syllable in each expression. From the phonetic point ofview, both marks are similar because both expressions originatefrom the English language and their pronunciation is alike. Therisk of confusion becomes greater since both marks arenominative, not evocative (none relates to a notion or an idea) anddistinguish products in Class 30.

Additionally, the Council of State determined that thetrademark CHICLETS was a famous or well-known mark, bothnationally and internationally, due to its promotion throughadvertising and to the extended coverage of its distribution and itsintensive utilization by consumers of candy and chewing gum.

Because such circumstances were disregarded by SIC, theCouncil of State declared the nullity of the registration ofSIXLETS.266

265. Sentence of July 18, 2001, of the Council of State in Novarties AG v.

Superintendency of Industry and Commerce (File No. 5711) (not yet published). Pre-judicialInterpretation by the Court of Justice of the Andean Community dated January 31, 2001, inthe Council of State (Proceeding No. 96-IP-2000). Interpretation of Decision 344, Article 83(a), 96.

266. Sentence of August 16, 2001, of the Council of State in Warner Lambert Companyv. Superintendency of Industry and Commerce (File No. 5623) (not yet published). Pre-judicial Interpretation by the Andean Community Court of Justice dated November 15, 2000(Proceeding No. 86-IP-2000). Interpretation of Decision 344, Article 82, 83. It may be worthclarifying that this sentence, even though it was proffered during the enforceability ofDecision 486 of 2000, was issued applying the provisions of Decision 344 of 1993, which wasthe provision applicable at the time of the complaint.

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Doubts concerning likelihood of confusion that may occurbetween two trademarks shall be resolved in favor of thepreviously registered trademark, pursuant to a decision of theCourt of Justice of the Andean Community.

The judgment was proffered in response to a consultationformulated by the Council of State, which was in charge ofresolving the nullity action instituted by Arcor Ltda. against theresolution from the Trademark Office that denied the registrationof the trademark BOLIN BOLA, deeming that it was confusinglysimilar to the trademark BOLA BOLA, previously registered forthe same type of products.

The Court of Justice of the Andean Community explained thatwhen a trademark is intended to be registered that is formed byseveral words and one of these has already been registered byanother person (BOLA), it is necessary that the new word (BOLIN)show sufficient distinctive differences in the phonetic, ideologicalor graphic aspects to prevent a potential confusion with thetrademark previously registered.

The Council of State adopted this interpretation and whencomparing the expressions BOLA BOLA with BOLIN BOLA, itfound that both marks represent serious danger of a confusingsimilarity, for which reason it denied the claims of thecomplaint.267


José M. Daccarett & Compañia-Frigorifico de la Costa appliedto register the trademark CAMPO VERDE for products inInternational Class 31.

The corporation Foremost International (Europe) B.V. opposedbased upon its Colombian registration of GREEN LAND andgraphic for products in International Class 29. “Green Land” is theSpanish translation of “Campo Verde” or “Tierra Verde.”

The PTO denied the registration of the CAMPO VERDE markbecause it deemed that, pursuant to Article 83(a) of Decision 344 ofthe Andean Community, there existed similarities between thetrademarks that could generate confusion among the public.

The Council of State, when taking cognizance of the case,warned that the reason for nonregistrability due to similaritiesoriginating from a translation is enshrined in Article 83(d) ofDecision 344, not in subsection (a) cited by the PTO. This provisionestablishes that signs cannot be registered as trademarks when

267. Sentence of November 8, 2001, of the Council of State in Arcor S.A.I.C v.

Superintendency of Industry and Commerce (File No. 6005) (not yet published). Pre-judicialInterpretation by the Andean Community Court of Justice dated May 2, 2001 (ProceedingNo. 13-IP-2001). Interpretation of Decision 344, Article 83 lit a).

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they constitute the translation of a well-known or famousdistinctive sign owned by a third party.

Building on guidance from the Court of Justice of the AndeanCommunity, the Council of State held that “not every signconstituting a translation or a reproduction of another can per seinvolve the virtue of causing confusion.” An unknown sign, eventhough registered, is not capable of causing confusion.

Since the GREEN LAND mark did not evidence the characterof a well-known or famous mark in this proceeding, the Council ofState ordered the CAMPO VERDE268 application reinstated forprocessing.

Merk Transitory LLC, applied at the Colombian PTO toregister the graphic mark CABEZA DE UN EJEMPLAR VACUNOfor veterinary products in International Class 5.

Laverlam Luis A. Mazariegos & Cia S. en C., owner of thetrademark CABEZA DE VACA, opposed the application, arguingthat the mark could be confusingly similar to its registered markCABEZA DE VACA.

The PTO refused the registration of the mark CABEZA DEUN EJEMPLAR VACUNO. Merk Transitory LLC requested thenullity of that decision at the Council of State. Merk Transitoryargued that CABEZA DE UN EJEMPLAR VACUNO was refusedwithout a legal justification, because it is not similar to thetrademark CABEZA DE VACA.

The Colombian PTO, as well as Laverdalam Luis A.Mazariegos & Cia. S. en C, owner of the mark CABEZA DE VACA,opposed the claim.

The Council of State requested an application for pre-judicialinterpretation from the Court of Justice of the Andean Communityin connection with the matter, and the Court stated that allregistrability examinations between two marks should begin witha comparative global analysis between them, aimed atascertaining the graphic, phonetic and ideological similarities,rather than the differences between them.

The Council of State, following this analysis, analyzed thetrademarks together and determined that the mark CABEZA DEUN EJEMPLAR VACUNO was constituted of straight, schematic,barely hinted strokes in which the eyes, horns, ears and snout ofthe specimen are shown prominently, while the previouslyregistered trademark CABEZA DE VACA shows the head of abovine specimen with bent and detailed sketches, where the horns,ears and snout may be distinguished clearly.

268. Sentence of September 14, 2000, of the Council of State in José M. Daccarett &

Compañía-Frigorífico de la Costa v. Superintendency of Industry and Commerce (File 5159)(not yet published). Interpretation of Decision 344, Articles 81, 83(a), 83(d) and (e), 93 and95. Pre-judicial Interpretation of the Court of Justice of the Andean Community, dated July26, 2000 (Proceeding No. 46 IP—2000) (published in the Official Gazette, No. 594).

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The Council of State concluded that there was no similaritybetween them that would be capable of inducing consumers toerror, and consequently nullified the resolution denying theregistration of the trademark CABEZA DE UN EJEMPLARVACUNO and ordered the registration process to continue.269

The risk of confusion between two trademarks is lower whenthe products or services they cover are commercialized throughdifferent channels.

This was so stated by the Council of State in its verdict on anullity action instituted by the corporation Torrecafé Aguila Roja& Cía Ltda., owner of a graphical trademark representing a coffeegrain, against the registration application of Mars Incorporated fora composite trademark representing a round chocolate tablet.

The Council of State indicated that although the coffee, tea,cocoa, sugar and rice products covered by the trademarks belongedto Class 30 of the International Classification of Nice, the risk ofconfusion is not high because coffee and chocolate are usuallycommercialized through different channels, and they are usuallylocated, exhibited and sold in different places.

The Court of Justice of the Andean Community,270 in a pre-judicial interpretation requested in the proceeding, reminded theCouncil of State of the rules that should be applied to examine andcompare trademarks. Confusion results from the generalimpression caused by the marks that are compared. The marksmust be compared successively and not simultaneously. Theexaminer must study the marks from the point of view of theconsumer. The examiner must take into account the nature of theproducts. The examiner must consider the similarities rather thanthe differences existing between the marks. When the comparisoninvolves a composite and a graphical trademark, the mostcharacterizing element must be first established based on its size,color and position, and from the result, the likelihood of confusionshould be studied.

In the case at issue, the mark of the plaintiff was a graphic ofa male character designed from a coffee grain, while the opposedtrademark was a female character designed from a round chocolatetablet showing the letter “m” in the middle.

The Council of State studied the trademark in the applicationfiled by Mars Incorporated, according to the guidelines of the


October 4, 2001, in Council of State, Proceeding No. 66-IP-2000, June 21, 2001, File No.5059, published in Merk Transitory LLC v. Superintendence of Industry and Commerce.Decision 344, Article 83(a).

270. Sentence of July 18, 2001, of the Council of State in Torrecafé Aguila Roja Ltda v.Superintendency of Industry and Commerce (File No. 5324) (not yet published). Pre-judicialInterpretation by the Andean Community Court of Justice dated March 2, 2001 (ProceedingNo. 94-IP-2000). Interpretation of Decision 344, Articles 81, 83(a), 93, 95, 102.

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Court, and established that the graphic element was the prevailingelement; that is, the chocolate character and not the letter “m.”

Hence, the Council of State compared the marks taking themas graphical marks, and concluded that they were not similar, thatthey were two marks consisting of fancy characters, each showingspecial characteristics easily differentiable. The marks evokeddifferent images. The coffee grain is a male character, while thechocolate character is female. The coffee grain character is oval,while the chocolate character is round. The coffee grain characterdoes not show the “m” that characterizes the Mars Incorporatedproducts. The cup that the coffee grain character holds in its handsuggests the cup used to drink coffee, and the gesture of its otherhand indicates the good quality or excellence of the product,elements that are not present in the other mark. The body of thecoffee grain character stands rigidly, while the chocolate characteris coquettish.

Eternit Colombiana S.A., owner of the trademark PLANICEL,instituted a legal action against SIC for the reason that it grantedregistration to the composite mark PLANILUX to anothercompany.

In the opinion of Eternit Colombiana S.A., these two markscould not peacefully coexist because they have phonetic andorthographic similarities and additionally are applied to the sameproducts.

The Council of State requested from the Court of Justice of theAndean Community a pre-judicial interpretation about the caseand the supranational entity provided the jurisprudentialguidelines to determine the degree of confusing similarity betweentrademarks.

The first step, according to the Court, consists of determiningthe nature of the conflicting marks, and in the case of a compositemark and a word mark, to determine which is the prevailingelement in the composite mark.

In the case at hand, the Council of State noticed that whereasPLANICEL is a word mark, PLANILUX is a composite mark as itis made of a denominative (word) element and a graphic one (thelatter refers to the form of the letters that appear as italics).

On analyzing the presentation of the trademark PLANILUX,the Council of State determined that the denominative part wasmore outstanding than the graphic part, and therefore, proceededto analyze the confusing similarity between PLANICEL andPLANILUX as if they were two denominative marks.

The second step, according to the Court, is to compare themarks considering the auditive or phonetic, orthographic or visualand conceptual or ideological aspects.

1. Phonetic: In order to make this comparison, it is necessaryto carry out the following activities:

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a. To verify whether the marks under comparison containidentical vowels arranged in the same order. In this case,PLANILUX and PLANICEL have two identical vowels andadditionally the particle “PLANI” in both is equal.

b. To verify whether the tonic syllable of the denominationsunder comparison is coincident, either because they areidentical or similar or for the reason they are arranged in thesame position.In the case at hand, the tonic syllables, i.e., those where more

stress is placed when pronounced, are different given that in one ofthem the tonic syllable is “CEL” whereas in the other is “LUX.”

The Court concluded that from the auditive or phonetic pointof view, there only existed a weak similarity between the marks.

2. Orthographic: The Court pointed out that it was necessaryto examine the marks successively and not simultaneously as anaverage consumer would do, with more emphasis on similaritiesthan on differences.

In the case at hand, the Council of State noticed that althoughboth marks have the particle “PLANI” in common, this expressiondoes not constitute a root or generic expression of common use todesignate goods in Class 19.

Besides, the Council of State noticed that despite the fact thatboth marks are made up of the same number of syllables, theyhave a divergent syllable which is precisely the tonic one.

3. Conceptual: After analyzing both marks, the Council ofState determined that it was not possible to identify them in thisfield, given that they were arbitrary denominations lacking ameaning in the natural language.

After making all of these comparisons, the Council of Statedenied the claims of the complaint, concluding that there was notsufficient similarity between these two marks capable of causingconfusion among consumers.271

I.B.21. Trade Names

Decision 486 of 2000, a new law on intellectual property forthe Andean Community (Colombia, Venezuela, Ecuador, Peru andBolivia), explicitly prohibited the deposit of some trade names. Thenew law is considered a great improvement to the precedingregulations, which caused several misunderstandings.

According to Decision 486, a trade name in the AndeanCommunity is any mark identifying an economical activity orcompany or a commercial establishment. Its deposit in each one of

271. Sentence of July 9, 2001, of the Council of State in Eternit Colombiana v.Superintendence of Industry and Commerce (File No. 4722) (not yet published). Pre-judicialInterpretation by the Andean Community Court of Justice, dated February 20, 2001(Proceeding No. 9-IP-2001). Interpretation of Decision 344, Article 83 lit a), 113.

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the Member Countries only has a declarative character becausethe right to a trade name is acquired with its use. A trade nameowner can preclude any third party from using an identical orsimilar distinctive mark in commerce when it may cause a risk ofconfusion or association with his company, goods or services.

Decision 344 of 1993 did not regulate the deposit of tradenames. However, the Council of State had declared the nullity ofthe MAXMARA trade name certificate for its similarity to the well-known mark MAX MARA in a specific case.

The Council of State founded its decision on two arguments.First, although Decision 344 of 1993 did not prohibit explicitlyregistration of certain trade names, it was possible to establish ananalogy with the provisions for trademarks because the mainpurpose of all distinctive marks is to protect not only the traderwho has made his mark well known with his efforts, but also theconsumers. Second, there is a great risk of confusion betweentrademarks and trade names due to the intimate relation betweena mark or service and the commercial establishment where it isoffered.272


It is not possible to register a mark that is similar to a well-known mark, even if the well-known mark has not been registeredin the country where the conflict has arisen, as stated in asentence of the Council of State. The sentence refused the nullityaction filed by the owners of the mark LORD PARK against theresolution that granted the registration of the mixed trademarkOLD PARR.273

According to Decision 344 of 1993, when requesting theprotection of a well-known mark, it suffices to prove that the markhas been registered at least in one foreign country and that thesign is known by most consumers who customarily acquire theproduct or service, observed the Council of State, quoting the pre-judicial interpretation issued by the Andean Court of Justice.

The facts that gave rise to this pronouncement began in 1984,when Internacional de Licores Ltda. applied to register the mark

272. Pre-judicial Interpretation of the Court of Justice of the Andean Community, in

Council of State, Proceeding No. 33-IP-2000. Sentence of August 24, 2000 (not yetpublished) in Max Mara Group S.R.L. v. Superintendence of Industry and Commerce, FileNo. 4954 (not yet published). Decisions 313 and 344 of the Andean Pact, Articles 81 and 83,literals No. d) and e).

273. Sentence of January 25, 2001, of the Council of State in Internacional de LicoresLimitada v. Superintendency of Industry and Commerce (not yet published). Interpretationof Decision 344, Articles 81, 83 (a), 96, 146 and 147. Pre-judicial Interpretation of the Courtof Justice of the Andean Community, dated October 4, 2000 (Proceeding 63-IP-2000)(published in the Official Gazette, No. 617, November 7, 2000).

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LORD PARK for products in Class 33. Macdonald GreenlessLimited, owner of the trademark OLD PARR, opposed.

The PTO refused to register LORD PARK, alleging itgenerated confusion due to its similarity with the nominativetrademark OLD PARR, registered since 1958. Internacional deLicores countered by attacking the validity of the OLD PARRmark. Counsel argued the mark OLD PARR was not registered inColombia between 1988 (the date when the registration for theword mark expired) and 1995 (when the mixed mark OLD PARRwas registered).

Macdonald Greenless was able to prove the OLD PARRregistration was timely renewed and was in force from 1958 to1998. Furthermore, Macdonald Greenless remarked that, evenassuming the existence of a priority by the LORD PARK mark,which was filed in 1984, over the mixed mark OLD PARR, filed in1994, the latter should prevail because it is a globally well-knownmark.

The Council of State, accepting the pre-judicial interpretationof the Court of Justice of the Andean Community, accepted thearguments for the OLD PARR mark, explaining the priorityprinciple loses strength when compared with a well-known markbecause a well-known or famous mark enjoys special protection.

It added that the mark OLD PARR could be protected as awell-known trademark because it was registered in Venezuela atthe time the facts occurred, in view that its well-known characterwas proven with advertisements appearing in magazines withinternational or domestic circulation, witnesses and certificationsfrom chain stores.


American Brands, Inc. applied to register its trademarkAMERICAN BRANDS accompanied by the head of a red-coloredIndian, intended to cover liquor in Class 33.

Compañía Colombiana de Tabaco S.A. owns the trademarkPIELROJA accompanied by the drawing of the head of a red-colored Indian for cigarettes in Class 34. “Pielroja” means“redskin” in English. The registrant unsuccessfully opposed theAmerican Brands application.

Upon registration of the AMERICAN BRANDS and designmark, Compañía Colombiana de Tabaco filed a nullity actionbefore the Council of State.

The Council of State established that the graphical elementcommon to both trademarks, the Head of the Indian, wasremembered by the consumers more than their denominativeelements, PIELROJA and AMERICAN BRANDS. In fact, thegraphical element was so representative, that it was an exception

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to the principle that the denominative is the most characterizingelement in a combined trademark.

The Council of State concluded the risk of confusion amongconsumers was indeed high because both trademarks representedthe same idea: the profile of a red-colored Indian wearing similarfeather arrangements.

As for the products, the Council of State concluded they wererelated and the consumers could thus be induced into confusionbecause they are consumed by the same public and sold in thesame type of establishments, including bars, restaurants anddiscos. The Council of State ordered the cancellation of theregistration of trademark AMERICAN BRANDS and design.274

III.A.2.b. Similarity of Marks

According to a sentence of the Council of State, it is not alwaysnecessary to establish use of a mark to demand the nullity of amark similar to it. If the plaintiff bases the nullity action on theviolation of Article 83(a) of Decision 344, which prohibits theregistration of signs “that are confusingly similar to signs alreadyprotected to cover the same products,” he does not have toestablish the use of his trademark because “said use is not a partof the conditions of the Community provisions mentioned.”

In 1970, the Procter & Gamble Company registered ARIEL inColombia to cover detergents and cleaning products inInternational Class 3. The company later registered a combinedtrademark for ARIEL to cover the same products. It sued the PTOof Colombia for registering the trademark MURIEL in 1998 tocover these same products. The registrant was Proquim IndustrialLtda.

Procter & Gamble requested the Council of State annul theregistration of MURIEL based on a violation of Article 81 ofDecision 344, which provides that the signs registered astrademarks must be distinctive; of Article 83(a) of the sameDecision, which prohibits the registration of signs that areconfusingly similar to signs already protected to cover the sameproducts; and of Article 61 of the Constitution, according to whichit is the responsibility of the State to protect industrial property.

Proquim opposed based upon the absence of a likelihood ofconfusion, arguing that ARIEL is a male proper name, whileMURIEL is a name that relates to the words “muro” (wall) or “riel”(rail) and not to a proper name. It also argued, based upon Article108 of Decision 344, for nonuse of the ARIEL mark, given that theexistence of a valid license to Procter & Gamble Colombia S.A. was

274. Sentence of October 12, 2000 of the Council of State in Compañía Colombiana de

Tabaco S.A. v. Superintendency of Industry and Commerce (not yet published).Interpretation of Decision 344, Article 83(a) of the Andean Pact.

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not proved. In addition, Proquim filed to cancel the registration ofthe ARIEL mark based on nonuse.

The Council of State decided in favor of Procter & GambleCompany and declared null and void the registration of theMURIEL mark.275

First, Procter & Gamble Company, a United States companyand the registered owner of the trademark ARIEL in Colombia,had the power to institute the nullity action “regardless that thelicenses for the use of the mark in Colombia had not beenregistered,” because the Andean legislation does not stipulatesubmission of evidence of use, neither to demand nor to declarenull and void other trademark registrations.

Second, the trademark MURIEL is similar to ARIEL inideological, spelling and phonetic terms. ARIEL was registeredfirst to cover the same products, which can cause confusion amongthe consuming public who buys these cleaning products in grocerystores, market plazas and supermarkets.

The Council of State noted both signs are used as propernames and surnames. Additionally, the fact that the MURIELmark is nominative and the ARIEL mark is combined does notprevent confusion because in the ARIEL mark, the word prevails.

Finally, the similarity in spelling terms arises because thenumber of equal letters in “riel” is higher than the number ofdifferent letters. The difference between “Mu” in MURIEL, and “A”in ARIEL does not eliminate the risk of confusion.

III.A.3. Prior User

Cervecería Backus y Johnston S.A. filed a nullity petitionagainst the registration for the CRISTAL ORO mark granted toGaseosas Posada Tobón S.A. (“Postobón S.A.”). It based the claimupon its alleged priority rights in the mark CRISTAL CERVEZAand CRISTAL registered in Perú since 1990, as well as itsapplications to register both marks in Colombia, which were filedbefore Postobón S.A.

The Council of State applied for a pre-judicial interpretationfrom the Court of Justice of the Andean Community with respectto Article 93 of Decision 344, which establishes the owner of anidentical or similar mark for products or services that may inducethe public to error, or the party who first applied for registration ofsuch trademark in any of the Member Countries, has a legitimateinterest to oppose such a registration.

275. Sentence of February 8, 2001, of the Council of State in The Procter & Gamble

Company v. Superintendency of Industry and Commerce (not yet published). Interpretationof Decision 344, Articles 81 and 83 (a). Pre-judicial Interpretation of the Court of Justice ofthe Andean Community, dated August 9, 2000 (Proceeding 41-IP-2000) (published in theOfficial Gazette No. 604, September 27, 2000).

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The Court explained that the priority right granted by theAndean Community to whoever first applies for registration of thetrademark in any of the Member Countries “constitutes anapplication of the aphorism which expresses that first in time, isfirst in right,” and clarified that its acknowledgement requires thepresence of two elements: that the assumed priority applicationshall have been admitted to process and that the sign applied forevidences the quality of registrability since if it were subject to anyreason for non-registrability, no preferential right could be grantedto the applicant.

The Council of State found Postobón S.A. had priority since ithad registered the mark CRISTAL in 1939 in Colombia forproducts in International Class 32, to which beers, mineral andaerated waters, fruit drinks and fruit juices belong. The Council ofState found the registration was enforceable.

Consequently, the Council of State declared the registration ofthe CRISTAL ORO mark to Postobón S.A. lawfully registered.276


The PTO of Colombia repealed the grant of the registration ofthe composite (word and graphic) trademark HAWAIIAN TROPICin International Class 3, holding it nonregistrable in light of one ofthe provisions of the Inter-American Convention on TrademarkProtection of Washington of 1929.

The proceeding was initiated through an opposition filed byTanning Research Laboratories, Inc. against the resolution thatgranted the registration on the ground that such trademark couldlead to confusion with its mark HAWAIIAN TROPIC previouslyregistered in Ecuador and Bolivia, and that its grant infringed the1929 Convention.

The 1929 Convention provides that any proprietor of atrademark legally protected in one of the contracting States mayoppose its registration or filing in another of the contracting states,upon evidencing that the person who uses it or intends to registerit is aware of the existence or use of the trademark on products ofthe same Class in any of the contracting states of the Convention.

In the case under review, all the requirements were met sincethe opposer Tanning Research Laboratories Inc. showed: (i) thatEcuador and Colombia are parties to the 1929 Convention, (ii) thatit was the proprietor of the mark HAWAIIAN TROPIC in Ecuadorand (iii) that the applicant of the composite trademarkHAWAIIAN TROPIC in Colombia was fully aware of opposer’s

276. Sentence of September 14, 2000, of the Council of State in Cervecería Backus &Johnston S.A. v. Superintendency of Industry and Commerce (File 3924) (not yet published).Interpretation of Decision 344, Articles 81, 83(a), 89, 93, 104, 105, 146 and 147. Pre-judicialInterpretation of the Court of Justice of the Andean Community, dated February 9, 2000(Proceeding No. 1–IP-2000) (published in the Official Gazette, No. 581).

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registration in Ecuador, since for several years the applicant hadbeen a licensee of the opposer to commercialize and bottle thesubject products in Colombia.

The PTO clarified that the authorization for commercializing aproduct does not imply assignment of the mark or permit one toregister it as its own in Colombia, and consequently it found thereason for nonregistrability of the Convention of 1929 evidenced,and accepted the opposition and repealed the trademarkregistration.277


Hitachi Ltd., owner of the trademark HITACHI, filed a nullitypetition against the trademark HITH registered to coverpharmaceutical, veterinary and sanitary preparation products inInternational Class 5 on the basis that its mark was well known,and thus there existed a likelihood of confusion.

Upon request, the Court of Justice of the Andean Communityissued a pre-judicial opinion that well-known or famoustrademarks are those that have been widely diffused within agroup and are known by a collectivity of individuals belonging to aspecific group of consumers or users of the type of goods or servicesto which the trademark applies.

The Court explained that for a famous or well-knowntrademark to be rendered effective protection in the AndeanCommunity, it is necessary only that the mark be known andregistered in the country or abroad. It is not required that use beevidenced, as it so occurs in other places.

The Council of State acknowledged that the HITACHI mark isa well-known mark, registered in Colombia since 1961 to coverproducts in various international classes (scientific, nautical,surveying, electric, instruments, machines, tools, motors) and hasconsiderable diffusion at a worldwide level.

However, it denied the nullity action, deeming there were notsufficient similarities between the marks to induce the consumerpublic to error. The Council of State noted the spelling ofHITACHI and HITH constituted a different number of charactersand additionally they were not similar from the conceptual point ofview, since neither evoked any specific idea.

Finally, the Council of State stressed there exists no similarityor likelihood of confusion between the trademarks since theconsumer public of pharmaceutical and veterinary products differsfrom the consumer public of electronic equipment.278

277. Superintendency of Industry and Commerce of Colombia, Resolution No. 4328 of

February 20, 2001.

278. Sentence of September 14, 2000, of the Council of State in Hitachi Ltd. v.Superintendency of Industry and Commerce (File 5230) (not yet published). Interpretationof Decision 344, Articles 81, 82(a), 83(d) and (e) and 84. Pre-judicial Interpretation of the

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The owner of the LA FUENTE mark, registered for productsin International Classes 29, 30 and 32, filed a nullity action withthe Council of State against registration of the trademarkFUENTE CLARA, covering products in International Class 29, onthe basis of a risk of confusion among the consumer public.

The Court of Justice of the Andean Community issued a pre-judicial interpretation of Article 83(a) of Decision 344, expressingthe opinion that confusion would be the result of the firstimpression drawn on by the composition of the two trademarkstogether, that the trademarks were examined successively but notsimultaneously, that whoever was to appreciate the similaritywould take the place of the potential purchaser and that moresimilarities than differences between the trademarks were to betaken into account.

Based on the support of the mentioned sentence, the Councilof State concluded there existed no grounds for confusion. This wasprincipally because the LA FUENTE mark was a nominativetrademark, but the FUENTE CLARA mark was a design orgraphic trademark represented by a drop of water falling withinwhose body shadows produce the images of figures resembling thecharacters F and C, which constitute the initial letters of theexpression FUENTE CLARA.

“When in the presence of a trademark entirely graphic andanother denominative, there is no way to make comparisons otherthan the conceptual or ideological,” the Council of State explained,further stating no confusion occurred because the trademarks wereevocative of different ideas.

Finally, the Council of State strengthened its position bystating that even if the FUENTE CLARA mark were a combinedtrademark (name plus graphic), no risk of confusion would existbecause of differences in spelling, visual, phonetical and graphicstructures. Consequently, it denied the cancellation petition ofFUENTE CLARA.279

III.A.17. Descriptive Use

Compañía Química Borden S.A instituted a nullity actionbefore the Council of State against the registration of the markDOMÉSTICO to distinguish varnishes, lacquers and generally

Court of Justice of the Andean Community, dated July 21, 2000 (Proceeding No. 47 IP—2000) (published in the Official Gazette, No. 594).

279. Sentence of August 10, 2000, of the Council of State in Helados La Fuente S.A. v.Superintendency of Industry and Commerce (File 5196) (not yet published). Interpretationof Decision 344, Articles 81, 83(a)(b)(d)(e), 146 and 147. Pre-judicial Interpretation of theCourt of Justice of the Andean Community, dated June 10, 2000 (Proceeding No. 29-IP-2000) (published in the Official Gazette, No. 581).

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goods in International Class 2, arguing that it was descriptive.Pintuco S.A., owner of the trademark DOMÉSTICO, filed anopposition against the nullity action on the ground that saidtrademark is not descriptive of the goods identified thereunder.

The Court of Justice of the Andean Community determined,upon receiving a request of pre-judicial interpretation from theCouncil of State, that “descriptive signs having a directrelationship with the goods or services intended to be protectedwith the mark may not be registered because the trademark to beregistered should exactly refer to the common quality of the goodsor services intended to be covered with the mark.”

The Council of State adopted this interpretation andproceeded to seek the following definitions in the “Diccionario de laLengua Española” (Dictionary of the Spanish Language):

Domestic: Pertaining or related to the house or home.

Color: Substance prepared to paint or to dye.

Varnish: Dissolution of one or more resinous substanceswithin a liquid giving luster to paints, woods and other things.

Lacquer: Colored aluminous substance used on paint.The Council of State compared the definitions of the goods

covered in International Class 2 with the word “domestic” andconcluded that there was not a direct relationship between paints,varnishes, resins and enamels and the expression “doméstico” asthose goods may be used in places other than home, such asindustries, clinics, offices and warehouses.

Additionally, the Council of State asked the followingquestion, “how is the trademark intended to be registered?” If theanswer, spontaneously given by the average consumer, is equal tothe designation of the product, then it is a descriptive mark. TheCouncil of State asked that question with respect to goods inInternational Class 2 and found that the answer would not be“domestic” but, for instance, brilliant, matte, washable.

Therefore, the Council of State determined that the trademarkDOMÉSTICO may be registered inasmuch as it is not descriptiveof goods in International Class 2 and denied the claims of thecomplaint.280

III.G. Post Registration Evidence of Use and Renewals

In the Andean Community, the right to the exclusive use of amark is only acquired by means of its registration at the


April 27, 2001, in Council of State, Proceeding No. 08-IP-2001, June 14, 2001, File No. 5477(not yet published) in Compañía Química Borden S.A v. Superintendence of Industry andCommerce. Decision 344 of the Andean Pact, Article 82(d).

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competent national office, which in Colombia is theSuperintendence of Industry and Commerce (SIC). Theregistration of a trademark is valid for ten years, as of the date ofgranting of the trademark registration, and should be renewedevery ten years after payment of the corresponding fees.

Whoever fails to renew a trademark registration loses thepower to prevent third parties from using a similar or identicalmark, runs the risk of having another person register the samemark to identify the same products or services, and what is worse,is exposed to suffer huge economic losses, by wasting itsinvestment on production, advertisement and marketing.

Moreover, letting a trademark registration expire can alsogenerate criminal and fiscal investigations of the administrativepersonnel of the registrant company, which due to negligence, forexample, allowed the trademark registrations to expire. The abovescenario was provided by the Colombian Constitutional Court in aprotection writ of mandamus issued in the case of the mark TAPAROJA. The facts of the case can be summarized as follows. In 1983,the SIC granted to the Society of Liquors of the Department ofTolima (SLDT) the registration of the trademark TAPA ROJA foridentifying alcoholic beverages, which was in force until 1993. In1997, Mr. Carlos Augusto Castro applied for the registration of thetrademark TAPA ROJA, also to identify alcoholic beverages, and itwas granted in virtue of the fact that the registration owned by theSLDT had already expired.

Immediately, the SLDT instituted legal remedies of areconsideration petition and subsequent appeal before the SIC,which refused them for having been filed untimely.

The SLTD exerted the public action of nullity at the Council ofState against the resolution that granted the registration of thetrademark. However, the application was refused because thetrademark registration had already been legally granted.

The SLDT instituted a protection writ of mandamus at theAdministrative Court of Tolima in June, 2000, in order to defendits basic rights to due process and good name, and said protectionwas granted. However, the Council of State repealed the protectionwrit of mandamus granted by the Court grounded on the followingreasoning. There was no violation of due process because theprocedure used at the SIC for granting the registration of thetrademark TAPA ROJA to Mr. Castro complied with the applicablelegal provisions. A writ of mandamus as transient mechanism toprevent inescapable damages was not applicable in this casebecause the term elapsed between the granting of the registrationto Mr. Castro (April, 1998) and the date of instituting the writ ofmandamus (June, 2000) demonstrates that the plaintiff was notexposed to the closing of its factory. There was no violation of theright to good name because Mr. Castro is the legal owner of the

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mark, and while he exerts his right within legal limits, it isungrounded to state that there is violation to the right to goodname or commercial reputation. In fact, nobody can be punished onthe grounds of the existence of the possibility of making undue useof a commercial name.

Finally, the Colombian Constitutional Court, when reviewingthe decision of the Council of State, stressed that it was SLDT’slack of prudence in the attention of the administrative affairs of afactory that allowed another person to obtain the registration ofthe mark TAPA ROJA. It let the registration expire and did notrenew it timely. The registration of the mark TAPA ROJA was inforce until May 17, 1993, and its renewal was not requested withinthe six months immediately before that date, nor within the sixfollowing the expiration date. The liquor factory did not timelyoppose the registration application for the mark TAPA ROJA filedby Mr. Carlos Castro, even though said application was publishedin the Industrial Property Gazette on September 29, 1997. Theliquor factory did not institute any legal actions in a timelymanner. In spite of the mark being granted on April 13, 1998, infavor of Mr. Castro, the nullity action was only filed by the SLDTon June 28, 2000. This means that more than two years hadelapsed after the administration granted the mark against anotherperson.

The Constitutional Court informed the Regional AttorneyGeneral Office of Tolima and the General Comptrollership Office ofTolima of this decision, so that they would institute thecorresponding fiscal and disciplinary actions in order to determinethe degree of responsibility of its officers and former officers for thedamages to be eventually caused both to the health and educationservices of the inhabitants of the department, as a largepercentage of the company income was derived from those items.281

COMMUNITY TRADEMARK


Vacations Direct Administration Limited applied to registerthe trademark VACATIONS DIRECT for goods and services inClasses 16, 36, 39 and 42, including, inter alia, holiday andvacation services. The Office rejected the application underArticles 7(1)(b) and (c) of Council Regulation No. 40/94 on thegrounds that the mark directly and unambiguously describedholiday and vacation services provided through direct sales ormarketing methods.

281. Colombian Constitutional Court. Writ of Mandamus 938, August 30, 2001.

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The applicant appealed, arguing that the unusual combinationof a noun (vacations) and an adjective (direct) made nogrammatical sense and that the general impression created by thecombination was that of a trademark and not of a purelydescriptive term. Given that the services offered under thetrademark were generally expensive and that a consumer wouldtake time and care over their selection, particular attention wouldbe paid to their origin.

The Office had given no evidence that the term was beinggenerally used in the trade. Other similar marks had beenaccepted, for example, RAILDIRECT on the United KingdomRegister and DIRECT HOLIDAYS and device for goods andservices in Classes 16, 36, 39 and 42, covering, inter alia, holidayand travel reservation services. In the latter mark, the figurativeelement was no more than a border/background that did not addany distinctive character to the mark.

The Office rejected the appeal, holding that the combination ofthe word DIRECT with VACATIONS was not allusive butexclusively and directly descriptive.282 The trademarkVACATIONS DIRECT, as a whole, would be immediatelyunderstood as denoting goods and services relating to vacations,which are provided directly, i.e., without intermediary. Theobstacle existed in the English language, but the trademark wouldbe immediately understood as well in other Latin languages, asthe words VACANCES DIRECTES (French), VACACIONESDIRECTAS (Spanish), VACANZE DIRETTE (Italian) wereextremely similar, or in central and northern European countrieswhere variations of DIRECT belonged to the general vocabularylike DIREKT (German), DIREKTE (Danish) or DIREKT (Swedish)and where the word VACATION belonged to the basic Englishvocabulary.

The combination VACATIONS DIRECT was grammaticallycorrect, generally comprehensible, and formed in accordance withcustomary usage. The mere fact that an expression was notmentioned in dictionaries did not render a sign eligible forregistration.283

Article 7(1) of Council Regulation No. 40/94 made it clear thatfor a sign to be ineligible for registration, it was sufficient for oneof the absolute grounds for refusal to apply.284

The trademark VACATIONS DIRECT was not capable ofdistinguishing the goods or services applied for by their businessorigin. The targeted consumers would see the trademark as a

282. Decision of the Third Board of Appeal, Case R0033/2000-3, January 23, 2001.

283. Judgment of the Court of First Instance, Case T19/99, COMPANYLINE [2000]ECR II-1, OJ OHIM 5/2000, p. 698.

284. Judgment of the Court of First Instance, Case T-163/98, BABY-DRY [1999] ECR II-2383, OJ OHIM II/99, p. 1487.

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description of the fact that holiday accommodation services, etc.were directly provided without any intermediary. The trademarkwas not eligible for registration under Article 7(1)(b).


Tong Hwei Enterprise Co. Ltd. applied to register thetrademark THE in slightly stylized form for screws, nuts and boltsand other goods in Class 6. The Office rejected the applicationbecause the trademark did not comply with Article 7(1)(b) ofCouncil Regulation No. 40/94, the mark meaning “the best,” “only”or “most remarkable” and therefore being devoid of any distinctivecharacter. The figurative element was not considered to addanything distinctive to the mark.

The applicant argued that the mark consisted of the acronymof its name. The acronym was adopted because of the difficulty inputting the full name of the applicant on the goods, due to theirsmall size. The trademark had already been registered in theUnited States, Japan and Germany. The German registration wasof special significance, given the German Office’s strict practice onthree letter marks.

The Office upheld the objection. A trader could not claim amonopoly in respect of a common laudatory word on the basis thatthe word was an acronym of the applicant’s name. Generic ordescriptive words do not become distinctive trademarks simplybecause they are written in bold script. The mark’s descriptiveimpact was immediate and a matter of first impression. Theexaminer is not bound to reach the same conclusion as thecompetent authorities in other countries.

The applicant appealed and was successful.285 The Board ofAppeal found that without a noun, comparative adjective or adverbfollowing it, the word THE standing alone, was stripped of anymeaning, including any laudatory meaning. For example, the termTHE THREADED RODS may be considered laudatory for thoseparticular goods, but it is not true that the solitary word THEwould be equally so.

Wm. Wrigley Jr. Company applied to register the trademarkDOUBLEMINT for, inter alia, “chewing gum” in Class 30. Theapplication was refused registration on the grounds that thetrademark was purely descriptive and therefore fell within theambit of Article 7(1)(c) of Council Regulation No. 40/94. Theapplicant appealed against the examiner’s decision to the Board ofAppeal. The appeal was dismissed. The Board found thetrademark DOUBLEMINT to be a combination of two Englishwords with no additional fanciful or imaginative element, whichdescribed certain characteristics of the goods in question. In

285. Decision of the First Board of Appeal in Case R 274/2000-1, November 17, 2000.

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particular, the Board felt the trademark served to indicate that thegoods either contained double the amount of mint, for example,peppermint, or that they were flavored with two different varietiesof mint, for example, peppermint and spearmint.

The applicant appealed to the Court of First Instance andcontended that the trademark DOUBLEMINT did not fall withinthe scope of Article 7(1)(c). That provision only covered marks thatconsisted exclusively of descriptive indications. Once a mentaleffort, even a small one, was necessary to clearly discern atrademark’s possible meaning, the mark became suggestive.

Consumers could not know what was the “usual” amount ofmint in the goods in question because there was no definition ofsuch a thing. Consequently, there was no taste that was twice asstrong as “usual.” The term DOUBLEMINT did not thereforedescribe any definable characteristic of the goods in question, butgave a highly fanciful and vague impression of the nature of thegoods. Such trademarks were strong because they stuck inconsumers’ minds.

The Court of First Instance agreed that the Board of Appealwas wrong in regarding the trademark DOUBLEMINT asexclusively descriptive and allowed the trademark to proceedforward to registration.286 The adjective DOUBLE is unusual whencompared to more straightforward and commonplacecomplimentary words, such as “much,” “strong,” “extra” or “best.”In the present case, the adjective makes no comparative allusion tothe single state of the same, or to a competitive product.

The Board of Appeal itself accepted that the word DOUBLE,particularly combined with the word MINT had two distinctmeanings for the consumer, either double the strength or acombination of two flavors. MINT is a generic term that the Boardof Appeal considered to cover peppermint, spearmint and otherculinary herbs. The numerous meanings of DOUBLEMINT wereimmediately apparent to an average English speaking consumerand thus deprived the sign of descriptive function. For consumerswithout a sufficient mastery of the English language, the term atissue would, by its very nature, have a vague and fancifulmeaning. Moreover, the multiplicity of possible semanticcombinations precluded the consumer from remembering any oneof them in particular.

Accordingly, the trademark DOUBLEMINT did not enableconsumers to detect the description of a characteristic of the goodsin question, immediately and without further reflection, and themark could not be characterized as exclusively descriptive.

The Sunrider Corporation applied to register the trademarkVITALITE for a range of goods in Classes 5, 29 and 32. The Office

286. Decision of the Court of First Instance in Case T-193/99, January 31, 2001.

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rejected the application on the grounds that the trademark did notcomply with Articles 7(1)(b) and (c) of Council Regulation No.40/94, the mark being likely to be understood by a Frenchspeaking consumer as the word “vitalité” meaning “vitality.”

The applicant appealed. The Board of Appeal partiallyannuled the Examiner’s decision but maintained refusal in respectof a wide range of goods, including “food for babies and mineraland aerated waters.” The applicant appealed to the Court of FirstInstance. The Court annuled the decision of the Board of Appeal inrespect of “food for babies and mineral and aerated waters.”287

Although food for babies was often preservative-free orcontained added vitamins and trace elements, the sign VITALITEcould not be regarded as designating those characteristics and, atbest, was only indirectly evocative of them. Although food forbabies was certainly designed to promote the growth of babies, themark VITALITE did not go beyond the acceptable limits ofsuggestion.

The Office had contended that mineral and aerated waterswere often advertised as promoting a healthy, sporty image andcontributed to a general sense of well-being. However, theseexplanations were not considered decisive. On the contrary, theyshowed that what was at issue in the present case was not thedesignation of a characteristic of the goods, but the meresuggestion of an image that, for promotional purposes, had beengiven to the goods. Accordingly, the word “vitality” did not directlyor immediately inform the consumer of one of the characteristics of“food for babies” or “mineral and aerated waters.” Consequently,the link between the meaning of the word “vitality” on the onehand and the goods in question, on the other, did not seem to besufficiently close to be caught by the prohibition laid down byArticle 7(1)(c). It was a case of evocation and not designation forthe purposes of that provision.

The Office had inferred the incompatibility of the trademarkVITALITE with Article 7(1)(b) from the fact that it wasincompatible with Article 7(1)(c). However, as the decision torefuse the application under Article 7(1)(c) had been found to beincorrect, the Article 7(1)(b) objection fell away.

Procter & Gamble Company was successful in an appealbefore the ECJ concerning rejection of its application to registerthe trademark BABY-DRY for disposable diapers made out ofpaper or cellulose and diapers made out of textile.288 The Court ofFirst Instance originally refused the application under Articles7(1)(b) and (c) of Council Regulation No. 40/94 because the

287. Judgment of the Court of First Instance, Case T-24/00, January 31, 2001, [2001]

ETMR 56.

288. Judgment of the European Court of Justice, Case C-383/99 P, September 20, 2001.

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trademark BABY-DRY consisted exclusively of descriptive wordsand was also devoid of distinctive character.

Procter & Gamble argued that the judgment delivered by theCourt of First Instance was based on an outdated view oftrademarks, namely, that registration of a trademark gives theholder of the mark a monopoly right over the signs or indicationsof which it is composed, so that descriptive signs or indicationsneed to be left free for trade use and are, by definition, not capableof constituting trademarks. Procter & Gamble further argued thatboth notions—distinctiveness and not being solely descriptive—must be considered as a whole to determine whether the sign orindication filed is capable of identifying the goods concerned asoriginating from a particular source.

The Court found that, under Article 12 of Council RegulationNo. 40/94, the rights conferred by a trademark do not entitle theproprietor to prohibit a third party from using descriptive terms,provided that the proprietor uses them in accordance with honestpractices in industrial or commercial matters. The Court furtherfound that the purpose of the prohibition of registration of purelydescriptive signs or indications as trademarks is to preventregistration as trademarks of signs or indications that becausethey are no different from the usual way of designating therelevant goods or services or their characteristics could notfunction as identifiers of source and were therefore devoid ofdistinctive character.

A mark composed of signs or indications defined in Article7(1)(c) should not be refused registration unless it comprises noother signs or indications, and, in addition, the purely descriptivesigns or indications of which it is composed are not presented orconfigured in a distinctive manner. In the Court’s view, anyperceptible difference between the combination of words submittedfor registration and the terms used in the common parlance of therelevant class of consumers to designate the goods or theiressential characteristics is apt to confer distinctive character onthe word combination enabling it to be registered as a trademark.

The Court opined that to assess whether a combination suchas BABY-DRY is capable of distinctiveness, it is necessary to putoneself in the shoes of an English-speaking consumer. The Courtdetermined that while each of the two words in the combinationBABY-DRY may form part of expressions used in every day speechto designate the function of babies’ diapers, their syntacticallyunusual juxtaposition is not a familiar expression in the Englishlanguage, either for designating babies’ diapers or for describingtheir essential characteristics.

The Court found that word combinations like BABY-DRYcannot therefore be regarded as exhibiting, as a whole, descriptivecharacter. They are lexical inventions bestowing distinctive power

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on the mark so formed and may not be refused registration underArticle 7(1)(c) of Council Regulation No. 40/94. Thus, the Courtheld that the mark BABY-DRY was not merely descriptive of thegoods in question and reversed the decision of the lower court.


Jbs-Undertojet A/S sought registration of JBS in stylized formfor clothing, footwear and headgear in Class 25.

The application was opposed by Technisynthese S.A.R.L.,proprietor of a number of national registrations of TBS combinedwith a device element covering clothing, footwear and headgear inClass 25. The opposition was based on Article 8(1)(b) of CouncilRegulation No. 40/94.

The Opposition Division rejected the opposition on the groundsthat the figurative element appearing in the applicant’s mark didnot resemble any of the figurative elements of the earlier marks.Phonetically the two marks were partly identical. However, thepronunciation of the first letters J and T were different in all therelevant languages. When trademarks are composed of only threeletters, with no meaning, the difference in one letter may besufficient to render them not similar. This is especially so whenthe first letter is different and the figurative designs of the marksin dispute appear to be visually very different.

The opponent appealed, arguing that three-letter marks,which cannot be pronounced, are uncommon in Class 25, andtherefore consumers would perceive the earlier marks as striking.They also stated that the average consumer tends to remember theend of marks rather than the beginning, and since the last twoletters of the marks were identical, there was a greater risk forconfusion.

The Board of Appeal rejected the appeal, upholding theOpposition Division’s conclusion that the marks were sufficientlydissimilar to avoid likelihood of confusion within the meaning ofArticle 8(1)(b) of Council Regulation No. 40/94.289 Acronyms werecommonly used as trademarks in the fashion industry, and theconsumer would not perceive three-letter marks as striking.


Nueva Linea, S.A. applied to register NUEVA LINEA instylized form for goods and services in Classes 16, 20, 35 and 39.New Line Cinema Corporation opposed registration in Class 16only on the basis of registrations, in the United Kingdom andGermany, of the trademarks NEW LINE CINEMA and NEW

289. Decision of the Second Board of Appeal, Case R393/1999-2, February 7, 2001.

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LINE CINEMA and device covering goods and services in Classes9, 28 and 41.

The Opposition Division compared the two trademarks. Theopponent’s marks consisted of the English words NEW LINECINEMA alone and in conjunction with an image of photographicfilm. The applicant’s mark consisted of the Spanish words NUEVALINEA (“new line” in English) written in a fanciful white typefaceand superimposed on a black rectangle. The opponent’strademarks were thought likely to be understood by the relevantconsumers as referring to a new concept of cinematographic film.The words NEW LINE CINEMA were not considered to have ahigh degree of distinctiveness for goods and services within thefilm production sector. It was thought unlikely that consumers inthe relevant countries, i.e., United Kingdom and Germany, wouldknow the meaning of the Spanish words NUEVA LINEA andtherefore, to those consumers, the words included in theapplication were not weak in any way.

Visually and phonetically the marks were considereddistinguishable. The two marks had the letters “N” and “E” in thefirst word and the letters LINE in the second word in common.However, apart from this the marks were considered to havenothing else in common. The differences in the marks, togetherwith the fact that the earlier marks enjoyed only a narrowprotection because the words NEW LINE CINEMA were weak, ledthe Office to the conclusion that the marks were sufficientlydifferent both from a visual and phonetic point of view. The natureof the goods applied for was considered different from theopponent’s goods and services. The respective goods and serviceswere not supplied through the same sales outlets. Therefore, therewas no similarity. The opposition failed.290

I.B.11.e. Bad Faith

Senso di Donna Vertriebs-GmbH obtained a CTM registrationNo. 000616979 for the trademark SENSO DI DONNA and devicefor goods in Classes 9, 14, 16, 18, 24 and 25. The Class 25 portionof the specification covered “neckerchiefs, clothing, footwear,headgear.”

An application for a Declaration of Invalidity was filed by KimCarl Meller, proprietor of registrations of the trademark SENSOcovering footwear in the United Kingdom, France and Italy.

The applicant filed on the basis of Article 51(1)(b) of CouncilRegulation No. 40/94 claiming that the registered proprietor actedin bad faith when filing the trademark application. The application

290. Decision of Opposition Division, No. 78/2001, ruling on Opposition No. B 253 684,

January 19, 2001.

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was also based on Article 52(1)(a) in conjunction with Article8(1)(b) and Article 8(5) of Council Regulation No. 40/94.

The Office stated that when both absolute and relativegrounds for invalidity are invoked, inspection had to begin withabsolute grounds.291

In the present case, the applicant’s challenge was unfoundedbecause he had not demonstrated that the registered proprietorhad been acting in bad faith when seeking registration. The onusis on the applicant to set out the factual basis of any bad faithclaim.

Bad faith was a narrow legal concept within the CTM system.Bad faith was the opposite of good faith, generally implying orinvolving, but not limited to, actual or constructive fraud, or adesign to mislead or deceive another, or any other sinister motive.Conceptually, bad faith can be understood as “dishonest intention.”This means that bad faith may be interpreted as unfair practicesinvolving lack of any honest intention on the part of the applicantat the time of filing. For example, if it can be shown that theparties concerned had been in contact, for instance at anexhibition, and when subsequently one party filed an applicationconsisting of or containing the other party’s trademark, therewould be a reason to conclude bad faith.

As regards a comparison of the marks, trademarks had to becompared by making an overall assessment of the visual, phoneticand conceptual similarities between them. The comparison mustbe based on the overall impression given by the marks, bearing inmind, in particular, their distinctive and dominant components.

In the present case, the marks at issue contained the identicalword SENSO, meaning “sense” in Italian. The words DI DONNAmean “of a woman” which is equivalent to “for women.” The wordsDI DONNA were merely a descriptive element for the goods inquestion, and the public would pay less attention to them. TheOffice concluded that if the relevant consumer sees the goods andmarks at issue alongside each other, the consumer would assumethat the holder of the SENSO brand had undertaken a “lineextension” and now possessed a family of SENSO marks. The CTMregistration was declared invalid for “footwear” in Class 25.

I.B.27. Three-Dimensional Marks

The Procter & Gamble Company applied to register a three-dimensional mark for a range of goods in Class 3, includingpreparations for the washing, cleaning and care of dishes. Themark consisted of a black and white drawing of a washing tabletshown from one view only.

291. Decision of the First Cancellation Division in Proceedings for a Declaration of

Invalidity No. C000616979/1, October 16, 2000, [2001] ETMR5.

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The Office rejected the application because the trademark didnot comply with Article 7(1)(b) of Council Regulation No. 40/94.The mark simply consisted of the black and white three-dimensional representation of an ordinary wash tablet, beingdevoid of any distinctive character in relation to the goods.

The applicant disputed this, arguing that a minimum degreeof distinctiveness was sufficient for a trademark to be registrable.There was nothing in the Regulation that prohibited registrationof trademarks that were representations of the goods themselves.The mark in question was distinctive and designed to have “eyeappeal.” The central insert to the wash tablet was an arbitraryaddition designed to strike the eye. It was not essential for theproduction and sale of goods applied for that they should bepresented in tablet form. The Office had not supplied evidence tosupport the assertion that three-dimensional tablets comprisingthese features were commonplace.

The objection was maintained and the applicant appealed. Onappeal, the objection was upheld.292

The goods covered by the application were traditionally sold inliquid or powder form. However, it was now common to sell suchgoods in the form of solid tablets. The applicant could not beallowed a trademark monopoly on detergent products in the shape.The tablet form of such products had to be kept free forcompetitors to use, since it was a practical, simple and basic shapewith a complete absence of distinctive character. The mark appliedfor took the shape of a black flecked rectangular tablet withbeveled corners. The top surface of the tablet bore an overalldepression. There was nothing in these ordinary features tocapture the consumer’s eye. The light and dark tones representedin the mark did not create any distinctive quality, since for anyimage to be visible to the human eye, there must be at least twocontrasting colors. The contrasting tones served merely to give theillusion of depth and solidity and to allow its features to be seen.

Taking the shape as a whole, it showed unremarkablevariations on the standard tablet product. There was no reason tobelieve the mark would be perceived by the relevant public as adistinctive sign.


Stefan Ruf and Martin Stier applied on April 15, 1996, toregister the trademark DAKOTA and device through theirattorney, Mr. S. In the space on the application form relating tofees, the applicants stated that the application fee would be paidlater. On May 21, 1996, the Office acknowledged receipt of theapplication for registration. On June 17, 1996, Mr. S sent to the

292. Decision of the First Board of Appeal, Case R527/2000-1, April 4, 2001.

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Office a copy of the Certificate of Registration of the trademarkDAKOTA at the German Patent Office together with anauthorization of agent. A further authorization was sent by Mr. Son December 19, 1996, at the request of the Office.

It was not until February 5, 1997, that Mr. S realized that theapplication fee had not been paid. Payment was made onFebruary 12, 1997, and the application accorded a filing date ofthat day.

On March 18, 1997, Mr. S applied for restitutio in integrumfor the award of a filing date. In support of the application Mr. Ssubmitted that the application fee had been paid out of time owingto an oversight by a member of his staff, Ms. C. The application forrestitutio in integrum was dismissed.

The applicants appealed under Article 59 of CouncilRegulation No. 40/94 seeking annulment of that decision.293 Theapplicants claimed that Article 27 of Council Regulation No. 40/94was incompatible with certain international conventions onprotection of industrial property. The Office had failed to informthe applicants on its own initiative that there was a one monthtime limit for payment of the application fee under Article 27. Rule9(1) of Implementing Regulation No. 2868/95 had been infringed inthat the Office was under a duty to inform applicants that theirapplication for registration could not be accorded a filing datebecause the application fee had not been paid within theprescribed period.

The Court agreed with the Office that Rule 9 laid down aspecific procedure that enabled applicants to obtain as their filingdate the date on which they remedied any defects in theirapplication.

On the applicants’ plea that Article 27 of Council RegulationNo. 40/94 was incompatible with certain international conventions,the Court held that these conventions, even if relevant, did notestablish any principle with which Article 27 of Council RegulationNo. 40/94 must be considered to be incompatible.

The applicants argued that the Office’s acknowledgement ofreceipt of applications for registration now contained a reminder ofthe time limit for payment of the application fee. Because theOffice was bound to observe the principle of equal treatment, itcould not treat the applicants less favorably than new applicants.

The Court found that Mr. S had a system for monitoring timelimits and that he had issued his staff with general instructions toensure that the one month time limit for payment of theapplication fee laid down by Article 27 of Council Regulation No.40/94 was observed. Given that the applicants’ representative wasaware of the obligation to pay the application fee within the time

293. Judgment of the Court of First Instance, Case T-146/00, June 20, 2001.

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limit, the plea of infringement of the principle of equal treatmentwas irrelevant.

The applicants argued that they had taken all due carerequired by the circumstances within the meaning of Article 78(1)of Council Regulation No. 40/94. The fact that the application feewas not paid within the time limit was due to an isolated error onthe part of Ms. C. The stringency of the conditions laid down byArticle 78 should be relaxed in view of the excessive workload andorganizational strains encountered by the applicants’representative when the Regulation entered into force.

The Office contended that restitutio in integrum may beaccorded when there was an exceptional error, if a representative’soffice functions properly otherwise. However, it is precluded whenthe time limit would still not have been observed had that errornot been made. The alleged oversight could not have been the onlyreason for the deadline for the payment of the application feehaving been missed. Ms. C’s alleged error should normally havebeen discovered on the occasions when there was an exchange ofcorrespondence on the application with the Office, that is to say onMay 21, 1996, June 17, 1996, and December 19, 1996. It did nottherefore appear that all due care required by the circumstanceswithin the meaning of Article 78 of Council Regulation No. 40/94was taken. The exceptional workload and organizational strainsthat the applicants claimed they were subject to as a result of theentry into force of Council Regulation No. 40/94 are irrelevant inthat connection.

The Court dismissed the action.Christina Kik, a lawyer and trademark attorney in the

Netherlands, applied to register the trademark KIK for a variety ofservices in Class 42. She filed the application in Dutch andindicated Dutch as the second language.

The application was dismissed on the ground that therequirement that the applicant indicate English, French, German,Italian or Spanish as a second language was not satisfied.

The applicant appealed, arguing, inter alia, that the decisionwas unlawful because it was based on unlawful legislation. Theappeal was dismissed by the Board of Appeal, holding that theOffice, which includes its Boards of Appeal, could only applyCouncil Regulation No. 40/94, even if it was its view that theRegulation was not compatible with primary Community law.

The applicant appealed to the Court of First Instance.294 TheOffice contended that it did not dismiss the applicant’s request forregistration on the ground that the applicant did not indicate oneof the languages of the Office as a second language, but on theground that she did not choose a second language at all. Therefore,

294. Judgment of the Court of First Instance, Case T-120/99, July 12, 2001.

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even if the Court were to find that the restriction on the choice oflanguages in Article 115 of Council Regulation No. 40/94 to beunlawful, that could not lead to the contested decision being setaside.

The applicant emphasized that she was challenging thelegality of the rule that the application for registration mustindicate a second language, the choice of which is not between allthe official languages of the European Communities. The basis forthe contested decision is specifically the rule that a secondlanguage must be indicated, which cannot be Dutch.

The applicant submitted that the rules governing languagesestablished by Article 115 of Council Regulation No. 40/94 put herat a competitive disadvantage in relation to trademark attorneysin states where the language was one of the languages of theOffice. The disadvantages associated with having to usetranslators relate not only to costs involved but also the risk of lessthan perfect translations.

The Court dismissed the appeal. The actual wording of Article115(3) of Council Regulation No. 40/94 shows that, by indicating asecond language, the applicant accepts use of that language as alanguage of proceedings only in relation to opposition, revocationor invalidity proceedings. It is confirmed in Article 115(4) that solong as the applicant is the sole party to proceedings before theOffice, the language used for filing the application for registrationremains the language of the proceedings.

Article 115(3) requires the applicant to indicate a secondlanguage for the purposes of possible use of that language as thelanguage of proceedings for opposition, revocation or invalidity.The rule was adopted for the legitimate purpose of reaching asolution on languages in cases when proceedings ensued betweenparties who did not have the same language preference and couldnot agree between themselves on the language of proceedings.Under Article 115(7) parties are entitled to agree that any one ofthe official languages of the EC is to be the language of theproceedings. By limiting the choice of languages to those mostwidely known in the EU, the Council has remained within thelimits of what is necessary for achieving the aim in view.

II.B. Identification of Goods or Services

St. Regis Paper Company Limited applied to register thetrademark OPTIMA for liner paper, board and paper for makingcorrugated packaging, boxes, cases and cartons and other goods inClass 16. The Office rejected the application because it did notcomply with Article 7(1)(b) of Council Regulation No. 40/94because the trademark consisted of the Portuguese word OPTIMA,meaning “excellent.” In the examiner’s view, the trademark wasdevoid of distinctive character.

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The applicant appealed, arguing that the trademark hadalready been deemed registrable by the Portuguese Trade MarkOffice, which rigidly examines acceptability of trademarks onabsolute grounds. The examiner had failed to produce anypersuasive evidence that showed the word OPTIMA to bedescriptive in the Portuguese language generally, and in relationto the particular goods in question specifically.

The applicant alleged that the examiner should have followedthe principles laid down in the MAXIMA decision,295 namely thatthe examiner must have regard to the general impression createdby the mark as a whole, taking into account the nature of thegoods, the level of awareness of the likely consumers and any otherrelevant factors.

In the alternative, the applicant offered to amend thespecification of goods to exclude any goods for sale in Portugal.

The appeal was dismissed.296 The Board considered thepresent case clearly distinguishable from the decision taken inMAXIMA, in which the trademark MAXIMA was regarded as notdescriptive or devoid of any distinctive character for surgical andmedical apparatus. The word MAXIMA was considered suggestiveof exceptionally large size rather than outstanding high quality.By contrast, the word OPTIMA expressed quality rather thanquantity and was clearly descriptive of the quality of the goods inquestion.

As to the trademark registration in Portugal, this is notdecisive for the examiner.297 The examiner took this fact intoconsideration, as required by the Guidelines, but reached adifferent decision.

With regard to the offer to limit the specification, the Boardstressed that the Community Trademark has a unitary character.It has equal effect throughout the Community and therefore canonly be registered in respect of the whole Community.298 Therefore,the limitation was not possible.

III.L. Opposition/Cancellation Procedure

Pharmalife Italia S.r.L. applied to register the trademarkGASTRIN for goods in Class 5. The application was opposed byGrasler Pharma GmbH on the basis of a German registration ofthe trademark GASTRIN DO in Class 5. The Opposition Divisionrequested the opponent to provide a copy of the Germanregistration certificate by June 29, 1999. By fax of June 29, 1999,the Office received the opponent’s cover letter stating that it was

295. Case R 0051/98-1.

296. Decision of the First Board of Appeal in Case R 563/1999-1, January 31, 2001.

297. Cf. Examination Guidelines No. 8,1.4 OJ OHIM 9/96, pp. 1324, 1330.

298. See Article 1(2) Council Regulation No. 40/94.

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enclosing a certified copy of the German registration. However, theopponent did not send any enclosures with that fax. Theconfirmation copy of the letter, together with the enclosure, wasreceived at the Office on July 2, 1999. The opponent confirmed tothe Office that only the cover letter had been sent on June 29,1999.

The opposition was rejected by the Office in the absence ofproof of the existence of the right upon which the opposition wasbased. The opponent appealed, arguing as follows: it should havebeen obvious to the office that there had been a mistake, thedocuments were mailed to the Office within the specified timelimit, and the Office had at its disposal the documents at the timethe contested decision was issued. In addition, the letter ofJune 29, 1999, must unequivocally be considered as a request foran extension of time according to Rule 71(1) of the ImplementRegulation (Commission Regulation (EC) No 2868/95). Moreover,there is no stipulation in Council Regulation No. 40/94 thatprevents the Office from extending a term even without an explicitrequest. The applicant was notified of the appeal and invited to fileobservations. No observations were filed.

The Board of Appeal held that it was clear from Rule 16(2) ofthe implementing Regulation that the opponent must provideevidence of the registration of an earlier mark within such periodafter commencement of the opposition proceedings as the Officemay specify.299 According to the consistent case law of the Boardsin inter partes proceedings, facts, evidence and argumentssubmitted after the time limit must be disallowed to preserve theprocedural balance on which those proceedings are based.

Notwithstanding the foregoing, the Board considered that theapplicant’s failure to submit observations in response to theBoard’s invitation to do so must be construed as meaning that ithas chosen not to contest the appeal and does not raise a formalobjection to the admissibility of the evidence of the earlierregistration. The Board remitted the case back to the OppositionDivision for further prosecution pursuant to Article 62(1) ofCouncil Regulation No. 40/94.

AgraQuest, Inc., applied to register the trademarkARABESQUE for insecticides, pesticides and related goods inClass 5.

The application was opposed by Art Professional CosmeticGmbH under Article 8(1)(b) of Council Regulation No. 40/94 on thebasis of a registration of the trademark ARABESQUE in Germanycovering goods in Class 3. The language of the opposition wasEnglish. The opponent provided a copy of the Certificate of

299. Decision of the Third Board of Appeal in Case R 706/99-3, February 7, 2001.

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Registration and an English translation of the specification ofgoods.

The opposition was declared admissible and in a letter datedAugust 12, 1999, the opponent was given until December 12, 1999,in which to furnish any further facts, evidence or arguments feltnecessary to substantiate the opposition. On December 11, 1999,the opponent provided detailed arguments concerning thelikelihood of confusion.

The Opposition Division rejected the opposition, since theopponent had not filed a sufficient translation of the evidencesubmitted. In particular, the opponent should have translated thetext concerning the origin of the Certificate of Registration, filingdate, priority date, registration date, registration number andowner name.

The opponent appealed, arguing that it was not necessary totranslate all the text contained in the Certificate of Registrationand that it was clear from the report of the contested decision thatthe evidence submitted was clearly understood.

The Board allowed the appeal and remitted the case back tothe Opposition Division for further prosecution.300

The origin of a document, namely the issuing authority, theowner’s name and the various dates and numbers are all elementsthat are not translatable or are self evident. It is usual andcommon to retain the owner’s name and the title of the issuingauthority in the original language. Furthermore, the owner’s nameand the registration date appeared in the English version of thestandard Notice of Opposition form. By providing in due time anindication of the goods in English, the opponent had provided allthe elements necessary to substantiate the opposition.

The letter of August 12, 1999, was worded in such a way thatit would not have been obvious to the opponent that the evidence ofthe earlier registration had not been sufficiently translated, sincethat communication was qualified by the wording “which you mayfeel necessary.”

The contested decision was set aside and the case remittedback to the Opposition Division for further prosecution.

COSTA RICA


The trademark NET2PHONE in Class 38 filed by Net2phoneInc. was denied registration on the ground that it consisted ofmerely descriptive terms.301

300. Decision of the Third Board of Appeal, Case R274/2000-3, June 11, 2001.

301. Tribunal Superior Contencioso Section 3, resolution 472-2001, May 31, 2001.

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The trademark BUY.COM in Class 38 filed by Buy.Com Inc. ofthe United States was denied registration on the ground that itconsisted of merely descriptive terms.302

The trademark THE INTERNET STARS HERE in Class 38filed by PSINet of the United States was denied registration on thegrounds that it consisted of merely descriptive terms.303

The trademark BIG BACON CLASSIC filed by Wendy’sInternational Inc. in Class 42 was denied registration on thegrounds that it consisted of merely descriptive terms.304


Unilever N.V. applied to register the trademark MAX anddesign in Class 30, but was opposed by Colombina S.A. ofColombia, which owned a prior registration of the COLOMBINAMAX COMI and design trademark in the same class. As theopposition was accepted by the Court, the registration wassubsequently denied on the ground of similarity between thetrademarks based on the predominant element MAX.305

The trademark REFRISCO in Class 32 filed by ColombinaS.A. of Colombia was opposed by Kraft General Foods of Mexico byciting a prior registration of the FRISCO trademark in the sameclass. The opposition was confirmed and the registration wasdenied on the ground of likelihood of confusion.306

The trademark NINE WEST in Class 25 filed by Nine WestInc. of the United States was denied registration based on a priorregistration of the trademark WEST in the same class in the nameof Reemsta Cigarettenfrabrieken GmbH of Germany and thelikelihood of confusion of the public.307

Trademark DOÑA MARI MALHER and design in Class 29filed by Malher Company of Guatemala was denied registration onthe ground of its similarity to the registered trademark DOÑAMARIA in the same class.308


Unipharm of Costa Rica applied for registration of thetrademark UNIPENTIUM Jr. in Class 5. Intel Corporation of theUnited States opposed the registration on the ground of the fame

302. Tribunal Superior Contencioso Section 3, resolution 1567-2000, December 18, 2000.

303. Tribunal Superior Contencioso Section 3, resolution 272-2001, March 30, 2001.

304. Tribunal Superior Contencioso Section 3, resolution 1563-2000, San Jose, CostaRica, December 18, 2000.

305. Tribunal Superior Contencioso Section 3, resolution 555-2001, June 29, 2001.

306. Tribunal Superior Contencioso Section 3, resolution 1414-2000, November 30, 2000.

307. Tribunal Superior Contencioso Section 3, resolution 79-2001, January 26, 2001.

308. Tribunal Superior Contencioso Section 3, resolution 1560-2000, December 18, 2000.

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of the PENTIUM trademark in Class 9. The opposition wasconfirmed and the registration was denied.309

The trademark CHOICE in Class 29 filed by Advanced TotalMarketing System Inc. was denied registration on the ground thatit was a part of the famous trademark HEALTHY CHOICE andeven though this trademark was not registered in the country, itdeserved protection because of its notoriety.310

The trademark NEW NAVY in Class 25 filed by La Palma deHeredia S.A. was opposed by Old Navy Inc. based on the fame ofthe OLD NAVY trademark in Class 25. The opposition was laterconfirmed by the Court.311

CZECH REPUBLIC


Upon review of an application for registration of thetrademark WWW CENTRUM for goods in Class 9, the Office ofIndustrial Property decided that the denomination was devoid ofthe ability to distinguish goods in that it consists exclusively of“signs or indications serving in trade to designate the kind,quality, quantity, intended purpose or value of goods or services,indications of geographical origin or of the time of production of thegoods or rendering of the services.”312 The Office found that thedenomination consists of one word “Centrum,” common in theCzech language as a word for a center or meeting point, and thatthe three letters WWW are commonly understood by an averageconsumer as the abbreviation for the phrase “World Wide Web” orthe Internet. Hence, the entire denomination brings to mind aplace enabling Internet communication or an entity providing suchservices and is not capable of distinguishing goods or services ofvarious producers or providers for goods in Class 9.313

An Appeal Panel of the Office upheld the first instancedecision.


An opposition to the mark BORUVKOVÝ KOLÁCEKPERNÍKÁR PARDUBICE (blueberry tart Gingerbread makerPardubice) was filed by a registered user of the appellation oforigin Pardubický Perník (Pardubice Gingerbread). Opponent


310. Tribunal Superior Contencioso Section 3, resolution 478-2001, May 31, 2001.


312. Trademark Act, No. 137/ 1995 Sb., amended by No. 116/ 2000 Sb., Article 2, ¶1(c)

313. No. O-114783-96, Office of Industrial Property (published January 19, 2001).

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argued that as a registered user of the appellation of origin, it wasthe holder of a prior, confusingly similar, unregistered mark thathad become characteristic for identical or similar products orservices. Furthermore, opponent claimed that the contesteddenomination was also deceptive as it could have deceivedconsumers about the geographic origin, nature and quality of theproducts associated therewith. The Czech Office of IndustrialProperty rejected the opposition,314 reaching the conclusion thatthe appellation of origin used by opponent as the basis for theopposition did not qualify as an unregistered mark according to theCzech Trademark Act. The Office stated in its decision that anappellation of origin can never gain distinctive capacity forproducts or services of any individual because the nature of anappellation of origin requires that it must be a nonexclusive markthat can be used by several entities at the same time, providedthat they fulfill certain conditions (geographic origin,characteristics of products, etc.). The Office rejected opponent’sargument of the deceptive character of the contested mark withreference to the fact that the city of Pardubice was the registeredhead office of the applicant.


Mr. R.D.F. submitted an opposition to registration of thetrademark ROIFORD on the grounds that he is a natural personwhose first name and surname are identical or confusingly similarto the published denomination and that its registration wouldinterfere with his personal rights.315

The subject denomination differed from the name of theopponent only by deletion of the space between the first name andsurname and the use of capitals for the beginning letter of theforename as well as of the surname. The applicant argued that Mr.R.D.F. is not a well-known person and that he has no connection tothe goods with respect to which the subject trademark is to beregistered. The Office of Industrial Property316 decided that theright to protection of personal rights does not belong only to well-known and famous people. Furthermore, Mr. R.D.F. was a fashiondesigner who had previously cooperated with the applicant. Thesubject trademark sought registration in Class 18 for leatheraccessories and in Class 25 for dresses, hats and dress accessories.Therefore Mr. R.D.F.’s rights would be violated because, as afashion designer, his activity focuses on goods that are identical tothose for which the subject trademark is applied for.

314. See No. O –121 315, Office of Industrial Property (January 20, 1999).

315. Trademark Act, No. 137/ 1995 Sb., amended by No. 116/ 2000 Sb., Article 9, ¶1(e)


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An Appeal Panel of the Office upheld the first instancedecision.

I.B.11. Other Objectionable Features

An opposition to the marks KLÍC DO MESTA KINA,DIVADLA, KLUBY, KONCERTY, GALERIE (KEY TO CITYCINEMAS, THEATRES, CLUBS, CONCERTS, GALLERIES) wasfiled by the publisher of a magazine titled KLÍC. Opponent arguedthat he was the holder of an identical or similar unregistereddenomination which, in the two years prior to the filing of theopposed mark, had become characteristic for identical or similarproducts or services. Opponent supported his claim with evidencethat the content of his publication focused primarily on the topic ofculture. The Czech Office of Industrial Property317 decided that thedominant part of the opposed mark was the word KLÍC and thatopponent had proved that this word was already associated withhis periodical of the same name. Therefore registration of theopposed mark could infringe on rights arising from theunregistered name of the periodical KLÍC.

I.B.11.c. Violation of Public Order

The Office of Industrial Property refused to register atrademark consisting of a partially shaded four-pointed star withportions of an interrupted circle between the points of the star.The Office decided that the subject denomination was confusinglysimilar to the logo of NATO and therefore was excluded fromregistration as a “denomination the use of which would be contraryto the obligations of the Czech Republic under internationaltreaties and as a denomination that is contrary to public order.”318

The applicant argued that the shape of a star as used in thelogo of NATO has long been a symbol for cardinal points, especiallyas used in cartography. The applicant also pointed out that itsdenomination contains an additional word element (applicant’sname and numerals).The Appeal Panel of the Office319 decided thatthe subject trademark was sufficiently distinctive so as to bedistinguishable from the NATO logo. The existence of the NATOlogo cannot prevent use of any graphic rendering of a magneticneedle device that is in common use in cartography.

III.A.8. Infringement of Unregistered Trademarks

Petitioner sought the cancellation of the Czech nationaltrademark KULOV, registered in 1998 in Classes 32, 33 and 41, on

317. See No. O-127 169, Office of Industrial Property (December 8, 1999).

318. Trademark Act, No. 137/ 1995 Sb., amended by No. 116/ 2000 Sb., Article 2, ¶1(h).


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ground that registration should not have been granted as suchdenomination is capable of deceiving the public as to “the nature,quality or geographical origin of goods or services.”320

Petitioner was the owner of an identical trademark registeredonly in the United Kingdom in Class 33 for similar goods and hadsubmitted evidence showing that a large number of productsbearing its denomination had been imported in the Czech Republicsince 1993.

The Office of Industrial Property rejected the petition forcancellation, refusing the claim that the subject trademark coulddeceive consumers.321 The Appeals Panel of the Office reversed thefirst instance decision declaring that Article 2, paragraph 1(g) ofthe Trademark Act introduces an absolute bar to registration fordeception. The Appeals Panel stated that allowing someone toenjoy rights to a deceptive trademark would be against the intentof the law. Therefore, the Panel canceled the subject registrationfor all classes, holding that an average consumer would have noidea of other activities of the owner of the said trademark that canbe the object of the trademark protection, and therefore,cancellation of the trademark in the whole extent is appropriate. Apartial cancellation of the trademark would not eliminate thedanger of deception of possible consumers.

DENMARK


Despite evidence that the word mark MICRO COMPACT CARhad been registered in Class 12 in a majority of the otherEuropean Union Member States (which have trademarklegislation harmonized with Denmark), the Danish trademarkauthorities’ refusal to register the mark on the ground of lack ofdistinctiveness was upheld. Plaintiff registered MICROCOMPACT CAR as a word mark in Germany and in seven otherMember States and the Benelux. However, the Danish PatentOffice rejected plaintiff’s Danish application on the ground of lackof distinctiveness because the mark describes a type of little car.On appeal to the Danish Board of Patent Appeals, the plaintiffreferred to numerous other Danish trademark registrations forword marks containing the words MICRO and COMPACT. TheBoard of Appeals affirmed for the same reasons as the DanishPatent Office. Plaintiff appealed further to the Maritime andCommercial Court in Copenhagen, which held that in spite of thenumerous registrations in other European Union Member States,

320. Trademark Act, No. 137/ 1995 Sb., amended by No. 116/ 2000 Sb., Article 2, ¶1(g).

321. No. O -128097- 00, Office of Industrial Property (published June 11, 2001).

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the Danish Patent Office must make its own, independentdecision. The mark exclusively describes the kind and quality ofthe goods, namely a very small compact car. In context, the wordMICRO is used to denote a car that is smaller than a mini. Thedecision was split, with the minority finding that the mark wasregistrable in that it was not less descriptive than marks in otherDanish trademark registrations.322


UNIQUE INTERIEUR was not a bar to use of ART UNIQUEINTERNATIONAL, both marks being used for marketing gifts andhandicrafts. Plaintiff had used UNIQUE INTERIEUR since 1975and had it registered as a company name since 1992. The markwas used in conjunction with lampshades and other interiordecorating items, including candle holders, as well as for corporategifts and clothing. The clothing is sold under the trademarkUNIQUE INT. Defendant commenced use of ART UNIQUEINTERNATIONAL for fragrance candle holders and glass candleholders in 1996. This was sometimes abbreviated to ART UNIQUEINT. The Maritime and Commercial Court in Copenhagen foundthat there was confusing similarity between UNIQUE INT. andART UNIQUE INT. and enjoined defendant’s use of UNIQUE incombination with INT. On appeal to the Danish Supreme Court,appellant presented evidence of over seventy businesses inDenmark with names that include or comprise UNIQUE orderivatives thereof, such as UNIK- and UNIC-. The DanishSupreme Court reversed, finding first that although plaintiff hadrights in UNIQUE INTERIEUR, there was insufficient evidence ofuse of UNIQUE INT. Second, UNIQUE (and derivative forms suchas UNIK- and UNIC-) in and of itself was “not very characteristic”as a commercial sign. Finally, defendant’s mark included thevisually and phonetically important element ART and there wasno evidence of actual confusion, and so the Court found noconfusing similarity.323


Even inherently weak marks can enjoy extended protection.Plaintiff, a well-known chain of franchised real estate agents,owned various trademark registrations for HOME, both as a wordmark and device mark, in Class 36 for “real estate services,” aswell as a device mark in 14 other classes of goods and services.These registrations dated from 1993 and 1994 and were subject to

322. DiamlerChrysler AG v. The Danish Board of Patent Appeals, Ugeskrift forRetsvaesen 2001.1109SH.

323. Janni O. Kreikenbohm v. Unique Interieur A.p.S., Ugeskrift for Retsvaesen2001.1997H.

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the use requirement. Defendant ran a relocation service under thetrademark HOME FROM HOME and had the device mark HOMEFROM HOME RELOCATION SERVICE registered in Denmark in1997 for, among other items, “relocation services” in Class 35.Defendant’s business was assisting foreigners temporarilyemployed in Denmark with practical matters, including findinghousing, schools, doctors, dentists, various registrations, etc.Plaintiff sought to enjoin defendant’s use of HOME FROM HOMEand HOME FROM HOME RELOCATION SERVICE and to canceldefendant’s trademark registration. Defendant counterclaimed fora partial cancellation of plaintiff’s trademark registration due tononuse.

The Maritime and Commercial Court of Copenhagen foundthat plaintiff’s trademark was well known and entitled to extendedprotection. Though the services were not identical, both parties’services were directed at families who were moving households,and, as such, there was a similarity of goods/services. Defendant’smark was comprised of the plaintiff’s mark and “from,” whichwould likely be confused, especially regarding whether there wasan association between the two parties. Thus, plaintiff could enjoindefendant’s use of HOME FROM HOME and HOME FROMHOME RELOCATION SERVICE and could enforce cancellation ofthe device mark HOME FROM HOME RELOCATION SERVICEfrom the Danish Trademark Register. Defendant’s counterclaimwas not taken into consideration because defendant had no legalinterest in the goods/services in the other 14 classes.324

III.A.5. Fair Use

Third party fair use of a trademark in a domain name was atissue in the “volvodele.dk” case. Complainant was the owner of thewell-known VOLVO trademark. Respondent sold spare parts forVOLVO cars but was not an authorized distributor. Respondentmarketed all kinds of spare parts for VOLVO cars from a websiteunder the domain name “volvodele.dk” (translated“volvoparts.dk”). The DIFO Board of Appeal for Domain Namesfound that VOLVO is the dominant part of the respondent’sdomain name. As such, it gives consumers the mistakenimpression that such use is authorized by the complainant, andsuch impression is not negated by disclaimers or the like on thewebsite. Even though respondent has the right to use the VOLVOtrademark to market spare parts that fit VOLVO brand cars, such

324. Home A/S v. Home from Home Relocation Services v/Annemette Krogh Pedersen,

Ugeskrift for Retsvaesen 2001.2094S.

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right is limited to what is necessary. Use as a commercial signsuch as a domain name is not necessary.325


Plaintiff owned the trademark rights to a line of exclusivecosmetic products, including JIL SANDER, CHOPARD, JOOP,DAVIDOFF, GOOD LIFE and BOUDOIR. Pursuant to Danishcosmetic labeling legislation, each cosmetic product was markedwith a production serial number and accompanying UPC code suchthat the time and place of production could be identified. Thereasoning behind the marking requirement was to enable anefficient recall in the event of defective products. Defendant soldparallel-imported products manufactured by the plaintiff on whichthe production serial numbers had been removed, typically byopening the cellophane covering at the bottom, removing thenumber and re-closing the cellophane with tape. Plaintiff objectedto this practice and asserted trademark rights as well as violationof the general clause in Section 1 of the Danish MarketingPractices Act.

The Maritime and Commercial Court of Copenhagen held firstthat the removal of the production serial numbers, which wereplaced to protect consumers, was a violation of the general clausein Section 1 of the Danish Marketing Practices Act. Second, withspecific and detailed reference to the European Court of Justicedecision in Loendersloot v. Ballantine,326 the court held thatCommunity legislation concerning free movement of goods does notrestrict a trademark owner from objecting to the removal ofproduction serial numbers that are necessary to comply with otherlegislation, here the legislation concerning marking of cosmeticproducts. Plaintiff did not have to tolerate such parallel importspursuant to Section 6 of the Danish Trademark Act, and wasawarded DKK100,000 (about US$12,000) in compensation anddamages.327

V.A. Domain Names

A trademark does not have to be registered in Denmark to beheld to be famous. In America Online, Inc. v. Lars Jørgensen,complainant ran an Internet-based chat service for email users

325. Volvo Trade Mark Holding AB v. Søsum Autodlel A.p.S., DIFO Board of Appeal

decision of November 13, 2001, Case No. 2000-111, available in Danish at www.difo.dk andavailable in full text in English at www.psglaw.dk.

326. ECJ decision of November 11, 1997 in Case C-349/95.

327. Lancaster Group GmbH v. Parfume Discount Sjælland A.p.S., Ugeskrift forRetsvaesen 2001.2105SH.

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under the trademark ICQ (short for “I seek you”).328 ICQ wasmentioned in a Danish newspaper in 1997. On March 8, 1998,respondent registered the domain name “icq.dk.” Several Danishnewspapers ran articles on the notoriety of complainant’s businessin the fall of 1998. Complainant applied for registration of thetrademark ICQ in Denmark on October 19, 1998. Respondent usedthe domain name “icq.dk” for a homepage for “International ClanQuakers” with links to Quake and Quake clans andadvertisements. The site was “under construction” from 1998through June 2001. The DIFO Board of Appeal for Domain Namesheld that complainant’s trademark ICQ was held to be well knownin Denmark in Internet circles, to which respondent apparentlybelonged. Respondent’s actual use of the domain name on a sitefinanced by advertisements was evidence that respondent hadintended to exploit the goodwill and distinctiveness ofcomplainant’s trademark. Accordingly, the respondent’s use andregistration of the domain name was held to be in contradiction ofSection 4 of the Danish Trademark Act as well as Section 1 of theDanish Marketing Practices Act and common legal principles.

Even though the domain name registrant used“mercedesbenz.dk” for a website devoted to a directory of goodsand services of interest to owners of Mercedes-Benz automobiles,the DIFO Board of Appeal ordered the domain name transferred tothe trademark owner. Complainant was the owner of the well-known MERCEDES BENZ trademark. Respondent used“mercedesbenz.dk” as a supplier with a directory of goods andservices of interest to owners of MERCEDES BENZ automobiles.There were banner advertisements on respondent’s site. The DIFOBoard of Appeal found that respondent’s site provided contacts forsuppliers of goods and services as to which the complainant’strademark was registered. Holding that respondent’s registrationand use of the domain name was thus “an obvious and grossinfringement of complainant’s trademark,” the Board ordered thedomain name transferred to complainant.329

ECUADOR

II.D. Appellate Procedure

On December 30, 1991, Proesa filed an application330 toregister the trademark RON CASTILLO EL VERDADERO

328. DIFO Board of Appeal decision of July 8, 2001, Case No. 2000-017, available inDanish at www.difo.dk and available in full text in English at www.psglaw.dk.

329. DaimlerChrysler AG v. Scandinavia Media Group A.p.S., DIFO Board of Appealdecision of May 22, 2001, Case No. 2000-070, available in full text in English atwww.psglaw.dk.

330. Industrial Property Office docket No. 29494 dated December 30, 1991.

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SABOR DEL RON. On May 18, 1998, said mark was assigned toBacardi & Company Limited.

On July 5, 1989, Desarrollo Agropecuario C.A. filed anapplication331 to register the trademark RON SAN MIGUEL ELVERDADERO SABOR DEL RON. The mark is not registeredbecause in the registration process two oppositions were filed (oneof them by Proesa). These oppositions have not been resolvedbecause a third party filed an appeal332 before the AdministrativeLitigation Court with regard to the form of processing saidoppositions and the court has yet to issue a ruling.

Nonetheless, on September 9, 1994, Desarrollo filed anopposition against registration of the trademark RON CASTILLOEL VERDADERO SABOR DEL RON by Desarrollo AgropecuarioC.A. based on its claim of ownership of RON SAN MIGUEL ELVERDADERO SABOR DEL RON.

The National Intellectual Property Director issued aresolution on July 19, 1998,333 granting the registration of RONCASTILLO EL VERDADERO SABOR DEL RON, because it saidthat the components that confer distinctiveness to the trademarksare the words RON CASTILLO and RON SAN MIGUEL. Thewords EL VERDADERO SABOR DEL RON (the real taste of rum)are commonly used descriptive words and cannot be exclusivelyappropriated by anyone.

An appeal was filed at the District Administrative AppealsCourt334 which annuled (“canceled”) the resolution of July 19, 1998,granting registration of RON CASTILLO EL VERDADEROSABOR DEL RON and ordered the restoration of theadministrative process begun with the filing of the application onJuly 5, 1989 by Desarrollo’s attorney in fact, and thus also decidingthe case pending in another Administrative Appeals chamber andother jurisdictions. The case is presently on appeal.


Through Resolution No. 94889-94335 of November 4, 1994, theIndustrial Property Director prohibited the importation andmarketing of BELMONT brand products that were originatingfrom Venezuela where they were produced by C.A. CigarreraBigott Sucesores (“Bigott”).

Bigott disputed Resolution No. 94889-94,336 stating that theVenezuelan BELMONT product was launched to the Ecuadorian

331. Industrial Property Office docket No. 16376 dated July 5, 1989.

332. Administrative Litigation Court #2 of Quito, procedure No. 485-CSA.

333. Industrial Property Office docket No. 29494 dated December 12, 1991.

334. Administrative Litigation Court No. 3 of Cuenca, case No. 117-98.

335. Industrial Property Office docket No. 001-94.

336. Docket No. 1430-MH, Administrative Litigation Court, Quito District Court No. 2.

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market under rights conferred by Andean Decision 344, whichallows the use by a third party of a mark that is not in use in thecountry by its legitimate owner, and the free trade of products inthe Andean Pact.

Bigott requested a declaration that the Director does not havethe authority to prohibit imports and an order that it be paiddamages in the sum of at least US$2,000,000.

The defendant, Phillip Morris Products, Inc. (“Phillip Morris”),answered, and denied that Bigott’s claims had any legal groundsor basis. It defended the legitimacy of the administrative act,claimed plaintiff had no right to file the claim, asserted lack ofjurisdiction of the Court to hear the case, and asserted theillegality of the claim with respect to costs and procedural nullity.

Phillip Morris further advised that it is entitled to theexclusive use of the BELMONT trademark in Ecuador based on its1963 registration of the mark.

The Court declared that it does have jurisdiction. The Courttook into account the following considerations before issuing itsruling. The Director does have the power to receive proof of useand to take the appropriate measures to bar the importation ofproducts bearing a trademark registered by another in a differentcountry of the Andean Pact. The Director did not prohibit theimportation, but instead stopped cigarettes with the BELMONTtrademark originating from Venezuela from entering theEcuadorian market because in Ecuador Phillip Morris was and isthe owner of the BELMONT trademark. The ruling on Pre-judicialInterpretation of the Andean Tribunal was taken into account. Itstates that free trade “can be affected solely by the exercise of theright to use a trademark when the owner proves its use in thecountry concerned.” Phillip Morris has marketed products underthe BELMONT trademark since March 1994, and its predecessordid so before then.

Lastly, the Court resolved that the administrative act is legal,and, therefore, dismissed the claim.

Presently, the case is being appealed.337

EGYPT


Two judgments have been issued by the Higher Court ofAppeal confirming decisions of the Trademark Office acceptingoppositions filed by Gianni Versace Company and stoppingregistration of FERSATSHI in panel design and FERSATSHI in

337. Docket No. 136-2001, Supreme Court.

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English and Arabic with face design in panel for ready madeclothes.338

The judgments in both cases were based on protection of thetrade name VERSACE, known worldwide, under the ParisConvention Article No. 8 and also based on a previousinternational trademark registration and a local registration forVERSACE.


The Food and Agriculture Organization of the United NationsBureau Regional European filed an appeal contesting theTrademark Office’s refusal to register its international trademarkTEA-DISCOVER THE GOODNESS with cup design due to itsclose similarity with other international registrations.

The Committee of Appeal accepted the appeal and requestedthe Trademark Office to accept the international trademark due tothe difference in its phonetical sound and general appearance.339

I.B.22. Distinctiveness

Beneton Group S.P.A. filed an appeal contesting theTrademark Office’s refusal to register its international trademarkon the grounds it was nondistinctive. The trademark is a greenrectangular strip. The Committee of Appeal at the TrademarkDepartment accepted the appeal and allowed protection of theinternational trademark “green strip.”340

EL SALVADOR


The British company Imperial Tobacco Limited filed anapplication to register SUPERKINGS and design for goods inInternational Class 34. The National Bureau of Registries, onappeal, confirmed the denial of registration by the IntellectualProperty Department due to the similarity of SUPERKINGS anddesign to the trademark L & M SUPERKINGS, which was

338. Gianni Versace S.P.A. v. Ahmed Ahmed Abu Elhassan & Co., High Court of

Appeal, Case Nos. 2515/116 dated May 23, 2001 and 2526/116 dated March 12, 2001.

339. The Food and Agriculture Organization of the United Nation’s Bureau RegionalEuropean v. Egyptian Trademark Office, Committee of Appeal, Case No. 9682/99 datedJanuary 1, 2001.

340. Beneton Group S.P.A. v. Egyptian Trademark Office, Committee of Appeal, CaseNo. 9777/99 dated January 22, 2001.

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previously registered by the Swiss company Fabriques de TabacReunies S.A. for goods in the same class.341

Laticrete International Inc. filed an application to registerLATICRETE for goods in International Class 1 and later modifiedthe application for goods in International Class 19. The NationalBureau of Registries, on appeal, confirmed the denial ofregistration by the Intellectual Property Department due to anidentical mark previously registered by the local company MonolitS.A. for goods in the same class.342

Productos Sarita S.A. from Guatemala filed an application toregister NEVADA and design for goods in International Class 30.The National Bureau of Registries, on appeal, confirmed the denialof the Intellectual Property Department due to the similarity ofNEVADA and design to the trademark NEVADA previouslyregistered by the French company S.C.A Lesaffre & Cie. for goodsin the same class.343

Mars Incorporated filed an application to register NUTRIVITfor goods in International Class 31. The Intellectual PropertyDepartment mistakenly admitted the mark without reviewing theinternal search results that revealed the existence of the markNUTRIVITA previously registered by the local company LaSultana S.A. de C.V. for goods in the same class. The IntellectualProperty Department published the mark NUTRIVIT, and thelocal company asked the Intellectual Property Department torevoke the resolution. The Intellectual Property Departmentrectified its mistake and revoked the resolution and declaredwithout effect the entire trademark registration procedure forNUTRIVIT. The National Bureau of Registries, on appeal,confirmed the denial of the Intellectual Property Departmentbecause of the similarity of the marks NUTRIVIT andNUTRIVITA.344

The Mexican company Central Impulsora S.A. de C.V. filed anapplication to register HIT for goods in International Class 30. TheNational Bureau of Registries, on appeal, confirmed the denial ofregistration by the Intellectual Property Department due to thesimilarity of HIT to the trademark HIPP filed by PepsiCo, Inc., forgoods in the same class.345

341. National Bureau of Registries Resolution dated May 23, 2001. Certification to

Intellectual Property Department (Registry of Commerce) dated July 4, 2001.

342. National Bureau of Registries Resolution dated August 14, 2000. Certification toIntellectual Property Department (Registry of Commerce) dated September 12, 2000.

343. National Bureau of Registries Resolution dated November 23, 2000. Certification toIntellectual Property Department (Registry of Commerce) dated July 4, 2001.

344. National Bureau of Registries Resolution dated November 13, 2000. Certification toIntellectual Property Department (Registry of Commerce) dated March 15, 2001.

345. National Bureau of Registries Resolution dated June 11, 2001. Certification toIntellectual Property Department (Registry of Commerce) dated July 4, 2001.

376 Vol. 92 TMR


The Dominican company Laboratorios Rowe filed anapplication to register ZOMAN for pharmaceutical products inInternational Class 5. The National Bureau of Registries, onappeal, reversed the resolution from the Intellectual PropertyDepartment denying the admission of trademark ZOMAN. TheNational Bureau of Registries found no similarity betweenZOMAN and trademark TAZONAM registered by AmericanCyanamid Company for pharmaceuticals in International Class5.346

The Swiss company Novartis AG filed an application toregister AQUIPT for pharmaceutical products in InternationalClass 5. The National Bureau of Registries, on appeal, reversedthe decision of the Intellectual Property Department that deniedregistration. The National Bureau of Registries found no similaritybetween AQUIPT and the trademark EQUIP previously registeredby the Colombian company Instituto Farmacológico ColombianoLimitada for pharmaceuticals in International Class 5.347

The Mexican company ICN, Farmaceútica S.A. de C.V. filed anapplication to register ALAXA for goods in International Class 5.The National Bureau of Registries, on appeal, revoked theIntellectual Property resolution that denied registration. TheNational Bureau of Registries found no similarity between ALAXAand the trademark UVA-LAXA registered previously by a localindividual for goods in the same class.348

II. Procedural Matters

The local company Productos de Papel S.A. de C.V. filed anapplication to register FESTA and design for goods inInternational Class 16. The Intellectual Property Department’sinternal search revealed another similar trademark inInternational Class 16 with a lapsed registration filed by ScottPaper Company de Costa Rica. Therefore, the Intellectual PropertyDepartment admitted and published the local trademark. ScottPaper Company filed an opposition based on similarity to thetrademark FIESTA that was filed before the local trademark andoverlooked in the search results. The National Bureau ofRegistries, on appeal, revoked the denial of the Intellectual

346. National Bureau of Registries Resolution dated April 19, 2001. Certification to

Intellectual Property Department (Registry of Commerce) dated May 29, 2001.



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Property Department to admit the opposition due to theRegistrar’s failure to carefully check the availability search.349


Bayer Aktiengesellschaft filed an application to registerCANON for goods in International Class 1. The Japanese companyCanon Kabushiki Kaisha filed an opposition against theregistration of the mark based on the fact that CANON is a well-known trademark worldwide registered in many countries. TheIntellectual Property Department did not admit the oppositionarguing it was untimely filed. The National Bureau of Registries,on appeal, revoked the Intellectual Property decision, acceptingCanon Kabushiki arguments that according to Article 97 of theCentral American Convention for the Protection of IndustrialProperty, the oppositions have to be filed 60 days after the firstpublication date and that the publication date day is not inclusive.The National Bureau of Registries found that the term starts oneday after the first publication date, and thus, Canon’s oppositionwas timely filed.350

II.D.1. Jurisdiction/Authority

Bayer Corporation filed an application to register CLINITEKfor goods in International Class 5. The Intellectual PropertyDepartment denied registration due to the similarity of CLINITEKto the trademark CLINITEST filed by Miles Inc. for goods in thesame class. Bayer Corporation filed an opposition, arguing thatBayer USA Inc., Bayer Corporation and Miles Inc. merged andbecame Miles Inc., which later changed its name to BayerCorporation and attached a change of name application that hadbeen filed for the trademark CLINITEST. The National Bureau ofRegistries, on appeal, confirmed the denial by the IntellectualProperty Department, arguing the correct authority to revoke theresolution and to add merging evidence is the Intellectual PropertyDepartment and not the National Bureau of Registries becausetheir obligation is to decide if the Registries have acted legally ornot and that in this case they had due to the similarity betweenthe marks.351

349. National Bureau of Registries Resolution dated August 14, 2000. Certification to

Intellectual Property Department (Registry of Commerce) dated March 15, 2001.

350. National Bureau of Registries Resolution dated November 13, 2000. Certification toIntellectual Property Department (Registry of Commerce) dated March 15, 2001.

351. National Bureau of Registries Resolution dated June 5, 2001. Certification toIntellectual Property Department (Registry of Commerce) dated July 4, 2001.

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II.G. Evidence

Kraft Foods, Inc., filed an application to register CLIGHT forgoods in International Class 32. The Intellectual PropertyDepartment did not admit CLIGHT due to its similarity to thetrademark CLIC registered by the Swiss company Societe desProduits Nestle S.A. for goods in the same class. Kraft Foods, Inc.filed an appeal, arguing that the trademark registration for CLIChad lapsed for not paying official fees. Instead of providing theevidence to prove the lapsed registration in El Salvador, Kraftadded certificates for Guatemala and Costa Rica. The NationalBureau of Registries, on appeal, confirmed the denial of theIntellectual Property Department to admit the CLIGHTapplication, but reserved the petitioner’s right to provide thecorrect evidence to the Intellectual Property Department to provethe lapsed registration of CLIC in El Salvador.352

ESTONIA


The Patent Office made a decision to register the trademarkSARIDON in Class 5 in the name of F.Hoffmann-La Roche AG. Anappeal was filed against this decision by Sanofi-Synthelabo, S.A.,which has an earlier trademark SANIDOL registered in Class 5.The appellant argued that the trademark SARIDON wasconfusingly similar with appellant’s earlier trademark SANIDOLfor similar goods. However, the Board of Appeal, having discussedthe case and heard both parties, found that the appeal had to bedismissed,353 as the trademarks SARIDON and SANIDOL are notconfusingly similar.


After more than four years of dispute in all court levels, thecase of the trademark NIKE has found a final solution.

In 1996, the Patent Office registered the trademark NIKE inClass 3 in the name of Campomar, S.L. The registration decisionwas appealed by Nike International Ltd. on the grounds that theNIKE trademarks of Nike International Ltd. are well known allover the world and are also registered in Classes 18 and 25 inEstonia. The Board of Appeal dismissed the complaint for thefollowing reasons. Campomar, S.L., had used the trademark

352. National Bureau of Registries Resolution dated April 20, 2001. Certification to

Intellectual Property Department (Registry of Commerce) dated July 4, 2001.

353. Sanofi-Synthelabo v. F.Hoffmann-La Roche AG, Decision No. 295-o of the Board ofAppeal of Industrial Property of Ministry of Economic Affairs, April 27, 2001.

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NIKE, which means the winged goddess of victory in Greek, forperfumery long before Nike International Ltd. created itstrademarks.354 The goods identified by the trademarks ofCampomar, S.L., and Nike International Ltd. are absolutelydifferent,355 and Nike International Ltd. had not proved thatCampomar, S.L., has traded on the reputation of NikeInternational Ltd.356

Nike International Ltd. appealed against the decision of theBoard of Appeal to the Administrative Court. The AdministrativeCourt decided to declare the decision of the Board of Appeal fullyunlawful and to submit the case for review and for a newdecision.357

In 1999, the Board of Appeal, having discussed the case for thesecond time and having perused the materials submitted by theparties, decided to allow the appeal of Nike International Ltd. andto revoke the decision of the Patent Office on the registration of thetrademark NIKE of Campomar, S.L.358 The main issue in thisdispute was the well-known reputation of the trademarks of NikeInternational Ltd. in Estonia before 1994 (the priority date of thetrademark of Campomar, S.L. in Estonia).

Next, Campomar, S.L., appealed against the decision of theBoard of Appeal to the Administrative Court, stating that theBoard of Appeal had incorrectly evaluated the evidence in the case,and relied for its opinion on the well-known reputation of thetrademarks of Nike International Ltd. in Class 3 among theconsumers in Estonia before 1994. The Court found that thedecision of the Board of Appeal was contradictory, lacking andunreasoned, and decided to declare the decision fully unlawful.359

In 2000, the Board of Appeal discussed the case for the thirdtime. For this discussion, Nike International Ltd. submittedextensive materials to prove the fame of its NIKE trademarksbefore the priority date of the NIKE trademark of Campomar, S.L.In its turn, Campomar, S.L., argued that the trademarks of NikeInternational Ltd. were well known only for sport products and notfor goods in Class 3, and it had not been proven who and how one

354. The trademark NIKE of Campomar, S.L. has been in use since 1940, and the

trademark NIKE of Nike International was created in 1971.

355. The trademark NIKE of Campomar, S.L. is in Class 3 for perfumery, cosmetics,washing powders and liquids; the trademarks NIKE of Nike International Ltd. are in Class18 for leather, goods made of leather, traveling bags, etc., and in Class 25 for clothing,footwear, headgear.

356. Nike International Ltd. v. Campomar, S.L., Decision No. 165-o of the Board ofAppeal of Industrial Property of Ministry of Economic Affairs, May 22, 1997.

357. Case No. 3-65/98, Administrative Court of Tallinn, December 16, 1998.

358. Decision No. 165-o2 of the Board of Appeal of Industrial Property of Ministry ofEconomic Affairs, March 12, 1999.

359. Case No. 3-1809/99, Administrative Court of Tallinn, October 18, 1999.

380 Vol. 92 TMR

would harm the reputation of the word NIKE (the name of theGreek goddess) by using it as a trademark. As a result of thisdispute, the Board of Appeal maintained its previous decision andallowed the appeal of Nike International Ltd. and revoked thedecision of the Patent Office that granted registration of thetrademark Nike of Campomar, S.L. Based on the total salesvolumes of the products of Nike International Ltd. in Estonia aswell as its extensive advertising campaign, the Board of Appealdecision indicated that recognizing the well-known reputation ofthe NIKE trademarks of Nike International Ltd. in Estonia beforethe 1994 registration of the trademark NIKE to the name ofCampomar, S.L., in Class 3 was in conflict with the TrademarkLaw. In addition, the Board of Appeal found that it was proventhat the perfumery products with the trademark NIKE damagedthe distinctive qualities of the earlier trademarks of NikeInternational Ltd. in Estonia by misleading consumers.360

Campomar, S.L., appealed against the decision to theAdministrative Court361 and further to the District Court,362 butthe appeals were dismissed.

Finally, an appeal in cassation was filed by Campomar, S.L.with the National Court in March 2001, but the Appeals SelectionCommittee of the National Court did not grant a leave to theappeal.363 In May 2001, following the decision of the Board ofAppeal, the Patent Office made a decision not to register thetrademark NIKE in Class 3 of Campomar, S.L.364

EUROPEAN COMMUNITY

I.B.20. Color/Shape

In Philips Electronics v. Remington Consumer Products,365 theEuropean Court of Justice (“ECJ”) was asked to rule on the scopeof the exclusion from trademark registration of “signs whichconsist exclusively of the shape of goods which is necessary toobtain a technical result.”366 The ECJ gave its preliminary ruling,in the customary form of an Advocate General’s Opinion.367

360. Decision No. 165-o3 of the Board of Appeal of Industrial Property of Ministry of

Economic Affairs, April 26, 2000.

361. Case No. 3- 1231/2000, Administrative Court of Tallinn, December 5, 2000.

362. Case No. II-3/111/01, District Court of Tallinn, March 20, 2001.

363. Case No. 3-7-2-4-156, Appeals Selection Committee of the National Court, May 17,2001.

364. Decision No. 7/9401828 of the Patent Office, May 24, 2001.

365. Case C299/99 [2001] ETMR 48.

366. EC Trade Marks Directive, Council Directive (EEC) 89/104 of December 21, 1988OJ 1989 L40.


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Since 1966, Philips has marketed a shaver comprising threerotary heads arranged in the shape of an equilateral triangle. In1985, Philips filed a trademark application in the United Kingdomconsisting of a picture of a shaver having those characteristics. Themark was registered under the old United Kingdom Trade MarksAct 1938. Remington sought the revocation of the Philips markunder the provisions of the new United Kingdom Trade Marks Act1994 which implements the EC Trade Mark Directive in theUnited Kingdom.368

The English Trial Court held, inter alia, that the markconsisted exclusively of a sign that was necessary to obtain atechnical result, and granted the revocation of the Phillips mark.On appeal, the Court of Appeal referred to the ECJ seven lengthyquestions on the interpretation of the Directive.

Advocate General Colomer stated that the purpose of theArticle 3(1)(e) exclusion is to exclude from obtaining by trademarkregistration protection that is more appropriately obtained byproduct or patent or design law. The latter rights protect the goodsthemselves, not goodwill, and are of only limited duration. TheAdvocate General rejected Philips’ argument that a shape markshould not be excluded from registration if there exist other shapescapable of achieving the same technical result. If such anargument were to be accepted, an applicant could register all theshapes that achieved such a result, thereby obtaining permanentprotection, in the form of a registered trademark, of the functionitself.


The ECJ’s judgment in the joined cases of Zino Davidoff v. A &G Imports and Levi Strauss v. Tesco Stores/Costco Wholesale369

sets out guidance as to the circumstances in which a brand ownermay be prevented from relying on its rights to prevent the resale ofbranded goods first sold outside the European Economic Area(EEA).

Davidoff, the owner of United Kingdom registered marksCOOL WATER and DAVIDOFF COOL WATER, objected to theresale within the EEA of toiletries first sold in Singapore byDavidoff with its consent. Davidoff denied that it had consented, orcould be deemed to have consented, to the products being resold inthe EEA. Davidoff’s appointed distributor in Singapore undertooknot to sell Davidoff products outside its territory as well as toimpose on its purchasers a prohibition on resale outside thatterritory. In addition, Davidoff argued that it had legitimatereasons, within the meaning of Article 7(2) of the Trade Marks


369. Joined cases C-414/99 to C-416/99 of November 20, 2001 (unreported).

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Directive,370 for opposing the import and marketing of its productsin the EEA. Those reasons were based on the removal orobliteration of the batch code numbers.

Levi has consistently refused to sell Levi’s 501 jeans to Costcoor to Tesco, a leading United Kingdom supermarket chain.Further, Levi has not agreed to Costco and Tesco becomingauthorized distributors of these products. Tesco and Costcoobtained general Levi’s 501 jeans originally sold by Levi fromtraders who imported them outside the EEA. No restrictivecovenants as to territory were imposed on those traders.

The questions referred to the ECJ by the English court inthese two cases concerned the circumstances in which a trademarkowner may be regarded as having consented, directly or indirectly,to the importation and marketing within the EEA of products firstsold outside the EEA by the trademark owner or with his consent.

The ECJ confirmed its judgment in Silhouette v. Hartlauer,371

namely, the concept of “consent to the placing of goods on themarket in the EEA” as referred to in Article 7(1) of the Directive,must be uniformly interpreted by the national courts of MemberStates. In that case, the ECJ expressly held that Member Statescannot provide in their national laws for exhaustion of trademarkrights in respect of products first put on the market outside theEEA, as this would be contrary to Article 7(1) of the Directive,372

and the purpose of the Directive is to harmonize trademark rightsthroughout the EEA.

The ECJ ruled that in the absence of express consent to resalewithin the EEA of goods first sold outside the EEA, consent willonly be inferred where there are facts and circumstances that“unequivocally demonstrate” that the trademark owner hasrenounced any intention to enforce his trademark rights and,specifically, to prevent importation and resale within the EEA.

Moreover, the ECJ held that it is for the national courts todetermine whether consent may or may not be implied, butconsent cannot be inferred from the fact that: (1) the trademarkowner has not communicated to all subsequent purchasers hisopposition to marketing within the EEA; (2) the goods carry nowarning of a prohibition of their being marketed in the EEA; (3) nocontractual restrictions on resale have been imposed; and/or (4) thetrademark owner was silent in relation to the marketing withinthe EEA of goods first sold elsewhere. The ECJ also found that thefact that the parallel importer may not be aware that thetrademark owner objects to the resale of the goods in the EEA isnot relevant to the question of exhaustion of trademark rights.

370. Council Directive 89/104 EEC of December 21, 1988, OJ 1989 L40.

371. Case-355/96, [1998] ECR I - 4799. See 89 TMR 299 (1999).


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Finally, the ECJ confirmed that the trader alleging consent hasthe burden of proof, namely of proving that the trademark ownerconsented to the resale within the EEA.

The ECJ has determined that all 18 EEA Member States mustadopt a doctrine of exhaustion of the same scope, thereby helpingto ensure harmonization of the law of trademark rights within theEEA. Apart from express consent itself, it is not easy to envisagefacts and circumstances that unequivocally demonstrate theimplied consent of a trademark owner to resale within the EEA ofgoods first marketed elsewhere.

In an important Opinion,373 Advocate General Jacobsrecommends the rulings that the ECJ should give on certainquestions concerning the repackaging of pharmaceuticals first soldin the European Community. The questions were referred to theECJ by the Austrian and English374 national courts, respectively.The English court suggested that a parallel importer shouldalways be free to repackage branded goods imported from anotherEU Member State when it could be shown that no harm would becaused to the “specific subject matter” of the trademark. TheEnglish court referred a host of challenging questions to the ECJseeking clarification of the circumstances in which repackagingmay be carried out. The Austrian court, however, confined itself toasking the ECJ what is meant by the requirement thatrepackaging must be “necessary in order to market the importedproduct.”

In AG Jacobs’ view, when a branded product has been put onthe EU market by the brand owner, or with his consent, the brandowner may be able to rely on his trademark rights to preventrepackaging “even if it might appear in a particular case that thereis no actual harm to the specific subject matter or essentialfunction of his mark.”

AG Jacobs confirms that when the trademark owner usesdifferent packaging in different EU Member States, repackagingmay be necessary to enable the parallel importer to obtain effectiveaccess to the markets in the importing Member State. AG Jacobs isof the view that if, as the English Court found in theBoehringer/Glaxo case, there is widespread and substantialresistance to over-labeled boxes that would effectively exclude theparallel importer from a relevant sector of the market, thenrepackaging may well be “necessary.” The precise form ofrepackaging needed to secure effective access to the relevantmarkets is a question of fact to be determined by the nationalcourt.

373. Joined cases C-443/99 and C-143/00 Merck Sharp & Dohme v. Paranova, andBoehringer Ingelheim, Glaxo Group and Others v. Swingward and Dowelhurst [2001]ETMR 99.

374. Glaxo Group v. Dowelhurst [2000] FSR 529, 91 TMR 548 (2001).

384 Vol. 92 TMR

The English court has also asked the ECJ whether it isessential that the parallel importer give prior notice to the brandowner even when the proposed repackaging would not harm thespecific subject matter of the mark. AG Jacobs confirms that priornotice is always required and that such notice must be given bythe parallel importer, rather than received by the brand ownerfrom some other source. AG Jacobs concludes that a reasonableperiod of notice would likely be three to four weeks.

The judgment of the ECJ itself is now awaited on these issues.It is likely that the ECJ will broadly rule in accordance with AGJacobs’ opinion.

FINLAND


The Board of Appeal of the Finnish Patent Office has rejectedthe trademark applications for GATEWAY SOLO375 and GGATEWAY 2000376 (figurative mark) in Class 9 in the name ofGateway 2000, Inc. The decision was based on the fact that saidtrademarks were considered nondistinctive for registrationpurposes.

The marks applied for are formed by a generic expression inthe field of automatic data processing and indicate the goods, theirquality, and use, covered by the application. Thus, the marksapplied for cannot be considered distinctive and could also not beconsidered to have become distinctive by use. In addition, asregards the application for the figurative mark G GATEWAY 2000,the applicant had not accepted the disclaimer for the wordGATEWAY and the number 2000 suggested by the FinnishNational Board of Patents and Registration.


The Supreme Administrative Court, the Finnish NationalBoard of Patents and Registration and its Board of Appeal rejectedthe trademark application for MONSOON by Joh. A. BenckiserGmbH in Class 3.377 The Supreme Administrative Courtconsidered the similar overall impression of the marks MONSOONand MONSUN together, in particular, with their phonetic andvisual similarity and found that the applicant’s mark MONSOONwas confusingly similar to the registered trademark MONSUNand the goods covered by the registration.

375. Case 128/T/98, The Board of Appeal of the Patent Office, June 7, 2000.


377. Case 1642/3/99, The Supreme Administrative Court, September 22, 2000.

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I.B.8.b. Similarity of Goods/Services

The Finnish National Board of Patents and Registration andits Board of Appeal rejected the trademark application forFROEDIES by Red Band Venco B.V. in Class 30.378 The Board heldthat the mark was confusingly similar to the trademarkregistration for FROSTIES that is registered for the same goods.

The Finnish National Board of Patents and Registration andits Board of Appeal rejected the trademark application for NOBIAby Nobia Nordisk Bygginterior Ab in Classes 19, 20, 37 and 42.379

The Board found that the goods and services of the applicationwere confusingly similar to the goods and the services of theregistered trademark NOKIA and the services of the registeredtrademark NOBILIA.


The Board of Appeal of the Finnish Patent Office rejected thetrademark application for SCRUBS380 in Class 21 in the name ofDymon, Inc. The decision was based on the fact that the mark wasconsidered to be nondistinctive for registration purposes.

The Board of Appeal of the Finnish Patent Office rejected thetrademark application for NetEDI381 by Synenerges Oy in Class 38holding the mark was not distinctive. The mark included wordsthat expressed the nature, quality and use of the services. Themark also had a nondistinctive stylization. In addition, theevidence submitted to the Board of Appeal was not sufficient toshow that the applicant’s mark had gained distinctiveness by use.

The Board of Appeal of the Finnish Patent Office rejected theappeal filed by Sonafi. The National Board of Patents andRegistration had determined that the trademark VELOUTE DECHOCOLAT382 (velvet of chocolate) in Class 30 was not distinctive.

The Board of Appeal of the Finnish Patent Office rejected theappeal filed by Ekonomi Software Sweden Ab. It held theapplicant’s mark UNITED SOFTWARE383 in Class 35 was notdistinctive.

The Board of Appeal of the Finnish Patent Office rejected theappeal filed by Tap Air Portugal. The Board held that theapplicant’s trademark PROGRAMA PASSAGEIRO FREQUENTEFREQUENT FLYER PROGRAMME (figurative mark) in Class 39

378. Case 23/T/99, The Board of Appeal of the Patent Office, September 15, 2000.


380. Case 138/T/98, The Board of Appeal of the Patent Office, May 17, 2000.



383. Case 24/T/99, The Board of Appeal of the Patent Office, October 30, 2000.

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was nondistinctive because it was composed merely of anexpression of the services covered by the application.384


Anheuser-Bush, Incorporated (the plaintiff) has registeredtrademarks BUDWEISER, BUD, BUD LIGHT, and BUDWEISERKING OF BEERS to distinguish beer products. The company hasbeen marketing products identified by the BUDWEISERtrademark since 1876, and the use of the trademark has beenuninterrupted ever since. According to the plaintiff, BUDWEISERis one of the most well-known and valuable trademarks in theworld. On the other hand, Budejovicky Budvar, narodni podnik(the defendant), has obtained registration for trademarksBUDVAR and BUDWEISER BUDVAR in 1962 and 1972,respectively. However, the Helsinki City Court declared theforfeiture of the defendant’s trademarks in question in 1982. Thedefendant later used the expression Budweiser, which wasconfusingly similar to the plaintiff’s trademarks, on beer bottlelabels, magazines, advertisements, and invoice forms.

The plaintiff requested that the defendant cease the use of thetrademarks BUDVAR and BUDWEISER BUDVAR, subject to thepenalty of one million Finnish marks for violation of a registeredtrademark. In addition, the plaintiff had requested that all thedefendant’s labels, advertisements, price lists, and otherdocuments identified by the plaintiff’s trademarks be removedfrom the corresponding products or, alternatively, be destroyed.

The defendant’s defense was based on the argument that theannulment decision of 1982 was based on the grounds of nonuseand not on the confusing similarity of the trademarks.

The defendant referred to Article 8 of the Paris Conventionand believed that after registering Budweiser Budvar, NationalCorporation and Budweiser Budvar, Enterprise National, as itstrade names, the defendant could effectively use the protectionprovided by Article 8 in Finland.

The defendant denied that the name Budweiser BudvarNational Enterprise had been used as a trademark. The productlabel indicates that the beer had been brewed and bottled by anational company, Budweiser Budvar brewery. Such use wasbased on the right to a trade name. According to the defendant, theplaintiff’s trademarks BUDWEISER and BUD differ from thedefendant’s trademark BUDEJOVICKY BUDVAR, both visuallyand phonetically.

The Helsinki District Court ordered that the defendant ceasethe advertisement of products in a local magazine with the words“Budweiser Budvar,” printed in capital letters, predominantly as a

384. Case 18/T/99, The Board of Appeal of the Patent Office, October 30, 2000.

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trademark. The District Court confirmed that this kind ofadvertisement violates the registered trademarks BUDWEISERand BUDWEISER KING OF BEERS, owned by the plaintiff, andcreates danger of confusion between the beer products produced bythe plaintiff and the defendant.

The Helsinki District Court stated that said beeradvertisement had been published only once in a magazine withfairly small circulation. Therefore, it remains to be demonstratedthat the defendant’s actions caused financial loss to the plaintiff.According to the District Court, the invoices, where the defendantused the name Budweiser Budvar and other marks similar to theplaintiff’s registered trademarks, were business documentsprotected by business secrets and do not, therefore, reach publicknowledge. The District Court held that this did not create adanger of confusion among the consumers.

When comparing the defendant’s mark BUDEJOVICKYBUDVAR used predominantly as a trademark in beer bottle labelswith the plaintiff’s registered trademarks, the Helsinki DistrictCourt stated that the plaintiff’s and the defendant’s marks differedfrom one another both in their written form and in theirpronunciation, so that the beer products could not be consideredconfusingly similar. In the opinion of the District Court, the name“Budweiser Budvar National Enterprise,” which was included onthe defendant’s beer labels, was not used as a trademark, butmerely referred to the beer producer’s trade name.

According to the Helsinki Court of Appeal,385 the expression“Budweiser Budvar,” used in invoices rendered by BudejovickyBudvar and the phrase “Brewed and bottled by the breweryBUDWEISER BUDVAR National Enterprise” on beer bottles,which included the expression BUDWEISER, were, in accordancewith the Trade Marks Act and the Trade Name Act, confusinglysimilar to the plaintiff’s registered trademarks BUDWEISER andBUDWEISER KING OF BEERS. The Court of Appeal prohibitedthe defendant from using those expressions. It also prohibited theuse of the English translation of Budejovicky Budvar’s trade name,as it contains the protected trademark BUDWEISER of plaintiff.

III.B.8. Slavish Imitation

The defendant had in stock, for the purpose of sale, 86 pairs ofcounterfeit jeans with Levi’s labels, 83 of which had beenconfiscated. The defendant had since sold three pairs of saidcounterfeit goods.

Levi Strauss & Co (the complainant), joining in the action ofthe District Court Prosecutor regarding trademark violation,

385. Case S 98/1072, The Helsinki Court of Appeal, June 27, 2000. The Supreme Court

granted leave to appeal on February 13, 2001.

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requested that the defendant be ordered to pay damages in theamount of 27,450 Finnish marks. In addition, the complainantrequested that the defendant be prohibited, in accordance with theTrade Marks Act, from buying, selling or otherwise marketingquestionable products for a profit. Further, the complainantdemanded that the confiscated counterfeit goods be destroyed inaccordance with the Trade Marks Act.

The defendant refuted the charge and requested that theconfiscated jeans be returned to him so he could remove the labelsand then sell the products. The defendant also requested that allthe claims of the complainant be denied. According to thedefendant, he was not aware of the fact that the Levi’s jeans soldby him were counterfeit.

In its decision, the Helsinki District Court ordered thedefendant to compensate the complainant for the financial loss thedefendant had caused by his actions. This loss corresponds to thedecreased sales of the original Levi’s products, unlawful profitgain, and decrease of the goodwill value. The fact is that thedefendant had bought and sold counterfeit products that financedthe counterfeit industry of trademarks and contributed to financiallosses to the complainant.

The Helsinki District Court estimated the reasonable value ofthe financial loss to the complainant at 15,000 Finnish marks.

According to the Helsinki Court of Appeal, the defendant hadby his actions deliberately violated the complainant’s rights to thetrademarks in question and is, therefore, liable to compensate theloss suffered by the complainant.386 The Court of Appeal, however,estimated the reasonable amount of the financial loss at 1,000Finnish marks.


The Board of Appeal of the Finnish Patent Office rejected theopposition filed by Leiras Oy against the registered figurativetrademark of an inhalator387 in Class 10 in the name of GlaxoGroup Ltd. The opponent has not shown evidence that the colorconnected with the registered trademark of the Glaxo Group wouldbe generally established as a color of a certain type of inhalatorand that the mark would be nondistinctive and would indicate thecovered goods and their quality.

The Board of Appeal of the Finnish Patent Office rejected theopposition filed by Ccc Acquisition Corporation against thetrademark registration for CAVANTINA by Oy Sokos Ab in Class25.388 The Board held that the mark was not similar to the

386. R99/2381, The Helsinki Court of Appeal, June 29, 2000.

387. Case 148/T/98, The Board of Appeal of the Patent 0ffice, June 16, 2000.


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trademarks CATALINA and SANDCASTLE BY CATALINA of CccAcquisition Corporation.

The Finnish National Board of Patents and Registration andits Board of Appeal rejected the opposition filed by the KelloggCompany and upheld the registration of the trademarkFINNFROST of Finnfrost Oy in Classes 29 and 30 on the basis ofthe Trademark Act.

The Supreme Administrative Court rejected the appeal filedby the Kellogg Company.389 The Court held that there was nolikelihood of confusion between the trademark FINNFROST andthe trademarks FROSTED FLAKES and FROSTIES owned by theKellogg Company due to phonetic differences and the overallimpression of the marks.

The Supreme Administrative Court, the Finnish NationalBoard of Patents and Registration and its Board of Appeal rejectedthe opposition filed by Basic Trademark S.A. against thetrademark KAPPAHL of KappAhl Ab in Class 25.390 The SupremeAdministrative Court considered the overall impression of themarks and their visual differences and held that the applicant’smark KAPPAHL was not confusingly similar to the trademarksROBE DE KAPPA and KAPPA owned by Basic Trademark S.A.

FRANCE

I.A.1. Bases for Acquisition

The French Supreme Court has recently ruled391 thattrademark protection for the characteristic shape of a building inwhich a service is proposed is only possible when it is a precise andarbitrary design having an original and creative character suitablefor drawing the public’s attention. The design cannot, as in theabove case, simply consist of elements that are “purely functionaland necessary for displaying perfumery products.”

It is of course essential that the design meets the generalrequirements for trademark validity, and in particular that it isdistinctive. It cannot be just any design, but rather one which issuitable for characterizing a service according to Article L. 711-1 Cof the French Intellectual Property Code.


Mr. Valais, who produces pizzas at Pertuis in the Vauclusedépartement of France, had owned the PIZZAS DE SAINTTROPEZ trademark since August 18, 1980. He was using the



391. Sephora v. Patchouli, January 11, 2000 (Dalloz 2001 No. 5 p. 468).

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trademark without any complaint from the Municipal Offices ofSaint Tropez until April 13, 1999, when Saint Tropez decided to“get a grip on the image of the village” and registered its name as atrademark in all goods and service classes, taking royalties ofbetween two and five percent on the product of sales. Clearly, aslitigation could not be resolved in terms of prior right, the courthad to look to whether the name PIZZAS DE SAINT TROPEZconstituted a valid trademark.

The Paris Appeal Court392 canceled two trademarks includingthe name PIZZAS DE SAINT TROPEZ as deceptive, on thegrounds that “even if Saint Tropez does not enjoy a reputation forthe specific activity of producing and marketing of pizzas, the FirstInstance Judges were quite right in finding that the fame thistown enjoys, its location on the Mediterranean just like thecountry where this dish originated, and the use of the preposition‘de’ (of) in the trademark together with a reproduction of thetown’s bell tower in the semi-figurative trademark, constitutecircumstances of a nature likely to lead the public to consider thisis an indication of origin.”

Arnoux et fils, which owned the FONTAINE DE LA REINEFREDEGONDE DU MONTROUCOUS trademark, filed in 1994,appealed the court decision which found it had infringed thetrademark MONT ROUCOUS, filed in 1987 and owned by SomolacSource du Mont Roucous, which after performing a seizure hadintroduced proceedings for infringement, invalidity and unfaircompetition.

Arnoux counterclaimed for cancellation of the MONTROUCOUS trademark and its international protection. Arnouxchallenged the findings of the Appeal Court regardinginfringement arguing that a sign, use of which is forbidden as itconstitutes an indication or a name applied to natural mineralwater, cannot be adopted as a trademark; and that the distinctivecharacter of a sign constituting a trademark should be evaluatedin view of the product concerned. In relation to natural spring ormineral water, the trademark was lacking in distinctive characterand consequently, a name used to designate geographical origincannot act as a trademark.

The French Supreme Court393 ruled that MONT ROUCOUS,as a geographical place name was not, in 1997 when Somolacstarted selling the natural spring water, the appellation d’origineof a source of natural spring water nor was it known to the generalpublic as such, thereby constituting an indication of origin andbringing to mind particular qualities. The court added that any

392. Paris Appeal Court, Commune De Saint Tropez v. Mr. Valais, February 9, 2000(Dalloz 2001 No. 5).

393. French Supreme Court Commercial Chamber, Arnoux Et Fils v. Somolac Source duMont Roucous, October 24, 2000, (PIBD No. 712, III-33 and Ann PI 2000/2/115).

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connection that the public may currently make between naturalspring water distributed under the name MONT ROUCOUS andthe place Mont Roucous was as the result of the dynamicexploitation and marketing policy that the company had pursuedand that the geographical name MONT ROUCOUS did not bringto mind any particular quality and could consequently beconsidered as neutral.

LAGUIOLE is known to be the name of a town in the FrenchAubrac region, and is also the name of a knife of a particularshape, designed and produced at Laguiole, although principallyproduced at Thiers, a town with a reputation for producing knives.LAGUIOLE is also a cheese protected by an appellation d’origine.The Couteau de Laguiole Association had filed a CertificationMark consisting of a logo and the words LAGUIOLE ORIGINEGARANTIE in Class 8 covering knives.

The G.T.I. company later filed various trademarks includingthe term LAGUIOLE, and notably for the trademarks LAGUIOLELA LEGENDE and LAGUIOLE AUTHENTIQUE COLLECTION,to cover a variety of goods such as pencils and razors.

Viewing this trademark filing as deceptive and aninfringement of its certification mark, the Couteau de LaguioleAssociation along with the Town of Laguiole, introducedproceedings against G.T.I. In a judgment of April 23, 1997, theParis District Court394 found that G.T.I. had infringed thecertification mark and additionally considered that thesetrademarks were detrimental to the name of Laguiole as a town.


Proceedings had been introduced by a Dr. Virag against Pfizer,accusing them of having derived the name VIAGRA, filed as atrademark, directly from his surname, which it distinctly broughtto mind. Dr. Virag had contributed to developing the drugconcerned.

Claiming that the marketing of the drug in France and themedia campaign accompanying it would cause irreversible damageto his name and image, Dr. Virag introduced proceedings based onArticle L. 711-4 g of the Intellectual Property Code and twoarticles of the French Civil Code, claiming there had beenusurpation of his family name and asking for use of the trademarkto be forbidden. All of his claims had been dismissed by the court.

Pfizer asked that the invalidity action against the VIAGRAtrademark be considered as inadmissible on the ground that“Viagra is not a homonym of Virag.”

394. Paris Appeal Court, G.T.I –G.I.L Technologies Internationales v. Commune De

Laguiole and Association Le Couteau De Laguiole, November 3, 1999 (Ann PI 2000/2/115).

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The Appeal Court395 confirmed the First Instance decisiondismissing Mr. Virag’s claims on the ground that the existence of adanger of confusion between the well-known family name and athird party’s trademark that uses this name is a required conditionfor infringement upon the personality of the person having thatname. When a family name is reproduced identically, then adanger of confusion can be presumed, but it must be preciselydemonstrated in other cases.

When the family name reproduced by a trademark is not wellknown, application of the provisions of Article L. 711-4 g appearsto always be subordinate to a demonstration, which is difficult inpractice, of the existence of a risk of confusion, which cannot bepresumed even when the name has been reproduced identically.


Following a new position adopted in the matter of FUNRADIO and PARIS FUN, the Fourth Chamber of the Paris AppealCourt396 judged that it was appropriate to look for the existence ofthe danger of confusion between the earlier trademark CB and thetrademark CB Richard Ellis on the ground that the earliertrademark is not identically reproduced. Previously, in earlier caselaw, the Appeal Court considered that the identical reproduction ofa trademark, even by adding elements detachable from the whole,constituted infringement in the sense of Article L. 713-2 of theFrench Intellectual Property Code.

Internationale Supermarket Stores, owner of the ATACtrademark, had filed an opposition against an application toregister the complex trademark ATTAC by an association callingitself the “Association pour la taxation des transactions financièrespour l’aide aux citoyens.” The opposition was upheld and an appealwas filed.

When comparing the signs, the Court noted that bothtrademarks apply to the same services in Classes 41 and 42 andshould be compared overall. Thus, when comparing them, itappears that the earlier ATAC trademark is totally incorporatedwithin the later sign, the only difference being a doubling of theletter “T.”

According to the Appeal Court,397 if the addition of theadditional letter inside the term is without effect on itspronunciation and only slightly modifies the word’s appearance, it

395. Paris Appeal Court, Decision on Viagra, December 15, 2000 (Dalloz 2001 No. 16).

396. Paris Appeal Court Fourth Chamber, Cb Richard Ellis v. French Patent andTrademark Office, October 18, 2000 (In Juris-Data No. 2000-128996).

397. Paris Appeal Court Fourth Chamber, Association Pour La Taxation DesTransactions Financieres Pour L’aide Aux Citoyens (ATTAC) v. A Decision of the FrenchPatent and Trademark Office and Internationale Supermarket Stores ISMS SA (ATAC),October 18, 2000 (PIBD No. 713 p. 55).

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should nevertheless be noted that the challenged sign has adifferent overall presentation. Consequently, the Appeal Courtconsidered that this was only an imitation of the earlier trademarkand was likely to cause confusion for the consumer of averageattention, but not a slavish reproduction of the trademark. Theappeal was dismissed.

The Paris Appeal Court398 decided that the complex trademark’N POST was practically a slavish reproduction of the complextrademark LA POSTE, as “deleting the unpronounced vowel E atthe end of the word only introduces a slight visual difference withno effect on pronunciation; the apostrophe preceding the letter Ntogether with the colors employed added to the term POST doesnot form therewith an expression having its own specific meaning,nor does it constitute a unitary unit.” It thus appeared toconstitute infringement by imitation, supposing a risk of confusioncould be proved.


Visa, the owner of several trademarks, introduced aninfringement action against CSIM which had filed the trademarkVISICARD SYSTÈM. The District Court of Bobigny had dismissedthe action and an appeal was filed.

Regarding infringement, the Appeal Court399 considered thatthe District Court had correctly held that the goods and servicesdesignated by the VISA trademarks were neither identical norsimilar to those designated by the later trademark. Thus, servicesattached to credit cards, just like printed publications and printedmatter, did not have the same nature and did not meet the sameneeds as computer hardware.

As regards the signs involved, the District Court had correctlydecided that there was no danger of confusion, as the term VISIcould not be detached from the term VISICARD in order tocompare it with VISA, and that VISICARD, formed by acontraction of the word “visitor” and the word “card” was aneologism that was distinct and arbitrary for designating thegoods and services covered by the filing, even if the word SYSTÈMdid not constitute therewith one single indivisible whole.Consequently, VISICARD constituted the essential element of thetrademark, evoking, for the consumer, a card for visiting tradefairs and exhibitions, whereas VISA was understood to be a creditcard.

Visually, the later trademark consisted of two separate wordsmaking in all 14 letters and five syllables. Phonetically, there was

398. Paris Appeal Court, September 13, 2000 (In Juris-Data No. 2000-126944).

399. Paris Appeal Court Fourth Chamber, Visa International Service Association v.V.C.S Service, September 22, 2000 (PIBD No. 713, III-57).

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no resemblance between the two signs. In view of these majorvisual, phonetic and intellectual differences between the two signsinvolved, a consumer of average attention should not confusethem. Consequently, on this point, the Appeal Court confirmed theFirst Instance judgment.


Zéro Einkaufs und Verwaltungsgesellschaft, which owns theinternational trademark ZÉRO, had filed an opposition against theregistration of the trademark HÉ 1 ! HÉ 2 ! HÉ 3 ! -ZERO ! whichwas dismissed by the French Trademark Office. An appeal wasfiled.

The Appeal Court400 considered that even though the term“zero” was identically reproduced in the contested trademark, thisword associated with the exclamations “Hé 1 ! Hé 2 ! Hé 3 !” losesall its distinctive power. This expression, used as a trademark,brings to mind the World Cup football match against Brazil wherethe score was three goals to zero, and the presence of the HÉ infront of each of the numbers 1,2,3 gives particular importance tothe first part of the expression compared to the second. There wasno danger of confusion for a consumer of average attention and theZero company was not claiming its trademark was known on theFrench market. Refusal of the opposition was consequentlyconfirmed.


FujiFilm had filed an application to register E-PRINTSERVICES for photographic development, photographic apparatusand computer programs. An opposition was filed by the Dutchcompany Indigo NV, invoking the trademark E-PRINT registeredin 1995 for printers and parts thereof, computers and parts thereofand computer programs for printers. The French Trademark Officeconsidered the opposition partially valid and justified photographicapparatus and computer programs.

Indigo filed an appeal against this decision, arguing that aservice is closely associated with the product “printer” and thatthere is a real risk of confusion for the public.

FujiFilm claimed, on the other hand, that there could be nodanger of confusion considering that, firstly, the two companieswere in no way in a competitive relationship and that nodemonstration of the danger of confusion had been produced. TheTrademark Office pleaded for dismissal of the appeal.

400. Paris Appeal Court, Zero International Holding (Germany) v. A Decision of the

French Patent and Trademark Office and Laurent Galvan, October 27, 2000 (PIBD No. 712,III-36).

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The Appeal Court,401 in its decision, considered thatphotographic printing is closely associated with the productdesignated by the “i” (the first letter of the French wordimprimante meaning printer) covered by the earlier trademark (inFrench, the letter “i” is pronounced “e”). The risk of confusionresults from the identical end purpose of the services involved, butif similarity or complementarity requires there to exist a necessaryand close link between the products involved, thus causing thepublic to attribute the same origin to them, Indigo had notproduced proof of this. At the time of filing, the public clearlyassociated photographic printing and printers connected to acomputer, even though, as correctly pointed out, today’s digitalphotography printers do make it possible to have photographs oftraditional photographic quality using a printer and specialphotographic paper. Further, Indigo had not demonstrated that itsE-PRINT trademark designating printers is so well known in themarketplace as to introduce the risk of confusion with the E-PRINT SERVICES trademark designating photographic printing.

Regarding competition, it does not appear that on the date theE-PRINT SERVICES application was filed, the two trademarkswere in competition, considering that companies that printphotographs are not the same as those that produce printers.

Consequently, Indigo NV’s appeal was dismissed.

I.B.10. Deceptive Marks

Caviar Petrossian, a company that owned the trademarkCAVIAR PETROSSIAN, introduced proceedings against the Uniondes Coopératives Laitières d’Isigny-sur-mer, claiming that at thelaunch of a product described as caviar butter, which had beendistributed to several journalists, an imitation of the CAVIARPETROSSIAN packaging had been used. A counterclaim for theinvalidation of the mark was made on the basis of deceptiveness.

The First Instance Court had dismissed the claim on thegrounds that “the trademark is not deceptive for designatingcaviar, as a customer of average attention buying other productsbearing the mark is not likely to be deceived as regards theirnature considering that these products, sold in high-qualitygrocery shops are accessory or complementary to caviar, and thetrademark has for 30 years corresponded to the company’s name.”

The Paris Appeal Court402 partially canceled the CAVIARPERTROSSIAN trademark for being deceptive, in view of the listof products for which it was filed, as it could be used to designatefish eggs other than caviar, and thus deceive consumers. The

401. Paris Appeal Court, Indigo NV v. A Decision of the French Patent and Trademark

Office and Fujifilm, March 21, 2001 (Internal Decision No. 2000/14839, unpublished).

402. Paris Appeal Court, September 17, 2000 (PIBD No. 689/2000, III-17).

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Court, however, indicated, “Petrossian is justified in claiming that,in view of the nature of the other products designated among fish,meat and edible preserves, its trademark would not normallydeceive consumers.”

Regarding the infringement, and in particular theinfringement of the rights to the company name, Caviar Petrossiancomplained about two photographs, one in a press release and theother published such that the top of the lid of a caviar box wherethe trademark concerned was printed could not be seen. TheAppeal Court considered that it was irrelevant whether it hadbeen presented to the press. Reproduction of a trademarkbelonging to Caviar Petrossian and use of the name, or partthereof, constituted an infringement on the rights to the companyname.


Les Cuirs Mercedes filed a trademark application coveringvarious products for a complex sign that included a crocodile seenin profile, lying on a base, and a triangle inside of whichMERCEDES was written. Lacoste, which uses a crocodile toidentify this famous French brand, filed an opposition against allthe goods. The opposition was upheld.

On appeal,403 the Court considered that Les Cuirs Mercedescould not validly argue that its crocodile is sitting on a support inthe form of a triangle inside of which MERCEDES is written, asthese three elements do not form one single indivisible whole.Within the assembly the crocodile keeps its distinctive power,particularly in view of its overhanging position and size, whichdraws more attention than the other elements.

The Appeal Court confirmed the famous unchallengeablenature of Lacoste’s crocodile, noting consumers might be led tobelieve that there was some association between Lacoste’s teeshirts and the Mercedes firm. The Appeal Court consequentlyconfirmed the opposition was valid.

The Supreme Court404 partially quashed an Appeal Courtdecision for violation of Article L. 713-5 of the French IntellectualProperty Code, that forbid a company from using the nameOLYMPRIX with the award of damages, based on this article,stating that the use of a well-known trademark consists, in anyform, in the use of this trademark to gain a profit from itsidentifying effect and this applied in the case in hand to the use of

403. Paris Appeal Court Fourth Chamber, Les Cuirs Mercedes v. A Decision of theFrench Patent and Trademark Office and La Chemise Lacoste, March 24, 2000 (PIBD No.711, III-7).

404. French Supreme Court Commercial Chamber, Groupement D’achat Des CentresLeclerc v. Comité National Olympique Et Sportif Français, June 29, 1999 (Dalloz 2001 No.5).

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the word OLYMPRIX for the OLYMPIQUE trademark. The specialtype of action allowed by this article covering famous or well-known trademarks allows the use of such marks to be forbiddenand penalized under certain conditions, but this does not apply tothe use of a sign that is not identical, simply for its appearance orthe feelings it brings to mind.

In this decision, the Commercial Chamber of the SupremeCourt clearly demonstrated its intention to apply a restrictiveinterpretation to Article L. 713-5, which is an exceptional provisiondeparting from the principle of specialty that is the cornerstone oftrademark law, while the Appeal Court had considered that use ofa well-known trademark in the sense of Article L. 713-5 hadoccurred, whatever the form it was used in, if used for derivingprofit from this identifying effect.

This interpretation was revised by the Supreme Court. TheCourt stated that if Article L. 713-5 allows the use of a well-knowntrademark to be stopped, it does not allow imitation thereof to bepunished.

The effect of this interpretation is tantamount to making itimpossible to sue for imitation of a well-known trademarkemployed outside the framework of its specialty with the risk of, inthe long term, creating a “niche” for infringers even if the currentsituation is that people trying to benefit from a well-knowntrademark adopt the trademark in its entirety.405

Finally, by only being able to sue for use of a sign identical to awell-known trademark, France has set itself apart both fromCommunity Trademark regulations and the legislation of themajority of European member states that, with the exception ofDenmark and Spain, have fully adopted the possibility availableunder the European Directive.

Hilton International owns the trademark HILTON, which itfiled in 1998 in Class 42 and licensed to Hilton International(France). On June 23, 1997, a company called Raclet had filed forregistration of the HILTON trademark in Class 22 for designatingtents.

On the basis of Articles L. 713-3 and L. 713-5 of theIntellectual Property Code, Hilton International introduced anaction for infringement of its trademark, company name andtrading name against Raclet.

Regarding infringement, it could not be contested that the twomarks do not cover identical or similar products, considering thattents are provisional shelters in a canvas material most frequentlyused by campers whereas hotel services cover a range of services,including the provision of hotel rooms fitted to a high standard ofcomfort. Although it is true that Hilton does, as an accessory

405. See Technoibel: French Supreme Court Commercial Chamber, January 6, 1969(Ann PI 1969 p. 145); Solide: District Court of Paris, April 9, 1991 (PIBD III-550).

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service, employ tents in the framework of the services it can offerguests, nevertheless, according to the Appeal Court,406 when thetrademarks in question concern separate activities in differenteconomic fields, employing dissimilar commercial circuits, a claimfor infringement cannot be upheld.

Regarding the famous nature of the trademark, the fact that alarge number of HILTON hotels are operating abroad while onlysix are operating in France was not in itself of a sufficient natureto stand in the way of the famous character of this trademark inthe eyes of French consumers. The use by Raclet of the trademarkinvolved, by the dilution of the HILTON trademark it broughtabout, does prejudice the attractive character of the trademark.

II. Procedural Matters

In the matter of certification marks belonging to associations,notably in this case the association known as “Le Couteau deLaguiole,” on the question of whether an association can introduceinfringement proceedings, the Appeal Court407 stated that anassociation represented by its chairman can act before the courts ifit could be shown that the association has authorized him to takethe necessary steps before the courts to protect a registeredtrademark. Otherwise, this would constitute an irregularitycoming under Article 121 of the French New Code of CivilProcedure, which provides for an irregularity to be made good ifthe grounds have disappeared at the time judgment is made. Inthis present case, subsequent ratification by the town councilvalidated the proceedings introduced by the town.

Customs at Charles de Gaulle Airport in Paris had informedGivenchy and L’Oréal that they were detaining 840 bottles ofperfume branded AMARIGE and 768 bottles of toilet waterbranded ANAÏS ANAÏS and CACHAREL originating from Miamiand destined for Dubaï.

It turned out that the products were genuine and had beenshipped by a company called Perfumania, and were destined for AlMunira Trading Est. Givenchy and L’Oréal introduced proceedingsagainst Perfumania, Al Munira and La Plume before the DistrictCourt for illegal use of the trademarks AMARIGE and ANAÏSANAÏS.

Al Munira pleaded that the French courts were incompetent,stating that their registered office was not in France and that theinternational sales contract had been neither entered into norsigned in France, and that United States law should be applicable.

406. District Court of Paris, November 14, 2000 (PIBD No. 715, III-107).

407. Paris Appeal Court, G.T.I–G.I.L Technologies Internationales v. Commune DeLaguiole and Association Le Couteau de Laguiole, November 3, 1999 (Ann PI 2000/2/115).

Vol. 92 TMR 399

The French District Court refused this claim of incompetenceon formal grounds, stating that the offence in question had beencommitted in France. However, on the merits it dismissed theGivenchy and L’Oréal claim, considering that their rights had beenexhausted, as goods branded AMARIGE and ANAÏS ANAÏS werealready on the French market.

On the question of competence, the Appeal Court408 confirmedthe District Court’s view that French courts were competent as thepre-judicial acts had occurred on French territory, therebydismissing the claim to incompetence advanced by Perfumania andAl Munira.


Article R. 712-14 of the French Intellectual Property Codeprovides that “opposition shall be made in writing under theconditions set out by article art. 712-26 of this code.” A decree ofJanuary 31, 1992 requires, among other things, oppositions to befiled on standardized forms in two copies when an opposition isfiled against a French trademark application, and in four copieswhen an opposition is filed against an international trademarkregistration.

In decision No. 95-196 of June 27,1995, the Trademark Officehad defined the conditions under which trademarks should be filedand had decided that the possibility of filing trademarkapplications, applications for registered designs in color, as well asoppositions against trademarks could not be made by fax.

BSH Electroménager had filed an opposition against atrademark application by fax, in a single copy, with confirmationby letter, written after the two month period for opposition hadexpired. The Appeal Court409 agreed the opposition wasinadmissible, that the Trademark Office’s decision was notcontrary to any legal or statutory provision and was consequentlyunchallengeable.

II.D.1. Jurisdiction/Authority

The Tribunal De Conflit has held an action for damagesbrought against the Patent and Trademark Office for delayfollowing the filing of a trademark application falls within thejurisdiction of the courts.

The jurisdiction as set out in Articles L. 411-4 and L. 712-14 ofthe French Intellectual Property Code to judge on appeals brought

408. Paris Appeal Court, Givenchy and L’Oréal v. Perfumania Inc. (USA), La PlumeCorp (USA) and Al Munira Trading Est (Arab Emirates), October 13, 2000 (PIBD No. 713,III-59).

409. Paris Appeal Court Fourth Chamber, BSH Electroménager v. French Patent andTrademark Office, February 2, 2001 (JCP No.15-16 p. 2001-05-03).

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against decisions of the Patent and Trademark Office regardingissue, refusal or maintenance of intellectual property rightsextends to actions concerning prejudice arising from shortcomingswith legal consequences brought against that Office.410


In LTJ Diffusion v. Sadas, the question was whether thetheory of “partial infringement” is compatible with Article 5-1(a) ofEC Directive 89/104 of December 21, 1988.

LTJ Diffusion owns the ARTHUR trademark and was using itas a trading sign. It had noticed that in Verbaudet’s catalog,published by Sadas, various items of children’s clothing werelabeled ARTHUR ET FÉLICE, a Community Trademark filed bySadas.

LTJ Diffusion filed an opposition at the OHIM, claiming thatits ARTHUR trademark had been infringed. The OHIM dismissedthis opposition. LTJ Diffusion then brought the matter before theParis District Court, claiming that even if filing and using theARTHUR ET FÉLICE trademark did not constitute infringementby the reproduction of the ARTHUR trademark, it was aninfringement by imitation as long as there was a danger ofconfusion in the mind of the public.

Sadas, in line with what it claimed to be the case law of theECJ, argued that in the case of a complex trademark, onlyreproduction of all the elements making up the trademark withthe same configuration and used to designate identical goods andservices would constitute infringement.

LTJ argued that partial reproduction of a complex trademark,or addition of signs other than those making up the trademark,could only be considered to be an imitation thereof and not asinfringement.

Sadas put the following question to the European Court ofJustice:

[I]s application by French Courts of the theory of partialinfringement compatible with Article 5-1 of EC Directive No.89/104 of 21st December, 1988?The Paris District Court411 decided to stay judgment on the

question of infringement, unfair competition and a counterclaimbrought by the defendant, while awaiting the answer to thisquestion. Should the ECJ answer in the negative, reproductionwith additional elements, the same practically slavishreproduction, would constitute infringement by imitation. In that

410. Tribunal De Conflit, Peyrinet v. The French Patent and Trademark Office, JCPEntreprise & Affaire, June 5, 2000 (2001 No. 13 p. 567).

411. District Court of Paris, LTJ Diffusion v. Sadas Verbaudet, June 23, 2000 (PIBD No.707, III-522).

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case, the theory of “all indivisible” in French case law would nolonger hold.


V Secret Catalogue owns the VICTORIA’S SECRETtrademark covering catalog sales and considered that RoulletFransac had infringed its well-known VICTORIA’S SECRETtrademark by filing an identical trademark application limited togoods in Class 33 for alcoholic drinks. V Secret Catalogue hadclaimed that theirs was a well-known trademark.

The Paris District Court held the VICTORIA’S SECRETtrademark was neither well known nor famous and dismissed theclaim for cancellation of the later identical trademark, butawarded damages under civil liability for the prejudice V SecretCatalogue had suffered in view of legislation limiting theadvertising of alcoholic drinks.

The matter went to appeal, and it was decided412 thatregarding famous marks, Article L. 713-5 of the FrenchIntellectual Property Code requires the trademark owner to havesuffered a prejudice and for there to have been unjustified use.

In the case concerned, the press cuttings, catalogues, the list oftransactions made by credit card in the V Secret Catalogue shopsand turnover for sales of its products did not demonstrate that theVICTORIA’S SECRET trademark enjoys fame in France.Additionally, V Secret Catalogue had not demonstrated that theuse of an identical name had caused prejudice and constitutedunjustified use. Nevertheless, the filing of the VICTORIA’SSECRET application by Roullet Fransac was preventing V SecretCatalogue from freely using their trademark, notably inadvertising, in view of the legislation against advertising ofalcoholic drinks, and, although the trademark was not canceled, alluse thereof by Roullet Fransac was forbidden.


The Georges Rech company that owns the trademarkGEORGES RECH introduced an infringement action againstBuchin S.A., which owned the trademark JEAN-FRANÇOISRECH. Infringement was found by the District Court and thisdecision went to appeal.

Buchin claimed in the First Instance and at the appeal levelthat it was entitled to use the trademark JEAN-FRANÇOIS RECHconsidering this was the name of their managing director and that

412. Paris Appeal Court Fourth Chamber, Roullet Fransac v. V Secret Catalogue,

September 20, 2000 (PIBD No. 711, III-9).

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the only thing the marks had in common was the term RECH sothere was no danger of confusion.

The Appeal Court413 stated the possibility of a third partyacting in good faith in allowing the use of their family name as acompany name, despite the existence of an earlier trademarkinvolving the same sign, was inapplicable in this case, particularlysince the application had been filed not by Mr. Jean-François Rechbut by Buchin S.A. The trademark GEORGES RECH, through theRECH element, has itself a distinctive power and the adding ofanother forename does not avoid infringement.


Lancôme Perfumes and Beauty owns the POÊME trademarkfiled on December 7, 1993, with a circumflex accent over the “e,”for designating perfumery products. On October 18, 1994, itacquired from Bristol-Myers a POÈME trademark, consisting ofthe same word but without the circumflex accent, filed onJanuary 26, 1979, for identical goods. Lancôme introduced aninfringement action against a company called Papous, for havingfiled, on June 26, 1992, an application for a name mark POÈMESINTIMES for perfumery goods.

In a counterclaim, Papous asked for the POÈME trademark(without the circumflex accent) to be canceled for lack of serioususe, it having been acquired from Bristol-Myers in order to enjoyan earlier filing date than the date of December 7, 1993, of thePOÊME trademark with the circumflex accent. Papous arguedthat the acquisition by Lancôme of the second POÈME trademarkfrom Bristol-Myers was done fraudulently.

In a judgment of May 30, 1997, the Paris District Court statedthat Lancôme had lost its rights to the trademark, and, for thefacts prior to the date of loss of rights, in other words prior toDecember 28, 1996, Lancôme was awarded damages forinfringement by Papous on the grounds that the term POÈME isan essential element of the name POÈMES INTIMES, whichreproduces it identically.

This judgment was overturned by the Appeal Court,414 whichreinstated rights to the POÈME trademark without the circumflexaccent. Indeed, Article L. 714-5 of the French Intellectual PropertyCode states that “loss of trademark rights does not occur when useis made of the mark in a modified form that does not alter thedistinctive character thereof.”

413. Paris Appeal Court, Buchin S.A. v. Georges Rech S.A., October 20, 2000 (PIBD No.

712, III-38).

414. Appeal Court of Paris Fourth Chamber, Lancôme Parfums v. Papous, January 21,2000 (D 2000 No. 40).

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The Appeal Court considered that Lancôme’s purchase of thetrademark from Bristol-Myers was regular and lacking in anyfraudulent nature, as it emerged from the documents producedthat well before the Papous application was filed, Lancôme hadalready expressed an interest in purchasing the Bristol-Myerstrademark.

III.A.12. Lack of Distinctiveness

The question of the distinctiveness of the trademark BEURRETENDRE, which means “soft butter,” should be considered at thetime the application is filed. According to Article L. 711-2-b of theFrench Intellectual Property Code, signs or names that candesignate a characteristic of a product or a service, and notably inthis present case a quality such as “soft,” are lacking in distinctivecharacter. Thus, if the quality of the product cannot act alone toqualify distinctly as a trademark, a trademark infringement actioncannot be based thereon, and the Appeal Court415 dismissed aclaim for infringement.

A comparison of the butter dish shown in one trademark andthe other packaging showed no resemblance, meaning that noother grounds for the complaint separate from infringement, andmore particularly an attempt at passing off, could be upheld.


Philips Electronic NV owns the PHILIPS trademark. Thegoods it was filed to cover include demodulators. Métronic wasselling PHILIPS brand demodulators, which they had modifiedwithout the trademark owner’s authorization. Philips sued forinfringement and unfair competition.

The Appeal Court of Rennes had not upheld the unfaircompetition action on the grounds “that by selling Philipsequipment, after modification, under the latter’s trademark, thecompanies had not come into a competitive situation consideringthat it had not been established that Philips was sellingdemodulators having the same characteristics as the modifiedones, and that in the absence of any danger of confusion withsimilar products, Philips has not suffered any prejudice regardingtheir own customers characterizing unfair competition.” TheSupreme Court416 did not agree with the position adopted by theAppeal Court, holding, “[W]hereas by so determining withoutinvestigation, as it was expected to do, whether the selling ofmodified and defective products under a similar brand did not

415. Appeal Court, Elvire Et Cie Laitiere Européenne v. Bridel, February 9, 2000 (AnnPI 2000/2/94).

416. French Supreme Court, Philips (Philip French S Electronics NV) v. Métronic, May30, 2000 (PIBD 706/2000, III-475).

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have a negative effect on Philips’s commercial reputation, theAppeal Court has deprived its decision of a legal basis.”

III.B.4. Advertising

Capitole and Self Trade had issued advertising campaigns.Capitole’s slogan “Démocratise La Bourse” (Democratize the StockExchange) had only been used in the framework of a diversifiedpromotional campaign involving the highlighting of numerousother indications covered by an attractively-priced package. Theads were aimed at customers making transactions of a small valuewith limited savings.

For Self Trade, the communications campaign covering therelevant period had used three humorous cartoons accompanied bytexts that included the terms “Self Trade Démocratise La Vie” (SelfTrade Democratizes Life) that highlighted the contrast withprofessional city traders. Capitole had presented the StockExchange as a universe to be discovered. The pricing policy of thetwo companies also differed considerably.

Considering that there was no element in the competitor’scampaign that showed similarity, the use of a similar slogan didnot appear likely to cause confusion in the consumer’s mind.417

Using generic and purely descriptive terms in a slogan does notcreate the danger of confusion that must of necessity be present tocharacterize unfair competition.

III.B.6. Configuration of Goods

Two Kraft companies introduced an infringement and unfaircompetition case against Nestlé, accusing it of presenting a blockof chocolate in packaging similar to one of theirs. This packaginghad been registered as a trademark. The Paris Appeal Court,418

however, refused to uphold an infringement action consideringthat Nestlé had only reproduced nondistinctive elements of thetrademark and not the distinctive and characteristic elementsthereof. It did, however, uphold the unfair competition action onthe grounds that by modifying its packagings on two occasions,Nestlé had attempted to move closer to Kraft’s packaging andthereby created a risk for confusion in the mind of consumers.

III.B.7. Color

The Colgate-Palmolive company owns a complex trademark,filed in color, consisting of packaging, certain characteristics of

417. Paris Appeal Court, June 2, 2000, Capitole SA v. Self Trade SA, Revue

Communication-commerce electronique, February 2001, p. 28.

418. Paris Appeal Court, Kraft Jacobs Suchard France and Cote D’or v. Nestlé Franc,October 15, 1999 (Juris-Data No. 1999-117115).

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which are claimed, notably a transparent flask or bottle throughwhich a green colored liquid can be seen; a white cap; the namePALMOLIVE in yellow; and white-colored crockery on a greenbackground, etc.

Noting that its competitor Lever was selling a washing liquidcalled “soleil citron” in packaging that had adopted thecharacteristics of their trademark, namely the green color for theliquid and the presence on the label of a transparent glass and ahand, Colgate-Palmolive introduced an infringement actionagainst Lever. The Appeal Court had upheld the existence ofinfringement by imitation.

The French Supreme Court419 ruled that a trademarkcomposed of a color, the color green, without any particular detailsregarding the shade thereof, constitutes a valid trademark for awashing liquid when it is associated with other elements in acomplex trademark. Having settled the question of the validity ofthe color green as a mark, the question now was whether therehad been an imitation thereof. The Court found that this complexmark had been infringed by imitation and considered that thecombination adopted by the infringing party brought about a riskof confusion for the public.

III.D. Seizures

Synthélabo Recherche had argued that the right to a fair trialas set out in Article 6.1 of the European Human-RightsConvention, and Article L. 333-4 second paragraph of the FrenchIntellectual Property Code, requires that the expert who assiststhe bailiff or police commissioner in the seizure of softwareproducts be independent of the parties. It also argued that theAppeal Court had upheld a request for nullity of seizuresperformed at Laboratoires Wang’s request, on the grounds that therepresentative of an agency where software can be filed to provecopyright had assisted the Police Commissioner as an expert yetthe action had been introduced jointly by Wang and the saidagency. The expert was consequently not independent of theparties. The Supreme Court420 overturned the Appeal Court’sdecision for violation of the French Intellectual Property Code,which allows a plaintiff to choose an expert without restriction.

Kenzo, owner of the KENZO trademark filed in 1992, coveringperfumes and other products in Classes 3, 16 and 21, had givenTamaris an exclusive license to produce and sell perfumes, toiletwater and derived products under the KENZO brand. Kenzo and

419. French Supreme Court Commercial Chamber, Lever v. Colgate-Palmolive,

February 22, 2000 (D 2001 No. 5).

420. French Supreme Court, Synthélabo Recherche v. Laboratoires Wang, Inc., July 6,2000 (Dalloz 2001 No. 4).

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Tamaris introduced a trademark infringement and unfaircompetition action after performing a seizure against Via Paris,which was selling a perfume branded IDAHO.

Via Paris claimed the seizure was invalid, but this claim wasrejected. Before the French Supreme Court, Via Paris contestedthe Appeal Court’s decision claiming that its judgment had beenmade without investigating if a failure on the part of Mr. Sabatierto state that he was a barrister (avocat), at the time of the seizure,did not render the seizure invalid.

According to the Supreme Court,421 the Appeal Court hadlegally justified its decision in view of Article 6.1 of the EuropeanHuman Rights Convention. The Appeal Court had noted that thejudge’s order authorizing the seizure allowed the bailiff to beaccompanied by an expert chosen by the plaintiff provided theperson was not a member of the latter’s staff. It turned out thatthe bailiff had been assisted by a person who had formerly been atrademark attorney for the plaintiff, but who had become anavocat following the reorganization of the legal profession of 1992,and that there is no article that prevents a person practicing thisprofession from being designated as an expert.

GERMANY


The German Patent and Trademark Office refusedregistration of the trademark ANTIKALK for “water softenersused in dishwashers and washing machines in liquid and pasteform, including tablets, cleaning agents for lime deposits, descalersfor cooking utensils and beverage machines.” The applicantappealed to the German Federal Patent Court, which concurredwith the Patent and Trademark Office’s decision. The Court heldthat ANTIKALK is barred from registration under Section 8(2)No. 1 of the German Trademark Act,422 because it is not distinctivebut merely descriptive, even though the term is not to be found indictionaries. The decision was based on the argument that theterm “anti” is commonly used in conjunction with other terms todescribe an agent against something, and for this reason there is aneed to keep the term available for common use by itself or inconjunction with other descriptive terms such as “Kalk.”423 TheCourt further held that the design and color scheme of this markcould not render it distinctive, either. The applicant filed an appealwith the German Federal Supreme Court.

421. French Supreme Court, Parfums Via Paris-Kenzo, April 18, 2000 (Dalloz 2001No.4).

422. Markengesetz (MarkenG).

423. In English, lime.

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The German Federal Supreme Court concurred with theFederal Patent Court’s decision.424 The Supreme Court held thatwhile the question of distinctiveness is to be viewed generously,even the minimal standard of distinctiveness had not been met inthis case. The Court found that ANTIKALK is descriptive to suchan extent that it will not be understood by consumers as adistinction between different products or manufacturers, butrather as a description of the product’s effect. The Supreme Courtalso concurred with the Patent Court’s findings regarding designand color scheme. While holding that these elements can generallyconstitute distinctiveness, the Supreme Court found that simplegraphic design or ornamental fonts commonly used in advertisingcannot outweigh the descriptiveness of the term itself because suchdesigns alone would not be registrable as a trademark either. TheGerman Federal Supreme Court denied registrability because noelement of ANTIKALK satisfies the distinctiveness requirementunder Section 8(2) No. 1 German Trademark Act.


The German Patent and Trademark Office refusedregistration of the trademark RATIONAL SOFTWARECORPORATION for computer software, computer programs andcomputer manuals in International Classes 9 and 16. Theapplicant appealed the decision to the German Federal PatentCourt.

The German Federal Patent Court concurred with the decisionof the German Patent and Trademark Office and held thatRATIONAL SOFTWARE CORPORATION was barred fromregistration under Section 8(2) Nos. 1 and 2 of the GermanTrademark Act. The German Federal Patent Court argued,inter alia, that the terms RATIONAL, SOFTWARE andCORPORATION are not distinctive and that also the combinationof these terms could not justify the registrability of thecombination. The German Federal Patent Court did not take intoconsideration that the trademark RATIONAL SOFTWARECORPORATION had already been registered in other countries.

The German Federal Supreme Court reversed the decision ofthe German Federal Patent Court,425 holding that theregistrability of RATIONAL SOFTWARE CORPORATION had tobe determined based upon the mark in its entirety instead ofconsidering the registrability of the various elements constitutingthe trademark. Moreover, the German Federal Supreme Court

424. German Federal Supreme Court of June 28, 2001 - I ZB 58/98; GRUR 1153 (2001)

(ANTIKALK).

425. German Federal Supreme Court of May 1, 2000 – I ZB 22/98; GRUR 162 (2001)(RATIONAL SOFTWARE CORPORATION).

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found that the term RATIONAL did not refer to a single conceptbut had several meanings like logic, sensible, etc. In addition, theGerman Federal Supreme Court stated that the term RATIONALin RATIONAL SOFTWARE CORPORATION did not refer to thefurther terms SOFTWARE or CORPORATION since RATIONALis not being used as an adjective. As a result, the German FederalSupreme Court denied that RATIONAL SOFTWARECORPORATION has a merely descriptive meaning with respect tothe goods identified in the application; therefore, Section 8(2) No. 1of the German Trademark Act did not hinder its registration.426

In addition, the German Federal Supreme Court denied thatthere is a need to keep RATIONAL SOFTWARE CORPORATIONfree for common use under Section 8(2) No. 2 of the GermanTrademark Act, pointing out that the German Federal PatentCourt did not substantiate a descriptive use of RATIONALSOFTWARE CORPORATION in its entirety and also did notconsider the various meanings of the term RATIONAL. TheGerman Federal Supreme Court further criticized the GermanFederal Patent Court because it did not consider that thetrademark RATIONAL SOFTWARE CORPORATION was alreadyregistered in the United States and in the United Kingdom. Theseregistrations were at least an indication that RATIONALSOFTWARE CORPORATION is registrable as a trademark. As aresult, the German Federal Supreme Court upheld the appeal filedby the applicant and remanded the matter back to the GermanFederal Patent Court for further consideration.

The German Patent and Trademark Office refusedregistration of the trademark INDIVIDUELLE for the goods“soaps; perfumes, essential oils, body and hair care products, hairlotions, dental hygiene products; precious metals and their alloysand goods manufactured therefrom or coated therewith (includedin Class 14) in international Classes 3 and 14.” The applicantlodged an appeal with the German Federal Patent Court againstthe decision. The German Federal Patent Court concurred with thedecision of the German Patent and Trademark Office, and heldthat INDIVIDUELLE is barred from registration under Section8(2) No. 1 and No. 2 German Trademark Act. The German FederalPatent Court argued that INDIVIDUELLE is only the femalesingular form and the plural form of the German word“individuell”427 and is often used in advertising. The need to keepthe term INDIVIDUELLE available for common use requires astrict judgment regarding the distinctiveness of INDIVIDUELLE.For these reasons, the German Federal Patent Court decided that

426. Section 8(2) No. 1 of the German Trademark Act provides that trademarks that aredevoid of any distinctive character with respect to the goods or services they distinguishshall not be registered.

427. In English, individual.

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INDIVIDUELLE has to be kept available for common use and doesnot have the necessary distinctiveness. The applicant then filed anappeal with the German Federal Supreme Court.

The German Federal Supreme Court reversed the decision ofthe German Federal Patent Court.428 The Supreme Court held thatthe question of distinctiveness has to be viewed generously. Aslong as the trademark INDIVIDUELLE has no primarilydescriptive meaning for the goods applied for and is not only agenerally used term that the consumer will never understand as ameans of distinction between different companies, there are nogrounds on which the necessary distinctiveness can be denied. TheGerman Federal Supreme Court found that the applicant did notapply for “individuell” as the female singular or plural term, butfor INDIVIDUELLE which is different. Furthermore, the GermanSupreme Court held that INDIVIDUELLE is not such a commonterm that it will never be understood by the consumer as a meansof distinction. Moreover, the German Federal Supreme Courtfound that INDIVIDUELLE can have different meanings. It canmake reference to the goods as well as to the consumer, and inboth cases can be understood as unique, as designed for a specialperson or need, or as belonging to a certain person, etc.Consequently, the German Federal Supreme Court denied thatINDIVIDUELLE has a mere descriptive meaning for the goods,with the result that Section 8(2) No. 1 of the German TrademarkAct does not hinder its registration. Section 8(2) No. 1 of theGerman Trademark Acts provides that trademarks that are devoidof any distinctive character with respect to the goods or servicesinvolved shall not be registered.

In addition, the German Federal Supreme Court rejected theargument that the need to keep INDIVIDUELLE available forcommon use requires a stricter judgment regarding distinctive-ness. The German Federal Supreme Court pointed out that Section8(2) No. 1 (distinctiveness) and No. 2 (common availability) of theGerman Trademark Act have to be viewed separately and do notcorrespond with each other.

The German Federal Supreme Court pointed out thatINDIVIDUELLE could not be understood as being primarilydescriptive of the goods and that the abstract possibility of atrademark being descriptive is not sufficient to affirm the need forcommon availability under Section 8(2) No. 2 German TrademarkAct.

The German Patent and Trademark Office refused regis-tration of the trademark GENESCAN for computer software tosequence DNA. The applicant lodged an appeal with the GermanFederal Patent Court against the decision. The German Federal

428. German Federal Supreme Court of June 28, 2001 - I ZB 1/99; MarkenR 408 (2001)(INDIVIDUELLE).

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Patent Court concurred with the decision of the German Patentand Trademark Office and held that the term GENESCAN isdescriptive of the process in which the software sequences theDNA. GENESCAN is not a newly-coined word since it is alreadyused and known by the relevant professional groups for thescanning, search or examination of genes. The elements “gene” and“scan” are both commonly used in Germany with the samemeaning as in English. The registration of the mark in Englandand Australia cannot support the registrability in Germany. Forthese reasons, the German Federal Patent Court decided thatGENESCAN has to be kept available for common use inaccordance with Section 8(2) No. 2 German Trademark Act. Theapplicant then filed an appeal with the German Federal SupremeCourt.

The German Federal Supreme Court reversed the decision ofthe German Federal Patent Court.429 The German FederalSupreme Court held that GENESCAN cannot be regarded asdescriptive of the software program. The software does not scanthe DNA but analyzes the results after the chemical sequencingprocess is complete. Therefore, GENESCAN does not describe theprocess of scanning DNA but is a word that does not have to bekept available for today or future common use under Section 8(2)No. 2 German Trademark Act.

In addition, the German Federal Supreme Court pointed outthat the registration of GENESCAN in Australia and England ascountries where the term GENESCAN originates from doesindicate its registrability in Germany because GENESCAN is usedin Germany with the same meaning as in English-speakingcountries. Furthermore, GENESCAN was registered in Englandunder the same unified trademark law as is enacted in Germany.Only if a term were used in Germany with a meaning different tothat of the original language would the registration in othercountries not indicate the registrability in Germany.

The German Patent and Trademark Office refusedregistration of the trademark LOOK for the goods “raw tobacco,cigarettes and other tobacco products, cigarette paper, lighters,smoking articles.” The applicant lodged an appeal with theGerman Federal Patent Court against the decision. The GermanFederal Patent Court concurred with the decision of the GermanPatent and Trademark Office and held that the term LOOKbelongs to the most basic English vocabulary also known inGermany. Even though it has different meanings such as“fashion,” “style,” “design” and “to look at something” in regard tothe goods, the consumers will primarily understand LOOK tomean “to look at” the product. Therefore, the term LOOK is mostly

429. German Federal Supreme Court of February 01, 2002 - I ZB 51/98; MarkenR 304(2001) (GENESCAN).

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descriptive and will only be understood as a means ofadvertisement but not as an indication of the origin of the labeledproduct. For these reasons, the German Federal Patent Courtdecided that LOOK is devoid of any distinctiveness in accordancewith Section 8(2) No. 1 German Trademark Act. The applicantthen filed an appeal with the German Federal Supreme Court.

The German Federal Supreme Court reversed the decision ofthe German Federal Patent Court.430 The German FederalSupreme Court held that, owing to its various meanings, LOOKcannot be regarded as being descriptive of the goods. Section 8(2)No. 1 German Trademark Act has to be understood generously.There is no argument to support a stricter application oncatchwords in advertisements. The identification function and theadvertisement function do not exclude each other. Contrary to theapplication TEST IT. for the same goods, which is only descriptivein the sense of testing the product in question,431 LOOK has notonly a descriptive meaning of “to look at something,” but also theabove mentioned meanings. There are no arguments to support theassumption that the consumers will only understand LOOK in thesense of “to look at something” and not as “style,” “design,” etc. Forthese reasons, in regard to Section 8(2) No. 1 German TrademarkAct, the term LOOK has to be seen as having various meanings,and is, therefore, distinctive for the goods.

The German Patent and Trademark Office refusedregistration of the trademark REICH UND SCHOEN432 for thegoods and services “television entertainment; composition of radioand television channels; film and television productions; filmrental; sound studios; video productions; video rental; publicationand rental of books.” The applicant lodged an appeal with theGerman Federal Patent Court against the decision. The GermanFederal Patent Court concurred with the decision of the GermanPatent and Trademark Office, and held that the registration ofREICH UND SCHOEN would violate Section 8(2) No. 2 GermanTrademark Act, as the slogan has to be kept available for futurecommon use. The slogan is ideal for the description of the goodsand services. The slogan is short and, similar to a catchword,accurately describes the goods and services. In addition, it isdevoid of any distinctiveness in accordance with Section 8(2) No. 1German Trademark Act. The need to keep a descriptive termavailable for common use requires a stricter application of Section8(2) No. 1 German Trademark Act. REICH UND SCHOEN doesnot have the required degree of originality or imagination and is,

430. German Federal Supreme Court of June 07 2002 - I ZB 20/99; GRUR 1150 (2001)

(LOOK).

431. German Federal Supreme Court, GRUR 1089 (1999) (TEST IT.).

432. In English, rich and beautiful.

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therefore, devoid of the necessary distinctiveness. The applicantthen filed an appeal with the German Federal Supreme Court.

The German Federal Supreme Court partly reversed thedecision of the German Federal Patent Court.433 The GermanFederal Supreme Court held that regarding the goods and services“film rental; sound studios; video rental, publication and rental ofbooks,” REICH UND SCHOEN does have the necessarydistinctiveness. Section 8(2) No. 1 German Trademark Act has tobe understood generously, the smallest amount of distinctivenessis enough to overcome a descriptive character of a term. There isno argument to support a stricter application on terms that have tobe kept available for common use. Section 8(2) No. 1(distinctiveness) and No. 2 (availability) have to be viewedseparately and do not correspond with each other. No argumentshave been stated whereby the consumers will only connect thegoods and services “film rental; sound studios; video rental,publication and rental of books” with topics or the advertising oftopics dealing with REICH UND SCHOEN.

The German Federal Supreme Court concurred with thedecision of the German Federal Patent Court regarding theservices and goods “television entertainment; composition of radioand television channels; film and television productions; videoproductions.” These goods and services and the slogan REICHUND SCHOEN have a very close connection so that the consumerswill only understand REICH UND SCHOEN as a description forthese goods and services.

The German Patent and Trademark Office refusedregistration of the trademark GUTE ZEITEN - SCHLECHTEZEITEN,434 for the goods and services, “perfumery, cosmetics,soap; software, wrist watches; jewelry; magazines, bookscalendars; umbrellas, cups; dishes; pots and pans; bed-linen,clothes; toys; online-services; audio discs and tapes; televisionentertainment; composition of radio and television channels; filmand television productions; film rental; sound studios; videoproductions; video rental; publication and publication of books.”The applicant lodged an appeal with the German Federal PatentCourt against the decision. The German Federal Patent Courtconcurred with the decision of the German Patent and TrademarkOffice and held that the registration of GUTE ZEITEN -SCHLECHTE ZEITEN would violate Section 8(2) No. 1 and No. 2German Trademark Act, as the slogan has to be kept available forfuture common use in the media area. The slogan is ideal for thedescription of the goods and services applied for in the media area.The slogan is short and accurately describes the goods and services

433. German Federal Supreme Court of March 01 2001 - I ZB 54/98; MarkenR 363(2001) (REICH UND SCHOEN).

434. In English, good times.

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in the media area. Without the need of any further interpretation,it describes that the actors will be presented showing the ups anddowns of life. At the same time, the word order simply describesthe products named after it, and the services. In addition, it isdevoid of any distinctiveness regarding all the goods in accordancewith Section 8(2) No. 1 German Trademark Act. GUTE ZEITEN -SCHLECHTE ZEITEN does not have the required degree oforiginality or imagination and is, therefore, devoid of the necessarydistinctiveness. In the media area the consumers will understandit as a production title and such titles cannot be registered.Regarding all the other goods, the consumers will only understandit as an advertisement slogan and not as a trademark. Theapplicant then filed an appeal with the German Federal SupremeCourt.

The German Federal Supreme Court partly reversed thedecision of the German Federal Patent Court.435 The GermanFederal Supreme Court held that the word order GUTE ZEITEN -SCHLECHTE ZEITEN abstractly has the necessarydistinctiveness, and therefore, generally can be registered inaccordance with Section 3(1) German Trademark Act. UnderSection 8(2) No. 1 (distinctiveness) German Trademark Act, theGerman Federal Supreme Court held that regarding the goods andservices “audio discs and tapes; publication of television programs,shows, television entertainment; film productions; sound studios;video rental, books and magazines” the word order GUTE ZEITEN- SCHLECHTE ZEITEN is devoid of the necessary distinctiveness.It is only a description of the content of these goods and servicesabout the ups and downs in life, and therefore has no identificationfunction. Regarding all the other goods and services, includingthose in the media area, the German Federal Supreme Courtreversed the decision of the German Federal Patent Court andheld that a short, terse, unusual word order indicates itsdistinctiveness, whereas long word orders, only descriptive terms,or only advertising terms usually are devoid of the necessarydistinctiveness. Also, the possibility of interpretation indicatesdistinctiveness in accordance with Section 8(2) No. 1 GermanTrademark Act. As GUTE ZEITEN - SCHLECHTE ZEITEN isshort and can be interpreted not only as meaning the ups anddowns of life but can also refer to the use of rest of the goods ingood or bad times, it fulfills the requirement of Section 8(2) No. 1German Trademark Act. In addition, the German FederalSupreme Court negated the need to keep the slogan GUTEZEITEN - SCHLECHTE ZEITEN available for future use for thegoods “calendars, diaries; online service; movie rental; publication

435. German Federal Supreme Court of May 17, 2001 - I ZB 60/98; MarkenR 368 (2001)

(Gute Zeiten-Schlechte Zeiten).

414 Vol. 92 TMR

of books.” It held that the German Federal Patent Court did nothave any arguments to support this need.

I.B.6. Letters and Numbers

The German Patent and Trademark Office refusedregistration of the wordmark K for goods in International Classes6, 17 and 19, holding that the single letter K did not have thenecessary distinctiveness and had to be kept available for commonuse. The German Federal Patent Court436 concurred with thedecision of the German Patent and Trademark Office, arguing thatthe trademark K had to be kept available for common use since Kwas often used as an abbreviation, e.g., as a designation of size oras an abbreviation for the chemical element potassium. Moreover,the German Federal Patent Court found that K did not have thenecessary distinctiveness for registration as a trademark. Theapplicant filed an appeal with the German Federal SupremeCourt.

The German Federal Supreme Court reversed the decision ofthe German Federal Patent Court,437 holding that single lettersare capable of distinguishing the goods of one undertaking fromthose of other undertakings, and therefore do have the necessary(abstract) distinctiveness required under Section 3 of the GermanTrademark Act. Moreover, the German Federal Supreme Courtfound that the German Federal Patent Court had not shown thatthe letter K had any descriptive character in connection with thegoods identified in the application, with the result that theGerman Federal Patent Court had not substantiated a sufficientreason to reject registrability of the letter K under Section 8(2) No.1 German Trademark Act.438 As a result, the German FederalSupreme Court upheld the appeal filed by the applicant andremanded the matter to the German Federal Patent Court forfurther consideration, particularly for evaluation of whether theletter K is actually used as a designation to describe thecharacteristics of the goods identified in the application, or as atype, series or model designation.

I.B.19. Slogans

The German Patent and Trademark Office refused regis-tration of the word mark TEST IT. for “tobacco, tobacco products,

436. BPatG of August 20, 1997 - 28 W (pat) 189/96; GRUR 710 (1998) (Buchstabe “K”);

see 90 TMR 346 (2000).

437. German Federal Supreme Court of June 15, 2000 – I ZB 4/98; WRP 33 (2001)(Buchstabe “K”).

438. Section 8(2) No. 1 of the German Trademark Act provides that trademarks that aredevoid of any distinctive character with respect to the goods or services shall not beregistered.

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especially cigarettes, smokers’ articles, matches” in InternationalClass 34. The German Patent and Trademark Office held that theslogan TEST IT. does not have the necessary distinctiveness. TheEnglish words TEST IT. will be understood by the German tradecircles and consumers concerned in their literal sense of a mereinvitation to test the labeled products. In addition, the expressionTEST IT. could be used for any goods or services and, as such, hadto be kept available for common use. The German Federal PatentCourt concurred with the decision of the German Patent andTrademark Office, but admitted a further appeal to the GermanFederal Supreme Court.

Upon further appeal by the applicant, the German FederalSupreme Court partially reversed the decision of the GermanFederal Patent Court.439 The German Federal Supreme Court heldthat the registration of TEST IT. was correctly rejected for“tobacco, tobacco products, especially cigarettes.” For suchproducts, the Supreme Court found that the slogan TEST IT. wasmerely an encouragement to make a test purchase and aninvitation to test these particular products and therefore lackedthe necessary distinctiveness. However, with respect to the furthergoods for which the trademark registration application was made,“smokers’ articles and matches,” the Supreme Court held thatTEST IT. is sufficiently distinctive to justify its registration as atrademark. Moreover, the Supreme Court held that TEST IT. forthese goods is not a generic expression and there is no need to keepit available for common use. As a result, the Supreme Courtpartially remanded the matter to the German Federal PatentCourt for further consideration.


The German Patent and Trademark Office refusedregistration of the trademark SWISS ARMY to the State ofSwitzerland for fashionable wrist watches originating fromSwitzerland. The German Patent and Trademark Office held thatSWISS ARMY is a mere designation of the intended purpose andorigin of the goods as well as a mere indication of the quality of theproducts. The decision by the German Patent and TrademarkOffice finding that the mark SWISS ARMY does not have thenecessary distinctiveness for registration and has to be kept freefor common use was confirmed by the German Federal PatentCourt.440

439. German Federal Supreme Court of November 23, 2000 - I ZB 34/98; MarkenR 209

(2001) (TEST IT.).

440. BPatG of February 25, 1998 - 29 W (pat) 58/96; GRUR 58 (1999) (SWISS ARMY);see 90 TMR 349 (2000).

416 Vol. 92 TMR

Upon appeal by the applicant, the German Federal SupremeCourt reversed the decision of the German Federal PatentCourt,441 holding that names of administrative bodies orgovernmental institutions may have the necessary (abstract)distinctiveness required under Section 3 of the German TrademarkAct. The identity of the applicant is irrelevant for thedetermination whether or not the mark of a trademark applicationis registrable. Moreover, the German Federal Supreme Courtfound that the trademark SWISS ARMY has the necessarydistinctiveness required under Section 8(2) No. 1 of the GermanTrademark Act because the trade circles and consumers concernedare well aware that the wrist watches distinguished by thetrademark SWISS ARMY do not originate from the Swiss Armyitself. The trade circles and consumers concerned therefore will notinterpret SWISS ARMY as an indication of the source of theproducts, but as a general reference to the quality of the products.The German Federal Supreme Court further held that SWISSARMY can be used and identified as a trademark, especially ifused on a wrist watch. In this context, the Court pointed out thatthe trademark had already been registered in the UnitedKingdom. Furthermore, the German Federal Supreme Court heldthat the provision under Section 8(2) No. 2 of the GermanTrademark Act does not hinder registration of the trademarkSWISS ARMY, since the designation SWISS ARMY is not used inthe trade to describe the kind, quality, quantity, etc., offashionable wrist watches identified by the trademark SWISSARMY. As a result, the German Federal Supreme Court upheldthe appeal filed by the applicant and remanded the matter back tothe German Federal Patent Court for further consideration.

GREECE


Vaharides Georgios–Tsiftsides Christos OE applied to registerthe trademark PICCOLINO CROISSANT GEMISTO MEPRALINA and device, depicting yellow bears with red bow ties, forproducts in Class 30, and in particular, croissants. The applicationwas opposed by Haribo GmbH & Co. KG on the grounds of its priorregistration of HARIBO GOLDBAREN and device, depictingyellow bears with red bow ties, for fruit-flavored chewable candies,also included in Class 30.

The Trademark Committee deemed the respectively coveredproducts to be dissimilar, and therefore rejected the opposition,

441. BGH of September 21, 2000 - I ZB 35/98; MD 125 (2001) (SWISS ARMY).

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finding that confusion could not result from the coexistence of thetrademarks under consideration.442

Upon its review of that decision, the Court of the FirstInstance did not agree. Indeed, the respectively covered productswere deemed to be similar, since they serve the same needs, areintended for the same consumers (predominantly children) and aretypically sold in the same establishments. As a result, theTrademark Committee decision was partially revoked and the casewas remanded to the Trademark Committee.443

I.B.8.c. Conflict Between Trademarks andCorporate Names

Gallup, Inc., applied to register the trademark GALLUP forpublishing and opinion polling services in International Classes 41and 42. The Greek company ICAP Hellas AE opposed theregistration thereof based on the fact that it has utilized the termGALLUP on the Greek market since 1984 as an addition to itscompany name. The Trademark Committee accepted theopposition, finding that GALLUP was not eligible for registrationdue to the rights of the Greek company stemming from its prioruse of the term GALLUP.444

The Court of the First Instance reversed the TrademarkCommittee decision, finding that ICAP Hellas AE had not acquiredany rights through its use of the term GALLUP, since that use wasintended to express the idea of opinion polls conducted pursuant tothe methodology introduced by the American journalist, Mr. G.H.Gallup.445


General Motors Corporation opposed registration of the markBUICKS for clothing and related products in International Class25, based on its own trademark BUICK, which was registered in1936 for motor vehicles in International Class 12. The TrademarkCommittee rejected the opposition, refusing to extend protection tothe BUICK trademark for dissimilar products. Indeed, theCommittee found that the BUICK trademark could not be deemedfamous within the Greek territory because cars bearing thattrademark are not widely circulated in Greece and are not,therefore, well known to Greek consumers.446

442. Decision No. 5235/1997 of the Trademark Committee (unpublished).

443. Court of the First Instance of Athens, decision of November 30, 1999 (unpublished).


445. Court of the First Instance of Athens (Section 10) decision of October 29, 1999(unpublished).


418 Vol. 92 TMR

The Court of the First Instance reversed the TrademarkCommittee decision,447 finding that the prior BUICK trademarkhad acquired a significant reputation on the international market,as well as in Greece. As a result, the Court deemed the applicationfor BUICKS to contravene good faith.


The First Instance Civil Court of Athens granted a petition forinjunctions prohibiting use of the terms 2004, OLYMPIC GAMESand OLYMPIC GAMES 2004 to describe mutual funds advertisedas being investments in companies that would “experienceunprecedented development” due to the Olympic Games, which arescheduled to take place in the year 2004 in Athens, Greece.448

In its decision, the Court deemed the petitioner, OrganizingCommittee for the Athens 2004 Olympic Games to be theproprietor of both famous trademarks and distinguishing featurescontaining the indication 2004 (i.e., ATHENS 2004, OLYMPICGAMES – ATHENS 2004 and OLYMPIC GAMES 2004).

The Court, therefore, prohibited use of the chronologicalindication 2004, per se, to distinguish mutual funds, finding thatthe indication in question would not have been used if it were notassociated with the petitioner’s trademarks and its function as theOrganizing Committee for the 2004 Olympic Games. Moreover, theCourt deemed it likely that third parties would mistakenlypresume an association between petitioner and the respondent’sactivities.


In Car Freshner Corporation v. I. Terpouikides kai Yios AE,449

the petitioner was the proprietor of the registered trademark CARFRESHENER and Fir Tree device for air fresheners anddeodorants. The respondent sold air freshener products made ofimbued paper in the shape of a fir tree, as reflected through acellophane wrapper bearing the term AREON REFRESHMENT.The Court granted injunctions, deeming the fir tree shape ofrespondent’s products to constitute an infringement of thepetitioner’s duly registered Fir Tree device.

In Motul SA v. Aeep G. Mamidakis,450 the plaintiff was theproprietor of the registered trademark MOTUL for lubricants and

447. Court of the First Instance of Athens (Section 27) decision of December 31, 1999(unpublished).

448. Court of the First Instance of Athens (Provisional Measures Section) decision no.4982/2000 (published in Epitheorisi Emborikou Dikaiou (Commercial Law Review) 2/2001,p. 354).

449. Court of the First Instance of Kavala, decision of February 6, 2001 (unpublished).

450. Court of the First Instance of Athens, decision of May 20, 2001 (unpublished).

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objected to the defendant’s use of the term MOTUS in relation tothe same goods.

In its atypical decision, the Court decided to forego theproduction of further evidence and summarily adjudicated the casein favor of the plaintiff. Notwithstanding the fact that thedefendant utilized the term MOTUS in conjunction with otherterms, the Court deemed that use to be likely to cause confusionbetween the respective products as well as to mislead consumerswith respect to the origin of the defendant’s products.

III.B.8. Slavish Imitation

In early 1999, Mars Incorporated launched its AMICELLIproduct, consisting of cigar shaped chocolate wafers in beigehexagon packaging featuring a semi-circular cellophane opening,in the markets of Germany and Switzerland. In July 1999, MarsIncorporated filed a three-dimensional Community Trademarkapplication reflecting the distinctive packaging of its AMICELLIproduct. Mars Incorporated thereafter circulated AMICELLIproducts on the Austrian and Irish markets and, in December2000, began distributing same in Greece.

In July 1997, the Greek company Giotis A.E. applied toregister in Greece a trademark consisting of a brown hexagonprism shaped packaging featuring fan-like openings on either sideof that shape. Giotis A.E. utilized that packaging to distribute itsown cigar shaped chocolate wafers on the Greek market, under thebrand name X-TREME. In late 2000, Giotis A.E. modified itsproduct packaging to reflect beige coloring and a semi-circularcellophane opening.

Mars Incorporated sought an injunction against Giotis A.E.claiming unfair competition and Giotis A.E. filed an analogouscounter suit. The Athens Court of the First Instance grantedpreliminary injunctions against Giotis A.E.,451 holding that theGiotis A.E. X-TREME product packaging, as modified, constituteda slavish imitation of the Mars Incorporated AMICELLIpackaging, which was the first to circulate as such within the EC.


In two analogous cases, Afoi Kolliopouloi EE v. Hasbro Inc.452

and D. Karavias kai Sia EPE v. Hasbro Inc.,453 petitioners soughtto cancel the Greek trademark registration MONOPOLY, whichhad been filed by the respondent in 1963 to cover board games in

451. Court of the First Instance of Athens (Provisional Measures Section) decision of

March 16, 2001.



420 Vol. 92 TMR

Class 28. In their respective cancellation petitions, petitionersclaimed that the term MONOPOLY is currently utilized on theGreek market to generically refer to a particular type of boardgame rather than to designate any particular source thereof. Insupport of that claim, each of the petitioners referred to thecirculation on the Greek market, since 1975, of various boardgames of different origin, all bearing the term MONOPOLY.

The Trademark Committee in question dismissed bothcancellation petitions, ruling that use of the term MONOPOLY byunauthorized third parties per se could not be deemed to establishthe generic nature of that term. Indeed, the Committee refused tofind that Hasbro Inc. and its predecessors had acquiesced to suchuse by third parties, due to the impressive series of Greekdecisions evidencing the vigilance of those trademark proprietorswith respect to the Greek market. The Committee furtherreasoned that the term MONOPOLY could not be deemed to havebecome generic, in light of the respondents’ having recentlyregistered that term as a Community Trademark.


In Ringfeder VBG GmbH v. Mr. Ioannis EmmanouilPapagiannis,454 the Thessaloniki Court granted a preliminaryinjunction ordering the respondent to refrain from possessing anddistributing on the Greek market any couplings or engine partsbearing the trademark RINGFEDER.

Although the respondent claimed to be selling genuine“reconstructed” RINGFEDER couplings, the Court deemed itprobable that the respondent predominantly sold productsmanufactured by other companies upon which it simply placed theRINGFEDER trademark, in contravention of Greek trademarklaw.

The Court did concede that Mr. Papagiannis might also be, toa lesser extent, selling genuine used RINGFEDER couplings.However, this was deemed to cause damage to petitioner’sreputation and financial interests due to the fact that respondentadmitted to having affixed non-genuine RINGFEDER parts tothose genuine items, without authorization from petitioner.

V.A. Domain Names

In Microsoft Corporation v. Armada O.E., the First InstanceCivil Court of Athens granted a preliminary injunction orderingthe defendant to immediately refrain from using the domain name

454. Court of the First Instance of Thessaloniki (Provisional Measures Section) decision

no. 7116/2001 (unpublished).

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MICROSOFT.GR.455 The decision was primarily based on theplaintiff’s rights in its well-known trademark and company name.While there was no evidence of the defendant utilizing theMICROSOFT.GR website for commercial purposes, the Courtfound that Armada O.E. unlawfully exploited the reputation of theMicrosoft Corporation for its own benefit. Indeed, the Courtdeemed it virtually certain that Internet users would associate theMICROSOFT.GR site with the Microsoft Corporation. The decisionalso ordered the GR-HOSTMASTER, the Greek Domain NameRegistrar, to interrupt the defendant’s connection to the domainname and remove same from the Greek Domain Name Register.

In Mars Incorporated v. Felisitas Hellas EPE (the successor ofBounty Hellas AEE), the First Instance Civil Court of Athensgranted preliminary injunctions ordering the defendant to ceaseall use of the domain name BOUNTY.GR.456 The GR-Hostmasterwas also ordered to interrupt the defendant’s connection to thatdomain name and remove same from the Greek Domain NameRegister. The Court found that the defendant’s use of the domainname BOUNTY.GR falsely creates the impression that FelisitasHellas EPE is a member of the selective distribution system, whichMars Incorporated has established in Greece. The Court, therefore,ruled that defendant’s activities encroached upon the “promotionalfunction” of the plaintiff’s series of duly registered BOUNTYtrademarks.

GUATEMALA


The entity Rhone-Poulenc Rorer, S. A., of France applied forregistration of the mark ZAMACORT for pharmaceutical productsin Class 5. The Industrial Property Register denied registration,concluding that the mark is graphically and phonetically similar toSANACORT, which is duly registered in favor of Miles, Inc.

Rhone-Poulenc Rorer, S.A., filed an appeal that was dismissedby the Ministry of Economy, which stated that on studying andcomparing the terms comprising the marks in question, it wasdetermined that the marks have similarities between them, andparticularly in the pronunciation of the letters S and Z, and thatthese similarities in the marks cannot permit their coexistence.This decision was confirmed by the Supreme Court of Justice.457

455. Court of the First Instance of Athens (Provisional Measures Section) decision of

January 24, 2001.

456. Court of the First Instance of Athens (Provisional Measures Section) decision ofMarch 30, 2001.

457. Rhone-Poulenc Rorer, S.A. v. Miles, Inc., Case 135-98, Supreme Court of Justice,Resolution dated November 17, 1998.

422 Vol. 92 TMR


On March 23, 1995, Cesar Alberto Chinchilla Jiménez appliedfor registration of the mark BAKON KRISP in Class 29, to coverthe following products: “meat, fish, birds and wild animals, meatextracts, fruit, vegetable in preserve, dry or cooked, jams,marmalade, eggs, milk and other milk products, edible oils andfats, preserves, pickles, hors d’ouvres, potato crisps and plantaincrisps.” The application was assigned to Manuel de Jesús LópezCuéllar.

Fábrica de Productos Alimenticios René, S. A., owner of themark BAKON KRISP in Class 30, successfully objected to Mr.Chincilla Jiménez’s registration of BAKON KRISP in Class 29. Mr.Chinchilla Jiménez lodged an appeal against the Registry ofIndustrial Property, which the Ministry of Economy dismissed. Asa result, an administrative proceeding was filed before theSupreme Court of Justice, alleging that the mark BAKON KRISPin Class 29 could not be confused with the products covered by themark BAKON KRISP in Class 30 because the rights in a mark arelimited to the products covered by the class for which the mark isregistered, without considering the nature of the goods themselves.

The Court dismissed the proceeding instituted by Mr. LópezCuéllar and confirmed the decision of the Ministry, holding thateven though both marks cover different products they cannot havea peaceful coexistence in commerce. Identical trademarks bothcovering food products might confuse the public and are apt tocreate a risk of unfair competition without regard to whether theparticular products are in different classes. Mr. López Cuéllar’sappeal was dismissed by the Supreme Court of Justice.458


The entity Bodegas y Fabricas Carlos Kong, S.A. applied forregistration of the device mark DISEÑO DE UNA CORONA(design of a Crown) to cover “spiritous wines and liquors” in Class33. Objection to the application was filed by CerveceríaCentroamericana, S.A., owner of the mark CORONAMONTECARLO and device in Class 33, which claimed that theapplicant’s crown device mark was similar to and easily confusedwith the word mark CORONA (crown) that also had a design of acrown. It strongly based its objection on the element of design of acrown and also that the products it was intended to cover anddistinguish were of the same species.

The lower court determined that there was no graphic,phonetic or ideological similarity between the marks and there

458. Manuel de Jesús López Cuéllar v. Fábrica de Productos Alimenticios René S.A.,

Case 157-2000, Supreme Court of Justice, Resolution dated February 20, 2001.

Vol. 92 TMR 423

were clear and profound graphic differences between the devices.Cervecería Centroamericana filed an appeal for cassation beforethe Superior Court, which ratified the earlier ruling, concludingthat the marks had sufficient elements that made them differentgraphically, phonetically and ideologically, and that the simplepresence of one element in both marks could not be consideredenough of a similarity between them.459

HONDURAS


In John B. Stetson Company v. Istmo-Quimicas S.A., theHonduran Trademarks Office dismissed the trademark applicationfor STETSON SIERRA filed by Istmo-Quimicas S.A. on the groundthat it would violate the rights of John B. Stetson Company, ownerof the mark STETSON, which was deemed “notorious” inHonduras. It is important to note that Stetson Company did nothave a registration for STETSON or STETSON SIERRA in Class 3in Honduras, but Istmo-Quimicas S.A. did not appeal theresolution.460

In Kellogg Company v. Industria de Alimentos Dos en Uno,the Honduran Trademarks Office dismissed the application forKEGOL filed by Industria de Alimentos Dos en Uno on the groundthat the said mark is confusingly similar to the registered markKELLOGGS. The deciding factors taken into account in theTrademark Office’s decision were the ample commercialization andreputation of the KELLOGG’S mark in Honduras.461

In Compagnie Gervais Danone S.A. v. CompañíaEmbotelladora Hondureña S.A., the Honduran Trademarks Officedismissed the application filed by Compañía EmbotelladoraHondureña S.A to register DANNON in Class 32. The TrademarksOffice based its decision on the previous Honduran trademarkregistration for DANONE owned by Compagnie Gervais DanoneS.A., and declared that the registration of DANNON wouldconstitute an act of unfair competition against the Frenchcompany and would lead to consumer confusion. CompañíaEmbotelladora Hondureña S.A. did not appeal the resolution.462

459. Bodegas y Fabricas Carlos Kong, S. A. v. Cervecería Centroamericana S.A., Case

147-96, Supreme Court of Justice, Resolution dated November 7, 1996.

460. Cases are not officially reported in Honduras.

461. Unreported.

462. Unreported.

424 Vol. 92 TMR


In Wolverine Outdoors, Inc. v. Laboratorios Menarini S.A., theHonduran Trademarks Office dismissed the opposition filed byLaboratorios Menarini S.A. against the registration of the designmark M and Circle in Class 25. Menarini’s opposition was based onits commercial name registrations for M and design and MMENARINI and design. The Trademarks Office dismissed theopposition based on the differences between the lines of business ofthe applicant and opposer, the overall differences between themarks when viewed as a whole, and the coexistence of both marksat the Trademarks Office and in the marketplace. LaboratoriosMenarini S.A. did not appeal the resolution.463


The Honduran Trademarks Office initially rejected atrademark application filed by Colgate-Palmolive Company forAJAX FIESTA DE FLORES on the grounds of previousregistrations for FIESTA FRESH and FIESTA owned by AdvancedTotal Marketing System, Inc. Colgate-Palmolive Company filed areconsideration petition claiming the ample presence of the AJAXmark in the Honduran market and claiming that this mark is notconfusingly similar to FIESTA FRESH and FIESTA when viewedas a whole. The Trademarks Office confirmed the rejection anddismissed Colgate’s petition. Colgate appealed the resolutionbefore the higher administrative office, which reversed theTrademarks Office decision and declared that the long presenceand notoriety of the AJAX mark in the Honduran market andColgate’s claim that AJAX FIESTA DE FLORES was only a newpresentation of the mark were sufficient to avoid consumerconfusion and pecuniary damages to the owners of the previousregistration. Colgate-Palmolive Company’s AJAX FIESTA DEFLORES mark is now registered in Honduras.464

V.A. Domain Names

The Honduran Trademarks Office has decided that thosemarks containing .COM may only be registered in Classes 38 and42 and that no exclusivity will be granted to .COM apart from themark as shown.

463. Unreported.

464. Unreported.

Vol. 92 TMR 425

HONG KONG


Citibank, N. A. (“applicant”) applied to register the trademarkCITIFUND for banking and financial services, financial brokerageservices, among other things.465 The Registrar objected to theapplication on the basis that the mark was not distinctive and nota word that had no direct reference to the character or quality ofthe services.

Applicant filed written submissions to overcome the objection.Applicant did not agree that CITIFUND was only capable ofbecoming distinctive and, therefore, was not prepared to amendthe application to Part B of the Register. The applicant requested astatement of the grounds of the Registrar’s decision, and thenargued that the Registrar had erred in splitting the mark into itsconstituent parts and failing to consider the mark as a whole.

The Registrar maintained that it was open for him to treat themark as being a combination of two words.466 This was theapproach taken in the Scotchlite case in which the court treatedthe SCOTCHLITE mark as consisting of the two words “scotch”and “light.”467 In maintaining his objection to CITIFUND, theRegistrar noted that the word “fund” has several commonmeanings that were descriptive in relation to the financial servicesclaimed. The Registrar also noted that the prefix CITY conveyedthe idea that the services were offered by the applicant toinhabitants of a city. The Registrar noted that if a word is directlydescriptive in its correct spelling then its phonetic equivalent wasalso unregistrable. The Registrar relied on the general principlethat the fact that the mark (CITYFUND) cannot be found in anydictionary does not advance the applicant’s position that it is aninvented word.

The Registrar indicated that without evidence ofdistinctiveness through use in Hong Kong, he would maintain theobjection.

I.B.7. Device and Design Marks

Louis Vuitton Malletier (“applicant”) applied to register as adevice mark a checkered pattern as applied to the surface ofluggage and goods made of leather, among other things, in Class18.468 The checkered pattern resembled a portion of a chess boardconsisting of thirty-six distinct squares. The squares were

465. Application No. 2475/1998.

466. Registrar of Trade Marks, January 22, 2000 (unreported).

467. Ibid (viewing “lite” as a misspelling of “light”).


426 Vol. 92 TMR

represented alternately in the colors brown and beige, and therewas a fine lined pattern within the squares. The Registrar refusedthe application on the basis that the device sought to be registeredwas neither distinctive nor capable of becoming distinctive.

During the course of prosecution, the applicant indicated thatthe design had been used prior to the application date, but did notfile evidence of use. The applicant requested a hearing on theregistrability of the mark. At the hearing the applicant arguedthat the mark was distinctive for the proposes of a registration inPart A and that in the alternative it was at least capable ofbecoming distinctive and should be registrable in Part B. At thehearing the applicant conceded there was minimal preapplicationuse but argued that there was significant post application use andsuch use should be considered. The Registrar reserved his decisionat the hearing.

In his decision,469 the Registrar maintained that the devicemark was neither registrable in Part A nor Part B. The Registrarweighed in favor of finding the mark capable of being a trademarkthe fact that the subject mark covered the whole of the visiblesurface of the goods. However, the Registrar emphasized that theonus of establishing that the trademark is registrable lies with theapplicant, and considered two other interrelated factors asweighing against registrability, namely, whether the markindicated a connection with applicant in the course of trade, andwhether the applicant’s mark is distinctive or capable of becomingdistinctive. The Registrar was sensitive to the fact that no formalevidence was filed to support applicant’s claim of distinctiveness,even though there was sufficient time to do so.

In considering whether the mark was inherently distinctive,the Registrar emphasized that the test was whether “other tradersare likely, in the ordinary course of their businesses and withoutany improper motive, to decide to use the same mark, or somemark closely resembling it.” On that point, the Registrar rejectedthe argument that the weft and warp pattern on the squares weredistinctive, finding that it resembled that of a woven fabric andwas too fine a detail to be noticeable by the average shopper. TheRegistrar doubted that the pattern functioned as a badge of origin.The Registrar also dismissed applicant’s offer of a color limitationas being of no avail since brown and beige are two of the mostcommon colors used for Class 18 (luggage) goods, and thecombination of those colors therefore, was an obvious combinationfor use in relation to those goods. The Registrar concluded that thedevice mark at issue was not inherently adapted to distinguish. Inconsidering whether the mark was capable of distinguishing, the

469. Registrar of Trade Marks, November 16, 2000 (unreported).

Vol. 92 TMR 427

Registrar found no evidence that other traders would not wish touse the same mark or one merely resembling it.


An individual, Phornchi Hopitakkul (“applicant”) applied forthe trademark SHIRLEY for cosmetics.470 The application wasaccepted by the Registrar and opposed by C.F.E.B. Sisley(“opponent”).471 The opponent argued that their SISLEY mark wasconfusingly similar to the SHIRLEY mark. Both parties filedevidence from experts in linguistics to support their respectiveviews. The applicant’s evidence was an expert opinion annexed asan exhibit to the Statutory Declaration of the applicant’s solicitor.There was no explanation as to why the expert could not giveevidence directly by means of a Statutory Declaration. Since thecivil rules of evidence apply to Registry proceedings, the expert’sevidence was hearsay and was not admissible.

After a hearing where the applicant was not represented, theRegistrar noted that the test for confusing similarity was whether:“Having regard to the user of SISLEY in respect of cosmetics, isthe court satisfied that SHIRLEY, if used in a normal and fairmanner in respect of cosmetics, will not be reasonably likely tocause deception and confusion amongst a substantial number ofpersons? May a number of people be caused to wonder whether thegoods under the respective marks come from the same source? Isthere a real tangible danger of confusion if the applied for mark isput on the Register?”

The Registrar determined that the SHIRLEY and SISLEYmarks were confusingly similar to an ordinary Hong Kongconsumer who is a non-native English speaker with imperfectrecognition. The Registrar found that there was an auralsimilarity between the words, which added to the apparent visualsimilarity between the words. There was no evidence as to theprice range of the cosmetics, whether the cosmetics were directedat a different market or whether the customers were likely to bedifferent. With this evidence, the Registrar decided that theapplicant did not discharge its burden of showing that purchasersof cosmetics would not be deceived.

Shiva Corporation (“applicant”) applied for the trademarkSHIVA for computer software and hardware for specific purposesin Class 9.472 The Registrar cited the trademark SHIVAKI473 whichwas previously registered for a wide range of goods including“electric apparatus and instruments, calculating machines, data


471. Registrar of Trade Marks, December 12, 2000 (unreported).


473. Registration No. 4064/1998.

428 Vol. 92 TMR

processing equipment, magnetic data carriers, recording disk” inClass 9. Applicant requested an informal hearing to argue for thewithdrawal of the citation.474 The applicant argued that theSHIVA mark was distinguishable because it referred to a Hindugod, it was visually and phonetically distinguishable from the citedSHIVAKI mark and because the cited mark had a distinctiveJapanese connotation as evidenced by the use of the suffix “-KI.”

To decide the question, the Registrar stated that the test iswhether: “Assuming use by the proprietor of the cited mark‘SHIVAKI’ in a normal and fair manner for any of the goodscovered by the registration of the mark, is the tribunal satisfiedthat that there will be no reasonable likelihood of deception orconfusion amongst a substantial number of persons if theapplicant also uses its mark ‘SHIVA’ in a normal and fair mannerin respect of any goods covered by its proposed registration.” TheRegistrar determined that the SHIVA and SHIVAKI marks werevisually and phonetically similar and that the public would notdistinguish any differences in the ideas conveyed by the marks.

The applicant also argued that the goods described in theSHIVA application were not of the same description as those in thecited registration. The Registrar decided that the claim to “electricapparatus and instruments” covered computers and that“calculating machines and data processing equipment” alsocovered computers. Although the Registrar determined thatsoftware and computers are different in nature, he determinedthat the purpose of software and of computers is the same, andthat they flow through the same trade channels. Hence, the goodswere of the same description, and the application for the SHIVAtrademark was refused.


Joseph–Marie Pividal (“applicant”) applied to rectify theRegister by removing Agnes Trouble’s (“proprietor”) trademarkLOLITA.475 The primary ground for cancellation was nonuse. Theapplication for removal failed. This case is most notable for thestrong criticism made of the market survey evidence filed by theapplicant.476

In Hong Kong, applicants for removal typically engage aninvestigation firm to conduct market surveys to determine whetherthe registered mark had been used during the requisite precedingfive-year period. In this case, the applicant engaged a well-knowninternational firm which emphasized commercial investigations.The Registrar heavily criticized the firm’s evidence. The Registrar

474. Registrar of Trade Marks, November 14, 2000 (unreported).

475. Application registered under No. 2482/1985.

476. Registrar of Trade Marks, December 12, 2000 (unreported).

Vol. 92 TMR 429

noted that the four individuals who interviewed members of thecosmetic trade did not provide statutory declarations relating tothe interviews. Instead, the declaration provided was by an officerof the investigation firm ( “declarant”) who apparently did not holdany position with the organization during the time period whenthe investigations were conducted. The declarant did not say thathe spoke to any of the four investigators. Further, the declarantattached a report which was signed on behalf of another personwho had presumably reviewed the notes of the investigators. Theevidence was regarded as being third hand hearsay since neitherthe declarant nor the compiler of the attached report personallytook part in the investigation. The Registrar confirmed that he isbound by the straight rules of evidence.

In reviewing the evidence, the Registrar noted additionaldefects. The declaration did not disclose whether the investigatorsspoke in English or Cantonese, whether their questions appearedto be understood, or whether the investigators fully understood thereplies. It was not clear whether the interviewees who wereapproached personally were shown representations of the LOLITAmark. This was regarded as being important since the visual cluecan often assist in recognition. Further, the Registrar was notsatisfied that the interviewees were made aware that theiranswers were for the purposes of evidence in a tribunal whichwould make the evidence of little weight, even if the evidence hadbeen presented properly. The Registrar also noted that few of theinterviewees could be regarded as having any standing in thetrade concerned for the requisite five-year period. The Registrarregarded the evidence as unsatisfactory.

Although, in light of the failure of proof, it was not necessaryfor the Registrar to consider whether the proprietor had used thetrademark, the Registrar addressed that question andacknowledged that the proprietor had made use of the trademarkeven though there were no actual sales in Hong Kong at therequisite time. The Registrar accepted that there was evidencethat preparations were made for the sale of the LOLITA markedproduct in Hong Kong before expiration of the relevant period andthere were actual sales after the expiry of the period. The fact thatsales took place after the relevant period went to the question ofwhether the proprietor had a genuine intention to use thetrademark that was put into issue by the applicant.

430 Vol. 92 TMR

ICELAND


The Registrar found likelihood of confusion in the followingcases: KEIKO (word) v. KEIKO COIN (word) in Class 40;477

FORMULA 1 and F1 Formula 1 (word and device) v. F1 (word anddevice) in Classes 35, 38 and 41;478 PHOTO (word) v. PhotoScreen(word) in Classes 3 and 5;479 and FUNGORAL (word) v.FUMORAL (word and device) in Class 5.480

The Appeal Board affirmed the Registrar Decision ofNovember 11, 2000, finding confusing similarity between PHOTO(word) and PHOTOSCREEN (word) in Classes 3 and 5.481


The Registrar found no likelihood of confusion in the followingcases: LÓRÍN (word) in Class 5 v. LÓRATÍN (word) in Class 5;482

ASTRA (word) v. ASTRIVO (word) in Class 5;483 and NESCAFÉ(word) v. ECAFE (word and device) in Classes 29 and 30.484

In Knattspyrnufélag Reykjavíkur (words) (Reykjavik FootballClub) v. Fram, Fótboltafélag Reykjavíkur hf. (words) (FramReykjavik Football Club, Inc.), Knattspyrnufélag Reykjavíkur fileda lawsuit against Fram, Fótboltafélag Reykjavíkur hf. for a ban onthe use of Fram, Fótboltafélag Reykjavíkur hf., based on its priorname, which also is a registered trademark. It was not disputedthat no trademark rights could attach to either the wordsKnattspyrnufélag (Football Club ) or Reykjavík (a town name),separately. The judge found no likelihood of confusion andacquitted.485

477. Free Willy Keiko Foundation, Inc. v. Jón Helgi Ingvarsson, Registrar decision of

July 6, 2000, ELS Tíðindi, issue 7/2000.

478. Giss Licencing BV and Formula One Administration Limited v. Formula 1 ehf.,Registrar decision of September 8, 2000, ELS Tíðindi, issue 9/2000.

479. Unilever N.V. v. Pierre Fabre Dermo-Cosmetique, Registrar decision of November11 2000, ELS Tíðindi, issue 11/2000.

480. Fumapharm AG v. Fumapharm AG (misstated in the printed issue. Should beJohnson & Johnson), Registrar decision of December 4, 2000, ELS Tíðindi, issue 12/2000.

481. Pierre Fabre Dermo-Cosmetique v. Unilever N.V., Appeal Board decision of June25, 2001 (unpublished).

482. Omega Farma ehf. v. Delta hf., Registrar decision of August 4, 2000, ELS Tíðindi,issue 8/2000.

483. Astra Aktiebolag v. Biogen, Inc., Registrar decision of October 9, 2000, ELS Tíðindi,issue 10/2000.

484. Societé des Produits Nestlé S.A. v. Kord Beteiligungsgesellschaft mbH & Co. KG,Registrar decision of December 12, 2000, ELS Tíðindi, issue 12/2000.

485. Judgment passed by the City Court of Reykjavik, November 10, 2000 in Case No.E-7109/1999 (unpublished).

Vol. 92 TMR 431

The Registrar found no likelihood of confusion between EVIAN(word and device) and FREVIAN (word) in Class 5.486

The City Court of Reykjavík found no likelihood of confusionbetween SEROXAT (word) and PAROXAT (word) in Class 5, forthe same active pharmaceutical substance. The judge noted thatthis medicine was sold only on prescription, and that there wouldbe no danger that doctors and pharmacists would be confused bythese marks despite their considerable similarities.487


The Registrar found a likelihood of confusion in the followingcases involving marks very well known in Iceland: KEIKO (word)v. KEIKO COIN (word) in Class 40;488 and FORMULA 1 and F1Formula 1 (word and device) v. F1 (word and device) in Classes 35,38 and 41.489

I.B.20. Color/Shape

In an interesting case relating to shape/color, the Registrarbased his decision on the following reasoning taken directly fromthe decision.

The trademark in question is a three-dimensional markshowing a washing tablet. The tablet is rectangular, in twocolors and has two components. It consists of a blue,protruding, elliptical center and a white outer layer.Multi-component washing tablets are common on the markettoday. It must be considered certain that consumers would notconsider such a washing tablet to be characteristic for oneproducer rather than another, and could therefore not beconsidered to fulfill the Trade Marks Act requirements forsufficient distinctiveness and non-descriptiveness. In addition,one can say that the tablet’s division into multiple componentsleads from its properties, cf. Paragraph 2 § 2 of the TradeMarks Act.It is furthermore the Bureau’s view that the shape of thetablet as such is traditional in itself, since there are onlysimple forms, albeit divided, i.e., rectangular, with a so-calledcore in elliptical shape. The shape of the tablet can thereforenot be considered very different from the many washingtablets already on the market. It must furthermore be

486. Societe Anonyme Des Eaux Minerales D’EVIAN v. AstraZeneca AB, Registrar

decision of March 3, 2001, ELS Tíðindi, issue 4/2001.

487. Beecham Group p.l.c. v. Omega Farma ehf., City Court of Reykjavík Judgement ofApril 4, 2001 (unpublished).



432 Vol. 92 TMR

considered that exclusive rights to such a traditional shapewould limit other companies’ leeway to make similar products.The tablet’s form as such, in and of itself, can therefore not beconsidered a sufficiently distinctive feature, in the sense ofParagraph 1 § 13 of the Trade Marks Act.It is, however, a generally accepted viewpoint in trademarklaw that the appearance of a product can consist of its colorcomposition and that colors can provide a mark sufficientdistinctiveness in its entirety. As has already beenestablished, the washing tablet in question is composed of twocolors in harmony with the division of the tablet. It is theBureau’s view that the tablet’s color composition, that is, itsshape in the colors in question, endow it with sufficientdistinctiveness and non-descriptiveness to be consideredregistrable as a whole.The mark’s registrations does not, however, grant exclusiverights to the tablet’s form/shape, cf. Paragraph 2 § 15 of theTrade Marks Act.Similar non-color marks are not accepted for registration.490

V.A. Domain Names

A gardener registered [email protected] as his email address.EIMSKIP is the registered trademark and nickname of a verywell-known Icelandic company, Eimskipafélag Íslands hf. (TheIcelandic Steamship Co.). No similarity existed between theservices of the two. Eimskipafélag Íslands hf. filed a lawsuit for aban on the gardener’s use of eimskip in his email address. Thegardener used eimskip in no other way than as part of his emailaddress. The gardener had his email address printed on hisbusiness cards. The judge ruled in favor of the plaintiff.491

INDIA


In the previously reported infringement case of S.M. DyechemLtd. v. Cadbury (India) Limited,492 the Supreme Court wasrequired to decide whether the trademark PICNIC was deceptivelysimilar to the trademark PIKNIK. The appellant claimed that it

490. Unilever N.V. v. Henkel Kommanditgesellschaft Auf Aktien, Registrar decision ofMay 10, 2001, ELS Tíðindi 5/2001 (seven similar cases are published in this issue; fivemarks in color that were accepted for registration, and two non-color marks that wererejected).

491. Judgment passed by the City Court of Reykjavik, March 22, 2001 in Case No. E-5841/2000 (unpublished).

492. 2000 PTC 97 (SC), reported in 91 TMR 416 (2001).

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started the business in 1988 for “potato chips, potato wafers, cornpop and preparation made of rice or rice flour” and also applied forregistration of PIKNIK in Class 29. It also applied for registrationof this trademark in Class 30 for goods including chocolates. Theappellant filed a suit for infringement and passing off, pendingwhich it applied for a temporary injunction.

The respondent’s case was that PICNIC was introduced in1998 for chocolates and its trademark was registered, but onexpiration was not renewed. Other defenses raised included anaverment that the plaintiff’s and the defendant’s labels weredifferent in essential features.

In dealing with these contentions the Court took up forconsideration whether for the grant of a temporary injunction theCourt should go by principle of prima facie case, or by strength ofthe case of the parties, or by finding if the plaintiff has raised atriable issue. The Court, after dealing with decided cases, opinedthat in trademark matters it is now necessary to go into thequestion of the “comparable strength” of the cases of the parties.

The Supreme Court then proceeded to consider the similarityor dissimilarity of the labels of the parties by laying down theprinciples of comparison in the following words:

The first question therefore is, as to what on the facts, are theessential features of the plaintiff’s mark? It is clear that apartfrom the word PIKNIK, the essential features are also thespecial script of these words in block letters and the curve inwhich these words are inscribed and the caricature of the bodywith a hat occurring between the words K and N of theplaintiff’s mark. On the other hand the defendant’s markcontains the word PICNIC in a straight line, the script isnormal and the word PICNIC. Neither the peculiar script northe curve nor the word with a hat are found in the defendant’smark. It is true that there is phonetic similarity and use of theword PICNIC. But what is the effect of the dissimilarities.This is the crucial part of the case. It is here that sufficientcare has to be taken in applying the principles. In the presentcase, three tests to which reference has been made above haveto be applied. The first is this; Is there any special aspect ofthe common features which has been copied? The second testwill be with reference to the mode in which the parts are puttogether differently? That is to say whether the dissimilarityof the part or parts is enough to mark the whole thingdissimilar. The third test is whether when there are commonelements, should one not pay more regard to the parts whichare not common, while at the same time disregarding thecommon parts ? What is the first impression?The Supreme Court then applied the three tests to the facts of

the case and came to the conclusion that on first impression the

434 Vol. 92 TMR

dissimilarities appear to be clear and more striking to the nakedeye than any similarity between the marks and thus on the wholethe essential features are different.

This case gave more importance to the dissimilarities of thetwo marks and by a process of forced reasoning the Court came tothe conclusion that “on the whole, the essential features aredifferent.”

A few months later another case came up before the SupremeCourt where the dispute between the parties related to thesimilarity or dissimilarity of the trademarks FALCITAB andFALCIGO.493 The Court’s attention was drawn to the Dyechemcase and the Court took the view that the Dyechem case waswrongly decided, and expressed its opinion in the following words:

We are unable to agree with the aforesaid observations in theDyechem’s case. As far as this Court is concerned, thedecisions in the last four decades have clearly laid down thatwhat has to be seen in the case of a passing off action is thesimilarity between the competing marks and to determinewhether there is likelihood of deception or causing confusion.

Referring specially to Dyechem case’s comparison betweenPICNIC and PIKNIK, the Court said:

With respect we are unable to agree that the principle ofphonetic similarity has to be jettisoned when the manner inwhich the competing words are written is different and theconclusion so arrived at is clearly contrary to the bindingprecedent [of earlier decisions of the Supreme Court].These two case rulings in directly opposite directions will

under the constitution both be considered as the law of India. Wewill therefore need a constitutional amendment to clarify whichposition should govern.

INDONESIA


The plaintiff, Philip Morris Products Inc., is the owner of theMARLBORO CLASSICS and center figure design trademark No.326419 dated January 13, 1995, for goods in Class 26. The firstdefendant, Handy Panitro, has a registered WORLD CLASSICSand center figure design trademark No. 379230 dated August 11,1997, for goods in Class 26.

The plaintiff applied for cancellation of the first defendant’sregistered trademark based on Article 56, Paragraph (1) andArticle 6, Paragraph (1) of the Law No. 14 of 1997, which

493. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001 PTC 300 SC).

Vol. 92 TMR 435

stipulates that a registered trademark is subject to cancellation ifit is identical to another prior registered trademark owned byanother party. The plaintiff also based its claim on the fact that itsMARLBORO CLASSICS and center figure design trademark is awell-known trademark.

In response to the plaintiff’s claim, the defendants stated thatthe plaintiff’s claim should not be admitted because the firstdefendant’s trademark was different from the plaintiff’strademark. They also argued that the plaintiff’s MARLBOROCLASSICS and center figure design trademark was not a well-known trademark and as such, the plaintiff’s claim should berejected.

The Central Jakarta District Court accepted the plaintiff’sclaim by canceling the first defendant’s registered trademark494

based on the following facts:a. the plaintiff’s MARLBORO CLASSICS and center figure

design is a well-known trademark;

b. the first defendant’s WORLD CLASSICS and centerfigure design trademark was similar to the plaintiff’strademark although there are different words, i.e.,MARLBORO and WORLD.The Central Jakarta District Court’s decision on this case has

become final and binding as the defendants did not exercise theirright to appeal to the Supreme Court.


The plaintiff, Societe Des Produits Nestle SA, is the owner ofthe DANCOW and Cow device trademark No. 347870 (renewal ofNo. 191570) dated November 6, 1996, for milk powder in Class 29.The first defendant, Bonlac Foods Limited, owns the RED COWand Cow device trademark No. 306622 dated June 13, 1994, formilk powder in Class 29.

The plaintiff applied for cancellation of the first defendant’sregistered trademark based on Article 56, Paragraph (1) andArticle 6, Paragraph (1) of the Law No. 14 of 1997, which stipulatethat a registered trademark is subject to cancellation if it isidentical to another prior registered trademark owned by anotherparty. The plaintiff also based its claim on the fact that itsDANCOW and device trademark is a well-known trademark and itcovers the same kind of goods (milk powder).

In response, the defendants argued that the plaintiff’s claimshould not be accepted because the first defendant’s trademarkwas different from the plaintiff’s trademark and the Trademark

494. The Central Jakarta District Court Judgment No. 464/PDT.G/2000/PN.JKT.PST.

436 Vol. 92 TMR

Office (defendant II) also admitted that RED COW is not similar toDANCOW.

The Central Jakarta District Court rejected the plaintiff’sclaim to cancel the first defendant’s registered trademark495 basedon the following facts:

a. the essential part of the plaintiff’s trademark isDANCOW, whereas the essential part of the first defendant’strademark is RED COW;

b. the “Cow” logo/device in both trademarks are notconsidered and cannot be claimed as a mark since it isdescriptive;

c. comparing the DANCOW and RED COW, the Judgesdeem that they are not similar;The Central Jakarta District Court’s decision on this case is

not yet final and binding since the plaintiff has filed an appealwith the Supreme Court.


The plaintiff, Prefel SA, a Luxembourg company, is the ownerof the famous PRADA trademark and logo PRADA, which has beenregistered in Italy since 1977 and in various other countriesaround the world. The first defendant, Fahmi Babra, anIndonesian individual living in Jakarta, has registered the famousPRADA trademark and logo PRADA under No. 328996 and No.329217 for goods in Classes 18 and 25. The plaintiff applied tocancel the first defendant’s trademark registrations based onArticle 56, Paragraphs 1 (similarity to a priorly registered mark)and 3 (similarity to a well-known mark) as well as Article 4Paragraph (1) (bad faith of the registrant) of the Trademark LawNo. 14 of 1997. To support the allegation on the bad faith of thedefendant, the plaintiff also cited the Supreme CourtJurisprudence in the Supreme Court’s Judgment No.150/K/Pst/1984, which revealed that the registrant/user of asimilar mark in font/lettering of another’s mark is deemed as aregistrant of bad faith.

To fulfill the requirements under Article 56, Paragraph 3 ofthe Trademark Law No. 14 of 1997, the plaintiff has also appliedfor registration of its famous PRADA trademark and logo for manyclasses of goods. Further, the second defendant, Trademark Office,is also being named according to Article 56, Paragraph 4 of theLaw No. 14 of 1997 in order to execute the cancellation of theregistered PRADA trademarks in the name of the first defendant.


Vol. 92 TMR 437

The plaintiff strongly objects to the registration of the PRADAtrademark and logo PRADA under No. 328996 and No. 329217 inthe name of the first defendant as it is identical to the plaintiff’sfamous PRADA trademark and logo. It is undeniable that thepurpose of the registration of the famous PRADA trademark andlogo by the first defendant is to “sponge on the fame” of theplaintiff’s PRADA trademark and logo because there are manywords that the first defendant could have adopted other than theplaintiff’s PRADA trademark and logo.

The Central Jakarta District Court rejected the plaintiff’sclaim to cancel the first defendant’s trademark registrations496

based on the following facts:(a) The plaintiff’s PRADA trademark and logo is not a well-

known mark for the following reasons:

(i) According to Article 56, Paragraph 3 of the Law No.14 of 1997, in addition to considering the public knowledge,the criteria of a well-known mark should include thereputation of the mark gained due to promotion by theowner and its trademark registration in other countries (ifany);

(ii) The plaintiff was not able to prove that its mark waswell known in Indonesia because it neither launched anylarge scale promotion nor had extensive sales channels inIndonesia;

(iii) Even if the plaintiff’s mark were well known inmany other countries, it did not necessarily mean that itwas also well known in Indonesia.

(b) The word PRADA was also used or registered in thename of other parties in Indonesia as proven by the firstdefendant.

(c) The plaintiff’s mark was rejected by the seconddefendant (the Trademark Office) because of its similaritywith the first defendant’s registered marks.The plaintiff has filed an action for cassation with the

Supreme Court under Agenda No. 2413K/Pdt/1999, and the actionis still pending before the court.


The first defendant, Imperial Chemical Industries Plc, is theowner of the SONATA trademark No. 323768 dated January 6,1995 for goods in Class 2. The plaintiff, PT. Danapaints Indonesia,

496. The Central Jakarta District Court Judgment No. 200/PDT.G/1998/PN. JKT.PST,

January 8, 1999.

438 Vol. 92 TMR

applied to register SONATA trademark for goods in Class 2 in1997 under Agenda No. D97-27222. This application was rejectedbecause the Trademark Office (TMO) found that it was similar tothe registered SONATA trademark in the name of the firstdefendant.

The plaintiff then filed an invalidation action based on nonuseagainst the first defendant’s SONATA trademark registration. Theplaintiff claimed that the first defendant’s SONATA trademarkhad not been used within three years from its registration date orits last use. To prove its allegation that the first defendant’sSONATA trademark had never been used, the plaintiff submittedstatements from various paint dealers in various places inIndonesia stating that these paint dealers had never seen anySONATA products covering goods in Class 2 in the name of thefirst defendant.

The first defendant objected to the plaintiff’s claim statingthat the SONATA products had been and were still in use and soits SONATA trademark cannot be invalidated based on nonuse. Toprove its argument, the first defendant submitted samples of itsSONATA products, invoices for the sales of the SONATA productsin 1997, a statement from the first defendant’s subsidiarytestifying that the SONATA trademark was still in use.

The Central Jakarta District Court rendered a decision in thefirst defendant’s favor.497 In its ruling, the Panel of Judges did notadmit the statements submitted by the plaintiff because theiraccuracy was still questionable and those statements did not andcould not represent the situation of the whole Indonesian region.Therefore, as those statements were the plaintiff’s only mainevidence to prove the nonuse of the first defendant’s trademark,the Panel of Judges found that the plaintiff could not prove itsallegation. On the other hand, the Panel of the Judges, afterconsidering the first defendant’s evidence, found that the firstdefendant had continuously used its SONATA trademark for atleast three years from its registration or its last use.

The plaintiff has appealed against the District Court decisionto the Supreme Court, and the case is still pending.


The plaintiff, C.V. Dirgahayu Mfg. Co. in Surabaya, hasregistered the DAITO trademark for goods in several classes. Thesecond defendant, Daito Chemical Co., Ltd., filed an action withthe Central Jakarta District Court to cancel the plaintiff’sregistrations of the DAITO trademark in 1998. In the interim, thesecond defendant applied to register the DAITO trademark forgoods in several classes.


Vol. 92 TMR 439

On July 24, 1998, the Central Jakarta District Court rendereda decision in favor of the second defendant.498 On September 1,1998, the first defendant, Trademark Office, based on the DistrictCourt’s decision, canceled the plaintiff’s DAITO trademarkregistrations. On September 14, 1998, the plaintiff appealed thecase to the Supreme Court. While the case was pending at theSupreme Court, the first defendant on January 8, 1999 grantedregistrations to the second defendant’s applications for the DAITOtrademark in several classes as an implementation of the DistrictCourt’s decision. On June 2, 1999, the Supreme Court annulled thedecision rendered by the Central Jakarta District Court.499

Objecting to the first defendant’s decision in registering theDAITO trademark in the name of the second defendant, theplaintiff filed a civil suit with the Central Jakarta District Courton the basis that the first and second defendants had committedan unlawful act. The second defendant’s distributors in Indonesiawere also listed as defendants.

The panel of judges presiding over this case rendered thefollowing decisions:500

1. The judges found that the first defendant hadcommitted an unlawful act. They were of the opinion that thefirst defendant should have known that when it registered thesecond defendant’s DAITO trademark, there was still apending appeal at the Supreme Court against the DistrictCourt’s decision. As the first defendant cited the DistrictCourt’s decision as the basis to register the second defendant’sDAITO trademarks, the judges considered that this basis wasnot admissible as the decision was being appealed. Therefore,the judges were of the opinion that the registration of thesecond defendant’s DAITO trademark contravened the publicorder and caused damage to the plaintiff.

2. The judges also found that the second defendant hadcommitted an unlawful act. They based their decision on thefollowing reasons:

The second defendant filed applications for registering theDAITO trademark on April 30, 1998, when the appeal againstthe District Court’s decision was still pending. As the seconddefendant was also one of the parties to that case, it shouldhave known about the appeal pending. Also, the seconddefendant continued to use the DAITO trademarks despite the

498. The Central Jakarta District Court Judgment No. 210/PDT.G/1998/PN.JKT.PST,

July 24, 1998.

499. The Supreme Court, Case No. 4901 K/Pdt/1998, June 2, 1999.

500. The Central Jakarta District Court Judgment No. 368/PDT.G/2000/PN.JKT.PST,August 28, 2001.

440 Vol. 92 TMR

appeal against the Central Jakarta District Court’s decisionon the cancellation action. Therefore, the second defendantwas considered to have committed an unlawful act whichcaused damage to the plaintiff.

3. As for the rest of the defendants, the judges were of theopinion that they were not guilty. The judges believed thatbecause they were only distributors, they were not expected toknow about the dispute between the plaintiff and the first andthe second defendants.

4. Based on the above considerations, the judges in thiscase decided to partially accept the plaintiff’s claim, i.e.:

a. to declare that the first and the second defendantshad committed an unlawful act; and

b. to order the second defendant to pay the plaintiff Rp15,000,000,000 (fifteen billion rupiahs),501 as compensation.

IRAN


On June 6, 2000, applicant filed to register the trademarkHODA (in Persian script) for goods in Classes 12 and 35. HondaGiken Kogyo Kabushiki Kaisha filed an administration oppositionbefore the Iranian Industrial Property Office (“IIPO”) claimingprior registration for the trademark HONDA in Iran. The IIPOreferred the matter to the public court of Tehran.

The Court issued a verdict in favor of Honda. Even though theapplication for HODA was filed in Persian script, thepronunciation was similar to the English trademark registered byHonda. Therefore, the Court found that the general public wouldbe confused and ordered cancellation of the HODA application.502

IRELAND


Sealed Air Corporation sought registration of the wordsBUBBLE WRAP in Class 17 in respect of “cellular cushioningpackaging material which contains entrapped bubbles of air or

501. Equal to US$150,000 (US$1 = Rp. 10,000).

502. Publication of Tehran No. 69, Case No. 669/3/79, Verdict No: 94, Date: April 25,2001.

Vol. 92 TMR 441

other gases.”503 The Examiner rejected the mark on the groundsthat it was devoid of distinctive character and consistedexclusively of a reference to the goods. A hearing was held on July28, 2000.

The applicant argued that the public would look upon thewords as a trademark and not as a description of the goods sincethe only way the public can purchase the goods is by reference tothe trademark BUBBLE WRAP.504 As evidence of the notoriety ofthe mark, the applicant referred to a number of websites dedicatedto afficionados of popping cellular cushioning material. Thesewebsites acknowledged the applicant’s ownership of the markBUBBLE WRAP. The applicant argued that it was one of the firstcompanies, if not the first, to use this type of cellular cushioningpackaging material, and that a mark used on a product which isfirst in its field is often misused by the public.

The hearing officer rejected the application on the groundsthat the average consumer, in ordering this type of packaging,would use the term “bubble wrap” in a generic way to identify thetype of goods the customer wished to purchase, rather than as ameans of identifying the applicant’s particular product.


The trademark FLU-SHIELD in Class 5 for “pharmaceuticalpreparations; influenza virus vaccine” was refused by theController of Trade Marks.505 The mark was found to mean“protect against influenza” or “screen against influenza.” Therebeing no additional distinguishing or unusual features of themark, it does no more than describe the kind of goods or theirintended purpose.

An application to register PORK-THE OTHER WHITEMEAT/PORK-THE ALTERNATIVE WHITE MEAT, as a series oftwo marks, in Class 29 for “pork and pork products” was refusedby the Controller of Trade Marks.506 It was held that the marksleave nothing to the imagination and that the marks were merelystatements of fact, i.e., that pork is the other/alternative whitemeat to chicken, chicken and pork being recognized as the mostcommon white meats.

The Patents Office rejected applications for SMARTBUY,SMARTRENT, SMARTCOVER and SMARTLEASE filed by

503. Unreported decision of the Controller of Patents, Designs and Trade Marks

(December 8, 2000).

504. I CAN’T BELIEVE IT’S YOGHURT case, [1992] RPC 533.

505. Unreported decision of the Controller of Patents, Designs and Trade Marks(October 10, 2000).

506. Unreported decision of the Controller of Patents, Designs and Trade Marks (June11, 2001).

442 Vol. 92 TMR

General Motors Acceptance Corporation in Classes 36 and 39.507 Insupport of its applications, the applicant referred to SMART prefixmarks which are already on the Irish, United Kingdom andCommunity Trade Marks Registers. The hearing officer held thathe was not bound by these decisions and rejected the applicationson the grounds that the marks, taken as a whole, had a plain andclear meaning with no element of invention or distinctivecharacter. The mark SMARTBUY would indicate to the public thatthe services provided are “a good deal,” “a bargain” or “a shrewdpurchase.” The marks SMARTRENT and SMARTLEASE wouldalso indicate “a good deal” and “a shrewd choice” and in addition “asmart way to rent or lease.” The mark SMARTCOVER was foundto be a laudatory term meaning “a smart way to obtain motorinsurance.”

I.B.13. First to Apply Versus First to Use

Montrex Holdings Limited’s application to register thetrademark DIESEL for clothing was opposed by Diesel S.P.A. TheController of Trade Marks refused the application on the basis of alikelihood of confusion.508 The decision was upheld by the HighCourt.509 The applicant appealed the decision to the SupremeCourt510 on the issue of whether the words “be disentitled toprotection in a court of law” in Section 19 of the Trade Marks Act,1963 mean that likelihood of deception or causing confusion, on itsown, is sufficient to prevent registration, or whether there mustalso be some element of “blameworthiness” on the part of theapplicant. The Supreme Court held that a finding of confusion didnot require the establishment of blameworthiness and the appealwas dismissed.

II.D.3. Improper Pleadings

An application by the Procter & Gamble Company to register athree-dimensional mark consisting of the shape of a bar of soap inClass 3 was refused by the Controller of Trade Marks.511 An appealwas lodged with the High Court,512 and an issue arose as towhether the appeal was filed on time.

507. Unreported decisions of the Controller of Patents, Designs and Trade Marks

(February 28, 2001).

508. For the full summary of the decision of the Controller of Patents, Designs andTrade Marks see 89 TMR 378 (1999).

509. Montrex Holdings Limited’s Application. Unreported (H.C.) 1998 No. 5825. For thefull summary of the decision see 91 TMR 425 (2001).

510. Unreported Supreme Court decision (April 5, 2001), Record No. 90/00.

511. For the full summary of the decision of the Controller of Patents, Designs andTrade Marks see 91 TMR 426 (2001).

512. Unreported High Court decision (March 30, 2001), Sp. No. 2000/21.

Vol. 92 TMR 443

Section 79 of the Trade Marks Act, 1996 provides:(1) Unless otherwise provided by rules of court, within theperiod of three months from the date of a decision of theController under this Act, an appeal shall lie from the decisionto the court.The plaintiff requested the written grounds of the Controller’s

decision within the statutory one month period following thenotification of his decision on November 25, 1999, and the writtengrounds issued on January 24, 2000. The plaintiff filed the appealon April 17, 2000. The Controller of Trade Marks maintained thatthe appeal was filed outside the period of three months from theletter dated November 25, 1999, but within the period of threemonths computed from the handing down of the written grounds ofthe decision. The plaintiff argued that the legislature did notenvisage that the grounds of the decision may not be available bythe expiration of the time for the appeal; therefore, the period forappeal should run from the date of the issuing of the writtengrounds and not the letter of “intent” of refusal.

The High Court found that the legislature could not haveintended that an applicant would have to decide to appeal and toformulate the same in advance of receipt of the statement ofgrounds. However, the High Court found that it was not open to itto import into the section a requirement that the Controller handdown his statement of grounds within the three month period so asto allow sufficient time to the applicant to consider and formulatean appeal, or to construe “decision” as the notification of thedecision where no statement of grounds is sought. It was held thatthe true intention of the legislature was that the court under therules of court could regulate the time for appeals and, where thetime is so regulated, could exercise its discretion to enlarge time.The appeal was adjourned to enable the plaintiff to bring anapplication for an enlargement of time.

ISRAEL


The petitioner was the publisher of a well-establishedmagazine in the orthodox community named FAMILY. Therespondent was the publisher of a new magazine named GOODFAMILY, intended to be distributed in the orthodox community aswell. The petitioner filed a lawsuit on the ground of passing off andasked that the Supreme Court prevent the respondent from usingthe name GOOD FAMILY. The Court ruled that the tort of passingoff applies only at the occurrence of two combined conditions: one’sproduct or service must have acquired goodwill and there must bea reasonable suspicion of misleading the public. The Court held

444 Vol. 92 TMR

that none of these conditions applied in this case. The nameFAMILY was descriptive, and since it had not acquired secondarymeaning, it was not entitled to protection under the tort of passingoff. As for the second condition, Israeli Courts tend to rejectpublishers’ claims based on similarity of the magazine title alone.This attitude is based on the assumption that people develoployalty to a specific newspaper and, therefore, would not makemistakes even if the titles are similar.513


The respondent, an assets management company, owned anIsraeli registration for the service mark CAPITAL. The petitionerapplied for the cancellation of the respondent’s service mark beforethe Trademark Registrar. The Trademark Registrar found that theword CAPITAL was a descriptive word commonly used in therespondent’s field of business. The respondent claimed that themark CAPITAL had acquired secondary meaning throughextensive use. The Trademark Registrar rejected this argument onthe ground that use of the mark had been made by therespondent’s affiliated companies but not by the respondent itself.The Trademark Registrar held that use of a mark by affiliatedcompanies without a registered license by the owner of thetrademark could not benefit the owner of the mark.514

V.A. Domain Names

The respondent launched a portal through the Internet underthe name NANA. The petitioner, a disk company named NanaDisk, claimed it was the exclusive owner of the trade name NANA,which was not a registered trademark in Israel.

The Court ruled that the use of respondent’s trade name,NANA, did not deceive the public by creating an associationbetween the Internet portal and the activities of the petitioner inlight of the different nature of the parties’ activities. The petitionerdealt with music, while respondent’s portal dealt with numerousfields on the net. The Court, furthermore, held that there was adifference between the Internet world and the business world.

The Court established that to invoke the claim of “reversedpassing off” the first user of the trade name should prove thatrecognition and reputation were gained by using that name. Inthis case, the petitioner failed to provide such proof. Further, theCourt ruled that the delay in filing this case caused unnecessary

513. CA 5792/99 Religious Communication and Education v. S.B.C. et al., Supreme

Court 2001.

514. Capital Online Ltd. v. V.S.P. Capital Property Management Ltd., Patent andTrademark Registrar, October 30, 2001.

Vol. 92 TMR 445

expenses to the respondent and, therefore, was in itself a sufficientfactor to reject petitioner’s suit.515

The petitioner, a magnetic media services provider, intendedto create an Internet site under the domain name MAGNETIC.Apparently, the domain name MAGNETIC was already used byrespondent—Diskcopy—a company active in the same field. It wasfound that the respondent was the owner of other domain namesthat were not used. The petitioner applied to transfer theownership of the registration of the domain name in dispute toitself.

The Court examined whether the domain name registrationconstituted unfair interference. The Court reached a positiveanswer and held that the respondent’s use of the domain nameprevented the petitioner’s clients from accessing its business viaelectronic means. Case law has recognized that creating anInternet site is a popular way of doing business nowadays and therelevant domain name is usually derived from a company’s nameor trademark.

Furthermore, the respondent failed to establish a legitimateinterest in the domain name in which the petitioner wasinterested. Therefore, the Court ruled that the respondent had towaive its domain name in favor of the petitioner.516

ITALY


Milena Confezioni S.p.A. is the owner of an Italian registrationfor the trademark SPINNING and device, which was granted in1992 and has been used ever since to distinguish articles ofclothing for men. The United States company Mad Dogg Athletics,Inc., is the owner of an Italian registration for the trademarkSPINNING and device, which was granted in 1997 and has beenused to distinguish clothing.

Milena Confezioni S.p.A. sued Mad Dogg Athletics, Inc., andits Italian distributor, WBN S.r.l., claiming that the defendant’sselling of articles of clothing bearing the trademark SPINNING inItaly amounted to infringement of plaintiff’s trademark rights andan act of unfair competition. Milena Confezioni S.p.A. alsodemanded that the Mad Dogg Athletics, Inc., registration bedeclared invalid.517

515. CF 751/00 Nana Disk v. Netvision, Haifa District Court 2001.

516. CF 1627/01 MAGNETICS v. Diskcopy, Tel Aviv District Court 2001.

517. The ordinary proceeding is currently pending before the Court of First Instance ofMilan.

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The plaintiff also filed a petition for an interlocutoryinjunction and for the seizure of defendants’ articles of clothingand related promotional materials.

In the interlocutory proceedings, the Court of Milan518

declared that defendants’ behavior amounted to an infringement ofplaintiff’s trademark rights under Article 1(1)(b) ItalianTrademark Act.519 The Court stated that since the trademarkSPINNING had a strong distinctive character, the figurativeelements of the Mad Dogg Athletics, Inc., trademark were notsufficient to avoid a likelihood of confusion on the part of thepublic.

III.B.4. Advertising

On October 7, 1996, the famous publishing company ArnoldoMondadori Editore S.p.A. (“Mondadori”) was ordered by thePrefecture of Milan to pay an economic sanction in the amount of15,000,000 Italian Lira (approximately US$6,500) for promotingtobacco goods indirectly through the advertisement of a CAMELTROPHY watch in its magazine Panorama.520

Mondadori appealed the order before the Court of FirstInstance of Milan. Referring to established case law,521 the Courtfound that, since the trademark CAMEL TROPHY was directlyassociated with the famous off-road car race of the same name, thetrademark had acquired an autonomous identity. Therefore,despite the fact that its core word is CAMEL, the trademark wasnot evocative of tobacco goods.

The Prefecture of Milan challenged the decision before theSupreme Court on the ground of misapplication of the law. ThePrefecture argued that the mark CAMEL TROPHY, whose coreword had long been used to distinguish cigarettes and tobaccogoods, had not lost the power to evoke such products. In thePrefecture’s opinion, the CAMEL TROPHY mark directly recalledtobacco goods rather than the famous car race, and the watchmanufacturer had adopted the same in order to exploit the fame ofthe trademark CAMEL for cigarettes.

518. Order of June 21, 2001 (unpublished).

519. Article 1(1)(b) Italian Trademark Act provides:

[The] proprietor has the right to prohibit third parties, not having his authorization,from using … (b) a sign identical with or similar to the registered mark, for identical orsimilar goods or services if, by virtue of the identity or similarity of the signs and theidentity or similarity of the goods or services, a risk of confusion may arise on the part ofthe public, which may also consist in a risk of association of the two signs.

520. The provisions of Article 8, Law No. 52 of February 22, 1983, prohibit any type ofdirect or indirect advertising of tobacco goods.

521. Supreme Court, Unified Divisions, decision of October 6, 1995, Il diritto industriale,No. 1 (1996).

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The Supreme Court ruled for Mondadori, upholding the firstjudge’s decision.522


The British company Burberry Limited (“Burberry”) isinternationally known for its Burberry Check, which consists of aunique combination of black and red lines that intersect oneanother on a beige background, and form quadrilateral shapes,including squares, in a lighter beige and in white.

The Italian company Arno Tessuti S.r.l. (“Arno”) had sold afabric bearing a design confusingly similar to the Burberry Check.

Burberry moved the Court of First Instance of Busto Arsizio todeclare that Arno’s behavior amounted to an act of unfaircompetition by slavish imitation under Article 2598(1) CivilCode523 and to issue appropriate remedies.524

The Court upheld plaintiff’s claims that the Burberry Check,by virtue of its continuous use, had come to identify the plaintiff’sclothing production in the eyes of consumers (in other words, thesame had acquired distinctive value). Therefore, selling a fabricbearing a design confusingly similar to the same amounted to anact of unfair competition.

Accordingly, the Court enjoined Arno from furtherperpetration of acts of unfair competition against Burberry; fixed apenalty of 1,000,000 Italian Lira (approximately US$440) for anyfuture infringement; ordered the destruction of the articles seized;ordered the publication of an abstract of the decision atdefendant’s expense in the newspaper La Prealpina, and ordereddefendant to reimburse Burberry’s legal fees.

Furthermore, the Court awarded actual damages to Burberry,based on the profit made by the infringer, in the amount of9,061,400 Italian Lira (approximately US$3,940).

Most surprisingly, the Court also awarded Burberry equitabledamages for the prejudice caused to Burberry’s image in theamount of 100,000,000 Italian Lira (approximately US$43,300),stressing that this figure was fair considering the fame ofBurberry’s clothing production, resulting from the years ofwidespread marketing of Burberry’s clothing in Italy, and also thepoor quality of defendant’s fabric.

522. Decision of February 27, 2001, Guida al Diritto, No. 10 (2001).

523. Article 2598(1) Civil Code provides:

Subject to the provisions concerning the protection of distinctive signs and patent rights,acts of unfair competition are performed by whoever: 1) uses names or distinctive signswhich are likely to create confusion with the names or distinctive signs legitimately usedby others, or closely imitates the products of a competitor, or performs, by any othermeans, acts which are likely to create confusion with the products and activities of acompetitor.…

524. Court of First Instance of Busto Arsizio, decision of March 6, 2001 (unpublished).

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Such a high award of damages was certainly unheard of inItalian intellectual property litigation prior to this decision.

III.F. Loss of Trademark Rights

Budejovicky Budvar Narodni Podnik appealed the decision ofthe Court of First Instance of Milan that had declared that itsappellations of origin under the Lisbon Agreement forBUDWEISER and BUD, among others, could not be affordedprotection in Italy since a change in the ownership of theappellations had occurred in violation of the relevant provisions ofthe Lisbon Agreement.525

On appeal by Budejovicky Budvar Narodni Podnik,526 theCourt of Appeal of Milan confirmed the lower court’s decision, andadded that the above appellations of origin could not have beenafforded protection in Italy because they also lacked the basicrequirements set forth by the Lisbon Agreement.527

In fact, as explained by the Court of Appeal, neitherBUDWEISER nor BUD is the name of the geographical location ofappellant’s production, this being the City of Ceske Budjovice.They are instead the German translation of “from CeskeBudjovice,” and an abbreviation of that translation. Therefore,neither term could have been considered descriptive of the place ofproduction, especially in view of the fact that at the time of theirregistration, use of the German language was forbidden by theCzech Constitution.

Furthermore, the Court of Appeal held that the “milieugeographique,” within the meaning of Article 2 of the LisbonAgreement, did not exist with respect to the Czech beer. Accordingto Article 2, denominations of origin distinguish a product “whosequalities or characteristics are affected exclusively or essentiallyby the geographic environment comprising natural as well ashuman factors.” For the Court of Appeal such factors had to be “sostrictly related to the environment that they cannot be reproducedelsewhere.” In the case at issue, evidence showed that evenappellant recognized the possibility of producing its beer abroad.

III.F.1. Forfeiture

The famous German company Volkswagen AG owned anInternational Registration designating Italy for the trademarkLUPO, which was granted in 1996 and has been used ever since todistinguish one of its vehicles. The Italian company Iveco Fiat

525. Anheuser-Bush v. Budejovicky Budvar Narodni Podnik, Court of First Instance ofMilan, decision of November 27, 1997 (unpublished), reported in 90 TMR 266 (2000).

526. Other claims of this action relating to prior use issues are reported separatelyunder infra Section III.F.5.

527. The Court of Appeal of Milan, decision of December 1, 2000 (unpublished).

Vol. 92 TMR 449

S.p.A. owned an Italian registration for the trademark LUPO,which was granted in 1955, and duly renewed in 1975 and in 1995,but which was not used by the Italian company until 1998.

Volkswagen AG requested the Court of First Instance of Turinto declare Iveco Fiat’s trademark forfeited for lack of use, underArticle 42 of the Italian Trademark Act.528 Iveco Fiat maintainedthat when a trademark has been forfeited for lack of use and norights have been acquired by third parties, the renewal isequivalent to a fresh trademark application, beginning a new five-year period in which to use the mark, thereby avoiding forfeiture.Therefore, Iveco Fiat’s 1995 renewal should have been regarded asbeing equivalent to a fresh application, valid at the time ofVolkswagen AG’s registration. Accordingly, Iveco Fiatcounterclaimed that its competitor’s later trademark was null andinfringed its trademark.

The Court rejected Iveco Fiat’s claims maintaining that thereis a fundamental difference between a fresh trademark applicationand a mere renewal of a trademark which has not been used.529

In the Court of Turin’s opinion, a mere renewal does not createnew rights, but only extends an existing right. Therefore, in thecase at issue, Iveco Fiat’s 1975 and 1995 renewals were irrelevant,since they “renewed” a trademark that had already lapsed.


Budejovicky Budvar Narodni Podnik appealed the decision ofthe Court of First Instance of Milan with respect to the part of thedecision in which the appellant’s 1967 trademark registrations forthe marks BUDWEISER and BUD in Class 32 were declaredinvalid in view of Anheuser-Bush Inc.’s prior and extensive use ofthe marks BUD and BUDWEISER in Italy and of the resultingnotoriety achieved by the same.530

Appellant sought the reversal of the decision on the groundthat it was the first to use the BUDWEISER mark in Italy.531 Insupport of its claim, appellant maintained that the evidence it hadproduced showed the presence of BUDWEISER brand Czech beerin Italy since the end of the 1800s, except for short interruptionsdue to the Second World War and times of military occupation,

528. Article 42 of the Italian Trademark Act provides that “A mark shall lapse if it has

not been put to genuine use by the proprietor, or with his consent, … within five years fromthe registration or if such use has been suspended during an uninterrupted period of fiveyears, unless non use is justified by a legitimate reason.”

529. Court of First Instance of Turin, decision of June 14, 2000 (unpublished).

530. Anheuser-Bush v. Budejovicky Budvar Narodni Podnik, Court of First Instance ofMilan, decision of November 27, 1997 (unpublished), reported in 90 TMR 369 (2000).

531. Other claims of this action relating to the validity of defendant’s appellations oforigin are reported separately under supra Section III.F.

450 Vol. 92 TMR

which constitute “independent causes” for nonuse under Article42(2) of the Trademark Act.532

On cross appeal Anheuser-Bush Inc. sought the integration ofthe lower Court’s decision by an injunction prohibiting thedefendant from further using the marks at issue.

The Court of Appeal rejected the appellant’s claims, statingthat although it had used the marks at issue long before theirregistration, such use had not been sufficiently significant andcontinuous to acquire exclusive rights to the same. On thecontrary, the Court found that appellee’s marks were already wellknown to the Italian public at least as early as the 1930s,especially due to their massive use in advertising. This use,explained the Court, amounted to legally relevant prior use and, assuch, excluded the novelty of appellant’s trademarks.

Furthermore, the Court suggested that appellant’s trademarkswould, in any event, also be invalid under Article 6bis of the ParisConvention, since appellee’s marks were widely used abroad andwell known also in Italy.

Finally, the Court implied that appellant’s trademarks werealso subject to forfeiture for nonuse under Article 42(1)533 of theTrademark Act, since in some periods spanning over three yearsthe quantity of beer sold in Italy was insignificant, and in otherperiods the beer had not been sold at all. The fact that during thesame periods the beer continued to be sold abroad excluded thepossibility that the nonuse was due to “force majeure” within themeaning of Article 42(2).

In conclusion, the Court confirmed the lower court’s ruling andgranted the injunction sought by appellee on cross appeal, holdingthat the same should have followed as a natural consequence ofthe declaration of the first instance decision.

III.K. Criminal Actions

On December 11, 1998, Mr. Niang Djilly, a street vendor fromSenegal, was sentenced by the Criminal Court of First Instance ofPisa to two months and twenty days imprisonment, a sentencethat was shifted to a fine in the amount of Italian Lira 6,000,000(roughly US$3,000) under, inter alia, Article 474 of the Criminal

532. Article 42(2) of the Trademark Act in force prior to the 1992 reform, and applicable

to defendant’s 1967 trademark registrations, read as follows: “[T]he forfeiture shall notoccur if the inactivity was the effect of causes independent from the will of the trademarkowner….”

533. Article 42(1) before the 1992 reform read as follows: “The registration is forfeitedalso if the trademark is not used within three years of its registration or, if, after suchthree-year period, its use is suspended for three years.”

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Code,534 upon his conviction for retailing forty-eight blue jeansbearing the counterfeit trademark LEVI’S.535

The Court of Appeal of Florence reversed the lower Court’sruling stating that the behavior forbidden under Article 474 of theCriminal Code falls within the crimes against public faith and, assuch, it requires the existence of an actual risk that purchasers bedeceived as to the source of the goods at issue.536 The Court ofAppeal substantially maintained that in the present case thisrequirement was not met, as given the low quality of the productsat issue and the fact that they were sold on the street, it wasimpossible that purchasers could have thought they were genuine.

The Prosecutor challenged the decision before the SupremeCourt,537 which quashed the decision on two main grounds.

Firstly, the Supreme Court stressed that Article 474 of theCriminal Code does not aim, as the Court of Appeal of Florencemaintained, to protect consumers from the infringing activity ofvendors, but exclusively to grant owners of trademarks or otherdistinctive signs adequate protection.538 Therefore, the conditionsin which goods are sold, even if they clearly indicate to consumersthat the products do not originate from the legitimate trademarkowners, must not be taken into consideration when applyingArticle 474 of the Criminal Code.

Moreover, the Supreme Court pointed out that Article 474 ofthe Criminal Code refers to “trademarks” rather than to goods,and accordingly the Court of Appeal of Florence erred in takinginto consideration the quality of the products.539

V. Internet Issues

Trieste e Venezia Assicurazioni S.p.A., a famous onlineinsurance company and owner of the trademark GENERTEL, fileda petition for an injunction before the Court of First Instance ofRome, requesting that Crowe Italia S.r.l., a young online insurance

534. Article 474 of the Criminal Code provides that “anybody … who introduces in theterritory of the State for subsequent sale, or holds in order to sell, or offers for sale, orotherwise puts in the stream of commerce, … industrial products bearing counterfeit oraltered national or foreign trademarks …, shall be punished with imprisonment up to twoyears and a fine up to Italian Lira four millions.”

535. Court of First Instance of Pisa, decision of December 11, 1998.

536. The Court of Appeal of Florence, decision of October 19, 1999.

537. Supreme Court, decision of October 27, 2000 (unpublished).

538. This statement is supported neither by doctrine nor the relevant case law, both ofwhich generally sustain the position that article 474 does aim to protect consumers. Atmost, it has been held that Article 474 affords protection both to public faith and to theexclusive rights arising from intellectual property laws. The Supreme Court seemed tooverlook the fact that Article 474 of the Criminal Code is inserted in the Second Book of theCode, under Title VII (“About Crimes Against Public Faith”).

539. This ruling of the Supreme Court overruled its previous decision of February 23,2000, reported in 91 TMR 435 (2001).

452 Vol. 92 TMR

company operating through the URL www.crowe.it, be enjoinedfrom using the trademark GENERTEL in its hidden websitesource code (i.e., metatag). The petitioner based its request ongrounds of unfair competition under Article 2598(3) Civil Code,540

due to the identical business activities of the two companies.The Court541 upheld plaintiff’s claims, concluding that since

anyone using the keyword Genertel in a world wide web searchengine would find Crowe’s website, there was an imminent risk ofdiversion of plaintiff’s client. Accordingly, the Court founddefendant liable of unfair competition under Article 2598(3) CivilCode and ordered defendant to remove the trademark GENERTELfrom its hidden website source code and all the web pages withinthe website located at www.crowe.it.

V.A. Domain Names

Data Service S.r.l., owner of the trademark MODENA ONLINE and the domain name “modenaonline.com,” filed a petitionfor an injunction before the Court of First Instance of Modena,requesting that Ascom Servizi Modena be enjoined from using thedomain name “modenaonline.it” and be ordered to withdraw itsregistration for such domain name.542 The petitioner based itsrequest on two main grounds: trademark infringement and unfaircompetition, due to the similar activity (computer services) of thetwo companies.

The Court of Modena, departing from the decision concerningthe domain name “sabena.it” issued on June 29, 2000, by the Courtof Florence,543 stressed that domain names do not operate likeaddresses or telephone numbers that allow users to reach thedesired website, but should be regarded as marks or otherdistinctive signs. The Court also maintained that the registrationof a domain name, even if not accompanied by its use on theInternet, could amount to trademark infringement, and thatchanging the suffix to “.it” instead of “.com” is insufficient todistinguish two domain names.

Additionally, the Court of Modena decided that the twocompanies were in competition, since they were operating in thesame field. However, the Court did not uphold plaintiff’s claims,

540. Article 2598(3) Civil Code provides:

Subject to the provisions concerning the protection of distinctive signs and patent rights,acts of unfair competition are performed by whoever: … 3) avails himself directly orindirectly of any other means which do not conform with the principles of correctbehavior in the trade and are likely to injure another’s business.

541. Court of First Instance of Rome, order of January 18, 2001 (unpublished).

542. Court of First Instance of Modena, decision of August 1, 2000 (unpublished).

543. Court of First Instance of Florence, decision of June 29, 2000 (unpublished),reported in 91 TMR 436 (2001).

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maintaining that there were none of the presuppositions for anurgent measure. The Court stressed that since the website“modenaonline.it” had not yet been activated, there was noimminent risk of deviation of Data Service’s clientele. Moreover,the Court pointed out that Data Service’s request to have theregistration of Ascom’s domain name canceled could not beconsidered an urgent measure since it lacked the maincharacteristics of urgent remedies: temporality and reversibility.In the meantime, Data Service would have certainly registered thedomain name at issue.

JAMAICA


The Supreme Court of Judicature, Commercial Division,refused the plaintiff’s application for an interlocutory injunction torestrain the defendant from carrying on business under the nameor style “Jamaica Lottery” or “Jamaica Lotteries” or any othername or style that includes the words “Jamaica Lottery.”544

The plaintiff for many years was the only company in Jamaicaoperating a nationwide lottery and was the registered proprietor ofthe trademark JAMAICA LOTTERY COMPANY LIMITED withthe device of a bouncing ball. This registration disclaimed the word“Jamaica.” The defendant obtained a license to operate lottery typegames in Jamaica, thereby ending the plaintiff’s monopoly. Shortlybefore plaintiff embarked on a promotional blitz for its lotterygames, using the phrase WIN JAMAICA LOTTERIES—GAMESPEOPLE LOVE TO PLAY with the device of a treasure chest filledwith currency notes, the defendant applied to register said phraseand device as a trademark.

The plaintiff complained that the defendant’s use of the nameWIN JAMAICA LOTTERIES—GAMES PEOPLE LOVE TO PLAYconstituted trademark infringement and passing off as it is likelyto cause confusion and deception in the minds of the purchasingpublic as to the source of defendant’s lottery.

The Court, in refusing the plaintiff’s application for inter-locutory injunction, held that the plaintiff’s registered trademarkis JAMAICA LOTTERY COMPANY LIMITED together with thedevice of a bouncing ball, not the words JAMAICA LOTTERY, andthat the differences between the two marks, when viewed as awhole, are so great that there can be no reasonable argument thatthe defendant’s use constitutes actionable infringement of theplaintiff’s trademark. The Court noted that, by virtue of the

544. Jamaica Lottery Company Limited v. Supreme Ventures Limited et. al., Suit No.

C.D. 2001/J001 (2001).

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disclaimer, the plaintiff had no exclusive right to the use of theword “Jamaica” and held that the words “Lottery” or “Lotteries”were descriptive of the businesses operated by both parties.

JAPAN


A famous French company, Louis Vuitton, filed an applicationto register EPILINE in a blue color design or a pattern that wouldbe used in connection with the surface of leather cloth of bags,brief cases and other leather goods in International Class 18. ThePatent Office rejected the application for the reason that a patternor design shown on the material of the goods lacks trademarkdistinctiveness. The applicant filed an appeal before Tokyo HighCourt and submitted extensive evidence, including advertisingcosts since 1987, survey evidence, a history of the EPILINE mark,sales figures, trademark registrations in other countries such asthe United States, France, and Certificates of Leather Associationsin foreign countries that have recognized a secondary meaning ofthe pattern. The Court deemed that the trademark was indeeddistinctive as it had acquired secondary meaning, and overturnedthe decision of the Patent Office.545

I.B.24. Service Marks

Esprit International filed an application to register ESPRITfor retail services in connection with cosmetics, perfumeries, soapsand other goods in International Class 35. The Patent Officerejected this application, holding that the present services werenot acceptable under the law because services contemplated byJapanese trademark law should be provided for the benefit ofothers and should be an independent object of trade separatedfrom other business activities.

The applicant filed an administrative lawsuit with the TokyoHigh Court, which affirmed the Patent Office decision and statedthat the retail store services are merely ancillary to the business ofselling the products and that, as a matter of fact, the applicant’sretail store does not request that retail services be paid forseparately from the products it sells.546

545. Louis Vuitton v. Patent Office, (Gyo-ke) 80, 1730 Hanrei-Jihou 128 decided on

August 10, 2000, by the Tokyo High Court.

546. Esprit International v. Patent Office, Heisei (Gyo-Ke) 105, 1744 Hanrei Jiho 120decided on January 31, 2001, by the Tokyo High Court.

Vol. 92 TMR 455


Applicant filed an application to register a three-dimensionaltrademark for a small writing implement having a flat shape and aholding mechanism like a clip at an end opposite to the pencil endand related goods, such as pencils, ballpoint pens and otherwriting implements. Pencils with this shape had already been usedfor recording golf scores in Japan. Consequently, the Tokyo HighCourt affirmed a Patent Office decision rejecting the application547

and stated that although the writing implement has a uniqueshape, the shape is within the range of ordinary shapes thatwriting implements customarily possess. It was further stated thatthe implement has an additional function of holding paper firmly.Therefore, the product configuration was deemed unregistrable asit lacked distinctiveness as required by Trademark Law, Article 3,Par. 1. Although applicant asserted the trademark had acquireddistinctiveness through long and extensive use of more than fifteenyears and huge sales of the pencil, the applicant’s name OKAYAand PEGCIL are indicated and therefore it cannot be consideredthat the only function of the shape of the pen was to distinguishand indicate the source of the pens.


Plaintiff, Sumitomo Real Estate K.K., is the owner of theregistered trademark VILLAGE covering the following services inInternational Class 36: “buying and selling land and buildings.”Defendant sold condominiums on which the mark VILLAGEHAKUSAN was displayed. Plaintiff brought suit for trademarkinfringement and requested injunctive relief. The Tokyo DistrictCourt opined that condominiums are merchandise and thusdefendant’s use of its mark constituted trademark use forbuildings. As buildings were closely related to the servicesprovided by plaintiff, plaintiff’s service mark was infringed.Accordingly, the Court granted the injunction and damages toplaintiff and defendant appealed. The Tokyo High Court affirmedthe District Court decision, but for a different reason. Specifically,the High Court stated that defendant used the mark for its serviceof selling buildings and thus directly infringed plaintiff’s servicemark.548

547. Okaya K.K. v. Patent Office (Gyo-Ke) 335, 1746 Hanrei Jiho 129, decided on

December 21, 2000, by the Tokyo High Court.

548. Sumitomo Real Estate K.K. v. K.K. Propast, Heisei 11 (Ne), 586, 1056 HanreiTimes 275 decided on September 28, 2000, by the Tokyo High Court.

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III.A.11.b. No Similarity of Goods/Services

Defendant is the registrant of the trademark AICOM AI &COMMUNICATION covering the following services inInternational Class 42: “designing, producing or maintainingcomputer programs, rental or leasing of electric tapes, electroniccircuits, magnetic discs in which computer programs are recordedand other peripherals etc.” Plaintiff filed a trial for invalidationbased on its trademark ICOM, asserting that ICOM was alreadyfamous with respect to “magnetic discs in which computerprograms are recorded” at the time of the filing of the applicationfor AICOM AI & COMMUNICATION and the latter mark issimilar to the former.

The Patent Office decided not to invalidate AICOM AI &COMMUNICATION based on the fact that “magnetic discs inwhich computer programs are recorded” are merchandise that isactually circulated and distributed, while the plaintiff’s business isrelated to discs that are rented or leased, not merchandise, such asdiscs themselves. Moreover, the Office stated that the merchandiseand services have different styles, methods or manners of trade;and therefore, even if there are some common features between themerchandise and the services, they are dissimilar as a whole. Thedecision was affirmed by the Tokyo High Court.549

III.F.3. Nullity

The plaintiff filed a trial for invalidation of a registeredtrademark for FLOWER THERAPY and its correspondingJapanese translation which covered magazines, newspapers,photos, stationery, etc., in International Class 16. The registrantwas in the profession of flower therapy and once served as adirector of plaintiff’s company, which was planning and conductingvarious events in the name of the Flower Therapy Association. Theplaintiff claimed that his company’s name, Flower TherapyAssociation, was famous and therefore, the defendant’s trademarkwas free-riding on the plaintiff’s fame (Article 4, item 1, Paragraph15 of the Trademark Law). The plaintiff also claimed that thedefendant had violated an obligation as a former director when hefiled the trademark application at issue and thus he contravenedpublic order and morality (Article 4, Item 1, Paragraph 7).

Both the Patent Office and the Court rejected the plaintiff’sdemand.550 Specifically, the Court stated that the defendant’sFLOWER THERAPY mark was more famous than that of the

549. ICOM K.K. v. K. K. ICOM, Heisei 12 (Gyo-Ke) 393, 1737 Hanrei Jiho 118 decided

on October 10, 2000, by the Tokyo High Court.

550. Yugen Kaisha v. Patent Office, (Gyo-ke) 195, Hanrei Jihou 133 decided onSeptember 19, 2001, by the Tokyo High Court.

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plaintiff, and moreover, the terms “flower therapy” were originallycommon words as opposed to distinctive terms.


Hertz System Inc. is the registrant of the trademark HERTZfor papers and stationery and has distributed ballpoint pens andclips, through its master-licensee, Japan Hertz, for the purpose ofpromoting its business. An individual named KatsumitsuTakahashi filed a cancellation trial against Hertz System,pursuant to Trademark Law, Article 53 based on the nonuse of theHERTZ trademark. Both the Patent Office and the Tokyo HighCourt551 considered that Hertz System’s use of the trademarkHERTZ solely for the promotional purposes did not constitutetrademark use, as it did not indicate the origin of the goods, butinstead advertised rent-a-car services. Thus, the HERTZtrademark registration was canceled due to nonuse.

JORDAN


The applicant, Halawani Industrial Company, filedapplications for trademarks which were identical to Walt DisneyCompany’s characters. Registrar issued several decisions to rejectthe acceptance of registration applications for trademarks identicalto Disneyland characters, such as WINNIE THE POOH, DUMBO,ALADDIN and LION KING in connection with potato chips inInternational Classes 29 and 30.552 The Patent Office refusedregistration of applicant’s marks filed by Halawani IndustrialCompany, a Jordanian company. The Registrar’s decisions havebeen based on the fact that these trademarks are famoustrademarks used and registered in several countries of the world,including Jordan, by Halawani Industrial Company.

On appeal, the High Court of Justice confirmed the Registrar’sdecision and stated that the registration of these trademarks inthe name of an unauthorized party would violate the provisions ofArticles 8(6) and 8(12) of the Trademarks Law, and the acceptancethereof would cause public confusion and unfair competition.553

551. Katsumitsu Takahashi v. Hertz System Inc., Heisei (Gyo-Ke) 335, 1749 Hanrei

Jiho 154 decided on February 27, 2001, by the Tokyo High Court.

552. Registrar’s Decisions Nos. TM/9207-9 dated August 30, 2000, and Nos. 8829 and8834, dated August 21, 2000 (unpublished).

553. The High Court of Justice Decisions Nos. 34-38, Case Nos. 428-432, dated February21, 2001 (unpublished).

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I.B.21. Trade Names

Four Seasons Hotels (Barbados) LTD. filed a cancellationaction based on Article 16 of the Trade Name Law No. 30 (1953)against the trade name registration Four Seasons,554 which wasregistered in the name of a Jordanian Company.

The Trade Name Registrar555 accepted the action on the factthat registration of the trade name Four Seasons will certainlygive a false indication of origin and cause confusion.


The Jordanian company Nader Atmeh & Partners Co., ownerof the trademark ANITA556 for cosmetics and related goods inInternational Classes 3 and 5, filed a cancellation action based onArticle 25 of the Trademarks Law against the registration of thetrademark ATHINA557 for cosmetics and perfumes in Class 3owned by Al-Aqsa Laboratories for perfumes and cosmetics. Thenotice of cancellation was based on the confusing similaritybetween the trademarks. The Registrar decided to accept thenotice of cancellation, finding both trademarks to be confusinglysimilar.558

On appeal, the High Court of Justice confirmed the Registrar’sdecision, and stated that both trademarks are confusinglysimilar.559

Arabic Investment Company for Trading, a Jordaniancompany, filed a cancellation action based on nonuse under Article22 of the Trademarks Law, against the registration of thetrademark MORGAN,560 owned by Reemstma CigarettenfabrikenGmbH, a German company.

The Registrar accepted the cancellation action based on thefact that the applicant company had submitted proof of nonuse of

554. Trade Name No. 74810.

555. The Trade Name Registrar v. Rami and Raed Badei Ayoub Company, Trade NameRegistrar Decision No. TN/74810/4619 dated June 6, 2001 (unpublished).

556. Registrations Nos. 29560, 29559, 29558 in Class 5 published in Official Gazette No.129 dated May 26, 1992, and Nos. 3238 and 35442 in Class 3 published in Official GazetteNos. 142 and 157, dated December 26, 1993 and February 20, 1995, respectively.

557. Registration No. 41515 in Class 3 published in Official Gazette No. 180 datedSeptember 25, 1996.

558. Nader Atmeh & Partners, a Jordanian company v. Al-Aqsa Laboratories forPerfumes and Cosmetics, a Jordanian company. Registrar’s Decision No. TM/41515 datedNovember 15, 1999 (unpublished).

559. The High Court of Justice Decision No. 52, Case No. 601/99 dated June 28, 2000(unpublished).

560. Registration No. 22637 published in Official Gazette No. 89 dated April 20, 1987.

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the trademark MORGAN and that the owner of the trademark didnot submit the necessary counter evidence.561

The Registrar accepted the registration of the trademarkROSE in Class 3 in the name of a Jordanian Company underRegistration No. 53811.

Upon publication in the Official Gazette, a verbal complaintwas submitted to the Registrar, objecting to the acceptance of saidtrademark for registration by the owner of Registration No. 22629for the trademark ROSE in Class 3 for the same goods. No formalnotice of opposition was filed. The Registrar decided to cancel thetrademark Registration No. 53811 for ROSE without goingthrough an opposition procedure.562

On appeal, the High Court of Justice563 affirmed theRegistrar’s decision, and confirmed the Registrar’s power to cancelan already accepted trademark in accordance with Article 14 of theTrademarks Law.


A Jordanian citizen opposed registration of the trademarkEURO MILK564 filed by Saadallah A. Saadallah & Sufian Jarar Co,based on the fact that a Jordanian company, Dhaif-Allah- M.Alzeibn, had been using the subject mark in Jordan in connectionwith milk since 1997.

The Registrar decided to accept the notice of opposition as theopposer was able to prove that a Jordanian company first used thetrademark in Jordan in 1997. However, the Registrar did notconsider all evidence submitted by the applicant, such as the factthat it owns this trademark in several countries and that it hasbeen using the trademark in Jordan since 1998.565

On appeal, the High Court of Justice reversed the Registrar’sdecision by accepting all points raised by the applicant. The HighCourt of Justice added one additional point regarding who mayoppose, stating that in accordance to Article 14(1) of theTrademarks Law, any person can submit a notice of oppositionupon publication of a mark in the Official Gazette, i.e., the

561. Arabic Investment Company for Trading, a Jordanian company, v., Reemtsma

Cigarettenfabriken GmbH, a German company. Registrar’s Decision No. TM/22637 datedAugust 1, 2000.

562. The Registrar of Trademarks v. Yousef Abu Ajamieh & Partner Company,Registrar’s Decision No. TM 5 TM/53811/7354 dated June 18, 2000.

563. The High Court of Justice Decision No. 18 Case No. 305/2000 dated March 21,2001.

564. Application No. 47442 in Class 29 published in Official Gazette Supplement No.201 dated June 28, 1998.

565. Dhaif-Allah- M. Alzeibn, a Jordanian company v. Saadallah A. Saadallah & SufianJarar Co. / Arab Wing for Import & Export, a Jordanian company. The Registrar’s DecisionNo. TM/47442/2280 dated July 13, 1999 (unpublished).

460 Vol. 92 TMR

opposing party need not be an aggrieved party. However, in caseswhere the main issue thereof is a dispute of the ownership of atrademark, the opposing party should be an aggrieved party.566

This dictum of the High Court may contradict Article 14(1) of theTrademarks Law, which states that any person can submit anotice of opposition, i.e., the opposing party need not be anaggrieved one. Accordingly, this dictum may not be persuasive infuture cases.

LITHUANIA


In Danisco A/S (DK) v. Akcine Bendrove “Mesa” (LT),567 theplaintiff sought cancellation of the mark DAUNIšKIO, on thegrounds of confusing similarity with its mark DANISCO. TheState Patent Bureau declared that both trademarks are similar ingeneral comprehension and canceled the trademark registrationfor DAUNIšKIO.

In Krewel Meuselbach GmbH (DE) v. N. P. Pharma SP. Z.o.o.(PL),568 the plaintiff requested the State Patent Bureau not togrant protection in Lithuania to the mark HEDELICUM byextension of its International Registration, on the grounds that itis visually and phonetically similar to plaintiff’s mark HEDELIX.The State Patent Bureau declared that the compared marks arevery similar and refused to grant protection in Lithuania to theInternational Registration of the trademark HEDELICUM.

In Ellos AB (SE) v. Kesko OY,569 the plaintiff soughtcancellation of the trademark YOUNG SPIRIT, because it issimilar to plaintiff’s earlier registered trademark FRESH SPIRIT.The State Patent Bureau declared that marks are not similar andleft valid the trademark registration for YOUNG SPIRIT inLithuania.

In A. Griceviciaus lietuviu saldainiu fabrikas “RÛTA” (LT) v.Pasta Zara S.p.A. (IT),570 the plaintiff sought cancellation of theword-figurative mark PASTA ZARA because it is similar toplaintiff’s earlier registered mark ZARA. The State Patent Bureaudeclared that the marks are not similar and left valid thetrademark registration for PASTA ZARA in Lithuania.

566. The High Court of Justice Case No. 336/99 dated May 29, 2000 (published in

Lawyer’s Association Magazine Nos. 9 and 10 dated September-October 2000).

567. Protest No. 474, decision No. 217, issued August 24, 2000.

568. Protest No. 508, decision No. 232, issued September 14, 2000.



Vol. 92 TMR 461

In Global Palm Products SDN BHD (MY) v. Uzdaroji akcinebendrove “Saules dovanos,”571 the plaintiff sought cancellation ofthe trademark KAROTINAS, on the ground of lack ofdistinctiveness. The State Patent Bureau held that the markKAROTINAS confers descriptive information with regard to thegoods in Classes 3, 5, 29 and 30 and canceled it.

In ZOTT GmbH&Co (GE) v. Tel Teksle Broker AS (NO),572 theplaintiff requested cancellation of the trademark GØTT, on theground that it is similar to plaintiff’s earlier registered markZOTT, for the same and/or similar goods. The State Patent Bureauheld that some of the Class 32 goods (beverages, fruit drinks andfruit juices; syrups and other beverages’ preparation mixtures) aresimilar to the goods covered by Class 29. However, mineral andaerated water, which are goods identified in Class 32, are notsimilar to the goods covered by Class 29. The trademarkregistration for GØTT in Class 32, for mineral and aerated water,was maintained valid in Lithuania.

In Dr. Karl Thomac GmbH (DE) v. Astra Zeneca UK Limited(UK)573 the plaintiff sought cancellation of the registration for themark TOMARIS because of its similarity to the plaintiff’s markMOVALIS. The State Patent Bureau decided that the marks arenot visually and phonetically similar and left the registration forTOMARIS valid.

In Sankyo Pharma GmbH (DE) v. Solvay PharmaceuticalsB.V. (NL).574 the plaintiff sought cancellation of the registration forthe mark FLUVIVAX because of its similarity to the plaintiff’smark LUIVAC. The State Patent Bureau declared that the marksare visually and phonetically similar and canceled the registrationfor FLUVIVAX.

In Preparados Alimenticios S.A. (ES) v. UAB “Galinta” (LT)575

the plaintiff sought cancellation of the registration for the markGALINTA because of its similarity to the plaintiff’s marksGALLINA BLANCA. The State Patent Bureau declared that themarks are not confusingly similar and left the registration forGALINTA valid.

In Sanofi–Synthelabo (FR) v. Jenapharm GmbH&Co KG(DE),576 the plaintiff sought cancellation of the registration for themark ENDOMETRION because of its similarity to the plaintiff’smark ENDOTELON. The State Patent Bureau declared that the

571. Protest No. 321, decision No. 245, issued October 16, 2000.


573. Protest No. 611, decision No. 319, issued April 17, 2001.

574. Protest No. 607, decision No. 280, issued January 24, 2001.

575. Protest No. 707, decision No. 330, issued May 21, 2001.

576. Protest No. 559, decision No. 287, issued February 9, 2001.

462 Vol. 92 TMR

marks are not confusingly similar and left the registration forENDOMETRION valid.

In Leciva AS (CZ) v. Sanofi-Biocom sp.z.o.o. (PL)577 theplaintiff sought cancellation of the registration for the markLOXON because of its similarity to the plaintiff’s mark ZOXON.The State Patent Bureau stated that the mark LOXON is visuallyand phonetically similar to the mark ZOXON and canceled theregistration for LOXON.

In Societe des Produits Nestle S.A. (CH) v. Marc O’Polo GmbH(DE),578 the plaintiff sought cancellation of the registration for themark MARC O’POLO because of its similarity to the plaintiff’smark POLO. The State Patent Bureau declared that the markMARC O’POLO is not confusingly similar to the mark POLO andleft the registration for MARC O’POLO valid.

In Chivas Brothers Limited (GB) v. Arovit Petfood France,S.A.R.L.,579 the plaintiff sought cancellation of the registration forthe mark CHIVAS in Class 31 for “petfood” because of itsconfusing similarity to the plaintiff’s mark CHIVAS REGAL,registered in Class 33 for “wine, alcoholic drinks and liqueurs.”The State Patent Bureau declared that the goods identified by themarks are not confusingly similar and left the registration forCHIVAS valid.

In Semper AB (SE) v. UAB “Taurida” (LT),580 the plaintiffsought cancellation of the registration for the mark SEMPERA inClasses 29, 30 and 31 because of its confusing similarity to theplaintiff’s registered mark SEMPER in Classes 29 and 30. TheState Patent Bureau declared that the defendant’s Class 31 goodsare not similar to the plaintiff’s Class 29 and 30 goods andcanceled the registration for SEMPERA in Classes 29 and 30, only,and left the registration of SEMPERA valid in Class 31.

In Melitta Haushaltsprodukte GmbH&Co Kommandit-gesellschaft (DE) v. ELOF HANSSON AB (SE),581 the plaintiffsought cancellation of the registration for the mark MELISSAbecause of its similarity to the plaintiff’s registered markMELITTA for similar products. The State Patent Bureau declaredthat some of the goods covered by the registration for the markMELISSA are identical and similar to the goods identified by theplaintiff’s mark MELITTA. Consequently, the State Patent Bureaucanceled the registration for MELISSA only for the followinggoods: in Class 7 “vacuum cleaners, dish washing machines”; inClass 11 “micro wave ovens (food preparation sets), electric tea-



579. Protest No. 361, decision No. 298, issued March 6, 2001.


581. Protest No. 453, decision No. 300, issued March 8, 2001.

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kettles, electric toasters, bread toasters, electric waffles makingmachines; baking frames; electric fryers; bakers; air heaters andair heating apparatus (for inside use); air ventilating devices,including air ventilating devices with lamps”; and in Class 21“non-electric industrial mixers; non-electric industrial mixingmachines.” The State Patent Bureau maintained the registrationfor MELISSA in force with regard to the following goods: in Class 7“dyeing machines; food cutting tools (machines); electromechanicalfood preparation machines, except for electric coffee and tea mills;industrial electric fruit presses, including those for citric fruit; canopeners”; in Class 8 “electric and non electric hair cutting devices;non electric hair curling utilities”; in Class 9 “kitchen weights;electric irons; electric hair curling devices; electric weights”; inClass 10 “massage apparatus, including massage apparatus withlegs”; in Class 11 “electric hair dryers”; and in Class 21 “electrictooth brushes.”

In DC Comics (US) v. UAB “Daigera” (LT),582 the plaintiffsought cancellation of the registration for the figurative markBETMENAS (Batman) in Class 42 because of its similarity to theplaintiff’s figurative mark BATMAN which was registered inClasses 9, 14, 16, 25 and 28. The State Patent Bureau found thatthe defendant’s Class 42 services are not similar to the plaintiff’sClass 9, 14, 16, 25 and 28 goods and left the registration forBETMENAS valid.

NEW ZEALAND


In New Zealand, it is starting to become common to reject alocal trademark application on the ground of nondistinctivenessbased on examples of foreign use found on the Internet.

Applicant, Trevor Heywood, applied to protect the trademarkDEWFRUIT in Class 3 for “toiletries and cosmetics.” Theapplication was rejected by the Trade Marks Office as beingnondistinctive. Applicant appealed.

The application was rejected on the grounds that the markDEWFRUIT makes direct reference to the character and quality ofthe specified goods, as well as not being adapted to distinguish norinherently adapted to distinguish the goods.

Applicant submitted that the New Zealand public has neverheard of nor would recognize a dewfruit. The AssistantCommissioner, however, stated the issue here was not whetherNew Zealanders would recognize a dewfruit, but whether the termis being used by other traders in connection with their own


464 Vol. 92 TMR

toiletries and cosmetics. By evidence of overseas use taken fromthe Internet, the Assistant Commissioner ascertained that theterm dewfruit should not be the exclusive property of a singleproprietor, but should remain freely available for other proprietorsto use in connection with their own toiletries and cosmetics thateither contain, are made from, or smell like dewfruit.

The Assistant Commissioner also determined that in making adirect reference to goods that either contain, are made from, orsmell like dewfruit, the mark DEWFRUIT was not adapted todistinguish nor inherently adapted to distinguish its goods. Theuse of the descriptive term dewfruit on the Internet provided proofof the generic use of dewfruit by other traders in reference to theirown toiletries and cosmetics. Granting a monopoly in thedescriptive mark DEWFRUIT would place an unreasonablerestriction on the actions of other honest traders.

Applicant raised concerns about the use of the Internet indetermining the eligibility of a trademark for registration.Applicant was concerned that if any term were used by anyInternet user anywhere in the world, it would prevent registrationof this term as a mark in New Zealand. Applicant was alsoconcerned that by looking at only overseas evidence from theInternet, the Office was not confining their scope of protection tothe New Zealand public and marketplace.

The Assistant Commissioner stated that the Internet is onlyone of a number of referenced sources used by the Trade MarksOffice to assess the eligibility of a mark for registration. TheAssistant Commissioner also stated that given its sheer size andscope, the Internet is clearly the most comprehensive search toolavailable, providing the most accurate indicator as to the use of aparticular word, term or phrase in the wider commercialenvironment. In the case of dewfruit, the Internet showed enoughevidence of the word being used generically that the AssistantCommissioner believed there was already likely a certain level ofpublic awareness in New Zealand of the dewfruit.

In summary, based on foreign evidence found on the Internet,the Assistant Commissioner decided that applicant’s markDEWFRUIT for its goods was not eligible for registrationconsidering the generic significance of the word dewfruit, and alsoconsidering its current use overseas in relation to the same type ofgoods as covered by applicant’s registration application.583


Applicant, E & J Gallo Winery (“Gallo”), applied in December1997 to protect the trademark COPPERIDGE in Class 33 for“alcoholic beverages (except beers).”

583. In re Dewfruit (Decision of Commissioner of Trade Marks, January 17, 2001).

Vol. 92 TMR 465

Opponent, Montana Wines Limited (“Montana”), which is theproprietor of the registered trademark COPPER FIELDS used inrelation to wine, filed an opposition to applicant’s trademarkregistration application for COPPERIDGE on the followinggrounds:

1. If applicant were to commence to use the markCOPPERIDGE in relation to wines in New Zealand, such usewould lead to deception and confusion by the public; and

2. If the application to register the mark COPPERIDGE isfor the same or similar goods as those covered by theregistered mark COPPER FIELDS, and if the markCOPPERIDGE is so similar to the registered mark COPPERFIELDS as to cause confusion or deception through the use ofthe mark COPPERIDGE, then the mark COPPERIDGE is notregistrable.With respect to the first ground for opposition, Montana had to

establish that it had sufficient substantial reputation in the NewZealand marketplace in the mark COPPER FIELDS at the filingdate of the COPPERIDGE application, and that there was nothingto impart the possibility, at that time, that its goods wereidentifiable or confusing with Gallo’s. The Assistant Commissionerdecided, based on statutory declarations and market surveys,which the Assistant Commissioner considered insufficient, thatthis ground failed because Montana had not established asufficient substantial reputation in the mark COPPER FIELDS tomeet the required standard.

With respect to the second ground for opposition, assuminguse by Montana of its trademark COPPER FIELDS for its goods ina normal and fair manner, Gallo had to establish there was noreasonable likelihood of deception or confusion among asubstantial number of consumers if Gallo were to use its markCOPPERIDGE in a normal and fair manner for its goods.

In order to assess whether deception or confusion was likely tooccur, the Assistant Commissioner had to determine whether themarks COPPERIDGE and COPPER FIELDS were similar. Inreviewing the marks as would a consumer who relies on generalrecollection rather than side-by-side comparison, the AssistantCommissioner determined that even though the marks shared thecommon word and syllable COPPER, they neither looked norsounded similar, as the marks as a whole were visually andphonetically different. The Assistant Commissioner also believedthat neither of the marks were connotationally similar, as theword FIELD intimated open land and the word RIDGE suggesteda mountain range or ridge line.

Accordingly, despite the fact that the goods were the same, theAssistant Commissioner determined that the trademarks

466 Vol. 92 TMR

COPPERIDGE and COPPER FIELDS, when viewed as a whole,were not similar. In the surrounding circumstances, the AssistantCommissioner was not convinced that there was any likelihood ofconsumers accustomed to dealing in the wine market, would beconfused or deceived by the use of COPPERIDGE.

Consequently, Montana’s second ground for opposition failed,and the Assistant Commissioner approved that Gallo’s markCOPPERIDGE could proceed to registration.584

I.B.20. Color/Shape

Applicant, Eli Lilly and Company, applied to protect acombination of colors, namely the colors green and cream, thatwere applied to a pharmaceutical capsule in Class 5 containing“fluoxetine hydrochloride.” The application was first rejected bythe Trade Marks Office because the Examiner did not accept thedescription of the mark. Applicant amended the application to read“the mark consists of a three-dimensional capsule with a creamcolor applied to one half of the capsule and a green color applied tothe other.” The Examiner then objected to the mark on thegrounds that applicant’s evidence did not show that the colorscream and green were used as a trademark on their own, as theyalways appeared in connection with other marks, and that themark was nondistinctive of applicant’s goods.

The Examiner considered the mark not registrable, as it hadbeen previously used in conjunction with other marks. TheAssistant Commissioner interpreted this to mean that because theprevious use of the trademark had always been in conjunction withother marks, the color combination on its own did not function as atrademark.

A trademark is categorized as any sign capable of beinggraphically represented, and a sign includes among other things,color and combinations of color. In consideration of thesedefinitions, the Assistant Commissioner followed the House ofLords case Smith Kline & French Laboratories Ltd. v. SterlingWinthrop Group Limited,585 where it was held that a series of colorcombinations applied to capsules could be registered as atrademark. On the authority of Smith Kline & French, theAssistant Commissioner found no barrier to accepting thatapplicant’s color combination applied to a pharmaceutical capsulewas registrable as a trademark.

The Assistant Commissioner also expressed the fact that if atrademark is used in conjunction with other trademarks, this doesnot make the first trademark unregistrable on its own. It does not

584. In re COPPERIDGE (Decision of Commissioner of Trade Marks, May 10, 2001).

585. Smith Kline & French Laboratories Ltd v. Sterling Winthrop Group Limited, [1976]RPC 511.

Vol. 92 TMR 467

matter that the color combination mark also appears with themanufacturer’s name, other marks, or other identifying numbers.These other marks do not detract from the color combination’sfunction as a trademark in its own right. The color combinationoperates as a badge of origin.

The Examiner further doubted this badge of origin function, inpart because applicant was the only person entitled to sell thepatented pharmaceutical in New Zealand. The AssistantCommissioner responded that this monopoly did not mean thecolor combination did not function as a trademark. At some pointthe patent would expire and the badge of origin would remain.

However before applicant’s color combination mark could beregistered, applicant had to prove the mark’s distinctiveness.Accordingly, in order to determine if the mark was inherentlydistinctive and factually distinctive, applicant had to show asubstantial amount of use.

To meet this threshold requirement, applicant providedthrough statutory declarations a substantial amount of evidence ofuse from people who either supplied or prescribed pharmaceuticalpreparations. Upon this evidence, the Assistant Commissionerfound that if any other manufacturer of fluoxetine hydrochlorideused green and cream on their capsules, there would be alikelihood of confusion with applicant’s product.

In addition, the Assistant Commissioner found that the colorcombination was not a mark that other traders would belegitimately entitled to use in relation to the goods in question. Atthe time of this application, and at the time of this hearing, othertraders were not entitled to sell this pharmaceutical in NewZealand. The court believed that when the relevant patent expired,it would still not be legitimate for other pharmaceuticalmanufacturers to adopt applicant’s get-up.

In conclusion, the Assistant Commissioner determined thatapplicant’s color combination applied to a pharmaceutical capsulewas a trademark and that the evidence established thatapplicant’s mark was distinctive in fact and that the colorcombination was not a mark that other traders would belegitimately entitled to use. The Assistant Commissioner advisedthe trademark should proceed to advertisement.586


Applicant, Société des Produits Nestlé S.A., applied to protecta series of four three-dimensional shapes, namely, of four identicalrounded rectangular shaped containers in two different sizes, inthree applications for registration covering goods in Classes 29, 30

586. In re A Combination of Colors Applied to a Capsule (Decision of Commissioner of

Trade Marks, May 10, 2001).

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and 31. The second and fourth marks in the series were limited tothe colors yellow and black. These applications were rejected bythe Trade Marks Office as being nondistinctive.

Applicant then offered to amend the specifications for all threeapplications and to withdraw all but the yellow and black marks,namely the second and fourth marks. These proposals were alsorejected. Applicant made a considered reply in writing.

To determine whether the marks were eligible for registration,the Assistant Commissioner had to consider whether, in theabsence of a reputation in the marketplace built up through a longperiod of use, a three-dimensional shape in which the functionalfeatures combined to form a mark, that is, as the whole mark,were functional in nature. If a three-dimensional mark isfunctional in nature, then it is not distinctive enough forregistration purposes.

The Assistant Commissioner found the features of the marksallowed them to function as containers that could be easily stackedand were volume efficient. Thus, the marks were essentiallyfunctional in nature.

In addition, the Assistant Commissioner determined othertraders would legitimately wish to use the same or similarlyshaped containers in relation to their own foodstuffs. The extent towhich the marks were inherently capable of distinguishingapplicant’s goods from those of other traders was not sufficient toallow registration.

However, the Assistant Commissioner made its ownobservations in absence of formal evidence of use by applicant. TheAssistant Commissioner considered that the yellow and blackmarks had become factually distinctive of applicant’s dried stocks,and not to any other goods of applicant. To this extent, theAssistant Commissioner determined that the yellow and blackmarks were factually distinctive in relation to only dried goods,and thus eligible for registration. Subject to amendments to thespecification of goods in Classes 29 and 30 to “dried stocks,” and tothe abandonment of the Class 31 application, and the removal ofthe two black and white marks from the remaining applications,the Assistant Commissioner approved advertisement of theremaining applications of the series of the two three-dimensionalshaped marks, limited to the colors yellow and black.587

587. In re Representation Only of a Series of Four Three-Dimensional Shapes (Decision

of Commissioner of Trade Marks, April 20, 2001).

Vol. 92 TMR 469

NIGERIA

II.G. Evidence

In order to establish that the infringing goods had been boughtfrom the defendant, the plaintiff sought to tender a sales invoiceissued by the defendant. The Court, in Best Grade Entre-potLimited v. Hurricane Ventures Limited,588 held that because theplaintiff’s statement of claim indicated that it intended to rely oncertain specified delivery order/way bills, the sales invoice had notbeen pleaded and so could not be admitted in evidence.

III.A.8. Infringement of Unregistered Trademarks

In Dyktrade Limited v. Omnia (Nigeria) Limited,589 thehighest court of the land confirmed that when an application forregistration of a trademark has not yet proceeded to registrationthe applicant cannot maintain an action for infringement of atrademark. Acceptance of an application does not confer any rightson the applicant, not even the right to a “voidable registration.”590


In Ferodo Limited v. Ibeto Industries Limited,591 theappellant, who was the proprietor of the trademark FERODO forbrake linings, instituted an action against the respondent forinfringing its trademark. Evidence at the trial had shown that thetrademark registered by the appellant consisted of the wordFERODO and a checkered stripe device in the colors red, black andwhite. The respondent sold its goods in red packaging. Therespondent denied the allegation of infringement stating that itstrademarks UNION and UNION SUPA were distinctly differentfrom the appellant’s trademark FERODO. The trial court took theview that the appellant’s trademark was essentially the wordFERODO in spite of the accompanying stripe device and that therespondent’s trademarks were not similar to the appellant’snotwithstanding similarities in package coloring.

The Court of Appeal in dismissing the case held that when aname, graphic representation or any word is used and theproprietor intends that it be registered as a trademark but theproprietor decides to garnish the intended trademark with othercolorations or devices that make it appealing and decorative, itcannot be assumed that those fanciful and ornamental characters

588. Federal High Court, August 5, 1999, Suit No. FHC/L/CS/712/95 (unreported).

589. Supreme Court, July 14, 2000, reported at [2000] 12 NWLR p. 1.

590. See also 91 TMR 469 (2001).

591. Court of Appeal, Lagos, February 17, 1999, reported at [1999] 2 NWLR p. 509.

470 Vol. 92 TMR

that color the face of the package form part of the trademark. TheCourt, therefore, concluded that it was the name FERODO thatwas registered and not the stripe device which was merelydecorative of the name. Also, the two trademarks were distinctfrom each other in character and design and automobilemechanics, the main purchasers of the products, knew thedifference and were not easily deceived.


In Chimex Foods (Nigeria) Limited v. Onyekachi Atuka etal.,592 the Court granted ex parte an order of interim injunction torestrain the defendants from infringing the plaintiff’s trademarkCHIMEX FOODS EAGLE curry powder by passing off thedefendants’ product CHUKS FOODS EAGLET curry powder asthe plaintiff’s product.


In Fototek Industries Limited v. Fotoklinic Limited,593 theplaintiff was the proprietor of the trademark TURA in Class 1registered as No. 30564 in respect of photographic papers, films,and photographic chemicals. The plaintiff did not itselfmanufacture TURA photographic films or products but importedthese from the German company Tura GmbH. The defendant wasalso an importer of the same products from the German company.The plaintiff sought an order of interlocutory injunction to restrainthe defendant from importing, selling and distributing TURA filmsand products in Nigeria.

The defendant’s case was that the plaintiff was only aregistered user and so could not maintain an action forinfringement. The Court ruled, however, that Section 33(4) of theTrademarks Act empowers a registered user to sue forinfringement.

However, the Court in refusing to grant an injunction heldthat, should the plaintiff succeed in the action, damages would bean adequate remedy for any injury it may have suffered.Especially, in the face of evidence from the defendant showing thatthe plaintiff had been prepared to accept from Tura GmbHroyalties for the sale in Nigeria of TURA products by other parties.Also, the Court found that there was no evidence that thedefendant was not financially in a position to pay such damages.In other words, the balance of convenience lay in favor of notgranting the injunction.

592. Federal High Court, October 4, 2000, Suit No. FHC/K/CS/144/2000 (unreported).

593. Federal High Court, July 11, 2001, Suit No. FHC/L/CS/1098/98 (unreported).

Vol. 92 TMR 471

Ayman Industries Limited, the respondent, had obtained anorder ex parte restraining the appellants from using thetrademark ORIGINAL QUEENS or from using any othertrademark resembling the respondent’s trademark NEW QUEEN.The order also restrained the appellant from passing off itsproducts as those of the respondent; and authorized the seizure ofany infringing goods found on the appellants’ premises.

Evidence presented by the parties showed that the respondenthad a pending application to register the trademark NEW QUEENin Class 26, while the first appellant had a pending application toregister the trademark QUEENS in Class 3.

After the ex parte orders had been enforced, the appellantsought to have the orders set aside on the ground, inter alia, thatthe respondent had concealed material facts, which if disclosed,would have led the Court to refuse the orders granted. The trialcourt refused the application and upheld its earlier orders.

On appeal, the following issues arose to be determined:whether the Federal High Court had jurisdiction to hear an actionalleging passing off of an unregistered trademark; whether theterms of the “search and seizure” order granted ex parte by thetrial court were in breach of the appellants’ right to a fair hearingunder section 33 of the 1979 Constitution of Nigeria; and whetherafter the inter partes hearing the Court was right in law to haveordered the injunction.

The Court of Appeal held that the Federal High Court hadjurisdiction to hear passing off cases.594 On the other issues theCourt held that although ex parte “search and seizure” orders areex facie contrary to the right to a fair hearing, courts allow them inextreme cases having regard to the urgency of the situation. Theorders must, however, be narrowly circumscribed. The Court alsoheld that since the parties had sought registration of theirtrademarks in different classes it was not clear that the markswere to be applied to similar goods. The case for passing off did notappear to have been established and the orders granted should,therefore, not have been so wide. The Court of Appealconsequently set aside the orders of the trial court.


Pfizer Specialties Limited (“PSL”), the local subsidiary ofPfizer Inc., was Pfizer’s authorized importer of VIAGRA intoNigeria and its sole agent. PSL had also obtained registration ofVIAGRA with the National Agency for Food and Drug

594. Akuma Industries Limited v. Ayman Industries Limited, Court of Appeal, Lagos,

July 6, 1999, reported at [1999] 13 NWLR p. 68.

472 Vol. 92 TMR

Administration and Control (“NAFDAC”).595 The defendants soldgenuine VIAGRA that was not purchased from or through PSL.PSL instituted an action against the defendants and sought aninterlocutory injunction to restrain the defendants from dealing inVIAGRA “contained in packages or bearing labels not marked withthe name of Pfizer Specialties Limited.”

The following issues arose for determination: (i) can PSL bringan action based on parallel importation, or based on breach of astatute; or does it have locus standi to seek to enforce the Drugsand Related Products (Registration, etc.) Decree No. 19 of 1993; (ii)if any cause of action, such as the tort of unlawful interference, isavailable to PSL, is it one within the jurisdiction of the FederalHigh Court to determine.

The Federal High Court answered each question in thenegative, refused to grant the interlocutory injunction anddischarged the interim order that it had earlier granted exparte.596

The Court held that the laws of Nigeria do not recognize thecommon law concept of parallel importation. The Court also foundthat even though the plaintiff was the holder of the certificate ofregistration issued by NAFDAC upon which its claim was based,the Decree provides that the Attorney General of the Federation isthe person vested with the power to enforce by prosecution anoffence under the Decree. In other words, the right to sue for aninfringement of the Decree is not vested in the plaintiff. Finally,the Court held that a claim based on the tort of unlawfulinterference is not within its jurisdiction.597


In Nabisco Inc. v. Allied Biscuits Company Limited,598 therespondent filed an application to register RITZ as a trademark.The application was accepted and numbered 31795. Thereafter,the appellant also filed an application to register RITZ. Uponnoticing the appellant’s later application advertised in the TradeMarks Journal the respondent filed a notice of opposition tochallenge the registration. In response, the appellant filed acounter statement. Within one month of receipt of the counterstatement the respondent, in accordance with the Trade Marks

595. Under the Drugs and Related Products Decree, food and drug products must be

registered with NAFDAC before they can be sold or advertised in Nigeria. See also INTABulletin Volume 51, Issue Number 14 (October 28, 1996).

596. Pfizer Specialties Limited v. Chyzob Pharmacy Limited, Federal High Court,February 13, 2001, Suit No. FHC/L/CS/1318/99 (unreported).

597. The jurisdiction of the Federal High Court is limited to the matters specificallylisted in Section 251 of the 1999 Constitution of Nigeria.

598. Supreme Court, July 17, 1998, reported at [1998] 10 NWLR p. 16.

Vol. 92 TMR 473

Regulations, ought to have lodged with the Registrar suchevidence by way of statutory declaration as it wished to adduce insupport of its opposition.

When the matter came up before the Registrar of Trademarks,the appellant raised a preliminary objection on the grounds thatthe respondent had failed to file a statutory declaration. Theappellant contended that in the circumstances there was noevidence upon which the matter could proceed. The Registrar,after hearing arguments of both parties upheld the appellant’spreliminary objection but then exercised his discretion andextended the time within which the respondent could file itsstatutory declaration. At the close of the hearing and afterconsidering the evidence, the Registrar refused to register RITZ asthe appellant’s trademark.

The Supreme Court, after appeals to the Federal High Courtand the Court of Appeal, dismissed the appeal and held that theimport of Regulations 51, 52 and 56(1) of the Trade MarksRegulations 1967 is that when an opponent fails to file a statutorydeclaration, he is deemed to have abandoned his opposition unlessthe Registrar otherwise directs. In other words, the Registrar isempowered with discretion in the matter. Consequently, the Courtupheld the Registrar’s decisions.

NORWAY


On March 10, 2001, Oslo City Court refused registration of theplaintiff Enterprise Rent-a-Car Company’s (USA) application forregistration of the trademark ENTERPRISE for InternationalClasses 12, 36 and 39 for the rental and leasing of motorvehicles.599 The Patent Office’s first and second divisions hadpreviously refused registration of the mark. The court stated thatthe Norwegian Trademarks Act Section 13, paragraph 1 does notallow registration of common words and expressions that are usedalso by other businesses. The court also referred to a Europeandecision, whereby the mark COMPANY LINE had been refusedregistration.


The plaintiff had filed an application to register GODMORGEN APPELSINJUICE MED FRUKTKÖTT (Good MorningOrange Juice with Fruit). The expression “good morning” was,according to the Appeal Court, not descriptive for orange juice or

599. NIR 2001 p. 269.

474 Vol. 92 TMR

the use of the goods.600 The Trademarks Act Section 13 paragraph2 was, therefore, not an obstacle to the mark’s registration.Registration could not be refused even if the mark could be said tobe suggestive when used for orange juice. The Appeal Court alsostated there is no general prohibition for registration of commonwords and expressions, regardless of whether they may becomprehended as descriptive for the goods in question. The courtalso referred to other European decisions, such as TODAY forfrozen and canned products, and NATIONAL for rental carservices.601


On May 8, 2000, the Norwegian Patent Office allowedregistration of the device mark ERFURT (word in a simple frame)for goods in International Class 27.602 The Patent Office statedthat the European Trademarks Directive Articles 3, 1, C and 6.1had no effect in this case because the German town Erfurt neitherhad, nor reasonably could be expected to gain, any particularreputation for the manufacture of wall papers in Class 27.


One of Norway’s Appeals Courts, Borgarting Lagmannsrett,decided a case between the parties AKO Hud AB (plaintiff) andPatentstyret (the Norwegian Patent Office) concerningregistrability of the word mark AKO. The Court agreed withprevious rulings from Oslo City Court and the Norwegian PatentOffice’s first and second divisions, that there was risk of confusionwith the prior registered trademark APO in International Class 5,with regard to consumers in retail trade.603


On July 10, 2000, the Norwegian Patent Office confirmed aprior decision by the Patent Office allowing registration of theword mark McMOON in Class 30 in spite of McDonald’s oppositionbased on twelve registered and well-established word markscontaining the prefixes MAC and Mc.604 The Patent Office’s seconddivision referred to a number of other Mc registrations for otherregistrants.

600. Jo-Bolaget Fruktprodukter HB v. The Norwegian Patent Office.

601. Published Lovdata LB-2000-02229.

602. NIR 2001 p. 279.

603. AKO Hud AB v. Patentstyret (Borgarting Lagmannsrett December 12, 2000)(published Lovdata LB-2000-01230).

604. NIR 2001 p. 284.

Vol. 92 TMR 475

I.B.17. Disclaimers

On July 10, 2000, the Norwegian Patent Office’s seconddivision allowed registration of the device mark A ONE for avariety of goods in International Classes 1, 3, 9, 18, 20, 22, 25, 28,41 and 42.605 The Patent Office’s first division had required adisclaimer for the words A ONE, since the expression was found tobe descriptive, meaning “first-class, excellent, superior.” ThePatent Office’s second division also held that the words weredescriptive. The applicant had argued that a previous registrationfor an identical mark, which he erroneously had failed to renew,had been registered without a disclaimer. The Patent Office’ssecond division stated that the prior registration’s lack of adisclaimer neither could be construed as meaning that the relevantpart of the mark enjoyed full trademark protection, nor that thePatent Office previously had held the opinion that the element inquestion was fully protected.


One of Norway’s Appeals Courts, Borgarting Lagmannsrett,decided that the organization Norsk Lektorlag (Norwegian HighSchool Teachers’ Association) could use that name on itsorganization, even though Lærerforbundet, a prior Teachers’Association, had used an identical name prior to 1983. The Courtconcluded that there was no risk of confusion.606


One of Norway’s Appeals Courts, Borgarting Lagmannsrett,decided a case concerning copying of labeling/marking on cheesewrapping. The plaintiff, O. Kavli AS, was awarded a preliminaryinjunction against Synnøve Finden ASA because the defendantwas found to deliberately have taken a risk by choosing a verysimilar design and had ample time to change its design beforelaunching.607

On March 29, 2001, Borgarting Lagmannsrett (Appeal Court)confirmed the previous decision by Oslo City Court, refusing therequest for a preliminary injunction concerning the trademarkVOLUM registered by the plaintiff, Volum AS of Oslo, Norway, forprinted publications. The defendant, H. Ascehoug & Co., also ofOslo, published a series of books for youth with an almost identicallogo. The court stated there was no reason for a preliminary

605. NIR 2001 p. 289.

606. Norsk Lektorlag v. Lærerforbundet (Borgarting Lagmannsrett September 25, 2000)(Published Lovdata LB-1999-03040).

607. O. Kavli AS v. Synnøve Finden ASA (Borgarting Lagmannsrett August 24, 2000)(published Lovdata LB-2000-02398).

476 Vol. 92 TMR

injunction, since the defendant had agreed to discontinue printingand to stop marketing its books before the case had been finallysettled in court.


On May 14, 1999, Oslo City Court allowed a parallel importer,defendant Smart Club AS of Oslo, Norway, to use a number ofwell-known trademarks owned by the plaintiff Norelor AS ofNorway and its parent company L’Oreal AS, also of Norway.608 TheCourt stated that the trademark rights were subject to regional(European) exhaustion according to the EEA-agreement betweenthe European Union and Norway. The Court rejected the plaintiffs’allegation that removal of bar codes on approximately ten percentof the total volume of goods constituted any significant alterationof the goods that would damage the reputation of the mark. TheCourt also rejected the plaintiffs’ claim that the defendant’spremises from a warehouse/commercial building constituted anydamage of the trademark image. The plaintiffs’ argument that thegoods have been sold to the defendant as a result of a breach ofcontract from another dealer in Europe was not relevantconcerning the claim against the Norwegian defendant.

PAKISTAN


Chiltan Ghee Mills (“CGM”) filed a suit for permanentinjunction against Mehran Ghee Mills (“MGM”) to restrain thelatter from using the trademark PAK CHILTAN and passing offits products as products of CGM. The trial court accepted CGM’spetition for interlocutory injunction and restrained MGM frominfringing CGM’s trademark CHILTAN pending the results of thesuit. MGM appealed to the Baluchistan High Court to set asidethis order. The High Court turned down the appeal and upheld thetrial court’s injunctive orders. MGM then referred this appeal tothe Supreme Court of Pakistan in an attempt to set aside theinjunction.

CGM was established in 1974 under a government project.CGM filed an application to register CHILTAN as part of a labelon December 31, 1986, in Class 29 for vegetable oil/ghee. In 1992,the government decided to auction this unit which was then takenover by the present owner in September of the same year. At thetime of this takeover, the above trademark application was stillpending.

608. NIR 2001 p. 271.

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The new owner filed a trademark application on November 13,1994, for registration of its modified label, incorporating thetrademark CHILTAN in Class 29. This application was dulyregistered and the previous one was apparently abandoned.

CGM claimed that it had introduced the trademark CHILTANBANASPATI in the year 1974 and since then the mark had beenused continuously and extensively on its products, namelyvegetable oil/ghee, which were sold in tins of various sizes.

MGM adopted the trademark PAK CHILTAN which was verysimilar to CGM’s trademark CHILTAN for the same goods, i.e.,vegetable oil/ghee. MGM had also filed an application to registerthe trademark PAK CHILTAN as part of a label under No. 126807dated September 29, 1994, in Class 29 which was also pending.MGM argued that when CGM was auctioned in 1992 the currentowners of CGM had purchased only the assets of the Ghee Millsand the trademark was not covered in the sale agreement. CGMcould not claim use of the trademark CHILTAN by itspredecessors-in-interest. Furthermore, MGM contended that itstrademark application dated September 29, 1994, was made beforeCGM’s application dated November 14, 2001, the fact of whichcould establish their prior rights.

The Supreme Court, after considering the arguments of bothparties, dismissed the appeal and upheld the injunction.609 On thequestion of similarity between the two marks in dispute, theSupreme Court held that “if the two marks are completelyidentical, no further probe is needed and infringement isestablished. Essential features of the marks were considered todecide the issue of infringement rather than the whole mark. TheCourt found that there exists an infringement if one or moredominant features of a mark are copied. If there is a strikingresemblance, it would lead to the conclusion that the mark hasbeen infringed. In this case, there is a certain degree of similaritybetween two marks in dispute. The mark/label of CGM hasvirtually been adopted by MGM in terms of color scheme anddesign, passing off the latter’s goods as those of CGM.”

Regarding the grant of interlocutory injunction, the SupremeCourt held that “the applications for registration of trademark ofboth … are admittedly pending before the competent authority. Itis a proven fact that the trade mark CHILTAN BANASPATI hasbeen used since 1974, whereas MGM only started using itstrademark in 1996. Under the circumstances, the allegedinfringement is actionable and a prima facie case is established.The balance of convenience is in favor of CGM who will sufferirreparable loss if an injunction is not granted.”

609. Mehran Ghee Mills (Pvt.) Limited and others v. Chiltan Ghee Mills (Pvt.) Limited

and Others, Supreme Court (February 23, 2001) (2001 SCMR967).

478 Vol. 92 TMR

PANAMA


Conservas California, S.A. successfully opposed registration ofthe trademark CALIFORNIA in Classes 30 and 29 of Derivados deMaiz Alimenticio, S.A. on the basis of the similarity of the mark ofthe application with its registered trademark CALIFORNIA inClass 30 in Colombia, which is a member country of the ParisConvention, notoriousness of its mark having been obtained bypublicity and use before the registration of the defendant’strademarks and by the registration of plaintiff’s trademark inGuatemala, Nicaragua and El Salvador, all members of theInteramerican Convention.

The Third Superior Court of the First Judicial Districtconfirmed on appeal the decision and, rather than referring to thepriority and similarity of trademarks, in doing so referred toCalifornia as a geographic name that was not entitled toprotection. California is a state of the United States associatedwith high agricultural and industrial production, said the Court,and, therefore, California is not entitled to protection for productsin Classes 29 and 30.610


Advanced Total Marketing Systems Inc. and CorporacionCressida S.A. de C.V. opposed the registration of ARIEL anddesign in Class 3 of Procter & Gamble on the basis of theregistration of a similar design in Panama and other countries ofCentral America, which would lead the consumer to visual andgraphic confusion. The defendant evidenced registrations of ARIELand design in different countries of the Interamerican Conventionand argued that ARIEL is a notorious trademark. The oppositionwas denied for insufficient evidence of the design (the evidencefiled referred to the registration of XEDEX and not to the design).

On appeal, the plaintiff modified its argument based on thesimilarity of the design of the bag (trade dress) and not on themarks on the bag. The Third Superior Court confirmed the firstholding, establishing that the design of the containers or bags ofthe products were not able to lead the consumer to confusion.Interestingly, the Court approached the trade dress issue in a clear

610. This holding on a geographical name basis could result in the impossibility of

registering geographic names for these classes of products, as clearly many countries areengaged in the development of these products. The holding could have limited its scope tocertain type of products for which California is well known, and not to whole classifications.Conservas California, S.A. v. Derivados de Maiz Alimenticio, S.A., Third Superior Court ofthe First Judicial District, February 20, 2001.

Vol. 92 TMR 479

and definitive way, inviting parties in the future to discuss thisaspect in trial as part of the confusion possibilities.611


Cellular One Communication, S.A. filed an opposition claimagainst the registration petition of Cellular One Group Inc. for thetrademark CELLULARONE, filed in October 1995, in Class 38;and Cellular One Group Inc. filed an opposition claim against theregistration petition of Cellular One Communication S.A. for thetrademark CELLULAR ONE in Class 9, filed in April 1995.

The Ninth Circuit Court accumulated both cases, and becauseboth applications were filed before the issuance of the TrademarkLaw of 1996, the Court applied the old Panamanian TrademarkLaw of 1939, which did not contain provisions for the protection ofwell-known or notorious trademarks, notoriousness being one ofthe arguments of Cellular One Group Inc. for filing its oppositionclaim against the registration of CELLULAR ONE. TheCELLULARONE registration petition was filed after the filing ofthe registration petition for CELLULAR ONE of Cellular OneCommunication, S.A. The Ninth Circuit Court held in favor of theregistration of CELLULARONE of Cellular One Group Inc. inClass 9 and denied the registration of CELLULARONE in Class38, basing its decision on the fact that the trademarkCELLULARONE of Cellular One Group Inc. had preference forregistering, and the Court also granted it the right to oppose, as itevidenced registrations in the United States, a member of theInteramerican Convention. In doing so, the Court also held thatnotwithstanding the fact that the name of the corporation isproperty in itself, such isolated fact does not entitle a corporationto register a foreign trademark that existed before theincorporation of the corporation and before the corporation waslicensed to operate.

In addition to the Interamerican Convention, the ThirdSuperior Circuit Court, on appeal, also established that since theopposition claims were filed after the Paris Convention wasapproved by Panama, such Convention also applied, and therefore,Panama should grant the protection “as it is” to the members ofsuch Convention in its second Article. The Third Superior CircuitCourt concluded that such protection “as it is” implies theprotection of the trademark CELLULARONE of Cellular OneGroup Inc. and that such protection would imply the denial of thetrademark CELLULAR ONE of Cellular One Comunication, S.A.for it violates the old law on trademarks of 1939, which forbids the

611. Advanced Total Marketing Systems Inc. and Corporacion Cressida S.A. de C.V. v.

Procter & Gamble, Third Superior Court of the First District Circuit, November 20, 2000.

480 Vol. 92 TMR

registrations of identical trademarks or similar to one alreadyregistered.612

Plaintiff, Martin Franchises Inc, successfully pursued in theNinth Circuit Court the denial of the registration of the servicemark UNA HORA MARTINIZING in Class 37 based on its use andprior registration of the commerce denomination ONE HOURMARTINIZING, which has been registered in Panama since 1966and used in the United States since 1950. Mardel, S.A. evidenceduse of the expression UNA HORA MARTINIZING since 1959 inPanama.

The plaintiff invoked the protection of the InteramericanConvention, denying the argument of the defendant of its use since1959, as such use was due to a franchise agreement between theprevious owner of the defendant’s trademark, Mr. Julio A. DeLeon, who in turn had assigned it to another company, which thenassigned it to Martin Franchises Inc.

The Third Superior Court, on appeal, confirmed the findings ofthe Ninth Circuit Court that the defendant’s alleged use was dueto the franchise agreement. Interestingly, although the case wastried after the issuance of the new Trademark Law, which containsexpress provisions as to the protection of notorious and famoustrademarks, as well as their translations, the case was not triedunder either of these bases, and the Court was constrained torendering a holding based on similarity without referring to eitherof the above-mentioned issues.613


Parfums Rochas, owner of MOUSTACHE registered in Classes3 and 21, which was used and registered before the defendant’strademark, successfully opposed the registration of MOUSTACHEof Industrias Catalina, S.A. for products in Class 25. Plaintiff’smain argument relied upon the practice of product diversificationof certain companies.

Since the defendant was not able to evidence a relationshipbetween the defendant and the owner of an expired MOUSTACHEregistration certificate that had issued in 1979 for Class 25products, the Third Superior Court, on appeal, found a connectionbetween products in Classes 3, 21 and 25, the latter being of thedefendant, and the Court found such connection determinative of

612. Cellular One Comunication, S.A. v. Cellular One Group Inc. and Cellular One

Group Inc. v. Cellular One Communication, S.A., Third Superior Court of the First JudicialCircuit, February 19, 2001.

613. Martin Franchises Inc. v. Mardel, S.A., Third Superior Court of the First JudicialCircuit, December 1, 2000.

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the extent of protection for the registered trademark, for thepossibility of diversification of products was already evidenced.614


Nu Skin International, Inc. unsuccessfully opposed theregistration of the trademark BY NUTRINE NUTRISKIN anddesign of Envasadora Comercial, S.A. for products in Class 3 onthe basis of the similarity of the mark with its trademark NUSKIN, also for products in Class 3, which has been registered since1997, as NUTRISKIN, a part of the defendant’s trademark, hasstrong similarity with the registered NU SKIN of the plaintiff. Onconfirming the first holding, the Third Superior Circuit Courtconsidered both trademarks to be weak trademarks, as they weresuggestive or evocative. The logical consequence of the use of aweak term as part of a trademark, pointed out the Court, is thatits owner can not forbid the use of that similar term, it being aword of common use in this type of products.615

Societé de Produits Nestlé, S.A. unsuccessfully opposed theregistration of CHOCOBON and design in Class 30 by Trans FoodInternational, S.A. upon a claim of similarity with its trademarkCHOCOBOLAS also registered in Class 30.

On confirming the holding of the Ninth Circuit Court, theThird Superior Court of the First Judicial District consideredCHOCOBOLAS to be an evocative term that suggests thecharacteristics of the product and its presentation, and for thesereasons is a weak trademark. Weak trademarks, established theCourt, entail the risk of sharing the evocative part of thetrademark with other trademarks, confirming the trend of thejurisprudence to allow coexistence of evocative terms.

In doing so, the Court did not diminish the fact that bothtrademarks had high level of similarities in their graphics,designs, trade dress and distribution channels.616

614. Parfums Rochas v. Industrias Catalina, S.A., Third Circuit Superior Court of the

First Judicial Circuit, February 23, 2001. The decision of the first Court was confirmed bythe Third Superior Court on the basis of similarity of the goods, establishing that far fromprotecting the interests of trademark’s owners, the aim of the trademark law is to protectthe rights of consumers to not being induced to make mistakes at the moment of buying aproduct, in our opinion an unfortunate and unnecessary reason for confirming the firstCourt’s, holding which incorrectly interprets the ratio or reason of the trademark lawagainst its first and main purpose, being the protection of trademark owner’s right, as therights of consumers are protected through other laws and mechanisms. Such reasoningcould lead to holdings against trademark’s owners in protecting consumer’s rights.

615. Nu Skin International, Inc. v. Envasadora Comercial, S.A., Third Circuit SuperiorCourt of the First Judicial Circuit, February 22, 2001. This case sets a criterion for weaktrademarks, enhancing the concept of the written law.

616. Societé de Produits Nestlé, S.A. v. Trans Food International, S.A., The ThirdSuperior Court of the First Judicial Circuit, February 23, 2001.

482 Vol. 92 TMR


L’Oréal successfully opposed the registration of BOREAL byCopamex Industrias S.A. de C.V. in Class 16 on the basis of thesimilarity of BOREAL with its L’ORÉAL mark registered inClasses 1 to 34 in many different countries, such as France, and onthe use of its L’ORÉAL trademark in French commerce prior to thedefendant’s use. The defendant argued that its products weredestined to be put to different use and were not related toL’ORÉAL products, as L’ORÉAL was known for cosmetics,whereas BOREAL was intended to identify paper towels and toiletpaper.

The Third Superior Court, on appeal, confirmed the firstdecision denying the registration of BOREAL in Class 16 based onthe possibility of confusion as to the origin of the products bearingthe trademark. In doing so, the Court echoed the doctrine ofseverely condemning the competitive parasitism of signs that enterthe market under the umbrella of the fame and prestige of otherwell-established trademarks, creating a sort of unfair competition.

Neither the plaintiff, nor the Court, addressed the issue ofL’ORÉAL being a famous trademark entitled to protectionexempting the specialty rule of comparison.617

Wizard Co. Inc. unsuccessfully attempted to oppose theregistration of AVIS CLUB in Class 25 by Las VegasInternacional, S.A. The Ninth Circuit Court decided that theplaintiff should have evidenced the fame or notoriousness of thetrademark AVIS to exclude the specialty rule. Wizard Co. Inc.appealed, arguing that it was the first to use AVIS in commerce, asit evidenced its use of the trademark since 1958, that the fame ornotoriousness of a trademark needed not be evidenced, as theseattributes are inherent to the knowledge and perception of thejudge.

The Third Superior Court of the First District Court, onappeal, confirmed the decision of the Ninth Circuit Court,expressly establishing that the notoriousness or fame of atrademark cannot be presumed or identified as being itself anotorious fact that is exempted from accreditation.

Furthermore, the Court went further to establish thatwhenever a plaintiff sustains the notoriousness or fame of atrademark and such point is resisted by the counterpart, suchplaintiff would have to evidence the notoriousness and fame of thetrademark, setting aside the personal knowledge of the judge.618

617. L’Oréal v. Copamex Industrias S.A. de C.V., Third Superior Court of the First

Judicial District, November 16, 2000.

618. Wizard Co. Inc. v. Las Vegas Internacional, S.A., Third Superior Court of the FirstJudicial District, December 11, 2000.

Vol. 92 TMR 483

III.F.2. Lapsing of Registration

The Third Superior Court reversed the holding of the EighthCircuit Court, which had denied the registration of AQUACRISTALINA and design of Aguas Cristalinas, S.A. for products inClass 32, the application for which had been filed on December 28,1998, over the registration of AGUA CRISTAL of Gaseosas PosadaTobon, S.A. and based on the untimely renewal or application forre-registration of a previous registration of AQUA CRISTALINAand design (AQUA CRISTALINA and design was registered inPanama as of April 29, 1988, and was due for renewal on April 29,1998). On reversing the previous holding that was based on thepossibility of confusion due to the similarity of the marks andproducts, the Third Superior Court quoted the criteria of theArgentinean author Jorge Otamendi, namely, that third partiescannot profit from the work and efforts behind a lapsed trademarkregistration and that in this case the new registration petitionwhich was really a re-registration could not be separated from theprevious prestige of the same trademark, establishing that “therecognition, prestige and commercial preference for a trademark isrelated to its owner per se and is not merely derived from theextinguished registration, but from the use given to the trademarkduring its life and even afterwards,” and not allowing unfaircompetition by having the defendant prove continuous use of thetrademark.

Article 110 of the Trademark Law allows for reregistration ofa lapsed trademark registration after six months and thereregistration was filed two months after such period.

The Court of Appeal also indicated that since the trademarkwas for use on nonalcoholic beverages, therefore being addressedin Panama to consumers with medium level of attention asopposed to trademarks addressed to consumers with low level ofattention, the comparative test rule is more flexible.619


Novo Nordisk A/S filed for the cancellation of the registrationof NAVOLIN of Kopharmon, S.A. for products in Class 5, allowingnonuse of the trademark for more than five consecutive years, andthe impossibility of registering its trademark NOVOLIN in thesame class due to the similarity of NOVOLIN with the registeredtrademark.

619. Gaseosas Posada Tobon, S.A. v. Aguas Cristalinas, S.A., Third Superior Court of

Justice of the First Judicial District, January 29, 2001. The case suggests that a lapsedregistration of a trademark in use can prevail over a new registered trademark, eventhough the previous registration has not been renewed.

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Novo Nordisk A/S evidenced its registrations in the UnitedStates, Denmark (since 1988 a signatory of the Paris Convention),Mexico, Spain and Australia.

On confirming the Eighth Circuit Court decision, the ThirdSuperior Court enforced Article 138 of the Trademark Law andcanceled the trademark registration for lack of use of theregistered mark for more than five consecutive years, as evidencedby certifications of the Panamanian Food and DrugAdministration.620

In the matter of the cancellation suit against the trademarkCREEK in Class 25 of Novedades Antonio, S.A. that was filed byRussell Corporation based on its trademark CROSS CREEK forproducts in Class 25, the Third Superior Court, on appeal,confirmed the Trademark Law rule that acquired trademark rightscan be challenged by means of timely cancellation claims, rejectingthe argument of defendant, because registration of a trademark,per se, does not carry the impossibility of being challenged bycancellation suits.

On confirming the cancellation of the trademark CREEK, theCourt established that the coexistence of both trademarks couldlead to the tarnishment of CROSS CREEK, which evidenced betterrights over CREEK with prior registrations in Panama (1990),Colombia, Brazil, Paraguay, Bolivia and Chile. The Courtaddressed the issue of tarnishment on its own initiative.621

PARAGUAY


A local applicant applied for registration of the trademarkPRPHIER and design in Class 34. This application was opposed bythe American firm, Phillip Morris Products Inc., based on itstrademark MARLBORO and design in the same class. TheDirector of the Trademark Office, as well as the Minister ofIndustry and Commerce, rejected the opposition. The opposingparty filed a judicial action with the Exchequer Court to revokeboth administrative decisions.622 The Exchequer Court reversedthe two administrative decisions stating that the design of theapplicant’s mark was confusingly similar to that of the opponent.In particular, the Court held that the colors were similar and could

620. Novo Nordisk A/S v. Kopharmon, S.A., Third Superior Court of the First Judicial

Circuit, March 14, 2001.

621. Russell Corporation v. Novedades Antonio, S.A., Third Superior Court of the FirstJudicial District, March 26, 2001.

622. Phillip Morris Products, Inc v. Eliyahu Nimio. Decision No. 190 dated May 28, 1998of Industrial Property Office and Decision No. 290 dated August 13, 1998 of Minister ofIndustry and Commerce.

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mislead consumers.623 Such decision was appealed by the applicantbefore the Supreme Court. The Supreme Court upheld theExchequer Court’s decision, stating that the design of trademarkMARLBORO owned by Phillip Morris is a famous trademark forthe products covered in Class 34 (cigarettes), and the coexistenceof other similar designs cannot be allowed as they could cause thedilution of the famous design.624


The American firm, Allergan, Inc., filed an appeal against theResolution of the Head of the Litigation Department, whichrejected its opposition against trademark ALMOGRAN in Class 5applied by Almirall Prodesfarma S.A. from Spain.625 Allergan, Inc.filed the opposition based on the phonetic and graphic similaritybetween its trademark ALLERGAN registered in Class 5 and thedefendant’s trademark ALMOGRAN filed in the same class.

The Director of the Trademark Office upheld the Resolution ofthe Head of the Litigation Department and rejected the oppositionfiled by Allergan, Inc. on the ground that both trademarks weredistinguishable enough in terms of pronunciation and appearancethat their coexistence in the market would not cause anyconfusion, despite the fact that both trademarks have some lettersin common. Besides, medicines are sold by pharmacists who knowvery well the slight differences between them, which haseliminated the risk of confusion.626

PERU


The Peruvian Administrative Court recently upheld theTrademark Office’s ruling627 in a trademark cancellation actionfiled by Leo Burnett Worldwide, Inc.628 The Court recognized thestrict protection of the proper name of foreign persons and foreigntrade names based on local substantive rules of trademark andcivil law.

Leo Burnett Worldwide, Inc. petitioned to cancel thetrademark LEO BURNETT and Logotype, registered in the nameof Peruvian company Publitel Publicidad & Marketing S.A., for

623. Exchequer Court. Decision No. 141 dated December 6, 1999.

624. Supreme Court. Decision No. 7 dated February 9, 2001.

625. Resolution No. 173 of the Head of the Litigation Department dated March 13, 2000.

626. Resolution No. 28 of the Director of the Trademark Office dated March 16, 2001.

627. Resolution No. 8552-2000/OSD-Indecopi, dated July 21, 2000. File No. 9981206.

628. Resolution No. 1288-2000/TPI-Indecopi, dated October 30, 2000. File No. 9981206.

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services in the nature of teaching and forum organization,seminars, congresses, courses and others in International Class 41.Leo Burnett Worldwide, Inc., claimed that the registrant appliedto register LEO BURNETT in Peru without the consent of theheirs and assignees of Mr. Leo Burnett. Mr. Burnett was a UnitedStates citizen and promoter of the plaintiff company which bearshis name. Plaintiff alleged that defendant had obtainedregistration of LEO BURNETT and Logotype taking advantage ofthe name of a known advertising company, which namecorresponds also to a natural person expert in advertisingactivities and founder of a prestigious company in the advertisingworld.

Registrant’s defense alleged that registrant had first adoptedthe mark LEO BURNETT as a trade name in compliance with aregulation issued by the Peruvian Education Ministry, whichprescribes that (1) in the event that names of persons are used toidentify an education institute, such names should refer todeceased distinguished persons related to the field of education;and (2) the adoption of the name LEO BURNETT as a trademarkwas not an act of abuse and, rather, complied with a legalrequirement aimed at paying tribute and homage to naturalpersons who had stood out in the fields of science and technology.Defendant argued that it should have the right to register themark LEO BURNETT in International Class 41 because it hadused the mark as a trade name to identify economic activitiesrelated to education and the local trademark provision629 onlyallowed the owner of a trade name to register the trade name as atrademark, and vice-versa.

Before passing a ruling, the Administrative Court demandedthat plaintiff, Leo Burnett Worldwide, Inc., prove its legitimateright to petition the cancellation of trademark LEO BURNETTand Logotype. For this purpose, plaintiff filed an affidavit executedby a direct heir of Leo Burnett, where the heir declared that hisfather, Mr. Leo Burnett, founded the company LEO BURNETTand never authorized, directly or indirectly, registration or use ofLEO BURNETT to the Peruvian registrant. It also proved that thenatural person LEO BURNETT authorized The Leo BurnettCompanies to use his name in their corporate name, and to hold allrights to the name and to have the exclusive use thereof, includingtrademarks and service marks. The evidence submitted by theplaintiff was sufficient to support the petition for cancellation ofthe trademark LEO BURNETT and Logotype.

The Administrative Court concluded that the evidencesubmitted by defendant demonstrated a real and effective use ofthe name LEO BURNETT as a trade name in the Peruvian market

629. Article 215, Legislative Decree 823 passed on April 23, 1996.

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for activities related to services of teaching and education in thefield of advertising, but that, nevertheless, the preferential rightgranted by the trademark legislation in favor of the owner of atrade name to register a trade name as a service mark would notprevail over the special protection that legislation grants to theowner of a proper name. The legislation provides that use orauthorization to use or register a proper name as a mark isreserved to the heirs of the name’s owner. The AdministrativeCourt found that the Peruvian owner of the registered servicemark did not prove that the company had the consent of the heirsof Mr. Leo Burnett to use the name as its trade name nor toregister it as a service mark, as required by law.

With respect to the scope of the regulation issued by thePeruvian Ministry of Education, which the Peruvian companyPublitel Publicidad & Marketing S.A. invoked to its defense, theCourt affirmed that this regulation does not constitute a specialrule authorizing use of a proper name as a service mark. TheCourt considered that although the regulation promotes use ofnames of prominent persons for education institutes and post-gradschools, it does not exempt applicants from obtaining the properauthorization from said persons or from their heirs when deceased,prior to filing or using a trade name reproducing or incorporatingthe famous persons’ names. The Court declared that authorizationto register a foreign name would only be required if such name isidentified by the majority of the national public, spontaneouslyand directly, as a particular personage different from applicant,and if such name has recognition and prestige in the countrywhere protection is sought.

The Court acknowledged that LEO BURNETT was the nameof a foreign civil person already deceased, recognized in theadvertising field, and, that consequently, in the absence ofauthorization from Mr. Leo Burnett’s heirs, registration of themark LEO BURNETT and Logotype in favor of applicant shouldnot have been granted. The Court sustained cancellation of themark.

In 1997 McDonald’s Corporation requested the cancellation ofthe registration for trademark MIDWAY and Logotype, whichconsisted of the imitation of the McDONALD’S Corporate Logodistinguishing restaurant services and others in InternationalClass 42. The Trademark Office sustained the cancellationaction.630

The arguments raised in the cancellation action differed fromthose that supported a previous opposition filed by McDonald’sCorporation against registration of MIDWAY and Logotype whichwas dismissed.631 McDonald’s Corporation had based the

630. Resolution No. 004367-1999/OSD-Indecopi, dated April 22, 1999. File No. 9753201.

631. Resolution No. 498-94-TDCPI, dated April 27, 1994. File No. 182009.

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opposition on the likelihood of confusion between trade namesMcDONALD’S and Logo and MIDWAY and Logotype and thenotoriety of the McDONALD’S marks registered in Peru. In thecancellation action on the other hand, McDonald’s Corporationraised the argument of confusion between MIDWAY and Logotypeand the McDONALD’S Corporate Logo registered in the UnitedStates. In addition, the design elements present in theMcDONALD’S marks that supported the opposition differed fromthe design elements comprised within the McDONALD’SCorporate Logo.

The Trademark Office sustained the petition for cancellationbased on (1) the recognition of notoriety of the McDONALD’SCorporate Logo at the time when registration of MIDWAY andLogotype was sought;632 (2) the finding that MIDWAY andLogotype constituted the imitation of McDONALD’S CorporateLogo, which contravened trademark law;633 and (3) registration ofMIDWAY and Logotype was a bad faith attempt to unduly takeadvantage of the positioning of the notorious mark in the market.The Trademark Office pointed out that the fact that MIDWAY andLogotype had been previously registered in the name of defendantdid not alter a finding of bad faith, considering that seniorityshown by plaintiff with regard to use of McDONALD’S CorporateLogo preceded registration of MIDWAY and Logotype.

PHILIPPINES


Respondent Cluett Peabody Co., Inc., a New York corporation,filed a petition for cancellation of petitioner’s mark GOLD TOP onthe basis of respondent’s registrations for the word mark GOLDTOE and several device marks.

The Supreme Court resolved three issues in deciding the case:(1) the dates of first use of the two trademarks, (2) confusingsimilarity, and (3) applicability of the Paris Convention.634

632. The Trademark Office considered the various evidence filed, including a great

amount of periodical articles and advertisements published in magazines and newspapers ofinternational circulation—also distributed in Peru—which predated the day on which theapplication for MIDWAY and Logotype was filed. This evidence showed that prior to thebeginning of the 1990s, the trade name McDONALD’S and Logo was already known inseveral countries, including Peru, though McDonald’s had not yet opened stores in thiscountry. Previous decisions issued by the Trademark Office had already declared notorietyof the McDONALD’S trademark.

633. The authority found that the trademark MIDWAY and Logotype and trade nameMcDONALD’S and Corporate Logo were easily confused: both shared a yellow arc with ared base containing white and yellow letters. Thus, the authority determined that the twocaused a very similar visual impression as a whole.

634. Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc., G.R. No. 139300,promulgated March 14, 2001.

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The Supreme Court first noted the dates of first use indicatedin respondent’s registrations. Since petitioner did not question thevalidity of respondent’s registrations, much less present proof of itsclaimed date of first use, the Court presumed the claimed dates offirst use of respondent were valid under Section 20 of the thenapplicable law (Republic Act No. 166). Republic Act No. 166provides that a certificate of registration is prima facie evidence ofthe validity of the registration, the registrant’s ownership of themark and his exclusive right to use it for the goods specified in thecertificate.

With regard to the issue of confusing similarity, the SupremeCourt sustained the findings of the Bureau of Patents and foundthat the mark GOLD TOP and device is confusingly similar to themark GOLD TOE. The dominant features of petitioner’s goods,just like respondent’s goods, are gold checkered lines against apredominantly black background and a representation of a sockwith magnifying glass. The type of lettering is the same and bothproducts contain the representation of a man’s foot wearing a sockand the word “linenized.” Finally, the word mark GOLD TOP issimilar to the word mark GOLD TOE.

The Supreme Court also addressed the applicability of theParis Convention. The Supreme Court said that because therespondent is domiciled in the United States which, like thePhilippines, is a member of the Paris Convention for the Protectionof Industrial Property, the respondent is entitled to protectionagainst infringement of its registered trademark.

PORTUGAL


Henkel KgaA appealed to the court against the decision of thePortuguese Industrial Property Office (“IPO”) of refusingprotection to their application for BRILLIANCE.635

Henkel argued that the expression brilliance has no meaningin Portuguese language and thus cannot constitute an indication ofthe quality of the product. Hence, it cannot be considered to bedescriptive.

L’Oréal, who was the opposing party in this case, argued thatwhat really matters is that the word brilliance is currently used todefine some characteristics of beauty and cosmetic products, andbeing a word commonly used, cannot be registered as a trademark.

635. International Registration No. 615.248 Brilliance (word) covering “Preparations for

the caring, washing, coloring, dyeing, bleaching, styling and perming of hair.”

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The Low Court636 held that the appeal filed by Henkel wasadmissible and reversed the decision of the IPO, thus grantingprotection to BRILLIANCE.

L’Oréal then appealed to the High Court637 which held that theword brilliance is easily associated with the idea of “brilhante”638

that identifies or means a quality of the products for whichBRILLIANCE is intended. The High Court furthermore held thatit can be stated that this is a merely descriptive sign in the field ofcommerce where the products covered by the mark involved areinserted. As this mark is exclusively constituted by such a sign,639

the High Court reversed the decision of the Low Court and refusedprotection to BRILLIANCE.


Lidl Stiftung & Co. KG. (Lidl) appealed the decision of thePortuguese IPO refusing protection to their mark TOMATOBOLOGNESE,640 on the ground of false indication of the origin ofthe products.

Lidl has subsequently limited the list of products of TOMATOBOLOGNESE to “all products of Italian origin and all includingtomato.”

The court641 held that, in view of the limitation filed, theground for the refusal was overcome and thus granted protectionto TOMATO BOLOGNESE.


Justerini & Brooks, Ltd. (JBL) appealed to the court againstthe decision of the Portuguese IPO that granted protection to thetrademark J.T.B.642 in the name of Caves Dom Teodósio, Lda.(Teodósio), on the ground of confusing similarity with their prior

636. Low Court, Industrial Property Bulletin No. 5/2001, dated August 30, 2001, p.

2141.

637. High Court, Industrial Property Bulletin No. 5/2001, dated August 30, 2001, pp.2141-42.

638. “Brilhante” is the Portuguese word for “brilliant.”

639. Article 79 ¶1, of the previous Industrial Property Code.

640. International Registration No. 627.623 covering Class 29 “meat extracts, meat,sausage, fish, fruit and vegetable preserves; preserved, dried and cooked fruits andvegetables; vegetable extracts in supplements for foods and meat; cooked meals essentiallymade of meat, poultry, game and vegetables, including rice and pasta” and in Class 30“cooked meals essentially made of rice and pasta, including meat, poultry, game andvegetables; sauces (condiments); spices, all these products of Italian origin and includingtomato.

641. Low Court, 16º. Juízo Cível, Industrial Property Bulletin No. 5/2001, dated August30, 2001, pp. 2144-45.

642. Portuguese Registration No. 224.816 J.T.B., covering “wines and eau-de-vie.”

Vol. 92 TMR 491

trademark registrations J & B643 and also based on the lack ofgrounds for the decision given.

The Low Court644 held that if there was any similarity, itconsisted in the phonetics of J.T.B. and J & B, but that theremaining elements, namely the graphic element 1945, included inthe J.T.B. mark would immediately indicate the existence of twodifferent products.

The court also held that the products covered by the marksinvolved—Scotch whisky and wine/eau-de-vie—do not have affinityand that J & B, being a mark internationally owned by JBL andknown in Portugal for whisky cannot mislead the consumer. As tothe lack of grounds for the decision given by the IPO, the courtheld that it was correctly grounded, as per attachment to theproceedings.

JBL then appealed to the High Court, maintaining thegrounds of the appeal filed at the Low Court, and also that thegraphic element 1945 is nondistinctive, as this will be understoodby consumers as the year of the production or bottling of the winesand eau-de-vie covered by J.T.B. Furthermore, JBL also arguedthat if 1945 does not indicate the year of production or bottling,then it is misleading as to the quality of the products covered.

Regarding the argument that the decision of the IPO lacksgrounds, the High Court645 held that these grounds did not apply.As regards the arguments that J.T.B. imitates J & B, that it couldoriginate unfair competition and could mislead consumers as tothe quality of the product, the High Court held that although therelevant graphic elements contained many elements in common,namely the letter J and the letter B, the phonetics of same aredifferent (Jai-Te-Be and Jai-Be or Jai-and-Be) and that thisphonetic difference prevails over the graphic similarity.

The High Court furthermore held that although the productscovered by the marks in question display affinity, the fact that J &B is widely known in Portugal and can even be considered a well-known mark contributes to putting aside any confusion with J.T.B.as well as the possibility of unfair competition. Regarding thepossibility of the consumer being misled as to the quality of theproduct regarding the indication 1945, the court held that it is notcompulsory that same refer to the year of production or bottlingand nothing prevents it from having another meaning.Furthermore, JBL does not affirm that 1945 does not correspond tothe year of production or bottling, but merely puts forward thispossibility.

643. Portuguese Registration Nos. 129.893 and 223.926, both covering “Scotch whisky.”

644. Low Court 12th Juízo Cível, Industrial Property Bulletin No. 1/2001, dated April30, 2001, pp. 6-7.

645. High Court 12th Juízo Cível, Industrial Property Bulletin No. 1/2001, dated April30, 2001, pp. 7-10.

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JBL subsequently appealed to the Supreme Court which heldthat, in particular, the products whisky and eau-de-vie displayobvious affinities and are intended to satisfy the same needs anddistributed through the same channels; that the graphic similarityheld by the High Court is sufficient per se to cause confusionamong consumers and may include the risk of association, asprovided for under the EU Directive; that the notoriety of the J &B mark, instead of reducing the risk of confusion, increases it. TheSupreme Court646 thus reversed the grant decision of the HighCourt and refused protection to J.T.B.

III.F.6. Dilution

Jaguar Cars Limited (JCL) appealed to court against thedecision of the Portuguese IPO that granted protection to anapplication for JAGUAR647 in the name of Jaguar—Sociedade deRepresentações, Limitada (JSRL), for services in Class 35.

JCL owns several registrations in Portugal for the JAGUARmark, alone or together with the design of a jaguar, or just for thedesign of the jaguar.

The court648 held that the conflicting marks partially coveredthe same products, at least with respect to “new articles, gifts andwatches,” and that the JAGUAR mark (belonging to JCL) hadacquired a reputation.

The court also held that the JAGUAR marks are immediatelyassociated with an idea of quality, luxury and refinement and thatthe use of this mark by a third party would unduly benefit fromthe distinctive character and reputation of this mark.Furthermore, any dissatisfaction with the third party’s JAGUARmark would be attributed to the registered JAGUAR marks, whichwould damage same.

REPUBLIC OF SOUTH AFRICA


In Cowbell AG v. ICS Holdings Ltd.,649 the Supreme Court ofAppeal considered the question of the likelihood of confusion ordeception in opposition proceedings based on Section 17(1) of the

646. Supreme Court 12th Juízo Cível, Industrial Property Bulletin No. 1/2001, datedApril 30, 2001, pp. 10-12.

647. Portuguese Trademark Registration No. 277.597 Jaguar covering “import andexport agencies and of businesses related to food products, books, magazines and otherpublications, tobacco and stationery, new articles, gifts, watches and photographicmaterial.”

648. Low Court, 10th Juízo Cível 1st Section, Case 494/99, dated May 21, 2001,Internet.

649. 2001 (3) SA 941 (SCA).

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Trade Marks Act No. 62 of 1963. ICS Holdings Ltd. (ICS) was theregistered proprietor of the trademarks DAIRYBELLE, DAIRYBELLE with cow device, and JERSEYBEL and cow device, all inClass 29, primarily for dairy products. ICS opposed Cowbell AG’sapplication for registration of the trademark COWBELL with cowand bell device, also for dairy products. The opposition was refusedby the Registrar of Trade Marks, but a subsequent appeal by ICSto the full bench of the High Court was successful.

Cowbell then appealed to the Supreme Court of Appeal. TheCourt had little difficulty in finding no aural or visual similarity,noting that cow devices are common features in relation to dairyproducts. It was on the question of conceptual similarity that theCourt overruled the decision that reasoned that a person who hadheard the one mark advertised on the radio would not, whenconfronted with the other in a supermarket, be astute enough todiscern that they are not the same or are not cows from the sameherd. The Court illustrated its point by saying that it is untenableto argue that because a Jersey may be a cow, JERSEYBELL andCOWBELL have the same semantic content and are, therefore,confusingly similar. If that were correct, it would mean that thename of any breed of dairy animal in conjunction with –BEL wouldrun foul of ICS’s marks. The Court reaffirmed that in the test forlikelihood of confusion or deception “likelihood” refers to areasonable probability, and that the issue must “be appreciatedglobally.” It also quoted from the European Court of Justice inSabel BV v. Puma AG, Rudolf Dassler Sport,650 stating that, albeitin the context of the interpretation of a European CommunityCouncil Directive, observations made in the Sabel case arepertinent to the issue, in particular that the likelihood ofassociation is not an alternative to that of likelihood of confusion,but serves to define its scope. The Court, in finding for Cowbell AGand refusing the opposition, concluded that ICS cannot lay claim tothe exclusive use of words having a dairy connotation ending in“-BELLE” or “-BEL” in relation to dairy products where the termsdo not form a dominant part of its marks, and do not have anyparticularly distinctive character. The Court then made theobservation “that is why Coca-Cola and Pepsi-Cola have been ableto exist side by side.”


In Bata Ltd. v. Face Fashions CC,651 the Supreme Court ofAppeal considered the question of whether Bata Ltd. hadestablished that a substantial number of persons would probablybe deceived or confused as to whether there is a material

650. [1998] RPC 199 (ECJ) at 223-24.

651. 2001 (1) SA 844 (SCA).

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connection in the course of trade between the clothing of FaceFashions CC sold under the trademark POWER HOUSE and BataLtd.’s trademark POWER. The Court applied the well-acceptedprinciples for comparing trademarks in infringement proceedingsas established in Plascon-Evans Paints Ltd. v. Van RiebeeckPaints Ltd.,652 and also referred to the similar approach adopted bythe European Court of Justice in Sabel BV v. Puma AG RudolfDassler Sport,653 where it was said that the likelihood of confusionmust “be appreciated globally” and that the “global appreciation ofthe visual, aural or conceptual similarity of the marks in questionmust be based on the overall impression given by the marks,bearing in mind, in particular, their distinctive and dominantcomponents.”

In applying the aforementioned test, the Court took intoaccount the evidence that established that there are numeroustrademark registrations in South Africa for clothing thatincorporate or include the word “Power,” which is an ordinary wordin everyday use, as distinct from an invented or made-up word.The Court, in comparing the marks, concluded that the commonelement is of minor significance when the marks are looked at as awhole, and that the word “House” in Face Fashions CC’s mark isas significant as the word “Power.” The two words used togethersufficiently distinguish POWER HOUSE from POWER.

The Court also had to consider whether POWER HOUSE wasidentical or similar to POWER for purposes of infringement interms of Section 34(1)(c) (the antidilution provisions). As Section34(1)(c) applies notwithstanding the absence of confusion ordeception, the test for similarity is without reference to thelikelihood of confusion or deception. The Court concluded that“similar” in this context should not be given too wide or extensivean interpretation, and that the appropriate meaning for similar is“having a marked resemblance or likeness.” The Court concludedthat while POWER HOUSE might possibly be regarded as havinga slight or superficial resemblance to POWER, the likenessbetween the two is not sufficiently close or marked to be similar forpurposes of Section 34(1)(c).

In National Brands Ltd. v. Blueline Manufacturing (Pty)Ltd.,654 the Supreme Court of Appeal had to determine whetherthe trademark ROMANTIC DREAMS of Blueline Manufacturingwas likely to cause confusion or deception with the trade markROMANY CREAMS of National Brands. The goods were identical,being biscuits (cookies). The court, therefore, concentrated on thealleged visual similarities between the marks. National Brands

652. 1984 (3) SA 623 (A).

653. [1998] RPC 199.

654. 2001 (3) SA 563 (SCA).

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had stressed that the first and last five letters of both marks areidentical and while conceding that the resemblance is impressivewhen the features are highlighted, the Court stressed that it mustbe borne in mind that in fair and normal use National Brandswould not highlight those letters, and there was no suggestion thatBlueline Manufacturing had done so. The Court accordinglycompared the words as they are ordinarily written, finding that aword mark, and particularly one that makes use of ordinarylanguage, is not merely a combination of abstract symbols but isusually recognizable as a whole and for what it conveys, and, inthat respect, its visual appearance cannot be separated altogetherfrom its sense. The Court concluded that the visual distinctionsbetween ROMANTIC DREAMS and ROMANY CREAMS, bearingin mind too that each immediately conjures up a different picture,are such that there is not likely to be deception or confusion ascontemplated by Section 34(1)(a).

The Court also had to consider whether the marks are“identical or similar” for purposes of Section 34(1)(c) (anti-dilution)infringement. The Court adopted the Bata Ltd. test discussedabove, and added that “marked” means “easy to recognise,” andconcluded that ROMANTIC DREAMS was not similar toROMANY CREAMS for purposes of Section 34(1)(c).

RUSSIAN FEDERATION

III.A.15. Deceptive Use

In 1998, ZAO BS, a Russian company, registered thetrademarks DISCARDIT and PLASTIPAK for various medicalequipment and instruments. It then filed a suit for trademarkinfringement against another Russian company, ZAO Garant,which was importing and distributing disposable syringesmanufactured by Becton Dickinson and Company and its affiliates.

Becton Dickinson filed a cancellation action with the AppealsChamber of Rospatent arguing that ZAO BS’ registration of theDISCARDIT and PLASTIPAK trademarks is misleadingconsumers as to the source of goods and the manufacturer, sinceBecton Dickinson’s syringes sold under those marks had beenavailable in the Russian market for at least a decade. Thus use ofthe marks by anyone other than Becton Dickinson or itsauthorized distributors may cause consumer confusion. The claimwas rejected and the appeal with the Supreme Patent Chamber isnow pending.

At the same time, in the court action in the MoscowArbitration Court, ZAO BS initially lost. The judge relied on thefact that ZAO BS, though having registered the trademarks, neverstarted manufacturing the goods covered by the trademark

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registrations for the DISCARDIT and PLASTIPAK trademarks.Instead, ZAO BS approached Becton Dickinson and itsdistributors, demanding compensation for their continued use ofthe marks in Russia. Meanwhile, Becton Dickinson had obtained aregistration for its products sold under the names of DISCARDITand PLASTIPAK from the relevant medical authorities in theRussian Federation in 1989. It continued to renew the productregistration, which is a prerequisite to the ability to legitimatelydeal in the products. Becton Dickinson’s syringes with thetrademark in question had been continuously present in the localmarket in sizable quantities throughout all the years preceding thefiling of the lawsuit.

ZAO BS, on the contrary, had never attempted to register theproducts with the medical authorities. Also, its business licensedid not show that it was authorized to manufacture syringes, butonly that it was licensed to sell medical equipment andinstruments. The samples of the syringes it produced in courtshowed that the syringes were produced by a different company.Only the outer packaging was marked with a sticker showing thedisputed trademarks.

These facts allowed the judge to conclude that ZAO BS hadfailed to demonstrate that its trademark registrations wereobtained with a bona fide intent to use the trademarksDISCARDIT and PLASTIPAK. On the contrary, the facts showedthat the sole purpose of obtaining the trademark registrations wasto interfere with the business of Becton Dickinson and itsdistributors to demand compensation for withdrawing thatinterference. This behavior constituted an abuse of rights underthe Russian Civil Code, which provides that the protection oftrademark rights may be denied if the court finds that such rightshave been abused by their holder.655

SINGAPORE


Rainforest Café Inc. was the registered proprietor of theRAINFOREST CAFE trademark in Singapore in Class 42 forrestaurant and nightclub services. The Nasdaq-listed restaurantchain, operating in the United States and abroad, featured arainforest theme incorporating elaborate jungle props completewith animation and sound effects.

In 1997, Rainforest Café Inc. signed a franchise agreementwith a Master Franchisee for Southeast Asia. However, the

655. OOO BS v. ZAO NPO Garant (Becton Dickinson and Company third party on theside of the defendant); Moscow Arbitration Court, Case No. A40-44927/01-83-534, decidedJanuary 23, 2002 (unpublished).

Vol. 92 TMR 497

franchise operation had not begun in Singapore in 1999 when atrademark infringement suit was commenced by Rainforest Caféagainst a local café, Rainforest Coffee Products Pte Ltd.

The High Court ruled that Rainforest Coffee Products Pte Ltd.had infringed the trademark by using the word RAINFOREST onits invoices and signage without authorization. The application byRainforest Coffee Products Pte Ltd. to revoke the registeredtrademark was also dismissed.

An appeal filed by Rainforest Coffee Products Pte Ltd. wasalso dismissed by the Court of Appeal. The appellant did notappeal against the trial judge’s finding of infringement, butinstead appealed on issues pertaining to rectification of therespondent’s mark. Specifically, the issues on appeal were asfollows: the respondent could not sustain an action forinfringement as it had no intention to use the mark; therespondent’s mark should be revoked for nonuse; the appellantwas a bona fide user of the mark; and the respondent’s markshould be canceled for lack of distinctiveness.

On the first issue, the Court held that the fact that therespondent intended to use its trademark through a franchise or asub-franchise agreement that had yet to be concluded, did notmean that the respondent had no intention to use the mark at thetime of registration. Instead, the respondent had a bona fideintention to use the mark as evidenced by preparatory steps takenwith regard to a franchise operation in Singapore.

The Court also held that the appellant’s contention that therespondent was trafficking in the trademark was without merit, asthe respondent was not dealing in the mark as a commodity in itsown right. The mark was being used to identify and promote aservice, that is, the restaurants of the respondent.

With regard to the second issue, the Court decided that therespondent’s mark may not be revoked for nonuse. The Courtstated that the prerequisite period of five years of nonuse ran fromthe date of application, which was deemed to be the date ofregistration. Because the application was only filed in October1995, the five-year period had yet to elapse, therefore, theallegation of nonuse was premature.

With regard to the third issue, the Court ruled that on thefacts the appellant’s choice of the trade name Rainforest was bonafide. However, the appellant would have to use its full corporatename in order to avoid infringing the respondent’s trademark andto avail itself of the defense of bona fide use of one’s name.

Finally, the Court ruled that the trademark had no directreference to the character or quality of the restaurant servicesprovided by the respondent. The Court stated that the ambit of theterm “services” had to be construed generally to cover restaurantservices and not restrictively to cover restaurant services with a

498 Vol. 92 TMR

certain theme. As RAINFOREST was hardly descriptive ofrestaurant services, the mark was inherently adapted todistinguish the respondent’s services from those of others.656

III.A.4. Disclaimers

The plaintiff, Super Coffeemix Manufacturing Ltd., was theregistered proprietor of the SUPER and DEVICE COFFEEMIXtrademark with a disclaimer on SUPER in Part B of the Registerfor coffee. The plaintiff’s main product was a 3-in-1 instant coffeemix, made up of coffee, sugar and non-dairy creamer, sold underthe mark SUPER COFFEEMIX.

The defendants, Unico Trading Pte Ltd., were distributors andmanufacturers, respectively, of INDOCAFE coffee products. Theyalso had a registration for INDOCAFE in Part B of the Register forcoffee.

The first defendants began marketing a 3-in-1 coffee mixunder the trademark INDOCAFE, which also bore the additionalword COFFEEMIX.

The plaintiff brought an action for trademark infringementand passing off against the defendants, who counterclaimed toexpunge the plaintiff’s mark or to impose a disclaimer on the wordCOFFEEMIX on the ground that the word was descriptive of thenature of the product.

The trial judge dismissed the claims of both the plaintiff anddefendants. On appeal, the Court of Appeal held that althoughdescriptive, COFFEEMIX could be used as a trademark. IndeedPart B of the Register was intended to cater to such descriptivemarks. The respondents had used COFFEMIX in the trademarksense as the word was prominently presented on the respondents’packaging bigger than any other words on the package.

The respondents had therefore infringed the appellants’ markby using the word COFFEEMIX, which was an essential feature ofthe appellants’ mark. However, no injunction was granted to theappellants, pursuant to Section 46(2) of the Trade Marks Act forthe infringement of their Part B registration, as there were cleardifferences between the designs of the parties’ packaging and theindividual sachets containing the product, so that there was nolikelihood of confusion.

The Court also dismissed the claim of passing off. Although,the appellants were able to show goodwill in the composite markSUPER COFFEEMIX, there was insufficient evidence that thepublic regarded COFFEEMIX alone as the mark that linked theproduct to the appellants. As COFFEEMIX was indeed adescriptive word, a high burden was placed on the appellants toshow that the mark had become distinctive of their product.

656. [2000] 2 SLR 549.

Vol. 92 TMR 499

Accordingly, even the minor differences were sufficient todistinguish the marks.

Finally, the Court found that COFFEEMIX was descriptive asthere were other manufacturers selling coffee using the termcoffeemix. The appellants thus had no monopoly to the wordcoffeemix. The Court also ordered that the appellants’ trademarkregistration be rectified by the inclusion of a disclaimer ofCOFFEEMIX.657

III.A.22. Trade Dress

The plaintiff, Alteco Chemical Pte Ltd., is a Singaporecompany, manufacturing super glue in small tubes. The plaintiffsold super glue in what was called the SG-12 get-up (“trade dress”)which comprised tubes mounted in sets of twelve on a hangingrectangular display card with perforations to form twelveindividual sections called “tube cards.” The plaintiff ownedtrademark registrations for the tube-card designs.

The defendant, Yamayo Stationery Manufacturer,manufactured and sold super glue in a similar get-up using tubecards. The plaintiff sued for, inter alia, trademark infringementand passing-off.

The Court found that the essential features of the plaintiff’strademarks were blatantly copied by the defendant. The Courtrejected the defendant’s defense that the alleged infringing goodswere not marketed in Singapore, but were only exported. Thecause of action for trademark infringement was established by theact of copying and using the marks. As such, the trademarks wereinfringed.

Further, the Court distinguished copyright and trademarkinfringements from passing-off. In the former, it was infringement(i.e., copying and using the mark) while the latter involved“deception” or “misrepresentation.” The Court applied the“classical trinity of essentials” of a passing off action, namely,reputation or goodwill acquired by the plaintiff, misrepresentationand likelihood of consequent damage. The Court took the view thatgoodwill could be established either by showing actualcommencement of business or by showing a demand for theplaintiffs’ product even though actual trading has not begun.

Finally, the Court inferred from the circumstances that thedefendant’s misrepresentation was likely to lead to deception. Itfound that the defendant substantially imitated the plaintiff’s get-up such that the plaintiffs were likely to suffer loss if thedefendant continued to use the current get-up. It was irrelevantthat the defendant did not sell the goods in Singapore. So long asthe manufacturing and exportation of the offending get-up took

657. [2000] 3 SLR 145.

500 Vol. 92 TMR

place in Singapore, there was passing-off. The plaintiffs weretherefore granted their injunction.658


Both the plaintiff, Nippon Paint (Singapore) Co. Pte Ltd., andthe defendant, ICI Paint (Singapore) Pte Ltd., manufacture andmarket a range of paints under their corporate names inSingapore. The plaintiff adopted and began selling its wall paintunder the mark “3 in 1” in February 1995. In October 1999,however, defendant adopted the mark “Supreme 3 in 1” inconnection with interior wall paint. Plaintiff claimed that thedefendant was passing off, attempting to pass off, or assistingothers to pass off a new interior wall paint under the name of“Supreme 3 in 1” as a paint associated with the plaintiff’s interiorwall paint. Consequently, plaintiff prayed for an injunction fordelivery and destruction of defendant’s offending paint product oran order for the obliteration of the offending mark “Supreme 3 in1” from the defendant’s products. Plaintiff also sought damagessuffered or, at the plaintiff’s option, an accounting of profits.

In support of its claim of passing off, the plaintiff asserted thatit first introduced a “3 in 1” multipurpose interior wall paint inSingapore and had acquired goodwill and distinctiveness in thetrademark “3 in 1” since its launch. plaintiff’s acquireddistinctiveness in its mark was supported by its expenditure onadvertising and promotion thereof, which totaled $9,840,000 from1995 to October 1999. Moreover, the plaintiff highlights that thedefendant had disparaged the plaintiff’s paint by warningcustomers to be cautious as to claims of multi-purpose interiorpaint, prior to launching its own “Supreme 3 in 1” paint.

The damage caused to plaintiff as a result of defendant’s use ofthe mark “Supreme 3 in 1” was evident in its diminished marketshare. Evidence was adduced to show that plaintiff’s market sharewith respect to interior wall paint had decreased from 56.64percent before the defendant had launched its “Supreme 3 in 1”paint, to 42.16 percent in 2000, a year after that launch.

The defendant refuted all of the plaintiff’s allegations andcontended that the phrase “3 in 1” could only be used in adescriptive or generic sense, and not in a trademark sense, asmany manufacturers have used it to promote various products.Defendant also asserted that its interior paint was sold under thenames “ICI Dulux Supreme 3 in 1,” “Dulux Supreme 3 in 1” or“Supreme 3 in 1 from ICI Dulux” which did not resemble the name“Nippon Paint 3 in 1.” They further pointed out that the “Supreme3 in 1” get-up was colorful compared to that of the plaintiff, thusclearly distinguishing the two brands of paint.

658. [2000] 1 SLR 119.

Vol. 92 TMR 501

After considering the evidence adduced before it, the HighCourt held that the expression “3 in 1” was generic, and the “3 in1” mark on the plaintiff’s interior wall paint was an indicia orreference to the inherent qualities of the paint. The High Courtdeemed that the plaintiff had failed to prove that “3 in 1” hadacquired a secondary meaning, and that goodwill thereby attachedto it. This was attributed mainly to the fact that the plaintiff hadnot used the name “3 in 1” in isolation, but had consistentlymarketed, advertised and sold its paint as “Nippon Paint 3 in 1.”The High Court highlighted that the defendant’s mark “3 in 1” didnot cause any damage to the plaintiff as it had built up its ownreputation in the mark “3 in 1” as used on its “wash and wear”label. The plaintiff had acquiesced when the defendant adoptedand used the “3 in 1” mark on its “wash & wear” brand fromOctober 1996.

Upon assessing the evidence on whether the defendant hadmisrepresented that its paint was connected to that of the plaintiff,the Court held that there was no misrepresentation and that therewas no possibility of confusion arising between “Nippon 3 in 1” and“ICI Dulux Supreme 3 in 1.” This conclusion was arrived at bycomparing the get up of both paints as well as the fact that theword “Supreme” on the “ICI” can before the mark “3 in 1’”constituted a differentiation between the two brands.

Further, as it had been agreed that 80 percent of paint saleswere to contractors who were habitual users of paint, the Courtdeemed it unlikely that they would mistake one brand over theother.

Given that the plaintiff had failed to establish goodwill in thename “3 in 1,” any misrepresentation on the part of the defendantand any resulting public confusion, it was held that no issue ofdamages arose.

The plaintiff’s claim for passing off was accordingly dismissedin its entirety.659


Sime Darby Edible Products Ltd. (“Sime Darby”) is theregistered proprietor of the SPOONS BRAND and devicetrademark. The device in the mark consisted of two spoonsarranged in the form of an X. The mark was registered in Class 29for vegetable ghee being an edible oil for export to and sale in theMiddle East and Africa. The respondent, Ngo Chew Hong EdibleOil Pte Ltd. (“Ngo”), is the registered proprietor of the ROYALSPOON word mark, which was also registered in Class 29 foredible oils and fats. Sime Darby’s mark was registered earlier thanNgo’s mark.

659. [2001] 1 SLR 1.

502 Vol. 92 TMR

Sime Darby relied on the following grounds for invalidation ofNgo’s registration under Section 23 of the Trade Marks Act 1998(Cap 332): that Ngo’s trademark was registered despite beingdevoid of any distinctive character; and that Ngo’s trademark wasregistered despite its being similar to Sime Darby’s earlier markand that there existed a likelihood of confusion on the part of thepublic due to the similarity between the marks.

The Court dismissed Sime Darby’s application on bothgrounds. Based on the principles expounded in British Sugar plc v.James Robertson & Sons Ltd.,660 it was held that the word ROYALwas well known and commonly used as a laudatory term to conveyto the public a sense of superior quality. Further, the wordsROYAL and SPOON were held to be descriptive words designatingthe quality of the goods and the physical nature or characteristic ofedible oil in a kitchen respectively. The Court felt that should amark consist exclusively of the word ROYAL or SPOON, it wouldbe devoid of any distinctive character.

However, based on the decision in Froot Loops trademarks661

where a mark consisting of two words in combination wasconsidered, the Court found that the mark ROYAL SPOON wouldbe a wholly inappropriate phrase for edible oils or vegetable ghee.Accordingly, it was held that Ngo’s mark ROYAL SPOON was notdevoid of distinctive character.

With regard to the second ground of invalidity relied on bySime Darby, it was not disputed that the parties’ marks were bothregistered in respect of similar if not identical goods and that SimeDarby’s mark was an earlier mark. However, upon comparison ofthe two trademarks and taking into account all the circumstancesof the case, it was held that the two marks were not similar andthere did not exist any likelihood of confusion on the part of thepublic.

Finally, the Court found that the two trademarks looked andsounded different, and one feature of Sime Darby’s mark thatstood out was the device consisting of two spoons arranged in theform of an X. Therefore, the Court held that since there was nosimilarity in the marks, Sime Darby’s application was alsodismissed on the second ground.

Sime Darby has appealed to the Court of Appeal.662

III.G. Post Registration Evidence ofUse and Renewals

The applicant, NV Sumatra Tobacco Trading Co., applied toregister its mark DOUBLE HAPPINESS for tobacco products and

660. [1996] RPC 281.

661. [1998] RPC 240.

662. [2000] 4 SLR 360.

Vol. 92 TMR 503

accessories. The application was objected by the Registrar of TradeMarks on the ground that it was similar to a registered trademarkDOUBLE HAPPINESS for the same type of goods owned by therespondent, Nanyang Brothers Tobacco Co. Ltd.

In turn, on August 31, 1998, the applicant filed an originatingmotion for an order that the Register of Trade Marks be rectifiedby expunging the respondent’s mark pursuant to Trade Marks ActSections 40(1)(a) and 40(1)(b).663 The applicant claimed that therespondent had registered the mark without bona fide intention touse it and that there had been no bona fide use of the mark for acontinuous period of five years or longer, up to the date one monthbefore the date of the rectification application. The applicantadduced evidence that a private investigator had conducted tworounds of market surveys, investigations and telephone inquiriesbetween October 1997 and July 1998 concluding that therespondent’s mark was not used on the relevant products inSingapore for at least five years up to the conclusion of the secondsurvey.

The respondent claimed that it had made bona fide use of theirmark during the specified period in Singapore and producedevidence that cigarettes bearing the mark were sold in Singaporein 1996 at DFS outlets at Changi International Airport but only100,000 sticks of cigarettes were put up for sale as the salesperformance was poor.

Having examined the provisions of Section 40 of the TradeMarks Act, the High Court held that a rectification applicationunder Section 40(1)(a) requires an applicant to prove that, first,the original registration of the mark sought to be expunged wasregistered without the person applying having bona fide intentionto use the mark and secondly, that there had in fact been no bonafide use of the mark after registration. The Court distinguishedsuch an application from an application made under Section40(1)(b), which requires proof that there had not been bona fideuse of the mark for a continuous period of five years up to the dateone month before the date of the rectification application.

With respect to burden of proof, the Court concluded that someevidence of bona fide nonuse is sufficient on part of the applicantsince the respondent as registered proprietor was in a betterposition to prove use of the mark. The evidential burden of proof,therefore, shifts to the respondent defending the application whenthe applicant has given some evidence of nonuse, but the ultimatelegal or persuasive burden of proof still lies on the applicant. If atthe end, the evidence is even either way, the applicant should betreated as not having discharged the burden of proof and theapplication must fail.

663. Cap 332, 1992 ed.

504 Vol. 92 TMR

Turning to the meaning of “bona fide use,” the Court held thatthe primary meaning of “bona fide” in Section 40 (1)(b) of theTrade Marks Act was “genuine,” not “fictitious,” “pretended” or“colorable” use. There is no rule that the use of a trademark had tobe continuous or must be substantial as the circumstances ofregistered proprietors vary from one to another and thecircumstances of a particular proprietor vary from time to time.The proprietor of the trademark does not lose his right to the markif he did not make continuous use of it, although it is easier to seethat the use was bona fide if the mark was more substantially usedin a commercial manner.

In examining the evidence before it, the Court concluded thatthe applicant had not discharged the ultimate burden of proof thatthere had been no bona fide use by the respondent of the registeredtrademark within the specified period, even though the applicant’sinitial findings had indicated lack of use by the respondent. Thiswas attributed to evidence adduced by the respondent that goodsbearing their trademark had been sent to Singapore for sale in1995 and 1996 and out of the consignment of goods sent, 100,000sticks of cigarettes were put up for sale at DFS outlets in ChangiInternational Airport and were sold to the public. Even though theamount of goods bearing the mark that were sold was not large,the individual sales of tins of cigarettes to many differentconsumers satisfied the criteria of bona fide use. The transactionbetween DFS Singapore and the respondent’s main distributor wasa genuine transaction and there was no reason to suspect that thegoods had been put up for sale just for the purpose of maintainingthe mark. Additionally, the respondent had explained that it wasre-evaluating its overall sales and marketing strategy as well asthe legal restrictions placed on the advertising and sale of tobaccoproducts in Singapore. They genuinely intended to offer theirproducts on a larger scale in Singapore in the foreseeable future.

Because the applicant failed to establish no bona fide use bythe respondent of its registered mark, it was also unable toestablish the requirement of no subsequent bona fide use and tothereby invoke Section 40(1)(a) Trade Marks Act as a basis torectify the Trade Marks Register.

The application was accordingly dismissed.664

III.M. Licensing Issues

Monarch Co, Inc. (“Monarch”) owned the registeredtrademarks KICKAPOO and KICKAPOO JOY JUICE inSingapore for nonalcoholic beverages. Monarch’s predecessors hadlicensed National Aerated Water Co. Pte Ltd. (“NAW”) tomanufacture and sell carbonated bottled drinks under the

664. [2001] 1 SLR 197.

Vol. 92 TMR 505

KICKAPOO JOY JUICE trademark in Singapore and Malaysia.The license was immediately terminable by Monarch should NAWuse any syllable or part of the term KICKAPOO JOY JUICE onany goods not belonging to Monarch.

NAW began selling and distributing a soft drink called KICKfor a third party. Monarch subsequently terminated the license.NAW continued to bottle and sell KICK and KICKAPOO JOYJUICE soft drinks.

Monarch commenced an action for breach of contract,infringement and passing off of its KICKAPOO JOY JUICEtrademark by reason of the continued use of the mark by thedefendant despite the termination of the license.

NAW contended that the prohibition against using anysyllable of KICKAPOO JOY JUICE was an illegal restraint oftrade, thus rendering the contract void and unenforceable.

Monarch succeeded before the High Court and the Court ofAppeal, which dealt mainly with the restraint of trade issue. TheCourt of Appeal considered whether the clause was a restraint oftrade; the restraint was reasonable; and the doctrine of severanceapplied to salvage the unreasonable restraint.

The Court stated that the agreement went beyond merelicensing, as it restricted NAW’s freedom to trade or sell beveragesthat fell within the criteria of the restraint clause. Therefore,although the restriction was part of the consideration for using theKICKAPOO JOY JUICE trademark, there was a restraint oftrade.

The Court was troubled that the restriction extended to thewords JOY and JUICE. Indeed, these were the two commonEnglish words that Monarch had been required to disclaim anyexclusive right to use separately when seeking registration of thetrademark. The Court would not enforce a restraint that wentbeyond what was reasonably necessary to afford adequateprotection to the legitimate interests of the covenantee. The factthat the parties had freely entered into the restraint wasirrelevant as the rule against unreasonable restraint was based onpublic policy and may not be excluded by mutual consent. As such,the restraint was held to be ex facie unreasonable.

The restraint was intended to cover any of the syllablescontained in KICKAPOO JOY JUICE. As such, there weredistinctive and separate restrictions in respect of each of them.The removal of the two words JOY JUICE would not change thenature of the covenant and would in fact bring the protectionwithin the legitimate ambit of the proprietary interest in thetrademark. Therefore, the Court invoked the doctrine of severanceto sever merely JOY JUICE from the objectionable clause, thusleaving the rest of the contract valid and enforceable.

506 Vol. 92 TMR

The Court also upheld the trial judge’s ruling that NAW hadbreached the license agreement and had infringed and passed offMonarch’s trademark, as NAW’s continued use of the trademark,following Monarch’s proper termination of the license, had notbeen authorized.665

SPAIN


On October 4, 2000, the Provincial Court of Appeals ofValencia issued a judgment666 in the appeal filed by the Spanishcompany Researching and Artistics Creation, S.L. (the Appellant),owner of two national registrations for the mark TOSTITOS and adistributor of corn-based snack foods, against Pepsico Inc. andRecto Inc. (the Appellees). The registrations in question consistedof the word element TOSTITOS and a design featuring Aztecsymbols.

The Appellant had registered the trademarks TOSTITOS inSpain in June 1995, and these registrations served as grounds forthe rejection of the later trademark applications filed by Pepsico.Following such rejection, Pepsico instituted an invalidation actionagainst the Appellant’s marks before the Court of First Instance ofValencia. Said Court ruled in favor of Pepsico,667 deeming that itheld superior rights in the TOSTITOS trademark and design andthat Researching’s use of said marks infringed Pepsico’strademark rights. Consequently, the Court declared Researching’sregistrations for TOSTITOS invalid. The appeal filed byResearching against the judgment was dismissed in full.

The Provisional Court of Appeals of Valencia held that theAppellees were clearly the owners of a number of trademarks forTOSTITOS in a number of countries, in which the mark hadacquired a high degree of notoriety for the same corn-based snackgoods sold by the Appellant. The Court took into considerationneither the fact that the Appellees had not used the mark inSpain, nor the fact that the mark was not well known in Spainwhen the Appellant filed its marks. Pursuant to Article 6 of theParis Convention, the Court held that the relevant notoriety of atrade name (and therefore, a trademark) was the one in thecountry of origin, not in the country where protection is sought.Moreover, the Appellees duly evidenced their copyright in the sign

665. [2000] 2 SLR 24.

666. Provincial Court of Appeals of Valencia, decision dated October 4, 2000, No.745/2000.

667. Court of First Instance of Valencia, decision dated September 30, 1999, No. 701-97.

Vol. 92 TMR 507

element accompanying the TOSTITOS word element in theinvalidated trademark registrations.

III.D.2. Criminal Actions

On June 30, 2001, the Provincial Court of Appeals ofSaragossa issued a judgment668 in the appeal lodged by TheTimberland Company against Mr. Gonzalo Vicente Gaspar, soleadministrator of the shoe manufacturer Sladan Manufacturas, S.L,whereby Mr. Vicente Gaspar was sentenced to a six-month prisonterm and ordered to pay damages to the appellant.

The facts of the case are as follows: after detecting the sale ofcounterfeit shoes bearing the TIMBERLAND mark in a streetmarket in Gerona, The Timberland Company filed a complaintwith the Civil Guard detachment in Gerona. On the same day, theCivil Guard seized a number of shoes falsely bearing theTIMBERLAND mark in a street market, and criminal proceedingsagainst the street vendor were instituted by the Court of Gerona.The preliminary inquiries revealed that the seized footwear hadbeen manufactured by Sladan Manufacturas, S.L. and had beensold to the street vendor by the sole administrator of saidcompany. The judge issued a warrant to search the premises ofSladan Manufacturas, S.L. When the order was carried out,additional shoes bearing the TIMBERLAND mark were seized. Inthe first instance proceedings, the Court acquitted the defendant,maintaining that in order to apply Article 274.1 of the PenalCode,669 not only must there be unauthorized and willful imitation,but also the use must be on goods or services similar to thegenuine goods or services, so as to cause confusion amongconsumers. The Court ruled that, since the goods falsely bearingthe TIMBERLAND mark were being sold in a street market,where consumers are aware that the goods sold are not authentic,the acts committed by the defendant should not be considered acriminal offense, but rather merely an act subject to thejurisdiction of the civil courts and payment of damages.

The Timberland Company lodged an appeal against thedecision with the Provincial Court of Appeals of Saragossa, and thePublic Prosecutor’s Office intervened in the appeal. In thejudgment, the Court decided in favor of The Timberland Company,overturning the first instance decision. In this decision, the Courtheld that the defendant’s conduct should be subject to criminaljurisdiction, maintaining that the fact that the infringing goodswere sold in a street market did not necessarily preclude confusionamong consumers as to the origin of the goods, given that,

668. Provincial Court of Appeals of Saragossa, decision dated June 30, 2001, No.

290/2001.

669. Organic Law 10/1995 of November 23, 1995.

508 Vol. 92 TMR

according to the court, street market vendors not only sellinfringing goods but also genuine surplus stock or marked-downgoods.

The Court’s decision is final.

SWEDEN


A German company, asia-med Gesellschaft fürAkupunkturbedarf mbH & Co. KG, applied for an InternationalRegistration as per the Madrid Protocol of a combined word anddevice mark containing the words “asia med” for goods andservices in Classes 10, 16 and 41. Sweden and several othercountries were designated.

The Swedish Patent Office found that the mark was likely todeceive the public in view of the word ASIA indicates ageographical origin while the applicant is a German company.

The applicant appealed to the Patent Appeal Court. The Courtfound, by the majority of the three judges, that the mark could beheld registrable.670 The reason was that the mark, judged as awhole, could be considered suggestive in the meaning that thegoods and services covered by the application had a reference tothe medical art conducted in China in the form of acupuncture.Neither the word ASIA nor other elements of the mark alone ortogether would indicate anything geographical with regard to theorigin of the goods and services.

One judge, however dissented from such opinion andexpressed that the designation “asia med” was deceptive to thepublic with regard to the geographical origin as the applicant wasnot an Asian company or the goods limited to cover only goods orservices originating in Asia. So long as there was no suchlimitation and the applicant was a German company, theregistration should be refused.

I.B.20. Color/Shape

In 1995, the Swiss company, Société des Produits Nestlé S.A.,applied for registration of the get-up (“trade dress”) of a jar forsoups and foodstuffs based on milk in Class 29, and for coffee andcoffee extracts in Class 30. The Patent Office rejected theapplication for lack of distinctiveness of the get-up, claiming thatthe evidence of use filed by the applicant was not sufficient toprove distinctiveness nor was a reference to the “telle-quelle” rulebased on the home registration accepted.

670. Case No. 00-028, IR679 685, Patent Appeal Court, December 22, 2000.

Vol. 92 TMR 509

After an appeal filed by the applicant, the Patent AppealCourt decided to grant registration for the following reasons. Theget-up of the jar was not considered as distinctive per se, as it hadno specific design that could characterize it as a commercial originof the products. The evidence of use filed by the applicant was notsatisfactory to remedy the lack of distinctiveness. With regard tothe reference to the “telle-quelle” rule, this rule has been appliedrarely in administrative practice both with respect to thedistinctiveness of a mark itself and to the descriptiveness of amark for the goods covered. The Court found, however, that itshould be possible to allow the “telle-quelle” rule to be appliedmore frequently, provided that it would not lead to a productmonopoly for the goods concerned. The get-up of a jar could beregarded as rather common for the goods covered, but notcompletely without distinctiveness. Neither would a registration ofthe get-up lead to a monopoly of a certain type of package for thegoods concerned. Therefore, the get-up trademark should be heldregistrable in Sweden as it was registered in the applicant’s homecountry.671

SWITZERLAND


The Federal Supreme Court upheld the Patent andTrademark Office’s (“PTO”) decision that a combined word anddevice mark with the major element BRICO was not protectible.BRICO is a common abbreviation for “bricolage” which stands for“do it yourself.” Even though the term is only known anddescriptive in one (the French) part of Switzerland, the Courtfound that the mark could not be registered. Secondary meaningwould have to be acquired in every region in Switzerland.672

The Federal Commission of Appeals (“Commission”) upheldthe PTO’s decision that a word mark READY and QUICK was notregistrable for precooked fruits and vegetables. The two Englishwords are easily understood by the Swiss consumer and describethe goods’ quality and characteristics directly.673

The Commission held that the mark LEVANTE wasdescriptive of yeast, backing powder and quality-improvingsubstances for bakery products. In French and Italian, therecognizable and dominant meaning of LEVANTE is “to rise” inthis context. “To rise” is descriptive for the effect of the products.674

671. Decision dated November 7, 2000, Case No. 00-042, Reg. No. 343 552.

672. Decision of the Federal Supreme Court; sic! 2/2001, Brico.

673. Decision of the Federal Commission of Appeals; sic! 2/2001, Ready and Quick.

674. Decision of the Federal Commission of Appeals; sic! 1/2001, Levante.

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The Commission also held that the trademark READY–TO-GO for computer programs of Class 9 was descriptive of the qualityof the good because the consumer expects the good to be especiallyuser friendly.675

In spite of the graphic design, the mark HANDY BAG anddevice was held to be descriptive for “bags and handbags made ofplastic.” The graphic design of the trademark consists of a redframe, while the words are written in blue color on a whitebackground. The Federal Commission of Appeals held that in theoverall impression the descriptive word element “handy bag” isdominant and that the graphic design and the colors do not sufficeto overcome this dominance of the descriptive word element.676


The Commission held that the word mark SQUALITY was notdirectly descriptive of goods and services in Classes 7, 8, 9, 14, 21,27, 28, 35, 36, 38 and 42. In the overall impression, theCommission found that the mark showed enough originality. TheCommission found the applicant’s argument that SWATCH is aregistered word mark with the same structure was valid.677


The Commission affirmed that there was a likelihood ofconfusion between the trademarks LEM and LEMO for similargoods. The Commission held that the addition of a subordinateelement is not sufficient to create a new trademark. This appliesparticularly if a sole syllable or letter is added to the main elementof the prior registered mark. The similarity is particularly strikingbecause the prior registered mark is completely included in theapplicant’s trademark. When deciding over the similarity oftrademarks, the Commission can take the coexistence of twotrademarks over a long time into consideration. However, the longcoexistence does not have any impact on the priority of use.678

The Commission upheld the PTO’s decision that the wordmarks OTOR and ARTOR, both protected for identical paper goodsin Class 16, were confusingly similar despite their differentprefixes. The beginnings and the goods are too close to avoid alikelihood of confusion.679

675. Decision of the Federal Commission of Appeals; sic! 1/2001, Ready-to-go.

676. Decision of the Federal Commission of Appeals; sic! 6/2001 HANDY BAG anddevice.

677. Decision of the Federal Commission of Appeals; sic! 2/2001, Squality.

678. Decision of the Federal Commission of Appeals; sic! 3/2001, Lemo/Lem.

679. This decision stresses the importance of detailed analysis in each single casebecause under normal circumstances a different beginning used to be (and probably still is)

Vol. 92 TMR 511

The Commission found that the word marks KRAFT andNATUR KRAFT WERKE (three words on three lines) in Classes 1,5 and 30 were not similar for two reasons. First, the elementKRAFT (German for power) is weak for the specific goods. Second,the special representation of NATUR KRAFT WERKE helps toread the mark as one word in which KRAFT is not dominant.680

The Federal Commission of Appeals affirmed a likelihood ofconfusion between the trademarks BIG JOHN for goods in Classes18 and 25 and ST. JOHN for goods in Classes 14, 25 and 26. TheCommission also found “traveling bags, trunks and suitcases”similar to clothing and/or shoes. JOHN was considered adistinctive element for the goods in question although it can befound in several trademarks. Although the beginnings BIG andST. are clearly different in the graphic impression as well asphonetically, the common element JOHN creates a similar overallimpression of the trademarks. Because the overall impressiondetermines whether there is similarity of trademarks, the FederalCommission of Appeals found a likelihood of confusion betweenBIG JOHN and ST. JOHN.681


The Federal Institute of Intellectual Property found nolikelihood of confusion between the mark NUTRICIA, registeredfor products in Classes 5, 10, 29, 30 and 32 and the younger markNUTRI registered for goods in Classes 29, 30 and 32. On appeal,the Commission agreed, holding that the term “nutri” refersdirectly to “nutrition” or “nutritive” and is therefore descriptive forgoods in Classes 29, 30 and 32. Because the trademarks areidentical only in elements belonging to the public domain, theCommission held that there was no likelihood of confusion betweenthe marks.682

The Commission found that there was no likelihood ofconfusion found between SFS and TFS covering products of Class6. Even though the marks are a group of letters, the Commissionconsidered the same criteria when determining the similarity ofthe marks as it would with any other trademarks. In consideringthe overall impression, the beginning of a word is crucial for thesound as well as the visual effect of a mark. The letter S differs alot from T visually as well as phonetically.683

a good argument against danger of confusion. Decision of the Federal Commission ofAppeals; 2/2001, Otor/Artor.

680. Decision of the Federal Commission of Appeals; sic! 2/2001, Kraft/ Natur KraftWerke.

681. Decision of the Federal Commission of Appeals; sic! 5/2001 Big John/St. John.

682. Decision of the Federal Commission of Appeals; sic! 4/2001, Nutricia/Nutri.

683. Decision of the Federal Commission of Appeals; sic! 4/2001, SFS/TFS.

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The Commission found that there was no likelihood ofconfusion between the senior trademark POLO and the juniortrademark MARCO POLO, both registered for identical goods inClass 32. The Commission found that the overall impressionreduced the likelihood of confusion between the marks. MARCO isnot just an additional element to POLO but changes the meaningof the mark. In the overall impression MARCO POLO iscompletely different from POLO as it evokes differentconnotations, which are dominant in the memory of the public.684

In a highly complex case in which both parties own severaltrademarks, the Federal Supreme Court held that watches thatare exclusively installed in cars are primarily car components andnot chronometric instruments. Therefore, the Federal SupremeCourt found that they are not similar to watches.685 While thedecision may be correct in the very specific circumstances, there isroom for doubt whether the goods would be dissimilar in anotherset of facts.


The owner of a well-known trademark is authorized to file anopposition even if the trademark is not registered. A trademark isconsidered well known if there is a general knowledge ornotoriousness of the trademark within the participating circles. Tosatisfy this requirement, a trademark must have been usedheavily in Switzerland or at least have been subject to intensepublicity. The general knowledge of a company serves only as anindication that the identical trademark is well known.686

III.G. Post Registration Evidence of Use and Renewals

The owner of the trademark HEIDI opposed the trademarkHEIDI-WII (Wii is the Swiss German Expression for wine), whichare both registered for wine. The opposition and the appeal wererejected due to the lack of use of the older trademark HEIDI. Useof a trademark can be established with proof of minimal use over along period of time. The mere turnover or the usual sale quantityis not relevant. The appearance of the trademark HEIDI in thecompany name did not establish use as HEIDI was not used toidentify goods but to identify a company.687

684. Decision of the Federal Commission of Appeals; sic! 1/2001, Marco Polo/Polo.

685. Decision of the Federal Supreme Court; sic! 5/2001 Jaguar/Jaguar.

686. Decision of the Federal Commission of Appeals; sic! 5/2001 Elcode/Elcode.

687. Decision of the Federal Commission of Appeals; sic! 5/2001 Heidi/Heidi-Wii.

Vol. 92 TMR 513

TAIWAN


The United States Postal Service applied to registerELECTRONIC POSTMARK as a trademark for “office papers,books, cards and other stationeries” in International Class 16. Theapplication was refused by the Intellectual Property Office (“IPO”)for lack of distinctiveness of the mark. The IPO was of the opinionthat ELECTRONIC POSTMARK, being a combination of wordswith inherent meaning, would not be seen by the generalconsumers as a badge of origin.

The decision was appealed to the High Administrative Court.The Court reversed the IPO’s refusal to register the mark.688 TheCourt held that according to Article 5, Paragraph 1 of theTrademark Law,689 a simple combination of words may beregistered as a trademark as long as it is capable of distinguishingthe applicant’s goods from those of others. Furthermore, thedistinctiveness of a mark should be considered in relation to thegoods designated for registration and the recognition given to themark by the consumers in the trade. Since ELECTRONICPOSTMARK is neither generic nor descriptive of the goodsdesignated for registration in International Class 16, the Courtheld that registration of the mark should not have been refusedmerely because the mark is a combination of words with inherentmeaning. Therefore, the Court ordered the IPO to reconsider thecase accordingly.

The Gemological Institute of America, Inc. applied to registerGEMOLOGICAL INSTITUTE OF AMERICA as a trademark for“office papers, books, cards and other stationeries” in InternationalClass 16. The registration application was refused by the IPO forlack of distinctiveness of the mark. The IPO was of the opinionthat GEMOLOGICAL INSTITUTE OF AMERICA, being anorganization’s name, is devoid of any distinctive character as atrademark.

The decision was appealed to the High Administrative Courtfor review. The applicant appealed on the ground thatdistinctiveness of the mark had been acquired through long termand extensive use of the mark as a badge of origin to distinguishthe applicant’s goods and services from those of others. In supportof the appeal, the applicant filed a substantial amount of

688. (89) Su No. 447, Taipei High Administrative Court, December 14, 2000.

689. Article 5, Paragraph 1 of the Trademark Law:

Any word, drawing, symbol, combination of colors, or the combination of them used in atrademark shall be distinctive enough to cause a general buyer of goods to recognize itas a mark for identifying the goods of a certain manufacturer or merchant anddistinguishing such goods from those manufactured or sold by others.

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documents to prove such use and, in addition, statements issuedby local jewelers confirming that GEMOLOGICAL INSTITUTEOF AMERICA was well established as a badge of origin for theapplicant’s goods and services.

The Court accepted the appeal and requested the IPO toreconsider its original decision.690 In addition to the evidencesubmitted by the applicant, the Court relied on a letter from theTaiwan Jewelry Industry Association that had been received inresponse to the Court’s own inquiry, confirming the distinctivecharacter of the mark as a badge of origin. Therefore, the Courtheld that the subject mark meets the requirements of acquireddistinctiveness under Article 5, Paragraph 2 of the TrademarkLaw.691


Long Kow Bean Thread Mfg. Co., Ltd. registered a trademarkin Chinese characters pronounced “Long Kow” under No. 19087 in1955, which has been renewed three times, in 1975, 1985 and1995. The plaintiff, Ying Feng Foods Industry, filed an action withthe IPO seeking the invalidation of the Chinese registration forviolation of Article 2, Paragraph 1, Item 5 of the old TrademarkLaw,692 which was fully effective in 1955 when the registrationissued. The IPO dismissed the invalidation action and thedismissal was conclusively confirmed by the SupremeAdministrative Court.693

The Court held that after renewal a trademark registrationshould be considered as a new registration, which can only bechallenged based on the law and the facts that exist at the time ofthe renewal. Under Article 52, Paragraph 3 of the currentTrademark Law,694 the plaintiff can only seek invalidation of therenewal registration of the subject trademark rather than the first

690. (89) Su No. 740, Taipei High Administrative Court, June 11, 2001.

691. Article 5, Paragraph 2 of the Trademark Law:

Any word, drawing, symbol, combination of colors, or the combination of them which donot conform to the specification set out in the preceding Paragraph shall be deemed asconforming to such specification if it has been used by the applicant concerned and hasbecome a mark identifying the goods offered by the applicant for business.

692. Article2, Paragraph 1, Item 5 of the old Trademark Law effective in 1955:

A design having any of the following features shall not be eligible for trade markregistration:

… 5. Being identical with or similar to a customarily used symbol or mark forthe same commodity.…

693. (89) Pan-Chi No. 3066, Taiwan Supreme Administrative Court, November 2, 2000.

694. Article 52, Paragraph 3 of the current Trademark Law:

If a trademark which has been registered for a period of over ten years is in violation ofany provision of Item (1) on Paragraph Two of Article 25, an interested party or atrademark examiner may request a review for the invalidation of the registration.

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registration, which was issued in 1955. The legislative intent ofthe provision is to protect the existing rights and the stability of atrademark registration. Therefore, the plaintiff’s action citing theold law effective at the time of the first registration of the subjecttrademark in 1955 should be dismissed.

THAILAND

III.K. Criminal Actions

In a criminal trademark counterfeiting case, the SupremeCourt of Thailand ordered double punishment for a defendant whohad previously been convicted and fined, but not previouslyimprisoned, for trademark counterfeiting.695

In this case, the Thailand Supreme Court reversed thejudgement of the Central Intellectual Property and InternationalTrade Court (“IP&IT Court”), ruling that double punishmentshould be applied to the defendant, according to Section 113 of theThailand Trademark Act 1991 (“the Act”).

The defendant had a previous conviction. In 1997, he had beensentenced to imprisonment and fined for committing an offense ofinfringement under the Trademark Act.696 The prison sentence hadbeen suspended in the 1997 prosecution because the offender wasthen a first-time offender.

Subsequently, the defendant was arrested again in 1999, as aresult of a raid brought under the Thai Trademark Act, and he wasbrought to trial before the IP&IT Court. The prosecutor requestedthat the IP&IT Court impose double the punishment against thedefendant under Section 113 of the Act, on the grounds that thedefendant had committed a previous violation in 1997, and he thenrepeated the violation within a period of five years after thecompletion of the original punishment. Section 113 of theTrademark Act states, “Whoever has committed an offense forwhich he was punished under this Act and commits the same oranother offense under this Act within a period of five years aftercompletion of the previous punishment shall be liable to doublepunishment.”

The IP&IT Court passed judgment against the defendant forthe sale and possession of products bearing a forged trademarkunder Section 108 and Section 110(1) of the Act. The defendantwas sentenced to a six-month imprisonment and fined 11,000 baht.However, as the defendant pled guilty to the charge, the Courthalved the penalty to a three-month imprisonment (suspended forone year) and a fine of 5,500 baht.

695. Thailand – Supreme Court Case No. 1515/2543 (A.D. 2000).

696. Red Case No. 7567/2540 (A.D. 1997).

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With regard to the prosecution’s request for doublepunishment to be imposed on the defendant, the IP&IT Courtstated that the double punishment provision under Section 113 didnot apply to this case. According to the Court’s interpretation ofthe phrase, “completion of the previous punishment,” thedefendant did not complete the punishment in the previous casebecause the prison-sentence aspect of the punishment had beensuspended. In the Court’s view, the punishment in the previouscase in 1997, included both the fine and the imprisonment.Therefore, because the prison sentence had been suspended and,thus, the defendant did not go to jail, the Court reasoned that suchpunishment was not completed. In other words, the IP&IT Courtdetermined that “completion of the previous punishment” had notoccurred, and therefore, double punishment under Section 113 ofthe Act could not be applied in this case.

The prosecution appealed to the Supreme Court against theIP&IT Court’s decision not to render double punishment againstthe defendant. The Supreme Court reversed the decision of theIP&IT Court, stating that Section 113 of the Trademark Act 1991could, in fact, be used in this case. The Supreme Court noted thatthe purpose of this section of the Act was to increase thepunishment against recidivists who repeat an offense under thisAct within five years after the completion of the previouspunishment.

The Supreme Court reasoned that because a fine is deemed tobe a punishment against a person who has committed an offenseunder Section 18 of the Penal Code, a fine under the Act is alsodeemed a punishment. As the defendant had been fined under theTrademark Act in the previous case and then repeated the offensewithin a period of five years after completion of such punishment(in other words, after payment of the fine), Section 113 could beinvoked. It was not necessary to consider whether theimprisonment had been completed, or not, because the sentence ofa fine alone is deemed a punishment under the Act.

The Supreme Court rectified the decision of the IP&IT Courtby doubling the punishment against the defendant according toSection 113 of the Trademark Act 1991. The defendant wassentenced to imprisonment of one year and a fine of 22,000 baht.As the defendant pled guilty to the charge, the Supreme Courtreduced the penalty by half to imprisonment of six months(suspended for one year) and a fine of 11,000 baht.

Vol. 92 TMR 517

TURKEY


An action was instituted in 1999 against the Turkish PatentInstitute (“TPI”) for the withdrawal of an administrative decisionrefusing the registration of the trademark consisting of the verbalelement INTERAKTIF (INTERACTIVE) on the ground that it isdescriptive of the kind, the characteristic and the quality of theservices specified in the specification of goods and services, inaccordance with Article 7 paragraph 1(c) of the Decree Law No.556 on Trade/Service Marks.

The plaintiff claimed that it is engaged in the marketing,advertising and promotion of all kinds of goods and services, andthat for years it has promoted this trademark, which is being usedalone and with additional verbal or device elements, such that thetrademark has become a well-known trademark. Therefore,plaintiff argued that the trademark application was unfairlyrefused by the defendant. The plaintiff requested the withdrawalof the refusal decision and requested its trademark be registered.

The TPI objected on the basis that the verbal elementINTERACTIVE means co-effective, communicative, informationexchange, and concerns the information exchanged between thecomputer and the user during the operation of computer programs,or concerns the concept of providing information exchanges, andthat therefore such trademark cannot be registered as atrademark since it is descriptive in respect of the services.697

The 5th Commercial Court ordered the rejection of the courtaction on grounds that the plaintiff’s trademark INTERAKTIFmeans co-effective, that the trademark indicates the kind,characteristics, quality, quantity, purpose and value of theservices, according to Article 7 paragraph 1(c) of the Decree LawNo.556, and that the previous registrations cited by the plaintiff insupport of its claims cannot be considered, since an incorrectprecedent cannot be considered as a precedent for the Court.698

Upon the plaintiff’s appeal, the Supreme Court overturned theinitial decision on the ground that words that cannot be registeredas a trademark alone but can be registered by adding distinctiveverbal elements and components pursuant to Article 5 of theDecree Law No.556, where the definition of registrable trademarksis stated. The Court, referring to its previous decisions, ruled thatsuch principle was also applied to trademarks comprising thename of a color or a geographical name, and that although the

697. 5th Commercial Court of Ankara, Decision No. 1999/178 - 1999/528 (September 30,

1999).

698. 11th Civil Chamber of the Supreme Court, Decision No. 1999/9575 - 2000/2998(April 13, 2000).

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registration of INTERACTIVE or INTERAKTIF cannot be effectedalone, such words can be registered with additional words such as“advertising, marketing, promotion, communications.”

Having refused to conform to the overturned decision, the firstinstance Court persisted in its initial decision. The plaintiff thenappealed against the persisting decision before the GeneralAssembly of the Supreme Court. The General Assembly of theSupreme Court upheld the grounds asserted by the Supreme Courtand overturned the persisting decision on grounds that persistingon the initial decision is contrary to proper procedure and law.699

A dissenting opinion was put forth by one of the members ofthe General Assembly of the Supreme Court on grounds that thetrademark INTERAKTIF is a descriptive trademark in accordancewith Article 7 paragraph 1(c), that the verbal elementINTERAKTIF constitutes the distinctive part of the trademark,and that the decision of the Court should be upheld. Thedissenting opinion was based on Article 5 of the Decree Law No.556, which is a general Article for indicating what is registrable,whereas Article 7 specifically sets forth absolute grounds forrefusal of registration of trademarks. Under these circumstances,it is not possible to grant the registration of a non-registrabletrademark under Article 7, according to a general article, namely,according to Article 5.


The plaintiff in Twelve Islands Shipping Company Limited v.Turkish Patent Institute700 appealed the decision rendered by the3d Commercial Court of Ankara that rejected its claim for theregistration of a trademark consisting of a “bottle device” on theground of absence of distinctiveness.

Upon the appeal of the plaintiff, the Supreme Courtoverturned the decision on the ground that the plaintiff’sregistration of the mark in the home country, the United Kingdom,and the documentary evidence in support thereof, were notconsidered when reaching the decision.701

On remand, the 3d Commercial Court of Ankara conformed tothe Supreme Court’s decision and ruled for the withdrawal of theadministrative decision of refusal and for the registration of theplaintiff’s trademark on the grounds that: (1) the plaintiff’strademark had been registered in the United Kingdom since

699. General Assembly of the Civil Chambers of the Supreme Court, Decision No.

2000/11 - 2000/1814 (December 20, 2000).

700. 3d Commercial Court of Ankara, Decision No. 1998/1004 - 2000/26 (January 27,2000) (Notified on February 16, 2000).

701. 11th Civil Chamber of the Supreme Court, Decision No. 2000/3866 – 2000/4995(June 1, 2000). See also the reports of these decisions reported in 91 TMR 514-15 (2000).

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January 25, 1995, and according to Article 6quinquies of the ParisConvention the countries signatory to the Convention are under anobligation to accept a mark which is registered in the country oforigin; (2) the plaintiff’s trademark, consisting of a mat whitebottle shape, has the ability to distinguish the goods or servicesfrom those of other businesses as provided in Article 5 of theDecree Law No. 556 on Trademarks; and (3) the plaintiff’strademark is used in many countries and in Turkey.

The Court further ruled that the plaintiff’s trademark is awell-known trademark in the sense of Article 6bis of the ParisConvention and Article 7 paragraph 1(i) of the Decree Law No.556, that it has “the characteristic of distinctiveness” in the senseof Article 5 of the Decree Law No. 566, and that it has “alsoacquired distinctiveness” with respect to the goods and servicescovered by the application for registration.702

This is a landmark decision for the registrability of three-dimensional shapes, such as containers/packagings etc, in view ofthe unclear, if not contradictory, provisions of Article 5 of theDecree Law No. 556 on Trademarks.

An action703 was instituted against the TPI for the withdrawalof the administrative decision refusing the registration of thetrademark consisting of a “chocolate packaging” on grounds ofabsence of distinctiveness and absence of “the characteristic ofdistinctiveness” of a trademark as specified in Article 5 of theDecree Law No. 556 on Trade/Service Marks.

The plaintiff claimed that the trademark of its application,consisting of a tube-shaped packaging with the picture of coloredchocolates on it, is widely used and has been used for a long timeon a special kind of chocolate sold under the famous SMARTIEStrademark. Since plaintiff’s packaging trademark had acquireddistinctiveness due to such longstanding and extensive use and aresulting reputation around the world, including in Turkey, thedecision of rejection was contrary to Decree Law No. 556, theInternational Agreements, the Paris Convention and thejurisprudence of the Supreme Court.

The TPI objected that plaintiff’s trademark consists of “twotubes leaning back and three tubes leaning forward,” only, andthat therefore it could not be considered distinctive in the sense ofArticle 5 of the Decree Law No. 556.

The Court, based on an expert’s report assessing thetrademark under Article 5, decided that the subject trademarkconsists of a shape of the packaging that is capable of beingrepresented graphically or by similarly descriptive means, and

702. 3d Commercial Court of Ankara, Decision No. 2000/784 – 2001/117 (February 15,2001) (Notified March 15, 2001).

703. Societe Des Produits Nestle S.A. v. Turkish Patent Institute, 9th Commercial Courtof Ankara, Case no. 2000/783 – Decision No.2001/382 (May 9, 2001).

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that it is capable of being published and reproduced by printing. Itfurther held that color combinations shall be registered as suchaccording to the international agreements and current practice,that the packaging does present the characteristics ofdistinctiveness, since it was registered in the Country of Origin,and that it also must be granted protection on the basis of theArticle 6quinquies of the Paris Convention.


An action was instituted against the TPI upon the refusal ofthe TPI to favorably consider the opposition lodged by the plaintiffto the registration of the mark DEVICE + BOLAMAE on ground ofthe notoriety of the plaintiff’s trademark WING DEVICE(SABLIER AILÉ) + LONGINES.704

The defendant objected that the action was not well groundedin that (1) the essential component of the opposed trademark is theverbal element BOLAMAE whereas the DEVICE as a graphicalelement is ancillary, (2) the goods are in different classes, and (3)the protection on the basis of notoriety is conditioned by andrequires similarity between the trademarks.

The plaintiff asserted that (1) the DEVICE as a graphicalelement is indeed an essential component that is used as a logoshowing the direct connection to the plaintiff, (2) the opposedapplication covers goods in Class 14 as does his registration, and(3) his trademark is registered in Switzerland, the country oforigin since 1942, as well as in many other countries.

The Court held that when trademarks are composed of verbal(word) and device as components, the general rule is to comparethe verbal element in the assessment of the similarity. However,while assessing such similarity, the trademark is to be consideredas a whole and the distinctive character of the device component isto be evaluated as an element of the trademark in its entirety.Finally, where the device component is distinguishable over theverbal element and appears therefore as the essential componentof the trademark, the assessment is to be made by putting theemphasis on the graphical element, and from thereon bycomparing the devices. On such grounds, the court ruled that inthe present case in which the device has been used as a logo since1942, the assessment of the similarity is to be made primarily inconsideration of the device components rather than the verbalelements. In further support of its ruling, the Court stated that thedefendant chose his particular device knowing that it had acquirednotoriety for the general public due to the plaintiff’s extensive and

704. Compagnie des Montres Longines Francillon S.A. v. The Turkish Patent Institute,

6th Commercial Court of Ankara, Decision No.1999/446-2000/503 (October 11, 2000)(Notified January 25, 2001).

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longstanding promotion activities despite a multitude of choices,which clearly implies the defendant’s intention to procure unfairadvantages from such notoriety.

The experts having examined both trademarks concluded intheir report that the wings devices are confusingly similar in theirwidth and length ratio, shape, and borderline, and the mark of theopposed trademark application has the same borderline andcharacter as the registered mark. The Court, adopting theconclusions of the expert’s report, ruled for the withdrawal of theTPI decision refusing to favorably consider the opposition lodgedby the plaintiff, recognizing the worldwide notoriety of theplaintiff’s trademark and the protection conferred by the Decree-Law No. 556 on Trademarks to such well-known trademarkspursuant to Articles 7 paragraphs 1(i) and 8.

According to the Court’s decision, TPI was to favorablyconsider the opposition lodged by the plaintiff and to refuse theregistration of the opposed trademark application.

I.B.11. Other Objectionable Features

An action was instituted against the TPI for the withdrawal ofthe administrative decision of refusal of the trademark applicationfor GULLIVER on grounds that this word, being the name of acharacter in a well-known novel, is of particular cultural publicinterest and therefore cannot be registered as a trademark,pursuant to Article 7 paragraph 1(h) of the Decree-Law No. 556 onTrademarks.705

The Court stated that “Gulliver’s Travels” is a famous literarywork, but the fact that it is well known by the Turkish public doesnot imply that this work is of particular cultural public interest tothe Turkish public. In fact, plaintiff has obtained the registrationof this trademark in various countries around the world, and thedefendant has also registered in Turkey the trademarkROBINSON CRUSOE that has the same particularity.Accordingly, the court ruled that the decision of refusal renderedby the TPI was not well grounded and ordered the cancellation ofthe decision.

The defendant’s appeal was not favorably received, and theSupreme Court upheld the decision of the first instance Court,which has been finalized in the absence of a further appeal forreconsideration to the Supreme Court.706

705. E.I. du Pont de Nemours Company v. The Turkish Patent Institute, 6th

Commercial Court of Ankara, Decision No. 1998/685-1999/567 (November 3, 1999) (NotifiedFebruary 13, 2000).

706. 11th Civil Chamber of the Supreme Court, 2000/4541-2000/5500 (June 15, 2000)(Notified September 11, 2000).

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An action was instituted against the TPI for the withdrawal ofthe administrative decision partially refusing the registration ofthe plaintiff’s trademark V VALENTINO due to its similarity tothe prior registered trademarks MARIO VALENTINO, V.AURELIO VALENTINO, ENYIL VALENTINO and VALENTINOaccording to Article 7 paragraph 1(b) of the Decree-Law No. 556,and for the recognition of the notoriety of plaintiff’s trademark andof the bad faith of the applicants/registrants in obtaining thetrademarks cited against the plaintiff’s trademark by the TPI.707

The plaintiff claimed that the decision of partial refusal inrespect of certain goods was unjustified and that the trademark isto be registered for all the goods mentioned in the applicationpetition for the trademark V VALENTINO. Since the wordVALENTINO is the trade name of the plaintiff as well as apersonal name of a famous designer, and since the trademarkacquired distinctiveness due to the stylized V LOGO of thetrademark, such refusal of registration infringes also the rightsoriginating from the trade name of the plaintiff. The plaintifffurther claimed that (1) there is an agreement dated May 11, 1979,between Mario Valentino and the plaintiff allowing theregistration of the trademark VALENTINO for the goods listed inthe trademark application petition of the plaintiff, (2) thecancellation action against the trademark MARIO VALENTINObefore the 1st Commercial Court of Beyogu is still pending, (3) ithas been confirmed in the expert report established as of theaction in determination of evidence before the 9th CommercialCourt of Istanbul that the trademark VALENTINO and its Logoare well known, (4) the similarity of the trademarks VALENTINOand ENYIL VALENTINO is not by coincidence, since the tradename of this trademark’s applicant is Valentina Tekstil Sanayi veTicaret Limited Sirketi, (5) the trademark VALENTINO is underprotection according to Article 6bis of the Paris Agreement due toits notoriety, (6) the defendant also has accepted the oppositionsagainst third parties trademarks and refused to register thosetrademarks, and (7) the trademark V VALENTINO has acquireddistinctiveness owing to its longstanding and worldwide use for allthe goods mentioned in its application and, therefore, it is notpossible to refuse its registration according to the last paragraph ofthe Article 7 of Decree-Law No.556.

The TPI objected by asserting that (1) there is no provisionrequiring that it is compulsory to register a trade name as atrademark or forbidding the registration of a trade name in thename of the third parties, (2) the administrative decision of refusal

707. Valentino Globe B.V. v. Turkish Patent Institute, 1st Commercial Court of Ankara,

Decision No.1998/805-2000/457 (October 12, 2000) (Notified March 12, 2001).

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is well grounded according to Article 7 paragraph 1(b) of Decree-Law No. 556 and Supreme Court decisions, (3) the agreementsbetween the parties for allowing registrations does not bind theTPI, (4) the pending court actions are not to be taken intoconsideration, (5) the trademark V VALENTINO does not fulfillthe requirements for notoriety, and (6) the favorable considerationby the TPI of the plaintiff’s oppositions does not refer to or confirmsuch notoriety.

Adopting the conclusions of the expert’s report, the Court heldand recognized that the trademark V VALENTINO is well knowndue to its worldwide registrations, its extensive use without anylimitation of geographical boundaries and disparity of cultures,and its effective advertisements to its wide spread distributionchannels. The Court ruled that the trademark V VALENTINO isunder protection in Turkey according to Article 7 paragraph 1(i) ofthe Decree-Law No. 556 on Trademarks, and that on such grounds,and on the ground that the trademark applied for has acquireddistinctiveness due to its longstanding use, the partial decision ofrefusal is unjustified and is to be withdrawn to allow theregistration of the mark in respect of all goods recited in theapplication.

Upon such grounds the Court did favorably consider theclaims of the plaintiff and decided to cancel the administrativedecision of partial refusal.

The 8th Commercial Court of Ankara conformed to theSupreme Court’s 1999 decision708 overturning the decision of firstinstance to grant registration of the mark ICEBERG to defendant,and appointed a panel of experts to determine the notoriety of thetrademark ICEBERG. The panel of experts favorably stated thatthe trademark ICEBERG should be protected as a well-knowntrademark and that filing an application for registration of thesame trademark by the defendant, even for different goods andservices, would result in giving the defendant an unfair advantageby allowing it to benefit from the reputation of the plaintiff’s mark.

The Court, adopting the conclusions of the experts’ report,ruled that the plaintiff’s ICEBERG trademark is a well-knowntrademark, considering that the plaintiff had five registrations forthe trademark for different goods since 1998 in Turkey, that it has14 International Registrations and registrations in other countries,and considering the yearly turnover, the advertising through thevisual media, together with the criteria used by the ExpertsComity of WIPO, such as market share, distinctive character,extensive distribution of the registrations among the countries.The Court ruled on such grounds for the withdrawal of the decisionof the TPI that had rejected the plaintiff’s opposition to the

708. Gilmar S.p.A. v. Turkish Patent Institute, 11th Civil Chamber of the SupremeCourt, Decision No.1999/3271-1999/5256 (July 6, 1999). See also 91 TMR 523 (2000).

524 Vol. 92 TMR

trademark filed by the defendant and request for the cancellationof the defendant’s trademark registration.

The Court further ordered the stopping of the unfaircompetition on the grounds of the notoriety of the plaintiff’strademark, and ordered compensation for moral damages due tothe defendant’s registration of the plaintiff’s trademark with anintention to benefit from the rightful notoriety of the plaintiff’strademark.709


An action for trademark infringement and unfair competitionwas instituted for the cancellation of the trademark BARISabusively registered in the name of the defendant in Turkey, aswell as for compensation for material and moral damages. Theplaintiff further claimed that the defendant’s abusive registrationinfringed its trade name and constituted an act of unfaircompetition. For these reasons, the plaintiff said the defendant’sregistration should be canceled.

The plaintiff asserted that as it had been using the trademarkBARIS on spring beds since 1992, the use of the trademark BARISby the defendant, which also abusively registered the trademarkBARIS in the name of the defendant, constituted unfaircompetition.

The defendant objected by asserting that the trademark wasregistered in its name on November 8, 1994, and that the sixmonth deadline for instituting an action had lapsed (according toArticle 15 of the former Decree Law No. 551 on Trademarks inTurkey). Defendant also claimed it had been using the trade nameBARIS SUNGER YATAK since 1983.

Considering the submitted evidence and the experts’ report,the Court ruled that the use of the registered trade name andtrademark by the defendant did not constitute unfair competitionand infringement of the plaintiff’s non-registered trademark andtrade name, under Article 61 of Decree Law No.556 onTrademarks and Paragraph 5 of Article 57 of Turkish CommercialCode.710

Upon plaintiff’s appeal, the Supreme Court overturned thedecision of the First Instance Court on ground that Article 8paragraph 3 of Decree Law No. 556 on Trademarks provides thatan opposition against a trademark application can be lodged evenif the opponent does not have a trademark registration of his own,provided he used said trademark or sign in the course of hisbusiness prior to the filing of the opposed application. As Article 42

709. Gilmar S.p.A v. As Madeni Esya ve Emaye Sanayi Ltd. Sti., 8th Commercial Court

of Ankara, Decision No.2000/98 -2001/301 (March 18, 2001).

710. 5th Commercial Court of Istanbul (Beyoglu), Decision No.938-866 (October 8,1997).

Vol. 92 TMR 525

paragraph 1(b) of said Decree Law provides that it is possible toinstitute an invalidity action when the prerequisites cited inArticle 8 are met, any person suffering damage from a subsequenttrademark registration can request the Court to cancel suchregistration. Under such circumstances, the Supreme Court heldthat it is unjustified to reject the plaintiff’s requests by onlyconsidering that the use of a registered trademark does notconstitute trademark infringement against a nonregisteredtrademark and without evaluating the merits of the case. TheSupreme Court requested the cancellation of the registration inview of the aforementioned legal provisions.711


The plaintiff appealed the decision rendered by the 1stCommercial Court of Beyoglu that rejected his claims for thecancellation of defendant’s trademark registration forGLASSERIT.712

Upon the plaintiff’s appeal, the Supreme Court overturned theinitial decision on grounds that (1) the plaintiff’s trademark is awell-known trademark, (2) the defendant would unfairly benefitfrom the reputation of the plaintiff’s trademarks, and (3) such useof any sign that is identical with or similar to the registeredtrademark, even in relation to goods or services that are notsimilar to those for which the trademark is registered, where theuse of that sign without due cause takes unfair advantage of thereputation of the mark or is detrimental to the distinctivecharacter thereof, is to be prohibited according to Article 9/1-c ofthe Decree Law No. 556.713

The defendant appealed further for the reconsideration of thedecision. In its decision, the Supreme Court refused to reconsiderits decision and decided to uphold it.714

The 1st Commercial Court of Beyoglu in its decision conformedto the Supreme Court’s decision and ruled for the cancellation ofthe defendant’s trademark registration upon the relative groundsfor refusal pursuant to Article 8/4 of the Decree Law in addition toArticle 9/1-c.715

711. 11th Civil Chamber of the Supreme Court, Decision No.1998/359-1998/5121 (July 6,

1998).

712. BASF Lacke + Farben AG v. Betsan Cam Seramik Sanayi Ticaret A.S., 1stCommercial Court of Beyoglu (Istanbul), Decision No. 1999/15-2000/80 (February 29, 2000).

713. 11th Civil Chamber of the Supreme Court, Decision No. 2000/5331-2000/6265 (July3, 2000) (Notified August 11, 2000).

714. 11th Civil Chamber of the Supreme Court, Decision No. 2000/7509-2000/7938(October 17, 2000) (Notified November 13, 2000).

715. 1st Commercial Court of Beyoglu (Istanbul), Decision No. 2000/686-2000/655(December 21, 2000) (Notified January 18, 2001).

526 Vol. 92 TMR

An action716 was instituted for trademark infringement andunfair competition against the defendant to stop the use of thetrademark KARSA PRENS.

The plaintiff, a firm famous worldwide in the food industry,especially for biscuits and chocolates, claimed that its CHOCOPRINCE and PRINCE FOURRÉ trademarks are registeredworldwide and are well known, including in Turkey; that theInternational Registration of the CHOCO PRINCE trademarkwith WIPO, and in the plaintiff’s country of origin, dates back to1956, and that its registration in Turkey is dated 1976; that,accordingly, the subject trademarks are protected as well-knowntrademarks. The plaintiff further claimed that the defendant,which is an important local firm operating in the same field, usesthe plaintiff’s PRINCE trademarks as PRENS on the packages ofidentical goods, that such use is likely to deceive the averageconsumer and therefore constitutes an act of trademarkinfringement and unfair competition; that said acts were done inbad faith, since it is evident that the defendant knows the plaintiff,operating in the same field, and its famous trademarks, and,moreover, the defendant did not respond to the cease and desistletter served by the plaintiff prior to instituting the court action.

The experts’ report ordered by the Court concluded that theplaintiff’s PRINCE trademarks are well known, and that the actsof the defendant constitute trademark infringement and unfaircompetition. The Court, following the conclusions of the experts’report, fully accepted plaintiff’s claims about the notoriety of itsPRINCE trademarks and confirmed that the word PRENS, theTurkish translation, the PRINCE trademark, is identical in itsvisual, phonetic and semantic aspects.

On the other hand, the plaintiff instituted a second action forcancellation of the defendant’s trademark application for KARSAPRENS that was filed after the action was instituted. The Courtrefused to suspend its decision until the issuance of the decision inthe second action due to the difference in the claims. Finally, theCourt refused the plaintiff’s claim for compensation for moraldamages in the absence of evidence that the activities of thedefendant did cause any moral damage.

The defendant appealed this decision to the Supreme Court ongrounds that the plaintiff does not have any registration for theword PRINCE, alone, and that this word is not an essentialcomponent of the marks. The plaintiff appealed the part of thedecision refusing its claim for moral damages.

The Supreme Court ruled against the defendant on all counts.It ruled for the plaintiff in its appeal on moral damages,

716. General Biscuits Belgie v. Karsa Bisküvi Ve Gida Sanayi Tic. Ltd. Sti., 2dCommercial Court of Beyoglu, Decision No.1999/148 – 2000/203 (June 7, 2000) (Notified onJune 23, 2000).

Vol. 92 TMR 527

overturning the decision of the First Instance Court. The SupremeCourt concluded that the claim for compensation for moraldamages should have been accepted by the First Instance Courtsince the requested amount was fair and since the reputation andimage of plaintiff’s trademarks have been damaged by the acts ofthe defendant.717


An action was instituted for the cancellation of the trademarkBAHMAN on ground of nonuse in the country within the statutoryperiod.718

The plaintiff asserted that the trademark BAHMAN had beenregistered for cigarettes in the name of defendant to be valid forten years from March 18, 1991 under Registration No. 127112 andthat after the registration of said mark it has not been put to usein the country until the date of institution of the cancellationaction. The plaintiff requested that the defendant’s trademarkregistration be canceled for not meeting the requirement of use asprovided in Article 14 of the Decree-Law No. 556.

The defendant objected by asserting that (1) the plaintiff wasacting in bad faith and instituted the present court case as acounter action to the decision No. 1999/54-244 of the CommercialCourt of Mersin719 rendered in respect of the action instituted bythe defendant against the infringement of the mark BAHMAN andthe unfair competition related thereto, (2) that defendant as acompany established in Germany, which is a signatory of the ParisUnion, was exempted from the obligation to use its trademarkaccording to Articles 18/3 and 8/a of the former Trademarks ActNo. 551 under which the defendant’s trademark was registeredand which was repealed and replaced in June 27, 1995 by theDecree-Law No. 556 on Trademarks currently in force, (3) that anyclaim for the cancellation of subject registration can only be putforward after the expiration of five years as from the date ofenactment in view of the acquired rights under the former Act, (4)that this period will terminate on June 27, 2000, and (5) thatfurthermore the trademark BAHMAN is used in Turkey on thecigarettes bearing the trademark BAHMAN, imported within thecontext of a transit trade with other countries in Mersin FreeTrade Zone, which is within the boundaries of Turkey.

717. 11th Civil Chamber of the Supreme Court, Decision No. 2000/9741 – 2001/888

(February 6, 2001) (Notified on March 15, 2001).

718. Supra Dis Tic. Ltd. Sti. v. Reemstma Cigarettenfabriken GMBH, 1st CommercialCourt of Istanbul (Beyoglu), Decision No.1999/143-2000/79 (February 29, 2000).

719. See 91 TMR 530 (2001).

528 Vol. 92 TMR

Considering the submitted evidences and the expert’s report,the Court in its decision ordered the cancellation of defendant’sregistration.

Upon defendant’s appeal, the Supreme Court upheld thedecision of the first instance Court on the ground that the subjectdecision is justified according to the information and evidencessubmitted to the file.720

The defendant appealed further for reconsideration of thedecision. The Supreme Court refused to reconsider its decision anddecided to uphold it.721

These decisions should be considered as landmark decisions inrespect of the use of marks in Turkey and from hereon that use ofmarks in Free Zones and Duty Free areas may be held not tonecessarily infringe trademarks registered in Turkey.


An action was instituted against the TPI for the withdrawal ofthe administrative decision refusing the registration of theplaintiff’s trademark REFLEXE CONTOUR according to Article 5paragraph (c) of the former Trademarks Act. No. 551 on groundthat the trademark REFLEXE CONTOUR is confusingly similar tothe prior registered trademark CONTOUR.722

The 1st Administrative Court of Ankara ruled that theadministrative decision be upheld since the trademarks coveringgoods of similar nature are similar in their visual and phoneticalaspects in such way that they cannot to be distinguished from eachother at first sight when they are considered in their entirety.723

Furthermore, the Court found that although the plaintiff assertedthat there is an agreement between the plaintiff and the rightowner of the trademark COUNTOUR concerning the use of theword “contour” in all trademarks of the plaintiff, it has beennoticed that this agreement covers only the trademarkPLENITUDE CONTOUR REGARD which has been alreadyregistered. Moreover, such an agreement cannot overcome adetermining/absolute provision of the (former) Trademarks Act.

The plaintiff appealed, and the State Council overturned theinitial decision on ground that the trademark REFLEXECONTOUR is not confusingly similar to the trademark CONTOUR

720. 11th Civil Chamber of the Supreme Court, Decision No.2000/4432-2000/6633

(September 11, 2000).

721. 11th Civil Chamber of the Supreme Court, Decision No.2000/9489-2000/9234(November 23, 2000).

722. Lancome Parfums et Beaute CIE v. The Turkish Patent Institute, 1stAdministrative Court of Ankara, Decision No.1995/885-1996/769 (October 9, 1996) (NotifiedDecember 12, 1996).

723. Ibid.

Vol. 92 TMR 529

in its visual, phonetical and semantic aspects, so that it can bedistinguished from the trademark CONTOUR at first sight.724

The 1st Administrative Court of Ankara conformed to theState Council’s decision and ruled the withdrawal of the decision ofthe TPI refusing the plaintiff’s trademark application.725

The defendant appealed the decision of the 9th CommercialCourt of Istanbul ordering the cancellation of its trademarkregistration for GLASSCO-ARC and the removal of the wordGLASSCO from its trade name.726

The Supreme Court overturned the initial decision ruling thatthe removal of the word GLASSCO from the defendant’s tradename is not well grounded due to the lack of evidence concerningthe confusion caused by the word GLASSCO in the defendant’strade name. Thus, the decision to remove the word GLASSCO fromthe trade name was not justified. Adding suffixes or prefixes to theword GLASSCO could avoid any confusion with similartrademarks, including GLASSCO.

On the matter of cancellation of the trademark registration forGLASSCO-ARC, the Supreme Court upheld the initial decision.The defendants have appealed further for reconsideration of theSupreme Court’s decision, but the case is not yet finalized.727


An action was instituted in 1996 for the determination andprohibition of the infringement of trademark rights, for unfaircompetition, and for compensation for moral and materialdamages.728

The plaintiff claimed that it produces goods bearing theregistered LOFT trademark, that these products are only sold bycontractual/authorized sales outlets and, that the sale of lowquality goods bearing the LOFT trademark by the defendant,which is not a contractual sale outlet, constitutes an infringementof plaintiff’s trademark rights. The plaintiff requested that suchunfair competition be determined and stopped and thatcompensation for moral and material damages be granted.

724. 10th Chamber of the State Council (Highest Administrative Court), Decision No.

1997/930-2000/226 (May 4, 2000) (Notified July 5, 2000).

725. 1st Administrative Court of Ankara, Decision No. 2000/1189-2000/1505 (December21, 200) (Notified January 17, 2001).

726. Verrerie Cristallerie D’Arques J.G. Durand CIE v. Glassco Insaat Sanayi ve TicaretLtd. Sti. Solmaz Ev Gerecleri Sanayi ve Ticaret Koll Sti., 9th Commercial Court of Istanbul,Decision No. 1997/475- 2000/382 (May 1, 2000).

727. 11th Civil Chamber of the Supreme Court, Decision No. 2000/8107-2000/9979(December 12, 2000) (Notified February 5, 2001).

728. 5th Commercial Court of Ankara, Decision No. 1995/298 - 1996/1589 (November 28,1996).

530 Vol. 92 TMR

The defendant objected by asserting that its products werepurchased from a third company, that defendant was not awarethat the products were counterfeit, and therefore that no unfaircompetition and no compensation could be found against thedefendant.

The Supreme Court had decided in 1997 in this action that thedefendant was marketing counterfeit goods in such way as tocreate confusion with the plaintiff’s trademark, and that suchbehavior is an act of trademark infringement and unfaircompetition. However, the Court said the request for compensationwas not justified, since the defendant acted in good faith and hadnot committed any fault, thereby upholding the decision of the 5thCommercial Court.729

Upon the plaintiff’s appeal, the Supreme Court, reviewing theaction under Article 58 of the Turkish Code of Commerce,overturned the initial decision on the matter of compensation andconfirmed that the defendant, who is a trader/merchant, should actas a prudent merchant. As a result, defendant should not purchaseand offer for sale in its premises counterfeit goods, originals ofwhich are introduced into the market in Turkey by the plaintiff’sauthorized vendors/outlets. Accordingly, the Court held that “therejection of the claims for damages on ground that the defendant isin good faith and had not committed any fault is” inappropriatesince “the existence of infringement and unfair competition in thesense of Article 58 of the Turkish Code of Commerce, had alreadybeen found by the Court.”

The 5th Commercial Court persisted in its initial contrarydecision despite the 1997 decision of the Supreme Court, but theplaintiff filed an appeal before the General Assembly of theSupreme Court of Appeals. This Court finally decided thatupholding the initial decision was against proper procedure andthe law and that the decision of persistence should beoverturned.730


In the action instituted for the cancellation of defendant’strademark registration application for BADEM, the 3dCommercial Court of Ankara ruled for the cancellation of thetrademark application based on the prior trademark registrationsin the name of the plaintiff.731 Upon the defendant’s appeal, the

729. 11th Civil Chamber of the Supreme Court, Decision No. 1997/168 – 2101 (March

25, 1997).

730. General Assembly of the Civil Chambers of the Supreme Court, Decision No.1997/1-836 - 1997/1075 (December 17, 1997).

731. Ülker Gida Sanayi ve Ticaret A.S. v. Ülfet Bisküvi Ve Gida Sanayi A.S., 3dCommercial Court of Ankara, Decision No. 1998/1008 – 1999/630 (December 16, 1999).

Vol. 92 TMR 531

Supreme Court overturned the decision of the first instance Courton the ground that no trademark registration existed in the nameof the defendant on the date when the court action was filed.732

UNITED ARAB EMIRATES

I.B.15. Foreign Registrations

The petitioner was the registered proprietor of the trademarkASRAR for perfumes in Cyprus and claimed to be the originalowner of said mark. After obtaining a registration for thetrademark ASRAR for perfumes in Cyprus on February 20, 1996,the petitioner started to engage in research and development tomanufacture and launch the perfume product using the trademarkASRAR. On the other hand, the respondent had registered thesame trademark ASRAR in the UAE on September 21, 1996.Therefore, the petitioner applied to the Dubai Court of Cassationfor cancellation of the respondent’s trademark registration forASRAR in UAE.

The petitioner alleged that the respondent was aware of theprior adoption and registration of ASRAR by the petitioner inCyprus and that it even offered to pay the petitioner 100,000 UAEdirhams for assigning the trademark to the respondent, but thepetitioner refused the offer. Later the respondent obtained atrademark registration for ASRAR in the UAE.

The Court of the First Instance (“CFI”) rejected thepetitioner’s plea, and petitioner appealed to the Dubai Court ofAppeal. The Dubai Court of Appeal also turned down the appealand upheld the CFI decision. The petitioner then appealed to theDubai Court of Cassation.

In the Court of Cassation, the petitioner argued that it wasthe true and original adopter and owner of the disputed trademarkand had obtained a registration for the same in Cyprus and that ithad the intention to register the same in other jurisdictions of theworld, in particular the Middle East countries including UAE. Thepetitioner alleged that the respondent’s acquiescence of the priorownership of the subject mark by the petitioner could be inferredfrom the fact that the respondent had offered to pay 100,000 UAEdirhams to the petitioner for assigning the mark to the respondent.

In support of its claim of prior adoption, the petitionerproduced a letter from a law firm in Cyprus certifying that thepetitioner was the proprietor of the mark ASRAR in Cyprus underNo. 44685 registered on February 20, 1996, seven months beforerespondent obtained its registration in the UAE.

732. 11th Civil Chamber of the Supreme Court, Decision No. 2000/3308-2000/6468 (July

6, 2000).

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The petitioner also argued that the registration of thetrademark ASRAR under the name of the respondent would likelycreate confusion and deception in the minds of the public, whichwas in violation of the provisions of Article (5) of the Executive By-Laws No. 4/79 Concerning Suppression of Fraud and Deceit inCommercial Transactions which prohibited the commission offraud, deceit and imitation of trademarks. The petitioner furtherargued that UAE was a signatory to the Paris Convention onProtection of Industrial Ownership which extended protection totrademark owners against unlawful adoption and usage of theirmarks. It contended that the provisions of the Paris Conventionshould be applied in its favor and that the respondent’sregistration should be canceled.

The Court of Cassation held that, while claiming to have aregistration for ASRAR in Cyprus, the petitioner failed to presentto the Court a true representation of the mark registered inCyprus for comparison with that registered in the UAE.733 Also,the petitioner failed to prove that the mark was well known in theUAE. In line with the existing case law, the Court held that toprotect a trademark in the UAE, the trademark had to be eitherregistered with the Ministry of Economics and Commerce or usedin commerce in the UAE. According to the Court, a foreignregistration of a trademark alone does not entitle the proprietorany protection in the UAE unless it is proved that the foreignmark is a well-known trademark. Only well-known marks canenjoy protection under the UAE Trademark Law and applicableprovisions of the Paris Convention. As a result, the petitioner’sappeal was rejected. It was ordered to bear all the costs andexpenses of the proceedings amounting to 1000 UAE dirhams andthe deposited bond was declared confiscated.

UNITED KINGDOM

I.A.2. Assignments

In Ball v. The Eden Project Limited and Another,734 theclaimant was the co-founder of the Eden Project, a visitorattraction and botanical research center in Cornwall, England. TheEden Project was operated by a Trust through the first defendant,The Eden Project Limited. The claimant was appointed as adirector of the defendant, but, contrary to his expectations, was notappointed Chief Executive Officer. The claimant considered thathe had received inadequate compensation for his early work on theProject, and on October 15, 1997, applied to register THE EDEN

733. Dubai Court of Cassation No. 138/2000, September 24, 2001.

734. Chancery Division, High Court of Justice, April 11, 2001. The Times, June 6, 2001.

Vol. 92 TMR 533

PROJECT as a trademark in his own name and without theconsent or prior knowledge of the defendant or the Trust.

Relations between the claimant and first defendantdeteriorated and the claimant was ultimately removed as adirector of the first defendant. He brought an action forcompensation. The defendants counterclaimed for an order thatthe claimant assign the mark THE EDEN PROJECT to them, andsought summary judgment on that claim.

The defendants argued that since the claimant had been, at allrelevant times, a director of the first defendant, he owed it afiduciary duty to further its interests, and not his own, and that anapplication to register the trademark THE EDEN PROJECT inthe claimant’s name rather than that of the first defendant was abreach of fiduciary duty.

The Court agreed that the claimant was in breach of hisfiduciary duty. The claimant was aware that all efforts to realizethe Project would be made, paid for, and channeled through thefirst defendant. The name THE EDEN PROJECT had been usedby the first defendant since August 1997, and goodwill in thatname would be generated by and on behalf of the first defendant.The claimant’s application for registration of the trademark waspurely for his personal interest, and was obviously in conflict withthe interests of the company he was bound to protect. Accordingly,the first defendant was entitled to have the mark assigned to it.

In Joe Cool (Manchester) Limited’s trademark registrationapplication,735 the applicant applied in 1995 for registration of themark PELLE PELLE MARC BUCHANAN for clothing in Class 25.The application was opposed by Pelle Pelle Inc.

During the course of the application there was a purportedassignment of the trademark application to a second company withthe same name. The assignment was recorded against theapplication at the Trade Marks Registry. The opponent arguedthat the assignment was a nullity because at the time of itsexecution the assignor did not exist as a legal entity, having beendissolved. The opponent claimed that the application would thenpass as bona vacantia to the Crown, which had no bona fideintention to use the mark, and that the application must thereforefail.

The Hearing Officer in the Trade Marks Registry held that theassignment was a nullity and invalid. The recording of thepurported assignment against an application when the assignmentwas void simply meant that it should not have been recorded andwas an irregularity in procedure that could be corrected.Accordingly, the record of the assignment should be removed withthe result that the application would revert back to the original

735. [2000] RPC 926.

534 Vol. 92 TMR

applicant. On the facts, it was unclear if the applicant had held theapplication at the date of its dissolution, but if it had, then theapplication would not “evaporate,” but would vest as bona vacantiain the Crown. The submission put forward by the opponents thatthe application was in the nature of an action by the company thatwould cease to exist on its dissolution was therefore rejected. Theapplication was as much an object of property as a registeredtrademark.

The lack of intention to use the mark had to be present at thedate of the application, so that even if the mark had vested in theCrown as bona vacantia, the exception under Section 32(3) of theTrade Marks Act 1994 did not apply.


An application for registration of the mark CONTURA fortoothbrushes filed in 1994 by Oral-B Laboratories736 under theTrade Marks Act 1938 was opposed by Wisdom ToothbrushesLimited which in turn applied in 1995 under the Trade Marks Act1994 to register its own mark WISDOM CONTOUR fortoothbrushes. That application was opposed by Oral-B.

In relation to the CONTURA application, the High Court heldthat the word was a near variant of contour, which had adescriptive meaning in relation to toothbrushes, and was thereforenot registrable. The success of Oral-B’s opposition to the WISDOMCONTOUR application depended on CONTURA being on theregister as an earlier registered mark pursuant to Section 5(2)(b)of the Trade Marks Act 1994 with the result that the WISDOMCONTOUR mark could proceed to registration once CONTURAhad been held unregistrable. Oral-B appealed to the Court ofAppeal against the refusal to register CONTURA, and against thedecision to allow WISDOM CONTOUR to proceed to registration.

The Court of Appeal confirmed the Judge’s decision thatCONTURA was visually similar to and phonetically almostidentical to the word contour. Accordingly, it was not registrableunder Section 9 of the 1938 Act. As there was no earlier registeredmark on the Register within Section 5(2)(b) of the 1994 Act,WISDOM CONTOUR could proceed to registration.

In the TONALITE HENNE trademark registrationapplication,737 the Hearing Officer in the Trade Marks Registryrefused registration of the mark in Class 3 for hair colorants, hairdyes, shampoos and other hair preparations all containing henna.The Hearing Officer accepted the opponent’s argument thatregistration should be refused under Section 3(1)(c) of the Trade

736. Oral-B Laboratories v. Wisdom Toothbrushes Limited, Court of Appeal, November

15, 2000 (unreported).

737. [2001] RPC 36.

Vol. 92 TMR 535

Marks Act 1994 on the grounds that the mark consistedexclusively of a sign or indication that may serve in the trade todesignate the kind, quality or other characteristics of the goods,since the meaning in French of the mark is “henna hue.”

The applicant appealed, arguing that the English meaning ofthe words should be a dictionary meaning, which it claimed was“henna tonality” and not “henna hue,” which was the meaningselected from the several available by experienced languagetranslators. The applicant also relied on the fact that the mark hadbeen registered in France.

The Appointed Person held that in identifying the correctmeaning of the mark, the evidence of translators as to the meaningconveyed by the mark in context was of greater assistance than themere provision of dictionary definitions from which he was invitedto choose one meaning. On the facts of the case, the translators allagreed that the word HUE was preferable to the word TONALITY.

It was common ground between the parties that the Englishexpression HENNA HUE would not, without evidence of use, beregistrable. The Appointed Person accepted that the Registry’spractice that foreign words did not have to be examined forregistrability by reference to their meaning in translation wascorrect, but this must be balanced against the need to ensure thattraders engaged in intra-community trade were not unjustifiablyprevented from using words in the language of other MemberStates of the European Union. The Registry could take intoaccount the fact that French was a modern language widelyunderstood and spoken in the United Kingdom and that the lessobscure a foreign word is, the greater the weight that had to begiven to its meaning in translation.

On the facts, the Appointed Person held that even if theordinary purchaser did not translate TONALITE as “hue,” thepurchaser would, when dealing with beauty care goods andappreciating that the language of the mark in question is French,believe that the word TONALITE was a further description of thehenna coloring.

In the absence of evidence of the circumstances under whichthe mark was registered in France, no additional weight should begiven to the mere fact of a French registration. Accordingly, theappeal was dismissed and the opponent’s objections were upheld.


In the Legal Aid Board’s trademark registration application,738

the Legal Aid Board appealed from a decision of the HearingOfficer for the Registrar of Trade Marks that had refused anapplication to register the words LEGAL AID on the grounds that

738. Chancery Division, High Court of Justice, October 3, 2000 (unreported).

536 Vol. 92 TMR

they are devoid of any distinctive character under Section 3(1)(b) ofthe Trade Marks Act 1994.

On appeal to the High Court, the Legal Aid Board was able toshow that the words LEGAL AID had been known to the publicsince 1949, and had come to denote the provision of publicly-funded legal assistance by the Legal Aid Board. The mark,therefore, fell within the proviso to Section 3 of the Trade MarksAct 1994, for before the date of application for registration, it had,in fact, acquired a distinctive character as a result of the use madeof it. The public was clearly aware of the mark, which had acquireda distinctive character through use, and it is irrelevant whetherthe public was aware of the name of the body administering thescheme. It was sufficient for the public to be aware that thescheme existed, and that it was distinguishable from any otherscheme.


In the ABERCROMBIE trademark registration application,739

the applicant sought to register ABERCROMBIE for articles ofclothing, excluding those bearing a tartan pattern. The applicationwas opposed on the basis that the mark was not capable ofdistinguishing the goods of the applicant, and should be refusedregistration under Section 3(1)(a) of the Trade Marks Act 1994,and also under Section 3(1)(b) on the basis that it was devoid ofany distinctive character because it consisted of a commonsurname in Scotland. The opponent produced evidence that themark, or its phonetic equivalent, appeared 265 times in Scottishtelephone directories. The Hearing Officer rejected the oppositionand the opponent appealed.

The Appointed Person held that the frequency of occurrence ofthe surname had to be considered throughout the territory of themark and, on the evidence, ABERCROMBIE was not a commonsurname. The fact that the mark was a surname did notautomatically make it unregistrable, and the mark was capable ofdistinguishing the applicant’s goods from those of other suppliers.


In the 800 FLOWERS trademark registration application,740

the applicant appealed from the decision of the High Court741 thatthe mark 800 FLOWERS would very likely be taken in the futureto be an alpha numeric phone number for ordering flowers with a

739. Trade Marks Registry, March 26, 2001 (unreported).

740. 1-800 Flowers Inc. v. Phonenames Limited, Court of Appeal, May 17, 2001. TheTimes, July 9, 2001.

741. Reported in 91 TMR 537 (2001).

Vol. 92 TMR 537

clear descriptive meaning. The High Court found that confusionwas inevitable as soon as the public became educated about theuse of alpha-numeric freephone numbers and the trademark wasput into use by the applicant. Anybody dialing the number 0800Flowers would, in fact, contact the opponent, an English companythat had actual use of the alpha-numeric freephone number 0800Flowers and that was also in the florist business.

The High Court found that registration would be contrary toSection 10 of the Trade Marks Act 1938 because the mark had noinherent capacity to distinguish the applicant’s services, and theapplicant’s intention to use the mark in the United Kingdom wasconditional upon obtaining the use of the corresponding phonenumber, so it did not have the requisite intention to use the markfor the purposes of Sections 17 and 68 of the Trade Marks Act1938.

The Court of Appeal dismissed the applicant’s appeal,confirming that the inherent distinctiveness of the mark, for whichthe registration application had been filed in 1993, had to bejudged against the background of the increasingly widespread useof alpha-numeric phone numbers in the United Kingdom. It wasclear that the applicant had adopted the mark because of itstelephonic significance, and because of the existence of theopportunity for commercial exploitation of the correspondingfreephone number. As a result, the mark was no more than anencoded telephone number, and did not have the inherent capacityto distinguish its services. It was inevitable that since theapplicant did not have use of the 0800 Flowers number, any use ofthe mark by the applicant would cause confusion. In addition, theHigh Court Judge had been right to conclude that the applicantdid not have the requisite intention to use the mark.

In Financial System Software (UK) Limited v. FinancialSoftware Systems Inc,742 the applicant appealed from the HighCourt decision743 that the letters FSS as a proposed mark forcomputer programming services, and advisory and consultancyservices, all relating to computer programming in Class 42, hadnot become distinctive by use as denoting the services of theapplicant.

The Court of Appeal confirmed that the Registrar of TradeMarks had correctly followed what was then current practice inconcluding that unpronounceable, three-letter marks are primafacie unregistrable under the Trade Marks Act 1938. The HighCourt Judge was also correct in holding that other traders in thesame field might want to use the same initials as an abbreviationof their trade name, and that the proposed mark was, therefore,

742. [2001] EWCA Civ 386 (unreported).

743. Reported in 91 TMR 537 (2001).

538 Vol. 92 TMR

inherently incapable of distinguishing the services of one providerfrom those of another.

The High Court Judge had also been correct to ask whetherthe initials were being used by the applicant simply as anabbreviation of its corporate title or were being used to distinguishthe services that it supplied. The judge had been entitled toconclude, on the evidence, that use other than as an abbreviationwas insignificant. The Court of Appeal found that this was notinconsistent with the finding in parallel proceedings that FSScould be registered under the more liberal regime of the TradeMarks Act 1994 as a trademark for goods in Class 9, namely,personal computers and computer software for use in the field offinancial services.


In the RALEIGH INTERNATIONAL trademark registrationapplication,744 an application was made to register the markRALEIGH INTERNATIONAL plus a globe device on behalf of acharity whose objects were the furtherance of education, and thesocial and physical training of young people. The application citeda wide variety of goods and services in six different classes. Theapplication was opposed by the company that manufactures andsells Raleigh bicycles and that was the proprietor of a number ofregistered RALEIGH marks for cycles, parts therefor and clothingfor cyclists. The opponent cited Section 5(2) of the Trade Marks Act1994, raising a conflict with its earlier registered marks, andstating that there was a likelihood of confusion, and also citedSection 5(4) Trade Marks Act 1994, claiming that use of the markwas liable to be prevented by an action for passing off.

Although the opponent had licensed its mark for use onclothing and other items, such as badges, pens, toys and giftware,and an isotonic drink, it did not have sufficient evidence toestablish that licensing took place prior to the date on which theapplication was filed. The Hearing Officer in the Trade MarksRegistry allowed the mark to proceed to registration, but withamendments to the specification of goods to exclude clothing forcyclists and badges related to cycling.

The opponent appealed to the Appointed Person who heldthat, in order to succeed under Section 5(2), the opponent had todemonstrate a genuine and properly substantiated likelihood ofconfusion. The question for the Court to answer was whether therewere similarities in the marks and the goods or services that wouldcombine to create a likelihood of confusion if the earlier registeredtrademark and the mark of the pending application were usedconcurrently or in connection with goods or services for which they

744. [2001] RPC 11.

Vol. 92 TMR 539

were, respectively, registered and proposed to be registered. Thisquestion had to be answered with due regard for the commercialrealities of the marketplace, bearing in mind that distinctiveness,resemblance and proximity of trading were matters of fact anddegree that had to be given such weight and priority as theydeserved as part of an overall assessment. A belief in the existenceof a licensing or joint venture arrangement between the partieswould satisfy the requirement of confusion under Section 5(2).

An objection under Section 5(2) could succeed on the strengthof the distinctiveness and reputation of the earlier mark, even ifapart from the marks in question people might not otherwiseexpect those undertakings to be supplying goods or services of thekind in question. Highly distinctive marks would be afforded widerprotection than less distinctive marks. The question whetherlicensed use of the trademark could be taken into accountdepended on whether it was use that was liable to have amplifiedthe distinctiveness and reputation of the mark.

On the facts of the case, the word RALEIGH was the primarydistinguishing feature of the applicant’s mark and the wordINTERNATIONAL and the globe device merely added theinformation that the applicant traded internationally. They wouldnot operate to negative confusion if the applicant’s mark was usedin a context where the word RALEIGH was likely to be taken as areference to the opponent. The use of the applicant’s mark as atrademark for goods designed for, or used by, cyclists would giverise to a likelihood of confusion. However, Article 13 of CouncilDirective 89/104/EEC was binding on the Registrar. This Articlestates that, where grounds for refusal of registration exist inrespect of only some of the goods or services for which a mark issought to be registered, refusal of registration shall cover thosegoods or services only. Accordingly, the decision of the HearingOfficer was correct.

In an application to register BETTY’S KITCHENCORONATION STREET745 for various food products in Classes 29and 30 filed by Granada Television Limited, the makers of thetelevision soap opera Coronation Street, an opposition was lodgedby a company that ran a number of restaurants/cafes andassociated shops, as well as a mail order business for hampers,food and beverages all under the mark BETTY’S.

The opponent contended that the application should be refusedunder Section 5(2)(b) because of the mark’s similarity to theopponent’s earlier trademark that is registered for identical orsimilar goods, and because there was a likelihood of confusion. Asto confusion, it was contended that consumer awareness of the

745. [2001] RPC 825.

540 Vol. 92 TMR

practice of dual branding would lead consumers to assume a linkbetween Granada and the opponent.

In reply, the applicant contended that the reputation andgoodwill enjoyed by the opponent was geographically limited, andthat differences between the two companies’ goods, customer basesand trade channels, meant there was little likelihood of confusion.

The Hearing Officer in the Trade Marks Registry upheld theobjection under Section 5(2)(b). The risk of the public assumingthat this was a dual branded product was accepted, and the publicwould assume a connection between the applicant and theopponent.


The Royal County of Berkshire Polo Club applied to registerthe mark 10 ROYAL BERKSHIRE POLO CLUB746 in Class 3 forperfumery, soaps, cosmetics and similar products. The applicationwas opposed by Polo Lauren Company LP under Section 5(2) of theTrade Marks Act 1994 based on its earlier trademark POLO whichis also registered in Class 3 for the same and similar goods, andthe resulting likelihood of confusion.

In the Trade Marks Registry, the Hearing Officer refusedregistration on the grounds that the opponent had establishedsignificant goodwill and reputation in the word POLO and thatmost customers would consider the word POLO to be the mostrecognizable characteristic in the applicant’s mark. The HearingOfficer considered that customers could thereby be led to believethat those goods came from the opponent or were in some wayconnected with it, such as, for example, through the practice ofdual branding.

The applicant appealed to the Appointed Person who held thatthe ability to object to registration of a mark under Section 5(2) ofthe Trade Marks Act 1994 is conceptually indistinguishable froman action for infringement under Section 10(2). A successfulobjection to registration under Section 5(2) ensures thattrademarks whose use could successfully be challenged before theCourts are not registered. Applying the guidance given by theEuropean Court of Justice in Lloyd Schuhfabrik Meyer GmbH v.Klijsen Handel BV,747 the Court should assess the question oflikelihood of confusion with regard to the commercial realities ofthe marketplace, bearing in mind that distinctiveness,resemblance and proximity of trading are matters of fact anddegree that must be given such weight and priority as they deserveas part of the overall assessment. The mere association that thepublic might make between two trademarks as a result of similar

746. [2001] RPC 32.

747. [1999] All E R (EC) 587.

Vol. 92 TMR 541

linguistic content is not sufficient to establish likelihood ofconfusion.

The Appointed Person accepted the fact that the opponent’sown mark enjoyed a high degree of recognition and popularityestablished over a long period of time. However, when consideringthe question of confusion, the Appointed Person stressed that it isnecessary to beware of approaching the question with knowledgethat there is a question. The real task is to determine whatimpression the use of the second mark would make upon people inthe ordinary course of trade in goods of the kind specified in theapplication. On that basis, the Appointed Person was satisfied thatuse of the word POLO as part of the applicant’s mark did notcapture the distinctiveness of the opponent’s earlier mark.

The applicant’s mark would naturally be understood torepresent that the Royal Berkshire Polo Club was directly orindirectly responsible for the goods to which it was applied. Inaddition, the word POLO functioned as an adjective in theapplicant’s mark, whereas most people would perceive it to be usedin the opponent’s mark as a noun. The resulting differences ofperception might also be sufficient to preclude the likelihood ofconfusion. Accordingly, the appeal was allowed.

In the DUONEBS trademark registration application,748 anapplication for registration of the mark DUONEBS forpharmaceutical preparations and substances was opposed on thebasis that the mark was similar to the opponent’s earlier marksCOMBINEB, ATRO-NEB and DUOVENT, which are registered foridentical goods, and that there existed a likelihood of confusion onthe part of the public, including the likelihood of association withthe earlier trademark under Section 5(2) of the Trade Marks Act1994. The opponent also relied on Section 5(4)(a) of the TradeMarks Act 1994, which provides that a trademark shall not beregistered if, or to the extent that, its use in the United Kingdom isliable to be prevented by virtue of any rule of law, in particular,the law of passing off, protecting an unregistered trademark orother mark used in the course of trade.

At the initial hearing in the Trade Marks Registry, theHearing Officer held that there was no likelihood of confusionsince the terms DUO and NEBS considered individually weredescriptive and commonplace, the latter being understood to referto a nebulizer. The opponent appealed from that decision to theAppointed Person, relying solely on the DUOVENT mark.Evidence was given from pharmacists who said they might wellsee the descriptive nature of the prefix DUO as representing adual medicine, while the suffix NEBS indicated a nebulizer.

748. Trade Marks Registry, January 31, 2001 (unreported).

542 Vol. 92 TMR

However, the opponent argued that the ordinary consumer wouldnot make this association.

The opponent argued that the likelihood of confusion isestablished if the similarities between the two marks is such that asignificant section of the public would be likely to think that theDUONEBS goods came from the same “stable” of drugs as thosesold by the opponent.

The Appointed Person considered that when assessingconfusion for the purposes of Section 5(2), the necessary confusionwas confusion as to origin and not to mere association. However,when approaching Section 5(4), which is concerned withreputation, the opponent’s arguments could be relevant. However,such “stable” confusion would, the Appointed Person believed,appear only in very unusual cases, and was not present on theevidence of record. The Appointed Person considered that therewas not sufficient similarity between the two marks, taken as awhole, for the necessary likelihood of confusion to arise on a properglobal comparison, and that the average circumspect andobservant consumer would not necessarily consider that anythingmarked DUO had the same origin as another product markedDUO. Given that the finding in relation to Section 5(2) was thatthere was no confusion, the objection under Section 5(4)(a) alsofailed.


An application for registration of the mark KENCO, THEREAL COFFEE EXPERTS749 was opposed on the basis of Section3(3)(b) of the Trade Marks Act 1994 on the ground that it was ofsuch a nature as to deceive the public, for instance, as to thenature, quality or geographical origin of the goods or services, andalso on the basis of Section 3(6) on the ground that the applicationhad been made in bad faith.

The opponent claimed that the words THE REAL COFFEEEXPERTS were factual and capable of precise interpretation, andwould be taken at face value by the public, and therefore theapplicant could not legitimately claim proprietary use of the wordswithout evidence to prove that this was the case.

The Appointed Person held that while the opponent was ableto demonstrate that it was the market leader in the UnitedKingdom coffee market, there was no evidence that the applicant’smark was deceptive or more than recognizable advertising“puffery.” In addition there had been no behavior on the part of theapplicant that amounted to bad faith, even bearing in mind itsextended interpretation to cover acts that fall below standards ofacceptable commercial behavior. Accordingly, the opposition failed.

749. Trade Marks Registry, July 5, 2000 (unreported).

Vol. 92 TMR 543

I.B.11.d. Scandalous Mark

An applicant applied to register the mark TINY PENIS750 inClass 25 for clothing, footwear and headgear. The application wasinitially refused at the examination stage under Section 3(3)(a) ofthe Trade Marks Act 1994 on the ground that the mark wascontrary to accepted principles of morality. The applicant sought ahearing.

The Hearing Officer stated that when assessing whether amark was contrary to accepted principles of morality, morality wasto be judged against current thinking and susceptibilities. Whileuse of the words TINY PENIS in a proper descriptive context werenot such as to cause offense to the vast majority of persons, thefact that the applicant sought to use them as a means ofdifferentiating products in the course of trade meant that differentconsiderations applied. The Hearing Officer considered that toallow registration of the mark would cause offense to a substantialproportion of the purchasing public who would, without any choice,be exposed to the words out of context on clothing, advertisingmaterials and on display in public places for all members of thegeneral public to view. Accordingly, the application was refused.

I.B.11.e. Bad Faith

In the application to register BETTY’S KITCHENCORONATION STREET,751 the opponent contended that theapplication had been made in bad faith under Section 3(6) of theTrade Marks Act 1994, because the applicant had no intention touse the mark in the form set forth in the application, and theapplicant had no intention to use the mark across the full range ofgoods specified in the application.

In reply, the applicant produced packaging to be used on a hotpot meal and stated that the range of other goods listed in thespecification would be covered by future licensing agreements.

The Hearing Officer in the Trade Marks Registry upheld theobjection under Section 3(6). On the sample packaging that hadbeen supplied, the phrases BETTY’S KITCHEN andCORONATION STREET were some way apart, and in whollydifferent styles, and did nothing to suggest that a single compositemark was intended. Further, the application failed to the extentthat it specified goods other than pies and hot pots, since thesewere the only items for which the applicant could show actual use,and it had put forward no evidence that preparations were beingmade for expansion into other product areas.

750. [2001] RPC 33.

751. [2001] RPC 825.

544 Vol. 92 TMR

In the NONOGRAM trademark registration application,752 Ninvented a numerical puzzle, and entered into an agreement withD whereby D acted as N’s agent in relation to publication of thepuzzles in newspapers in the United Kingdom. D had suggesteduse of the name NONOGRAM, based on the first name of theJapanese inventor, Non. N was also dealing with a Japanesecompany K to develop a computer version of the puzzles. K appliedto register the mark NONOGRAM in the United Kingdom forcomputer games, toys and playthings without the knowledge orconsent of N, claiming to be protecting N’s rights.

K subsequently assigned the application to N, but it wasopposed by D, who claimed that D was the true owner of theNONOGRAM mark, having devised the word. D also claimed thatthe application had been made in bad faith, because K had noconnection with the mark at the date of the application, and thatdefect could not be cured by means of the subsequent assignmentto N.

The Hearing Officer refused registration, finding that, at thedate of the application for registration, the applicant could notclaim to be the proprietor of the mark for the goods for whichregistration was sought, and its behavior fell short of thestandards of acceptable behavior. As refusal of a registrationapplication made in bad faith was mandatory, the subsequentassignment was not relevant.


In the case of Reed Consumer Books Limited v. PomacoLimited,753 the claimant publisher had a paperback imprint underthe name MINERVA. Just after the launch of the imprint, thedefendant registered MINERVA in Class 16 for paper and paperarticles, printed matter, stationery, artists’ materials, officerequisites and other goods in Class 16.

The claimant brought proceedings for revocation of theregistration both for nonuse of the registered mark, and underSection 5(4)(a) of the Trade Marks Act 1994 on the ground that themark should not have been registered because its use was liable tobe prevented by virtue of the law of passing off.

The Judge held that where use of a registered mark is put inissue, Section 100 of the Trade Marks Act 1994 puts the burden ofproof on the proprietor to show what use has been made of themark. On the facts of the case, the defendant had used the markon printed stationery forms prior to the claimant’s launch.However, a small amount of publishing done by the defendantafter the claimant’s launch was not relevant “use” for the purposes

752. [2001] RPC 21.

753. [2000] FSR 734.

Vol. 92 TMR 545

of the Section, since the claimant’s imprint had quickly gainedsuch publicity and widespread recognition that use of the mark bythe defendant after its launch would amount to passing off, andnot be genuine use. On the facts, partial revocation of thedefendant’s registration was appropriate insofar as it coveredprinted matter other than stationery.

For the purposes of Section 5(4)(a) of the Trade Marks Act1994, the Judge accepted the fact that the proper construction ofthis Section is to assume that the mark is put in use by theregistered proprietor on the date of application, and then to assesswhether this would amount to passing off with respect to some orall of the goods covered by the specification. It was accepted in thiscase that the claimant had created goodwill in the mark before thedefendant had applied for registration. Accordingly, if thedefendant had applied the mark to books on the date theapplication was filed, this would have amounted to passing off, andthe registration was liable to be revoked on this basis as well.

I.B.18. Joint Ownership

The applicant applied to register the mark CODAS754 in April1995, for computers, software, maintenance and repair services,education and training relating to computers, all for use in relationto the oil distribution industry. The applicant had used the markcontinuously on or in connection with computer software systemsfor management, sales and accounting services relating to theinstallation, repair and maintenance of computers, and educationand training services in connection with computers, since 1975.The application was opposed by the proprietor of the mark CODA,which was registered, inter alia, for computer software forfinancial and accounting purposes, as well as training servicesrelating to such software. The opponent has used the mark CODAcontinuously since 1981, and had a number of customers in the oilindustry.

Despite the fact that the parties had been trading side-by-sidefor about 14 years, there was no evidence of actual confusion. Theapplicant sought registration on the ground of honest concurrentuse.

The Hearing Officer in the Trade Marks Registry held thatwhere an applicant has shown honest concurrent use of a mark,but the application is opposed, refusal is not always mandatory.Honest concurrent use was a factor to be taken into account inassessing whether there is a likelihood of confusion under Section5(2) of the Trade Marks Act 1994.

On a comparison based solely on the similarity and scope ofthe marks, there was every likelihood of confusion arising.

754. [2001] RPC 14.

546 Vol. 92 TMR

However, the evidence showed that the marks had beenfunctioning as trademarks for their respective owners for aconsiderable period of time without actual confusion occurring. Toallow the application to proceed as drafted could well give rise toconfusion, but limiting it to the goods for which there had beenconcurrent use would prevent this.


The mother and sister of Diana, Princess of Wales, were jointexecutrices of the estate of the late Princess. They applied toregister the words DIANA, PRINCESS OF WALES755 in order tocontrol the sale of items bearing her name, which they claimedwould be taken by the public to be licensed by the charitablememorial fund that had been set up following her death.

The Hearing Officer in the Trade Marks Registry refused theapplication on the grounds that at the date of the application themark did not satisfy the requirement that it would serve todistinguish the goods of the applicants from those of otherundertakings because the public would not expect allcommemorative items bearing the name of the Princess toemanate from a single source. The fact that merchandise from thememorial fund bore an additional logo to denote its official statusalso suggested that the memorial fund was not confident that thepublic would otherwise automatically assume it to be the source ofthe goods.

I.B.26. Detriment/Unfair Advantage

An applicant applied to register LOADED756 for clothing. Theapplication was opposed by the publisher of a magazine for youngmen also called LOADED for which the opponent had aregistration. The opponent contended that the mark should not beregistered since under Section 5(3) of the Trade Marks Act 1994the mark was identical to the opponent’s earlier mark. Although itwas to be registered for goods or services that were not similar, theearlier mark had a reputation in the United Kingdom, and the useof the later mark without due cause would take unfair advantageof, or be detrimental to, the distinctive character or the reputationof the earlier LOADED trademark.

At the initial hearing in the Trade Marks Registry, theHearing Officer held that the opponent had not establishedsufficient reputation in its mark, and an appeal was made to theAppointed Person.

755. [2001] ETMR 25.

756. Trade Marks Registry, September 22, 2000 (unreported).

Vol. 92 TMR 547

The Appointed Person accepted the fact that the case lawestablished that the requisite detriment/unfair advantage could beproved by satisfying the Tribunal that the public makes aconnection between the two marks, and that the connection is pre-judicial to the earlier mark. The evidence established that among asignificant proportion of the public, LOADED magazine was wellknown, and the Appointed Person concluded that it was inevitablethat a substantial number of those familiar with the reputationwould call the magazine to mind upon seeing clothes marketedwith the LOADED brand. As to whether this “calling to mind”would lead to significant detriment to the opponent, or benefit theapplicant, and effectively dilute the image linked to LOADEDmagazine, the Appointed Person concluded that if the applicationwere accepted, it could well affect advertisers’ perception of themagazine and their willingness to advertise in it. The magazinewould also be inhibited from marketing further promotionalclothing bearing its trademark. The Appointed Person stated thisto be a borderline case, but concluded that it was inescapable thatsome of the kudos given to LOADED magazine would accrue toany clothing sold under the LOADED trademark, and thepossibility that widespread use of the mark on clothing couldmaterially affect the ability of the magazine to obtainadvertisements from clothing retailers was real, and that theopponent had succeeded in discharging the onus on it todemonstrate detriment and a sufficient likelihood of unfairadvantage being taken by the applicant.


In the Yakult (Bottle Shape) trademark registrationapplication,757 an application was made to register the shape of abottle used in the sale of a cultured milk drink. The HearingOfficer refused the application under Section 3(1)(b) of the TradeMarks Act 1994 on the grounds that the sign was devoid of anydistinctive character, and that it was not saved by the proviso toSection 3(1) as having acquired distinctiveness through use priorto the date of the application. The applicant appealed.

The High Court confirmed the Hearing Officer’s conclusionthat the average consumer was likely to conclude that the bottlewas of a fairly ordinary shape, and there was nothing that wouldconvey the fact that the bottle was intended to be an indication oforigin or that it performed that function. Even were it to berecognized as being of a different shape to other bottles on themarket, there was nothing inherent in it that proclaimed it ashaving trademark significance.

757. Kabushiki Kaisha Yakult Honsha v. Registrar of Trade Marks. Chancery Division,

High Court of Justice, March 8, 2000 (unreported).

548 Vol. 92 TMR

In the Henkel’s trademark registration application,758 Henkelapplied to register a three-dimensional mark comprising acylindrical tablet with layers of different thicknesses and the colorsblue and white. The Trade Marks Registry rejected theapplication, stating that the mark was devoid of any distinctivecharacter under Section 3(1)(b) of the Trade Marks Act 1994.Henkel appealed.

The Appointed Person held that it was insufficient to showthat the three-dimensional mark was new and visually distinctive,for it must be distinctive in a trademark sense. Distinctivenessmay be inherent in the shape and color combination chosen, or itmay only become distinctive in a trademark sense as a result ofuse. On the facts of the case, there had been no use, and therefore,the issue was whether there was any inherent distinctiveness inthe combination of shape and color of the tablet.

Henkel claimed that the Trade Marks Registry’s practice wasto allow registration of three color marks without evidence of use.The Appointed Person confirmed that this was only a guidelineand could not absolve the Registrar or the Appointed Person fromapproaching each case on its own facts. The Appointed Person wasnot satisfied that the combination of colors and shapes in a tabletof this nature would be seen by the average consumer as beingindicative of anything more than the different ingredients present,and would not inherently suggest that the combination constitutedan indication of origin rather than of content. Accordingly, theRegistrar had been right to reject the application.

I.B.28. Scent Marks

In the John Lewis of Hungerford Limited’s trademarkregistration application,759 the applicant sought to register “thesmell, aroma or essence of cinnamon” for furniture. Theapplication was refused on the ground that, while, as a matter oflaw, there was no objection to an applicant representing atrademark in words alone, the words included in the applicationform had to constitute an adequate representation of the marksought to be registered.

In the present case, the Registrar refused the application onthe grounds that the description was defective because it pre-supposed that the reader already knew what cinnamon smelledlike, and accordingly, could not stand on its own, but relied on thereader’s previous experience of the cinnamon smell. In addition,the description of the mark was ambiguous because it was notclear whether the “essence of cinnamon” was any different to itssmell or aroma. Equally, the smell of cinnamon was probably open

758. Trade Marks Registry, March 15, 2001 (unreported).

759. [2001] RPC 28.

Vol. 92 TMR 549

to a wide degree of interpretation, because a person’s perception ofa smell was likely to be influenced by the circumstances underwhich they encountered it. The representation tendered forregistration was also found to be insufficiently precise to allowexaminers to compare the mark with potentially confusinglysimilar marks without the use of samples.

The applicant appealed from the decision of the Registrar tothe Appointed Person who held that the need to have somethingoutside the graphic representation on the application in order to beable to obtain a direct perception of the mark did not alwaysindicate that the representation on the application wasinadequate. However, the identity of a smell mark had to beclearly and unambiguously recorded in the graphic representationfiled. The words “the smell, aroma or essence of cinnamon” lackedprecision because they allowed a degree of subjectivity. Peoplewould need to know more in order to determine how closely a givensmell matched the one which it was intended to identify in theapplication. An application to register the smell of cinnamon asemitted by X where the nature and condition of X was clearly andunambiguously defined, would have been capable of satisfying therequirement for the graphic representation if X was, and waslikely to remain, generally accessible for use as a benchmark of thespecified smell. Accordingly the Appointed Person confirmed theRegistrar’s refusal of the application.

II.B. Identification of Goods or Services

In Altenic v. Reliance Water Controls Limited,760 anapplication was filed on behalf of the claimant, Altenic, on March15, 1997, for the mark CAREMIX in Class 7 for valves, valves foruse in water circulation, and blending valves. The claimantintended to use the valves in domestic central heating systems,and shortly after filing its trademark registration application, itsagents concluded that the products were more appropriate to Class11. The Trade Marks Registry accepted an application to changethe Class. After advertisement of the mark, the respondent,Reliance, opposed the application having itself applied to registerthe mark CAREMIX on March 27, 1997.

At an initial hearing, the Hearing Officer in the Trade MarksRegistry held that the change of class from 7 to 11 was ultra viresas a result of Section 39 of the Trade Marks Act 1994, which statesthat amendments to an application may only be made to correctobvious errors or mistakes, and if they do not substantially affectthe identity of the mark or extend the goods or services covered bythe application. Accordingly, the Hearing Officer held that theapplication should be treated as if it had always been for a mark in

760. [2001] RPC 13.

550 Vol. 92 TMR

Class 7. However, the Hearing Officer went on to say that theapplication could not proceed to registration in Class 7 because, atthe date the application was filed with the Trade Marks Registry,it did not contain a statement of the goods or services in relation towhich the mark was sought to be registered, as required by Section32(2)(c) of the Trade Marks Act 1994.

On this analysis, the statement of goods had only beenreceived when the trademark agents wrote to request the changeof class on May 16, 1997, and pursuant to Section 33 of the TradeMarks Act 1994, that should be treated as the date of filing. TheHearing Officer then remitted the application back to theexamination section so that the section could look at it again,taking into account the correct date of the application. Altenicappealed.

The High Court allowed the appeal, holding that classificationwas primarily a matter of convenience in administration, and thematter of real importance is the specification of goods or services.The classes merely represented convenient, but loosely defined,pigeon-holes into which applications could be put. Section 32 of theTrade Marks Act 1994 did not make identification of the class oneof the critical requirements. The proprietor had to decide on whatgoods and services he intended to use his mark, but once he haddone so and had communicated the choice to the Registrar, it wasfor the Registrar to decide which was the most convenient andappropriate class. This was consistent with the absence of anyrequirement in Section 32 to identify a class number on theapplication for registration. The Registrar therefore had power toamend the classification after the application had been filed.


In the case of V & S Vin Sprit Aktiebolag AB v. Absolut BeachPty Limited,761 the claimant company sells vodka under thetrademark ABSOLUT and owns a United Kingdom trademark forthat word in Class 25 for shirts, tee shirts, ties, dresses and tights.The defendant is an Australian company that supplies beachwearvia the Internet and by mail order. The defendant is also theproprietor of an Australian trademark ABSOLUT BEACH forswimwear, leisure wear, surf wear and other goods in Class 25.

The claimant sued the defendant for trademark infringementand for passing off in the United Kingdom. Leave to serve courtprocess out of the jurisdiction was granted in December 2000. Thedefendant applied for a declaration that the Court had nojurisdiction to try the claim, or alternatively, for an orderdischarging the order for leave to serve out of the jurisdiction.

761. Chancery Division, High Court of Justice, May 15, 2001 (unreported).

Vol. 92 TMR 551

The defendant’s application was refused on the ground thatthe Court only had to be satisfied that the claimant hadestablished that it had a good arguable case of trademarkinfringement or passing off that was actionable in the UnitedKingdom, and that the United Kingdom was the proper place inwhich to bring the claim. Although the defendant’s case that theaction should be stayed and proceedings instituted in Australiawas attractive, it would be a strong exercise of the Court’sdiscretion to prevent the claimant from persisting in its action.

III.A. Infringement and Defenses

In Euromarket Designs Inc. v. Peters & Another,762 theclaimant was a United States company that runs a chain of storesin the United States that sells household goods and furnitureunder the trade name Crate & Barrel. It has a United Kingdomtrademark registration for the words CRATE & BARREL in Class21 for miscellaneous kitchenware. The second defendant is anIrish company that is owned and operated by the first defendant,which operates one store in Dublin, Republic of Ireland, calledCrate & Barrel. The claimant sued the defendants for trademarkinfringement in the United Kingdom, claiming that claimant’smark had been infringed by an advertisement placed by thedefendants in the United Kingdom publication “Homes &Gardens,” and by the defendants’ Internet website, which uses thetrade name CRATE & BARREL.

In their defense, the defendants argued that theadvertisement did not constitute use of the mark in the UnitedKingdom, or alternatively, there was no “use in the course oftrade” within the meaning of Section 10 of the Trade Marks Act1994. The claimant sought summary judgment on the basis thatthese defenses had no realistic prospect of success.

The Judge considered that the advertisement in “Homes &Gardens” would convey to an ordinary reader simply that therewas an enterprise called Crate & Barrel in Dublin selling furnitureand household goods, and the average reader would surmise thatthis was a shop. The appropriate test for whether this constituted“use in the course of trade” for the infringement provisions inSection 10 of the Trade Marks Act 1994 is whether a reasonabletrader would regard the use concerned as being use in the courseof trade in relation to goods in the Member State in question. If atrader from Ireland is deliberately trying to sell goods or servicesinto the United Kingdom, that would be regarded as creating asufficient link to constitute use in the course of trade here.However, if a trader was merely carrying on business in Irelandand one of his advertisements slipped over the border into the

762. [2001] FSR 20.

552 Vol. 92 TMR

United Kingdom, the reasonable businessman would not regardthat as meaning that he was trading into the United Kingdom.

Accordingly, on the facts, the advertisement in “Homes &Gardens” was not infringing use. However, the Judge stressed thatthis was only a provisional view, first, because this was anapplication for summary judgment, and second, because hisinterpretation was one which might have to be considered by theEuropean Court of Justice, as it concerned the extent to whichnational trademark law could impinge on trade within othercountries. The latter question followed from the argumentadvanced by the claimant that where unconnected parties haveregistrations for the same mark in different countries, to theextent that they advertise in journals with even a slightinternational circulation, this will constitute infringement of theother party’s mark.

In relation to use of the name on the Internet website, it wasclear from the site that the defendants are located in Dublin, andthere is nothing in the way they had traded via the site to sustainthe view that the defendants’ website activities constitute tradedirected at the United Kingdom market.

In the case of Primark Stores Limited and Another v. LollipopClothing Limited,763 the claimants are the registered proprietors ofthe trademarks PRIMARK and DENIM COMPANY for clothing.Jeans bearing PRIMARK and DENIM CO. labels were being soldby a rival retailer, and the claimants sued for trademarkinfringement and passing off, and sought summary judgment.

The defendant’s case was that it was arguable that the jeans itwas selling were in fact authentic PRIMARK jeans that thedefendant had acquired from claimants’ supplier. Accordingly, itargued there would be no deception for the purposes of passing off,and it would have a defense to the trademark action under Section10(6) of the Trade Marks Act 1994, which states that it is lawful touse a registered trademark for the purpose of identifying goods asthose of the proprietor, and also under Section 12(1), which statesthat a trademark proprietor’s rights are exhausted once goodshave been put on the market in the European Economic Area bythe proprietor, or with his consent.

The Judge held that on the evidence it was clear that theclaimants sold goods only through their own outlets and they couldnot come on to the market in any other way. On the assumptionthat the jeans had been manufactured to claimants’ order by theirsupplier, although the goods were not counterfeit, they were notclaimants’ goods. It was not enough that the goods should havebeen manufactured to claimants’ specification; they must havebeen adopted by claimants as their goods. Without such adoption,

763. [2001] ETMR 30.

Vol. 92 TMR 553

claimants could not be taken to have held themselves out as thesource of the goods or that they accepted responsibility for theirquality, and the goods were not, therefore, goods put on the marketby claimants under their trademark. Accordingly, there was nodefense to the trademark infringement action.


In the case of Decon Laboratories Limited v. Fred BakerScientific Limited and Another,764 the claimant manufactures arange of cleaning products primarily intended for use inlaboratories, under the name DECON. It has two United Kingdomtrademark registrations as well as one Community Trade Markregistration. The majority of the claimant’s sales are of a productcalled DECON 90, which is widely used for cleaning glassware inlaboratories. It sued the defendants for trademark infringement inrespect of their sales of sterile products and cleaning materialsthat were sold under brand names that include the word DECON,such as DECON-AHOL and DECON-PHASE.

The defendants denied infringement and claimed that of theclaimant’s two United Kingdom registrations, the one registered inClass 5 for sanitary substances, disinfectants, sterilizingsubstances and preparations, should be revoked for nonuse, andthe registration in Class 3 for cleaning and decontaminatingsubstances and preparations should be revoked, in part, so as to belimited to reflect the claimant’s nonuse in the registered mark forsterilized cleaning materials used in “clean rooms,” which is wherethe defendant’s products were used. If the registrations werelimited in this manner, there would be no infringement.

The Court found that the defendant’s products fell within thespecification of goods of both of the United Kingdom registrationsand the Community Trade Mark registration. Use of the wordDECON plus a descriptive suffix was therefore the use of anidentical mark on goods for which the claimant had a registrationand infringement under Section 10(1) of the Trade Marks Act 1994was made out. Even if the marks were not identical, there was stillinfringement under Section 10(2), because the claimant had asignificant reputation in the mark DECON such that it would beknown to persons who might also be purchasers of the defendant’ssterile products. There was therefore substantial likelihood ofconfusion and infringement under Section 10(2) was inevitable.

In relation to the counterclaim for partial revocation, it wasnot right to define a restrictive class of goods negatively byreference to the defendant’s activities. The Court must considerthe articles for which the proprietor had in fact used its mark, and,on the evidence, the use was non-domestic, and it was not possible,

764. [2001] RPC 17.

554 Vol. 92 TMR

sensibly, to formulate a narrower specification. The Court,therefore, ordered that the registrations should be qualified by thewords “All for non-domestic use,” but this did not save thedefendants from infringement.

In the case of Gina Shoes Limited v. Medici Limited765 theclaimant is the registered proprietor of the mark GINA for shoes.It has manufactured high quality designer label shoes since the1950s and obtained a trademark registration in 1981. Theclaimant’s reputation as manufacturer of luxury designer ladiesshoes in the United Kingdom is undisputed, and the brand is sosuccessful that the claimant found advertising unnecessary as thefashion media gave it substantial coverage.

The defendant produces various ranges of bridal wear and hadused the name GINA for its “mother of the bride” range for some25 years. It later extended its range to include shoes under thebrand. The claimant became aware of the defendant’s activitiesthrough customer inquiries, and immediately notified thedefendant of its trademark infringement. The defendant undertooknot to apply the GINA mark to its footwear, but claimed that itssales staff often put a GINA label on the insole of shoes in order toidentify them as matching a range of clothing. The claimant wasunsatisfied with this and applied for interlocutory relief fortrademark infringement and passing off. The defendant ceasedmaking shoes and alleged that the claimant’s ulterior motive forcontinuing the litigation was to drive the defendant out ofbusiness. The defendant eventually conceded the allegations oftrademark infringement and passing off in the face of evidencethat its supplier had not been prepared to attach the GINA label tothe shoes and had warned the defendant of the existence of theclaimant’s brand.

The Court was asked to grant appropriate relief. The Courtfound that on the facts the defendant was fully aware of theclaimant’s reputation, but nevertheless deliberately and recklesslymarked the goods with the GINA label with full knowledge of theinfringement.

On the facts, there was a risk that a member of the public,seeing the defendant’s catalog, would believe that the shoes beingworn by the models were GINA shoes. The defendant was,therefore, under an obligation to add a disclaimer to the catalogs,indicating that its GINA mark did not apply to the footwear.Accordingly, an injunction to restrain infringement of the GINAtrademark would be granted.

765. Chancery Division, High Court of Justice, January 30, 2001 (unreported).

Vol. 92 TMR 555


In the case of BP Amoco plc v. John Kelly Limited andAnother,766 BP had two United Kingdom trademark registrationsfor fuel and related goods and services, both marks consisting ofthe color green, which was identified by a particular Pantoneshade. The shade in question had been used since 1989 for adistinctive green livery with a yellow “accent” on its petrolstations.

The respondents traded in oil and petrol in the Republic ofIreland and adopted a livery for their petrol station that was aslightly darker shade of green than used by BP. BP sued fortrademark infringement and passing off, contending that itsregistered marks gave it the exclusive right to use the color greenon the exterior surfaces of petrol stations selling and supplying thespecified goods and services. At first instance, the Judge dismissedboth the claim and the counterclaim for a declaration of invalidityof the marks. Both parties appealed.

The Northern Ireland Court of Appeal confirmed that theregistrations were valid and infringed. Section 1(1) of the TradeMarks Act 1994 made it clear that a single color or combination ofcolors could be registered as a trademark, subject to satisfying therequirement that the mark is capable of distinguishing the goodsor services for which registration is sought. Accordingly, thequestion for the Court was whether the color green, on its own andwithout the BP logo, established the necessary association byconsumers with BP petrol stations.

The Court held that by the time the current litigation hadbeen commenced, BP had established sufficient consumerassociation to be able to take advantage of the proviso to Section47(1) of the Trade Marks Act 1994 that in consequence of the usethat had been made of it, the mark had, after registration,acquired a distinctive character. There was no objection, moreover,to registering marks that the applicant always intended to be usedin conjunction with other indicia, here the BP logo. Accordingly,the registrations were valid.

By way of defense, the respondent could not rely on the factthat it was using other material with the mark that served todistinguish it from the mark as used by BP, such as, in the presentcase, by use of the name “Top” instead of use of the BP logo.Taking account of all factors relevant to the circumstances of thecase, including the similarity of the petrol stations’ get-up (tradedress), the Court was satisfied that likelihood of confusion of partof the public had been established. The choice of color by therespondent was made in order to indicate its commercialconnection with the petrol sold, and this constituted use of the

766. Northern Ireland Court of Appeal, February 2, 2001 (unreported).

556 Vol. 92 TMR

color in a trademark sense. Accordingly there had beeninfringement of the BP trademarks.

III.A.5. Fair Use

In the case of British Airways plc v. Ryanair Limited,767

Ryanair placed a number of newspaper advertisements comparingtheir own airline fares with those of British Airways. One washeadlined EXPENSIVE BA----DS and the second EXPENSIVE BA.British Airways sued for trademark infringement and maliciousfalsehood. Ryanair relied on the defense in Section 10(6) of theTrade Marks Act 1994, which provides that a mark is not infringedwhere it is used to identify goods or services as those of itsproprietor or a licensee, provided that the use is in accordance withhonest practices and does not without due cause take unfairadvantage of or is detrimental to the distinctive character orrepute of the trademark. Ryanair also relied on the defense inSection 11(2)(b), which provides that the use of indicationsconcerning the kind, quality, quantity of services or othercharacteristics does not infringe the mark provided the use is inaccordance with honest practices. Ryanair also claimed that theadvertisements were substantially true.

British Airways submitted that Section 10(6) should betreated as providing a defense only if there was compliance withthe conditions for comparative advertising laid down in theEuropean Commission’s directive on comparative advertising,which prohibits denigration of another’s trademark. The Judgerejected this argument, and held that Section 10(6) and Section11(2)(b) of the Trade Marks Act 1994 permit honest comparativeadvertising using a competitor’s trademark. The qualification thatuse had to be in accordance with honest practices simply confirmedthat honest descriptive use was permitted.

There was nothing in the Comparative Advertising Directivethat affected the provisions of the Trade Marks Act 1994.Denigration of another’s mark could be lawful, provided that usewas in accordance with honest practices. An advertisement thatmade seriously misleading comparisons could not be honest, but onthe facts, Ryanair had made the most favorable price comparisonsthat it could, and the Judge found that the average consumerwould not find them misleading. Accordingly, the action failed.

Arsenal Football Club plc is the registered proprietor of theword marks ARSENAL and GUNNERS and of device marksconsisting of a crest and cannon. All its marks are registered forclothing, sports clothing and footwear, and the club sells a widerange of official merchandise and memorabilia bearing the marks.

767. [2001] FSR 32.

Vol. 92 TMR 557

In Arsenal Football Club plc v. Reed,768 the Club broughtproceedings for passing off and trademark infringement againstthe defendant, who sold Club memorabilia and souvenirs from astall outside the Arsenal football ground.

The defendant accepted that his products bore the wordsARSENAL and GUNNERS, as well as designs that weresubstantially identical to the crest and cannon devices, but claimedthat these were simply badges of allegiance and were not used astrademarks within Section 10 of the Trade Marks Act 1994.Alternatively, the defendant argued that the trademarks should berevoked for nonuse under Section 46 of the Trade Marks Act 1994,or under Section 47, as they were incapable of distinguishing theclaimant’s goods.

The Judge held that the mere fact that the words or designswere used on an item of clothing did not mean that they werenecessarily used as a trademark. The Arsenal signs on thedefendant’s products could be perceived by the public simply as abadge of support for the Club and not as indicating their tradeorigin. The question of whether non-trademark use couldconstitute infringement of registered trademark rights was amatter that needed to be resolved by the European Court ofJustice, and a reference for a ruling was made.

In relation to the application for revocation, the Judge heldthat the Club’s marks were capable of being distinctive in atrademark sense, and the fact that they could also be used in anon-trademark way did not render them nondistinctive.Accordingly, the application for revocation failed.


In DaimlerChrysler AG v. Alavi (tracking as Merc),769 theclaimant is the registered proprietor of the marks MERCEDESand MERCEDES BENZ for motor vehicles and limited articles ofclothing. The claimant sued the defendant for alleged trademarkinfringement and passing off in respect of defendant’s clothing andfootwear shop called MERC on Carnaby Street, London.

The action was brought under Section 10(2)(b) of the TradeMarks Act 1994 as being one based on use of a similar mark onidentical clothing goods where there was a likelihood of confusionon the part of the public, including the likelihood of associationwith the registered mark owner. The Court held that, whileevidence existed to demonstrate that the word MERC was used asan abbreviation for the name of the car, the evidence did notjustify a finding that there was a likelihood of confusion, and theaction under Section 10(2) failed.

768. [2001] 2 CMLR 23.


558 Vol. 92 TMR

In relation to the claimant’s marks registered for motorvehicles, the action was brought under Section 10(3) of the TradeMarks Act 1994 as being use of an identical or similar mark ondissimilar goods where the use takes unfair advantage of or isdetrimental to the distinctive character or repute of the registeredtrademark. On this claim, the Court rejected the claimant’sargument that its marks would be harmed by association with abusiness selling clothing aimed at mods and skinheads, and thatthe claimant had failed to demonstrate that the defendant wasgaining an unfair advantage from any association or that anyassociation had resulted in the reputation of claimant’s mark beingdamaged.

In the case of D Green & Co (Stoke Newington) Limited andAnother v. Regalzone Limited,770 the claimant is the proprietor ofthe mark SPORK for cutlery, forks and spoons. The mark is usedfor a disposable plastic utensil that is a cross between a spoon anda fork and is widely used in the fast food trade. The defendants,and other suppliers, supply virtually identical utensils. Theclaimant sued for infringement of its mark on the basis of use bythe defendant of the word SPORK on price lists and in a letter to acustomer. The Judge at first instance held the mark valid andinfringed. The defendant appealed, and the Court of Appealoverturned the judgment.

The Judge at first instance had found that the word SPORKhad developed a generic or descriptive meaning, and on that basisthe Court of Appeal stated that the correct test for assessinginfringement was whether the average recipient of one of thedefendant’s price lists would have understood it to refer, whenlisting SPORK, to a product supplied or manufactured by theclaimant. On the evidence, the answer was clearly “no” since thedefendant’s price list described it as the product of a Danishmanufacturer. Accordingly, there was no infringing trademarkuse.

III.A.24. Personal Names

In the case of Asprey & Garrard Limited v. WRA (Guns)Limited (trading as William R. Asprey Esq.) and Another,771 theclaimant is an established family business that has traded inluxury items since 1781. The defendant is a direct descendant ofthe original founder of Asprey, and has been employed by theclaimant since 1990. From 1996 until the defendant’s departure in1999, he ran the gun room. In 1995, the claimant merged withanother company and changed its trade name to Asprey &Garrard. The defendant claimed to be unhappy about the

770. 2001 EWCA Civ 639 (unreported).


Vol. 92 TMR 559

company’s merger and left. He then set up his own company,trading under his name of William R. Asprey Esq., and specializedin the field of guns. Many of the products sold by the defendantwere marked with the ASPREY name. The defendant’s shop isgeographically close to the claimant’s shop, and the defendant tooka showcase for his goods in the foyer of the Dorchester Hotel,where the claimant has a similar showcase.

The claimant commenced proceedings for passing off andtrademark infringement pursuant to Sections 10(1) and 10(2) ofthe Trade Marks Act 1994 based on its mark ASPREY. Thedefendant did not deny that his trade name was deliberatelychosen in order to exploit his family’s long experience and goodwillin the luxury goods business. However, he claimed that he had adefense to the action under Section11(2)(a) of the Trade Marks Act1994 on the basis that he had not infringed the ASPREY mark,since he was trading under his own name.

The claimant contended that there had been several instancesof confusion and applied for summary judgment on the basis thatthe defendant had no real prospect of successfully defending theclaim.

The Court held that it was established law that an individualis entitled to carry on business in his own name, so long as he didnothing more than that, and nothing that would cause confusionwith the name of the business of another, and so long as he did sohonestly. However, in the present case there was evidence ofactual confusion between the two shops and their goods and thedefendant was not simply using the mark as a trade name, but asa mark for his goods.

Although the use of the mark might have originally beenhonest, the defendant had continued its use despite the fact thatthere had been instances of actual confusion. The test for honestyunder Section 11(2) of the Trade Marks Act 1994 is objective, andon the evidence it was difficult to conclude that use of the name bythe defendant was not deceptive. Accordingly, there was noarguable defense to the actions for passing off and trademarkinfringement.


In the case of Arsenal Football Club plc v. Reed,772 theclaimant brought proceedings for passing off, alleging that sales bythe defendant of unlicensed souvenirs would mislead members ofthe public into believing that the goods were the products of, orlicensed by, the claimant if they bore one of the Club’s marks.

The Court found that there was no evidence of actualconfusion despite the fact that the defendant had been in business

772. [2001] 2 CMLR 23.

560 Vol. 92 TMR

for 31 years, and his business was not insubstantial. In theabsence of direct evidence of confusion, it was for the claimant toprove its case by alternative means. The Court accepted that somesupporters would wish to obtain official merchandise from theclaimant so as to support the Club financially. However, that wasonly part of the reason for purchase, the greater reason being toobtain the products as badges of allegiance. All products sold bythe claimant were marked as “official” products and were suppliedto a number of vendors, including the defendant. The defendantmarked such merchandise as “official.” The Court did not acceptthat any significant number of customers wanting to purchaselicensed goods would be confused into purchasing items that werenot marked as “official” from the defendant. The Court concludedthat the use of the Club’s marks on the defendant’s productscarried no message of trade origin and, accordingly, the passing offclaim failed.

In the case of TeleWorks Limited v. Telework Group plc,773 theclaimant traded as TeleWorks and was founded by M in 1997. In2000, its business consisted of registering domain names, Internetwebsite and email hosting, design and supply of computer networkinfrastructure, and general IT support. It had two full-time andtwo part-time employees.

The defendant was the holding company for two activecompanies: TeleWare, established in 1992 and dealing inintelligent telephony services, and Workplace Systems, establishedin 1986 and selling labor management software. In 2000, thedefendant announced proposals to market a combinedTELEWORK product. The claimant sued for passing off, claimingthat as a result of its pre-existing reputation in the nameTELEWORKS, use of the same name by the defendant constitutedan actionable misrepresentation. The defendant claimed that theproducts and services supplied by its subsidiaries, along with theirmethods of trading, were so different from those of the claimantthat there was no likelihood of customer confusion.

The Court found that in July 2000, intelligent telephony,teleworking, and labor management software were not significantparts of the claimant’s business, although it might have hoped toexpand in those areas. The claimant had to demonstrate the extentof the reputation attached to its business in July 2000. A passingoff action could not protect any future goodwill, such as goodwillthat would accrue as the business expanded. The claimant’sevidence established only a very limited reputation in terms of sizeand geographical extent, and the activities covered by itsreputation were Internet working and computer network services.

773. Chancery Division, High Court of Justice, April 27, 2001 (unreported).

Vol. 92 TMR 561

The way in which the claimant and defendant operatedsuggested that there would not be confusion. The claimant’sreputation was closely connected with M, whereas the defendant’scustomers dealt with either TeleWare or Workplace Systems.There was a significant difference between the activities of theparties, and the products purchased from them were bought incircumstances that were not conducive to source confusion.

The word TELEWORK had entered the language as both anoun and a verb. In the case of a name with descriptiveconnotations, differences between the claimant and defendant insuch matters as manner of trading, area of activity and size ofundertaking could be given more weight than would otherwise bethe case. Despite the similarity of names, the claimant had beenunable to produce any evidence of actual confusion by customers.No misrepresentation or threatened misrepresentation wasestablished, and the action was dismissed.

In the case of BP Amoco plc v. John Kelly Limited andAnother,774 BP’s claim for passing off failed, despite the finding ina parallel trademark infringement case that there was a likelihoodof confusion. The Court held that so far as the passing off case wasconcerned, since the customer could see, once he or she wassufficiently close to the defendant’s petrol station, that the productbeing sold was not that of BP, there was no misrepresentation asto the origin of the goods at the actual point at which they werepurchased.

The case of MedGen Inc. v. Passion for Life ProductsLimited775 provides a salutary lesson for trademark owners whoare considering exclusive licenses to overseas distributors. Theclaimant, a United States corporation, developed a product toprevent snoring, which it branded SNORENZ. In 1998, thedefendant was appointed exclusive distributor for the product inthe United Kingdom, the product having never been sold in theUnited Kingdom before. For 18 months, the defendant marketedand sold the product in the United Kingdom under the brandSNORENZ, mainly in packaging designed by the defendant, andwhich carried the defendant’s, but not the claimant’s, trade name.In August 1998, the defendant applied to register SNORENZ inthe United Kingdom as trademark in its own name, withoutinforming the claimant.

By the end of 1999, the commercial arrangement between theparties was breaking down, and the defendant arranged for asimilar product to be made by another manufacturer, without theknowledge of the claimant. The claimant and defendant ceaseddoing business in December 1999, and in May 2000, the defendant


775. [2001] FSR 30.

562 Vol. 92 TMR

launched a new product under the brand SNOREEZE. This wasmandated in packaging that was for all practical purposesidentical to the SNORENZ packaging, except for the change ofname and a red banner with the words “new improved formula.”Press advertisements announced the re-branding of SNORENZ toSNOREEZE.

The claimant sued for passing off. There was no dispute thatSNORENZ and its packaging had an established and substantialgoodwill. The dispute was whether that goodwill was owned by theclaimant or the defendant.

The Court held that on the facts of the case goodwill in theSNORENZ brand belonged to the defendant. The claimant did nottrade in the United Kingdom. The SNORENZ packaging carried noreference to the claimant. The whole business of the marketingand sale of the product was carried out by the defendant, and allreferences on the packaging and advertisements of the productwere to the defendant. The wholesale or retail trade would onlyknow the defendant as the source of the product and would go tothe defendant if there were any cause for complaint.

Accordingly, the action for passing off failed, and the originalowner effectively lost the rights to the name of its product in theUnited Kingdom.

In the case of Impact Plus Plc and Others v. ImpactExecutives Limited,776 the claimant had operated since 1990,providing management consultancy services for banking andfinance companies. The defendant is an agency supplyingtemporary executives to companies in the banking and financesector. The claimant alleged that the defendant’s use of the nameIMPACT EXECUTIVES amounted to passing off. The defendantcompany was subsequently acquired by a recruitment companycalled Harvey Nash, and thereafter included that name on allpromotional materials.

The Court found that on the evidence there was no real,tangible danger of confusion resulting from the defendant’s use ofits trade name. While the results achieved by the services of theparties might ultimately be similar, there were significant andsufficient differences between them so as to avoid any confusion inthe public mind. The evidence, at its highest, indicated that onewitness had been “caused to wonder” whether the parties were thesame entity. The Court concluded that there was no real danger ofany deception or confusion being caused. The examples of possibleconfusion that had arisen during the course of the trial weremerely hypothetical and/or fanciful in nature. Further, the wordIMPACT was a descriptive, laudatory term that was widely used


Vol. 92 TMR 563

by companies offering a variety of goods and services with noevidence of confusion between any of them.

In the case of Local Sunday Newspapers Limited v. JohnsonPress plc,777 the claimant, L, publishes local newspapers inBedfordshire and parts of the adjoining counties of Hertfordshireand Buckinghamshire. The defendant, N, was the largestpublisher of local newspapers in the nearby county ofNorthamptonshire. In January 2001, both L and N werecontemplating launching a free Sunday newspaper. L planned apublication to be called NORTHAMPTONSHIRE ON SUNDAY tobe distributed in a single town outside the town of Northampton. Nwas planning a publication to be called NORTHANTS ONSUNDAY. N had already arranged advance publicity for itslaunch, but when it heard of L’s plan, it decided to bring forwardthe launch of its publication to coincide with that of L on June 10,2001.

L applied for an interim injunction to restrain publication ofNORTHANTS ON SUNDAY. At the ex parte hearing, the Courtgranted an injunction against N on the basis that L gave anundertaking not to publish its own newspaper on June 10.

At the inter partes hearing for injunctive relief brought by L,it argued that confusion was inevitable due to the similarities intitle and geographical distribution areas. N countered this byclaiming that it had a significant local presence, was well knownas an advertiser of local businesses, some 98 percent of itsadvertising revenue derived from Northamptonshire based clients,and that the use of ON SUNDAY was descriptive and common. Inaddition N claimed that confusion was unlikely, since themastheads of the papers were very different, and its ownpublication clearly referred to it to being the sister publication oftwo of N’s other well-known titles.

The Court held that on the facts, the likelihood of confusion onthe part of readers was limited to those in Northamptonshire whoknew of L. Since L did not circulate newspapers in the area, anysuch risk was de minimis. In addition, the strong presence of Nwithin the area, the advertising campaign, and the difference inappearance of the two publications were all factors that indicatedthat L did not have a strong claim in passing off. L’s plans todistribute newspapers in Northamptonshire were modest and therisk of substantial damage was slight and quantifiable. The statusquo, therefore, favored N, since it had already advertised thelaunch of its publication, and an injunction to prevent this wouldcause real substantial commercial damage that would be difficultto quantify. If N were forced to change the name of the publication,it would be commercially unfeasible to change it back after a win

777. Chancery Division, High Court of Justice, June 19, 2001 (unreported).

564 Vol. 92 TMR

at trial. Accordingly, the balance of convenience and of justicefavored a refusal of the injunction sought.


In Dyson Appliances Limited v. Hoover Limited (No. 2),778 theclaimant had succeeded in an action against the defendant forinfringement of its patent for a domestic vacuum cleaner that thedefendant had marketed as the HOOVER TRIPLE VORTEX.Further sales of the infringing machine were enjoined, but, in viewof the imminent expiry of the patent, the claimant sought furtherinjunctive relief for a period after expiration of the patent, both toprevent the defendant from marketing any vacuum cleaner madein accordance with the patented invention, and also frommarketing any vacuum cleaner under the trademark VORTEX.

While the post-expiration injunction with respect to thepatented invention was granted, that with respect to thetrademark was refused. Accepting that the Court had jurisdictionto make post-expiration injunctions of the kind sought, the Courtconcluded that the power should only be exercised where it wasjust and convenient to do so.

The defendant had been selling a noninfringing vacuumcleaner under the mark VORTEX POWER, and the injunctionsought would have had the consequence of forcing the defendant toremove the mark from legitimate machines. To make the orderrequested with respect to the trademark would be adisproportionate and unjust remedy to the harm apprehended.


In DaimlerChrysler AG v. Alavi (trading as Merc),779 theclaimant is the registered proprietor of the marks MERCEDESand MERCEDES BENZ for motor vehicles and limited articles ofclothing. The claimant sued the defendant for alleged trademarkinfringement and passing off in respect of his clothing andfootwear shop called MERC on Carnaby Street, London.

The defendant counterclaimed for revocation of the claimant’sregistrations for clothing. The Judge recognized that there wasjudicial disagreement about the effect of some use only within alarge class of goods. While the Judge considered that the claimantwould be adequately protected with respect to its sales ofpromotional garments if its marks were revoked except for clothingfor which claimant had shown actual use, the issue was one ofinterpretation of Section 46 of the Trade Marks Act 1994 and byimplication also of Article 10 of the European Union Directive,

778. [2001] RPC 27.


Vol. 92 TMR 565

which the Trade Marks Act 1994 implemented. Accordingly, theproper course was to make a reference to the European Court ofJustice on this point.

The applicant applied to revoke the registration for the markSECOND SKIN,780 registered in Class 5 for medical and surgicalbandages; plasters and dressings, all for medical or surgical uses;and for material prepared for bandaging, on the grounds of nonuse under Section 46 of the Trade Marks Act 1994. The proprietorwas unable to show use of the mark as registered, but had madeuse of the mark 2ND SKIN as a wound dressing. The proprietorclaimed that this use could be relied on to counter the applicationfor revocation, and claimed that its goods were ordered orally overthe telephone where the use of 2ND SKIN and SECOND SKINwere indistinguishable, and that such use amounted to use of themark as registered.

The Court considered whether by replacing SECOND SKINwith 2ND SKIN the proprietor had thereby altered the distinctivecharacter of the trademark from its registered form. The way inwhich the public would view the two marks was relevant, and inthis instance the two marks immediately brought the samemeaning to mind. A member of the public on seeing 2ND SKINwould immediately translate it to SECOND SKIN. One was arecognizable alternative of the other and could be used in place ofthe other, without any loss of meaning.

However, even if oral use of the trademark would suffice todefeat an application for revocation for nonuse, it was clear thatthe requirements of Section 46 of the Trade Marks Act 1994 werenot satisfied merely by customers using the mark, since theSection clearly refers to “use by the proprietor or with his consent.”As the registered proprietor had failed to show use of 2ND SKINover the whole range of goods included in the specification, theregistration would be revoked in part, leaving only dressings, allfor medical and surgical use.

III.M. Licensing Issues

In the case of Scandecor Development AB v. ScandecorMarketing AB and Others,781 the House of Lords was asked to ruleon the entitlement of competing individuals and companies to usethe mark SCANDECOR for similar goods and similar businessesin circumstances where the businesses had originally been undercommon ownership.

In the course of the proceedings, revocation of two registeredmarks was sought under Section 46(1)(d) of the Trade Marks Act1994 on the grounds that in consequence of the use made of the

780. [2001] RPC 30.

781. [2001] 2 CMLR 30.

566 Vol. 92 TMR

marks by the proprietor or with the proprietor’s consent, themarks had become liable to mislead the public. A particular issuearose as to whether the use of a mark by an exclusive licenseeunder a bare license under which the trademark owner did notexercise any quality control, was objectionable as inherently likelyto deceive. This used to be the generally accepted view based onthe idea that customers purchasing the goods will assume them tobe the subject of quality control by the ultimate trademark owner,and if there is no such control, then the mark has becomeinherently deceptive. The House of Lords recognized that thepublic is now accustomed to the practice of trademarks beinglicensed and would not automatically be confused. However, therewas still considerable scope for confusion and deception once sucha license had come to an end. The House of Lords considered thatthe question was one of fundamental importance and accordinglyreferred the matter to the European Court of Justice.

Additional questions were also raised as to the criteria to beapplied in deciding whether companies form part of a single“undertaking” for the purposes of Article 2 of the EuropeanCommunity Trade Marks Directive, which requires thattrademarks be capable of distinguishing the goods or services ofone “undertaking” from those of another “undertaking”; whether acompany is a “person” for the purpose of Section 11(2)(a) of theTrade Marks Act 1994 and can, therefore, take advantage of theown name defense; and whether the power of revocation conferredby Section 46(1), implementing Article 12(2) of the Directive,should be construed as a mandatory power, required to beexercised if the requisite criteria are met, or as a discretionarypower, available to be exercised if the criteria are met.

V. Internet Issues

In the case of Marks & Spencer Plc v. Cottrell and Others,782

the claimant, a well-known retailer, applied for an order for thecommittal of the defendant for contempt of Court on the basis of 13breaches of three separate orders of the Court. The defendant hadcopied the claimant’s Internet website on to domains owned andcontrolled by him and used confusingly similar names to directcustomers to his site. Customers who thought they were dealingwith the claimant were mistakenly induced to divulge credit carddetails to the defendant, who then used them for his own purposes.

The Court stated that the evidence established not merely asimple case of a breach of a Court order, it was a case of continuingconduct in breach of Court order by exploiting domain names,infringing the intellectual property rights of the claimant in orderto perpetrate frauds on third party suppliers and members of the

782. Chancery Division, High Court of Justice, February 26, 2001 (unreported).

Vol. 92 TMR 567

public, and in the course of so doing, seriously putting at risk thegoodwill of the claimant.

The Court expressed concern that, while domain nameproviders would comply with a Court order prohibiting the use of aparticular name, they were apparently unable, because theirbusinesses were computer driven, to prevent the defendant fromregistering other imitations of the names, albeit that these werealso prohibited by the order. The Court indicated that it seemedfar from clear that domain name providers abdicated responsibilitywith respect to the names that they permitted to be registered ontheir site, although that was a matter that was not required to bedecided in the instant case. The defendant was committed toprison for 12 months, and the Court authorized the transfer of thedomain names in question from the name of the defendant to thename of the claimant.

V.A. Domain Names

In the case of Easyjet Airline Co. Limited and Another v.Dainty,783 the defendant set up an online estate agency site inFebruary 2000 under the domain name EASYREALESTATE.CO.UK,which bore a strikingly similar appearance to the set up, colorsand designs of the claimants’ sites. In response to a letter beforeaction, the defendant questioned the claimants’ sole right to usethe word EASY and stated, falsely, that defendant had a numberof offers from potential investors keen to purchase the domainname. The defendant stated there would be an auction sale on July7, 2000. In fact, the defendant had made no effort to market thesite or to run an online estate agency business.

The claimants sued for passing off, and on an application forsummary judgment, sought an injunction and other relief,including an order that the domain name be transferred to them.

The Court considered that it was clear that the defendant hadset up the site solely to pressure the claimants into making anoffer to defendant. There was a real likelihood of the public beingdeceived and of the claimants suffering damage. Accordingly, aninjunction would be granted. It was also a suitable case in whichthe defendant should be ordered to transfer the domain name tothe claimants so as to prevent the defendant from being equippedor equipping another with an instrument of fraud.

In the case of DaimlerChrysler AG v. Alavi (trading asMerc),784 the claimant sued the defendant for passing off. TheCourt found on the passing off claim that it was clear that theclaimant had strong goodwill associated with the MERCEDES andMERCEDES BENZ marks for vehicles, and there was evidence of

783. Chancery Division, High Court of Justice, February 19, 2001 (unreported).


568 Vol. 92 TMR

use of the mark on promotional clothing. However, on theevidence, the claimant’s goodwill did not extend to the use of theword MERC as a mark for clothing. There was no evidence ofconfusion, and the defendant had traded under the name MERC,both in respect of a shop and by applying the mark to clothing,since 1978. On the facts, defendant had not made any relevantmisrepresentation when defendant commenced trading, and themanner of trading was unchanged. Defendant was, therefore,entitled to the benefit of a trading goodwill associated with thename MERC for clothing, and the action for passing off failed.

In the case of Lawyers Online Limited v. LawyeronlineLimited,785 the claimant was providing Internet services to lawyersand registered the domain name LAWYERSONLINE.CO.UK.Some time later, claimant expanded its services and planned toprovide free legal advice to the public from its legally qualifiedmembers. Ten days before the claimant launched the service to thepublic, the defendants set up an Internet website also offeringlegal advice to the public under the domain nameLAWYERONLINE.CO.UK, with advice being provided byemployed legal executives. The claimant sued for passing off, andthe Court held that it was entitled to an interim injunction toprevent the defendant from trading under the domain name. TheJudge rejected the defendant’s submission that there could be nogoodwill in words that merely described the product or servicebeing offered and accepted, albeit at an interim stage, and theJudge accepted that the claimant’s trading history made it at leastarguable that it had goodwill attached to the domain name.

The Judge also attached significance to the fact that thedefendant had, in error, used the claimant’s business name“lawyers on line” as a metatag for the defendant’s own website.Clearly, this would have the effect of greatly increasing confusion.

In the case of Britannia Building Society v. Prangley,786 theclaimant sued for passing off and trademark infringementfollowing the defendant’s registration of the domain nameBRITANNIABUILDINGSOCIETY.COM. The defendant claimedthat he was establishing a business to provide British buildingworkers to employers in Iran. At the date when proceedings wereissued, there was no Internet website operating from the address.The Court found that the defendant’s evidence was incredible. Hemust have known that the name represented the claimant, whichwas a very well-known financial institution, and that it was acommercially desirable address. Any use of the domain name inthe United Kingdom would lead to a serious risk of confusion. Itwas also clear that the domain name was to be used for fraudulent

785. Chancery Division, High Court of Justice, July 7, 2000 (unreported).

786. Chancery Division, High Court of Justice, June 12, 2000 (unreported).

Vol. 92 TMR 569

gain, and it was appropriate for the Court to intervene and grantinjunctive relief.

In the case of MBNA America Bank NA & Another v.Freeman,787 the defendant operated a retail Internet website andproposed to diversify into the business of being a web banneradvertising exchange for which defendant registered the domainname MBNA.CO.UK. The claimant is the world’s largestindependent credit card issuer and has a European Communitytrademark registration for the stylized representation of theletters MBNA. It also conducts Internet business from its ownwebsite MBNA.COM.

The claimant sued the defendant for infringement of itsregistered trademark and for passing off. Claimant made anapplication for an interim injunction. The defendant claimed thathe had chosen the website name as an acronym for the phrase“marketing banners for net advertising.” The claimant claimedthat defendant had deliberately chosen his domain name in orderto increase the number of visitors to his website, that his use of theacronym was not credible and that it was to be inferred thatdefendant had deliberately chosen his domain name in order totake advantage of the claimant’s goodwill.

The Judge refused to grant an injunction restraining thedefendant from activating the website on the grounds that anorder was made for an expedited trial and that the defendant hadno present intention to activate the website. The claimant had notprovided evidence of any significant risk that it would sufferfinancial loss and damage to its goodwill if the site were activatedbefore trial. However, if this did happen, the claimant would befree to go back to Court.

The Judge did, however, grant an injunction restraining thedefendant from selling or offering for sale his domain name. Thedefendant accepted that the value of the website could beincreased by the number of hits, and having held that theclaimant’s case on trademark infringement and passing off was atleast arguable, it was undesirable that the defendant should be ina position in which he could, pending trial, sell the domain nameat a price that might have been enhanced by improper use of theclaimant’s goodwill.

URUGUAY


Advance Magazine Publishers Inc. (“AMPI”), the owner of thefamous trademark VOGUE, filed a claim before the High

787. [2001] EBLR 13.

570 Vol. 92 TMR

Administrative Court seeking the annulment of the IndustrialProperty’s Office’s resolution that granted the application forregistration of VOGUE in International Classes 18, 25 and 42 ofVogue S.A., a local store selling women’s clothing and accessories.AMPI grounded its claim mainly on the worldwide notoriety andfame of its VOGUE trademark, its prior registration of VOGUE inClass 16 in Uruguay, and the allegation that Vogue S.A. engagedin unfair competition by copying the VOGUE mark.

The High Administrative Court decreed to accept the AMPIpetition, and therefore annulled the contested administrativeaction.788 The Court argued that the notoriety of the plaintiff’strademark VOGUE was deemed sufficiently proved by allmembers of the courtroom, not only by the evidence and thearguments presented in the case, but also due to theacknowledgment of the Industrial Property Office’s Legal Adviser’sOffice, which admits that “VOGUE is undoubtedly famous in Class16 and it would not be wrong to affirm that int. classes 18, 25 and42 are related to the same.” The Court also stated that it wasproved in the proceedings that when Vogue S.A. applied for itstrademark registration, Vogue S.A. was aware of the existence ofthe plaintiff’s opposing trademark. In the ruling, it was alsopointed out that although it is true that the Uruguayan firmVogue S.A. has operated since 1962, at a time when the well-known VOGUE Magazine had not been yet introduced in thecountry, there are no elements to authorize Vogue S.A. to registerVOGUE, not even in Classes 18, 25 and 42, whose connection withClass 16 was not denied by the Legal Adviser’s Office of theIndustrial Property Office. In addition, the Court stated that thereason for this decision is that protection of the notorioustrademark goes beyond the class or classes in which it was grantedregistration. Thus, since VOGUE is a notorious trademark, thespecialty principle should not be applied.

In conclusion, the High Administrative Court stated that eventhough it may seem too arbitrary to deny the right of Vogue S.A. toregister a part of its own trade name as a trademark, especiallywhen its existence as a legal entity is acknowledged and it is astore that has been established for several years, even before theregistration of VOGUE by the plaintiff, it is a fact that whenVogue S.A. applied for registration on September 4, 1991, it wasalready aware of the existence of the plaintiff’s prior trademarkVOGUE. Therefore, the Vogue S.A. application should have beenrejected.

788. Resolution of the High Administrative Court, May 7, 2001.

Vol. 92 TMR 571

VIETNAM


The National Office of Industrial Property of Vietnam(“NOIP”) refused protection of the trademark GMX for services inClasses 35 and 38 registered under International TrademarkRegistration No. 706374 in the name of GMX GesellschaftfurDetenkommunicationsdienste MBH.789 The reason for refusal wasthat the GMX mark is a combination of three simple letters thatcannot be pronounced as a word and therefore lacks anydistinctiveness pursuant to Article 6.2.a of Decree 63/CP providingdetailed regulations on industrial property.

Applicant, on its appeal, argued that the GMX mark hasbecome distinctive of the services through use in commerce, i.e.,has achieved a secondary meaning and accordingly should beregistered in accordance with the Vietnamese trademarklegislation.790 To prove secondary meaning, applicant submitted toNOIP evidence by way of a statutory declaration showing that (1)the GMX mark has been registered in 55 countries worldwide; (2)the mark was also registered as a domain name in over 90countries worldwide; (3) increasing numbers of the sale revenuesand advertising expenditures in connection with the mark for thepast two years; and (4) marketing materials documenting theworldwide extent and nature of use of the mark under the name ofGMX Gesellschaftfur.

In addition, applicant applied the regulation of “telle quelle”protection set forth in Article 6quinquies of the Paris Conventionto rebut the NOIP’s refusal. The GMX mark is validly registered inthe country of origin. This must mean the mark is not devoid ofany distinctive character. The registration of the mark must betherefore admitted in Vietnam pursuant to Article 6quinquies,Paris Convention, of which Vietnam is also a member.

The NOIP reversed its provisional refusal and granted aregistration, ruling that the GMX mark has been widely used bythe applicant in the marketplace and accordingly, is widelyrecognized by customers.791


TUV Product Service GmbH (“TUV”) is the owner ofInternational Trademark Registration No. 713005 for the markSMARTMARK covering services in Classes 35, 41 and 42. WhenTUV selected Vietnam as a further designated country for

789. Official Notice No. 2302N/2000, dated January 30, 2000.

790. Article 6.2.a of Decree 63.

791. Official Notice No. 1270/KN, dated November 22, 2000.

572 Vol. 92 TMR

protection of the mark according to the Madrid Agreement, NOIPrefused to protect the mark on the ground that it is consideredconfusingly similar to the SMART trademark, which is protectedin Vietnam under National Registration 23194 for goods andservices in Classes 12, 35, 36, 37, 38, 41 and 42.792

On the appeal, TUV argued that (1) though the citedregistration covers a wide range of goods and services in Classes12, 35, 36, 37, 38, 41 and 42, the SMART mark is primarily usedon automobiles in Class 12, having different traders and channelsof distribution from the services contemplated by TUV; and (2) theSMARTMARK mark when considered in its entirety, isdistinguishable from the cited SMART mark. The SMARTMARKmark is a coined word having no meaning, whereas the SMARTmark is a dictionary word that has a meaning in the Englishlanguage. As is common in Vietnam trademark practice, TUVprovided the NOIP with a letter of consent by the owner of theSMART mark to the registration and use of the SMARTMARKmark in association with services in Classes 35, 41 and 42.

The NOIP reversed its provisional refusal and granted aregistration of the SMARTMARK mark, ruling that (i) a letter ofconsent by the owner of the cited registration is some evidence thatsimultaneous use of the two marks will not cause confusion; and(ii) based on the overall differences in the respective trademarks,which are used in connection with dissimilar goods or services, noconfusion is likely to arise.793


The TRUONG SINH trademark dispute case has come to anend.794 After the Hearing, the Court of Hanoi’s People Court issueda judgment795 ordering the defendant, Truong Sinh Ltd., not to sellsoymilk in Class 32 under the mark TRUONG SINH, based onconfusion with the registered trademark TRUONG SINH of theplaintiff Foremost Company. Truong Sinh Ltd. appealed, and onSeptember 18, 2000, The Appeal Court issued Judgment No.115/DSPT, which upheld the decision of the Hearing Court. Asusual, the judgment was expected to be complied with voluntarily.Truong Sinh Ltd. did not, however, comply with the decision ofAppeal Court and complained to the Supreme People’s Prosecutorand Supreme People’s Court, asking for a review of the Judgment.The execution of Judgment was delayed until these competentauthorities gave opinions on this case.

792. Provisional Rejection No. 2439B/2000, dated June 15, 2000.

793. Official Notice No. 416/KN, dated April 24, 2001.

794. See 91 TMR 557 (2001).

795. Pursuant to the Judgment No. 08/DSST, dated March 9, 2000, the defendant wasforced to terminate production and sale of soymilk bearing the mark TRUONG SINH.

Vol. 92 TMR 573

Truong Sinh Ltd. also attempted to obtain support from otherstate agencies unconnected with trademarks. For example,following Truong Sinh Ltd.’s request, the Department of QualityManagement issued a dispatch No. 496/QLTP-DK, which declaresthat the components of concentrated sweet milk and soymilk aredifferent. Truong Sinh Ltd. relied on this as “new evidence” tojustify a review of the case. This demonstrated the Department ofQuality Management’s misunderstanding of trademark law.According to Vietnam’s trademark regulations, the similarity oftwo marks is not examined on the ground of the products’ originand chemical components. Although condensed milk is differentfrom soymilk, the consumer might still be confused as to source. Itis on this basis that confusion is decided.

Recently, both competent authorities have issued OfficialLetters796 announcing their opinions on this case. According tothese Official Letters, the Judgments of the Hearing Court andAppeal Court are reasonable, and there is no reason to reviewthese Judgments under Supervisor procedure.

The execution of the Appeal Court’s Judgment is expected tobe carried out soon, in accordance with legal procedures. This isthe first trademark dispute resolved by the Appeal Court.

796. Official Letter No. 1378/CV-VKSTC-KSXXDS of July 24, 2001, of Supreme People’s

Prosecutor, and Official Letter No. 963 CV/DS of September 4, 2001, of Supreme People’sCourt.

Vol. 92 TMR 575

TABLE OF MARKS

AA ONE.................................................. 475AATO ................................................... 291ABERCROMBIE ................................. 536ABSOLUT............................................ 550ABSOLUT BEACH ............................. 550ADIPRENE.......................................... 247ADOLF LOOS ..................................... 259ADOLF LOOS ARCHITECTURAL

CONTEST ....................................... 259AEX...................................................... 273AGENDA PLANNING........................ 307AGUA CRISTAL ................................. 483AICOM AI & COMMUNICATION .... 456AJAX FIESTA DE FLORES............... 424AKO ..................................................... 474ALADDIN............................................ 457ALAXA................................................. 376ALIPACK............................................. 243ALIPACK MULTICAPA

PASTIPREN .................................. 243ALMOGRAN ....................................... 485ALUPAQ.............................................. 243AMARIGE ........................................... 398AMERI WAY XT ................................. 288AMERICAN BRANDS........................ 339AMERICAN BUD ............................... 258AMICELLI........................................... 419ANAÏS ANAÏS..................................... 398ANDINA .............................................. 240ANDINO .............................................. 240ANDINO - ANDINA ........................... 240ANDINO ANDINA.............................. 240ANITA.................................................. 458ANTIKALK.......................................... 406APO...................................................... 474AQUA CRISTALINA .......................... 483AQUA CRISTALINA and design ....... 483AQUA LOTION DE EBEL ................. 274AQUAFRESH...................................... 269AQUIPT............................................... 376ARABESQUE...................................... 361ARCHITECTURAL............................. 291ARCTIC FRESH ................................. 281ARCTIC ICE........................................ 281ARCTIC MINT .................................... 281AREON REFRESHMENT.................. 418ARIEL.................................................. 340ARIEL and design............................... 478ARSENAL............................................ 556ART UNIQUE INTERNATIONAL .... 368ARTHUR ............................................. 400ARTHUR ET FÉLICE ........................ 400ARTIN.................................................. 236

ARTINATA.......................................... 236ARTOR ................................................ 510ASIA .................................................... 508ASINTO............................................... 260ASPREY .............................................. 559ASRAR................................................. 531ASTRA................................................. 430ASTRIVO............................................. 430ATAC ................................................... 392ATHENS 2004..................................... 418ATHINA .............................................. 458ATRO-NEB.......................................... 541AVIS .................................................... 482AVIS CLUB......................................... 482AVOMETIC......................................... 246

B

BABY-DRY.......................................... 351BADEM ............................................... 530BAHMAN ............................................ 527BAKON KRISP ................................... 422BARIS.................................................. 524BATMAN............................................. 463BCAA ................................................... 296BEL NATUR DE EBEL...................... 274BELMONT .......................................... 372BENTLEY ........................................... 303BETMENAS........................................ 463BETTY’S.............................................. 539BETTY’S KITCHEN

CORONATION STREET ....... 539, 543BEURRE TENDRE............................. 403BEURSPLEIN 5.................................. 273Beursplein5.nl..................................... 273BIAGRARESTAURANT..................... 315BIBI ..................................................... 317BIBI COLLOKY.................................. 317BIG BACON CLASSIC....................... 363BIG JOHN........................................... 511BINVEX............................................... 238BIO BALANCE DE EBEL.................. 274BIOLIP ................................................ 246BLAUSIEGEL..................................... 260BLEMIL............................................... 242BOERENGOUD.................................. 267BOLA BOLA........................................ 333BOLIN BOLA...................................... 333BOREAL.............................................. 482BORUVKOVÝ KOLÁCEK

PERNÍKÁR PARDUBICE ............. 364BOUDOIR ........................................... 370BOUNTY ............................................. 421BOUNTY.GR....................................... 421BP logo................................................. 555BRAVILOR.......................................... 273

576 Vol. 92 TMR

bravilor.nl ............................................ 273BRILLIANCE...................................... 489BRIO .................................................... 246BRITANNIABUILDINGSOCIETY.COM

......................................................... 568BUBBLE WRAP.................................. 440BUD ..................................... 258, 386, 448BUD LIGHT ........................................ 386BUDEJOVICKY BUDVAR................. 386BUDVAR ..................................... 258, 386BUDWEISER ...................... 258, 386, 448BUDWEISER BUDVAR..................... 386BUDWEISER KING OF BEERS ....... 386BUICK ................................................. 417BUICKS............................................... 417Bundesheer.......................................... 264bundesheer.at...................................... 264Burberry Check................................... 447BUSINESS PARA WINDOWS........... 278BUY.COM............................................ 363BY NUTRINE NUTRISKIN............... 481

C

C CALVIN KLEIN .............................. 246CABEZA DE UN EJEMPLAR

VACUNO......................................... 334CABEZA DE VACA............................. 334CACHAREL......................................... 398CAFE PELE ........................................ 315CALIFORNIA...................................... 478CALVIN plus a design consisting

of a shield bearing a depiction of a lion............................................... 293

CAMEL................................................ 446CAMEL TROPHY ............................... 446CAMPO................................................ 240CAMPO ANDINO ............................... 239CAMPO VERDE.................................. 333CANON................................................ 377CAPITAL ............................................. 444CAR FRESHENER and Fir Tree

device............................................... 418CAREMIX............................................ 549CASINO IGUAZU............................... 244CAVANTINA....................................... 388Caviar Petrossian................................ 395CELEBREX......................................... 301CELLULAR ONE................................ 479CELLULARONE................................. 479CHASE ................................................ 276CHASE and design ............................. 275CHEVY ................................................ 266CHICLETS .......................................... 332CHICO HAMBURGER....................... 277CHICO MINEIRO............................... 277CHILTAN ............................................ 476CHILTAN BANASPATI ..................... 477CHIMEX FOODS EAGLE.................. 470CHIVAS ............................................... 462

CHIVAS REGAL................................. 462CHOCO PRINCE................................ 526CHOCOBOLAS................................... 481CHOCOBON and design .................... 481CHOICE .............................................. 364CHOPARD........................................... 370CHUKS FOODS EAGLET ................. 470CINEPLANETA.................................. 251CITIFUND .......................................... 425CITYFUND ......................................... 425CK ........................................................ 245CK (design).......................................... 245CK CALVIN KLEIN ........................... 245CK CLUB KEN ................................... 246CLAIRE RION .................................... 247CLARIN............................................... 247CLIC .................................................... 378CLIGHT............................................... 378CLINITEK........................................... 377CLINITEST......................................... 377CLOROTIR.......................................... 331COCA-COLA ....................................... 325CODA................................................... 545CODAS ................................................ 545COLOMBINA MAX COMI

and design....................................... 363COMBINEB ........................................ 541COMPANY LINE................................ 473CONTAC ............................................. 241CONTURA........................................... 534COOL WATER .................................... 381COPPER FIELDS ............................... 465COPPERIDGE .................................... 464CO-RENITEC...................................... 261CORONA MONTECARLO

and device ....................................... 422COUNTOUR ....................................... 528COWBELL .......................................... 493COX ..................................................... 301COX-1 .................................................. 301COX-2 .................................................. 301CRATE & BARREL ............................ 551CREEK ................................................ 484CRISTAL ............................................. 341CRISTAL CERVEZA .......................... 341CRISTAL ORO.................................... 341CROSS CREEK................................... 484

D

Daewoo ................................................ 269DAIRY BELLE with cow device......... 493DAIRYBELLE..................................... 493DAITO ................................................. 438DAKOTA ............................................. 357DAKOTA and device........................... 356DANCOW ............................................ 436DANCOW and Cow device ................. 435DANISCO............................................ 460DANNON ............................................ 423

Vol. 92 TMR 577

DANONE............................................. 423DARROW............................................. 240DATA MEDIA and diamond design... 319DAUNIšKIO ........................................ 460DAVIDOFF.......................................... 370DAVIDOFF COOL WATER ............... 381DECARIE .................................... 285, 308DECARIE MOTORS........................... 308Decarie Saturn Saab Izuzu................. 285DECON................................................ 553DECON 90........................................... 553DECON-AHOL.................................... 553DECON-PHASE.................................. 553DENIM CO. ......................................... 552DENIM COMPANY ............................ 552DESCASADOS.................................... 279descasados.com.................................... 279descasados.com.br ............................... 279DEVICE + BOLAMAE........................ 520DEVICE COFFEEMIX ....................... 498DEWFRUIT......................................... 463DI DONNA .......................................... 355DIAMOND........................................... 244DIANA, PRINCESS OF WALES ....... 546DIARIZON........................................... 307DIESEL ............................................... 442DIRARETAM ...................................... 243DIRECT ............................................... 348DIRECT HOLIDAYS and device........ 348DIREKT............................................... 348DIREKTE ............................................ 348DISCARDIT......................................... 495DISCIPLIN.......................................... 239DISEÑO DE UNA CORONA (design

of a Crown)...................................... 422DISIPAN.............................................. 239DOGS DON’T CARE........................... 322DOMÉSTICO ...................................... 344DOÑA MARI MALHER and design... 363DOÑA MARIA..................................... 363DOUBLE BRIDGES ........................... 323DOUBLE HAPPINESS ...................... 502DOUBLEMINT ................................... 349DUKE .................................................. 237DUMBO ............................................... 457DUOLIP............................................... 246DUONEBS........................................... 541DUOVENT .......................................... 541DUROGESIC....................................... 240

E

EASYREALESTATE.CO.UK ............. 567EBEL ................................................... 274EBEL B PLUS..................................... 274EBEL INTERNATIONAL .................. 274ECAFE................................................. 430EFFER................................................. 328EFFEXOR............................................ 328800 FLOWERS.................................... 536

[email protected] ............................... 432EL CAFE DE LA TACITA.................. 250EL CHOCOLATE SE DERRITE EN

TU BOCA Y NO EN TU MANO .... 245EL CONTINENTE. EL CAFE DE

LA TACITA..................................... 250EL TACO ............................................. 271ELECTRONIC POSTMARK .............. 513ELLE ................................................... 236ELLE ELLA ........................................ 236ENDOMETRION ................................ 461ENDOTELON ..................................... 461ENTERPRISE..................................... 473ENYIL VALENTINO.......................... 522EPILINE.............................................. 454EPILINE in a blue color design or a

pattern ............................................ 454E-PRINT.............................................. 394E-PRINT SERVICES.......................... 394EQUIP ................................................. 376ERFURT.............................................. 474ERREVE.............................................. 248ES......................................................... 249ES (and design) ................................... 249ESPACE .............................................. 309ESPRIT................................................ 454ETAM .................................................. 243EURO .................................................. 256EURO 2000 word and device marks .. 265EURO MILK ....................................... 459EVIAN (word and device) ................... 431EXPENSIVE BA ................................. 556EXPENSIVE BA----DS ....................... 556EXPORT .............................................. 297

F

F.P. RUBINSTEIN ............................. 315F1 ................................................. 430, 431F1 Formula 1....................................... 430F1 Formula 1 (word and device) ........ 431FALCIGO ............................................ 434FALCITAB .......................................... 434FAMILY............................................... 443FA-PLAC ............................................. 250FENISODIL ........................................ 327FENISTIL ........................................... 327FERNSEHWOCHE ............................ 256FERODO ............................................. 469FERSATSHI in English and Arabic

with face design in panel ............... 374FERSATSHI in panel design ............. 373FESTA and design .............................. 376FIESTA................................................ 424FIESTA FRESH.................................. 424FINA .................................................... 249FINA (and design)............................... 249FINALE ............................................... 257FINANCE PARA WINDOWS ............ 277FINGERED CITRAN.......................... 323

578 Vol. 92 TMR

FINNFROST ....................................... 389FLEXVIAL........................................... 240FLEXVIAL DARROW......................... 240FLOWER THERAPY .......................... 456FLU-SHIELD ...................................... 441FLUVIVAX.......................................... 461FONTAINE DE LA REINE

FREDEGONDE DUMONTROUCOUS........................... 390

FORMAT ............................................. 262format.at .............................................. 262FORMULA 1 ............................... 430, 431FORNOCT........................................... 244Four Seasons ....................................... 458fpoe.at .................................................. 264FRESH AND FREE DE EBEL........... 274FRESH SPIRIT ................................... 460FREVIAN ............................................ 431FRISCO ............................................... 363FROEDIES .......................................... 385FROSTED FLAKES............................ 389FROSTIES................................... 385, 389FUENTE CLARA................................ 344FULNOCT ........................................... 244FUMORAL .......................................... 430FUN RADIO........................................ 392FUNDACION UNIVERSIDAD-

EMPRESA....................................... 237FUNGORAL ........................................ 430

G

G GATEWAY 2000.............................. 384GALINTA ............................................ 461GALLINA BLANCA............................ 461GALLUP.............................................. 417GASTRIN DO...................................... 360GATEWAY SOLO ............................... 384GEMOLOGICAL INSTITUTE OF

AMERICA ....................................... 513GENERAL TIRE................................. 288GENERTEL......................................... 451GENESCAN ........................................ 409GEORGES RECH ............................... 401GEWINN ............................................. 263gewinn.at ............................................. 263GILLETTE .......................................... 267GINA.................................................... 554GLASSCO............................................ 529GLASSCO-ARC................................... 529GLASSERIT ........................................ 525GMX..................................................... 571GOD MORGEN APPELSINJUICE

MED FRUKTKÖTT........................ 473GOLD TOE.......................................... 488GOLD TOP .......................................... 488GOOD FAMILY................................... 443GOOD LIFE ........................................ 370GØTT ................................................... 461GOÛT DE BEURRE ........................... 284

GOÛT DE BEURRE COMME AUCINÉMA ......................................... 284

GREEN LAND .................................... 334GREEN LAND and graphic ............... 333GR-HOSTMASTER ............................ 421GULLIVER.......................................... 521Gulliver’s Travels................................ 521GUNNERS .......................................... 556GUTE ZEITEN – SCHLECHTE

ZEITEN........................................... 412

H

HABITAT ............................................ 238HABITUÉ............................................ 238HANDY BAG and device .................... 510HARIBO GOLDBAREN and device... 416HAWAIIAN TROPIC.......................... 342HÉ 1 ! HÉ 2 ! HÉ 3 ! -ZERO ! ............. 394HEALTHY CHOICE........................... 364HEDELICUM...................................... 460HEDELIX ............................................ 460HEIDI .................................................. 512HEIDI-WII .......................................... 512HELENA RUBINSTEIN .................... 316HENNA HUE...................................... 535HERTZ................................................. 457HIJ....................................................... 272HILL OF GOLD .................................. 253HILL OF GRACE................................ 253HILTON .............................................. 397HIM...................................................... 272HIPP .................................................... 375HIT....................................................... 375HITACHI..................................... 248, 343HITH.................................................... 343HODA (in Persian script) ................... 440HOME.................................................. 368HOME FROM HOME......................... 369HOME FROM HOME

RELOCATION SERVICE.............. 369HONDA ............................................... 440HOOVER TRIPLE VORTEX.............. 564HOT DOG and design......................... 319HUE..................................................... 535HUERTA ............................................. 240HUERTA ANDINA............................. 240Hyundai............................................... 268

I

ICEBERG ............................................ 523ICI Dulux Supreme 3 in 1 .................. 501ICQ....................................................... 371IDAHO................................................. 406IGUAZU CIA SEGUROS S.A............. 244IGUAZU SEGUROS ........................... 244IMPACT............................................... 562IMPACT EXECUTIVES..................... 562IMPULSE MAGNETIC ...................... 241INDIVIDUELLE................................. 408

Vol. 92 TMR 579

INDOCAFE ......................................... 498INTERAKTIF (INTERACTIVE) ........ 517INTERMEDIAIR................................. 272IVOMEC .............................................. 246IXEL..................................................... 286

J

J & B .................................................... 491J.T.B..................................................... 490JAGUAR .............................................. 492Jamaica Lotteries................................ 453JAMAICA LOTTERIES—GAMES

PEOPLE LOVE TO PLAY ............. 453Jamaica Lottery .................................. 453JAMAICA LOTTERY COMPANY

LIMITED......................................... 453JBS in stylized form............................ 353JEAN-FRANÇOIS RECH................... 401JERSEYBEL and cow device.............. 493JIL SANDER....................................... 370JOHN................................................... 511JONATHAN G .................................... 312JOOP.................................................... 370

K

K 414KAPPA................................................. 389KAPPAHL ........................................... 389KARELIA ............................................ 259KARELIA ROYAL............................... 258KAROTINAS ....................................... 461KARSA PRENS................................... 526KEENWELL........................................ 236KEGOL ................................................ 423KEIKO ......................................... 430, 431KEIKO COIN .............................. 430, 431KELLOGGS......................................... 423KENCO, THE REAL COFFEE

EXPERTS........................................ 542KENTUCKY........................................ 324KENZO ................................................ 405KFC...................................................... 324KICK.................................................... 505KICKAPOO ......................................... 504KICKAPOO JOY JUICE .................... 504KIK ...................................................... 358KING CORN........................................ 271KLÍC DO MESTA KINA, DIVADLA,

KLUBY, KONCERTY, GALERIE(KEY TO CITY CINEMAS,THEATRES, CLUBS,CONCERTS, GALLERIES) ........... 366

KRAFT................................................. 511KRONDIAMAN................................... 244KULOV ................................................ 366

L

L & M SUPERKINGS......................... 374L’ORÉAL ............................................. 482

LA FUENTE........................................ 344LA POSTE........................................... 393LAGUIOLE ......................................... 391LAGUIOLE AUTHENTIQUE

COLLECTION................................ 391LAGUIOLE LA LEGENDE................ 391LAGUIOLE ORIGINE GARANTIE... 391LAND ROVER .................................... 288LAND ROVER RANGE ROVER........ 288LATICRETE........................................ 375LAWYERSONLINE.CO.UK............... 568LE CAF................................................ 249LE COLLEZIONI (TRADIZIONI)

DI SUCCESSO ............................... 310LECAF................................................. 249LEGAL AID......................................... 536LEM..................................................... 510LEMIL ................................................. 242LEMO .................................................. 510LEO BURNETT .................................. 486LEO BURNETT and Logotype........... 485LEVADIT............................................. 244LEVANTE ........................................... 509LEVEDAD ........................................... 244LEVI’S ................................................. 451LÍDER.................................................. 326LION KING......................................... 457LIP ....................................................... 246LIP BRIO............................................. 246LOADED ............................................. 546LOFT ................................................... 529LOLITA ............................................... 428LOOK................................................... 410LÓRATÍN ............................................ 430LORD PARK ....................................... 338LÓRÍN ................................................. 430LOXON................................................ 462LUIVAC............................................... 461LUPO................................................... 448

M

M and design....................................... 424M MENARINI and design.................. 424MACANITAS....................................... 250MACANUDA....................................... 250MAGNETIC................................. 241, 445MAIL.................................................... 286MAILSORT ......................................... 291MANPOWER............................... 255, 259MANPOWER ARBEIT NACH

MASS .............................................. 259MARC O’POLO ................................... 462MARCO POLO.................................... 512MARIO VALENTINO......................... 522MARLBORO........................................ 485MARLBORO and design..................... 484MARLBORO CLASSICS and center

figure design ................................... 434MAX and design.................................. 363

580 Vol. 92 TMR

MAXIMA.............................................. 360MAXMARA.......................................... 338MBNA.CO.UK..................................... 569MBNA.COM ........................................ 569McCORMICK ...................................... 252McCORMICK’S ................................... 251McCORMICK’S INSTANT BATTER

SIMPLY ADD WATER................... 251McDONALD’S ..................................... 488McDONALD’S Corporate Logo........... 487McMOON............................................. 474ME........................................................ 272MEDI CAL and design........................ 284MELISSA............................................. 462MELITTA ............................................ 462MEMORIES OF .................................. 307MEMORIES OF ALBERTA ............... 307MEMORIES OF KOBE ...................... 307MEMORIES OF SAN FRANCISCO .. 307MERC .................................................. 568MERCEDES ................ 396, 557, 564, 567MERCEDES BENZ..... 371, 557, 564, 567MERCI DE EBEL ............................... 274METRO................................................ 238METROCARGO .................................. 238MICHELIN.......................................... 288MICRO COMPACT CAR .................... 367MICROSOFT.GR ................................ 421MIDWAY ............................................. 487MIDWAY and Logotype...................... 487MINERVA ........................................... 544MIRA ................................................... 248MIRA DROR........................................ 248MISTURA FINA ................................. 249MOBICOX ........................................... 301MODENA ON LINE ........................... 452modenaonline.com............................... 452Mokiti Okada....................................... 276MOLSON............................................. 297MONOPOLY ....................................... 419MONSOON.......................................... 384MONSUN ............................................ 384MONT ROUCOUS .............................. 390MORGAN ............................................ 458MOTUL................................................ 418MOTUS................................................ 419MOUSTACHE..................................... 480MOVALIS ............................................ 461MOZART.............................................. 260MSD ..................................................... 235MURIEL .............................................. 340MUSK DE EBEL................................. 274

N

N ......................................................... 245N (design) ............................................ 251’N POST............................................... 393NANA .................................................. 444NATIONAL ......................................... 474

NATUR KRAFT WERKE................... 511NATURA ............................................. 235NATURA VIGOR ................................ 235NAVOLIN............................................ 483NB (design).......................................... 251NEOPRENE........................................ 247NEOPRENE BASIC ........................... 247NESCAFÉ ........................................... 430NESTLE .............................................. 242NESTLE TRIX .................................... 242NET2PHONE...................................... 362NetEDI ................................................ 385NEVADA ............................................. 375NEVADA and design .......................... 375NEW LINE CINEMA ......................... 353NEW LINE CINEMA and device....... 354NEW NAVY......................................... 364NEW QUEEN ..................................... 471NIKE.................................... 237, 270, 378NIKE DUKE ....................................... 237NIKE FERALDY................................. 237NIKE ROBOT ..................................... 237NIMBLEX ........................................... 238NINE WEST........................................ 363Nippon 3 in 1....................................... 501N-LOGO .............................................. 251NOBIA ................................................. 385NOBILIA ............................................. 385NOKIA................................................. 385NONOGRAM....................................... 544Norsk Lektorlag .................................. 475NORTE ................................................ 239NORTEÑA........................................... 239NORTHAMPTONSHIRE ON

SUNDAY......................................... 563NORTHANTS ON SUNDAY.............. 563NORVIRA............................................ 241NOVA .................................................. 283NOVO-GLUCOSE............................... 299NOVOLIN ........................................... 483NR........................................................ 245NSAID ................................................. 300NUEVA LINEA................................... 353NUTRI ................................................. 511NUTRICIA .......................................... 511NUTRISKIN........................................ 481NUTRIVIT........................................... 375NUTRIVITA........................................ 375

O

OKAYA ................................................ 455OLAND EXPORT and design ............ 297OLD PARR .......................................... 338OLYMPIC GAMES ............................. 418OLYMPIC GAMES – ATHENS 2004.. 418OLYMPIC GAMES 2004 .................... 418OLYMPIQUE ...................................... 397OLYMPRIX ......................................... 396ON SUNDAY....................................... 563

Vol. 92 TMR 581

ONE TOUCH ...................................... 299ONE TOUCH® METRES.................... 299OPTIMA .............................................. 359ORIGINAL QUEENS ......................... 471ortig.at ................................................. 265OSS/HUGO BOSS............................... 261OTOR................................................... 510OXISTAT ............................................. 330OXITAL ............................................... 330

P

PAK CHILTAN ................................... 476PALMOLIVE in yellow; and white-

colored crockery on a greenbackground...................................... 405

PAPERCHASE.................................... 275PARIS FUN......................................... 392PARMA................................................ 293PARMA and design............................. 293PARMA HAM...................................... 293PAROXAT............................................ 431PASSENDALE .................................... 266PASSIES.............................................. 272passions ............................................... 272Passport Decarie Automobiles ........... 285PASTA ZARA ...................................... 460PAXIL .................................................. 286PEGCIL ............................................... 455PELE.................................................... 315PELLE PELLE MARC

BUCHANAN................................... 533PENTAX .............................................. 289PENTIUM ........................................... 364PHILIPS .............................................. 403PHOTO ................................................ 430PhotoScreen......................................... 430PHOTOSCREEN................................. 430PICADILLY......................................... 317PICCOLINO CROISSANT

GEMISTO ME PRALINA .............. 416PICNIC ................................................ 432PIELROJA........................................... 339PIKNIK................................................ 433PIZZAS DE SAINT TROPEZ ............. 389PLANETA C.A.B.L.E.......................... 251PLANICEL .......................................... 336PLANILUX.......................................... 336PLASTIPAK ........................................ 495PLENITUDE CONTOUR REGARD.. 528POÊME................................................ 402POÈMES INTIMES............................ 402POLO ........................... 294, 462, 512, 540POLO/RALPH LAUREN ............ 257, 262POMME VERTE ................................. 235POMMETTE........................................ 235POMMEVERTE .................................. 235PORK-THE OTHER WHITE

MEAT/PORK-THEALTERNATIVE WHITE MEAT.... 441

POWER ............................................... 494POWER HOUSE................................. 494PRADA ................................................ 436PRENS................................................. 526PRIMARK............................................ 552PRINCE............................................... 526PRINCE FOURRÉ.............................. 526PROBALO, SE DESHACE EN TU

BOCA .............................................. 245PROGRAMA PASSAGEIRO

FREQUENTE FREQUENT FLYERPROGRAMME................................ 385

PROSCAR............................................ 261PROSCIUTTO DI PARMA................. 293PROZAC .............................................. 282PRPHIER and design ......................... 484PULMAT ............................................. 242PULSAR .............................................. 242

Q

QUEENS ............................................. 471QUICK................................................. 509

R

R.V. ...................................................... 248R.V.I..................................................... 248RAILDIRECT...................................... 348RAINFOREST..................................... 497RAINFOREST CAFE.......................... 496RALEIGH............................................ 538RALEIGH INTERNATIONAL........... 538RALEIGH INTERNATIONAL

plus a globe device.......................... 538RANGE ROVER.................................. 288RANGLER........................................... 278RAPID.................................................. 320RAPID 66/6.......................................... 320RAPID 66/8.......................................... 320RAPID and design .............................. 320RAPID R 65......................................... 320RATIONAL SOFTWARE

CORPORATION............................. 407READY ................................................ 509READY–TO-GO .................................. 510RED COW and Cow device................. 435REFLEXE CONTOUR........................ 528REFRISCO .......................................... 363REICH UND SCHOEN ...................... 411RINGFEDER....................................... 420RITZ..................................................... 472ROBE DE KAPPA............................... 389ROBINSON CRUSOE ........................ 521ROBOT ................................................ 237ROCIO DEL VALLE........................... 248ROLEX ................................................ 325ROLEX in Chinese characters ........... 325rolex.com.cn......................................... 325ROLLS-ROYCE................................... 302ROMANTIC DREAMS ....................... 494

582 Vol. 92 TMR

ROMANY CREAMS............................ 494RON CASTILLO EL VERDADERO

SABOR DEL RON .......................... 372RON SAN MIGUEL EL VERDADERO

SABOR DEL RON .......................... 372RONTAG ............................................. 241RONVIR............................................... 241ROSE ................................................... 459ROTHMANNS..................................... 259ROTHMANNS ROYALS .................... 258ROYAL SPOON .................................. 501

S

SANACORT......................................... 421SANDCASTLE BY CATALINA ......... 389SANIDOL ............................................ 378SARIDON ............................................ 378SCANDALE......................................... 278SCANDECOR...................................... 565SCOTCHLITE..................................... 425SCRUBS .............................................. 3852ND SKIN ........................................... 565SECOND SKIN ................................... 565SEI ....................................................... 249SEMPER.............................................. 462SEMPERA ........................................... 462SENSO................................................. 355SENSO DI DONNA ............................ 354SENSOR .............................................. 267SEROXAT............................................ 431SFS....................................................... 511SG-12 ................................................... 499SHAKESPEARE ................................. 318SHIRLEY............................................. 427SHIVA.................................................. 427SHIVAKI ............................................. 427SIDRA DEL VALLE ........................... 248SIGNAL ............................................... 269SISLEY................................................ 427SIXLETS.............................................. 332SKINWELL ......................................... 236SMART ................................................ 572SMARTBUY ........................................ 441SMARTCOVER ................................... 441SMARTIES.......................................... 519SMARTLEASE.................................... 441SMARTMARK..................................... 571SMARTRENT...................................... 441SNOREEZE......................................... 562SNORENZ ........................................... 561SONATA...................................... 437, 438SPA DE EBEL..................................... 274SPINNING .......................................... 445SPINNING and device........................ 445SPOONS BRAND and device ............. 501SPORK................................................. 558SQUALITY .......................................... 510ST. JOHN ............................................ 511STADLAUER ...................................... 259

STAINSHIELD ................................... 280STERLING SOFTWARE.................... 274STETSON............................................ 423STETSON SIERRA............................. 423SUPER................................................. 498SUPER COFFEEMIX......................... 498SUPERKINGS and design ................. 374Supreme 3 in 1 .................................... 500SWATCH ............................................. 510SWISS ARMY ..................................... 415

T

TABASCO............................................ 255TAE BO ....................................... 265, 270TAPA ROJA ........................................ 346TAZONAM .......................................... 376TBS ...................................................... 353TEA-DISCOVER THE GOODNESS.. 374TELETUBBIES................................... 269TELEWORK........................................ 561TeleWorks............................................ 56010 ROYAL BERKSHIRE POLO

CLUB .............................................. 540TEST IT....................................... 411, 414TFS ...................................................... 511The Economist..................................... 320THE ECONOMIST ............................. 319THE EDEN PROJECT ....................... 533THE in slightly stylized form............. 349THE INTERNET STARS HERE........ 363THE PIERRE DUBRULLE

CULINARY SCHOOL.................... 313THE RAPID R 106.............................. 320THE STINKING ROSE ...................... 287THE THREADED RODS.................... 349TIMBERLAND.................................... 507TINY PENIS ....................................... 543TOCADE.............................................. 245TODAY ................................................ 474TOMARIS............................................ 461TOMATO BOLOGNESE .................... 490TONALITE.......................................... 535TONALITE HENNE........................... 534TONALITY.......................................... 535TOP VIDA ........................................... 276TOP VIDA BRADESCO ..................... 276TOPAZE .............................................. 245TOSTITOS........................................... 506TOSTITOS and a design featuring

Aztec symbols ................................. 506T-PLAK................................................ 250TRAPEZE ............................................ 310TRAVIATA .......................................... 236TREX ................................................... 242TRIAPIN.............................................. 239TRIPRIN.............................................. 239TRIX .................................................... 242TRUONG SINH .................................. 572TURA................................................... 470

Vol. 92 TMR 583

TURBOGESIC .................................... 240

U

UNA HORA MARTINIZING.............. 480UNION ................................................ 469UNION SUPA ..................................... 469UNIPENTIUM Jr. .............................. 363UNIQUE INT ...................................... 368UNIQUE INTERIEUR ....................... 368UNITED SOFTWARE ........................ 385UNIVERSIDAD ARGENTINA DE

LA EMPRESA................................. 237UNIVERSIDAD ARGENTINA DE

LA EMPRESA GRADUADOS ....... 237UVA-LAXA .......................................... 376

V

V. AURELIO VALENTINO................ 522V VALENTINO ................................... 522VACACIONES DIRECTAS ................ 348VACANCES DIRECTES .................... 348VACANZE DIRETTE.......................... 348VACATION.......................................... 348VACATIONS DIRECT........................ 347VALENTINO....................................... 522VELOUTE DE CHOCOLAT............... 385VERSACE............................................ 374VIAFLEX............................................. 240VIAGRA............................... 315, 391, 471VICTORIA’S SECRET........................ 401VIDEOMAIL ....................................... 286VIDEOROUTE.................................... 286VIGOR ................................................. 235VILLAGE............................................. 455VILLAGE HAKUSAN......................... 455VIMAR................................................. 316VIOXX.................................................. 301VISA..................................................... 393VISCO.................................................. 240VISCOPLUS........................................ 240VISICARD SYSTÈM........................... 393VITALITE............................................ 350VOGUE................................................ 569VOLCANO........................................... 308VOLCANO HOT.................................. 308VOLVO ................................................ 369volvodele.dk ......................................... 369

VORTEX.............................................. 564VORTEX POWER............................... 564VRV...................................................... 248

W

WE ....................................................... 272WEST................................................... 363WINDOWS .......................................... 278WING DEVICE (SABLIER AILÉ) +

LONGINES..................................... 520WINNER TACO.................................. 271WINNIE THE POOH ......................... 457WIRTSCHAFTSWOCHE ................... 256WISDOM CONTOUR ......................... 534WORLD CLASSICS and center

figure design ................................... 434WWW CENTRUM .............................. 364www.domeinnaam-jurisprudentie.nl .. 272www.kfc.com ....................................... 324

X

X ......................................................... 295XEDEX ................................................ 478XIAODINGDANG............................... 321XIAODINGDANG R 68 ...................... 321XP 2000 ............................................... 288X-TREME ............................................ 419

Y

YANGCHOW FRIED RICE ............... 319YOU ..................................................... 272YOUNG SPIRIT.................................. 460YOUR YEAR’S HORIZONTAL

PLANNING AT A SINGLEGLANCE......................................... 307

Z

ZAMACORT ........................................ 421ZARA ................................................... 460ZÉRO ................................................... 394ZIJ........................................................ 272ZOLNOCT ........................................... 244ZOMAN ............................................... 376ZOTT.................................................... 461ZOVIRAX............................................. 289ZOXON ................................................ 462

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