2/2015 (18)
TRADEMARKS AND
UNFAIR COMPETITION
Quarterly Bulletin
K&L Gates Jamka sp.k., Plac Małachowskiego 2, 00-066 Warszawa, Poland
T: +48 22 653 4200
F: +48 22 653 4250
TABLE OF CONTENTS
INTRODUCTION.......................................................................................................... 3
LEGISLATION.............................................................................................................. 4
EU: Reform of the European system of trademarks....................................................... 4
EU: Amendment of a draft Directive on the protection of undisclosed know-how and
business information (trade secrets) ............................................................................ 4
EU: Possibility of extending EU protection of geographic indications to nonagricultural
products – draft EP resolution...................................................................................... 5
PL: Amendment of the Industrial Property Law adopted................................................ 5
PL: New provisions on “shelf fees”?.............................................................................. 6
PL: Further draft amendments of the Industrial Property Law........................................ 6
PL: Attorneys at law as authorized attorneys before the Patent Office............................ 7
CASE-LAW.................................................................................................................. 8
EU: The mark “Skype” too similar to the mark “Sky” – ruling of the EU General Court..... 8
EU: Proceedings in the case of an objection to the Community trademark
“SPARITUAL” – ruling of the EU General Court ........................................................... 8
EU: Dispute over the mark “Cleanic intimate” – ruling of the EU General Court
in the case of Harper Hygienics S.A. vs. the OHIM ....................................................... 9
EU: Louboutin succeeds again in long standing EU trade mark opposition over
red sole ..................................................................................................................... 10
PL: Brand with a name – ruling of the Supreme Court................................................. 11
PL: Can a supplier of a large commercial chain sell a claim for “shelf fees”
to a debt recovery firm? – ruling of the Supreme Court ............................................... 12
PL: After the end of an employment relationship, a ban on competition
does not succeed to the new employer – ruling of the Supreme Court......................... 12
PL: A dishonest suggestion – ruling of the Court of Appeal in Warsaw......................... 13
PL: Above-margin fees always hinder market access – ruling of the Court
of Appeal in Warsaw .................................................................................................. 14
PL: When competitive activities are not unfair competition – ruling of
the Regional Court in Szczecin................................................................................... 14
UK: Too late: “CANARY WHARF” trade mark not registrable....................................... 15
OTHER ISSUES......................................................................................................... 17
EU: A report by Europol and the OHIM on counterfeit goods ...................................... 17
EU: Aston Martin radiator grill as a positional trademark............................................. 18
INTRODUCTION
Welcome to the 18th edition of the “Trade Mark and Unfair Competition”
bulletin.
In this edition, we present a range of recent trademark, unfair competition
and related rulings and developments, which will be of interest to international
brand owners. We cover some of the important recent legislative proposals in
Europe, including the latest developments on European Union (EU) trademark
law reform as well as proposals for the EU Directive on Trade Secrets and the
potential extension of geographical indication protections to nonagricultural
products. We also provide commentary on recent cases across Europe and
various member states, including a landmark decision of the EU General
Court in the SKY/SKYPE dispute.
In this edition, we also welcome our new IP partner in Frankfurt, Dr Thorsten
Vormann, who joins our firm. The addition of Dr Vormann to our team marks
an important expansion to our firm’s IP capabilities across Europe, particularly
in the areas of patent and trademark litigation and advice.
We hope you find this edition useful in keeping up to date with recent
developments in this fast-paced area of change. Please do not hesitate to
contact any of our authors to share your comments or questions.
Arthur Artinian
TRADEMARKS AND UNFAIR COMPETITION 2/2015 3
LEGISLATION
EU: REFORM OF THE EUROPEAN SYSTEM
OF TRADEMARKS
On 21 April 2015, after intense negotiations, under the Latvian
presidency in the European Council, an agreement with
representatives of the European Parliament has been finally reached
on reform of the European system of trademarks. In the new
system, account will be taken of important provisions, including:
(i) a new structure and lower fees from applicants, (ii) the
establishment of a mechanism for compensation to cover expenses
incurred by domestic authorities protecting industrial property
resulting from the introduction of procedures concerning EU
trademarks, (iii) closer cooperation between domestic authorities
and the OHIM on projects aimed at propagating harmonization
of practices and tools in the area of trademarks and industrial
designs, (iv) a change of name from “OHIM” to “Office of the
European Union for the Protection of Intellectual Property”, (v) the
introduction by domestic authorities of appropriate administrative
procedures in the case of the expiration or invalidation of
trademarks, and (vi) the adaptation of the classification of goods
and services to the latest EU rulings, in accordance with the system
adopted under the Nice Agreement. These reforms should result in
amendments of the provisions of the Council Regulation (EC) on the
Community Trade Mark and a new Directive to approximate the laws
of the Member States relating to trade marks
On 10 June 2015, the Committee of Permanent Representatives
of the European Council approved a compromise on reform of the
European trademark system. After approval of the compromise by
the Legal Commission of the European Parliament, the text of the
provisions will return to the Council. After a political agreement has
been reached, there will be a routine legal and linguistic verification,
and then formal acceptance of the position of the Council in the
first reading. At that time, the provisions will be put to a vote in the
second reading at a plenary session of the European Parliament.
Source: www.consilium.europa.eu
For further information please contact:
Michal.Ziolkowski@klgates.com
EU: AMENDMENT OF A DRAFT DIRECTIVE
ON THE PROTECTION OF UNDISCLOSED
KNOW-HOW AND BUSINESS INFORMATION
(TRADE SECRETS)
We have previously reported in the Bulletin on a draft Directive
of the European Parliament and of the Council on protecting
undisclosed know-how and business information. The Directive
is one of the instruments aimed at fostering innovation within the
EU. In the view of the EU legislator, business secrets are vitally
important to small and medium-sized businesses and start-ups.
As is written in the memorandum clarifying the draft Directive, such
companies often lack the human and financial resources required
to obtain intellectual property rights and to seek protection of them.
On 19 March 2015, an amendment was published by the European
Parliament of the draft Directive on the protection of undisclosed
know-how and business information. Below, we present some of
the most important changes to the draft:
It is specified that a trade secret or know-how should have
commercial value. That value may be an existing value or
a potential value. Information should be subject to protection when
its disclosure could hurt the economic interests of those entities
that lawfully came into possession of the information (recital 8 and
article 2).
In the preamble of the Directive, a provision was added that the
Directive should not affect rights to negotiate, conclude and enforce
collective arrangements and to take industrial action in accordance
with national law or practices in accordance with EU law which
respect Union law (recital 10a).
Recital 11 is also referred to, emphasizing the preventive nature of
the new Directive, taking account at the same time of the need to
protect basic rights and freedoms or the public interest, including
public safety, consumer protection, public health and environmental
protection, without any prejudice to the mobility of workers.
The definition of a trade secret in paragraph 2 of the draft Directive
is supplemented with the term “know-how”, and it is specified that
a trade secret concerns business information.
The Directive is an attempt to establish a balance between the
rights of entrepreneurs to protection of their commercial know-how
4 TRADEMARKS AND UNFAIR COMPETITION 2/2015
and the right of employees to mobility on the labour market. This is
emphasized, in particular, in the new paragraph 3 in article 4,
which states that the Directive will not affect:
• the application of Union or national rules requiring trade
secret holders to disclose, for reasons of public interest,
information, including trade secrets, to public authorities for
the performance of their duties;
• the use of information, knowledge, qualifications and skills of
employees obtained in previous employment, to the extent that
it is not covered by Article 3.
Article 3 defines when the acquisition, use and disclosure of trade
secrets is contrary to the law.
The plan to strengthen the rights of employees towards employers
is also evident in the changes to article 13, in which a provision
is added on the right of EU member states to restrict employees’
liability for damages towards their employers as a result of the
unlawful acquisition, use or disclosure of trade secrets of the
employer when employees act without such intention.
Work on the draft Directive is to be completed in the European
Parliament in the autumn of this year.
Source: www.europarl.europa.eu
For further information please contact:
Dorota.Kosela@klgates.com
EU: POSSIBILITY OF EXTENDING EU
PROTECTION OF GEOGRAPHIC INDICATIONS
TO NONAGRICULTURAL PRODUCTS –
DRAFT EP RESOLUTION
On 21 April 2015, a draft resolution of the European Parliament
was published on the possibility of extending EU protection of
geographic indications to nonagricultural products. After the
publication of the Green Book in July 2014, this marks the first
stage in harmonizing the protection of geographic indications
among EU member states. In the view of the legislator, the planned
amendments should lead to an improvement in the functioning
of the internal market and to the increased uniqueness and
attractiveness of products protected as geographic indications
by guaranteeing their quality and providing effective protection
against losses caused by counterfeits and imitations. The need to
harmonize provisions concerning geographic indications has also
been pointed out by the Polish Patent Office in an opinion issued in
connection with work on the Green Book.
Source: www.europarl.europa.eu
For further information please contact:
Piotr.Wenski@klgates.com
POLAND: AMENDMENT OF THE INDUSTRIAL
PROPERTY LAW ADOPTED
On 12 June 2015, the Polish Parliament adopted an amendment
of the Industrial Property Law (the Act on an Amendment of the
Industrial Property Law Act and Certain Other Legislation of 12 June
2015, Parliamentary document no. 3685). We reported on changes
introduced by the legislator in a previous issue of the Bulletin; the
amendments are to affect such areas as proceedings before the
Patent Office on granting patents. In particular, the requirement
of the novelty of an invention submitted is to be softened. Under
the new provisions, the disclosure of an invention within six months
before the application date will not hinder the issuance of a patent
if such disclosure was caused by an obvious abuse in relation to the
applicant. In the final version of the amendment, though, there is
no introduction of what are known as consent letters in proceedings
concerning the registration of a trademark – under that concept,
a business could consent to another entity’s registration of a similar
trademark, and such consent would have to be considered by
the Patent Office. The amendment does provide, however, the
possibility of seeking a partial release from fees for submitting
trademarks and industrial designs when an applicant is unable
pay them.
Source: www.sejm.gov.pl
For further information please contact:
Piotr.Wenski@klgates.com
TRADEMARKS AND UNFAIR COMPETITION 2/2015 5
POLAND: NEW PROVISIONS ON “SHELF FEES”?
At the end of May, MPs from the party PSL tabled draft legislation
on combating unfair market practices by businesses trading in food
or agricultural products in respect of suppliers of those products.
According to the justification to the draft, the purpose of the act is
“to eliminate the use of unfair trade practices by the retail segment,
including large-area retailers, from the food supply chain”.
PSL proposed extensive catalogue of prohibited unfair market
practices including imposing indirect or direct fees on suppliers
for accepting food or agricultural products for sale, including fees
for promotional or advertising services; fees for conducting special
campaigns, including for the anniversary of a retail chain; fees for
transmitting information on sales of food or agricultural products in
particular retail outlets; discounts on catalogues and promotions;
purchase or promotional discounts; fees for introducing a new
product range; fees for opening new retail outlets; no-return fees;
fees for utilization costs; fees for advertising agencies to create ownbrand designs; contingent and noncontingent fees; logistical fees;
and fees for the electronic exchange of commercial or financial
documents.
Critics of the proposal charge that the enumerative catalogue of
unfair market practices contained in the draft is not a good idea,
because accepting a closed list of unfair practices will only increase
the creativity of commercial chains in finding new ways to impose
impermissible fees. They can introduce a “shelf fee” into an
agreement with a supplier under a name other than those listed in
the above draft legislation.
An act involving the collection of a fee other than a commercial
margin for accepting goods for sale, known as a “shelf fee”, is
foreseen in the Act on Combating Unfair Competition. Article 15
par. 1 pt. 4 of the Act has, for some time, provided grounds for
a number of court claims for return of “shelf fees”. The potential
adoption of the new provisions in their current wording could lead
to a situation in which the relationship of the new provisions to that
now in force is unclear.
Further, the draft provides that every contractual provision that
constitutes an unfair market practice will be deemed invalid, and in
such a case a supplier will not be able to legally effectively consent
to the conduct of the seller. The authors of the draft also propose
a reversal of the burden of proof which is beneficial to suppliers –
the burden of proof that a given sales practice does not constitute
6 TRADEMARKS AND UNFAIR COMPETITION 2/2015
an unfair market practice will rest on the business that is accused
of engaging in such a practice.
The authority competent in cases of combating unfair market
practices is to be the President of the Office of Competition and
Consumer Protection. The draft Act allows the OCCP President to
issue decisions imposing a monetary penalty for an infringement of
the prohibition against unfair market practices, in an amount up to
10 per cent of revenue earned in the financial year preceding the
year in which the penalty is imposed and not less than 100,000
zlotys.
The above proposals will certainly be the subject of further debate
and, consequently, of further changes.
Source: www.rp.pl; www.orka.sejm.gov.pl
For further information please contact:
Ewelina.Madej@klgates.com
POLAND: FURTHER DRAFT AMENDMENTS
OF THE INDUSTRIAL PROPERTY LAW
Work is ongoing on a draft amendment of the Industrial Property
Law. The most important change is a proposal to introduce a new
model of proceedings concerning the granting of protection rights to
trademarks. The investigate system will be eliminated and a system
of objections introduced (such as currently functions at the OHIM).
Only absolute grounds for refusal of registration will be investigated,
while a holder of an earlier registration will have the right to submit
an objection within three months following the publication of the
application (and not, as at present, within six months following
a legally binding decision on granting a protection right). The PPO
will be obliged to prepare information for an applicant of a new
trademark on the existence of any identical or similar trademarks,
which could provide grounds for an objection and a possible refusal
to grant protection to the trademark submitted. Acceptance of the
system of objections will mean that, in principle, protection rights to
trademarks will be granted much faster than at present.
Source: www.rzecznikpatentowy.org.pl
For further information please contact:
Michal.Ziolkowski@klgates.com
POLAND: ATTORNEYS AT LAW AS AUTHORIZED
ATTORNEYS BEFORE THE PATENT OFFICE
On 25 June 2015, the Polish Parliament passed an amendment
of the Act Regulating Conditions of Entry to Certain Professions,
entitled the Third Deregulation Act (Parliamentary press
No. 2331). In the final version approved, despite objections from
the Polish Chamber of Patent Attorneys, a provision was included
amending Article 236 of the Industrial Property Act concerning the
conditions for appearing as an attorney before the Patent Office.
In accordance with the addition to that provisions of paragraph
11, in cases relating to submitting trademarks and maintaining
trademark protection, not only patent attorneys will be authorized to
represent applicants, as is currently the case, but also attorneys at
law. It is worth noting that this change only concerns trademarks.
In cases relating to obtaining and maintaining protection over
inventions, medical products, plant protection products, utility
designs, industrial designs, geographic indications and integrated
circuit topographies, only a patent attorney or a person providing
cross-border services in the meaning of the Patent Attorney Act will
be able to represent an applicant.
Source: www.orka.sejm.gov.pl
For further information please contact:
Piotr.Wenski@klgates.com
TRADEMARKS AND UNFAIR COMPETITION 2/2015 7
CASE-LAW
EU: THE MARK “SKYPE” TOO SIMILAR
TO THE MARK “SKY” – RULING OF THE EU
GENERAL COURT
In a ruling of 5 May 2015, case No. T-432/12, the EU General Court
dismissed an action by the company Skype Ultd with its registered
office in Dublin against a decision by the OHIM Fourth Board
of Appeal concerning a refusal to register the graphic and word
trademarks “Skype”.
/ SKYPE
On 28 June 2005, the company applied for registration of those
marks in classes 9, 38 and 42 of the Nice classification, including
for loudspeaker systems, audio recording devices, Internet voice
communication and Internet data transmission. The registration
was opposed by the company British Sky Broadcasting Group
plc (currently Sky plc), which based its objection on the
earlier registration of the word Community trademark “Sky”
(CTM 000126425).
SKY
This dispute is particularly interesting because of the profile and
scope of activities of the two entities involved. Skype manages the
globally popular Internet communicator of the same name, while
the Sky brand is one of the most well-known television stations in
Great Britain.
In a decision of 6 July 2010, the OHIM ruled in favour of Sky’s
objection. Skype Ultd appealed, but the appeal was dismissed by
the OHIM Fourth Board of Appeal in a decision of 26 July 2012.
In particular, the OHIM found that the goods and services for which
the mark “Skype” was to be registered overlap with those for which
the earlier mark had been registered. The Board also pointed to the
similarity of the two marks on the visual, phonetic and conceptual
levels. It found that there is a risk of consumers being misled and
refused to register the mark.
8 TRADEMARKS AND UNFAIR COMPETITION 2/2015
In its action to the Court, Skype charged that there had been an
infringement of Article 8 par. 1 letter b) of Regulation No. 207/2009.
It argued that the marks are not similar to each other, and that the
word mark “Skype” had acquired its own meaning through use in
reference to Internet communication, which in its view eliminates the
risk of any confusion with the mark “Sky”. Skype also argued that
both marks are so well-known that their “peaceful co-existence” is
possible.
The Court noted that the two word marks are similar – visually,
phonetically and conceptually. It pointed out that the word “sky”,
a basic word in English, is easily identified in the word “skype”. What
is more, the element “sky” within the word “skype” allows the latter
to be recognized by the relevant consumer group, and the second
element “pe” has no specific meaning. In regard to the graphic
mark, the Court found that the addition of the element in the form
of “clouds” or “bubbles” is not sufficiently distinctive to prevail over
the linguistic similarity, and that, in fact, if the graphic element is
interpreted as clouds, the risk of confusion with the mark “Sky” only
increases. As to the idea of the “peaceful co-existence” of the two
marks, the Court ruled that this would be possible but only in respect
of certain services.
Source: www.curia.europa.eu
For further information please contact:
Piotr.Wenski@klgates.com
EU: PROCEEDINGS IN THE CASE OF
AN OBJECTION TO THE COMMUNITY TRADEMARK
“SPARITUAL” – RULING OF THE EU
GENERAL COURT
On 11 February 2004, the company Orly International submitted the
word Community trademark “SPARITUAL” to the OHIM. The goods
covered by the application are “preparations for nail and body care”.
On 25 February 2005, the company Spa Monopole filed an objection
to that mark. In its justification, it referred to the earlier domestic
word and word-graphic trademarks “SPA”, protected for identical and
similar goods, as well as to marks that, in Spa Monopole’s opinion,
have reputation.
and, for that reason, there could be a transfer of the image of purity,
health and beauty from one groups of products to the other.
After numerous disputes before the OHIM Opposition Division
(case R 2396/2010-1) and the OHIM Board of Appeal, the case
came before the EU General Court (case T-131/12). In the Court’s
opinion, the stronger and closer the association of an earlier
trademark with a later trademark, the greater the danger that
the current or future use of the later trademark will entail undue
benefits being reaped from the distinctiveness and reputation of
the earlier mark. As to the concept of “reaping undue benefits
from the distinctiveness or reputation of a trademark”, this is also
defined as “parasitism”, meaning benefits gained by a third party
from the use of a designation identical with or similar to another
mark. This includes cases in which, by using a trademark (or
features which that mark possesses) for other goods, there is an
obvious exploitation of the reputation of that trademark. The Court
found that the likelihood (especially in the case of an objection
based on a mark which enjoys wide reputation) of there being
a threat in the future (which is not only hypothetical) of harm
being caused or undue benefits being reaped as a result of the
use of a mark submitted may be so clear that the party contesting
the registration need not show any other factual circumstances.
The Court also held that the holder of an earlier trademark is not
obliged to prove the existence of an actual, continuing infringement
of its trademark.
In the opinion of the Court, the OHIM Opposition Division had
rightly held that the documents presented demonstrated the
reputation of the word trademark “SPA” for goods belonging to
Class 32 of the Nice classification pertaining to mineral waters, and
that that mark was associated with “purity, health and beauty”.
As to the danger of parasitism, the Opposition Division had rightly
determined that the conflicting designations were similar, because
the word “sparitual” contains the word “spa”, and, for that reason,
consumers could associate the two marks with each other.
The Opposition Division also found that there is a link between the
cosmetic products the mark submitted concerns and the mineral
waters identified by the earlier mark (given that cosmetic products
may contain mineral water and be used together with such water),
In considering the case, however, the Court also found that the
OHIM Board of Appeal had not made a sufficient analysis of the
issue of undue benefits being reaped from the reputation of the
earlier mark. In line with established caselaw, it is not up to the
Court to replace an assessment made by the Board of Appeal with
one of its own and even less so to make an evaluation concerning
something that the Board has not yet addressed. The OHIM Board
of Appeal wrongly held that, in this case, the requirements for
establishing the reputation of the earlier mark had not been met
and had also incorrectly neglected to assess whether there existed
a danger that the trademark submitted would reap undue benefits
from the reputation of the earlier mark, though, as shown above,
it was obliged to do so. For this reason, the Court invalidated the
contested decision.
Source: www.curia.europa.eu
For further information please contact:
Michal.Ziolkowski@klgates.com
EU: DISPUTE OVER THE MARK “CLEANIC
INTIMATE” – RULING OF THE EU GENERAL
COURT IN THE CASE OF HARPER HYGIENICS S.A.
VS. THE OHIM
In a ruling of 13 May 2015 (case T-363/13), the EU General
Court resolved a dispute over the registration of the word-graphic
trademark “CLEANIC intimate” between the applicant – the Polish
company Harper Hygienics S.A., and the Office for Harmonization
of the Internal Market (OHIM). The company Clinique Laboratories
LLC with its registered office in the United States also took part in the
proceedings as an intervening party. Both Harper Hygienics S.A.
and the intervening party are cosmetics companies with a presence
on the Polish market.
On 1 July 2010, Harper Hygienics submitted the following mark for
goods from classes 3, 5 and 16 (including tissues and cosmetic
swabs, cosmetic cotton wadding, tampons, hygienic bandages and
diapers):
TRADEMARKS AND UNFAIR COMPETITION 2/2015 9
On 3 December of the same year, Clinique Laboratories submitted
an objection to that registration in all of the above classes, basing its
case on the earlier registration of the word trademark “CLINIQUE”,
registered in such classes as 3, 14 and 25. The company showed
that its mark is registered for such goods as toiletries products and
body and hair care preparations, products for cleaning teeth, and
cosmetics and, therefore – in the intervening party’s opinion – for
identical or similar products as those covered by the application by
Harper Hygienics.
In a decision of 27 January 2012, the OHIM Opposition Division
ruled in favour of the objection and refused to register the
Community trademark “Cleanic intimate” for goods belonging to
class 3 and, in part, for goods belonging to classes 5 and 16. That
decision was later upheld by the OHIM Fifth Board of Appeal in
a decision of 29 April 2013.
In its action to the EU General Court, the Polish company Harper
Hygienics argued that there had been an infringement of Article
8 par. 1 letter b) and Article 8 par. 5 of Regulation No. 207/2009.
It questioned both the similarity of the goods covered by the
conflicting trademarks and the similarity of the marks themselves.
Specifically, Harper Hygienics pointed out that the goods covered
by the application and the goods for which the mark “CLINIQUE”
was registered mostly belong to different classes and have other
purposes: Harper Hygienics’ products are hygienic products,
while those of Clinique Laboratories are cosmetic. The applicant
also argued that the OHIM had not properly assessed the weight of
the graphic elements of the mark submitted or the word element
“intimate”, unjustifiably limiting its comparison of the two marks to
the words “Cleanic” and “Clinique”.
The EU General Court was not convinced by the arguments of
the applicant and confirmed the correctness of the decisions of
the OHIM Opposition Division and Board of Appeal. In particular,
it found that, when evaluating the similarity of goods, account
must be taken of circumstances such as distribution channels,
use of the goods and end-user profile, which, in this case, leads
to the conclusion that the goods are indeed similar. The Court
also referred to caselaw saying that goods cannot be deemed
10 TRADEMARKS AND UNFAIR COMPETITION 2/2015
different only because they are listed in different classes of the
Nice classification. Further, the Court shared the view of the
OHIM that it is the word “Cleanic” that dominates in the mark
submitted, which makes that mark highly similar to the word
mark “CLINIQUE”, even though the two words are pronounced
somewhat differently.
Taking all of the above circumstances into account, the EU General
Court found that the simultaneous presence of both marks would
entail a likelihood of the relevant group of consumers being misled.
This eliminates the possibility of registering the mark “CLEANIC
intimate”.
Source: www.curia.europa.eu
For further information please contact:
Piotr.Wenski@klgates.com
EU: LOUBOUTIN SUCCEEDS AGAIN IN LONG
STANDING EU TRADE MARK OPPOSITION OVER
RED SOLE
Christian Louboutin (Louboutin) has again been successful in a long
running opposition proceeding filed by Roland SE (Roland) against
its red sole trade mark in the EU.
Louboutin has faced legal challenges around the world in registering
and enforcing its signature red sole on its shoes. In 2010,
Louboutin filed a Community Trade Mark application for the below
trade mark in class 25 for “high-heeled shoes (except orthopaedic
footwear)”:
(Louboutin Mark)
The Louboutin Mark was described as consisting of the colour red
(Pantone 18.1663TP) applied to the sole of a shoe as represented
in the mark. The outline of the shoe shown in broken lines does not
form part of the Louboutin Mark but rather is designed to show how
the mark is applied to the shoe.
containing no words and the Roland Mark contained the words
“my shoes”.
While the examiner initially rejected the application, an appeal to
OHIM reversed the examiner’s decision and saw the Louboutin
Mark accepted for registration. Following publication, 3 companies
opposed the registration of the Louboutin Mark, including Roland,
which opposed the mark on the basis of its prior filed Community
Trade Mark registered in class 25 for “clothing, footwear, headgear”,
depicted below:
Finally, the Court held that there was no conceptual link between
a mark which depicted the red sole of a shoe with a high heel and
a mark containing a red rectangle bearing the word “shoes”. Roland
argued that the marks introduced a link with the word “shoes” and
the common colour red, however, the Court held that there was
an insufficient conceptual link between the marks (case number
T-631/14).
The Court rejected the appeal on all grounds and ordered Roland to
pay expenses in the opposition.
(Roland Mark)
Roland was unsuccessful in its opposition against the Louboutin Mark
both in the first instance and on appeal to OHIM. As the trade marks
differed on a visual, phonetic and conceptual basis, the opposition
failed notwithstanding that the marks were filed for identical goods.
Roland subsequently appealed to the Court of Justice of the European
Union (Court) and in a judgment handed down this month, was again
unsuccessful in its opposition against the Louboutin Mark.
The Court held that taking into account all relevant factors, including
the similarities of the signs and the goods claimed in the applications,
there was no risk of any consumer confusion arising that the public
would associate the goods sold under the Louboutin Mark as emanating
from Roland or that there existed an association with Roland.
When considered as a whole, the visual impression generated by
the Louboutin Mark was that of the colour red applied to the sole of
a shoe with a high heel. In contrast, the impression of the Roland
Mark was of a banal graphic box containing the words “my shoes”
which were descriptive of the goods claimed in the registration.
The colour red was not held to be a dominant feature in the Roland
Mark as it was present only in the box containing the word “shoes”
and was a decorative feature that had a secondary importance to
the words “my shoes”, which were considered to be the dominant
part of the Roland Mark. The Court therefore held that there was no
visual similarity between the 2 marks.
The Court also held that there was no phonetic similarity between
the 2 marks, given that the Louboutin Mark was a figurative mark
While Louboutin has faced challenges in seeking the registration of
its iconic red sole, this decision now paves the way for the Louboutin
Mark to be registered in the EU and arms Louboutin with important
trade mark rights that it can use to take action against competitors
using a red sole on their high-heeled shoes in the EU. The case of the
Louboutin red sole shows that novel marks are capable of protection in
the EU and that in addition to their brand names and logos, companies
should invest in protecting their key brand indicia including signature
colours and shapes of products, in order to maximise their asset value
and arm themselves with enforceable rights against competitors.
For further information please contact:
Arthur.Artinian@klgates.com
Christine.Danos@klgates.com
POLAND: BRAND WITH A NAME – RULING
OF THE SUPREME COURT
On 29 May 2015, the Supreme Court took a stance in a case of
consent to the use of the name of a natural person in the name
of a legal person. It ruled that Article 435 par. 3 of the Civil Code
applies to every type of company, i.e. to both partnerships and
capital companies (case file No. V CSK 524/14).
That provision states that the business name of a legal person can
contain the name of a natural person if the use of that name in
the business name serves to demonstrate connections between
that natural person and the establishment of the legal person or
business activity. The provision contains the proviso that it is
necessary to have the written consent of the natural person whose
TRADEMARKS AND UNFAIR COMPETITION 2/2015 11
name is used in the business name or, in the case of that person’s
death, the consent of his or her spouse and children.
The ruling was issued in connection with a dispute that arose
between a natural person – a partner of a limited liability company
– and the company. The partner sold his shares and undertook
not to engage in activities competitive towards the company using
a brand similar to that of the company. The dispute, then, centres
on how to interpret that prohibition on competition, that is, should
that prohibition be understood as consent to the use of the former
partner by the company?
In the course of the proceedings, the Court of Appeal in Katowice
held that the necessity of obtaining consent to the use of the name
of a natural person in the business name of a legal person applies
only to partnerships.
The Supreme Court, however, did not agree with this stance.
It emphasized that the provision of the Civil Code referred to above
is not limited to partnerships and, therefore, ordered that the
case raised by the capital company (a limited liability partnership)
be reconsidered, applying Article 435 par. 3 of the Civil Code, to
assess what the joint will of the parties was when concluding the
noncompetition undertaking. The Court must determine whether
the prohibition on competition meant consent to the use of the
name of the former partner in the business name of the company.
As of the time of this writing, the justification to the ruling has not
been published.
Source: www.rp.pl
For further information please contact:
Ewa.Rusak@klgates.com
POLAND: CAN A SUPPLIER OF A LARGE
COMMERCIAL CHAIN SELL A CLAIM FOR
“SHELF FEES” TO A DEBT RECOVERY FIRM? –
RULING OF THE SUPREME COURT
In light of a recent ruling of the Supreme Court (I CSK 694/13), the
answer to the above question is yes. A provision in a cooperation
agreement concluded between a retail chain and a supplier stating
that the supplier must obtain the consent of the retail chain for
a cession of its receivables resulting from that agreement is ineffective.
12 TRADEMARKS AND UNFAIR COMPETITION 2/2015
The courts of lower instance held that the retail chain had committed
an act of unfair competition in the form of collecting what are
known as “shelf fees”, that is, fees other than a commercial margin
for selling goods provided by the supplier under a cooperation
agreement concluded between the two entities. The Court of Appeal
further held that fees for services related to managing customer
relations, monetary bonuses, marketing budgets and Metro Link
services were charged by the chain without equivalent benefits being
provided to the supplier. The remuneration collected by the chain,
in fact, constituted a fee for admitting the plaintiff’s goods to trade,
that is, an act of unfair competition providing grounds for claiming
a return of benefits unlawfully obtained.
The defendant questioned the procedural legitimacy of the
plaintiff’s claim before the Supreme Court, since the plaintiff had
not been a party to the cooperation agreement but had acquired
the receivable from the supplier. One of the clauses of the original
agreement required the consent of the defendant to a cession
of receivables of the supplier resulting from the agreement, and
such consent was not granted by the defendant. In a ruling of
22 January 2015 (I CSK 694/13), the Supreme Court held that the
claim sought in this case certainly arose as a consequence of an
event related to the performance of the cooperation agreement.
Yet, the source of that claim is not the agreement binding the retail
chain and the supplier but a tort (an act of unfair competition as
foreseen in Article 15 par. 1 pt. 4 of the Act on Combating Unfair
Competition). Therefore, the receivable in question, in the opinion
of the Supreme Court, can be assigned to a third party by way of
a transfer agreement, because this is not prohibited by either the
act or the nature of the obligation.
Source: www.prawo.rp.pl; www.sn.pl
For further information please contact:
Ewelina.Madej@klgates.com
POLAND: AFTER THE END OF AN EMPLOYMENT
RELATIONSHIP, A BAN ON COMPETITION DOES
NOT SUCCEED TO THE NEW EMPLOYER – RULING
OF THE SUPREME COURT
The Labor Code provides the possibility of concluding
a noncompete agreement with an employee during the employment
relationship or after it has ended (against payment of appropriate
remuneration). Recently, the Supreme Court ruled in case No.
I PK 123/14 (11 February 2015) on whether such a noncompete
agreement passes over to a new employer in the case where a work
establishment is taken over.
Article 231 of the Labor Code states that, where a work
establishment or part thereof is taken over by another employer,
that employer becomes a party to existing employment relationships
by force of law. The Court pointed out that the new employer
enters into the position of the former entity employing an employee
automatically. No actions whatsoever are required of the parties to
confirm the transfer of all obligations.
The Court emphasized, however, that the automatic nature of
the transfer solely concerns employment relationships and that
any interpretation extending this is impermissible. Therefore, of
key importance to the resolution of a dispute between a former
employer and a new work establishment in respect of a noncompete
agreement after the termination of an employment relationship is
whether that prohibition and the resulting obligation on the part
of the employer to pay remuneration constitute elements of the
employment relationship.
The content of the prohibition on competition, which is the subject
of the dispute, is that, after the termination of the employment
relationship, no activities that are competitive against the employer
can be undertaken and that the employer must pay appropriate
remuneration. It should be emphasized that such a prohibition
extends beyond the time frame of the employment relationship –
the performance of the obligations resulting from the prohibition
is to occur after the definitive end of the employment relationship.
The Supreme Court referred to an earlier ruling from which it found
that a noncompete agreement concluded between an employer
and an employee does not constitute a contract within the scope of
labour law.
Consequently, the Court concluded that an agreement on
a prohibition of competition after the cessation of an employment
relationship does not constitute an element of labour law covered by
the scope of Article 231 of the Labor Code, and so the obligation to
pay remuneration for not competing does not pass over to the new
work establishment.
Source: www.sn.pl
For further information please contact:
Ewa.Rusak@klgates.com
POLAND: A DISHONEST SUGGESTION – RULING
OF THE COURT OF APPEAL IN WARSAW
“The Prizes Department requests the issuance of a confirmation.
This concerns the collection of an prize. Please send BMW to 7400
(4.88 zł)” was a message sent to consumers by the organizer of the
BMW lottery from Orange Second Edition. In a ruling by the Court
of Appeal in Warsaw (case file No. VI ACA 187/14), it was confirmed
that that action constituted an infringement of the collective
interests of consumers and an unfair market practice. The Court
dismissed the appeal by the organizer of the lottery, which had
not agreed with the decision of the President of the Office of
Competition and Consumer Protection who, in December 2011,
issued a decision that the way in which the company Internetq
Poland had encouraged people to take part in the lottery infringed
the law; the OCCP President imposed a fine on the company in the
amount of 338,572 zlotys.
The company suggested that consumers had won a prize and had
only to reply to the message: “We are delighted to announce the
results: the person with the number […] – 50 percent chance at
the last BMW X3. We are waiting for an SMS to 7400. 20 minutes
left! (4.88 zł)”, “Important information: the Prizes Committee
asks the person with number […] to send BMW to 7400 (4.88 zł).
This concerns a prize: a BMW with a value of over 100,000 zł”.
In reality, sending a reply only guaranteed participation in the
car lottery.
The subject of the collective interests of consumers is strictly related
to unfair competition law and combating unfair market practices.
The Act on Combating Unfair Market Practices states that a practice
infringing collective consumer interests is an unlawful action, which
harms those interests and which may consist of, in particular:
• using impermissible contractual clauses;
• infringing the obligation to provide consumers with reliable,
true and complete information; and
• using unfair market practices or acts of unfair competition.
The Act on Combating Unfair Market Practices states that a market
practice is deemed as an action that is misleading, if that action
in any way causes or could cause the average consumer to take
a decision concerning an agreement that he or she would otherwise
not take. In particular, one particular type of unfair market practice,
aggressive market practice, is that of creating the impression that
TRADEMARKS AND UNFAIR COMPETITION 2/2015 13
the consumer has already obtained, will unconditionally obtain, or
will obtain upon the performance of a specific action, a prize or
other comparable benefit, when, in fact, the prize or comparable
benefit does not exist or when the prize or other benefit depends
of the consumer paying a specific amount of money or incurring
other costs. The actions taken by the organizer of the lottery
constituted an aggressive practice, hence the reaction of the
regulator.
Source: www.archiwum.rp.pl
For further information please contact:
Ewa.Rusak@klgates.com
POLAND: ABOVE-MARGIN FEES ALWAYS
HINDER MARKET ACCESS – RULING OF
THE COURT OF APPEAL IN WARSAW
In March 2015, a ruling was handed down in a case brought
against a retail chain by a supplier of socks, stockings and
children’s knee-highs. The Court of Appeal in Warsaw upheld
(most of) the ruling in favour of the supplier issued by the court
of first instance. The supplier demanded, on the basis of Article
15 par. 1 pt. 4 read together with Article 18 par. 1 pt. 5 of the Act
on Combating Unfair Competition (“ACUC”), the return of fees
collected by the retail chain for variously named services. Some
of these were to give the supplier the opportunity of logging into
the database system of the retail chain, while others involved
placing the claimant’s products in leaflets showing the offer on at
the hypermarket or selecting certain products and putting them on
special display in stores. The claimant also demanded the return of
costs incurred for transport services. The courts of both instances
found the claim justified, with the exception of the demand for the
return of transport costs.
The ruling confirmed the interpretation of Article 15 par. 1 pt.
4 ACUC within the scope of where the burden of proof lies.
That Article states that it is an act of unfair competition to hinder
access to a market by collecting fees other than a commercial
margin for accepting goods for sale. The defendant argued
that the burden of proving that the collection of fees other than
a commercial margin hindered access to the market rests on
the claimant, but the courts of both instances held that it is not
necessary for the claimant to prove this. The provision of Article
15 par. 1 pt. 4 ACUC is constructed in such a way that proving
14 TRADEMARKS AND UNFAIR COMPETITION 2/2015
that fees other than a commercial margin were collected for
accepting goods for sale is equivalent to proving that access to the
market was hindered.
The Court of Appeal in Warsaw found that access to the market
is hindered when a barrier or obstacle exists that does not result
from the type of activity conducted by the business offering buyers
its goods or services, or from conditions shaping the demand
for a given product or service, but from unfair actions taken by
other businesses. Such unfair activities are exemplified in Article
15 par. 1 ACUC. The restriction of a supplier’s access to the
market is the necessity of incurring additional fees in a situation
where the alternative is to limit or even cease cooperating with an
intermediary, that is, to reduce the supplier’s access to the market.
The Court ruled that the termination of cooperation between the
parties due to the claimant being charged with supposedly legal
fees, which were disadvantageous to the claimant economically,
constituted an instance of hindering access to the market.
Source: www.orzeczenia.ms.gov.pl
For further information please contact:
Ewa.Rusak@klgates.com
POLAND: WHEN COMPETITIVE ACTIVITIES ARE
NOT UNFAIR COMPETITION – RULING OF THE
REGIONAL COURT IN SZCZECIN
On 22 May 2015, the Regional Court in Szczecin (case file No.
VIII GC 502/14) dismissed a claim brought by a school against
a competing institution owned by a former employee of the school.
The claimant charged that the former employee had committed an
act of unfair competition by conducting activities at the same address
and using advertising materials whose appearance was stylistically
similar to that of advertising leaflets of the school. The claimant also
accused the defendant of having infringed business secrets of the
claimant by (a) using an innovating system of teaching developed
by the claimant, (b) using organizational solutions concerning the
method of paying for lessons and conducting and planning courses,
and (c) using information on customers of the claimant. In the
claimant’s opinion, the defendant incited the claimant’s customers to
terminate their contracts with the claimant in an attempt to take its
students away and, in fact, succeeded in doing so. The defendant
denied having committed any act of unfair competition whatsoever
and moved for dismissal of the claim.
In the Court’s evaluation, the claim was groundless.
The parties were not bound by a noncompete agreement, as the
claimant argued by stating that the agreement, which expired on
30 June 2013, was performed by the parties after it had expired.
The Court also found that there was no evidence that the defendant
had in any way used information constituting a business secret of
the claimant concerning original methods of teaching or running
a school. Moreover, the claimant failed to specify precisely what
unique and innovative elements the teaching methods it uses
contain. Nor did it show that the defendant had used those
elements as a business secret of the claimant. Nor was the
defendant conducting business at an address similar or identical
to that of the claimant, which is an act of unfair competition under
Article 3 par. 1 of the Act on Combating Unfair Competition. In the
view of the Court, it is quite common for several businesses having
similar profiles to be located in the same building. There is no
provision of law that prohibits an entrepreneur from opening an
educational facility in premises close to those of another business
conducting similar activities.
In the Court’s assessment, there was no infringement of Article
5 of the Act on Combating Unfair Competition, which states that
identifying a business in a way that could mislead consumers
is an act of unfair competition. The only common element in
the names of the two businesses is a single word appearing in
different variations and constituting an element of names providing
information on the profile of the activities conducted. The claimant
did not prove that such a function of names could be misleading.
Nor did the Court agree with the claimant’s assertion that the
defendant had used advertising materials whose appearance
was stylistically similar to the claimant’s advertising leaflets. This
was in specific reference to the phrase “2 + 2 = 4” placed on
a blackboard. The leaflets of the claimant and the defendant differ
in terms of colour scheme and layout, so those differences do not
meet the prerequisite for finding that the defendant’s leaflets could
be confused with those of the claimant.
Witnesses at the hearing did not confirm that the defendant had
incited pupils’ parents or the children themselves to resign from
lessons at the claimant’s school and enrol at the defendant’s school.
Furthermore, the claimant failed to prove that the defendant had
wilfully acted to deny access to and afterwards delete important
files related to the activities of the claimant’s school. The defendant
only deleted the account belonging to her after the conclusion of
her cooperation with the claimant. For the above reasons, the Court
dismissed the claim.
Source: www.orzeczenia.ms.gov.pl
For further information please contact:
Dorota.Kosela@klgates.com
UK: TOO LATE: “CANARY WHARF” TRADE MARK
NOT REGISTRABLE
“Canary Wharf” is an iconic region in the city of London, and
a dominant part of the modern London skyline that houses
a number of leading financial and commercial institutions.
The term has become a household name for most of the British
public and is widely recognised as a geographic location. Starting
out as a shed and quay within the West India shipping company,
the area was owned and used by the Fred Olsen shipping company
in the 1930’s as a hub for the transport and shipping of fruits and
goods from the Canary Islands. Today the area remains a privately
owned estate which is managed by Canary Wharf Group plc.
After initial unsuccessful attempts to register CANARY WHARF
as a trade mark for various goods and services in classes 16,
36, 37, 39, 42, 44 and 45, including printed matter, real estate
investment, car parking and building construction services ,
CWG appealed the decision to refuse its application on absolute
grounds. Before the UK trade mark office, the Hearing officer
refused the appeal on the ground that the name “Canary Wharf”
was a geographical location and would be understood by the public
as referring to services around Canary Wharf, and that the name
lacked acquired distinctiveness.
CWG appealed this decision, stating that the hearing officer
had “effectively identified a ‘blacklist’ of goods and services for
which any place name would always be refused regulation” and
“failed to carry out the Windsurfing Chiemsee assessment in any
structured way, or in respect of each of the categories of goods and
services for which the application was made.” CWG argued that
the hearing officer should have enquired if “Canary Wharf” was
already in printed publications as a “common subject” and that the
registration should have been allowed in any event on the basis that
“Canary Wharf” had acquired distinctiveness.
TRADEMARKS AND UNFAIR COMPETITION 2/2015 15
In the appeal decision, the court agreed that the hearing officer
had adequately carried out the assessment and considered
all the services covered by the trade mark and concluded that
“Canary Wharf” was likely to be taken by the general public as the
geographical location. The court also agreed that the registration
should be refused on public policy grounds, as granting it would
restrict third parties from providing services in the area. It concluded
that “Canary Wharf” had not acquired distinctiveness, as it was only
in use inside a private estate in a very limited geographic area. There
had only been one instance of use of the mark outside this estate, in
a promotion for the Canary Wharf shopping centre.
It was stated that the appeal might have been successful, if the
appeal had been made 30 years earlier when the estate was first
starting development, but as the estate has grown outside of the
initial area, and was now considered to be an entire business
district by the public, the refusal of the application was upheld.
This case is an interesting example of a mark gaining geographic
significance over time. It is a timely reminder about the importance
of registering trade marks at the earliest possible stage before
a name becomes synonymous with a geographical location.
For further information, please contact:
Arthur.Artinian@klgates.com
16 TRADEMARKS AND UNFAIR COMPETITION 2/2015
OTHER ISSUES
EU: A REPORT BY EUROPOL AND THE OHIM
ON COUNTERFEIT GOODS
In April of this year, the report “2015 Situation Report on
Counterfeiting in the European Union” appears – the first such
extensive and detailed report on counterfeit goods in the EU. It is
the result of cooperation between Europol, the OHIM and the
European Observatory on Infringements of Intellectual Property
Rights.
The report shows that most counterfeit goods that reach the
European market are produced outside the EU and escape
detection at the EU’s external borders. Yet, studies conducted for
the needs of the report also showed an increase in the production
of counterfeit goods within the Community as well, in such countries
as Belgium, the Czech Republic, Italy, Poland, Portugal, Spain
and the United Kingdom. It seems that the manufacture of fake
products on a large scale is becoming an increasingly profitable
branch of organized crime. Trading in counterfeit goods is
a relatively low-risk endeavour, but is connected with other forms
of crime as serious as transporting people in order to exploit them.
Groups engaged in such criminal activities have their roots both
within and outside of the EU.
The most significant and effective distribution channel for
counterfeit goods is the Internet. High-quality websites are created,
which imitate shops of producers of original products and catch
customers’ attention with their attractive prices. Internet shops offer
fake goods 24/7, and their existence ‘between’ various jurisdictions
complicates efforts to combat them. Websites that are closed down
often start up again on the very next day.
In the opinion of Rob Wainwright, Director of Europol, though the
phenomenon of counterfeiting goods has now taken hold within
the EU, more than two-thirds of such goods still come from China.
The report illustrates how Chinese gangs that distribute fake goods
act in a high specialized way, often through mobile groups. In Italy,
they have connections with the Camorra (local mafia). Chinese
centres in Europe are well established and prosperous – for
example, centres producing counterfeit clothes can be found in
those provinces of Italy connected with the fashion industry and
known for textile production. Organized Chinese criminal groups
are also active on a large scale in Madrid and in parts of Europe.
They often run a legal business as a front for the distribution of
counterfeit goods, and also establish connections with a network of
agencies handling money laundering, which allows them to cover
their tracks and send large sums of money directly back to China.
According to the report, though, it is India that is the biggest cause
for worry by European manufacturers of pharmaceutical goods and
Turkey for food products. Indonesia is known for having ineffective
laws and problems with corruption, while the Philippines has a low
rate of seizing counterfeit goods.
The purpose of the report is to provide information to all interested
parties, including manufacturers, legislators and market players, on
both the EU and domestic levels. That information is mainly about
organized crime groups involved in the production and distribution
of goods within the EU. The report provides details on transport
routes, including places where counterfeit goods reach the market.
It also describes the models according to which criminals operate,
and the current activities of state institutions and the private sector
in combating those operations, and explains the connections
between the counterfeit goods market and other types of crime.
As well as providing details on the scale and scope of such activities
within the EU, the report also describes how their impact can be
discovered, prevented and reduced.
One result of the report is a promise by the OHIM to create IT tools
with easy, secure access for assisting the exchange of information
among rights holders and law enforcement authorities. This should
support cooperation between the OHIM and Europol within the
Internet environment and improve the effectiveness of actions taken
against counterfeiters on the market.
Source: www.europol.europa.eu
For further information please contact:
Emilia.Pisarek@klgates.com
TRADEMARKS AND UNFAIR COMPETITION 2/2015 17
EU: ASTON MARTIN RADIATOR GRILL AS
A POSITIONAL TRADEMARK1
Positional trademarks are graphic or spatial designations, which
feature a particular, defined way of placing an element on a two- or
three-dimensional object.
Submission of a positional mark
Positional marks are a particular type of designation, but do not
constitute a separate category such as word, graphic or spatial marks.
The scope of protection afforded to a positional mark results from the
placing of a specific image or form in a specific position on a product.
Submitting a positional mark by indicating the specific element of
the designation, which is to be subject to protection in a particular
position on a product, rather than seeking protection for the rest
of the designation such as its descriptive nature, in itself limits the
protection sought. Such a narrowing of the scope of protection may
have a positive effect on the distinctiveness of certain elements
of a designation and may be helpful in establishing the scope
of protection during studies conducted by an authority at the
registration stage or later. In addition, some elements of spatial
marks, such as a characteristic handle or grip, may be better
illustrated in a submission or register when accompanied by the
entire object with which they actually appear in trade.
If a trademark consists of a single image showing its position on
a product, then this should be shown in a way that corresponds to
its actual location on the goods when a submission is made to the
PPO or the OHIM. The illustration of the mark should be sufficiently
unambiguous so that the border between the characteristic part of
the designation and the part of the product on which it is located
is clear. The contour of the mark is drawn in a solid line, while the
contours of the goods on which the mark is to be placed are drawn
in a broken line.
Graphically presentable, but not always
distinctive
Positional marks are not problematic in terms of meeting the
criterion of graphic presentability, since they do not differ from
1. This article appeared in the daily Rzeczpospolita on 12 June 2015 under
the headline: “What protection for unconventional marks”; the author is
a patent attorney at K&L Gates Jamka sp.k.
18 TRADEMARKS AND UNFAIR COMPETITION 2/2015
standard marks in this respect. They usually feature an appropriate
graphic layer, and are presented in a drawing in which a silhouette
(outline, sketch, contour) of the product in the form of a broken
line contains a specific image or form in the selected position.
In certain circumstances, it is doubtful whether the criterion of the
distinctiveness of such designations is met. When they comprise
part of a product, they may be deemed to be a designation lacking
initial distinctiveness.
The Aston Martin radiator grill
An interesting example of an attempt to register a positional mark
was that of the company Aston Martin Lagonda Limited (“Aston
Martin”) before the OHIM. The company made several submissions
for Community trademarks for a radiator grill used on model cars.
The contour of the radiator grill was presented in a solid line, and
the contour of the product on which the mark was to be placed
as a broken line. The submission concerned positional marks for
such goods as cars, toys and computer games, as well as services
relating to building and repairing cars.
During the assessment of the submissions, the OHIM found that
the marks are devoid of initial distinctiveness and refused to make
the registration for Aston Martin. In the opinion of the OHIM
expert who analysed the submissions, the form of the radiator grill
presented did not have features that would distinguish it from other
grills existing in trade. The position was taken that a person paying
attention to that brand of car would only perceive the radiator grill
as a functional, technical part of the car, or as a decorative element,
but not as a distinctive designation. The radiator grills used on
Aston Martin cars can only be recognized by car enthusiasts and
professionals. In the opinion of the OHIM, what is important for the
average consumer is the logo with the name of the manufacturer,
which usually appears on a radiator grill or constitutes part thereof.
Aston Martin disagreed with this stance, and presented a lot of
evidence demonstrating the unique style of its radiator grills in
an attempt to prove secondary distinctiveness. That evidence,
however, was not deemed sufficient, and the decision of the OHIM
not to grant protection was upheld.
Aston Martin appealed against that decision, arguing that
marks in the form of a characteristic radiator grill do constitute
a distinctive and highly recognizable element of all cars of that
brand, disseminated over many years of use in commercial
trading. In cases R 1795/2014-2 and R 1796/2014-2, the OHIM
Second Board of Appeal found that a radiator grill may constitute
a trademark, though each submission of such a trademark should
be considered individually, given the various graphic illustrations
of such a designation and the characteristic details attesting to
its distinctiveness. In the opinion of the Second Board of Appeal,
the OHIM expert had correctly found that the marks depicting
the radiator grill do not have initial distinctiveness but had not
made a sufficiently detailed study of the issue of secondary
distinctiveness. As a result, in view of the large amount of evidence
presented by the applicant, the case will be referred back to the
OHIM expert for reconsideration.
Source: www.europol.europa.eu
For further information please contact:
Michal.Ziolkowski@klgates.com
TRADEMARKS AND UNFAIR COMPETITION 2/2015 19
For further information please contact:
Oskar Tułodziecki
Piotr Wenski
Oskar.Tulodziecki@klgates.com
Piotr.Wenski@klgates.com
Dorota Koseła
Michał Ziółkowski
Dorota.Kosela@klgates.com
Michal.Ziolkowski@klgates.com
Ewelina Madej
Arthur R. Artinian
Ewelina.Madej@klgates.com
Arthur.Artinian@klgates.com
Ewa Rusak
Christine Danos
Ewa.Rusak@klgates.com
Christine.Danos@klgates.com
Marlena Wach
Marlena.Wach@klgates.com
If you are interested in obtaining an electronic version of the bulletin,
please send your request to: Emilia.Pisarek@klgates.com
with the subject line: “TM Bulletin”.
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