“NOVELTY” (availability)
1° step: if NO prior identical or similar signs
2° step: for identical or similar goods/services
‐ If similarity: risk of confusion/likelihood of association
‐ If identical TMs for identical g/s = presumption
TRIPS: art 16(1)
1
1
1 ) Prior similar signs
2)
For identical/similar goods/services
… Buy B instead of A
1 ) Prior identical or similar trademark
2)
For similar goods/services
2
SIMILARITY b/w signs
3 criteria:
1) Conceptual similarity
2) Visual similarity
3) Phonetic similarity
5
VISUAL SIMILARITY
6
3
CONCEPTUAL similarity
DOUGHBOY
v.
7
CONCEPTUAL / VISUAL similarity
8
4
CONCEPTUAL / PHONETIC / VISUAL
similarity
9
CONCEPTUAL similarity
THE SOUTH BUTT
10
5
Similarity?
11
SIMILARITY
b/w goods/services
Criteria:
1) Same class? … not necessarily
2) Same purpose
3) Same public (consumers)
4) Same channels of distribution
5) Products/serv. Inherently linked
5) “Cross‐substitutability”
12
6
LEGAL ARGUMENTS
1) the “CORE PART” of the mark
2) the “OVERALL IMPRESSION” of the mark
13
The “Ciao Napoli”
case
7
“Ciao Napoli” (cont.)
Community application
- food
- drinks
- Restaurants, bars
(CIAO Srl, Napoli)
il caso “Ciao Napoli” (cont)
Prior CTM
- food
- drinks
- Restaurants, bars
CIAO RISTORANTE
(Autogrill SpA)
8
“Ciao Napoli” (cont.)
Examiner
1. “CIAO” is not distinctive as it is a common way of greeting
(in Italy)
2. The presence of “ciao”in both marks does not imply
confusion
3. The design of the marks is different.
4. The consumer CAN distinguish them
5. Therefore: no risk of confusion
“Ciao Napoli” (cont.)
Board of Appeal
1. The fact that “ciao” is a typical way to greet in Italy is not
relevent to its distinctivenenss
2. Distinctivenenss must be analyzed only vis-à-vis the
products and services.
3. “Ciao” is not a common word to distinguish food or
restaurants
4. Therefore: it’s distinctive ….. Therefore ….
9
“Ciao Napoli” (cont)
5. “Ciao” is the core part of both marks
6. The marks are therefore SIMILAR
7. The products and services are IDENTICAL
8. Therefore: risk of confusion in Italy (and elsewhere)
9. The application is thus: rejected
Decision R 36/2004-1 of July 20 2004
The “Roberto Cavalli”
case
10
“Roberto Cavalli” (cont)
“Roberto Cavalli” (cont)
CTM application
- Clothing
- Leather products
- Glasses
(CP3 Srl, Sesto Fiorentino)
11
“Roberto Cavalli” (cont)
Prior CTM
- Clothing
- Leather products
- Glasses
(Sig. Roberto Cavalli)
“Roberto Cavalli” (cont)
Examiner
1. The core part of the TMs is respectively:
ROBERTO
and
CAVALLI
2. The 2 names are different
3. The surname is more important than the name
4. Both are written in common characters
5. Therefore no risk of confusion
6. …even if the products are identical
12
“Roberto Cavalli” (cont)
Board of Appeal
1. “Very suspicious” the similarity in the grafic style of the
letters: ‘b’
‘e’
‘r’
2. Both are in lower cases
3. The letter ‘c’ (again in lower cases!) may allude to
‘cavalli’
4. the visul impression is very similar, and
… too many coincidences!!!!
“Roberto Cavalli” (cont)
5. The graphic style of a mark in the fashion industry is
… key
6. Even the absence of the full surname does not
eliminate the similarity
7. Risk of association
8. The applcation is thus: rejected
Decision R 533/2005-1 of April 26 2006
13
“Roberto Cavalli” (cont)
Let’s think together …
1. The graphic aspect of a mark can in some cases
determine similarity even though the marks are
conceptually and phonetially different.
2. … especially in the fashion sector where the average
consumer is particularly attentive to the look (of the
products and of the marks)
3. Example of di “risk of association”
The “Pepe Jeans” case
14
“Pepe Jeans” (cont)
“Pepe Jeans” (cont)
CTM application
- Clothing
- Leather products
- Parfumes
(José Jiménez Arellano SA, Madrid)
15
“Pepe Jeans” (cont)
prior marks
Denim de Luxe
by Pepe Jeans
Pepe Jeans Portobello
Pepe 2 XL
Khaki
by Pepe Jeans
Pepe F4
Pepe Jeans M2
Pepe Jeans
PEPE
(Pepe Jeans Company)
Pepe Jeans 73
NB: in Spain
“Pepe Jeans” (cont)
Opponent
1. “Pepe” is the core part of both marks (“Jeans” = generic)
2. All marks“Pepe” represent a‘family’. Consumers may
think that “Pepe Arellano” belongs to the same family
3. Marks “Pepe” are well known
4. Risk of confusion
16
“Pepe Jeans” (cont)
Examiner
1. The marks “Pepe Jeans” are very well known in Spain
2. They all belong to the same “family”
3. The element “Pepe” makes “Pepe Arellano” similarly
confusing with “Pepe Jeans”
4. Opposition accepted, mark “Pepe Arellano” rejected
“Pepe Jeans” (cont)
Boar d of Appeal
1. The marks are NOT confusingly similar as:
-
The role of “Pepe” in different i the 2 marks
It is dominant in “Pepe Jeans”, secondary in “Pepe Arellano”
-
The core part of “Pepe Arellano” is “Arellano” (the
surname)
17
“Pepe Jeans” (cont)
2. There is no “family” of marks
- the public must already know the
family
- “family” must be on the market and not only on the register
- In reality the public only knows … 
“Pepe Jeans” (cont)
3. No confusion because:
- Different structure of the marks:
“Pepe” + generic name
/ “Pepe” + surname
- Different graphic style:
- A careful consumer would not believe that the 2 marks
belong to the same “family”
18
“Pepe Jeans” (cont)
4. There is no taking advantage of the well known character of
the prior mark as the 2 marks are NOT similar
Decision R 117/2006-1 of february 15 2007
A MARK MUST NOT BE
 DESCRIPTIVE (in a broad sense)  GENERIC
 MISLEADING
CONTARY to PUBLIC ORDER and MORALITY
38
19
The “Garum” case
“Garum”
Plinio : “sauce beased on rotten fish”
Garum =
Delicious seasoning based on fermented fish, commomly
used by the ancient romans
20
“Garum” (cont)
CTM applcation
Fish preserves
(Compagnie Générale de Diététique, France)
“Garum” (cont)
Board of Appeal
1. generic name for seasonings during the time of the ancient
romans
2. cited by “Larousse Gastronomique” dictionary
3. term unknown to the wide public but ….. known to the
experts of the sector
4. generic mark = refused
Decision R 1401/2005-1 of september 7 2006
21
FOR EDUCATIONAL MATERIALS / TUTORIAL CDs
Valid? FOR ENERGY DRINKS
Valid? 43
44
22
For : Cosmetics Valid? The “Screw You” case
23
“Screw You” (cont)
“Screw You” (cont)
•
•
•
•
•
•
Sun glasses
condoms
Artificial breasts, erotic toys
clothing, shoes
Sport articles
Alcoholic beverages
What do you think?
(Mr Kenneth Jebaraj, known as “Screw You”,
London)
24
“Screw You” (cont)
Board of Appeal
1. refused for:
sun glasses, clothing, sport items and beverages
2. granted for :
all items relating to sex
“Screw You” (cont)
A. the expression is highly vulgar in english
B. but you have to determine the level of tolerance of
the public concerned
C. it varies depending on the type of product (and type
of consumer)
25
“Screw You” (cont)
A. For products meant for mass market (large public) the
level is lower  the mark is vulgar
B. For products relating to sexuality  the mark is valid
Decision R 495/2005-G of 6 July2006
Art 6 ter
MS will refuse/invalidate TMs = to:
‐ Armorial bearings, flags, emblems, other signs of STATES
‐ Armorial bearings, flags, emblems, abbreviations, names of INT. INTERGOVT. ORG. COMMUNICATION to other MS through WIPO
‐ Facultative for States
‐ Obligatory for IGOs 12 m. for objections
52
26
“Special” marks
1) Well‐known marks
2) Geographical marks
3) Collective/Certification marks
4) 3‐D
5) Names and surnames
6) Letters and numbers
53
Well known marks
1) What is a W‐K mark? (criteria)
2) Consequences:  Exception to 2 principles !
a) if not registered = for identical/similar g/s
b) if registered = for identical + similar + dissimilar g/s Paris Conv: art 6bis
54
TRIPS: art 16(2)
27
WELL KNOWN TMs cont.
55
US. Case study
Roll‐X
T.T.A.B.,Dec. 5, 2011 28
Geographical marks
Bad news!
57
Marks & GIs: differences
Both distinctive signs, but ....
A. Ownership (not to identify g/s produced by one or
more enterprises, but to identify goods originating from
a particular geo. area)
B. Compliance with quality standards
Ergo: all enterprises operating in that geo. area in accordance
with standards can use G.I.
58
29
Collective / Certification marks
COLLECTIVE TMs: signes used to distinguish the g/s of the members of an association (+ Regulation of Use) from those of other undertakings
CERTIFICATION TMs: sign used to indicate that the g/s in connection with which it is used are certified by the proprietor of the sign in respect of origin, materials, mode of manufacture, quality, accuracy or other characteristics
59
The “Lego” case
30
“Lego” (cont)
Board of Appeal
The little brick was protected
as a patent (expired)
= proof that it’s a
functional shape
3-D marks
Only if shape is:
1) distinctive (often after use)
2) not necessary
3) not a technical result
62
31
First names and surnames
‐ Can you use your surname as TM?
‐ What can you do if someone has a TM = to your
surname?
‐ Criteria for registering: 1) commonnes of name 2) No of undertaking engaged in same trade
‐ Surnames with meaning? ‐ Variations? ‐ Single first names: for services? ‐ Full names?
63
... AND MY NAME? 64
32
LETTERS and NUMBERS
65
33