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TRADEMARKS

WELCOME TO. TRADEMARKS. Giulio C. Zanetti Torino, Italy Director of Training and Networks Department 14-16 November, 2011 IDLO. What is a trade mark?.

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TRADEMARKS

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  1. WELCOME TO ... TRADEMARKS Giulio C. Zanetti Torino, Italy Director of Training and Networks Department 14-16 November, 2011 IDLO

  2. What is a trade mark? Any visual sign capable of distinguishing the goods/services of one natural person/legal entity ... from others, including …. TRIPS:art 15

  3. MARKS Trademarks Service Marks PRINCIPLE OF SPECIFICITY MARKS

  4. INTERESTS TO BE CONSIDERED 1) The applicant (TM owner) 2) The competitors 3) The public / consumers

  5. examples WORDS (word marks) Adidas Starbucks Whirlpool Nestlé Volkswagen Sony Harley Davidson Philips Just Do It Orange Siemens Lays Red Bull Java Vodafone JVC Gatorade Coca Cola Shell Ford Apple Levis Rolex Microsoft PepsiCo RayBan Zippo Bic MGM Petronor Herbalife EMI Sellotape Pfeizer

  6. examples LOGOS (figurative marks)

  7. examples OBJECTS (3-D marks)

  8. examples COLOURS OR COMBINATIONS (colour marks)

  9. examples SOUNDS and SMELL marks       (Tarzan yell) (Popping) (Sound of tennis balls being hit)

  10. CHARACTERISTICS +Distinctiveness +“Novelty” (availability) -NOT Misleading, Descriptive, Generic Contrary to public order/morality ...

  11. DISTINCTIVENESS Assessed in Relation with: • Goods/Services (Principle of Specificity) • Laws/Jurisprudence • Average Consumer of country concerned (Principle of Territoriality)

  12. Want to increase the distinctiveness? • Special script • Special colour (colour claim/limitation) • Logo (non descriptive) • G/S limitation

  13. DISTINCTIVENESS (cont.) > Vulgarization > Secondary Meaning ... how can you prove it?

  14. Hells Angels Motorcycle Corporation v. Amazon.com

  15. “NOVELTY”(availability) • 1) Prior identical or similar signs • 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)

  16. SIMILARITY b/w signs • 3 criteria: • Conceptual similarity • 2) Visual similarity • 3) Phonetic similarity

  17. VISUAL SIMILARITY

  18. CONCEPTUAL similarity DOUGHBOY v.

  19. CONCEPTUAL similarity THE SOUTH BUTT

  20. CONCEPTUAL / PHONETIC similarity

  21. SIMILARITY b/w goods/services • Criteria: • Same class? … not necessarily • 2) Same purpose • 3) Same public (consumers) • 4) Same channels of distribution • 5) “Cross-substitutability”

  22. LEGAL ARGUMENTS • the “CORE PART” of the mark • 2) the “OVERALL IMPRESSION” of the mark

  23. The “Ciao Napoli” case

  24. - food - drinks - Restaurants, bars “Ciao Napoli”(cont.) Community application (CIAO Srl, Napoli)

  25. - food - drinks - Restaurants, bars il caso “Ciao Napoli”(cont) Prior CTM CIAO RISTORANTE (Autogrill SpA)

  26. “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

  27. “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 ….

  28. “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

  29. The “Roberto Cavalli” case

  30. “Roberto Cavalli”(cont)

  31. Clothing Leather products Glasses “Roberto Cavalli”(cont) CTM application (CP3 Srl, Sesto Fiorentino)

  32. Clothing Leather products Glasses “Roberto Cavalli”(cont) Prior CTM (Sig. Roberto Cavalli)

  33. “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

  34. “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!!!!

  35. “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

  36. “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”

  37. The “Pepe Jeans” case

  38. “Pepe Jeans”(cont)

  39. Clothing Leather products Parfumes “Pepe Jeans”(cont) CTM application (José Jiménez Arellano SA, Madrid)

  40. “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 Jeans 73 PEPE NB: in Spain (Pepe Jeans Company)

  41. “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

  42. “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

  43. “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)

  44. “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 … 

  45. “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”

  46. “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

  47. A MARK MUST NOT BE • DESCRIPTIVE (in the broad sense) • GENERIC • MISLEADING / deceptive • CONTARY TO PUBLIC ORDER andMORALITY

  48. The “Garum” case

  49. “Garum” Plinio : “sauce beased on rotten fish” Garum = Delicious seasoning based on fermented fish, commomly used by the ancient romans

  50. “Garum”(cont) CTM applcation Fish preserves (Compagnie Générale de Diététique, France)

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