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“Metro”, “Metro Radio” & a question of genuine use

MetroThis article, which first appeared in the September 2015 ITMA Review, reviews a case which reiterates that, to prove genuine use, adequate proof of use needs to be submitted.

On 28 September 1994, Associated Newspapers Limited (‘ANL’) applied to register METRO in Class 16 (Registration No. 1586405 of 24 January 1997).

On 3 October 1997, Bauer Radio Limited (‘BRL’) applied to register METRO RADIO for a range of services covering advertising, marketing and promotional services (Class 35); telecommunications and a broad range of broadcasting services (Class 38); and a range of radio entertainment services and other activities including arranging, organising and provision of concerts, live and musical entertainment (Class 41) (Registration No. 2147054B of 23 July 1999).

On 22 May 2000, ANL filed an application for metro.co.uk and metro.com (series mark) under Application No. 2233378 which was published on 8 February 2008 for a wide range of goods and services in Classes 09 (digital music, etc.), 16, 35 (advertising and promotion of business services, etc.), 36, 38 (telecommunication services, etc.) and 41 (publishing services, organisation of exhibitions and shows, etc.). (more…)

Trade Mark Case Review: A Tale of Two Skull Devices

HalloweenAs Halloween approaches IPcopy brings you a skull tingling tale of bad faith……. (more…)

Could CALDEA cause confusion? Case Review

CJEUIn this case review, which was first published in the June issue of the ITMA review, we look at case T-26/13 (dm-drogerie markt GmbH & Co KG v OHIM, CJEU, General Court (Third Chamber), 12 February 2014) and the assessment of likelihood of confusion between the trade marks CALDEA and BALEA.

On 22 July 2010, Semtee filed a Community Trade Mark application for the word mark CALDEA for, inter alia, “soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices” (class 3), “consultancy relating to business management of leisure premises, non-medical, making use of water, in particular heated water, for relaxation, leisure, physical maintenance of and keeping fit in the field of health” (class 35) and “personalised consultancy, advice and assistance relating to the operation of a leisure centre, non-medical, relating to water, in particular heated water, for relaxation, leisure, physical maintenance and keeping fit in the field of health” (class 44).

The application was published on 20 September 2010 and dm-drogerie markt GmbH & Co KG (“dm-drogerie”) filed a notice of opposition against registration of the mark for the above-mentioned goods and services based on its earlier international trade mark No 0894004, BALEA, in classes 3, 5 and 8 (covering, inter alia, “soaps, perfumeries, essential oils, preparations for hygienic and beauty use”) designating protection in the European Union (EU). The Applicant claimed infringement under Article 8(1)(b) of Council Regulation (EC) No 207/2009.

The Opposition Division rejected the opposition and dm-drogerie filed a notice of appeal with OHIM against the decision. (more…)

Proposed Legislation- Modernisation of the European Trade Mark System

EU flagProposals for reformed legislation, which have been drafted in order to help modernise and further synchronise the European Trade Mark system, have surfaced on the web. The European Commission has indicated that the reform package will ‘foster innovation and economic growth’ throughout the EU as well as ‘ensure coexistence and complementarity’ throughout the trade mark systems. Further, the European Commission has stated that the reform ‘will be beneficial for applicants and owners of both the Community Trade Marks (‘CTMs’) and national trade marks’ by increasing the efficiency of the EU internal market. Further, regardless of the size, market and geographical influence of an entity, the proposals will aim to create a more level playing field.

Once the proposals have been adopted (potentially Spring 2014) the Commission advise that EU countries will have to implement the new rules of the Directive into national law within two years. With regard to the Regulation, most amendments will become effective when it is enforced. However, the Fees Regulation will require prior authorisation by the Committee on OHIM fees with the aim of adopting it before the end of 2013. Below is an overview of some of the proposals. Please note that these proposals are not official.

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Are the days of a section 11(1) TMA defence numbered? (TMA – Trade Marks Act 1994)

Court (Small)“A registered trade mark is not infringed by use of another registered trade mark for goods or services for which the latter is registered (…)”(s.11(1)).  This section of the UK Trade Marks Act 1994 (also referred to as “registered mark defence”) has generally been the basis for advising clients to obtain a UK trade mark registration in addition to a Community Trade Mark (‘CTM’) registration.

UK trade mark proprietors have been able to rely on the registered mark defence mentioned above as a prima facie defence to trade mark infringement proceedings. Prior to the EU decision below, the validity of a UK registered mark would have to be challenged first before infringement proceedings commenced. It would appear from the EUCJ ruling below that there may be a movement away from this defence.

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