Legal Areas
© Copyright 2023– BOEHMERT & BOEHMERT
“General Court overrules previous instance: No likelihood of confusion between CODY’S and CODE-X for marks in beverages sector” – Article by Dr. Florian Schwab in WTR
On the online portal of the trade journal World Trademark Review (WTR), BOEHMERT & BOEHMERT partner Dr. Florian Schwab discusses a recent trademark law decision of the General Court in (T-198/21) Ancor Group GmbH v. European Union Intellectual Property Office (EUIPO) of February 23, 2022.
The court set aside the decision of the Board of Appeal of the EUIPO and – upholding the decision of the Opposition Division – finally rejected the opposition based on the word and figurative marks CODY’S against the word mark CODE-X (essentially each claiming beverages in class 42 of the Nice classification).
In contrast to the Board of Appeal, the European judges found no likelihood of confusion between the marks. They based their decision primarily on the fact that CODY’S and CODE-X are visually and phonetically similar, at most, to an average degree. The hyphen creates a syllabic and visual break, which does not apply to the apostrophe. For goods in the beverage sector, it cannot be assumed that they are primarily ordered orally (for example in a busy and noisy bar where phonetic differences may not be clearly perceived) and, thus, the phonetic comparison is not per se primarily relevant.
In Dr. Schwab’s opinion, the result reached by the court is convincing. It is worth noting that the overruling of the Board of Appeal is more the exception than the rule in EU trademark matters.
The full article in English is available online for registered users of WTR here!
Health Claims Regulation: The use of trademarks containing health claims finally banned
As of 20 January 2022, the use of trademarks containing health claims will be definitively prohibited.
Many products are advertised by the food industry as having health benefits. Margarine were “low in cholesterol” and dried fruits would “promote digestion.” Even in the case of sweets, the vitamin content is emphasised. By doing so, it is intended to provide incentives to buy. Many consumers are willing to spend more money on “healthy” foods.
Increased consumer protection through the Health Claims Regulation
Due to the risk of misleading consumers about alleged health effects, the European legislator passed the Health Claims Regulation (Regulation (EC) 1924/2006) in 2006. It regulates the requirements for nutrition and health claims on foods. The Regulation has a wide scope of application. The term “claim” includes any labelling or advertising of the product that declares or even implies that a food has positive nutritional characteristics or that establishes a link between the food and health.
Nutrition claims are only permitted if they are truthful. The Health Claims Regulation lists over 200 common claims such as “sugar-free” or “low-fat” and sets limits for the product name. For example, if a product contains less than 0.5 g of sugar per 100 g, it may be advertised as “sugar-free”.
Health claims are generally prohibited under the Regulation. Products may not simply be associated with a specific health effect (“helps strengthen the immune system”). However, there is the option of going through an approval procedure at the German Federal Office of Consumer Protection and Food Safety (BVL). In 2012, the EU additionally adopted another regulation (Regulation (EU) No. 432/2012), which contains a list of permitted health claims for foods. According to this Regulation, a product with a specified minimum calcium content, for example, may refer to its positive influence on bone preservation.
Need for action by trademark owners
Word and figurative marks are also to be understood as identification of the product. Therefore, they may not readily contain nutrition or health claims such as “low carb” (Hamburg Court of Appeals, 24.04.2014 – 3 W 27/14 ). Terms such as “vital”, “fit” or “healthy” are also affected. A well-known German drugstore chain found themselves forced to rename its own brand “Das gesunde Plus” to “Mivolis” due to the Health Claim Regulation.
To protect trademark owners, the Health Claims Regulation contains a transitional provision. According to Art. 27(2), products with trademark protection existing before 1 January 2005 (also by virtue of reputation or renown) may be marketed until 19 January 2022. Only from 20 January 2022, the requirements of the Regulation will also be applying to these trademarks. Trademark owners who nevertheless use trade names that are prohibited under the Health Claims Regulation after 19 January 2022 face the risk of warnings and official measures.
In this context, trademark owners from the food industry should conduct a review of their older trademarks.
Authors: Dr. Andreas Dustmann, Attorney at Law, and Tim Stripling, Research Assistant
Protection of the Swiss Army Knife
With judgement rendered on 15 June 2021 in the case 33 O 7646/20, the Regional Court of Munich ruled on the use of various indications of geographical origin with reference to Switzerland. Specifically, the ruling concerned the famous Swiss Army Knife of the traditional Swiss company Victorinox. The court clarified that the indications “SWITZERLAND”, “SWISS” as well as the national flag of Switzerland enjoy a high reputation as indications of geographical origin in relation to pocket knives and multifunctional tools.
Background
In the underlying case, the traditional Swiss company Victorinox objected the offer and sale of pocket knives and multifunctional tools bearing the indications “SWITZERLAND” and the national flag of Switzerland. In the proceedings Victorinox has alleged that the defendant was appropriating the reputation of these indications of geographical origin for its own products. While Victorinox manufactures the Swiss Army Knife and multifunctional tools in Switzerland, the defendant’s products are produced in China and belong to the low-price segment. Nevertheless, these products were labelled with the words “SWITZERLAND” and the national flag of Switzerland. Only a small sticker on the back of the packaging of the defendant’s pocket knives and multifunctional tools suggested that the products originate from China.
Decision of the court
The Regional Court of Munich granted the action and specifically ordered the defendant to cease and desist from further offering and selling the pocket knives and multifunctional tools at issue. The indications of geographical origin “SWITZERLAND”, “SWISS” and the Swiss national flag are associated with special values in relation to pocket knives and multifunctional tools and therefore enjoy a high reputation. In the court’s opinion, this is even obvious in the legal sense and hence does not require proof in the proceedings. Consumers would expect a high quality from products from Switzerland; this is also true for the Swiss Army Knives sold by Victorinox. Accordingly, such products are associated with special quality and enjoy a high degree of recognition. By transferring this special reputation to the products manufactured in China by means of “Switzerland-related” labelling, the defendant exploits this reputation. The public would inevitably make an association with the quality and tradition of Swiss pocket knives, with the result that the target public would associate the defendant’s products with similar ideas of quality and value. For these reasons, it was irrelevant whether or not the indications on the defendant’s products misled customers as to the geographical origin of the products. Delocalising references on the products, such as a reference to their origin from China, were irrelevant.
Conclusion
The Regional Court of Munich has confirmed that the indications of geographical origin “SWITZERLAND”, “SWISS” as well as the national flag of Switzerland enjoy a special reputation with respect to pocket knives and multifunctional tools. Accordingly, there is an extended scope of protection with regard to these and similar indications. Whether or not an indication referring to Switzerland in connection with pocket knives and multifunctional tools may actually mislead the public, is of no relevance. Insofar as the products are not from Switzerland, the use of such indications is per se unlawful.
“General Court confirms invalidity of EUTM on ground of bad faith due to prior contractual relationship” – Article by Dr. Florian Schwab in WTR Daily
In his recent article “General Court confirms invalidity of EUTM on ground of bad faith due to prior contractual relationship” on the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney Dr. Florian Schwab discusses a decision of the General Court of the European Union in case T-853/19 of 17 March 2021, Reza Hossein Khan Tehrani v. European Union Intellectual Property Office (EUIPO).
The General Court upheld the judgment of the Board of Appeal of the EUIPO on the cancellation of the EU trade mark registration EARNEST SEWN on the grounds of bad faith. This judgment contributes to this legal concept, which is difficult to categorise and which is often decided on a case by case basis by the EU Courts. It discusses the relevance of prior contractual relationships between the trade mark proprietor and the cancellation applicant for the assessment of bad faith filing.
Registered users of WTR Daily can access the full article in English online here!
General Court denies likelihood of confusion between pharmaceutical marks containing “mar” element- Article by Dr. Florian Schwab in WTR Daily
On the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney Dr. Florian Schwab discusses a decision of the General Court (Fifth Chamber) in Case T-261/19 20 January 2021, Stada Arzneimittel AG v. European Union Intellectual Property Office (EUIPO).
In this judgment, the Court upholds the decision of the First Board of Appeal of EUIPO that there is no likelihood of confusion between the EU figurative mark sign OPTIMAR and the earlier word mark MAR. For the latter, the evidence of genuine use was limited to “medical nasal sprays”.
With regard to the identically covered element MAR, the Court considered a below-average distinctive character in view of the recognisably descriptive reference to “sea” for medical nasal sprays.
The full article in English is available to registered users of WTR Daily here online and as a PDF download!
