To brighten up your rainy Thursday (in London) the IPKat reports on a quirky little “celebrity endorsement” case.

Tant pis?

Various websites, including German news site n-tv.de and French Paris Match (see here and here), report on a dispute over the use of the acronym “DSK”.

Former IMF chief Dominique Strauss-Kahn, often referred to as “DSK”, is trying to prevent a Belgian sex club to open under the name “DSK”.  Club owner Dominique Alderweireld (apparently also known under the name “Dodo”) is cited as having said that the name “DSKlub” was meant to be short for "Dodo's Sex Klub" and thus use of his own good name.  Mr Strauss-Kahn’s lawyers, however, are reportedly not convinced this is entirely true and are threatening legal action.  By way of background: Mr Strauss-Kahn’s glittering political career ended apruptly in 2011 following allegations that he had sexually assaulted a hotel employee in the United States (more information here).

Mr Alderweireld on the other hand appears to be delighted by this reaction and - at least according to n-tv.de's report - even seems to admit that he “may have thought of Mr Strauss-Kahn” when naming his new club.  In any case, the media attention was great for his business, he is quoted.  'Tant pis', Merpel muses in her rusty French....
  

Case C‑35/13, Assica — Associazione Industriali delle Carni e dei Salumi and Kraft Foods Italia SpA v Associazione fra produttori per la tutela del ‘Salame Felino’ and others is a decision of the Court of Justice of the European Union (CJEU) which seems particularly apt for coverage on this weblog, for reasons that will soon become apparent. It's a reference from the Corte suprema di cassazione (Italy), on the following facts.

Salame Felino: no cats were harmed in the production of this product

‘Salame Felino’ is the name a pure pork salami sausage; its name comes from the town of Felino [Google Translate confirms that this word is the Italian for "feline" = "of or pertaining to Kats"], a conurbation located in the province of Parma. In January 1998 [that's no mistake: this litigation commenced 16 years ago, in the previous century], the claimant Associazione fra produttori brought proceedings against Kraft Jacobs Suchard before the Tribunale di Parma for unfair competition on the ground that Kraft Jacobs Suchard was selling a salami sausage called ‘Salame Felino’ but which had been produced outside the territory of the Parma region, in the presumably non-feline region of Lombardy, in Cremona.

In February 2001, the Tribunale di Parma found that the Associazione could not rely on Regulation 2081/92 [the EU legislation then in force on the protection of protected geographical indications and protected designations of origin], as the name ‘Salame Felino’ did not constitute a PGI or a PDO under that regulation. However, it could still rely on Article 31 of the local Italian law, Legislative Decree 198/1996. Holding that the products marketed by Kraft Jacobs Suchard did not come from the territory of Parma, whereas ‘Salame Felino’ had acquired a reputation among consumers with respect to its characteristics, which stemmed from a particular feature related to its geographical environment, the Tribunale di Parma held that the conduct of Kraft Jacobs Suchard constituted an act of unfair competition.

Kraft Jacobs Suchard, by now rebranded as Kraft Foods and joined by the trade association Assica to which it belonged, appealed to the Corte d’appello di Bologna which, in January 2006, dismissed that appeal and held that the protection offered by Legislative Decree 198/1996 did not conflict with Regulation 2081/92: the registration of a name as a PGI or PDO was needed only if that Regulation were to be invoked, but not for protection under national law.

Kraft appealed further to the Corte suprema di cassazione, which decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

(1) Should Article 2 of Regulation 2081/92 be interpreted as precluding a producers’ association from being able to claim the right exclusively to use, within the [European Union], a designation of geographical origin used within a Member State to designate a specific type of salami sausage, without having first obtained a legally binding measure from that Member State establishing the boundaries of the geographical area of production, the rules and regulations governing production, and any requirements which producers may have to satisfy in order to be entitled to use that designation?

(2) In the light of Regulation 2081/92, which set of rules should be applied within the [European Union] market and also within the market of a Member State to a geographical designation which has not obtained the registration referred to in that regulation?’

This morning the CJEU sensibly ruled that

"Council Regulation ... 2081/92 ..., as amended by Council Regulation ... 535/97 ..., must be interpreted as meaning that it does not afford protection to a geographical designation which has not obtained a Community registration, but that that geographical designation may be protected, should the case arise, under national legislation concerning geographical designations relating to products for which there is no specific link between their characteristics and their geographical origin, provided, however, that, first, the implementation of that legislation does not undermine the objectives pursued by [the] Regulation and, secondly, it does not contravene the principle of the free movement of goods under Article 28 EC, matters which fall to be determined by the national court".

Now the action can go back to Italy so that this action can be brought to its conclusion.

Says Merpel, Italy is rightly famed for a wonderful selection of treasured antiquities. She hopes that ongoing legal disputes will not continue to be among them.

Although she is an International Kat of Mystery, Merpel is getting rather bored of travel to foreign parts, and overseas corridors are losing their allure as places to prowl. So this week, she has decided to stalk some corridors which are closer to home.

Both the IPKat and Merpel have long been perplexed and bewildered by the (somewhat) new IPReg Rule, effective from 1 January 2013, which states:

Individuals who apply to be entered onto the Registers of Patent and/ or Trade Mark Attorneys on or after 1 January 2013 are expected to attend and pass a basic litigation skills course from an IPReg accredited course provider either prior to qualification or within 3 years from the end of the calendar year when they are first entered onto the relevant register.

Merpel looks after her kittens

This begs many questions, in particular from the use of the phrase "are expected to".  Is the provision mandatory or not? Is there a sanction for non-compliance, and if not, is it really a requirement, or just a fond hope?

More pressingly, however, the first litter of kittens affected by the rule will have entered on the Register in 2013, and the second litter will have recently received exam results and so will be arranging for entry on the Register now during 2014. The IPKat has been contacted by a number of patent attorneys who are concerned, not to say surprised, that the rule has come into force without in fact there being any effective litigation course that a newly qualified patent attorney can attend (and, Merpel notes, with so little fanfare or indeed communication:  it appears that some patent attorneys actually affected by the provisions are not yet aware of them at all).

Not sure whether you are a patent attorney or trade mark attorney?

Merpel is given to understand that CIPA has submitted a course for accreditation by IPReg (although the latest information published by IPReg dated January 2014 states "We await an application for accreditation from CIPA"), and that this accreditation is in progress. However, no word has emerged as to when any CIPA-organised course may be up and running.  It is the case that the Practice Skills course for Trade Marks at Nottingham Trent is accredited for these purposes because of its litigation module; however, for a patent attorney not wishing to also qualify as a trademark attorney, it seems excessively onerous to take a trademark qualification course only for its litigation module.  The IPKat understands that the litigation module is not (yet) available as a stand-alone qualification, nor is there any immediate indication that it will be.

One might expect the sunrise provisions for a new requirement to be less onerous than the steady-state provisions once the requirement has been up and running for a while. The general requirement is that a newly qualified patent attorney has three years in which to complete the litigation qualification. However, this time is currently effectively curtailed by the lack of availability, so the first group of patent attorneys who qualified last year and this year will effectively have less time in which to complete the qualification. Moreover, the more the courses are delayed, the more crowded and possibly oversubscribed will be the courses at the first time of running.

Members of the profession concerned with training are clearly most anxious about this unsatisfactory state of affairs.  The IPKat and Merpel very much hope for clarification of the position very soon, and (dare it be hoped?) that some actual accredited courses will be available in the near future.

By way of compensation, perhaps IPReg may consider a transitional provision allowing newly qualified patent attorneys more than the currently envisaged period of three years to complete the course in the first instance.

This morning, in Case C‑591/12 P, Bimbo SA v OHIM, Panrico SA, the Court of Justice of the European Union (CJEU) followed the Opinion of Advocate General Mengozzi and dismisssed an appeal which has had Anglophone doughnut-eaters sitting on the edge of their chairs in eager anticipation.

To refresh readers' memories, in May 2006 Bimbo applied to register as a Community trade mark the word sign BIMBO DOUGHNUTS. The goods for which registration was sought were, unsurprisingly “pastry and bakery products, specially doughnuts” (Class 30).  Panrico opposed, citing a number of earlier national and international word and figurative trade marks, including the Spanish word mark DOGHNUTS, registered for “all kinds of confectionary and pastry products and preparations and products and preparations for sweets and confections; sugar, chocolate, tea, cocoa, coffee and substitutes thereof, vanilla, essences and products and preparations for making caramel cream and cakes, chocolate and sugar-based foodstuffs, ices, candy, chocolates, round-shaped dough biscuits, chewing gum tablets and biscuits [but not 'doughnuts' notes Merpel]”, also in Class 30. Said Panrico, there was a likelihood of confusion under Article 8(1)(b) of Regulation 207/2009 on the Community trade mark, plus a "without due cause" objection under Article 8(5) which does not appear again in this narrative.

The Opposition Division allowed the opposition and its decision was upheld by the Fourth Board of Appeal. The Board of Appeal noted that “doughnut” was an English word meaning a “ring-shaped small spongy cake made of dough” but, since that word did not exist in Spanish (where its equivalents are “donut” or “rosquilla”), the Board concluded that, for the average non-English-speaking Spanish consumer, the word “doughnut” described neither the goods in question nor their qualities, and had no particular connotation in relation to them. DOGHNUTS would thus be perceived as a foreign or fantasy term by most consumers.  Since the marks were similar and their respective goods identical,  likelihood of confusion was the result. A further appeal to the General Court received short shrift so there was nothing for it but for Bimbo to appeal further to the CJEU.

This came up when the IPKat was searching for an illustration of Panrico's DOGHNUTS: does anyone have a current DOGHNUTS piccie for us ...?

Before the CJEU Bimbo raised the following arguments:

* the General Court confused the concepts of ‘distinctiveness’ and ‘wholly meaningless element’, on the one hand, and ‘independent distinctive role’, on the other: the term ‘role’ suggests that it is a concept that must be assessed in the light of the characteristics of the other components of the sign concerned [Merpel says, this sounds really grand and she wishes she'd thought of it first -- but she wonders what it really means].

* the General Court’s reasoning implied that any trade mark composed of two elements, one of which is was trade mark with a reputation and the other a trade mark with an average degree of distinctiveness, with no particular meaning for the relevant public, would be regarded as consisting of two components with an independent distinctive role. However, the average consumer usually perceives a trade mark as a whole, and it is only in particular cases that the CJEU has accepted that it is possible that a component of a composite mark may retain an independent distinctive role in the composite sign concerned.

* a finding that an element has an independent distinctive role may be based only on an examination of all the relevant factors of each case, which was not the case here.

* the notions of ‘unitary whole’ and ‘logical unit’, used by the General Court, did not appear in the case-law of the CJEU. If, by those notions, the General Court meant that the composite trade mark contained different ‘unconnected’ elements, that fact would not imply that those elements had an independent distinctive role.

No, no, no and no, said the CJEU, in a ruling that contained no new principles of Community trade mark law and which [quite rightly, many would say] was focused on whether what the General Court did was within the tramlines of CJEU jurisprudence on Community trade mark law than on what that law should be in a real world in which doughnuts are bought and sold and in which it takes eight years to get to the end of a dispute as to whether a doughnut vendor can use BIMBO DOUGHNUTS on its products in the confident knowledge that it has the protection of a trade mark.  Ultimately, Bimbo's grounds of appeal were based more on what turned out to be issues of terminology with which the General Court expressed itself than with any genuine error of law.

If this is the best that we can do, muses the IPKat -- who has read and re-read the decision and still can't understand how a Spanish consumer would in reality confuse BIMBO DOUGHNUTS with DOGHNUTS -- maybe we are all a bunch of bimbos ...

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