IPTango: trade mark infringement

Showing posts with label trade mark infringement. Show all posts

Tuesday, 20 March 2012

The number 13= bad luck or good luck?

Patricia Covarrubia March 20, 2012 No comments:

Last Tuesday, 13th of March a street of São Paulo, Brazil experienced bad luck for one business man, Mr Jose Maria da Silva. The person in question was arrested by the agents of the Criminal Investigation Department (DEIC). The good news about the bad news for Mr da Silva is that his arrest was for falsification of cigars. [good news for trade mark owners, right?].

The cigars were labelled with well known Cuban trade marks such as Cohiba and Monte Cristo as well as other mark that were sold over the phone. The agents seized labels, boxes and 1,500 cigars (most were Hondurans). The specialist in charge of corroborating the goods noted that the cigars were of low quality and the labels and boxes and in general all the packaging was similar to the originals. At the end, the news mentions that Mr da Silva has been charge with tax fraud [uh? surely, while bringing an action for infringement of trade mark should be an action brought by the trade mark owners, is there any criminal matter in here?]

Venezuela: the daily bread - arepa

Patricia Covarrubia February 03, 2012 No comments:

The word ‘arepa’ has become the latest discussion in many networks comments/arguments and the like (here, and here). Arepa is the noun of our daily bread in Venezuela and also a popular dish in Colombia, Panama, Puerto Rico and other Latin America countries in which they do use the same name - arepa.

In November 2009 ‘Arepa Cafe’ opened its doors in Toronto, Canada offering to the community the traditional Venezuelan dish ‘arepa’. At the same time the company began the process for registering the trade mark ‘Arepa Cafe’ at the Canadian Intellectual Property Office – in April 2011 the Office granted trade mark protection. Simultaneously there was a young Venezuelan national with a small food stall [more of a take-away] in Kensington market (also in Toronto, Canada) by the name ‘Arepa Market’. To make the story short ‘Arepa Cafe’ started a legal battle asking the owner of ‘Arepa Market’ to remove the name that identified his business on the grounds that it confused consumers and affected its customers. The tale ended in the closure of the latter property due to its owner not been able to finance a court case.

Eventually the story became known and spread. It all started as a message on a Facebook group and suddenly it became a snowball with hundreds of comments by annoyed Venezuelans [oops including me] and even an official statement from the company involved – ‘Arepa Cafe’.

For the Venezuelan community's it is an injustice because the word ‘arepa’ is a common word in the Venezuelan and Latin American vocabulary and to see someone taken over this word is like ‘hijacking’.

The Legal MatterThe word ‘arepa’ is not a common word in English or French, and thus there is no absolute grounds for refusal of registration. This situation would not be the same if the word was ‘burger’ for example – ‘burger cafe’ and ‘burger market’ may coexist. But ‘arepa’ is not a customary word in Canada and thus the trade mark ‘arepa cafe’ is for the Canadian people a very distinctive name; to put it in another way, the word ‘arepa’ has no meaning. Yet, we are in presence of a compound sign here. The example given before: ‘burger cafe’ and ‘burger market’ may coexist because the marks are not identical and thus both an aural and visual identity may be required.

The compound name should be analysed as one rather than salami slicing the name the word ‘arepa’ stands out and thus make the trade mark distinctive. Therefore to conclude the ‘arepa’ dilemma, the sign ‘arepa market’ which is used (well, was) in the course of trade for the same services to those in relation to which the trade mark ‘arepa cafe’ has been registered is similar. I am afraid therefore that the owner of ‘apera cafe’ did have the legitimate right to enforce its trade mark.

Any hopes?While I do agree, as a Venezuelan, that the term limit any other Canadian competition in the industry, there is the possibility that the parties interested to use such a term are able to identify and establish that the term ‘arepa’ has a meaning and its customary in the trade. For example last year on July 2011 CNN published an article titled 'World's 50 most delicious foods' and the 'arepa' was placed at number 20 - winning to the croissant No 21 and brownie No 22!

Source Noticias24.

IMPI closes down two commercial establishments

Patricia Covarrubia December 02, 2011 No comments:

The Mexican Institute of Industrial Property (IMPI) taking its duties very seriously – that of safeguarding the legitimate interests of Intellectual property rights’ owners, has closed down to commercial establishments that were apparently infringing IPRs.

The first establishment is situated in Toluca. On October 12th IMPI imposed a provisional measure against JOSÉ FERNANDO NAVARRO
SÁNCHEZ. What about? The administrative action was brought by COMUNICACIONES NEXTEL DE MÉXICO, S.A. DE C.V., (registered under 682266) that provides services such as the marketing of mobile service phones and their accessories, against Jose Fernando Navarro Sanchez, to stop him using the trade mark 'NEXTEL Y DISEÑO' under which he also offered the same services as the claimant party. As Mr Navarro appeared not to have stopped using the trade mark, on 25th November, IMPI paid an inspection visit to Mr Navarro to verify compliance with the interim previously filed, however, Mr Navarro ignored the ban ordered by the IMPI, and so, IMPI gave a fine of two thousand days of the general minimum wage in Mexico City, and again ordering immediately abstain from continuing to offer its services under the aforementioned trade mark. On November 28, 2011, and since the Mr Navarro persisted in using the trade mark IMPI proceeded to close temporarily the establishment – 30 days.

On the same line, but in another town – Cuernavaca, a business was offering services under the trade mark ‘REPRESENTACIONES TURÍSTICAS BOJORQUEZ’ (TOURIST REPRESENTATIONS BOJORQUEZ). The application against this company was made by Armando de Jesus Bojorquez Patron who owns the registered mark ‘BOJORQUEZ Y DISEÑO’ for travel services (registration 660,853). Previously, IMPI imposed a fine to ‘REPRESENTACIONES TURÍSTICAS BOJORQUEZ’ for the same cause but as it kept using the trade mark IMPI is now imposing a different penalty, i.e. temporary closure of the business.

Source IMPI.
Notice of the procedure here.

Toucans may be facing in different directions but they may be sharing in the caring of a culture

Patricia Covarrubia November 22, 2011 No comments:

Today I bring you the news of the battle of the toucans – reported here. You may remember that the Maya Archaeology Initiative (MAI) received a letter from Kellogg’s lawyers asserting that its logo infringes on its trade mark. The disputed logo was a toucan: Kellogg’s logo is a colourful cartoon toucan - promoting its Froot Loops breakfast cereal, while MAI’s logo is a realistic and common toucan shown in front of a Maya pyramid.

The battle received press coverage on one hand because MAI is a non-profit project that defends the Mayan culture and the biosphere in Guatemala and on the other, because Kellogg tried to play dirty by placing in the game ‘Adventure series’ that had a Mayan setting a villain character of colour who was an evil witchdoctor who cackles and steals (MAI’s toucan).

Even though Kellogg immediately took the game off of its website there were no signs of what was going to happen to the MAI’s logo – was it an infringement?

Last week, the toucans became friends!
Kris Charles, Kellogg's vice president for global communications announced "After conversations with MAI to better understand how they intend to use this design, we worked with them to identify an approach to revise their trademark application that will enable them to continue using their logo for their not-for-profit fundraising efforts”.

The toucans become more than friends
MAI reported that "Kellogg is making a USD$100,000 contribution to help launch one of the MAI’s priority projects to improve the lives of the Maya people in a region rich in cultural heritage but lacking in access to education and economic opportunities."

I do love happy endings.

Mexico: IP office decided a 'kinky' case

Patricia Covarrubia November 22, 2011 No comments:

Susana Zabaleta, a Mexican singer and actress, and whose talent has being recognised this year by ‘The Cervantes Festival’ for her 25-year career, has been fined by the Mexican Institute of Industrial Property (IMPI) with payment of 600 thousand Mexican pesos (approx US$44,000) for the use of the name ‘Kinky’ in her shows – called ‘kinky retorcido’ (Twisted Kinky)

The action was brought by a Monterrey band called ‘Kinky’. In 2004 the band registered the word 'kinky' as a trade mark. Because of this, the band began a legal process at the IMPI against the singer, arguing that the public is confused about their presentations with the shows she appeared with their name. On Monday 14th the IMPI brought a statement in favour of the band, serving her with a fine.

Zabaleta informed that she will not change the title of her show. She strongly defended her right to freedom of expression and also asserted that the use of the word ‘kinky’ in her show is an adjective, used for the title of her work –not a trade mark use or identifying the name of an artist.

Amicable practice

In IP as well as in any other area of law we can resolve matters in an amicable manner. However, Zabaleta reported that she was made aware of the action when she was sued! She did not understand how she could be sued for a ‘word’. She tried to contact the band to settle this matter but her calls were never answered. She explained that she called her show with a forgotten adjective dating back from the XVIII century: meaning twisted and referring to people who have sex in different ways. She mentioned that she was not even aware that there was a band called kinky.

Making the matter less amicable
It is also mentioned that the band and owners of the trade mark ‘kinky’ are analyzing to fill in a civil action for damages caused by misuse of their name.

There is several issues that need to be look at: how strong this word is as a trade mark –yes I know, some of you believe that there is not such a thing as a weak or strong trade mark; and also note that the word is not used in a trade mark sense; and finally the issue of confusion – for instance, if someone invites you to the show called ‘twisted black eyed peas’, would you be confuse as to believe that you are going to see the actual band ‘black eyed peas’? I think that it pretty much depends on how the show was advertised: for example, and I just guessing in here, I presume that the billboards and newspapers or flies did not say just ‘twisted kinky’, it should have also said ‘by… Susana Zabaleta’.

Any kinky thoughts on this case?
Different newspaper and blogs reported the case: check here, here and here.

Google top question: to remove or not to remove?

Patricia Covarrubia November 01, 2011 No comments:

Google has published its Transparency Report. In it, Google explains the following: often we receive “requests from government agencies and courts around the world to remove content from our services and hand over user data.” The removal of material usually refers to allegations of defamation; violation of local laws prohibiting hate speech or pornography; ads that violated Google’s AdWords policies; copyright infringement and so forth.

Who has made the most requests to remove content?

During the first half of 2011 Brazil has come No 1. There were 224 applications made to Goggle to remove content from their various websites (we have covered some of these cases here and here). From these applications Google eliminated the content in 67% of the cases. Next in the list is Germany followed by United States. As a curiosity I kept looking some other countries and I noticed that Argentina requested content removal 21 times and the percentage of removal requests fully or partially complied with was 100% [certainly they will receive the IPtango award if there was such a thing – however we need to bear in mind that they are the masters of tango after all]

Who has requested the most data about users?
This time the fisrt place was given to United States with 5950 requests and a response rate of 93%. Yet, Brazil was the most active country in Latin America requesting such data: 703 applications were made and 87 % of this data requests was fully or partially complied with.

Kellogg’s toucan is not a wren – the battle of logos

Patricia Covarrubia September 07, 2011 No comments:

Back in July this year, Maya Archaeology Initiative (MAI) received a letter from Kellogg’s lawyers asserting that MAI was using a logo (toucan) which infringes on its trade mark, a character called Sam – a colourful toucan. Therefore, the letter asked [did they ask? The majority of this letter are more of a ‘demand, don’t you think?’] MIA to stop using the logo that infringes its character, games and other promotional goods/services.

The signs and the goods/services:
Kelloggs’ logo: Toucan Sam is a cartoon character Kellogg introduced in 1963 that identifies its Froot Loops breakfast cereal. The toucan's beak is multicolored reflecting the multiple hues of the "O's" in the cereal.

MAI’s logo: toucan is based upon a realistic toucan endemic to Mesoamerica. The toucan in its logo is a more realistic bird, shown in front of a Maya pyramid. MAI is a non-profit project run by the World Free Press Institute (WFPI) that oversees the defence of the Mayan culture and the biosphere in Guatemala. The image appears on T-shirts, refrigerator magnets, coffee mugs and baseball hats given as premiums to the group's donors.

Playing dirty?
MAI was browsing the Kellogg’s web page went it found out that in the game ‘Adventure series’ the kids were playing in a Mayan setting and the only character of colour was the villain, an evil witchdoctor who cackles and steals.

Clay Haswell, chairman and co-founder of WFPI noted that "Suddenly, [this fight] became a little bit more important to us than protecting our trade mark". Explaining this comment he said he was sensitive to what he feels is a misrepresentation of Mayan culture through stereotypes. After this encounter, Kellogg responded promptly and took the game off of its website.

The battle continue...
For more information see here, here and here.

I just remember this passage: "The world is grown so bad, that wrens make prey where eagles dare not perch." (Shakespeare's Richard III).

IPRs infringement and compensation damages: are they hand in hand?

Patricia Covarrubia September 06, 2011 No comments:

The world well-known Konica Minolta - manufacturer of photocopies machines, filed a lawsuit for damages against Ativa. The defendant was importing and selling Minolta photocopies machines acquired from third parties, which were rebuilt - replacing defective parts. The reconstruction of the equipment, however, would be illegal because it was not authorized by the original company. Because of this, Minolta accused Ativa of product counterfeiting and unfair competition. The Trial Court held that there was an illegal practice.

While Ativa appealed before the Tribunal de Justiça do Amazonas (TJAM) the case became quite puzzling since the court denied compensation for lost profits and damages because the extent of damage - even if they exist, was not proved.

Both Ativa and Minolta appealed to the court. The first argued that there was not counterfeit, because the products were purchased from an authorized dealer, and that the original company cannot prevent the free movement of products on the market (Article 132, section III, Law 9.279/96 (the Industrial Property Law)). On the other hand, Minolta argued that the damage suffered was recognized by the state court.

At the Superior Tribunal de Justiça (STJ) the rapporteur of the case, Minister Luis Felipe Solomon explains that “ industrial property protection is a fundamental right guaranteed in the Constitution”, and it was proven that Ativa violated this fundamental right (an IPR infringement). This is so, because Ativa imported used and reconditioned photocopiers and sold them using the Minolta trade mark, without control or warranty of the original trade mark owner.

The doctrine calls it trade mark dilution by obfuscation. Dilution is an abuse to the integrity of a distinctive sign (in this case, Minolta trade mark), which diminish the power of sale of that mark. One type of dilution - committed in this case - is obfuscation: loss of distinctive strength of a trade mark. According to the minister this happens when a sign is used to identify products from various sources. He continues to explain that if one can recondition products without submitting to the control and standards adopted by the trade mark holder it would caused confusion to consumers because they do expect certain standard of quality and reliability which is associated to the sign. [I believe we all agree with that, but was not the retailer authorised?]. Yet to show injury is no easy task, since damage is not always revealed in profits, "What is common sense is that to realise that the trade mark owner would have even greater profits if the infringement did not occur."

Finally the minister claimed that the state court has recognized the damage by “indicating some illegal conduct committed by the defendant” which makes clear “the obligation to indemnify." In other words, although there is no exact measurement of the damage, compensation can be upheld if the illegal practice has been recognized.

Source STJ.
Process No REsp 1207952.

Descriptive use of another's mark is okay, rules Argentine court

Jeremy February 06, 2011 No comments:

Last August, in Expobicentenario SA v Arte Gráfico Editorial Argentino SA (Case 3201/10), the Argentine Court of Appeals denied injunctive relief to prohibit use of the phrase 'Argentina 200 años' ("Argentina 200 years") by the defendant. Expobicentenario had earlier secured trade mark registration of the word mark ARGENTINA 200 AÑOS, for goods and services in Classes 16, 35 and 41 of the Nice Classification. Media giant Arte Gráfico Editorial Argentino subsequently published a supplement of its Clarín newspaper to commemorate the 200th anniversary of Argentine independence using the expression 'Clarín Bicentenario 1810-2010', as well as 'Argentina 200 años'.

Refusing the injunction the Court of Appeals held that, according to the law, “use of a third party’s mark in a non-typical manner is not necessarily illegal”. Here, the phrase 'Argentina 200 años' was not used as a trade mark, but in a descriptive way. The presumption that freedom of expression should be limited when a phrase contains a trade mark must be rejected when the mark is not used in a distinctive way. Such use does not fall within the scope of protection of the trade mark.

Source: "Injunction denied as trademark used in descriptive manner", by Jorge Otamendi (G Breuer, Buenos Aires), World Trademark Review, 31 January 2011

The LG trade mark and contested priority

Jeremy February 17, 2010 No comments:

The 35th Federal Court, Rio de Janeiro, ruled recently in an action brought by Brazilian company LG Informática Ltda against LG Electrics Investment Ltd and its Brazilian subsidiary (both part of South Korea's LG Electronics Group). The dispute related to the right to use the talismanic initials LG.

According to the court, LG Informática’s earlier commercial name rights gave it priority over the trade mark LG in the field of computers. Reaching this decision, the court (i) cancelled two registrations for the LG mark held by LG Electrics Investment for computer equipment in Class 9, (ii) ordered the National Institute of Industrial Property to reject five pending applications in Class 9 and one in Class 38 for LG, in respect of goods and services related to computer hardware and software and (iii) ruled that the defendants could not register the mark LG in relation to computer software or hardware in Brazil.

Since LG Informática’s priority was limited to the field of computers, the court made no order in respect of LG Electrics Investment's registrations and applications for scientific, medical, dental and veterinary equipment and cellular telephone devices in Class 9.

A second, unrelated court action between the same parties, this time for registrations and applications for the trade mark LG for goods and services in Class 9 in fields unrelated to computers, the same court rejected all LG Informática’s claims, including an application for a general order prohibiting the defendants from using the mark LG in Brazil.

Both rulings are said to be subject to appeal.

Source: INTA Bulletin, vol.65, no.3.

Puma pounces on pipe mark infringer

Jeremy June 15, 2009 No comments:

In Puma AG Rudolf Dassler Sport v Cueros del Norte SRL (Case 14414/2003, March 27 2009), a decision of the Federal Civil and Commercial Court of Appeals of Buenos Aires, Cueros del Norte SRL was orded to stop using the plaintiff's 'inverted pipe' design for sports shoes.

Puma, the proprietor in Argentina of a figurative trade mark consisting of an inverted pipe for goods in Class 25 (sports shoes), sued Cueros for trade mark and design infringement, seeking both damages and injunctive relief: Cueros's design had an additional stripe that ran from the broader portion of the pipe to the back of the shoe. The trial court dismissed the action on the basis that the designs at issue were different. Puma appealed.

The Court of Appeals considered that Cueros had copied the inverted pipe design, since the similarity of its design to that of Puma could not have occurred by chance. The trade mark had been infringed too. The court observed that sports shoe manufacturers invest large amounts of money in promoting their brands and that some device marks have become well known worldwide: these included Puma's inverted pipe. The court added that well-known marks should enjoy broad protection.

Taking all the circumstances into account, the court awarded Puma damages of Ps30,000 (approximately US$8,000). While Puma wanted the shoes destroyed, the court decided that the parties should consider the possibility of donating the shoes to a charitable organisation: the goods should be destroyed only if the parties failed to reach agreement.

Source: note for World Trademark Review by Fernando Noetinger, Noetinger & Armando, Buenos Aires.