Trade Marks - revocation

Question 1

Sigla v OHIM

Answer 1

TM is not just indication of origin, conveys other messages concerning particular qualities or characteristics of goods/services such as images and feelings, for example luxury, lifestyle, exclusivity, adventure, youth. 1 or more functions of TM must be affected for infringement to be found.

Question 2

GM v Yplon

Answer 2

Notions of reputation and link. Article 5(2) of the directive is interpreted to mean that to be protected as non-similar products or services a registered TM must be known by a significant part of the public concerned by the products or services which it covers.

Question 3

Pago

Answer 3

Knowledge of TM in 1 MS might be enough

Question 4

L’Oreal v Bellure

Answer 4

B sold perfumes similar to those sold by L’Oreal, they clearly were not L’Oreal’s goods, but were marketed in a similar fashion. Was there infringement? Article 5(2) is not limited to likelihood of confusion, but likelihood of comparison is relevant. Proper understanding of unfair advantage - if later sign would benefit from power of attraction of the earlier sign, its reputation and its prestige due to similarity.

Question 5

Pfahnl Backmittel

Answer 5

Duty of TM owner to prevent genericide - opinion of AG

Question 6

Elizabeth Emanuel

Answer 6

Chain of companies using EE name/TM. Goodwill assigned each time. Company in question no longer had relationship with EE herself. EE opposed registration of the TM, was the use of the TM deceiving the public? No, in particular not where the business and goodwill had been assigned. Many businesses no longer relate to the founder.