Trademarks, Brands, Patents, Designs, Made in Italy, Copyrights, Competition Law, Contracts and Enforcement

03 novembre 2009

A ‘panoramic’ view of descriptic character

Stefano Sandri

According to CFI , T- 339/07, 28 October 2009, the term « panorama » is descriptive of one of the main characteristic on the aquarium on the market (see as an example).

On particular the term « panorama » should describe the circular view or the free and extended visual area on the aquarium that it implies some self evident advantages on side of the observers (paragraph 35).

We may agree on that conclusion, even though it may rely to a certain second level of visual association, typical of the evocative/suggestive trade marks. In this respect the Court is very careful in pointing out that for the purpose of applying Article 7(1)(c) of Regulation it is necessary only to consider, on the basis of the relevant meaning of the word sign at issue, that from the viewpoint of the public addressed, there is a sufficiently direct and specific(and spontaneous) relationship between the sign and the goods for which registration is sought (paragraph 27). It is here the case? I fear that the analysis of the court should be a little more deeper when examining how the sign is actually perceived by the relevant public (paragraph 28). Since the likelihood of confusion includes also the likelihood of association, it makes still sense exclude from the registration the signs which can cause such an association?

I understand that in some case is not easy to decide whether the association occurs in suggestive/evocative signs. We could however adopt the criteria drawn from INTEL, as to say that there is likelihood of association, e.i the sign is not descriptive or affected by other grounds refusal whenever the consumers shall diverge in a conclusive way from their normal attitude in purchase behaviour taking in account the nature of the products/services.

I made this proposal, in a different legal contest, in Alicante at the occasion of the recent Judges symposium, raising apparently agreement on side of the EU Commission and General Advocates who were attending the meeting.

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