Useful tips on how to appropriate somebody else’s mark by the 2015 Prague Municipal Court
When going through last year’s decisions of the Prague Municipal Court on judicial review of decisions of the Czech Industrial Property Office, I have come across several interesting conclusions, from which we may derive tips on ways how to achieve registration of marks incorporating somebody else’s trademark or a sign quite close to it. See for yourself if the doors to registration are not getting perhaps too open.
In a judgment issued in case of an opposition filed by KELLOG COMPANY against registration of the sign for goods and services in classes 29 and 30 based on its earlier word trademarks KRISPIES and CHOCO KRISPIES, RICE KRISPIES, RICE KRISPIES SQUARES, the court held that the chairman of the IPO had been right when it upheld the opposition. The court found that the word KRISPIES was a dominant element of the applied mark showing us that the mere adding of a (company) name, even if a very long one, may not be enough to make a difference (quite in line with the THOMSON LIFE judgment of the CJEU).
While adding your company name is not sufficient, you may think of adding a figurative device. Especially if your products are destined for children who cannot yet read, you may find it useful to read carefully at least parts of the judgment concerning an opposition filed by Kaufland against registration of the following mark for cereals and confectionery in class 30 based on its earlier trademark LUCKY RINGS registered for cereals. Referring among others to principles expressed in CJEU’s judgment in Shaker di L. Laudato & C. Sas (LIMONCHELO), the court gave quite significant weight to the presence of the animal device arguing that children (being a significant part of the relevant public in view of the court) may perceive such elements as stronger than word elements in English.
Although certain parts of the grounds of the two decisions may be described as somewhat controversial, the outcome in neither case is in my opinion surprising. Regrettably I cannot say the same about the third judgment, which concerns an opposition filed by the company IKO, Hungarian owner of the trademark COOL TV in classes 35, 38 and 41, against registration of the sign in classes 9, 16, 35, 38 and 41 filed by FTV Prima, one of two leading private TV broadcasters in the Czech Republic.
While in the first instance the IPO found likelihood of confusion and partly refused the application, the President of the IPO reversed the decision in the appeal and rejected the opposition finding that the relevance of the presence of the word COOL in the applied trademark had been exaggerated.
The Municipal Court, when reviewing the appellate decision, took the side of the Czech broadcaster finding among others that “the defendant was right to find that the applied sign consists, contrary to the word trademark, of graphic co-existence of the word element COOL and the preceding device, which is a registered trademark Prima known in the TV broadcasting sector” and that it is impossible “for the administrative authorities, when perceiving the impression created by the signs, to give priority solely to the element COOL and not to take into account the other, more distinctive element Prima, the distinctive capacity of which is stronger than of the element COOL as it is a well-known and massively used logo of Prima TV (…)”.
In an extreme contrast to the European practice, the court took into account the goodwill associated with (an element) of the mark applied for and allowed the applicant to appropriate the earlier mark (or more precisely its only distinctive part) by adding its famous house mark in its logo form.
As far as public sources tell us, this judgment was not further contested by a cassation action and is therefore final. Therefore it remains for the trademark owners to hope that it remains a single case of its kind and does not lay ground to a more stable practice, which, at least as I see it, would lead to a dangerous uncertainty.