Examination of languages other than the official national

language

Višnja KuzmanovićSeptember, 2012

Agenda: • Languages of reference - Office practice

• Absolute grounds for refusal (AG) - examples

• Relative grounds (RG) - examples

Languages of reference • No provisions in the national legislation or in the TM

Guidelines as regards the languages of reference

• Office practice is equally applied for the AG and RG procedures:

The assessment: the consumer perspective in relation to the applied goods and

services:

AG for refusals: lack of minimum distinctiveness, descriptiveness, customary in the

everyday practice, deceptive, contrary to the public policy…

RG : assessment of the degree of distinctiveness

Languages of reference

Official national language: Croatian

Foreign languages of reference: English

Regional languages of reference: Languages of former Republics of Yugoslavia Federation

Minority languages of reference (the most frequently represented): Italian (official language in the Istrian

region) Serbian

Languages of reference

Considered to be understood:

English, Italian by a large number of people

French, German, Russian, Latin exceptionally for the commonly known words

Bosnian, Serbian by a high majority of population

even if written in Cyrillic

AG refusals

English TOPGEAR - high quality equipment

IR no. : 950 963 (non distinctive)Cl. 12, 28:Cars and toys

TIMBER ART - work of art in wood IR no. : 955 845 (descriptive) Cl. 19 : wood products, floors covering

ACCELERATING SUCCESS - speeding-up success

No.: Z20112173(laudatory)Cl. 16, 35, 36: Real-estate marketing and consulting services and related marketing publications

AG refusals Italian - guarantee bank

IR no. : 971 886 (descriptive) Cl. 36 :Bank and insurance services

“vettura” = vehicles

vehicles renting

No. : Z20050799

(non distinctive)Cl. 39 :Car renting Acquired distinctiveness: YES

Serbian LEPOTA i ZDRAVLJE - beauty and healthIR no.: 959849

(non distinctive) Cl. 16, 35, 41: Magazines, marketing, education, seminars

AG refusalsFor the commonly known words:

French BEIGE - yellowish brown colour IR no: 450131 A (descriptive)Cl. 3:Cosmetics

German - European Travel Insurance

(non-distinctive) IR. No.: 936317 Cl. 36, 39, 43 Travel insurance, travel agency services, hotel reservations

Latin HERBA DALMATICA - Dalmatian herbs (non-distinctive) No.: Z20070150 Cl. 32, 33 Non-alcoholic and alcoholic beverages

RG examples English:

Earlier TM: Application:Z20101255 Z20101777

LATE NIGHT SHOPPING

SHOPPING NIGHT / LATE NIGHT SHOPPING semantically similar.Opposition upheld.

Russian:

Earlier TM Application Z0740338 IR 858 764

Adjectives MOSKOVSKAYA (f.) Latin Alphabet / MOSKOVSKII (m.) in Cyrillic Alphabet semantically similar (with the identical meaning “from Moscou”)

Opposition rejected – g&s not similar

RG examples

English – French

Earlier TM Application Z20021187 Z20110704

ACCESSORIZE

ACCESSORIZE / ACCESSOIRES

English verb “accessorize” =. to furnish with accessories >

an object or device not essential in itself but adding to the beauty of something else

semantically similar to French noun “accessoires”.

Opposition rejected.

HVALA !Croatian word for

THANK YOU!