UGG boots – a descriptive term or a trademark in the US?

Dennis Crouch, the author of the IP blog Patentlyo reports about an interesting trademark dispute in the US.

The case concerns the term UGG which is used in Australia for describing sheepskin boots. The terms derives from a quote by the surfer Shane Stedman who said that these boots were ugly = ugg.

Different Australian companies use this term for such boots, which are well-known, and from that perspective the term is generic in the country.

The problem arose several years ago when one of those Australian companies imported UGG boots in the US.

A lawsuit for trademark infringement was initiated by Deckers Outdoor Corp based on already registered US trademark for UGG for the same class of goods.

The case was successful for the US company and the Australian importer appealed before the US Supreme Court referring the following questions:

1. Whether a term that is generic in the English-speaking foreign country from which it originated is ineligible for trademark protection in the United States.

2. Whether and, if so, how the “primary significance to the relevant public” standard in 15 U.S.C. § 1064(3) for determining whether a registered trademark has “become” generic applies where a term originated as generic before registration.

It is interesting what will be the Court conclusion on this matter. Nevertheless the case is indicative for the fact that one and the same term can be a trademark and a descriptive term in different countries. This can create risks for both the trademark owners and the users of the term depending where it is used.

Whether decompiling software code is illegal?

The European Court has ruled in case  C‑13/20 Top System SA v Белгия which focuses our attention on the question to what extent decompiling software code can be legal.

Top System is a company governed by Belgian law that develops computer programs and provides IT services.

SELOR is the public body, which is responsible in Belgium, for selecting and orienting the future personnel of the authorities’ various public services. Following SELOR’s integration into the service public fPolicy and Support Federal Public Service, the Belgian State replaced that body as the defendant in the main proceedings.

Since 1990, Top System has collaborated with SELOR, on whose behalf it provides IT development and maintenance services.

In order to fulfil its tasks, SELOR has gradually put in place IT tools to enable applications to be submitted and processed online.

At the request of SELOR, Top System developed several applications which contain (i) functionalities originating from its framework software called ‘Top System Framework’ (‘the TSF’) and (ii) functionalities designed to meet SELOR’s specific needs.

SELOR has a user license for the applications developed by Top System.

On 6 February 2008, SELOR and Top System concluded an agreement for the installation and configuration of a new development environment as well as the integration of the sources of SELOR’s applications into, and their migration to, that new environment.

Between June and October 2008, there was an exchange of emails between SELOR and Top System about operating problems affecting certain applications using the TSF.

Having failed to reach agreement with SELOR on the resolution of those problems, on 6 July 2009, Top System brought an action against SELOR and the Belgian State before the Commercial Court, Brussels, Belgium seeking, inter alia, a declaration that SELOR had decompiled the TSF, in breach of Top System’s exclusive rights in that software. Top System also claimed that SELOR and the Belgian State should be ordered to pay it damages for the decompilation of and copying of the source codes from that software, together with compensatory interest, from the estimated date of that decompilation, that is to say, from 18 December 2008 at the latest.

On 26 November 2009, the case was referred to the Court of First Instance, Brussels, Belgium which, by judgment of 19 March 2013, in essence, dismissed Top System’s application.

Top System brought an appeal against that judgment before the referring court, the Court of Appeal, Brussels, Belgium.

Before that court, Top System submits that SELOR unlawfully decompiled the TSF. According to the applicant, under Articles 6 and 7 of the LPO, decompilation can be carried out only with the authorisation of the author, the successor in title of that author, or for interoperability purposes. On the other hand, decompilation is not permitted for the purpose of correcting errors affecting the functioning of the program concerned.

SELOR acknowledges that it decompiled part of the TSF in order to disable a defective function. However, it submits, inter alia, that, under Article 6(1) of the LPO, it was entitled to carry out that decompilation in order to correct certain design errors affecting the TSF, which made it impossible to use that software in accordance with its intended purpose. SELOR also relies on its right, under Article 6(3) of the LPO, to observe, study or test the functioning of the program concerned in order to ascertain the underlying ideas and principles of the relevant TSF functionalities in order to be able to prevent the blockages caused by those errors.

The referring court takes the view that, in order to determine whether SELOR was entitled to carry out that decompilation on the basis of Article 6(1) of the LPO, it is for that court to ascertain whether the decompilation of all or part of a computer program comes within the acts referred to in Article 5(a) and (b) of the LPO.

In those circumstances, the Court of Appeal, Brussels decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Is Article 5(1) of [Directive 91/250] to be interpreted as permitting the lawful purchaser of a computer program to decompile all or part of that program where such decompilation is necessary to enable that person to correct errors affecting the operation of the program, including where the correction consists in disabling a function that is affecting the proper operation of the application of which the program forms a part?

(2) In the event that that question is answered in the affirmative, must the conditions referred to in Article 6 of the directive, or any other conditions, also be satisfied?’

The Court decision is:

1. Article 5(1) of Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs must be interpreted as meaning that the lawful purchaser of a computer program is entitled to decompile all or part of that program in order to correct errors affecting its operation, including where the correction consists in disabling a function that is affecting the proper operation of the application of which that program forms a part.

2.  Article 5(1) of Directive 91/250 must be interpreted as meaning that the lawful purchaser of a computer program who wishes to decompile that program in order to correct errors affecting the operation thereof is not required to satisfy the requirements laid down in Article 6 of that directive. However, that purchaser is entitled to carry out such a decompilation only to the extent necessary to effect that correction and in compliance, where appropriate, with the conditions laid down in the contract with the holder of the copyright in that program.

Hugo Boss lost a trademark dispute against Rakuten in Japan

Masaki Mikami informs us for yet another interesting trademark dispute from Japan.

In the case at hand, the Japanese e-trade company Rakuten filed an application for word trademark BOSS in classes 35 and 42 – providing computer programs on e-commerce, software as a service (SaaS), and other related services.

BOSS in this case is abbreviation from the service ‘Back Office Support System’ offered by Rakuten.

Against this application an opposition was filed by the German company HUGO BOSS Trademark Management GmbH & Co KG, based on an earlier mark HUGO BOSS for which an acquired reputation was claimed.

The German company filed evidence for its reputation including Deloitte’s annual list of the world’s largest luxury companies where HUGO BOSS is No.19 in 2015.

The Patent Office agreed that Hugo Boss has a reputation in Japan but disagreed that this is true for the part BOSS alone taking into account that the earlier mark is used as HUGO BOSS.

However, the Office concluded that even in case both signs are considered similar the respected goods and services are not. The processing services in classes 35 and 42 are not directly associated with clothes, perfumes, jewelry etc., which Hugo Boss is famous for.

From that point of view the Office dismissed the opposition finding highly unlikely consumers to be confused or deceived from the existence of both marks in the market.

Mario Balotelli won a trademark dispute for “MB45” in Italy

The well-known Italian footballer Mario Balotelli won a trademark dispute in Italy.

In 2013, the Italian individual Mr. Gabriele Casagrande registered a trademark “MB45” for class 25 – clothing, shoes, headgear. This mark was duplicated as a European mark and after that both were transferred to a Lithuanian company.

In 2015, finding about this mark, Mario Balotelli initiated a lawsuit asking for invalidation of the sign and the domain name “www.mb45.it”. The grounds for this were the fact that “MB45” is the Balotelli’s pseudonym. MB means Mario Balotelli and 45 is the number of the jersey that he uses. What’s more this sign was used on shoes produced and sold in collaboration with Puma in 2013.

Gabriele Casagrande disagreed with these accusations, stating that his mark “MB45” was inspired by the name of a tugboat of the Russian Navy Morsokoy Buksir with the same name.

The Court in Rome wasn’t impressed by this argument and invalidated the mark. According to the Court, the consumers in Italy, especially the football fans, are quite familiar with “MB45” as an indication related to Mario Balotelli. Additionally, the goods related to Gabriele Casagrande’s mark are typical and common products that famous people and sportsmen used their names or indications for.

The application for the later mark was made only a few days after Mario Balotelli, bearing “MB45”, was included in media materials. Because of this, the application for the mark was deemed as made in bad faith. The same conclusion was reach for the domain “www.mb45.it”.

Source: Martini Manna Law Firm – Margherita Stucchi for Lexology.

Nespresso’s capsule is no more a trademark in Switzerland

Nestle lost quite an important dispute in Switzerland regarding a figurative trademark for its famous Nespresso capsules.

Nestle registered a figurative trademark for its coffee capsule for the first time in Switzerland in 2000. After this an attempt for registration of equal EU trademark failed on absolute grounds.

Nevertheless the company succeeded to register this mark in Germany too.

Everything was fine until another Swiss company Ethical Coffee Company, started to offer biodegradable coffee capsules with a similar shape to this of Nespresso that fits to Nestle’s coffee machines.

Because of this Nestle attacked its competitors with trademark infringement lawsuits in Germany and Switzerland.

As a counter attack Ethical Coffee Company successfully canceled Nestle’s German mark, a decision upheld by the The Federal Patent Court in 2017. The ground for this cancelation was the fact that the form of the coffee capsule performs technical functions.

In Switzerland, the Court canceled the mark finding that Nestle failed to prove that the form is perceived as a source of trade origin.

The decision was appealed but the Supreme Court upheld it adding additional grounds for the cancelation. According to the Court, the mark has technical aspects. One of the reasons for this conclusion is the fact that Nestle’s competitors have to abide by this particular form in order their capsules to fit the coffee machines. These capsules has a specific form that is necessary in order the coffee machine to use it and to make a coffee successfully.

This case illustrate how difficult protection of figurative trademark can be especially when such trademarks are related to machines.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

The United Arab Emirates joins the Madrid Protocol

WIPO reports about one great news for every applicant of international trademarks. The United Arab Emirates joined the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

In that way, the Member Sates of the Madrid system become 125, while UAE is the third country, after Bahrain and Oman, from the Middle East that is member of this system.

The Protocol will come into force for the country on 28.12.2021. After this date applicants from around the world will be able to designate UAE in their applications for trademarks which will reduce the time and money necessary for registration of marks in this country.