Brief IP news

briefs_1131.Motion Trademarks as an Element of Brand Promotion. For more information here.

2.New York Fashion Company Sued Over Use of Photograph on Instagram. For more information here.

3.Intangible assets: Key to sustainable value creation in tech companies. For more information here.

4. A new Bulgarian invention: Herbs cultivation through mobile application. For more information here.

Depicted body-builder cannot be a trademark in EU

The General Court ruled in case T‑335/15,  Universal Protein Supplements Corp. v  European Union Intellectual Property Office (EUIPO).

This case concerns an attempt of Universal Protein to register the following EU trademark:


The sign is applied for the following classes:

– Class 5: ‘Nutritional supplements’;

– Class 25: ‘Clothing; footwear’;

– Class 35: ‘On-line retail store services featuring nutritional supplements; health and diet-related products; clothing and footwear’.

EUIPO refused to register this mark based on Article 7(1)(c) Regulation 2007/2009.

According to the Office, the sign is not distinctive and it is descriptive for the above mention goods and services. The depicted mark conveys message which is related to   ‘body-building’ or a ‘body-builder’ so the consumers cannot perceive it as a source of origin but only as a descriptive sign. Moreover such signs need to stay free for use by all market participants.

The decision was appealed. According to the applicant there are many ways in which such sign can be depicted which is the practice itself. So there are no obstacles this concrete sign to serve as a mark.

The General court upheld the EUIPO’s decision. According to the court the alleged aesthetic character of the stylised image does not require any mental effort on behalf of the relevant public. The meaning of the sign at issue (which refers to the concept of ‘body-builder’ or ‘body-building’) is immediately clear. So the sign lacked distinctive character and cannot be a trademark.

Source: IP KAT.

WIPO Magazine 05/2016

coverWIPO published the 5-th issue of WIPO Magazine where you can find the following:

– Francis Gurry on the challenges for multilateralism in the field of IP – 2
– Exchanging books across borders – as easy as ABC – 9
– Digitizing indigenous music and supporting rights management- 12
– Winning with global innovation:Global Innovation Index 2016 – 21
– Adding fuel to Colombia’s innovation ecosystem – 26
– The role of intellectual property in the battle against malaria – 32
– iQIYI on China’s booming online film market – 36
– Branding the fragrances of the Orient: an interview with Amouage – 42
– Brands of Moldova: a cut above – 47

New individual fees for international trademarks for Mexico


WIPO reports about new individual fees for international trademarks with designation of Mexico. The new fees are as follow:

Application or Subsequent Designation

–  for each class of goods or services – 149 Swiss francs;


–  for each class of goods or services – 160 Swiss francs;

More information here.


Unitary character of EU trademark in case of claim for prohibition

indexThe European court ruled in case C‑223/15 Combit Software GmbH  v  Commit Business Solutions Ltd, which concerns the following:

 combit Software, a company governed by German law, is the proprietor of the German and EU word marks, combit, for goods and services in the computer industry. The company is engaged in, amongst other things, the development and marketing of software.

Commit Business Solutions, a company governed by Israeli law, sells software bearing the word sign ‘Commit’ in a number of countries through its website At the time of the facts in issue in the main proceedings, a German-language version of the company’s offers for sale was available and its software could be ordered for delivery to Germany.

As the proprietor of the combit trade marks, combit Software brought proceedings, pursuant to Article 97(2) of Regulation No 207/2009, against Commit Business Solutions before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany). Principally, it sought, on the basis of its EU trade mark, an order that Commit Business Solutions refrain from using, in the European Union, the word sign ‘Commit’ for the software it was marketing. In the alternative, it requested, in reliance on its German trade mark, an order that Commit Business Solutions refrain from using that word sign in Germany.

The Landgericht Düsseldorf (Regional Court, Düsseldorf) dismissed combit Software’s principal claim but upheld its alternative claim.

Taking the view that the Landgericht Düsseldorf (Regional Court, Düsseldorf) should have ordered Commit Business Solutions to refrain from using the word sign ‘Commit’ throughout the European Union, combit Software brought an appeal before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany).

That court considers that Commit Business Solutions’ use of the word sign ‘Commit’ gives rise, on the part of the average German-speaking consumer, to a likelihood of confusion with the trade mark combit.

It takes the view, however, that there is no likelihood of confusion on the part of the average English-speaking consumer. In its view, the latter can readily understand the conceptual difference between, on the one hand, the English verb ‘to commit’ and, on the other, the word ‘combit’, as ‘combit’ is made up of the letters ‘com’ for computer and ‘bit’ for ‘binary digit’. It considers that the phonetic similarity between ‘Commit’ and ‘combit’ is, from the perspective of the aforementioned English-speaking consumer, cancelled out by that conceptual difference.

The referring court concludes that there is a likelihood of confusion in the German-speaking Member States and that there is no such likelihood in the English-speaking Member States.

It is uncertain about the way in which the principle, laid down in Article 1(2) of Regulation No 207/2009, of the unitary character of the EU trade mark should be applied in such a situation, in particular so far as concerns the assessment of the likelihood of confusion and the prohibition order referred to in Article 102(1) of that regulation.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘In the assessment of the likelihood of confusion of an EU word mark, what is the significance of a situation in which, from the perspective of the average consumer in some Member States, the phonetic similarity of the EU trade mark with another sign claimed to infringe that trade mark is cancelled out by a conceptual difference, whereas from the perspective of the average consumer in other Member States it is not?

(a) In assessing the likelihood of confusion, is the perspective of some Member States, of the other Member States, or that of a fictive EU average consumer decisive?

(b) If there is a likelihood of confusion only in some Member States, has the EU trade mark been infringed across the European Union, or must the Member States be differentiated individually?’

The Court’s decision:

Article 1(2), Article 9(1)(b) and Article 102(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as meaning that, where an EU trade mark court finds that the use of a sign creates a likelihood of confusion with an EU trade mark in one part of the European Union whilst not creating such a likelihood in another part thereof, that court must conclude that there is an infringement of the exclusive right conferred by that trade mark and issue an order prohibiting the use in question for the entire area of the European Union with the exception of the part in respect of which there has been found to be no likelihood of confusion.

Sound trademarks in EU -not in every case

The General court ruled in Case T‑408/15 Globo Comunicação e Participações S/A v EUIPO. This case concerns the following:

Globo Comunicação e Participações S/A filed an application for registration of an EU trade mark for the following sound mark:

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The goods and services in respect of which registration was sought are:

–  Class 9: ‘Magnetic data carriers; recording discs; compact discs, DVDs and other digital recording media; computer software; applications for tablets and smartphones’;

–  Class 16: ‘Paper, cardboard (raw, semi-worked or for stationery); printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging, namely sacks, bags, film and sheets; printers’ type; printing blocks, publications; books; magazines’;

–  Class 38: ‘Television broadcasting services’;

–  Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; entertainment services in the form of television programmes; production of television entertainment features[; e]ntertainment services, namely television news, educational, sports and comedy programmes, television soaps, television variety shows; production of television programmes; production of online entertainment’.

By decision of 19 September 2014, EUIPO rejected that application since it was devoid of any distinctive character.

The decision was appealed.

The Fifth Board of Appeal dismissed the appeal as regards the alleged distinctive character of the mark applied for and referred back to the examiner the examination of the question raised by the applicant as to whether that mark had acquired distinctive character through use under Article 7(3) of that regulation in relation to the television broadcasting services in Class 38 and entertainment services in Class 41.

The Board of Appeal took the view, in paragraph 24 of the contested decision, that the mark applied for was a very simple sound motif, that is to say, in essence, a banal and commonplace ringing sound which would generally go unnoticed and would not be remembered by the target consumer.

Following the contested decision, the applicant made a further restriction on 22 July 2015 by withdrawing, first, the ‘[m]agnetic data carriers ; recording discs; compact discs’ in Class 9 and, secondly, all of the goods in Class 16.

According to the Court’s decision it is necessary for such sounds to have a certain resonance which enables the consumer to perceive them as trademarks and not as functional elements or as indicators without any inherent characteristics.

Consequently, a sound sign which did not have the capacity to mean more than the mere banal combination of notes of which it consists would not enable the target consumer to perceive it as functioning to identify the goods and services at issue, since it would be reduced to a straightforward ‘mirror effect’, in the sense that, as EUIPO correctly stated at the hearing, it would refer only to itself and to nothing else. It would not therefore be capable of engendering in the target consumer a certain form of attention which would enable him to perceive that sign’s necessary identifying function.

It is important to point out, in that regard, that a sound sign which is characterised by excessive simplicity and is no more than the simple repetition of two identical notes is not, as such, capable of conveying a message that can be remembered by consumers, with the result that consumers will not regard it as a trade mark, unless it has acquired distinctive character through use (see, to that effect, judgment of 12 September 2007, Cain Cellars v OHIM (Representation of a pentagon), T‑304/05, not published, EU:T:2007:271, paragraph 22).

Accordingly, the mark applied for will be perceived by the relevant public only as a mere function of the goods and services covered and not as an indication of their commercial origin. As the Board of Appeal correctly pointed out in paragraph 24 of the contested decision, the mark applied for will generally go unnoticed and will not be remembered by the relevant consumer.

The mark applied for therefore amounts to the ringing of an alarm or telephone regardless of the context in which it is used and regardless of the medium used and that ringing sound does not have any inherent characteristic which is separate from the repetition of the note of which it consists and would serve to identify anything other than that ringing of an alarm or telephone.

The applicant cited that this mark has a well-known status in Brazil but the Court dismissed that in the light of the fact the EU trademark system is independent and the relevant distinctiveness should be proved on EU territory.

To sum up, the conclusion is that in case of sound marks they should have either sufficient inherent distinctiveness or acquired one on the territory where protection is seeking so as application to be successful.