Crocs’ footwear with trademark problems in Sweden

In 2018 Crocs Inc. filed the following three-dimensional trademark in Sweden for class 25 – footwear:

Initially the Patent Office refused to register this mark on absolute grounds. Crocs submitted evidence for acquired distinctiveness which resulted in a successful registration.

The Swedish discount store ÖoB was selling similar products between 2014 and 2019.

Because of this Crocs Inc. initiated a lawsuit proceeding for trademark infringement. As a counter attack ÖoB asked for invalidation claiming that the Crocs’ trademark was not distinctive, it consists exclusively of a shape, which resulted from the nature of the goods themselves and a shape necessary to obtain a technical result.

The Swedish Patent and Market Court dismissed the claim for trademark infringement and invalidated the Crocs’ mark. The arguments for this decision was that the mark represents a footwear with the following characteristics 1) holes on the top 2) holes on each side 3) the heel strap 4) flat rivets, and 5) wide toe-area. Every of these characteristic could be attributed to the basic functions and properties of this type of footwear. It therefore concluded that the shape of the mark was the result from the nature of the goods themselves and the shape of goods was also necessary to obtain a technical result because the holes provides a better ventilation and enabled water to drain out.

The decision was appealed.

The Swedish Patent and Market Court of Appeal disagreed with the Court of first instance. According to the court the shape of such a footwear can be designed in different ways not only in that particular. The size, holes and overall design can be accomplished in many different ways. Because of this it cannot be assumed that the shape is a result from the nature of the goods.

The court considered that ventilation and draining a water out, in the particular case, can not be views as a technical function.

Nevertheless, the Court invalidated the Croc’s mark based on a lack of distinctive character. According to the Court, the evidence for acquired secondary meaning provided by Crocs mainly show significant sales figures but there is no information on how exactly consumers perceived the shape of the product and whether this perception is related to a sign of trade origin.

The Court considered the market survey from 2008 provided by the company as insufficient. The respondents in this survey associated the footwear with “Foppatoffeln” a name that is related to the hockey player Peter Forsberg who suffered from a heel injury, prompting him to wear the Crocs footwear on TV and in other public contexts. Only 7% of them related the product shape with Crocs as manufacturer while 46% suggested that the footwear could originate by any manufacturer. The survey didn’t include an option for an answer “do not know”, which ruined its credibility up to a point.

The advertisement campaigns with this footwear included the Crocs name and the depiction of crocodile too. The Court considered this as another evidence that consumers perceived the shape as a product characteristic not as a trademark.

Source: IPKat.

Decathlon lost a dispute with a Greek company before the EU Court

The General Court of the European Union has ruled in a dispute between Decathlon  and the Greek company Athlon Custom Sportswear.

Athlon filed an application in 2016 for the following EU trademark in classes 25 (clothing and hats) and 28 (sporting articles and equipment):

Against this application an opposition was filed by Decathlon based on an earlier EU trademark DECATHLON for the same classes of goods.

The EUIPO upheld the opposition in its entirety considering both signs as confusingly similar.

The decision was appealed before the Board of Appeal and the trademark application was limited only to class 25 (athletic clothes and hats). The Board annulled the previous decision stating that there was no enough similarity between the marks.

Decathlon appealed but the General Court upheld the Board’s position.

According to the Court, although there is some phonetic and conceptual similarity this is not enough the marks to be considered confusingly similar.

The reason is that the common element for both signs ATHLON means “contest” in Greek, which can be associated with a sport competition. What’s more Athlon is a commonly used suffix in English in relation to athletic events. On the other hand, Decathlon means a competition in which athletes compete in various sporting events.

Because of that both signs have a low distinctive character. From that point of view, the assessment has to focus on the entire impression created by the signs, which in this case cannot lead to a conclusion for similarity. A low distinctive character cannot be monopolize in the same why as a distinctive sign because everyone has to have the right to use it in the relevant area.

The evidence produced by Decathlon for acquired secondary meaning of their trademark was dismissed by the Court as insufficient.

This case is a good example about the widespread attempt by many companies to use low distinctive elements as trademarks. Although this could sound great from marketing point of view because the brand communicates a particular meaning to the consumers, from legal point of view such sign are either difficult to be protected or at least they have limited scope of protection that does not allow competitors to be restricted to use similar marks too.

Source: IPKat.

The US Congress creates a new path for copyright enforcement

The United States Congress created a Copyright Claims Board through The Consolidated Appropriations Act signed by Donald Trump in December last year.

The Copyright Claims Board will be a part of the US Copyright Office and will deal with copyright infringement claims, claims seeking a declaration of no infringement, certain claims arising under the notice and takedown provisions of the DMCA, and related defenses and counterclaims.

The Board will be a substitute for Court proceedings in such cases, and will be able to award damages up to 30 000 dollars and up to 5000 dollars for Attorneys’ fees.

The Copyright Claims Board will have three “Copyright Claims Officers” who will be appointed by the Librarian of Congress.

The procedure before the Board will be completely voluntary which means that the parties against whom an action is brought will have 60 days to “opt out”. In such cases the copyright holder has to bring the case to federal court.

The Board’s decision can be appealed before the US Copyright Office and in some limited cases before the court.

According to the supporters of this new option, it will allow small copyright owners to defend their rights without the need to go to court where the procedure is more expensive and time-consuming.

Some critics, however, consider this proceeding as not completely effective because it denies certain due process rights and the opt-out option can prevent the dispute to be initiated at all.

Source: Mintz – Seth A. Davidson for Lexology.

Mercedes won a trademark dispute in Japan

Daimler AG filed an application for the following trademark in class 12 – parts for vehicles for locomotion by land, air, water or rail:

The Japan Patent Office refuse to register this mark based on a similarity with an earlier trademark for STAR- PARTS in class 35 – retail services or wholesale services for automobiles, parts, and accessories.

The German company appealed and as a result won the dispute. According to the Board of Appeal both marks were not similar. The reason for this was the fact that STARPARTS is not a dominant element in the later trademark. The leading element was the words Mercedes-Benz, a well-know brand for German luxury cars with a long history.

Although this seems like a real success for Daimler AG now, what will be the result in the future taking into account that the earlier mark STAR-PARTS is registered for spare parts for vehicles among others. This is a scenario, for example, where the earlier mark is not so famous but can become such one as a result of the Daimler use of their own combined mark in the market.

Source: Masaki MIKAMI – Marks IP Law Firm

Pans, red dots and Tefal struggles in the UK

Throughout the Christmas and holiday season it is typical for most people to cook and eat more than usual. With that regard, probably it will be of interest to you the news for the red dot problems of Tefal’s pans in the UK.

In 2018 Tefal applied for the following figurative trademark in the UK for class 21 – frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, and woks:

The UKIPO issued a refusal against this application based on absolute grounds section 3(1)(b) TMA – lack of distinctive character. According to the Office it was not clear whether consumers would perceive this red dot as a trademark sign of itself or just as a decorative or functional element.

Tefal submitted evidence for acquired distinctiveness through use in the UK. The UKIPO dismissed the evidence as insufficient.

Although there were significant sales and advertisement related to this type of pans, the evidence didn’t show in any way that the red dot was functioning as a stand alone sign of trade origin. On the contrary, some of the advertisement related this dot to its heating indication function.

More interestingly in the provided consumers survey, some of the respondents identified the red dot as a ‘heat spot’ or ‘when the pan is hot’.

Based on this the Office confirmed its position that the applied for sign is not distinctive and it is functional, that is to say it cannot serve as a source of trade origin.

This case is valuable as a case law because it shows quite clearly how difficult is to register some figurative trademarks sometimes. In such scenarios one possible solution can be an early implemented strategy by the trademark owner to indicate in every advertisement and other communication that the relevant sign is a mark. In that way, hopefully, consumers will start to perceive it as such in the long run.

Source: IPKat.