Why SPRITE has problems with JallaXXXXXX brand in Norway?

pexels-photo-1028637.jpegTom Ekeberg (Zacco) published an interesting story for Lexology regarding a trademark dispute between Coca Cola and the Norwegian beverage producer OM, which tried to use the trademark JALLASPRITE. Coca Cola complained about such use and as a result, OM replaced its mark with JallaXXXXXX.

However, even with that outcome, Coca Cola initiated a lawsuit claiming that with XXXXXX part of the mark OM was trying to take advantages of SPRITE trademark well-known status amongst the consumers. The reason for this is the fact that according to the US company most of the consumers will understand that XXXXX is a replacement of SPRITE bearing in mind the dispute between the companies.

According to the Court’s decision, when it comes to JALLASPRITE there is no need for a temporary injunction due to the fact that OM took all necessary steps to discontinue the use of the sign at hand.

With regard to JallaXXXXXX, however, the court supports the Coca Cola’s position because OM did their best to communicate amongst Norwegian consumers that XXXXXX is a replacement of SPRITE as a consequence of the US company’s legal proceeding against them. In that way, OM tried to take unfair marketing advantages of the situation. This creates a clear connection between SPRITE and JallaXXXXXX as brands.

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How online stores to communicate with their customers – the Amazon case?

ecommerce-3021581_960_720The Advocate General of the European Court G. PITRUZZELLA has given an opinion on case  C‑649/17 Bundesverband der Verbraucherzentralen und Verbraucherverbände, Verbraucherzentrale Bundesverband e. V. v Amazon EU Sàrl., which concerns the following:

The Bundesverband alleges that Amazon, an online sales platform, has failed to fulfil, in a clear and comprehensible manner, its obligations regarding the provision of information to consumers and has thereby infringed the German legislation implementing Directive 2011/83.

In particular, the applicant in the main proceedings submits that Amazon does not, prior to the conclusion of (online) distance sales, inform customers of a fax number; it also requires customers to answer a series of questions, including questions concerning their identity, before displaying the telephone number of its general helpline.

The applicant in the main proceedings alleges that Amazon is thus infringing the statutory consumer protection rules in force in Germany which, in implementation of Directive 2011/83, require traders to indicate, in a clear and comprehensible manner, their geographical address and telephone number and, where appropriate, their fax number and email address, so as to enable consumers to contact them quickly and efficiently.

Amazon does offer an automated call-back facility and an online chat service, but these are not, according to the applicant in the main proceedings, sufficient to discharge its legal obligations.

Having brought proceedings before the Landgericht Köln (Regional Court, Cologne, Germany), which rejected its application on 13 October 2015, the Bundesverband brought an appeal before the Oberlandesgericht Köln (Higher Regional Court, Cologne, Germany).

By judgment of 8 July 2016, that court dismissed the appeal and upheld the judgment at first instance.

Finally, the Bundesverband brought an appeal on a point of law before the Bundesgerichtshof (Federal Court of Justice).

The Bundesgerichtshof (Federal Court of Justice), being in doubt as to the consistency with EU law of legislation such as the German legislation at issue, which requires traders to give a telephone number in every case, rather than only where available, made the reference for a preliminary ruling to the Court of Justice.

The Bundesgerichtshof (Federal Court of Justice) decided to ask the Court about the proper interpretation of the expression ‘where available’, used in Article 6(1)(c), whether the list of means of communication set out in that provision is exhaustive or not, and about the scope of the obligation of transparency incumbent on traders.

It was in that context that the Bundesgerichtshof (Federal Court of Justice) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  May the Member States enact a provision which — like the provision in point 2 of the first sentence of Article 246a(1)(1) of the EGBGB — obliges traders when entering into distance contracts to give consumers their telephone number prior to acceptance of the contract not only where they have one available but in every case?

(2)  Does the expression “gegebenenfalls” (meaning “where available”) used in [the German language-version of] Article 6(1)(c) of Directive [2011/83] mean that traders must, if they decide to enter into distance contracts, provide information solely about the means of communication that are already actually available within their business, and that they are therefore not required to set up a new telephone or fax connection or email account?

(3)  If the second question is answered in the affirmative:

Does the expression “gegebenenfalls” (meaning “where available”) used in [the German language-version of] Article 6(1)(c) of Directive [2011/83] refer solely to the means of communication that are already available in the business and are actually used by the trader for communication with consumers when entering into distance contracts, or does it also refer to means of communication that are available in the business but have hitherto been used by the trader exclusively for other purposes, such as to communicate with other traders or authorities?

(4)  Is the list of means of communication (telephone, fax and email) set out in Article 6(1)(c) of Directive [2011/83] exhaustive, or may traders also use other means of communication not mentioned in that list, such as online chat services or call-back facilities, provided that they ensure rapid contact and efficient communication?

(5) Is it relevant to fulfilment of the obligation of transparency under Article 6(1) of Directive [2011/83] — in accordance with which traders must inform consumers in a clear and comprehensible manner of the means of communication referred to in Article 6(1)(c) of the directive — that that information is supplied quickly and efficiently?’

The Advocate’s position:

(1) Given its function of full harmonisation and in light of its literal, systematic and teleological interpretation, Directive 2011/83/EU of the European Parliament and of the Council of 25 October 2011 on consumer rights, amending Council Directive 93/13/EEC and Directive 1999/44/EC of the European Parliament and of the Council and repealing Council Directive 85/577/EEC and Directive 97/7/EC of the European Parliament and of the Council, precludes national legislation which obliges traders, when entering into distance contracts, to give consumers their telephone number prior to acceptance of the contract not only where they have such a number but in all cases.

(2) The expression ‘gegebenenfalls’ used in the German-language version of Article 6(1)(c) of Directive 2011/83 must be interpreted, literally, systematically and teleologically, as not imposing on traders any obligation, if they decide to enter into distance contracts, to set up a new telephone or fax connection or email account.

(3) The expression ‘gegebenenfalls’ used in the German-language version of Article 6(1)(c) of Directive 2011/83 must be interpreted, literally, systematically and teleologically, in the sense that only those means of communication which a trader has decided to employ in dealings with consumers when concluding distance contracts are ‘available’ within the undertaking.

(4) The list of means of communication set out in Article 6(1)(c) of Directive 2011/83 (i.e. telephone, fax and email) is not exhaustive and traders may also use other means of communication not mentioned in that list, such as online chat services or call-back facilities, provided that, whatever means of communication are employed, they actually offer consumers a choice of what means to use and ensure rapid contact and efficient communication, and provided that the information regarding those means of communication is provided in a clear and comprehensible manner.

(5)  Fulfilment of the obligation of transparency under Article 6(1) of Directive 2011/83 requires that consumers should be able to access the information regarding the means of communication which traders make available to them in a simple, efficient and relatively rapid manner.

The Black and white trademark color dominance in Sweden is over

sunnana-harbour-2914389_960_720.jpgHans Eriksson published an intriguing article for IPKat discussing the issue on color assessment of trademarks in Sweden.

Until that moment, the Swedish practice in that regard was to accept that trademarks in black and white covers all color combinations for the purpose of trademark assessment in case of disputes.

Not any more. The Swedish Patent Office and the Swedish court change that position implementing the European court decision in case C-252/12 Specsavers, according to which the registration of a trademark in black and white cannot be granted a scope of protection that automatically covers all possible color combinations.

Sweden alongside Denmark and Norway was one of the few countries in the EU which has continuously used this broader approach in color assessment of trademarks.

This change of the local practice will reflect on all future applicant who has to bear in mind that when they build their trademarks strategies for the territory of Sweden.

The full article can be found here.

Monster Energy lost a trademark dispute against a pair of legs

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The well-known energy drink producer Monster Energy lost an interesting opposition against the following UK trademark application in class 32 (beers, ales, stouts; low-alcohol beers; non-alcoholic and de-alcoholized cider, perry and beers; syrups and preparations for making any of these aforesaid; excluding energy drinks):

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Against this mark, Monster invoked several earlier European trademarks in class 32 (Non-alcoholic beverages; beer):

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The UKIPO dismissed the opposition internally. The reason for this was the lack of possibility for consumer confusion. According to the Office, both signs are visually and conceptually different. While in the case of the earlier mark there is a pair of legs, the earlier signs represent a scratch created by an animal. Although both can be viewed as the letter M, the differences between them are enough in order to escape consumer confusion even though the goods are similar due to their nature.

The full text of the decision can be found here.

Source: WIPR.

Adidas won a trademark opposition in Japan

great-torii-of-miyajima-1425480_960_720.jpgAdidas won an opposition against the following application for a figurative trademark, applied for Class 25 by a Chinese company:

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Against this sign, Addidas opposed its following earlier national trademark in Japan in Class 25 too:

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According to the German producer, both signs are confusingly similar because their visual elements create a similar impression in consumers. What’s more, Adidas’s mark has a reputation which increases, even more, the risk of confusion.

The Opposition Board coalesce with Adidas concluding that there is a possibility for consumer confusion because both signs are visually similar for identical goods and all of that is supported by the earlier trademark’s reputation.

Source:  Masaki Mikami, MARKS IP LAW FIRM (JAPAN) 

Brief IP news

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1. No likelihood of confusion deemed between “an apple” and the letter „J“. For more information here.

2. Calculating copyright infringement damages using hypothetical license fees. For more information here.

3. Evaluation of EU legislation on design protection. For more information here.

EU trademarks in case of a hard Brexit – clarifications

brexit-4011711_960_720.jpgThe UK Patent Office published some clarifications what would happen with all European trademarks in case of a hard Brexit without a deal with the EU.

In that case, The UK will recognize all registered EU trademarks and will transform them into national trademarks. They will be indicated with UK009 in front of their EU numbers.

There will be no cost for the relevant owners and as little administrative burden as possible. However, the Patent Office will not issue trademark certifications for them. Information for these marks will be available in the UK trademark database.

When it comes to EU applications for trademarks, their owners will have up to 9 months to file identical applications in The UK. In that scenario, they will use the same priority date from their EU applications.

The full text can be found here.