London cabs cannot be registered as a trademark

The Court in The United Kingdom ruled an interesting decision in the Case The London Taxi Corporation Ltd (t / a The London Taxi Company) v Frazer-Nash Research Ltd & amp; Another.

It concerns a request for invalidation of the following European trademark on absolute grounds, lack of distinctiveness.

The court held that the mark is indistinctive as reproduced vision of car widely used for taxi services in England, especially in London.

Furthermore, the court held that the mark is not eligible for registration because consists of a shape which gives substantial value to the goods.

More information can be found here.

Source: Marques Class 46.

The “Normal One” trademark and Liverpool FC

Liverpool FC appointed Jürgen Klopp to a coach last year. Through one of his first conference he identified himself as a “Normal One” in contrast with the Jose Mourinho’s nickname “The Special One”.

In view of the fact that this nickname could become a distinctive sign generating profit for the club, Liverpool FC file several applications for trademarks:

– THE NORMAL ONE – in US, Date of the application 10.19.2015;

– THE NORMAL ONE – in Switzerland, Date of the application 10/22/2015;

– THE NORMAL ONE – European trademark, Date of the application 10.19.2015;

– THE NORMAL ONE – in Norway, Date of the application 10/22/2015;

– THE NORMAL ONE – in Canada, Date of the application 10/21/2015;

However, two individuals have tried to register the following trademarks:

– THE NORMAL ONE – in Germany, Date of the application 11.30.2015;

– THE NORMAL ONE – European trademark, Date of the application 10.13.2015;

(Source TM View)

There is no information that these individuals are connected with the club or the coach. It will be interesting how Liverpool will overcome the prior trademark applications. The law gives different options in cases like this. For instance one premise for opposition here is based on previous commercial use which in the Liverpool case will be difficult for proving especially in some of the classes defined in the applications.

Triple bonus but not at all -European court decision

The European Court ruled in Case T-318/15 – Zitro IP Sàrl v. OHIM. It concerns an attempt for registration of the following European trademark:

for Classes:

Class 9: ‘equipment for information processing and computers; computer programs; computer hardware and software, in particular for bingo parlors, casinos; games software; interactive game programs “;

Class 28: “Games and toys; automatic games in pre-payments; automatic games other than those adapted for use with television receivers; prepayment devices (games); machinery recreational rooms games, including gambling halls and paris; Etc”

Class 41: ‘Entertainment services; online game services; organization of competitions; organization of lotteries; providing amusement facilities; gaming services; information services for entertainment and recreation, including electronic tables providing information, news, tips and strategies for computer games, computer and video; casino services; provision of entertainment facilities; rental of recreational machines and paris; Amusement park services. “

OHIM refused to register this mark based on Article 7 (1) b) and c) CTMR. The sign is descriptive and non-distinctive for the specified goods and services because indicates that consumers have an opportunity to obtain a triple bonus.

The graphic representation of the mark is not enough to create the necessary level of distinctiveness.

This decision is very important in the case of filing a trademark application. Generally speaking it is possible non-distinctive signs to be registered as a figurative marks but only in case that  this marks have elements that create the necessary distinctiveness.

Source: Marques Class 46.

TR case and strategy for registration of trademarks

OHIM Board of Appeal ruled in Case R2309/2014-4, which concerns an attempt for registration of the following European trademark:

for Class 25: Sportswear; cycling shoes; socks, gloves, shirts, pants, jackets, casual functional jackets, jerseys, pants cycling, vests, shirts, jackets, casual functional jackets, scarves, belts, money, hats, sweatshirts; clothing, footwear, headgear ‘.

Against this mark was filed an opposition based on the following mark:

for Class 3 “Cosmetics, Perfumery”, “Handbags for women” in Class 18 and “outerwear for women ‘in Class 25.

OHIM rejected the opposition because of the lack of visual similarity, which is crucial in relation to such kind of goods – clothing, where visual impact is leading for consumers.

The Board of Appeal confirmed this decision in its entire and stated:

The contested figurative mark consists of a complex lining pattern which resembles the device of a shield or a coat of arms. This pattern consists of an outer line broadened at the upper part. Within this outer line, on a white background, an element is depicted which resembles a black slightly stylised capital letter ‘R’ and which, exactly in the middle, is crossed by a thick vertical black line. The latter is connected to the upper part of the outer line and running down almost to the bottom, but not entirely, having a diverging bottom end. Only after very careful consideration this latter part may be perceived as part of a capital letter ‘T’, forming an integrated part of the outer line of the shield device. The contested mark is dominated by its very specific graphic representation which determines its distinctive character. The earlier figurative mark consists of a taut and simple lining pattern. Within this pattern one may perceive the capital letter ‘T’ followed by a black line formed by a half-oval in the upper part and a straight diagonal line in the lower part, the letter ‘R’ with an incomplete horizontal line, or the letter combination ‘TR’ in which the letter ‘R’ lacks its vertical line. Also the earlier mark is dominated by its very specific graphic representation which determines its distinctive character. The overall impression of the two marks is completely different. This conclusion will not change in the event the letters ‘T’ or ‘R’ or a combination of both will be perceived within the conflicting marks“…”The mere fact that the marks are possibly developed from the abstract concept of the letters ‘T’ or ‘R’ or a combination of both is in itself not a ground to establish any relevant visual similarity between the marks (25/06/2015, T-662/13, M (fig.) / dm, EU:T:2015:434, § 46)“

This case is interesting in terms of the strategy for registration of trademarks, which must take into account the nature of the goods and services in the process of filing of applications. This is crucial in future conflicts with other marks because it determines the scope of potential protection.

Source: Marques Class 46.

Trade dress protection in Brazil

The court in Brazil ruled in an interesting case on the protection of product trade dress. According to the local legislation trade dress is:

“Trade dress is the combination of characteristics, which may include, among others, a color or color scheme, shape, packaging, product configuration, signs , phrases , layout, styling and size of letters, graphics, drawings , emblems, coats , textures and embellishments or ornaments generally able to identify particular product and differentiate it from the others”

The particular case concerns similar trade dress of fitness equipment. In light of the decision copycat of the trade dress is unfair competition in the country and is prohibited.

More information can be found here.

Source: IP Tango.

 

FC Barcelona lost a lawcase concerning EU trademark

The European court ruled in Case T-615/14 concerning an attempt of F.C. Barcelona to register the following Community trademark for classes 16, 25, 41:

OHIM refused the registration of the aforementioned trademark based on absolute grounds, the sign in question was not liable to draw consumers’ attention to the commercial origin of the goods and services covered by the application.

The Court confirmed that none of the characteristics of the sign at issue contains any striking feature which is liable to attract the attention of consumers. In fact, the mark sought will rather tend to be perceived by consumers merely as a shape and will not enable them to distinguish the proprietor’s goods or services from those of other undertakings.

The Football Club didn’t succeed to show acquired second distinctiveness through commercial use.

More information here.

 

 

WIPO Magazine – Issue 6

WIPO published issue 6 of the WIPO Magazine. The following is included:

• WIPO Re:Search: WIPO’s global health initiative
• Time for a single global copyright framework for libraries and archives
• Spurring innovation in Africa: an interview with the President of Mauritius
• Innovation and economic growth: the bottom line
• Supporting entrepreneurship and innovation in Australia
• Skoda’s perspective on IP
• Coca-Cola: thinking outside the bottle
• India’s IP ecosystem 2.0