Evidences in case of EU trademark registration proceeding – an EU Court decision

22205197-grunge-rubber-stamp-with-text-too-late-vector-illustration-stock-vectorThe General court ruled in case T‑476/15 where Société des produits Nestlé SA tried to register a trademark FITNESS for the following goods:

Class 29: ‘Milk, cream, butter, cheese, yoghurts and other milk-based food preparations, substitutes for dairy products, eggs, jellies, fruit, vegetables, protein preparations for human consumption’;
Class 30: ‘Cereals and cereal preparations; ready-to-eat cereals; breakfast cereals; foodstuffs based on rice or flour’;
Class 32: ‘Still water, aerated or carbonated water, spring water, mineral water, flavoured water, fruit drinks, fruit juices, nectars, lemonades, sodas and other non-alcoholic drinks, syrups and other preparations for making syrups and other preparations for making beverages’.

This mark had been refused by OHIM. After that the applicant submited additional evidences but the Board of Appeal refused them as belated.

According to the court, the Board of Appeal erred with this decision because Article 76 of EUTMR, read in conjunction with Rule 37(b)(iv) of the IR, does not imply that evidence submitted for the first time before the Boards must be regarded as belated by the BOA in invalidity proceedings based on an absolute ground for refusal.

Source: Marques Class 46.

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Providing evidences for well-known status in Switzerland

havana-club-puerto-rican-rum-feat-1500x793An interesting case from Switzerland concerning evidences for well-known status of a trademark.

Havana Club Holding filed an opposition against application for a mark CANA CLUB for alcohol beverages.

The IPO dismissed the opposition on the ground of the fact that Havana Club had weak distinctive character and in this light there weren’t possibilities for confusion with the later mark.

The decision was appealed based on the provided evidences for well-known status of the aforementioned mark.

According to the Federal Court, however, these evidences, which in the case were an online survey, were incorrect. One of the reasons about this was the fact that the survey didn’t include consumers above 55 age for example. Another downsides were that it concerned only rum but not alcohol beverage as a whole and whats more the questions themselves indicated to the consumer that the sign was a trademark. Moreover 47% from the people said that they recognized the  Havana Club’s logo but it was unclear what exactly this logo was.

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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:

t-335-15-1

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.