Wembley v Wembley Stadium: 0-1

The Wembley semi-professional  football club is on the way to lose its flowing European trademark registered for Classes 3, 6, 9, 12, 14, 16, 18, 20, 21, 25, 28, 32, 33, 35, 41, 43:

Although this mark received successful registration in 2012, four years later a procedure for cancellation was initiated by the Wembley Stadium based on a bunch of earlier trademarks Wembley Stadium and Wembley.

EUIPO issued a decision for cancellation one month ago. The reasons behind this are that the marks share identical or similar goods and the signs themselves are similar taking into account the fact that the dominant and distinctive element is Wembley. On top of that Wembley Stadium gave various pieces of evidence that its trademarks have acquired well-known status among consumers for the last 90 years.

This case is interesting because it clearly shows that not only the registration is vital for the future use of one mark but the initial search and clearing actions which goal is to secure the trademark use against such negative consequences.

Source: Lexology.

Estonia ratifies the UPC Agreement

Estonia ratifies the UPC Agreement on 1st August 2017. In that way, Estonia becomes the 13th country ratified the agreement along with Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Luxembourg, Malta, Netherlands, Portugal, and Sweden.

To be entered into force, the UPC Agreement have to be ratified by Germany and the UK too.

In the case of Germany, the ratification was suspended by the German constitutional court whereas in the UK the procedure was delayed by the Brexit and all uncertainties that followed.

More information can be found here.

Source: Lexology.

PostModern or just Post – a trademark decision by the General Court

The General Court of the EU ruled in Case T-13/15; Deutsche Post AG v EUIPO. The case at hand concerns an attempt for registration of an EU trademark PostModern for Class 39 – for various transport and postal services.

Against this mark was filed an opposition based on earlier German trademarks POST and Deutsche Post for Class 39 too.

The EUIPO opposition division initially upheld the opposition but after that, the Board of ѝppeal annulled this decision.  The reasons behind this reversal were that the signs have a low level of similarity. Moreover, they share the Post part which has a low distinctiveness for the services at hand.

The later mark PostModern has a different conceptional meaning which is an additional argument for the lack of similarity between the signs especially in the case of Deutsche post which has completely different meaning.

Taking into account the visual and phonetic differences between the marks, The Board of Appeal dismissed the opposition in its entirety.

Source: Alicantenews.

‘First Tuesday’ can’t be a trademark in the US

The US Court of Appeals for the Federal Circuit has ruled in a lawsuit concerning a refusal by the USPTO to register as a trademark the following expression – ‘First Tuesday’ for “lottery cards; scratch cards for playing lottery games” and for “lottery services”.

The reason behind this refusal was that according to the Office this mark was descriptive for the respected goods and services – the mark tells consumers when the lottery game will take place – every first Tuesday of the month.

The Applicant argued that this conclusion was incorrect because the mark requires some imagination in order to be connected with its goods and services.

The Patent Office and the Court disagreed, accepting that this phrase is completely descriptive due to the fact that consumers will understand it as a direct message for the time when such lottery games take place.

Source: WIPR. 

Usain Bolt’s trademarks

The legendary Jamaican sprinter Usain Bolt has put an end of its professional career recently but this doesn’t mean that the merchandising business regarding his persona has ended too.

As many other well-known sportsmen such as Michael Jorden, for example, Bolt will continue to use its name for different merchandising and endorsement campaigns.

One of the reasons behind this conclusion is not only the Bolt’s celebrity status but the existence of many registered trademarks for his name. A quick check in the TM View database shows the following results:

Will.i.am lost a lawsuit regarding a trademark in US

The US Court of Appeals for the Federal Circuit dismissed the appeal by the well-known singer Will.i.am against a USPTO decision for refusal of a trademark “I AM” applied for Classes 3, 9 and 14.

The background of this case is that the Will.i.am’s company Symbolic is the owner of “Will.i.am” trademarks for classes 9 and 41 as well as trademarks “I am” for class 25.

In the case at hand, Symbolic tried to register a word trademark “I AM”for classes 3, 9 and 14.

The USPTO refused the application on the ground of earlier identical marks for similar goods in classes 3, 9 and 14.

Due to this refusal, Symbolic made some specifications in the trademark application stating that all included goods “associated with William Adams, professionally known as ‘will.i.am’”.

The USPTO considered this as insufficient because there was no evidence which to suggest that the singer is well-known under the name “I am” with regard to the relevant goods.

The court upheld this decision as correct not finding stable evidence that William Adams is known as “I am” among the consumers. What’s more, the court considers such specification as insufficient, which cannot overcome the possibility for confusion between the respected trademarks.

 

Thailand joined the Madrid Protocol

WIPO reports about the accession of Thailand to the Madrid Protocol for international registration of trademarks. The protocol will come into force for the country on 07.11.2017, the date after which Thailand can be designated in applications for international trademarks.

With the accession of Thailand, the number of member states of the Madrid Protocol has become 115.

More information here.