WIPO informs about the ratification of the Locarno Agreement Establishing an International Classification for Industrial Designs by Iran. The Agreement will come into force for the country on 12.07.2018.
For more information here.
Month: May 2018
Adidas won a trademark case in Japan
Masaki MIKAMI informs about a trademark victory of Adidas in Japan. The case concerns the following registered trademark by a Japanese company for Class 25:
Adidas filed an opposition against this mark but unsuccessfully. Fore years later the company initiated an invalidation procedure, just before the five years period of acquiescence. Adidas based its move on the following earlier trademark:
This time, the Patent Office ruled that both signs are similar and the later mark had to be invalidated because:
- The Adidas’ mark is a mark with a strong reputation in Japan, proved since 1971;
- The mark hadn’t been changed significantly throughout this period of time;
- The later mark gives rise to the same visual impression in the consumer’s mind by sharing similar graphical representations.
Source: Marks IP.
Messi won an important lawsuit in the EU
The General Court of the European Union ruled in a trademark case which involves the well-known footballer Lionel Messi.
The case started back in 2011 when the footballer applied for a European trademark MESSI for sports clothes, shoes etc.
Against this application, an opposition was filed based on an earlier mark MASSI for the same Classes of goods, owned by a Spanish company.
The EUIPO upheld the opposition, which decision was appealed.
According to the Court, although there is a similarity between both signs which cover similar and identical goods, there is no serious possibility for consumer confusion due to the existing world reputation, publicity and celebrity status of Lionel Messi.
The Court considers that taking into account the sports goods which are covered in the footballer’s mark, most of the consumers will associate his mark with his name, and not with the earlier Spanish mark.
This case shows clearly how important is the reputation and publicity in regard to trademarks belonging to persons.
Source: WIPR.
Who can file oppositions against EU trademarks?
The Advocate General of the European Court BOT issued an opinion on the case C‑139/17 P QuaMa Quality Management GmbH v EUIPO. This case concerns the following:
The background to the present dispute is described in detail in the judgment under appeal, to which I would refer (5). The facts essential to and necessary for an understanding of this Opinion may be summarised as follows.
In its action before the General Court, the appellant put forward two pleas in law.
In support of its first plea, the appellant argued that the opposition should be rejected as it was submitted after the period laid down in Article 41(1) of Regulation No 207/2009 had expired. At the time the notice of opposition was filed, SMSC Europe GmbH, not the intervener, was registered as the proprietor of the earlier mark. According to the appellant, given that the intervener, by the date of expiry of the opposition period, had submitted a request for a change of name and address only and not an application for registration of a transfer, it was not, therefore, entitled to file a notice of opposition pursuant to Article 17(7) and Article 41(1) of Regulation No 207/2009. In addition, the appellant asserted that EUIPO could not reclassify the request for a change of name and address as an application for registration of a transfer, as shown by the Opposition Division’s initial rejection of the first application and the submission of a second application by the intervener.
The General Court rejected that plea.
The General Court recalled, in paragraphs 18 to 27 of the judgment under appeal, the principles on which opposition proceedings are based, as well as the conditions that must be met in order to submit an application for registration of a transfer. It concluded, in paragraph 29 of that judgment, by reference to Article 17(7) and Article 41(1) of Regulation No 207/2009, that successors in title who are not yet registered as proprietors but to whom the earlier mark has been transferred are entitled to file a notice of opposition, provided that EUIPO has received their application for registration of a transfer.
Taking the view that the intervener had indeed remedied the deficiencies in the application for transfer, submitted as a request for a change of name and address, and had submitted proof of its entitlement to file a notice of opposition within the period allowed by EUIPO, the General Court found, in paragraph 35 of the judgment under appeal, that the notice of opposition filed at the same time as the request for a change of name and address of the proprietor of the earlier mark had been submitted within the period prescribed in Article 41(1) of Regulation No 207/2009, in the light of the combined provisions of Article 17(7) of that regulation and Rule 31(1) and (6) of Regulation No 2868/95.
The General Court rejected the appellant’s argument that the request for a change of name and address should not have been reclassified as an application for registration of a transfer, taking the view, in paragraph 37 of the judgment under appeal, that EUIPO cannot attach importance only to the formal title of a request without taking its content into account. In that regard, the General Court, first of all observed, in paragraph 38 of the judgment under appeal, that it does not follow from any provision of Regulations No 207/2009 or No 2868/95 that the use of the correct form is an essential pre-condition for an application to be valid. Next, it stated, in paragraph 39 of the judgment under appeal, that it was clear from the intervener’s request for a change of name and address that the request related to a change of ownership of the earlier mark. Finally, the General Court considered, in paragraph 40 of the judgment under appeal, that the fact that the Opposition Division had registered the two applications under two different numbers had no bearing whatsoever on the finding that EUIPO was entitled to regard the request for a change of name and address, in the light of its clear content, as an application for registration of a transfer.
In the light of those findings, the General Court considered, in paragraph 41 of the judgment under appeal, that EUIPO had not erred in interpreting the request for a change of name and address as an application for registration of a transfer for the purpose of Article 17(7) of Regulation No 207/2009.
In paragraph 42 of the judgment under appeal, the General Court therefore held that the Board of Appeal had been fully entitled to find that Article 41(1) of Regulation No 207/2009 had not been infringed in the case in the main proceedings, as the intervener was entitled to file a notice of opposition on 9 April 2013 and had done so within the prescribed period.
In support of its second plea, the appellant argued that the Board of Appeal of EUIPO infringed Article 8(1)(b) of Regulation No 207/2009 by failing to carry out a proper assessment of the likelihood of confusion between the marks at issue.
The General Court rejected that plea after examining each of the appellant’s claims concerning the definition of the relevant public, the comparison of the signs in question and the assessment of the likelihood of confusion between the marks at issue.
The Advocate’s opinion:
Admittedly, the appellant specifies the points that, in its view, were distorted by the General Court, namely, the request for a change of name and address submitted by the intervener on 9 April 2013 and EUIPO’s request in its letter to the intervener of 15 April 2013. Nonetheless, the appellant has failed to establish that that evidence was distorted, as the arguments it raises are not, in my view, sufficient to show that the General Court manifestly exceeded the limits of a reasonable assessment, as required by the Court’s case-law.
As regards the appellant’s arguments relating to an alleged distortion of the request for a change of name and address submitted by the intervener on 9 April 2013, it is clear that the appellant is in fact seeking a re-examination of its arguments before the General Court. The appellant merely repeats the arguments it made before the General Court with a view to obtaining a fresh assessment of the facts, which, as indicated above, falls outside the Court’s jurisdiction.
As regards the appellant’s arguments relating to an alleged distortion of EUIPO’s letter to the intervener of 15 April 2013, the appellant, in fact, focuses its criticism on the manner in which the General Court assessed the content of that letter and suggests a different reading to that adopted by the General Court. It thereby provides its own assessment of the facts and evidence before the General Court, but fails to show, to my mind, that that court’s analysis is manifestly incorrect.
In my view, the second head of complaint must be rejected as unfounded.
The head of complaint is based on a misreading of paragraph 30 of the judgment under appeal. In that paragraph, the General Court merely noted the facts which, as shown by the use of the expression ‘it is not disputed’ at the beginning of that paragraph, were established between the parties and not disputed by either party. When it observed that ‘only sufficient proof of transfer, in accordance with Rule 31(5) of Regulation No 2868/95 and Point 3.5 of Chapter 1 in Section 3 of Part E of the EUIPO Guidelines, was lacking’, the General Court merely took note of the content of Rule 31(1) and (5) of Regulation No 2868/95 and the EUIPO Guidelines and in no way asserted that, by submitting the form headed ‘Recordal application’ (application for registration), the intervener had provided sufficient proof of transfer allegedly required by EUIPO. The question of whether the submission of such a form was sufficient proof of the intervener’s entitlement to file a notice of opposition, for the purposes of those provisions, was not raised or discussed before the General Court.
Even if that point were to have been raised expressly before the General Court, I observe that the appellant does not dispute the fact that the information listed in Rule 31(a) to (d) of Regulation No 2868/95, which must be contained in an application for transfer, was already apparent from the notice of opposition and the request for a change of name and address submitted on 9 April 2013, as observed by the General Court in paragraph 30 of the judgment under appeal. Although, in its arguments, the appellant refers, in addition, to ‘the taking of evidence’, I note that nor does the appellant dispute the General Court’s interpretation or application of Rule 31(1) and (5) of Regulation No 2868/95 and Point 3.5 of Chapter 1 in Section 3 of Part E of the EUIPO Guidelines, in particular Rule 31(5) of that regulation, which clearly states that the signing of the application for registration of a transfer by the registered proprietor of the earlier mark and by the successor in title constitutes sufficient proof of transfer for the purposes of Article 17 of Regulation No 207/2009. While the appellant thus attempts to explain the reasons for which the proof of transfer was, in its view, insufficient to demonstrate that the intervener was entitled to file a notice of opposition, it fails to identify any error of law that might vitiate the judgment under appeal.
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The Advocate General’s opinion on KitKat case
The Advocate General of the European Court issued an opinion regarding the following joined cases C‑84/17 P, C‑85/17 P и C‑95/17 P, Nestlé v Mondelez. These cases concern the following:
On 21 March 2002, Nestlé applied to EUIPO for registration of a three-dimensional mark for its ‘Kit Kat 4 fingers’ product, which consists of four trapezoidal bars aligned on a rectangular base:
Registration was sought in respect of goods in Class 30 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended. EUIPO raised an objection with regard to some of the goods in respect of which registration had been sought, namely: ‘chocolate, chocolate products, confectionery, candy’. Following that objection, the abovementioned sign was registered as an EU trade mark on 28 July 2006 in respect of goods in Class 30 corresponding to the following description: ‘Sweets; bakery products; pastries; biscuits; cakes; waffles’ (‘the trade mark at issue’).
On 23 March 2007, Cadbury Schweppes plc (subsequently Cadbury Holdings Ltd, now Mondelez) filed an application with EUIPO for a declaration of invalidity in respect of the registration on the basis, in particular, of Article 7(1)(b) of Regulation No 207/2009. On 11 January 2011, the Cancellation Division of EUIPO upheld that application and declared the trade mark at issue invalid.
On appeal by Nestlé, the Second Board of Appeal of EUIPO, by the decision at issue, annulled the decision of the Cancellation Division. The Second Board of Appeal considered, in particular, that although the trade mark at issue was, indeed, devoid of any inherent distinctive character in relation to the goods for which it had been registered, Nestlé had shown, in accordance with Article 7(3) of Regulation No 207/2009, that that trade mark, through the use which had been made of it, had acquired such a character in relation to those goods.
By application lodged at the General Court Registry on 19 February 2013, Mondelez brought an action seeking the annulment of the decision at issue. In support of its action, it raised three pleas in law. The General Court examined only the first plea in law, alleging infringement of Article 52(2) of Regulation No 207/2009, read in conjunction with Article 7(3) thereof, and divided into four parts.
In paragraphs 21 to 44 of the judgment under appeal, the General Court analysed and upheld the second part of Mondelez’s first plea in law. As can be seen from paragraphs 41 to 44 of the judgment under appeal, the General Court took the view that the Second Board of Appeal was wrong to consider that Nestlé had established use of the trade mark at issue in respect of bakery products, pastries, cakes and waffles. Consequently, the General Court analysed the other parts of Mondelez’s first plea in law only with regard to sweets and biscuits.
In paragraphs 45 to 64 of the judgment under appeal, the General Court analysed and rejected the first part of Mondelez’s first plea in law, concerning the lack of use of the trade mark at issue in the form in which it was registered.
In paragraphs 65 to 111 of the judgment under appeal, the General Court examined and rejected the third part of Mondelez’s first plea in law, concerning the lack of use of the trade mark at issue as an indicator of origin and the insufficient evidence provided in that respect. In this regard, on the one hand, in paragraph 94 of the judgment under appeal, the General Court noted that the evidence of genuine use of the trade mark at issue, submitted by Nestlé before EUIPO, constituted relevant evidence which, when assessed globally, was capable of establishing that, in the eyes of the relevant public, that trade mark was perceived as an indication of the commercial origin of the goods in question. On the other hand, in paragraph 107 of that judgment, the General Court indicated that the Second Board of Appeal ‘carried out an examination of whether the … trade mark [at issue] had acquired distinctive character by virtue of that mark and specifically substantiated its conclusions regarding that acquisition so far as Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the United Kingdom are concerned’.
Finally, in paragraphs 112 to 178 of the judgment under appeal, the General Court analysed the fourth part of Mondelez’s first plea in law. In paragraphs 142 and 143 of that judgment, it stated that the Second Board of Appeal had erred, in concluding, in essence, that, for the purposes of proving distinctive character acquired through use of a mark throughout the European Union, it was sufficient to show that a substantial proportion of the relevant public in the European Union, merging all the Member States and regions, perceived a mark as an indication of the commercial origin of the goods designated by that mark and that it was not necessary to prove the distinctive character of a mark acquired through its use in all the Member States concerned.
Nevertheless, as can be seen from paragraphs 144 and 145 of the judgment under appeal, the General Court took the view that it was possible that, despite having erred in setting out the assessment criterion for the purposes of proving the distinctive character of a mark acquired through its use throughout the European Union, the Second Board of Appeal had applied that criterion correctly when examining the evidence submitted by Nestlé. The General Court therefore considered that it was necessary to examine the Second Board of Appeal’s assessment of that evidence.
Following an examination of the evidence relating to Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland and Sweden, as well as the United Kingdom, the General Court concluded, in paragraphs 146, 148, 151, 153, 155, 158, 159, 164 and 167 respectively, that the Second Board of Appeal was correct to consider that it had been established that the trade mark at issue had acquired a distinctive character through use in all of those Member States.
However, in paragraph 173 of the judgment under appeal, the General Court noted that the Second Board of Appeal had not explicitly answered the question of whether it had been established that the trade mark at issue had acquired distinctive character in Belgium, Ireland, Greece and Portugal, nor had it included those Member States among those in which it took the view that such acquisition had been proven.
In paragraph 176 of that judgment, the General Court considered that the Second Board of Appeal had erred in concluding that the trade mark at issue had acquired distinctive character through use in the European Union, given that such acquisition had been proven for only a part, indeed a substantial part, of the territory of the European Union.
In paragraphs 177 to 179 of the judgment under appeal, the General Court held that the fourth part of Mondelez’s first plea in law must be upheld and that the decision at issue must be annulled in its entirety, since the Second Board of Appeal could not validly conclude its examination of the distinctive character of the trade mark at issue acquired through its use without coming to a conclusion regarding the perception of that mark by the relevant public in, inter alia, Belgium, Ireland, Greece and Portugal and without analysing the evidence adduced in respect of those Member States.
The Advocate’s opinion:
For the purposes of that extrapolation, although account must not be taken of the territories of the Member States as such, (23) the existence of the single market within the European Union does not imply the non-existence of national or regional markets. It is common for economic operators like Nestlé, when distributing their goods or services, to group together certain national markets for a number of reasons, such as their geographical proximity, the existence of historical links between them, or even a common language, customs or practices. In that sense, against that background and depending on the goods at issue, the evidence provided for certain national markets could, on the basis of what Mondelez called ‘market comparability’ at the hearing, be sufficient to cover other markets omitted from the evidence or for which quantitatively sufficient evidence has not been provided. For example, it might be that, for certain goods or services and on account of the comparability of the markets in question, the evidence provided for the Spanish market is also sufficient for the Portuguese market, or the evidence provided for the United Kingdom market is sufficient for the Irish market, and so on.
To provide quantitatively and geographically sufficient evidence of the acquisition of a distinctive character through use throughout the European Union, account must be taken, for each product or service, of this diversity within the European Union. In that sense, a trade mark cannot be an EU trade mark with a unitary character if the relevant public in part of the European Union does not perceive it as an indication of the commercial origin of the goods or services which it covers.
In this regard, it should be added that the regions or parts of the European Union in which the acquisition of distinctive character must be shown are not predetermined, but must be established, whenever an application for registration is filed, for the goods and services covered by the trade mark in question.
Contrary to what EUIPO argues, this does not mean that the absence of evidence in relation to Luxembourg alone would be sufficient to exclude the acquisition of distinctive character, when evidence has been provided for the other Member States. If, for the goods or services covered by the trade mark in question, Luxembourg is part of the same market as Belgium, France or Germany, and sufficient evidence has been provided for one such country which is part of the same market as Luxembourg, it would not be necessary to provide specific evidence for Luxembourg. That, in my opinion, is the meaning to be given to Article 7(2) and (3) of Regulation No 207/2009 and to paragraphs 60 to 63 of the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307).
Even though the General Court was, in principle, required to examine that question, Nestlé confirmed at the hearing that it had not included in the case file evidence seeking to establish that, with regard to the product covered by the trade mark at issue, the evidence provided for the Danish, German, Spanish, French, Italian, Netherlands, Austrian, Finnish, Swedish and United Kingdom markets also applied to the Belgian, Irish, Greek, Luxembourg and Portuguese markets or could act as a basis for extrapolating the acquisition, by the trade mark at issue, of distinctive character through use in those countries. In that sense, Nestlé had not established, in respect of the product concerned, the comparability of the Belgian, Irish, Greek, Luxembourg and Portuguese markets with some of the other national markets for which it had provided sufficient evidence.
In the absence of such evidence, the General Court had no option but to annul the decision of the Second Board of Appeal of EUIPO, which it did.
In view of the foregoing considerations, I propose that the Court dismiss the appeals brought by Nestlé and EUIPO.
INTELLECTUAL PROPERTY PLANET 