Copyright problems for Vodafone in the US

protected-267353_960_720.jpgVodafone failed to register its well-known trademark logo as a copyrighted work in the US Copyright Office.

The company was ascertaining that its logo is subject to copyright protection because it represents either a quotation mark or a balloon droplet in combination with geometrical shapes and colours.

The Office, however, disagreed, stating that widespread symbols and geometrical shapes cannot be registered as a copyrighted work due to a lack of originality.

According to the  Section 313.4(J) of the Compendium:

Familiar symbols and designs are not copyrightable and cannot be registered with the U.S. Copyright Office, either in two-dimensional or three-dimensional form. 37 C.F.R. § 202.1(a). Likewise, the Office cannot register a work consisting of a simple combination of a few familiar symbols or designs with minor linear or spatial variations, either in two-dimensional or three-dimensional form. Examples of familiar symbols and designs include, without limitation:
• Punctuation.
• Symbols typically found on a keyboard, such as asterisks, ampersands, and
the like.

While familiar symbols and designs cannot be registered by themselves, a work of authorship that incorporates one or more of these elements into a larger design may be registered if the work as a whole contains a sufficient amount of creative expression.

However, the mere fact that the symbol is combined with colours is not enough to create the necessary distinctiveness.

Source: Nedim Malovic, IPKat.

The power of biscuits on the EU stage

short-term-exposure-1600292_960_720.jpgThe EUIPO Board of Appeal ruled in the case R2378/2017-2 between Intercontinental Great Brands LLCи  and the Spanish company GALLEAS Gullón, S.A.

The case concerns an application for the following EU trademark applied by Gullón in class 30:

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Against this application an opposition was field based on the following earlier marks in class 30 too:

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According to the Opposition division, there is a possibility for consumer confusion regarding these marks because there is visual and conceptual similarity due to the shared image of sandwich biscuits. These particular biscuits have a reputation among consumer based on prolonging use throughout the years which was proved by a survey.

The Board of Appeal upheld the decision. Although there are differences between the word parts of the marks, this cannot overcome the similarities that the signs have supported by the reputation acquired by the biscuit images related to the earlier marks. This creates a real possibility for consumers to consider that there is a link between the later mark and the owner of the earlier marks.

ISPs have a right to be compensated in some cases when providing information for copyright infringers

law-1991004_960_720The Supreme Court of Canada ruled in the case Rogers Communications v Voltage Pictures, where the point at issue is whether the internet service providers (ISPs) have to be compensated for their costs when they give information for potential infringers.

In the case at hand, movies owned by the US company Voltage were been illegally used by Rogers’s individual clients.

The Canadian internet provider agreed to disclose the required information for these persons but only against financial compensation. The US company disagreed.

According to the the Supreme Court’s decision in such cases, the ISP has right to receive a compensation for its reasonable costs but only in a case when the information is not required by the law.

For example, connecting the IP address of a customer to his real identity and submitting this information with the copyright holder is not covered by the law requirements.

Source: WIPR.

Cuban Patent Office joins TMClass

cuba-2188179_960_720EUIPO reports about the accession of the Cuban Patent Office to the synchronized database for classes of goods and services under the Nice Classification. In that way, the participating Offices become 71. The main advantage of using this database is the fact that all goods and services are approved by the relevant Offices, which lessen the chance for potential trademark application refusals.

More information can be found here.

Apple faced challenges regarding its mark in Switzerland

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Peter Schramm и Guillaume Fournier published an engaging article for Lexology which reveals some problem for the US company Apple to register its word mark APPLE in Switzerland.

In the case at hand, the local Patent Office refused the company’s wordmark for the following goods: in Class 14 – jewellery goods and in Class 28 – games and playing cards, electronic games, manually operated and electronic computer games, video games, interactive games and interactive computer toys.

According to the Office in the case of jewellery, apple is widely used as their form due to which it is descriptive.

Regarding toys and computer games, the Office considers that apple as a fruit is a common form either for their material creation in the case of physical toys or as an image and motive in the case of computer games.

This comes to show how important submitting of pieces of evidence for acquired distinctiveness is concerning such marks especially in countries such as Switzerland where the interpretation for descriptiveness and distinctiveness could be quite interesting.

Aston Villa lost an opposition in Japan

Aston Villa v Stoke City - Premier LeagueThe UK football club Aston Villa lost an opposition against the following trademark that was applied for classes 12, 25, 35:

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Against this mark Aston Villa evoked its following earlier mark in class 25:

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According to the Japan Patent Office, both signs are not confusingly similar because the earlier mark includes the abbreviation AVFC besides the lion depiction. Furthermore, the lion character is widely used in heraldic which leads to lower distinctive power. On top of that, there are some differences between the lion depictions themselves.

Source:  Masaki MIKAMI

UEFA failed to register its well-known logo as a copyrighted work in the US

pexels-photo-1093645The European Football Association UEFA failed in its attempt to register the following well-known logo as a copyrighted work in US Copyright Office:

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Although this registration is not mandatory it is helpful in particular of copyright infringements and lawsuits.

The reason for this refusal was a lack of originality which is one of the main requirements for such registration. Despite the low level of originality which is necessary to protect a copyright work in the case at hand the Office considered that this is not accomplished because the mere combination of stars in a circle is insufficient in that regard.

UEFA tried its best to claim that this logo was original at least because it creates a three-dimensional illusion in the consumer mind, but all to no avail. The Office dismissed this leaning on Section 310 (3) of US Copyright Office Practice, according to which the Office would only need to consider the objective appearance of the work and not the “symbolic meaning or impression” that a work may evoke.

Source: IP KAT.