Hans Eriksson published an intriguing article for IPKat discussing the issue on color assessment of trademarks in Sweden.
Until that moment, the Swedish practice in that regard was to accept that trademarks in black and white covers all color combinations for the purpose of trademark assessment in case of disputes.
Not any more. The Swedish Patent Office and the Swedish court change that position implementing the European court decision in case C-252/12 Specsavers, according to which the registration of a trademark in black and white cannot be granted a scope of protection that automatically covers all possible color combinations.
Sweden alongside Denmark and Norway was one of the few countries in the EU which has continuously used this broader approach in color assessment of trademarks.
This change of the local practice will reflect on all future applicant who has to bear in mind that when they build their trademarks strategies for the territory of Sweden.
The full article can be found here.
The well-known energy drink producer Monster Energy lost an interesting opposition against the following UK trademark application in class 32 (beers, ales, stouts; low-alcohol beers; non-alcoholic and de-alcoholized cider, perry and beers; syrups and preparations for making any of these aforesaid; excluding energy drinks):
Against this mark, Monster invoked several earlier European trademarks in class 32 (Non-alcoholic beverages; beer):
The UKIPO dismissed the opposition internally. The reason for this was the lack of possibility for consumer confusion. According to the Office, both signs are visually and conceptually different. While in the case of the earlier mark there is a pair of legs, the earlier signs represent a scratch created by an animal. Although both can be viewed as the letter M, the differences between them are enough in order to escape consumer confusion even though the goods are similar due to their nature.
The full text of the decision can be found here.
Adidas won an opposition against the following application for a figurative trademark, applied for Class 25 by a Chinese company:
Against this sign, Addidas opposed its following earlier national trademark in Japan in Class 25 too:
According to the German producer, both signs are confusingly similar because their visual elements create a similar impression in consumers. What’s more, Adidas’s mark has a reputation which increases, even more, the risk of confusion.
The Opposition Board coalesce with Adidas concluding that there is a possibility for consumer confusion because both signs are visually similar for identical goods and all of that is supported by the earlier trademark’s reputation.
Source: Masaki Mikami, MARKS IP LAW FIRM (JAPAN)
1. No likelihood of confusion deemed between “an apple” and the letter „J“. For more information here.
2. Calculating copyright infringement damages using hypothetical license fees. For more information here.
3. Evaluation of EU legislation on design protection. For more information here.
The UK Patent Office published some clarifications what would happen with all European trademarks in case of a hard Brexit without a deal with the EU.
In that case, The UK will recognize all registered EU trademarks and will transform them into national trademarks. They will be indicated with UK009 in front of their EU numbers.
There will be no cost for the relevant owners and as little administrative burden as possible. However, the Patent Office will not issue trademark certifications for them. Information for these marks will be available in the UK trademark database.
When it comes to EU applications for trademarks, their owners will have up to 9 months to file identical applications in The UK. In that scenario, they will use the same priority date from their EU applications.
The full text can be found here.
HBO lost an opposition against the following trademark application, in class 34, in the UK:
The opposition was based on an earlier EU trademark “Game of Thrones” in class 34 too. HBO claimed that the later mark is confusingly similar trying to take advantages of the “Game of Thrones” reputation amongst the consumer.
According to the UK Patent Office, however, there is no base for confusion. Although both signs are similar to some extent from a visual and phonetic point of view, conceptually they are completely different. The claimed reputation concerns TV show and according to the Office, there is no direct link to the goods for which the trademark application is applied for.
WIPO reports about the accession of Albania to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, which will come into force for the country on 08.05.2019. This will allow Albania to be designated in applications for such appellations after that date.
For more information here.