EasyJet won a dispute against EZY.COM in the UK

The UK airline company EasyGroup won an invalidation procedure against the UK registered trademark EZY.COM in class 41.

The base for this invalidation was earlier trademarks EASY.COM and EASYJET for class 41.

According to the company, there was a serious possibility for consumer confusion including because of the fact that EASYJET has a reputation in the UK and because EZY was the airline code of the company.

The UKIPO upheld the opposition confirming the possible consumer confusion due to the phonetic and visual similarities between the signs which are registered for identical and similar services.

Source: WIPR.

To love Y is not as to fly

The European Court ruled in case C‑99/18 P, FTI Touristik GmbH v Harald Prantner и Daniel Giersch, which in brief concerns an attempt by both individuals to register the following European trademark:

Its classes of goods and services are as follow:

– Class 16: “Printed matter; photographs; stationery; wrapping materials; printed publications; books; handbooks [manuals]; pamphlets; newsletters; albums; newspapers; magazines and periodicals; tickets; vouchers; coupons and travel documents; passes; tags and labels; posters; postcards; calendars; diaries; instructional material”;

–  Class 39: “Transport; travel arrangement; travel information; provision of car parking facilities; transportation of goods, passengers and travelers by air, land, sea and rail; airline and shipping services; airport check-in services; arranging of transportation for passengers, goods and trips by land and sea; airline services; baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; aircraft chartering; rental and hire of aircraft, cars and boats; taxi services; bus services; chauffeuring; coach services; train services; airport transfer services; airport parking services; aircraft parking services; escorting of travellers; travel agency services; advisory, consultancy and information services relating to all the aforesaid services; providing information regarding transportation services; providing travel information online; travel booking via computer databases or the Internet”;

–  Class 43: “Services for providing food and drink, temporary accommodation; restaurant and bar services; food and drink catering; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotels and/or restaurants; reservations in connection with running hotels.”

Against this application, an opposition was filed by FTI Touristik on the ground of the following early registered European trademark for classes 16, 39, 41, 43:

EUIPO ruled that there is no significant similarity between the signs at hand, stating that:

“Phonetically, it found, in essence, that for the public that did not know the English term “fly”, the signs at issue bore no similarity. For consumers that did know the English word “fly”, there was a phonetic similarity provided that the mark applied for was associated with the word “fly”. However, this seemed rather unlikely since, first, there was a great difference between the letter “y” and the stylised heart in the mark applied for and, secondly, it was unusual to replace the letter “y” with a heart symbol. Conceptually, it found, that, for the public that did not know the English term “fly”, the signs at issue bore no similarity. For consumers that did know and understand the English word “fly”, there was a conceptual similarity provided that the word “fly” was identified in the mark applied for. However, this seemed unlikely for the same reasons as those set out in the context of the assessment of the phonetic similarity.”

The decision was appealed.

The European court agreed with EUIPO dismissing the appeal. Most consumers will not understand an image of the heart in the later mark as Y letter. Even in case that this is possible the additional element .de in the earlier mark is sufficient to make the necessary distinction between the signs.

Breaking news – Brazil joins the Madrid Protocol

WIPO reports the exciting news about the accession of Brazil to the Madrid Protocol for international registration of trademarks. The Protocol will come into force for the country on 02.10.2019. After this date, every applicant from a country part of the Madrid System will be able to designate Brazil in its international trademark applications. This is huge facilitation and a very cost-effective way for trademark registration.

For more information here.

Uber won a dispute in the UK

Uber succeeded in an opposition procedure against the following UK trademark application:

This sign was filed for the following goods and services:

In Class 9: Mobile phones and accessories; batteries; battery charges; media for storing
information, data, signals, images and/or sounds; photographic apparatus and instruments; parts and fittings for the aforesaid goods.

In Class 35: Retail services connected with the sale of mobile phones and accessories;
batteries; battery charges; media for storing information, data, signals, images and/or sounds; photographic apparatus and instruments; parts and fittings for the aforesaid goods”.

In Class 38: Advisory and consultancy services relating to communications apparatus,
equipment and accessories; rental and hire of communications apparatus, equipment, and accessories; provision of information relating to communications apparatus, equipment and accessories”.

Uber invoked a family of earlier Uber trademarks against this application, for the same classes, stating possible consumer confusion.

According to the UKIPO the goods and services of the marks were identical or complementary.

The applicant tried to claim that Uberfone poses a specific meaning in German which is to something “superb or happy”.

The Office dismissed it considering that the German language is not so popular in the UK and most of the people wouldn’t be able to get the meaning.

Taking into account the phonetic and visual similarities between the signs, the UKIPO upheld the opposition.

Source: WIPR.

Tommy Hilfiger failed to register its flag as a copyrighted work in the US

Tommy Hilfiger failed to register its flag as a copyrighted work in the US. The US Copyright Office refused to register the following image:

According to the company, this flag was sufficiently original due to the fact that its representation combines the letters T, J, and H which stems from the name Thomas J. Hilfiger and three colors. Apart from this, the red rectangle element means “Going home” from a voyage.

The Office disagreed with these claims stating that the work is not original enough in order to be registered. The aforementioned combination of colors and shapes is standard and “exceedingly common for flag designs”. There wasn’t sufficient creativity in that regard. What the author of the work wants to convey as meaning is irrelevant for the originality of the work according to the US copyright case law:

“A work may be complete rubbish and utterly worthless, but copyright protection may be available for it, just as it is for the great masterpieces of imaginative literature, art and music. A work needs only be “original” in the limited sense that the author originated it by his efforts rather than slavishly copying it from the work produced by the efforts of others. (Mummery LJ, [31]). “

Source: IPKat.

Can we do a visual search for trademarks in Croatia?

EUIPO reports about the newly available option for trademark search by visual elements for Croatia. This is possible after the Croatian Patent Office gave the necessary access for this purpose to the global trademark database TMView, which can be used for conduction such trademark search.

The other countries that allow this search are: Estonia, Bulgaria, France, Greece, Lithuania, Romania, Spain, UK, Malta, Sweden, Italy, Ireland, Slovakia, and the Czech Republic.

For more information here.

China tries to combat trademark applications filed in bad-faith

Recently China has introduced some amendments to its trademark law which main aim is to fight against the widespread practice in the country trademark applications to be filed in quantity without any intention for real use.

Because of this, according to the new amendments, every applicant will have to declare intent of use otherwise the application will be refused. What’s more, this will be a ground for oppositions and invalidations against the mark. So far, if one trademark has not been used for 3 years it can be subject to invalidation. Now, this can happen even earlier.

Apart from this, damages awarded by the courts in case of trademark infringements are increased significantly. The procedure for ceasing and destruction of countrified goods becomes more efficient.

Source: IPKat.