Intellectual property planet wishes you happy holidays.
Month: December 2019
Volkswagen lost a dispute against Baidu in Japan
Volkswagen has recently lost an opposition against a word trademark application for “Car-pollo” for the following goods and services:
class 9 – navigation apparatus (GPS) for vehicles [onboard computers]; car video recorders; batteries for vehicles; battery charging devices for motor vehicles; electric locks for vehicles and others;
class 12 – wheelbarrows; airplanes; vessels; bicycles; electric bicycles;
class 42 – automatic driving cars design;
The mark was filed by the Chinese company Baidu Online Network Technology Beijing Company Limited.
Against this application, the German company evoked its rights over POLO trademark in class 12.
According to Volkswagen, both signs are confusingly similar. The first part of the later mark is CAR which is a descriptive and not distinctive word for the list of goods and services at hand.
Apart from that, POLO trademark acquired a reputation in Japan due to its longstanding market presence in the country.
The Japan Patent Office, however, dismissed the opposition. According to the Office, both trademarks are dissimilar. The word CAR is descriptive whereas the term POLO means a game played on horseback between two teams. What’s more the POLLO part in the later mark has no dominant position.
Although the earlier mark is famous in Japan, the lack of similarity prevails the possibility of consumer confusion.
Source: Masaki MIKAMI.
In which cases “CANNABIS” cannot be a European trademark?
The General Court of the EU has ruled in case T‑683/18 Santa Conte v EUIPO. It concerns an attempt for registration of an European trademark for the following combined sign:
The classes of goods and services were as follow:
– Class 30: ‘Baked goods, confectionery, chocolate and desserts; Salts, seasonings, flavourings and condiments; Ice, ice creams, frozen yoghurts and sorbets; Savoury pastries’;
– Class 32: ‘Soft drinks; Beer and brewery products; Preparations for making beverages’;
– Class 43: ‘Services for providing food and drink’.
The EUIPO refused to register this mark based on absolute grounds – a sign contrary to the public interests, Article 7(1)(b) and (c) and Article 7(2) of Regulation No 207/2009.
The decision was appealed.
The General Court upheld the EUIPO position with the following arguments:
the word ‘cannabis’ has three possible meanings. In the first place, it refers to a textile plant, for which the common organisation of the market is regulated within the European Union, and the production of which is subject to very strict legislation as regards the THC content, which may not exceed the threshold of 0.2%. In the second place, the word ‘cannabis’ refers to a narcotic substance which is prohibited in a large number of Member States, to date in the majority of them. In the third place, it refers to a substance the possible therapeutic use of which is under discussion.
The Board of Appeal was fully entitled to consider that it was necessary, in particular, to define how the relevant public would perceive all the elements forming the sign which is the subject of the trade mark application. It considered that the combined presence, in the sign at issue, of the stylised representation of the cannabis leaf, the media symbol for marijuana, and the word ‘amsterdam’, referring to the fact that the city of Amsterdam has many points of sale for the narcotic derived from cannabis, due to the sale of cannabis being tolerated under certain conditions in the Netherlands, made it very likely that the consumer, in the circumstances of the present case, would interpret the word ‘cannabis’ as referring to the narcotic substance which is illegal in ‘many countries of the European Union’.
That interpretation must be upheld, particularly in view of the inclusion, in the sign which is the subject of the trademark application, of the word ‘store’, which normally means ‘shop’, with the result that that sign, the dominant element of which is the word ‘cannabis’, will be perceived by the relevant English-speaking public as meaning ‘cannabis shop in Amsterdam’ and by the relevant non-English-speaking public as ‘cannabis in Amsterdam’, which, in both cases, coupled with the image of the cannabis leaves, the media symbol for marijuana, is a clear and unequivocal reference to the narcotic substance which is sold there. That public could, therefore, expect the goods and services sold by the applicant to correspond to those which would be sold in such a shop.
The applicant cannot rebut that conclusion by arguing that the Board of Appeal failed to examine whether, in addition, the sign at issue encourages, trivialises or conveys approval of the use of an illegal narcotic substance. The fact that that sign will be perceived by the relevant public as an indication that the food and drink items referred to by the applicant in the trade mark application, and the related services, contain narcotic substances which are illegal in many Member States is sufficient to conclude that it is contrary to public policy for the purposes of Article 7(1)(f) of Regulation 2017/1001, read in conjunction with Article 7(2) of that regulation, as the Board of Appeal rightly stated, in view of the fundamental interest highlighted in paragraphs 74 and 75 above. In any event, since one of the functions of a trade mark consists of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent purchase, that sign, in so far as it will be perceived as described above, encourages, implicitly but necessarily, the purchase of such goods and services or, at the very least, trivialises their consumption.
Jaguar Land Rover lost an opposition in Japan for its famous logo
Jaguar Land Rover lost an opposition in Japan against the following national trademark application in class 12:
Against this application, the UK company invoked a family of its earlier figurative and combined trademarks in class 12:
According to the company, there was a significant similarity between the signs due not only to the Jaguar image but the first part of the words JAG.
The Japan Patent Office, however, disagreed stating that the trademarks at hand are not confusingly similar for the consumers although they are for identical and similar goods.
According to the Office, the stated reputation of the earlier signs in Japan wasn’t proved enough and cannot play a significant role in the assessment.
Source: Masaki MIKAMI
Paintings and watches – a dispute from Denmark
The Court in Denmark has ruled in a case concerning a copyrightable work transformed into another work. The case at hand focus our attention on the following painting by artist Tel R:
This painting has been purchased for $90 000 by Dann Thorleifsson and Arne Solmunde Leivsgarð, founders of the watch manufacturer company Letho.
They launched a campaign where the winners can order watches, which dials are made of small painting parts.
According to the artist, this was a completely new way of using of his painting that transforms the original work. He claimed that copyright permission for such use was needed.
The Letho’s position was that in this case there was a destruction of the work which according to the Danish law does not constitute copyright infringement.
The court ruled that there was a copyright infringement because the painting was made available to the public in a changed form, which requires copyright permission.
Source: WIPR.
Arguments in case of trademark oppositions – Advocate General’s position
The Advocate General of the European Court М. BOBEK has issued an opinion in the case C‑702/18P Primart Marek Łukasiewicz v EUIPO. The case concerns the following:
On 27 January 2015, „Primart” filed an application for registration of an EU trademark with EUIPO for the following figurative sign:
The goods in respect of which registration was sought are in Class 30: ‘Sugars, natural sweeteners, sweet coatings and fillings, bee products; coffee, teas, cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; processed grains, starches, and goods made thereof, baking preparations and yeasts; crackers’.
On 29 April 2015, Bolton Cile España, SA, filed a notice of opposition to the registration of the mark applied for in respect of all the goods referred to in the previous point. The opposition was based in particular on the Spanish trademark PRIMA, registered on 22 September 1973 under number 2 578 815 and renewed on 9 April 2013, designating goods in Class 30 and corresponding to the following description: ‘Sauces and condiments; coffee; tea; cocoa; sugar; rice; tapioca; sago, artificial coffee; flour and preparations made from cereals; bread; biscuits; cakes; pastry and confectionery; edible ices; honey; treacle; yeast, baking-powder, salt; mustard; pepper; vinegar; ice’. The ground relied upon in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
On 2 September 2016, the Opposition Division dismissed the opposition in its entirety. However, following an appeal filed by Bolton Cile España, by decision of 22 June 2017, the Fourth Board of Appeal of EUIPO annulled the Opposition Division’s decision, upheld the opposition, refused the trademark application and ordered Primart to bear the costs incurred in the course of the opposition and appeal proceedings.
The Board of Appeal held, as regards the earlier Spanish mark, that the relevant territory for analysing the likelihood of confusion was Spain and that the relevant public was the public at large in that Member State. Having compared the signs, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public. In that context, it observed that the word ‘prima’ means ‘female cousin’ or ‘bonus payment’ for the relevant Spanish consumer. By contrast, the mark applied for lacked any meaning. The Board of Appeal also stated that the earlier national mark’s level of intrinsic distinctive character was average. In its view, the Spanish consumer would not understand the word ‘prima’ as a word denoting the excellence of something, as is the case in other languages of the European Union (such as German or Dutch).
On 24 August 2017, Primart brought an action for annulment against the contested decision before the General Court. In its application, Primart alleged an infringement of Article 8(1)(b) of Regulation No 207/2009.
On 12 September 2018, the General Court dismissed the action, upholding the Board of Appeal’s findings with respect to the existence of a likelihood of confusion between the two signs. In that context, the General Court considered Primart’s arguments concerning the allegedly weak distinctive character of the earlier mark to be inadmissible, in accordance with Article 76(1) of Regulation No 207/2009, in so far as they had not been put forward before the Board of Appeal.
In its appeal before the Court of Justice, lodged on 9 November 2018, Primart asks the Court to set aside the judgment under appeal, annul the contested decision of the Fourth Board of Appeal of EUIPO, order EUIPO and Bolton Cile España to pay the costs of the proceedings before the Board of Appeal and the General Court, and order EUIPO to pay the costs of the proceedings before the Court of Justice.
The Advocate’s opinion:
In my view, Article 76(1) of Regulation No 207/2009 cannot be read as obliging the Board of Appeal to refrain from examining matters of law or fact that, despite not having been specifically raised by one of the parties, are inextricably linked to those raised by the parties.
For example, once a given matter has been put before it, the Board of Appeal cannot be expected to turn a blind eye to provisions of Regulation No 207/2009 that, although not referred to by the parties, are applicable to the situation. Similarly, the legal reasoning that the Board of Appeal ought to follow to rule on a given question raised by the parties might require it to go through various steps. The fact that the parties might not have discussed one or more of those steps does not mean that the Board of Appeal cannot touch upon them.
Against that background, the EU Courts have made clear that there are a number of issues that, despite not having been the subject of the parties’ submissions in the context of an opposition procedure, should nonetheless be addressed by EUIPO and, as a consequence, maybe raised, even for the first time, before the General Court.
That may be the case, inter alia, in relation to questions concerning the distinctiveness of an earlier trademark by reference to which it is alleged that the mark applied for gives rise to a likelihood of confusion.
That finding does not result in an infringement of Article 188 of the Rules of Procedure of the General Court, as argued by Bolton Cile España. The arguments submitted by Primart relating to the intrinsic distinctive character of the earlier mark pertained to an issue that had been addressed by the Board of Appeal and could therefore properly be put before the General Court. In the contested decision, the Board of Appeal found the distinctive character of the earlier mark to be average, taking account of the meaning of the word ‘prima’ and the manner in which that word would be understood by the relevant public (paragraphs 22 and 27 of the contested decision).
In conclusion, Primart’s ground of appeal, relying on a breach of Article 76(1) of Regulation No 207/2009, is well-founded.
“UNITED STATES SEAFOODS” cannot be a trademark in the EU
The General Court of the European Union has ruled in the case T‑10/19, United States Seafoods LLC, European Union Intellectual Property Office (EUIPO). This dispute concerns an attempt for registration of the following European trademark in class 29 ‘Fish; fish fillets’:
The application was refused by the EUIPO on absolute grounds, descriptiveness, and lack of distinctiveness. The phrase “UNITED STATES SEAFOODS” would be perceived by the consumers in the EU as food products produced in the US.
The applicant’s arguments that the presence of a map and the US flag is enough to create a basic distinctiveness of the sign were dismissed. According to the EUIPO these additional elements are not able to create distinctiveness, they even further stress the origin of the goods.
The General Court upheld this decision.
The case at hand is a very good example that although some inherently not distinctive signs can be registered as trademarks when they are combined with other elements, these can happen only if these additional elements are distinctive enough by themselves.
Source: Peter Gustav Olson, Lexology.
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