Can fashion designers register their names as trademarks in Japan?

One interesting case from Japan regarding the possibility for registration of personal names as trademarks.

Kabushiki Kaisha Soloist, founded by the well-know fashion designer Takahiro Miyashita applied for the following trademark TAKAHIROMIYASHITATheSoloist for classes 14, 18 and 25.

The Japanese Patent Offices refused to registered this sign based on absolute grounds – name of any person cannot be registered as a trademark for the purpose of protecting personal rights of a living individual.

According to the Office, it was clear that other people in Japan have the same name, so its monopolization was not been possible. The only exception from this rule is if the applicant provide the Office with a written consent from all people who bear the same name. That wasn’t happen.

In the appeal the IP High Court upheld this decision. The fact that the trademark application includes the name of the company was not enough to overcome the law prohibition in the case at hand.

In Europe, personal names are possible to be registered as trademarks, for example, but in many cases the applicant should prove acquired distinctiveness among consumers in order to succeed.

Source: Masaki MIKAMI (Marks IP)


Diego Maradona won a lawsuit against Dolce & Gabbana

Diego Maradona prevailed in a lawsuit against the famous Italian fashion house Dolce & Gabbana.

The reason for the dispute was an event organised by Dolce & Gabbana which aim was to celebrate the symbols and the story of the city of Naples.

During this event, one model showed a blue and white football shirt with number 10 and the name of the former footballer.

As it is well-known, Diego Maradona made a name as one of the best footballers in the world when he played for the local football club Napoli in the 80s of the 20th century.

The problem was that Dolce & Gabbana didn’t ask Maradona whether they can use his name for this event. According to the article 8(3) of The Italian Industrial Property Code, names of famous people are protected when they are used commercially even in case these names are not registered as trademarks.

The Court in Milan ruled in favor of Maradona. The reason for this was the fact that by using the name of the famous footballer, the fashion house could lead consumers to the conclusion that there was a commercial relationships between both parties. Merchandising and celebrities endorsement campaigns are a widespread marketing approach around the world.

In that way, Dolce & Gabbana took advantage of the name and reputation of Diego Maradona.

The fact that the event was only to praise the symbols of Naples could not warrant the use of the footballer’s names because it was possible consumers to be misled to belief that there were commercial relationships between both parties which was not the case.

The Court ordered 78 000 dollars in damages.

Source: WIPR.

MALLE means Mallorca for Germans?

EUIPO has issued recently a decision on a case which has to check to what extent MALLE can mean the Spanish Balearic island of Mallorca.

The case concerns a registered European trademark MALLE for classes  9, 35, 38 and 41 that regard goods and services such as CDs, TV shows, parties, music production and so on.

After receiving registration, the trademark owner started to send cease and desist letters to anyone who dare to use the name in relation to the above classes.

The problem is that MALLE  is a everyday word that means Mallorca for German consumers.

Because of that an invalidation proceeding was initiated against the mark.

The EUIPO invalidated this trademark based on absolute grounds – marks which consist exclusively of signs or indications that may serve, in trade, to designate geographical origin are not possible to be registered.

According to the Office, there is sufficient evidence in the form of many press articles for decades, which show clearly that German speaking consumers understand MALLE  as reference to Mallorca.

The fact that this conclusion concerns only one country in the EU is enough in order for the trademark to be invalidated.

There is a similar proceedings in Germany against national trademark MALLE .

Source: Yvonne Draheim – Hogan Lovells for Lexology

5 key steps for intellectual property management for SME

In times of economic crisis the things that can differentiate one company could be critical for its market success.

Some parts of this differentiation can be based on intellectual property rights such as trademarks, patents, industrial designs, copyrights, domain names etc.

One important moment in that regard is how these rights are managed in order to provide the company owner with the necessary economic benefits.

This is essential because in the case of poor management the consequences for the market position of the company could be quite negative.

All big companies have organisations and policies on how to deal with the management of their intellectual property portfolios.

In the case of small and mid-size companies this is not possible all the time because it requires human and financial resources.

Nevertheless there are some things that can be done which will help SME do preserve the value of their intellectual property:

  1. Make an audit of everything that can represent the intellectual property in the company – the main goal is to discover what the company has. For example some products can be sold under a brand name which is not protected as a trademark. Another example is for key technology that is not protected by a patent or trade secret.
  2. Evaluate the information from the audit and identify the key value of intellectual property within the company.
  3. Proceed with receiving the necessary protection for those of the assets that can be registered with the Patent Office as trademarks, industrial designs, patents etc.
  4. Create a database for your intellectual property portfolio in order to manage it properly and to keep yourself on date with its status.
  5. Go over the portfolio and identify the possibilities for licensing your intellectual property to other companies. This can be an additional revenue stream for your company.

In case you are a small business and you want to build a database of intellectual property, you can learn how to do that almost for free through this Udemy course: A complete guide on how to build an IP database using Asana

The targeted consumers are a key element in cases of trademark infringement in the EU

An interesting case for a trademark infringement from the UK. The local company for audio equipment AMS Neve initiated a lawsuit against the Spanish rival Heritage Audio for trademark infringement and passing-off.

The case concerns similar imitating products under the brand 1073 offered by the Spanish company not directly in the UK but through a website, social media and online advertisements accessible in the UK.

According to Heritage Audio there was no infringement because there were no sales in the UK. What’s more, due to that fact the UK Court had no jurisdiction to intervene.

The Intellectual Property Enterprise Court decided to ask the European Court about the issue with online sales and the jurisdiction that is applicable in such scenarios.

According to the EU Court, when it comes to online sales the most essential element is not where sales happened or where the infringer is located but the consumers that are targeted.

In the case at hand, the UK consumers were targeted by the Spanish company through websites and social media which means that the UK Court have the right to decide whether or not there is a trademark infringement.

This case is important especially in the light of the internet business development in the recent decades.

When you want to sale products in the EU as a whole you need to be sure that the trademark you want to use are not already protected by someone else. If this is the case, the fact that you don’t have direct sales in one Member State is irrelevant if your online business model target in some ways the consumers in that particular country.

Source:Nina Goodyear – Taylor Wessing for Lexology.

“WE’RE ON IT” cannot be an EU trademark

The General Court of the European Union has ruled in case T-156/19 Koenig & Bauer AG  v EUIPO.

This dispute concerns an attempt for registration of an European word trademark for “WE’RE ON IT” for classes 1, 2, 3, 4, 7, 9, 11, 16, 35, 36, 37, 38, 39, 40, 41, 42 related to to printing machines and services.

The EUIPO refused to register this slogan as a trademark on absolute grounds – lack of distinctive character for the mentioned goods and services.

The slogan “WE’RE ON IT”  has a particular meaning for English speaking consumers in the EU as “we will take care of it” or “we’re working on it”.

The decision was appealed.

The General Court upheld the EUIPO position on this matter. According to the Court “WE’RE ON IT” is a very simple expression widely used in the market. This slogan  does not require considerable mental effort in order it’s meaning to be understood.

From that perspective it can serve as an advertising message related to the specified goods and services which in turn will be understood directly by the consumers as it is, with its simple and straightforward meaning.

The fact that this expression can have different meanings is not enough to overcome the lack of distinctive character as soon as one of this meaning is descriptive for the relevant goods and services for which protection is sought.

Source:  Flavia Tamburrini (Trevisan & Cuonzo ) on Lexology.

Why TOTU is not similar to TOTTO in the EU?

The general Court of the EU has ruled in a dispute between the following EU trademark application for TOTU with graphic representation, in class 18:

and the following earlier trademark for the same class:

The EUIPO dismissed the opposition finding both signs dissimilar. In the appeal the Board of Appeal confirmed this position stating that these marks are not similar from visual, phonetic and conceptual point of view, which is necessary in order one opposition to be uphold successfully.

The applicant appealed again this time before the General Court. Its main claim was that in the trademark application the graphic representation of the mark was specified as TOTU, which in addition to the identical goods could create the necessary confusion between the consumers in the EU.

The Court disagreed. Although, every trademark application allows the word part of the sign to be specified, this is only for the purpose of the application process and database management.

Similarity between two signs can be done only based on the consumers perception of them. In that regard the trademark applied for, as it is graphically presented, is not similar to the earlier mark because the consumers probably will not read it as Totu and it is highly likely that they will not confuse it with the TOTTO trademark even though for identical goods.

Source: Önder Erol Ünsal за Lexology.