INDITEX, the company that owns the world known fashion stores ZARA, won an interesting trademark opposition in Japan.
The dispute concerns an application by a Chinese company for trademark Zarbleu for class 25 – shirts, trousers, outers, skirts, dresses, T-shirts, underwear, headgear, gloves, coats, and other clothing.
Against this application, INDITEX filed an opposition based on its early registered trademark ZARA for class 25.
According to the company, both signs were confusingly similar, which claim was enhanced by the available longstanding reputation of ZARA as a brand in Japan.
The Japanese Patent Office agreed that the reputation of the earlier mark was proved successfully.
Surprisingly, however, the Office considered both marks as confusingly similar too. The argument for this conclusion was the fact that both share one and the same prefix ZAR. according to the Office this was crucial for the assessment because consumers pay more attention to the beginning of the words. Taking into account the reputation of the earlier mark, the possibility for confusion was available.
That’s an interesting decision. For example, in the EU the practice for such assessment takes into consideration the beginning of the marks too. However, the final conclusion whether two signs are similar or not depends on their entire perception. The reason for this is the fact that consumers rarely pay attention to all details of one trademark when they purchase the relevant products.
One of the most famous graffiti artist in the world Banksy registered the following European trademark in classes 2, 9, 16, 18, 19, 24, 25, 27, 28, 41 and 42:
This is one of his most well-known graffiti works so far.
In 2019, the French company Full Colour filed an application for invalidity with the European Intellectual Property Office based on a claim for bad-faith application and Article 7(1)(b) and (c) EUTMR.
According to Full Colour, Banksy never has intention to use this trademark apart of his wish to monopolies the rights over the graffiti work.
The reason was that the artist doesn’t like the copyright regime as a whole, statements in that regard were been cited. So in turn he tried to use trademark protection as a substitute to the copyright one. In that way he could stay anonymous because in case of copyright lawsuits he needs to reveal his identity which has been unknown so far.
Pest Control, a company that acted on behalf of the artist in this legal proceeding, denied this allegations as not proven.
The EUIPO however, invalidated the mark. The main argument for this decision was the fact that Banksy tried to prove a trademark use opening a shop Gross Domestic Product but after the date when the application for invalidation was filed. According to the Office, the artist has no intention to use the mark before that, which act was determined as a bad-faith.
This case is interesting due to several reasons. From one side, it shows the attempt artistic works to be protected based on trademark law which literally gives indefinite protection in contrast with the copyright one.
On the other hand, some attempt for proving trademark use can be qualified as bad-faith.
All of this requires in-depth approach and strategy when such artistic works have to be protected.
The protection by itself is not the only element of this strategy. You need to consider how the works will be used, licensed etc. Bear in mind that trademark protection covers only signs that can be perceived as a source of trade origin of the branded goods and services.
The European Court has issued its decision in the case – 449/18 P EUIPO v Messi Cuccittini and C-474/18 P J.M.-E.V. e hijos v Messi Cuccittini.
This dispute concerns an attempt by one of the most famous footballer in the world for all time Lionel Messi to register the following European trademark in 2011 for clothes and shoes:
Against this application an opposition was filed by a Spanish company based on early registered trademark for MASSI for the same goods.
The EUIPO upheld the opposition finding both signs similar. From phonetic and visual point of view they are very similar due to the one letter difference.
From conceptual side, the fact that the word Messi refers the the well-known footballer Lionel Messi was not enough to overcome the similarity because only part of the consumers are interested in the football as a sport.
The decision was appealed. The General Court of the EU annulled it entirely.
According to the Court, both marks are not similar and the reason for this conclusion is that MESSI is a word that consumers will automatically refer to the particular footballer. This will make the necessary difference due to which a confusing between the signs is not possible.
The EUIPO retorted that the footballer didn’t claim any reputation in the initial proceeding and there were no evidence submitted in that regard. That’s why the Office didn’t take into account this fact, the official procedure requires reputation to be proved.
The Court clarified that some publicly well-known facts have to be considered by the Office without they to be proved. In the case at hand the footballer reputation is such a fact.
Although this decision is logical it arises some question.
It is a fact that Leonel Messi is very famous as a whole. But is is a fact that brands such as CoCa Cola, Nike, Apple are so famous as well.
From that perspective is this decision means that such brands don’t have to prove their reputation in disputes before the EUIPO any more.
And what about the McDonald’s case from the last year when the company lost its EU trademark for Big Mac due to insufficient evidence for acquired reputation provided in the procedure. The fact is that most of the people regard Big Mac as a product by McDonald’s.
It will be interesting to what extent this decision by the European Court will reflect the future practice of the EUIPO and all national Patent Offices in the EU.
Advocate General of the European court M. SZPUNAR has issued his opinion in case C‑392/19 VG Bild-Kunst v Stiftung Preußischer Kulturbesitz.
The dispute concerns the following background:
Verwertungsgesellschaft Bild-Kunst (‘VG Bild-Kunst’) is a copyright collecting society for the visual arts in Germany. Stiftung Preußischer Kulturbesitz (‘SPK’) is a foundation under German law.
SPK is the operator of the Deutsche Digitale Bibliothek (DDB), a digital library devoted to culture and knowledge, which networks German cultural and scientific institutions.
The DDB website contains links to digitised content stored on the internet portals of participating institutions. As a ‘digital showcase’, the DDB itself stores only thumbnails, that is to say smaller versions of the original images. When a user clicks on a search result, he or she is redirected to the page for the object – on the DDB’s site – which contains an enlarged version of the image (440 x 330 pixels). When that image is clicked on or the ‘magnifying glass’ function is used, an enlarged version of the thumbnail, with a maximum resolution of 800 x 600 pixels, is displayed in a lightbox. Moreover, the ‘Display object on original site’ button contains a direct link to the website of the institution providing the object (either a simple link to its home page or a deep link to the page for the object). The DDB uses works with the authorisation of the holders of the copyright in those works.
VG Bild-Kunst makes the conclusion with SPK of a licence agreement for the use of its catalogue of works in the form of thumbnails conditional on the inclusion of a provision whereby the licensee undertakes, when using the protected works and subject matter covered by the agreement, to apply effective technological measures against the framing by third parties of the thumbnails of the protected works or subject matter displayed on the DDB website.
Taking the view that such a contractual provision was unreasonable from the point of view of copyright, SPK brought an action for declaratory relief before the Regional Court, Germany seeking a declaration that VG Bild-Kunst was required to grant the licence in question to SPK without making that licence conditional on the implementation of those technological measures. That action was initially dismissed by the Regional Court. On appeal by SPK, the judgment of the Regional Court was overturned by the Higher Regional Court, Germany. By its appeal on a point of law (Revision), VG Bild-Kunst seeks the dismissal of SPK’s action.
Federal Court of Justice, Germany points out, first, that, pursuant to the first sentence of Paragraph 34(1) of the VGG, collecting societies are required to grant to any person who so requests, on reasonable terms, a licence to use the rights entrusted to them for management. The referring court states, secondly, that, according to its case-law applicable in the present case, it is accepted that collecting societies may, in exceptional cases, derogate from their obligation and refuse to grant a licence, provided that that refusal does not constitute an abuse of monopoly power and that it is possible to rely, in opposition to the licence application, on overriding legitimate interests. In that regard, in order to determine whether there is an objectively justified exception, it is necessary to weigh up the interests of the persons concerned, taking into account the purpose of the law and the objective underlying that basic obligation of collecting societies.
The outcome of the appeal on a point of law depends on whether the embedding of a work – which is available on a website, such as that of the DDB, with the consent of the rightholder – in the website of a third party by way of framing constitutes communication to the public of that work within the meaning of Article 3(1) of Directive 2001/29/EC where it circumvents protection measures against framing taken by the rightholder or imposed by him or her on a licensee. If it does, the rights of the members of VG Bild-Kunst are affected and it could legitimately request that the obligation to implement technological measures against framing be included in the licence agreement with SPK.
Being uncertain as to the answer to be given to that question, in the light of the Court’s case-law on the use of hyperlinks on the internet, the Federal Court of Justice decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:
‘Does the embedding of a work – which is available on a freely accessible website with the consent of the rightholder – in the website of a third party by way of framing constitute communication to the public of that work within the meaning of Article 3(1) of Directive 2001/29/EC where it occurs through circumvention of protection measures against framing taken or instigated by the rightholder?’
The Advocate General’s opinion:
(1) Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the embedding in a webpage of copyright-protected works freely available to the public with the authorisation of the copyright holder on other websites, in such a way that those works are automatically displayed on that page as soon as it is opened, without any further action on the part of the user, constitutes a communication to the public within the meaning of that provision.
(2) That article must be interpreted as meaning that the embedding of a work – which has been made freely available to the public on a website with the consent of the rightholder – in the website of a third party by means of a clickable link using the framing technique does not constitute a communication to the public within the meaning of that provision, where that embedding circumvents protection measures against framing taken or imposed by the copyright holder.
(3) Technological protection measures against the embedding in a webpage of copyright-protected works freely available to the public with the authorisation of the copyright holder on other websites, where those works are embedded in such a way that they are automatically displayed on that webpage as soon as it is opened, without any further action on the part of the user, constitute effective protection measures within the meaning of Article 6 of Directive 2001/29.
The US Copyright Office announced it new form for registration of copyrighted works. It will allow authors of short posts in blogs or social media to register their works faster and easily.
However, in order to receive a registration, all works never mind how short they are, have to meet all requirements of the Copyright law for such protection.
As it is well-known, although copyright registration is not mandatory in the US, it provides authors with some advantages when it comes to lawsuits for copyright infringements.
According to the announcement:
Applicants may register up to fifty short online literary works per application. To qualify, each work must contain at least 50 but no more than 17,500 words. The works must be created by the same individual, or jointly by the same individuals, and each creator must be named as the copyright claimant or claimants for each work. The works must all be published online within a three-calendar-month period. If the Office registers the claim, the registration will cover each work as a separate work of authorship.
Puma lost an opposition against trademark FOOTWARE for classes 9, 38, 42, filed by Nike in the United Kingdom.
According to Puma this sign is obvious misspelling of the word FOOTWEAR which has particular meaning related to shoes.
From that perspective the mark applied for is not distinctive and it is descriptive even for the specified goods and services because it can be perceived, for example, as a software used in relation to footwear.
Nike response was that the sign was distinctive enough. The WARE part has been already registered as a separate trademark for the same classes. On top of that Puma themselves owns a trademark SPORTSWEAR.
The UK Patent Office dismissed the opposition stating that there were no sufficient evidence that the word FOOTWARE can be understood in a descriptive way for the specified goods and services.
What’s more, the way how it is spelled requires additional considerations from the consumers in order they to get the meaning of the word Footwear.
This case is an example about the so-called suggestive trademarks which meaning is not direct but requires additional intellectual efforts from the consumers to be determined. In some cases these marks can receive protection.
Source: Charlotte Wilding – Kemp Little LLP за Lexology.
SOCIETE JAS HENNESSY ET COMPAGNIE lost an opposition against trademark application for INESSY in classes 30 and 33 in Japan.
According to HENNESSY the mark applied for was too similar to a family of earlier registered trademarks HENNESSY in Japan. The argument for this was the fact that both signs used one and the same suffix NESSY. No other registered trademark in the country use the this suffix for the goods in class 33.
The company stressed the well-know character of its mark, in the field of Cognac production, which has been gained throughout the years around the world including in Japan.
The Japan Patent Office, however, disagreed dismissing the opposition in its entirety.
According to the Office, both sign were different from visual point of view because they start with different prefix – I and HEN.
From phonetic side, the marks were dissimilar too because they entire sounding was different thanks the the different prefix.
Both trademarks have no specific meaning for the consumers in the country.
Taking into account all of that, the Patent Office concluded that there is no risk for consumer confusion between the marks.