Intellectual property planet wishes you happy holidays!
Month: December 2020
“El Clasico” between Barcelona and Real Madrid can be a trademark in Japan
La Liga, the Spanish Football Federation, won a trademark dispute in Japan regarding its attempt to register the following trademark for Class 41 – sporting activities, production of sports events, sports information services, and other services:
The Japan Patent Office refused to register this sign based on absolute grounds – a lack of distinctive character.
As it is well-know, “El Clasico” is one of the most famous football matches in the world, between FC Real Madrid and FC Barcelona. Its history dates back to 1930s and through the years this match has become recognizable among football fens all around the world.
Based on this, the Patent Office considered that consumers will connect the sign with this particular match and from that point of view they can mistake its nature when used on service unrelated to the football match between these two teams.
In the appeal, however, the Board of Appeal overturned this decision, stating that the sign is distinctive enough and capable to be a trademark. According to the Board the consumers in Japan would not relate the sign directly with this match for the relevant services, at least because it is written in Spanish.
What’s more the Board didn’t find any facts that “El Clasico” was commonly used to represent a specific nature or quality in connection with the services for which the mark was applied for.
Why is copyright so important for every designer?
Many people are confused when it comes to copyright protection and why it is important.
To put it simply copyright protection is the bread and butter in case of doing business with creative works.
The reason for this is quite simple. When we talk about tangible products such as phones, clothes and even food, they can be controlled physically. In the case of intangible products, such as music, literature, art and graphic designs physical limitations don’t always exist.
In the age of the Internet and digital economy, everyone can access such works with copy and download much easier than in the case of physical goods. From that perspective copyright law represents a tool by which you can control who can use your creative works. This is crucial because without such protection everyone will be able to use them for free and the creators will not make a living out of them.
This is the main idea behind the copyright law as a whole, to serve as an incentive for every author to put efforts in the creation of new and original works against receiving an equitable remuneration.
Copyright is important for every graphic designer for two primary reasons.
First and foremost, copyright is a legal framework that protects the end product of the designer’s work against unauthorized use.
What I mean is that based on the copyright law every creative and original graphic design can be protected in a way that will allow its author to control its use, including commercial ones, and to prevent possible infringements.
The second reason is that copyright gives designers a ground for doing business with their products. That is to say copyright stipulates particular rules that allow business transactions with copyrighted works.
Copyright allows designers not only to protect their works against illegal use but to monetize them which in turn is a stimulus for the creation of new works.
If we have to summarize all benefits that copyright provides designers with we can say that:
- It gives legal protection over graphic designs;
- Designers can control who, how, when and where can use their works;
- Designers can claim authorship over their designs based on the law;
- Copyright provides rules for commercial exploitation of graphic designs;
- Copyright ensures that designers can make their living based on the created products;
- Copyright serves as an additional stimulus for the designers to continue doing their creative work in the future.
In case you are interested in how to protect graphic designs and licensing them to clients and users, you can subscribe to be notified for this upcoming Udemy course: Complete course on how to copyright graphic designs where you will learn all essential moments related to these topics as well as some tips how to create trouble-free designs.
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Not every slogan for milk can be a trademark in the EU
The Swedish company Oatly AB, which offers milk substitute products, failed to register a European trademark for “IT’S LIKE MILK BUT MADE FOR HUMANS” in classes: 18, 25, 29, 30, 32.
The EUIPO refused to register this sign based on absolute grounds – lack of a distinctive character. According to the Office this is a laudatory promotional slogan that cannot serve as a source of trade origin.
Oatly AB argued that this slogan is a kind of suggestive mark, which means that consumers have to think over it in order to understand its meaning, in this case a milk product that is substitute to the classic animal one.
The EUIPO dismissed this argument as unfounded. The Office considered the slogan as one with a direct meaning to the consumers which prevent it to be a real trademark sign.
This case is indicative how vague suggestive trademarks can be. Sometimes they can be registered sometimes not. In the case of Doublemint the registration was successful because the Court considered that consumers have to put an effort in order to find the real meaning of the world, that is to say what is single quantity of mint by itself in order to have double one.
Source: Marks & Clerk – Heather Williams for Lexology.
New fees for registration of trademarks in the USA
The United States Patent Office will collect new increased fees regarding registration of trademarks. Some of these new fees are as follow:
- For online trademark application an increase of the fee from $275 to $350 per class;
- For Declaration of Continued Use an increase of the fee from $125 to $225 per class;
- Extension of the time for filing oppositions, an increase from $100 to $200 for the initial 90-day request and from $200 to $400 for a final 60-day request;
- Filing a Notice of Opposition or Petition to Cancel, an increase from $400 to $600 per class;
More on Lexology;
In addition, WIPO announced new fees for international trademarks with designation of the USA. The new fees will take affect on 18.02.2021 and are as follow:
WhatsApp – problems in Norway
Facebook faced unexpected problems to register the following figurative trademark in Norway for its well-known app WhatsApp:
This mark was filed for the following Nice classes: software in Class 9, telecommunication services in Class 38, computer software in Class 42, and encryption and security services in Class 45.
The Norwegian Industrial Property Office refused registration for this sign based on absolute grounds: lack of distinctive character. According to the Office this sign representing a receiver is widespread used as indication for contacts which consumers can use to communicate with companies etc. It refers not only to phones, but to emails, chats and so on.
The decision was appealed. Facebook argued that this sign was very famous in Norway and what’s more the app itself was number one as a choice by the consumers in the country. The company submitted evidence in that regard.
The Board of Appeal wasn’t impressed and dismissed the evidence as insufficient. The reason was that in most of the submitted documents the sign above was been combined with the word part WhatsApp. According to the Board this was not enough in order acquired distinctiveness to be proved for the sign alone.
Source: AWA – Lars Platou for Lexology.
One key moment for every brand-building process
Trademark search is one of the most important parts of the brand-building process, although sometimes it is underestimated.
Most people think about brand building only as a marketing process where different marketing specialists develop a new brand name based on a variety of marketing requirements.
That’s true up to a point but it’s not the whole picture. Why?
Well, the brief answer is that a good brand name doesn’t mean automatically that you can use it without legal obstacles.
What do I mean?
Let’s say, for example, that we have a company that hires a brand-building agency to create a new brand name for its business. The agency does the job and delivers the required brand. From that point we have two possible scenarios:
- The company applies for a trademark before the local Patent Office and the brand is registered as a trademark without problems. However, another option here is the brand to fail registration because there are identical and similar trademarks for the same name that are already registered by other companies.
- The second scenario is if the company doesn’t care about the registration of a trademark in which case the company uses its brand seamlessly, relying on pure luck. In this case, however, it is possible for the company to be accused of a trademark infringement by an owner of a registered identical or similar trademark if such exist.
All of that can happen because there is no preliminary trademark search in the brand building stage which to show whether or not earlier registered trademark rights exist.
Although you can use your brand without registration as a trademark, sometimes this could be a risk because it can evoke potential legal conflicts. Even without such problems, the brand owner will be in a more difficult position to defend its brand against infringers in the future because of a lack of registration.
So taking into account these options, trademark search is a vital part of the brand-building process. If you implement such a search in every stage of the process, you will be able to avoid conflicts and reduce risk to your business. Such searches will “red flag” possible issues in the early stages of your business development, which will give you more time to react properly.
In case you are interested in learning how to do trademark searches on your own, check this new Udemy Complete course on trademark search, where you will learn how to implement it for the territories of the US, Canada, the UK, Ireland, Australia and New Zealand.