Huawei lost a trademark dispute in the UK

Huawei filed a trademark application in the UK for ‘Mind Studio’ in classes 9 and 42 – software development tools, computer software platforms for mobile devices, computer software management services, and the development of software applications.

Against this application an opposition was filed by the education company Minds Studio based on an early registered European trademark for Minds Studio in clauses 41 and 42 – design services; IT services; science and technology services; and testing, authentication, and quality control.

According to the Chinese company there was no similarity between the goods and services of both signs because they target different consumer groups.

The Patent Office disagreed. First of all, the Office considered both marks as highly similar almost identical. The difference of only one letter “s” at the end of the first word is not enough to overcome this conclusion.

As to the goods and services, the Office consider them similar and identical. They target the same consumers, distribution and trade channels.

In light of this it is possible a confusion to arise in the consumer mind regarding both signs. The opposition was upheld in its entirety.

Source: WIPR.

A slogan for milk can be an EU trademark at the end of the day

The General Court of the European Union has ruled in case T‑253/20, Oatly AB v EUIPO. This blog has a previous post on this dispute for registration of a European trademark  “IT’S LIKE MILK BUT MADE FOR HUMANS” in classes: 18, 25, 29, 30, 32.

The EUIPO refused to register this slogan based on absolute grounds – lack of distinctive character. According to the Office this was a laudatory promotional slogan that cannot serve as a source of trade origin. The first part IT’S LIKE MILK suggests that the product is a milk substitute whereas the second part BUT MADE FOR HUMANS that the product is for human consumption.

This decision was appealed by Oatly AB.

The General Court overturned the EUIPO’s conclusion stating it was wrong. The main argument was the fact that this slogan can have two meanings. The first one is what the Office came up with the product can be perceived as a milk substitute for human consumption. The second one, however, conveys the idea that milk itself is not suitable for human consumption.

As a result, consumers have to put additional efforts to discover this meaning. From that perspective the mark has the minimum degree of distinctive character required by EU trademark law , that is to say it can serve as a trademark.

As we mentioned in our last post on this topic, registration of suggestive marks can be quite a tricky process. Sometimes these marks can be accepted whereas on other refused.

That’s why it is crucial before filing an application, for the relevant applicant to determine what are the chances for successful registration of such marks and are there any hidden arguments that can help in necessary.


Graffiti artist Futura sues The North Face for a copyright infringement

Graffiti artist Futura initiated a lawsuit for copyright infringement against the fashion company The North Face.

According to the artist, whose real name is Leonard McGurr, the company launched an advertising campaign that uses a logo which is similar to the following graphic design created by him:

The North Face’s logo design is:

Leonard McGurr stated that the company didn’t ask for permission to include his work in its advertisements. As evidence that The North Face was using his design he pointed out the fact that they use a trademark Futurelight that associates with his artistic name Futura.

In the lawsuit, initiated in California, US, Leonard McGurr is seeking an injunction as well as “exemplary or punitive damages”.

Source: WIPR.

Crocs’ footwear with trademark problems in Sweden

In 2018 Crocs Inc. filed the following three-dimensional trademark in Sweden for class 25 – footwear:

Initially the Patent Office refused to register this mark on absolute grounds. Crocs submitted evidence for acquired distinctiveness which resulted in a successful registration.

The Swedish discount store ÖoB was selling similar products between 2014 and 2019.

Because of this Crocs Inc. initiated a lawsuit proceeding for trademark infringement. As a counter attack ÖoB asked for invalidation claiming that the Crocs’ trademark was not distinctive, it consists exclusively of a shape, which resulted from the nature of the goods themselves and a shape necessary to obtain a technical result.

The Swedish Patent and Market Court dismissed the claim for trademark infringement and invalidated the Crocs’ mark. The arguments for this decision was that the mark represents a footwear with the following characteristics 1) holes on the top 2) holes on each side 3) the heel strap 4) flat rivets, and 5) wide toe-area. Every of these characteristic could be attributed to the basic functions and properties of this type of footwear. It therefore concluded that the shape of the mark was the result from the nature of the goods themselves and the shape of goods was also necessary to obtain a technical result because the holes provides a better ventilation and enabled water to drain out.

The decision was appealed.

The Swedish Patent and Market Court of Appeal disagreed with the Court of first instance. According to the court the shape of such a footwear can be designed in different ways not only in that particular. The size, holes and overall design can be accomplished in many different ways. Because of this it cannot be assumed that the shape is a result from the nature of the goods.

The court considered that ventilation and draining a water out, in the particular case, can not be views as a technical function.

Nevertheless, the Court invalidated the Croc’s mark based on a lack of distinctive character. According to the Court, the evidence for acquired secondary meaning provided by Crocs mainly show significant sales figures but there is no information on how exactly consumers perceived the shape of the product and whether this perception is related to a sign of trade origin.

The Court considered the market survey from 2008 provided by the company as insufficient. The respondents in this survey associated the footwear with “Foppatoffeln” a name that is related to the hockey player Peter Forsberg who suffered from a heel injury, prompting him to wear the Crocs footwear on TV and in other public contexts. Only 7% of them related the product shape with Crocs as manufacturer while 46% suggested that the footwear could originate by any manufacturer. The survey didn’t include an option for an answer “do not know”, which ruined its credibility up to a point.

The advertisement campaigns with this footwear included the Crocs name and the depiction of crocodile too. The Court considered this as another evidence that consumers perceived the shape as a product characteristic not as a trademark.

Source: IPKat.

Decathlon lost a dispute with a Greek company before the EU Court

The General Court of the European Union has ruled in a dispute between Decathlon  and the Greek company Athlon Custom Sportswear.

Athlon filed an application in 2016 for the following EU trademark in classes 25 (clothing and hats) and 28 (sporting articles and equipment):

Against this application an opposition was filed by Decathlon based on an earlier EU trademark DECATHLON for the same classes of goods.

The EUIPO upheld the opposition in its entirety considering both signs as confusingly similar.

The decision was appealed before the Board of Appeal and the trademark application was limited only to class 25 (athletic clothes and hats). The Board annulled the previous decision stating that there was no enough similarity between the marks.

Decathlon appealed but the General Court upheld the Board’s position.

According to the Court, although there is some phonetic and conceptual similarity this is not enough the marks to be considered confusingly similar.

The reason is that the common element for both signs ATHLON means “contest” in Greek, which can be associated with a sport competition. What’s more Athlon is a commonly used suffix in English in relation to athletic events. On the other hand, Decathlon means a competition in which athletes compete in various sporting events.

Because of that both signs have a low distinctive character. From that point of view, the assessment has to focus on the entire impression created by the signs, which in this case cannot lead to a conclusion for similarity. A low distinctive character cannot be monopolize in the same why as a distinctive sign because everyone has to have the right to use it in the relevant area.

The evidence produced by Decathlon for acquired secondary meaning of their trademark was dismissed by the Court as insufficient.

This case is a good example about the widespread attempt by many companies to use low distinctive elements as trademarks. Although this could sound great from marketing point of view because the brand communicates a particular meaning to the consumers, from legal point of view such sign are either difficult to be protected or at least they have limited scope of protection that does not allow competitors to be restricted to use similar marks too.

Source: IPKat.

The US Congress creates a new path for copyright enforcement

The United States Congress created a Copyright Claims Board through The Consolidated Appropriations Act signed by Donald Trump in December last year.

The Copyright Claims Board will be a part of the US Copyright Office and will deal with copyright infringement claims, claims seeking a declaration of no infringement, certain claims arising under the notice and takedown provisions of the DMCA, and related defenses and counterclaims.

The Board will be a substitute for Court proceedings in such cases, and will be able to award damages up to 30 000 dollars and up to 5000 dollars for Attorneys’ fees.

The Copyright Claims Board will have three “Copyright Claims Officers” who will be appointed by the Librarian of Congress.

The procedure before the Board will be completely voluntary which means that the parties against whom an action is brought will have 60 days to “opt out”. In such cases the copyright holder has to bring the case to federal court.

The Board’s decision can be appealed before the US Copyright Office and in some limited cases before the court.

According to the supporters of this new option, it will allow small copyright owners to defend their rights without the need to go to court where the procedure is more expensive and time-consuming.

Some critics, however, consider this proceeding as not completely effective because it denies certain due process rights and the opt-out option can prevent the dispute to be initiated at all.

Source: Mintz – Seth A. Davidson for Lexology.

Mercedes won a trademark dispute in Japan

Daimler AG filed an application for the following trademark in class 12 – parts for vehicles for locomotion by land, air, water or rail:

The Japan Patent Office refuse to register this mark based on a similarity with an earlier trademark for STAR- PARTS in class 35 – retail services or wholesale services for automobiles, parts, and accessories.

The German company appealed and as a result won the dispute. According to the Board of Appeal both marks were not similar. The reason for this was the fact that STARPARTS is not a dominant element in the later trademark. The leading element was the words Mercedes-Benz, a well-know brand for German luxury cars with a long history.

Although this seems like a real success for Daimler AG now, what will be the result in the future taking into account that the earlier mark STAR-PARTS is registered for spare parts for vehicles among others. This is a scenario, for example, where the earlier mark is not so famous but can become such one as a result of the Daimler use of their own combined mark in the market.

Source: Masaki MIKAMI – Marks IP Law Firm