A clash between AB InBev and Constellation Brands over CORONA

Grupo Modelo, part of one of the biggest brewery in the world Anheuser-Busch InBev, has initiated a lawsuit against the US company Constellation Brands concerning the use of trademark CORONA.

As it is well-known, AB InBev took control over Grupo Modelo in 2013 including over the Corona brand, one of the most famous brands for beer in the world. Because of antitrust restrictions, however, AB InBev sold the US part of the Grupo Modelo business to Constellation Brands including the right for use of trademark CORONA for beer.

In 2020, Constellation launched its new product Corona Hard Seltzer that shortly took 6% market share.

According to Grupo Modelo, the fact that Constellation uses Corona for seltzer was against the license’s terms.

On the other hand, the US company stated that there was no violation of the agreement and the only reason for the lawsuit was an attempt by AB InBev to restrict its business as a competitor.

We are expecting to see what the result of this dispute will be. Nevertheless the case is indicative how important the precise wording and the scope of a trademark license agreement are. It is always recommendable all points to be discussed in-depth and carefully in order future misunderstanding to be avoided.

Source: Reuters.

Ariana Grande lost a trademark dispute in Japan

The company GrandAri Inc that manages Ariana Grande’s trademarks lost a dispute in Japan.

The case concerns a trademark application for ARIANNA filed by Arianna Co. Ltd for Class 3 – cosmetics, soaps, and detergents and Class 10 – medical apparatus.

GrandAri Inc filed an opposition against this application based on an earlier international trademark for ARIANA GRANDE for Class 3 – Perfume; eau de perfume; fragranced body care preparations, namely, body lotions, body scrubs.

According to the company, both marks were highly similar due to the element Ariana in the earlier mark which was dominant one. Because Ariana Grande was a celebrity its fans often call her just Ariana. Sometimes the merchandising products with its trademark were referred only as Ariana.

GrandAri Inc stated that the pop star was very famous in Japan because of which it was possible the consumers to be confused when it comes to the later mark ARIANNA. One letter difference was not enough to overcome this negative possibility.

The Japan Patent Office dismissed the opposition in its entirety. According to the Office, although Ariana Grande is very famous celebrity in the country, there were not sufficient evidence that her first name ARIANA served as a source of trade origin alone apart for the whole trademark Ariana Grande. The Office stressed the need trademarks to be evaluated in their entirety not only part of them.

From that perspective, the Office considered both signs dissimilar and not confusing for the consumers in Japan.

Source: Masaki MIKAMI – Marks IP Law Firm.

Brief IP news

  1. Does shiny black and coloured foil count? General Court partially annuls three decisions on the comparison of 3D Champagne bottle marks. For more information here.

2.  Copyright and game jams, hackathons and competitions. For more information here.

3.  IP protection strategies for AI: keep them secret or go for the patent? March 02, 2021. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here.

 

Amazon won a trademark dispute for BEVERLY HILLS POLO CLUB in the UK

Amazon won an interesting lawsuit in the UK. Lifestyle Equities accused Amazon of infringement of a trademark BEVERLY HILLS POLO CLUB owned by the company.

The reason for this accusation was the fact that products sold on amazon.com and their prices were been visible for consumers in the UK and EU as a whole.

As it is well-known, a trademark owner has the right to prohibit parallel import and sales of products labeled with a trademark in another country. The logic behind this is that the trademark owner has the right to determine its distribution and price policy for every country where its trademark is registered.

In the case at hand, products with the trademark BEVERLY HILLS POLO CLUB were sold through amazon.com in four main ways:

  • Amazon Exports-Retail – customers purchased products from amazon.com and they are delivered to the UK/EU;
  • FBA Export – third parties sell via amazon.com while Amazon manages everything related to the logistics and shipping;
  • MFN Export – third parties sell via amazon.com but Amazon does not handle the logistics;
  • Amazon Global Store – consumers on amazon.co.uk can access listings for products on amazon.com.

According to the Court there is no trademark infringement by Amazon.

In two of the options – FBA Export and MFN Export sales are done by the relevant sellers not Amazon itself.

In the rest of the options Amazon is not liable too. The reason for this is that Lifestyle Equities required from Amazon in 2018 to restrict any sales from amazon.com under the same brand in the UK and the EU. Amazon took the necessary technical measures and restricted the sales with some minor exceptions which the Court considered negligible.

The Court concluded that Amazon had no intention for such sales through amazon.com in Europe although the their price were visible for consumers in the EU.

In addition, the Court pointed out the Amazon’s Terms and Conditions according to which in case of purchasing through amazon.com the consumer is the ‘importer of record’ and gained title to the products in the US.

Source: RPC – Samuel Coppard and Matt Davies for Lexology.

New Balance won a $2.8 million lawsuit in China

The US sportswear company New Balance has won an important lawsuit in China related to its trademark.

The case at hand concerns the Chinese company New Barlun that uses the letter N on shoes. This letter is a New Balance well-know trademark all over the world. However, New Barlun succeeded to registered the sign first in China.

The US company initiated a lawsuit seeking invalidation of the mark based on a bad faith registration that took advantages of the New Balance’s trademark global reputation.

The court concurred with the US company finding bad faith approached by New Barlun, which was proven by the fact that the Chinese company failed to cease infringement despite the court issuing an interim injunction order.

The Court ordered $2.83 million in damages to New Balance for the trademark infringement. This is one of the biggest sum awarded by a Chinese court in case of trademark infringement in the field of sportswear.

Another indicative moment regarding this dispute is that trademark registration doesn’t mean a save harbor for the relevant applicant if the mark is registered in bad faith especially in light of worldwide well-known brands.

Source: WIPR.

A fight for Call of Duty: Modern Warfare’s “Mara” character

The photographer and writer Clayton Haugen has initiated a copyright lawsuit against the video maker Activision Blizzard.

The case and hand concerns the video game Call of Duty: Modern Warfare. According to Clayton Haugen one of the characters part of the game “Mara” is copied from a character called Cade Janus created by him.

In 2017, Haugen hired a model and took photos for the action character Cade Janus. Later on, Activisation hired the same model for a photo session for the game using similar makeup, style and clothes.

According to the photographer in that way the company copied his own character. Evidence for this was the fact that both the model and the makeup professional were required to sign non-disclosure agreements, which he believes was an attempt the video maker to conceal the copyright infringement, that is to say the they use elements and inspiration from the Cade Janus.

Clayton Haugen registered his photographs that cover his character in the US Copyright Office.

The dispute arise some interesting questions. For example, is using similar makeup, style and clothes can constitute copyright infringement of photographers that are taken by different photographers. In addition, to what extent there is a copyright infringement over the character itself.

Source: WIPR.

When can number 5 be crucial for an EU trademark?

The General Court of the European Union has ruled in case T‑ 639/19, Sánchez Romero Carvajal Jabugo, S. A. U v EUIPO.

The case concerns an attempt for registration of a European trademark for ‘5Ms MMMMM’ in class 29 – meat; poultry, not live; game; meat extracts; cured sausages; processed meat products; meat preserves; charcuterie.

Against this application an opposition was filed based on an earlier EU mark for ‘5J’ in class 29 – meat, fish, poultry and game; meat extracts.

The EUIPO upheld the opposition concluding that there is a risk the new mark to take unfair advantage of the reputation of the earlier mark.

The decision was appealed. The Board of Appeal overturned it, stating that there is no enough similarity between the signs despite the fact that they share identical goods. Visually and phonetically the similarity is low, whereas from a conceptual point of view there is no similarity at all.

The decision was appealed again. The General Court disagreed with the Board of Appeal’s findings. According to the Court there is a low level of visual similarity because of the different letters and figurative elements as a whole. However, there is an average phonetic similarity not low.

The signs share the number 5 placed at the beginning of their word elements, to which consumers generally pay greater attention and which plays a decisive part in the phonetic assessment of the marks. What’s more the pronunciation of number 5 is longer than the letter J or the combination MS.

The signs have a high degree of conceptual similarity because they both convey a common concept, namely that of the combination of a number and a letter, which is a consonant represented in capital
letter.

Based on this the Court annulled the Board of Appeal’s decision and upheld the opposition.

Source: Alicante news.