Belarus joins the Hague Agreement

WIPO reports about the accession of Belarus to the the Hague Agreement for international registration of industrial designs. In this way the participating Member States of the Hague system has become 66. The agreement will come into force for the country on April 19, 2021. After this date every owner of designs will be able to designate Belarus in its design applications.

For more information here.

The European Court stopped registration of ‘El Clasico’ as a trademark

The General Court of the European Union has ruled in case T-809/19  Nacional de Fútbol Profesional v EUIPO.

This dispute concerns an attempt for registration of the following European trademark in class 41:

The EUIPO issued a refusal based on absolute grounds – descriptiveness and lack of distinctive character.

As it is well-known among all football fans ‘El Clasico’ is a term used for matches between Real Madrid and Barcelona, two of the most famous football clubs in the world.

The decision was appealed.

According to the Court, the meaning of the phrase is for something classic, conventional or usual because of which it is not distinctive for the services in class 41. What’s more this is a term used for the above mentioned football match which is considered to be a classic sport event.

The Court dismissed all evidence for acquired distinctiveness. The fact that ‘El Clasico’ is very popular among football fans is not enough in order a distinctive character to be proved. There was no evidence that this term has served as a source of trade origin related to the services in class 41. The Court considered that there was no commercial link with the trademark applicant that was established by the sign.

Another interesting moment here is the fact that both clubs Real Madrid and Barcelona filed oppositions against this trademark based on their reputation as football clubs.

Recently there was a similar case with a trademark application for ‘El Clasico’ in Japan. Although the Patent Office initially refused the mark, the Board of Appeal allowed it stating that for the Japanese consumers the sign do not evoke strong associations with the football math. In addition the fact that it is written in foreign language contributes to its basic level of inherent distinctiveness.

Whether the new Super League will register successfully a trademark in the EU?

The news for the launch of the Super League was one of the biggest in the European football last week. It spurred a great debate and a lot of reactions most of which not so positive. Many football federations, including UEFA and FIFA as well as many football fans expressed their concerns about the new league formed by 12 of the biggest clubs in Europe: Arsenal, Chelsea, Liverpool, Man City, Manchester United, Tottenham, Real Madrid, Barcelona, Atletico Madrid, Juventus, Inter Milan and AC Milan.

Apart from the pure football aspects of the story, it is interesting to be noticed that there is now an application for the following European trademark in classes 3, 4, 5, 6, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 45:

The applicant is still not indicated but this representation of the mark is equal to what the founders of the new league have already announced.

A quick search in TMView database for Europe shows a lot of early registered trademarks for some of the above mentioned classes. For example:

International trademarks:

  • SUPER LEAGUE – № 1350297, Дата на заявката: 01/12/2016, Класове: 28, 41 
  • SUPER LEAGUE – № 1514680, Дата на заявката: 01/11/2019, Класове: 09, 18, 25, 28, 35, 38, 41

 Italian trademarks:

  • SUPER LEAGUE – № 2002901066715, Дата на заявката: 26/11/2002, Класове: 25 SUPERLEAGUE – № 2018000036641, Дата на заявката: 19/11/2018, Класове: 25, 28, 35, 41

 European trademarks:

  • SUPER LEAGUE – № 016389777, Дата на заявката: 21/02/2017, Класове: 9, 25, 28, 41
  • European Super League – № 017985567, Дата на заявката: 14/11/2018, Класове: 25, 41

Spanish trademarks:

  • European Super League – № M4091266, Дата на заявката: 29/10/2020, Класове: 41

It will be interesting whether the new trademark application will receive a successful registration or there will be oppositions against it from the owners of the earlier rights.

Another interesting issue could be to what extent Super League is a distinctive sign for some of the goods and services, in particular for organization of sport events.

Happy World Intellectual Property Day – 2021

Happy World Intellectual Property Day!

This year WIPO celebrates the day focusing our attention on the critical role of small and medium-sized enterprises for the economy and how they can benefit from intellectual property rights.

More information can be found here.

Marshmello  won a copyright lawsuit against DJ Arty

The well-known music producer and DJ Marshmello won a copyright lawsuit in the US regarding his track “Happier” created in collaboration with the pop band Bastille.

The lawsuit was initiated by the Russian DJ Arty who blamed Marshmello  on copyright infringement regarding his remix of a song by One Republic. According to Arty  apart from using the original song he added his own music elements in the remix, elements that were been used by Marshmello  in his track “Happier”.

The Court disagreed. The reason for this was the fact that Arty signed a contract with Interscope for the One Republic’s song remix according to which he disclaimed any ownership or financial interest related to the remix.

Arty ‘s position was that this concerned only the One Republic part of the remix but not the additional music elements.

The Court dismissed this claim stating that the contract covers the entire remix not only part of it. There was no exceptions under the contract provisions that could suggest the Arty obligations concerned only part of the final work.

Source: WIPR.

Michelin won a domain name dispute for michelin-wine.tokyo

One of the biggest tyre manufacturers in the world the French company Michelin won a domain name dispute before the WIPO Arbitration and Mediation Center.

The case concerns a registered domain for michelin-wine.tokyo by an individual in 2020. This domain was used for website that offered wine delivery in Japan with the following message: “Starred sommelier carefully selected wine delivery service Michelin Starred selection. We will deliver 2 bottles of hidden wine that has not arrived in Japan every month”.

An interesting fact is that the French company publishes the MICHELIN Guide, that was launched for the first time in 1920 as a trip guide for motorists helping them to plan their trips. Later this guide was stared to be used for awarding stars for fine dining establishments. Nowadays Michelin Stars are one of the most valuable recognition for every restaurant around the world.

The company own several Michelin trademarks for Japan in classes 8, 11, 16, 20, 21, 24, 26, 35, 36, 39, 40, 41, 42, 44 и 45.

Finding the newly registered domain, the company filed a complaint with the WIPO Arbitration and Mediation Center. According to Michelin this domain infringes the rights over the earlier trademarks, what’s more the domain includes these marks entirely in its composition. Taking into account the nature of the website under this domain name, it could create consumer confusion taking advantages of the Michelin longstanding reputation.

WIPO Arbitration agreed and ruled for the transfer of the domain name to the French company. According to WIPO:

The Complainant owns international and Japanese trademark registrations for MICHELIN. The disputed domain name consists of “michelin”, “-wine” and a new gTLD, “.tokyo”. The disputed domain name entirely incorporates the Complainant trademark MICHELIN.

In the disputed domain name, the part “michelin” naturally attracts Internet users’ attention, and it is clearly recognizable. Moreover, the addition of “-wine” does not prevent a finding of confusing similarity.

The Complainant has never authorized the Respondent to use and register its trademark, or to seek registration of any domain name incorporating the Complainant’s trademark. Nevertheless, the Respondent’s website offers wine delivery services with such a message as “Starred sommelier carefully selected wine delivery service Michelin Starred selection. We will deliver 2 bottles of hidden wine that has not arrived in Japan every month”. The Respondent’s use of the disputed domain name cannot be recognized as use in connection with a bona fide offering of goods or services.

The Respondent is an individual whose name is Mai Miyota. The Panel sees no similarity between the Respondent’s name and the disputed domain name. Therefore, the Panel finds that the Respondent has never been commonly known by the disputed domain name.

The Respondent’s website offers wine delivery services with the above mentioned confusing message, which would likely mislead consumers to recognize the Respondent’s website as somehow related to the Complainant. Therefore, the Panel finds that the Respondent does not make a legitimate noncommercial or fair use of the disputed domain name. Rather, it is clear to the Panel that the Respondent has intent for commercial gain to misleadingly divert consumers.

Considering that the Complainant is famous for its publication “MICHELIN Guide”, the disputed domain name is easily associated with the Complainant. The composition of the disputed domain name affirms the likelihood of confusion (as it includes the trademark MICHELIN in its entirety with the added term “wine”), because it is well-known that MICHELIN Guide awards stars for fine dining establishments, and fine dining establishments often offer wines. In the present case, even the gTLD, “tokyo” may strengthen the confusion because Tokyo is a destination of many MICHELIN Guide users, and the Internet users can perceive the disputed domain name as somehow associated to the Complainant.

Source: WIPO.