Puma prevailed over Ruma in a trademark dispute

Puma won one interesting trademark opposition in Finland. The case concerns a trademark application for RUMA in classes 25 and 28 (clothes and toys among others).

Against this application an opposition was filed by Puma based on early registered trademark for PUMA in the same classes.

The Finish Patent and Registration Office dismissed the opposition considering the two marks as not confusingly similar. The reasons were the different first leters and the conceptual dissimilarity.

The decision was appealed. The Court upheld it after which the decision was applied again.

The Supreme Administrative Court overturned the decision finding both marks visually similar despite the first letters that are different. According to the Court  the letters P and R are similar in appearance.

The Court questioned whether consumers would understand directly the meaning of PUMA as a word. Even if this was the case PUMA was distinctive for all the goods in classes 25 and 28. What’s more because of its reputation it has even stronger distinctive character. The interesting part here was the fact that the Court concluded on the existence of PUMA’s trademark reputation without submitted evidence in the proceeding.

According to the Court, when it comes to clothes they are often sold in stores where consumers choose between them mostly based on their visual aspects and not so based on conceptual or phonetic characteristics.

Taking all of this, the Court considered that both marks are similar enough.

Source: Johanna Säteri, Jenni Ihalainen – Berggren Oy. 

Fight against video game cloning – is it possible?

The video game industry has become one of the most successful and attractive recently.

All of this means that game developers start to consider this as a business model with all positive and negative aspects. One of the key moments when it comes to doing business is the return on investments. This means to earn more than you need to invest in your business in order for it to be viable.

From that perspective protecting video games against all sorts of infringements is absolutely crucial for every game developer. And although such protection is possible in case of direct and clear infringements, things can become much more difficult when it comes to game cloning.

Ewa Nagy (Wardyński & Partners) wrote one interesting article for Lexology on that topic. You can find it here.

According to the article:

Cloning in the game development industry means creating video games similar to games that have already gained popularity in the market. But clones are not exact copies of their originals. Therefore, it is hard to accuse them of plagiarism, which would be an obvious infringement of the copyright to the original game. Clones deliberately avoid imitating the original 1:1 but take over selected elements of the original.

Ewa discussed the way how developers can fight against such bad-faith practices. One of the ways is using copyright law. However, this is not possible all of the time because copyright protects the end work not the idea behind it. Everyone can use the same idea expressing it in a different way. The only chance for game developers in this case is when the cloning game can be perceived as a derivative work of the original game. This means that the original game can be recognized in the clone one.

Another way is to rely on industrial design, where you can register different visual elements of a game as industrial designs. To do this, however, these elements have to be new and original.

Game developers can rely on the law against unfair competition or passing off in some countries. This means that if someone tries to imitate a game in order to profit based on another game developer efforts and investments, in this case, a lawsuit can be initiated in order for such practice to be banned by the court.

In addition to this, I would add some other layers of protection that can be sought.

For example, trademark protection for some of the game’s elements. Game developers can protect the main characters from the game as figurative trademarks. This can be a powerful tool because trademarks protection covers not only identical signs but similar too, that is to say if someone tries to imitate the character a registered trademark can be of help.

It is a good approach the game title to be registered as trademarks for the same reason.

In addition to that the game’s title has to be registered as domain names, what’s more, some variations of the domain name have to be registered in order to limit the available options for registration of similar domains by competitors.

In conclusion, I would say that video game production requires a good intellectual property strategy early on in order for the investments to be protected as much as possible.

Chanel lost a dispute against Huawei in the EU

The General Court of the European Union has ruled in case  T-44/20 Chanel v Huawei Technologies which targets an issue with figurative trademarks.

The case concerns the following European trademark application in class 9 filed by Huawei:

Against this mark an opposition was filed by Chanel based on the following earlier French trademark in class 9:

In addition, the company claimed a trademark with reputation for the following another French trademark registered for dissimilar goods:

The EUIPO dismissed the opposition founding both signs as not confusingly similar. The fact that they share two connected elements in circle is not enough in order confusion to be established. What’s more both mark are completely dissimilar from conceptual point of view.

The decision was appealed. According to Chanel these marks were similar at least to low degree as they are applied for and to an average to high degree when the Huawei trademark was rotated by 90 degrees.

The Court disagreed reminding that a trademark comparison has to take into account the way signs are applied for not the way how they will be used after that. The Court considered both marks as not similar. They have connected elements but in different arrangements – one in horizontal and another in vertical. In addition, conceptually they are different. The later mark can be perceived as the letter H while the earlier marks can be viewed as letters C.

Starbucks lost a trademark dispute against Bull Pulu in Japan

An interesting case from Japan where Starbucks challenged a local company in a trademark dispute.

The Japanese beverage chain Bull Pulu Corporation filed the following trademark in classes 29, 30, 43:

Against this trademark an opposition was filed by the US coffee chain Starbucks based on the following earlier trademark in classes 18, 25, 30, 43:

The Patent Office dismissed the opposition finding both signs as not similar. The decision was appealed.

For Starbucks both marks were confusingly similar because the later mark uses the same green outer ring with latters in white color. The company submitted evidence to support its position including a consumer survey, according to which 80% of the respondents in Japan associated the green outer ring and words written in white with Starbucks as a company.

The Court dismissed the appeal in its entirety. According to the Court both signs were dissimilar and could not create a consumer confusion. The green outer ring has only decorative, design function. What matters for the similarity assessment of the marks is their word parts and in the case at hand they are completely different: Bull Pulu Tapioca v Starbucks Coffee.

The Court considered the consumer survey as misleading because the respondents were shown a blurred image of the Starbuck’s trademark in a way that they could discern the mark itself.

Source: Wisdom International Patent & Law Office for Lexology.

Be careful what brand you want to create – an EU Court decision

Sometimes the brand-building process and protection of trademarks could create tension between the marketing experts and intellectual property specialists.

The reason for this is the fact that the former want, in some cases, their brand to have a particular meaning associating with the relevant goods and services. Although this sounds tempting it can create a lot of problems when it comes to trademark registration.

One example in that regard is a case before the General Court of the European Union Case T‑48/20, Sahaj Marg Spirituality Foundation v EUIPO.

This case concerns an international trademark for HEARTFULNESS, designating the EU, in the following classes:

  • Class 16: ‘Printed matter; instructional and teaching materials’;
  • Class 41: ‘Education; providing of training and cultural activities’;
  • Class 45: ‘Consultancy services in spirituality’.

The EUIPO refused registration of this mark based on absolute grounds – lack of distinctive character and descriptiveness. According to the Office the term HEARTFULNESS describes a particular meditation technique which means that consumers will perceive its meaning directly in relation to the above goods and services. The Board of Appeal upheld this position too.

The applicant appealed arguing that HEARTFULNESS was newly created word by the company in order to describe a particular relaxation and meditation technique. The purpose was consumers to link this technique with the applicant only.

The Court dismissed the appeal. The fact that one term is newly created doesn’t mean that it can be registered as a trademark automatically. If the term describes the goods and services which it will be used for, it cannot serve as a source of trade origin.

According to the Court, in the case at hand HEARTFULNESS is a descriptive term for a relaxation and meditation technique. An additional argument for this was a book titled The Heartfulness Way.

All in all this means that if you create a term that speaks for the goods and services branded with it, it is highly likely this term not to be registered as a trademark.

Is cheese close to restaurant services?

The protective Foundation for Halloumi Cheese won an interesting lawsuit before the General Court of the European Union.

The case T‑555/19 concerns an application for European trademark for GRILLOUMI filed by the Swedish company Fontana Food AB in class 43 – services for providing food and drink; coffee shop services; restaurants.

The Foundation filed an opposition based on an earlier collective European trademark for Halloumi  in class 29 – cheese.

The EUIPO dismissed the opposition. Although the Office acknowledged that it is possible the goods from class 29 to be complementary to the services in class 43, this wasn’t proved for cheese in particular.

The Court disagreed and annulled this decision. According to the-case law goods and services may be complementary if they share close connection, that is to say one is indispensable or important for the use of the other.

According to the court:

As is apparent from the case-law of the Court, it must be stated that the goods in Class 29, inter alia, cheese, are necessarily used in the serving of food and drink, with the result that those goods and those services are complementary. First, cheese may be offered to the clientele of many restaurants, or even of coffee shops, by being incorporated as an ingredient in dishes that are intended to be sold on the premises or to be taken away. Secondly, cheese, without being processed as an ingredient, may be sold as it is to consumers, in particular in restaurants in which the activity is not confined to the preparation and serving of cooked dishes, but also consists of selling food which is intended to be consumed away from the place in which it is sold. Such goods are therefore used in
and offered by means of services for providing food and drink, restaurant services or coffee-shop services. Those goods are consequently closely connected with those services.

Based on this the Court found cheese as a complementary good to the above mentioned services in class 43.

Source:  Meyer-Dulheuer MD Legal Patentanwälte PartG mbB