A Lego toy or a real gun – that’s the question

We are all aware about toys in the form of guns used by kids for playing. However, it is rare a real gun in the form of toy to be found, a dangerous product which can cause a harm if used by children.

This is the case with the gun cover produced by the US company Culper Precision. They offer a gun cover (Block 19) in the form of a Lego toy, using the well-know design pattern typical for this type of toys. The gun under the cover is real.

Of course the Danish company sent a cease and desist letter insisting sales of such covers to be stopped immediately due to the potential misleading effect on children and possible dangerous incidents that can happen as a result.

Although Culper Precision didn’t infringe a registered trademark belonging to Lego, they used a style typical for Legos’ toys, which could mislead consumers about the product characteristics.

The US company agreed to stop producing this cover after selling 20 items of it. It will be interesting whether Lego will initiate a lawsuit for passing off for example.

Source: EAGLEGATE – Nicole Murdoch

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A Danish hit against the football Super League

As it is already well-known the so-called Super League failed to emerge in the football world after serious critics from fens, football authorities and even politicians. And although the league is now only a dream for some of the involved clubs, problems regarding it continue. This blog mentioned some time ago that the organizers of this new project filed the following European trademark for 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:

We predicted that this trademark application could have oppositions based on earlier marks for Super League. However, our search missed catching some of the variations of this mark. And one of these earlier variations emerged on the scene with full force.

The Danish Football Federation filed an opposition against the above mentioned Super League mark on the ground of the following two marks:

–   – № VR 2009 01457, Filing date: 02/04/2009

– SUPERLIGA – № VR 2001 00163, Filing date: 10/08/2000

Both of the marks are registered in class 41: creating and organizing sports activities, including sports events, all related to football.

A list of evidence was added to the opposition showing how these marks are used in the market. In other words SUPERLIGA is the name of the Danish national football championship which was founded under this name in 1991.

The Danish Federation has one European trademark for SUPERLIGA too which, however, was not mentioned in the opposition.

It is interesting what the result of this dispute will be. At first glance, the mark applied for and the earlier signs are similar enough at least from phonetic and conceptual point of view. What’s more they cover similar and identical services.

The key moment here can be to what extent Super League is a distinctive sign. Our research shows that this name is used for other championships too, for instance the Serbian one is called Superliga. In addition the Polish handball championship has the same name, registered as a combined Polish trademark for sport competitions.

Having said all of that, the question is why such a name should be selected for a trademark as a whole. Yes, on one hand it is logical for sport tournaments, but from another, if the organizers want to license this mark, to sell merchandising etc., it should be distinctive enough, otherwise its protection and enforcement could be difficult at least at the start without secondary acquired reputation.

Do you know how to protect your intellectual property?

Intellectual property rights have existed for centuries being a strong incentive for business development.

The idea behind the intellectual property is that when you have a monopoly right over an invention, design, creative work, or trademark, you will be able to return the investment necessary for their creation.

On the other hand, all your competitors being restricted to use the same invention, design or trademark will try to offer something better in order to prevail on the market.

Of course, this monopoly right is not unlimited. Intellectual property can give you control over your creative works but under strict requirements and time frames.

Having said that, I’ve created some Udemy courses that can help you to understand some of the most important aspects of intellectual property rights that have practical importance for your business activities.

If you would like you can check them:

1. Complete course on trademark search — in this course you will learn how to search for trademarks in the US, Canada, the UK, Ireland, Australia, and New Zealand. This will help you to select a trouble-free brand for your business avoiding potential legal conflicts.
2. A complete guide on how to build an IP database using Asana — you will learn how to build your own database with all your intellectual property rights. This can happen using a free app such as Asana. In this way, you can monitor and manage your IPRs easily saving time and money.
3. Photography and Copyright: Complete guide for photographers — if you are a photographer or someone dealing with photos this course is for you. It will teach you what is copyright protection over photographs and how to deal with it.
4. Complete course on how to copyright graphic designs — this course will help graphic designers how to protect their graphic designs and do business with them following the copyright norms.
5. The Complete Course on How to Protect European Trademarks — in case you do or want to do business in the European Union obtaining trademark protection can be crucial for your business. In this course, you will learn what the EU trademarks are and how to register them on your own.

Thanks for your interest!

Beverage can opening sound cannot be an EU trademark

The General Court of the European Union has ruled in case  T‑668/19 Ardagh Metal Beverage Holdings GmbH & Co. KG v EUIPO.

This is probably the first case where the EU Court gives its opinion on the distinctive character of sound marks.

The dispute started when Ardagh Metal Beverage Holdings filed a sound EU trademark for classes  6, 29, 30, 32, 33.

This mark represents a tingling sound of beverage can opening, you can hear it here.

The EUIPO refused registration on absolute grounds – lack of distinctive character.

According to the Office the criteria for assessment were similar to those for three-dimensional trademarks. From that perspective, the sound was characterized with “extraordinary simplicity” and “everydayness”.

What’s more, consumers could understand it only after purchasing not before that which meant that it could not be an initiative for such a purchase.

The General Court disagreed with two of the reasons stated by the EUIPO on the matter.

First of all, according to the Court any analogy with requirements related to three-dimensional trademarks is incorrect. Every word or sound mark can consist of a sign that exists independently of the product appearance.

The Court ruled out another of the EUIPO arguments for the refusal too. The fact that a sign can be perceived by consumers after the purchase doesn’t mean that it is not a reason for such a purchase put it simply.

At the end, however, the Court upheld the EUIPO position that the sound at hand cannot be a trademark because it is not distinctive. According to the Court this sound is very similar to classical sounds that beverages make when opened. From that point of view it cannot serve as a source of trade origin.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Instagram won a domain name dispute against instagam.nl.

The well-known social-media Instagram part of Facebook won a domain name dispute. The case filed before the WIPO Arbitration and Mediation Center regards a third party registered domain name for instagam.nl.

Instagram pointed out that this domain is confusingly similar to its registered trademarks INSTAGRAM insofar the difference is only one letter R.

According to the US company, the Respondent had no rights to or legitimate interests in the domain name. This domain was used to point to a webpage entitled “Instagam” under which it was stated: “Allways online / stay connected”. Below the title, the website displayed graphics containing the camera logos of Complainant. The website contained three hyperlinks, including a hyperlink resolving to a page which was headed “instagam IGTV: Watch Instagram Videos”. However, none of the hyperlinks enabled the viewing of videos of Complainant.

The Respondent didn’t use the domain for any goods and services in a fair trade way. 

Instagram asserts that the domain name has been registered and is being used in bad faith. Bearing in mind that INSTAGRAM trademark is distinctive and well known throughout the world, Respondent could not reasonably argue that it did not have knowledge of it at the time of registration of the domain.

The WIPO Arbitration upheld all Instagram claims and transferred the domain name.

Source: WIPO.

What are European trademarks and how to protect them?

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Many people know that European Union is a political and economic Union between 27 Member States. However not so many people are aware of what European trademarks are and why their protection is so important for every business operating in the EU.

In this article, I will try to give some clarification in that regard.

In general, European trademark protection has two layers. The first one covers the national trademarks in every Member State, for example, a German trademark, a French trademark etc. Many companies own such trademarks but they are suitable for situations where these companies operate only in the relevant country.

However the European Union is a Common market, that is to say, you can trade freely in every country part of it without any customs.

Because of this, the EU legislation created a second layer of trademark protection – the European trademarks that cover the territory of all EU Member States.

The reason why these marks are important for every company is that there is no need for separate trademark applications in every country. You can file only one application paying only one Patent Office fee and you will have a trademark valid in all 27 States.

This is crucial because it will allow you to enter the EU with your own registered brand while saving time and money.

But why entering the EU is so essential from a business point of view?

In a nutshell, this is the biggest and most lucrative trade and political union in the world with a population of almost 500 million people and annual GDP of 15 trillion dollars in 2020, representing around 1/6 of the global economy.

If you do business in the EU or you consider doing that in the future, entering this market with a brand requires good preparation. The reason on one hand is that without a registered trademark, your brand can be copied from other competitors and your options for legal defense will be more limited.

On other hand, as a general rule of thumb, every trademark is valid only for the territory where it is registered. This means that if you have a registration for your brand name only in your country when you enter the EU without preparation, you may face legal conflicts with owners of earlier already registered identical or similar marks in Europe. Bear in mind that there are millions of registered marks in the EU.

To escape such negative consequences you need to know how and to what extent your trademark can be protected in the EU in advance.

I will give you one simple example. Let’s say we have a US company entering the EU market for sports shoes with a brand that is registered in the US only.

The fact that this company has a US mark doesn’t mean that this protection will cover European Union automatically. The company needs to file trademark applications for every single country where it wants to operate. For the EU this can happen based on one application that will cover the entire Union instead of filing 27 separate applications for every country

What are the risks if the company skips this step and starts using its brand without initial checking what is the situation and without filing a trademark application?

Well, there are two main possibilities that can occur:

1. The First one is to start using the relevant brand without any issues, that is to say, no one else has a similar mark for shoes in the EU. You would think that this solves all problems. Not at all. Even without initial conflicts if you miss registering a trademark for your brand it is possible for someone else to copy your brand and to register it for the same products. Bear in mind that in the EU trademark protection arises based on a registration in contrast with the US where it arises based on the real market use. If this scenario happens, you will need to go through complex legal procedures in order to protect your brand name if this is possible at all because sometimes the conflicting mark can be registered in good faith.
2. The second option is for the company to face legal conflicts with owners of already registered similar marks immediately. This will mean that not only the company won’t be able to register its trademark but it can be treated as a trademark infringer and its business in the EU can be jeopardised.

Because of all of this, it is quite important in case you want to operate in the EU to do your homework in advance, which means to conduct a preliminary trademark search whether there are earlier similar marks and to file a trademark application in time.

In case you want to learn more, including how to register a European trademark on your own, check this new Udemy course: The Complete Course on How to Protect European Trademarks.

In this course, you will learn the most essential moments related to European trademarks protection, including

• What can be registered as a European trademark?
• How does this protection arise?
• What is the difference between a European trademark and a national trademark in a single EU Member State?
• What are the requirements for protection?
• What is the procedure for registration?
• How can you register an EU trademark?
• For how long will this protection be valid?
• What will cost you to register such a trademark?
• And some rules on how to maintain this protection in the time.

Ferrari lost a trademark dispute in Japan regarding its famous prancing horse

Masaki MIKAMI ( Marks IP Law Firm) reports about an interesting trademark dispute in Japan that includes a black horse and the mythological Pegasus.

The Japanese company CLOVER HOLDING Co. Ltd filed an application for the following trademark in class 12 – automobiles and its structural parts and accessories:

Against this application an opposition was filed by the well-known sport cars manufacturer Ferrari based on the following earlier figurative trademark in class 12:

According to the Italian company both signs were confusingly similar taking into account the long history of the Ferrari’s famous logo and its high level of recognition amongst consumers.

The Patent Office agreed that Ferrari’s trademark has a strong reputation in the market. Despite that fact, however, the Office dismissed the opposition in its entirety.

The reason was that both sign were not similar from visual, phonetic and conceptual point of view. In the later mark there is a white image of flying Pegasus whereas the earlier sign includes a black horse. What’s more the word parts in the mark applied for create additional difference.

From that perspective it was highly unlikely consumers to be confused between both trademarks even though they were for one and the same class of goods.