Can an EU trademark for hotel services be valid even in case the hotels are outside the Union?

The Board of Appeal of the EUIPO has ruled in an interesting dispute R 1264/2020-1 between Kerzner International Limited and BINTER CARGO, S.L.

This case concerns trademark ATLANTIS registered in 2008 for classes 16, 28, 36, 41, 43 и 44. In short the goods and services are related to tourist agencies and hotel accommodation.

In 2018 an application for revocation was filed by BINTER CARGO for non-use of the mark. After examining the submitted evidence for trademark use, the EUIPO decided for revocation of the mark for all goods and services with exception of arranging accommodation in tourist centers; travel agency services for hotel reservations; accommodation reservations and restaurant bookings in class 43.

According to the Cancelation Division there is no genuine use of the mark for restaurant and hotel services in case where EU consumers have to go outside the Union in order to benefit from them. In the case at hand the trademark owner offer hotel survives under the mark in Dubai and Bahamas.

This decision was appealed.

The Board of Appeal disagreed with Cancelation Division’s approach to the issue and annulled this decision for the services in class 43.

According to the Board, what is important in this case is not the place where services are supplied, but the place where the trademark is used for those services. That is to say where the trademark owner offers these survives pursuing a market share with the registered mark. What’s more advertisement and marketing activities with the mark on the territory of the EU is considered a type of trademark use too.

The Board confirmed the decision for rest of the goods in the application because although they could be offered by the trademark owner in its hotels there were no evidence that the EU consumers purchased them.

Source: D Young & Co LLP – Agnieszka Stephenson for Lexology.

Advertisement

Madrid System Online Services will not be accessible for several days

WIPO reports about the fact that some of the Madrid system online services will not be accessible between 09 and 11.07.2021. This happens due to scheduled maintenance of the system. In particular the services that will be disconnected are:

When is Zoom not confusingly similar to Zoom?

The General Court of the European Union has ruled in case T‑204/20 Zoom KK v Facetec, Inc. This case is indicative for trademark conflicts where almost identical signs cannot be confusingly similar for consumers.

Facetec, Inc. filed an application for a word European trademark ZOOM in class 9: Computer application software for mobile phones, smartphones, portable media players, handheld computers, and tablets, namely, security software that allows users to secure and access their mobile devices through multi-dimensional facial recognition identification.

Against this application an opposition was filed by the Japanese company Zoom KK based on the following two earlier marks:

  • A word mark ZOOM in classes 9 and 15;
  • A combined mark in classes 9 and 15:

The opponent proved a genuine use of the earlier marks for the following goods: in the case of the combined mark for portable recorders; magnetic compact discs, [records]; rhythm machines, drum machines; and sound processors, effect processors and their parts’ in Class 9 and for the goods ‘multi-track recorders, multi-effect apparatus, rhythm machines, guitar effects consoles and pedals, bass effects pedals, acoustic effects pedals, guitar effect processors’ in Class 15 and, in the case of the word mark for ‘portable recorders’ in Class 9.

The EUIPO dismissed the opposition. According to the Office despite the fact that both signs are visually, phonetically and conceptually similar they cannot be confusingly similar as a whole for the consumers in the EU.

The reasons for this are three:

  1. First of all the goods in the earlier marks are related to editing and changing sounds while recording music whereas those in the later mark target identification of a person accessing a mobile device such as a smartphone. This means that the target audiences are different;
  2. The level of consumer attention related to these goods is high due to their specifics. This lower the chance for confusion even in case of similar signs.
  3. The distinctive character of the word ZOOM is low for the English speakers in the EU. This word has a meaning that can relate to musical sounds.

The General Court upheld this decision in its entirity.

This case is intriguing because shows clearly how important is all trademark protection requirements to be taken into consideration in the brand building process. Sometimes it is really tempting the selected brand name to have a meaning related to a particular goods or services. Although this can be a great idea form marketing point of view it can create a lot of troubles when it comes to trademark protection because it can reduces its the scope significantly.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Miley Cyrus won a lawsuit in the EU regarding her name

The General Court of the European Union has ruled in case T‑368/20 Smiley Miley, Inc. v Cyrus Trademarks Ltd. This dispute started with a European trademark application for MILEY CYRUS in classes  9, 16, 28, 41 filed by Smiley Miley Inc. , a company owned by the famous pop singer Miley Cyrus.

Against this application an opposition was filed by Cyrus Trademarks Ltd based on the following earlier trademark for classes 9 and 20:

The EUIPO upheld partially the opposition concluding that both signs are confusingly similar. The reason for this was the fact that Cyrus was not common name and can be perceived as a short name for Miley Cyrus. In addition, earlier mark was included in its entirety in the later one with the presence of similar goods and services.

The decision was appealed.

The General Court disagreed with EUIPO and overturned the decision. According to the Court every mark has to be assessed in its entirety. From that perspective it is highly likely most of people to associate the mark applied for with the famous singer due to her global reputation.

Accordingly, the Board of Appeal erred in finding that the name of the famous American singer and actress, Miley Cyrus, of which the mark applied for consists, has no conceptual meaning.

As regards, next, the earlier mark CYRUS, it must be held that, contrary to what EUIPO claims, the fact that the name Cyrus is not a common surname does not necessarily support the inference, in the present case, that the relevant public will perceive that surname alone as the short version of the full name Miley Cyrus, thus identifying the same person. As has been stated in paragraph 37 above, Miley Cyrus markets her activities and performs on stage using her first name and surname taken together. By contrast, it has been neither suggested nor demonstrated that she has been known as a singer or actress by her surname alone. It is thus apparent that the fact that Miley Cyrus is well known, as a singer and actress, results from her first name and surname taken together, and not from her surname alone. Accordingly, the mere fact that that name is not common does not support the inference that the relevant public will perceive the word ‘cyrus’, taken alone, as referring to the famous singer and actress Miley Cyrus, who, according to the evidence before the Court, has specifically never used the name Cyrus in isolation in the course of her career. It must therefore be held that the earlier mark has no particular semantic meaning for the relevant public.

It thus follows from the foregoing considerations that the applicant is correct in claiming that the marks at issue are conceptually different and that the Board of Appeal erred in finding that the conceptual comparison was neutral.

That is the case here. The mark applied for, MILEY CYRUS, has a clear and specific semantic content for the relevant public given that it refers to a public figure of international reputation, known by most well-informed, reasonably observant and circumspect persons, as has been pointed out in paragraph 51 above, whereas the earlier mark has no particular semantic meaning. Furthermore, the reputation of the singer and actress Miley Cyrus is such that it is not plausible to consider that, in the absence of specific evidence to the contrary, the average consumer, confronted with the mark MILEY CYRUS designating the goods and services in question, will disregard the meaning of that sign as referring to the name of the famous singer and actress and perceive it principally as a mark, among other marks, of such goods and services (see, to that effect, judgment of 17 September 2020, EUIPO v Messi Cuccittini, C‑449/18 P and C‑474/18 P, not published, EU:C:2020:722, paragraph 36).

It follows that the conceptual differences existing in the present case between the marks at issue are such as to counteract the visual and phonetic similarities set out.

This is another decision of the European Court that gives priority to the reputation of a celebrity in case of trademark similarity assessment. Recently there was a similar case with Lionel Messi and his European trademark.