Sony won a trademark dispute against SONICODE in Japan

Sony Corporation hadn’t given up and won a trademark dispute in Japan. The case concerns a trademark SONICODE filed by Field System Inc. for classes 9, 38 and 41.

Against this mark an opposition was filed by Sony based on early registered trademarks SONY for the similar goods and services.

The Japan Patent Office dismissed the opposition finding both marks as dissimilar. Three years later Sony filed a request for invalidation. This is possible according to the law in Japan.

The ground was that because of the serious reputation trademarks SONY have consumers would discover easily the SONI part in the later mark as similar to SONY. What’s more this was particularly possible in the light of the fact that the second part CODE is not so distinctive.

To support their arguments SONY gave an example with voice assistants offered by Google, Apple, Microsoft and Amazon. When someone ask for SONICODE the first information those assistants provide is for SONY.

This time, the Patent Office upheld the Sony’s position and invalidate the SONICODE mark. According to the office, consumers can spot easily the SONI part in the later mark and connect it with the earlier SONY trademarks from visual and phonetic point of view. One of the reason for this, apart from the high reputation that SONY has, is the fact that consumers can perceive the later mark as consisting of two words SONI and CODE.

Source: Masaki MIKAMI (Marks IP Law Firm)

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OATLY lost a trademark dispute in the UK

The popular Swedish plant milk manufacturer OATLY lost a trademark dispute in the UK.

The case concerns a trademark application for PUREOATY for oat milk products filed by the family farm Glebe Farm.

Against this mark an opposition was filed by Swinish company based on several earlier marks OATLY for the same goods.

This case stirred up a lot of of negative comments for the company which was accused that of being bigger tries to block a smaller market competitor as the trademark applicant.

The Court dismissed the opposition in its entirety. Although finding some low level of similarity, the Court consider that from phonetic, visual and conceptual point of view both signs were not similar enough in order to create consumer confusion. The element PURE in the later mark was sufficient to overcome any possibility for such thing.

According to the Court, the common part OAT is descriptive for the relevant products and has not power to contribute to the potential similarity.

The claim that the mark tries to take unfair advantages from the established reputation of the earlier marks was dismissed too.

The claim for passing-off didn’t success either. The Court didn’t find any misrepresentation or misleading action by the Glebe Farm when using their PUREOATY mark.

This case is indicative how tricky could be a company to rely entirely or partially on descriptive terms for its trademarks. The Swedish company was successful before the EU Court regarding its slogan “It’s like milk but made for humans”  but in this new case failed. In addition, every attempt for monopolizing descriptive terms can cause negative public reaction that can even threaten the company’s sales. So managing such disputes can be really difficult. That’s why all of this has to be taken into account in the brand building strategy.

Source: Kilburn & Strode LLP – Ruby Vinsome за Lexology.

A new trademark database for some Andean countries is available

The EUIPO launched a new trademark database called CAN TMView that covers four Andean countries – Bolivia, Colombia, Ecuador and Peru.

The new trademark database, which is similar to the TMView database, will give access to more than 1.3 million trademarks in those for countries which population exceed 111 million people.

This is a good news for every trademark practitioner that has interest in registration of trademarks for these countries. The database is easy to use and will help a lot for conducting preliminary trademark searches and building appropriate trademark strategies.

For more information here.

Aldi lost a trademark dispute before the General Court of the EU

The General Court of the European Union has ruled in case  T-527/20 Aldi v EUIPO.

Registration of European trademarks can be challenging sometimes. This is due not only because trademark protection in the EU has two levels – national and community but because there are linguistic and cultural differences between the Member States.

One example about such situation is an attempt by Aldi to register the following EU figurative trademark in classes 29 and 30:

The EUIPO refused to register this sign on absolute grounds – descriptiveness, Art. 7(1)(c) of Regulation (EU) 2017/1001.

The practice for protection of EU trademarks states that when one sign is descriptive for consumers even from one part of the Union, the sign will be refused.

In the case at hand, CUCINA means kitchen for the Italian speaking people. The fact that the same mark is registered and well-known in Germany cannot overcome this conclusion.

According to Aldi, the word is not descriptive because it indicates only the place where food dished are prepared. What’s more the mark consists of combination with graphics which is enough to create the necessary distinctiveness.

The EUIPO disagreed. The graphic representation was not distinctive too because the image looks like a cooking pot. A combination between two not distinctive or descriptive elements cannot turn the sign to be distinctive as a whole.

The decision was upheld by the General Court.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

One photographer, one video and copyright problems regarding embedded content from Instagram

The well-known photographer Paul Nicklen won a copyright lawsuit in the US.

The case at hand concerns a dramatic video clip of starving polar bears created by the photographer and uploaded on Facebook and Instagram in 2017.

Without any permission from Paul Nicklen or National Geographic, Sinclair Broadcasting Group embedded this video through a link from Instagram. What’s more they take a screenshot from the video for its cover image.

A lawsuit followed. According to the Sinclair Broadcasting Group there was no infringement because they didn’t used or displayed the video on they website. They just used an embedded link from Instagram, that is to say the video was stored on another server.

According to the law in the US, most precisely the so-called “server rule” online displays or performances of copyrighted content accomplished through “in-line” or “framing” hyperlinks do not trigger the exclusive rights of public display or performance unless the linker also possesses a copy of the underlying work.

The court in New York disagreed with these arguments. The court stressed that the law is technology-neutral and is “concerned not with how a work is shown, but that a work is shown.”

The main problem from that point of view was the fact that although the video was embedded, the screenshot was taken separately and uploaded on the Sinclair Broadcasting Group website, which allowed their visitors to see one part of the video without playing it based on the link to Instagram. This constitutes a copyright infringement because displaying even a part of one work can be done based on permission from the copyright holders.

Other social media such as YouTube and Vimeo have already included an option where creators can choose whether or not their uploaded content to be embedded. For the time being, Facebook and Instagram haven’t done that which can trigger new lawsuits for copyright infringements in the future.

Source: PetaPixel.

Mary Poppins can be a trademark not related to Disney?

One interesting dispute from Japan that focuses on the relation between films titles, famous characters and registered trademarks.

The Japanese company Mary Poppins Inc., which provides babysitting services, registered successfully in 2014 a word mark for MARY POPPINS in class 45.

Everything had been cloudless until 2019 when Disney intervened filing an application for invalidation. The grounds were that the mark in question takes unfair advantages from the well-known and famous movie “Mary Poppins” and its main character. In that way the mark could be associated with Disney as a company. What’s more this could be against public order or morality, and  could cause confusion with Disney’s well-known goods or services and its famous earlier trademarks.

The Patent Office, however, disagreed with these claims. Although the Office acknowledged the presence of reputation and popularity of the film and character “Mary Poppins”, it concluded that there is no violation of the trademark law.

The fact that Disney has used “Mary Poppins” for merchandising products in its stores does not show clearly that this use was as a source of trade origin. That is to say “Mary Poppins” wasn’t use as a brand for particular products or services but only in connection with the name and character from the movie. From that point of view, the Office concluded that there was unlikely consumers in the country to associate the registered mark with Disney as a company.

Source: Masaki MIKAMI, Mark IP Law.

KFC Japan won a hot trademark dispute

One interesting and a really hot trademark dispute in Japan has come to an end recently. Kentucky Fried Chicken Japan filed the following trademark application for RED HOT written in Japanese Katakana character:

The mark covered variety of goods in classes 29 and 30, including meat but with exception of seasonings and spices.

Against this mark an application was filed by the US company  French’s Food Company LLC based on the following earlier two marks for class 30 – seasonings and spices:

According to the US company, its marks had reputation in Japan for these goods and because of it there was a likelihood of confusion between the signs.

That wasn’t the opinion of the Patent Office, however. The opposition was dismissed in its entirety. The argument for this was the fact that seasonings and spices are not similar to the rest of the products in classes 29 and 30.

When it comes to the reputation of the earlier marks, the Office wasn’t convinced entirely. The fact that the mark was popular among specific dining restaurants  in the country is not enough a strong reputation to be established.

What’s more the presence of the distinctive work FRANK’S created the necessary distinguishing feature between the signs at hand.

Source: Masaki MIKAMI, Marks IP Law Firm.