Square failed to register CASH APP as an EU trademark

The General Court of the European Union has ruled in case T‑211/20 Square, Inc. v EUIPO.

The US company Square, which recently has been rebranded as Block Inc., filed the following combined European trademark for class 36 – Electronic transfer of financial instruments for others:

The EUIPO refused to register this sign on absolute grounds – Articles 7(1)(b) and (c) of Regulation 2017/1001 on the basis that the sign: (i) lacked distinctive character; and/or (ii) was potentially descriptive of the goods applied for.

According to the Office, the target consumers consist of professionalists (financial experts) and non-professional public (ordinary consumers), who are observant and discerning.

Taking into account the mark’s elements and the word part CASH APP, the Office concluded that consumers would perceive it as an application for transfer of money, that is to say, a sign that describes the service that is used for.

The decision was appealed. According to Square, the EUIPO made significant errors when assessing the sign applied for in relation to the service in class 36. Another point for the appeal was the fact that not every European knows English as a language. In addition, the same mark was successfully registered in the UK.

The Court dismissed the appeal in its entirety. According to the Court, the EUIPO assessment of the sign was correct and the sign is not distinctive in order to be a trademark.

The Court reminded that it is enough for the sign to be descriptive only in one language in the EU in order to be refused on that ground.

The fact that the same sign was registered in the UK was irrelevant because the EU legislation is independent especially in the light of Brexit.

The case is interesting when it comes to brand building strategy of different companies around the world. In this case, Square is one of the biggest fintech companies in the US but nevertheless, they preferred to select a name for their app that is quite ordinary and generic. Many other companies used similar descriptions for their services too. So the use of such names is not efficient when it comes to marketing purposes and trademark protection because such signs are just not distinctive enough. Of course, this can be changed if the sign acquires a secondary meaning which, however, will require more time and investment.

MONET DESIGN cannot be a trademark in Japan because of Claude Monet

Trademarks for names of famous historical persons can be really challenging for protection.

This was the case of a trademark application for the following sign in Japan for classes 16, 20, 25, 27, 35, 41, 42, and 45:

Against this application, an opposition was filed by the French organization ACADEMIE DES BEAUX-ARTS, owner of an international trademark for “CLAUDE MONET”.

The gound was article 4(1)(vii) of the Trademark Law in Japan which prohibits registration of signs likely to cause damage to the social and public interest and disrupt the order of fair competition. This covers the registration of names of popular or historical persons if some requirements are met.

According to the Japan Patent Office consumers in the country will recognize the word MONET in the mark applied for as one related to the famous French painter Claude Monet. ACADEMIE DES BEAUX-ARTS manages actively the property and paintings of Claude Monet which represents a cultural heritage for entire France.

From that perspective, the opposition was upheld.

Source:  Masaki Mikami – Marks IP Law Firm.

Monster Energy failed to prove that energy drinks with coffee can relate to two classes of the Nice classification

One interesting dispute before the General Court of the European Union has been solved recently.

The joined cases T-758/20 и T-759/20 focus our attention on an attempt by Frito Lay to revoke a European trademark ‘MONSTER’ № 009492158, owned by Monster Energy for classes 5, 29, 30, and 33, due to lack of genuine use for a period of five consecutive years.

Monster Energy’s diffensive strategy was to claim that their trademark was used for two classes 30 and 32. The reason for this was one of their products X-PRESSO MONSTER that combines coffee and energy drinks.

The General Court wasn’t impressed at all. The Court confired the general rule for classification where one finished product can be classify only in one Nice class. The only exception here could be if the product is a composite one.

Monster claimed that their product is a multi-purpose composite thing, but the Court disagreed.

A composite product can be such one that is sold as a whole but its components have separate market value and purpose.

The fact that the offered product combines coffee flavour and energy drink doesn’t mean that it is a separate cofee drink as a whole. On the contrary, by its nature this is an energy drink and the flavour cannot change this conclusion.

Consequently, as correctly pointed out by EUIPO and the intervener, coffee-based beverages and energy drinks have different natures and do not fulfil the same main function. The former are characterised by the presence of coffee, whereas the latter include and combine a number of ingredients and coffee or coffee flavouring is given only a secondary role. Consumers are aware of those differences, which are, moreover, reinforced by the applicant’s communications and promotion with regard to the ‘x-presso monster’ goods, as is illustrated by various items of evidence in the case file, including the witness statement of its director or the applicant’s annual report for the year 2020, which highlight the energy content represented by those goods.

Furthermore, as is pointed out by the intervener and as is apparent from a number of the items of evidence which the applicant provided, it is established, as regards the ‘current market conditions for energy drinks’ referred to by the Board of Appeal (see the first contested decision, paragraph 45, and the second contested decision, paragraph 30), that energy drinks flavoured with coffee are usually found on the same shelves as energy drinks with other flavours, whether they are the applicant’s or those of other manufacturers. Consumers do not perceive any difference in function or purpose between the various flavours of energy drinks, whether they are coffee flavoured, cherry flavoured, kiwi fruit flavoured, chewing-gum flavoured or mango flavoured. All of those drinks fulfil the same function, namely that of providing an energy boost.

Based on this the Court dismissed the appeal.

Sony lost a GT trademark race in the EU

The European Court has ruled in the case T‑463/20, Sony Interactive Entertainment Europe Ltd v Wai Leong Wong, which focuses our attention on the role of stylized elements in the process of trademarks comparison.

In 2017, Mr. Wai Leong Wong file an application for EU trademark GT RACING for class 18: ‘Leather and imitations of leather and goods made of these materials (not included in other classes) namely leather bags, cases, holdalls, rucksacks, wallets, purses, luggage and suitcases; bags; sports bags; trunks and travelling bags; vanity cases; holdalls, back packs and rucksacks; wallets, key cases, purses and pouches; credit card cases, business card cases; tote bags, bottle bags, record bags, book bags; handbags; shopping bags; cases, luggage and suitcases, weekend bags; briefcases; umbrellas and walking sticks; golf umbrellas; parts, fittings and accessories for all the aforesaid goods’.

Against this application, SONY filed an opposition based on the following earlier rights:

  • A figurative EU mark No 820738 for classes 9, 16, 28:
  • A word EU mark for GRAN TURISMO NETWORK, No 2261873 for classes 9, 16, 28, 41 и 42
  • A combined EU mark No 12340981 for classes 9, 16, 28 и 41:
  • A combined EU mark  No 12341061 for classes 9, 16, 28 и 41:
  • Unregistered EU trademarks for the above signs used in ralation to different goods and services for video gaming.

According to the EUIPO the cited earlier trademarks are not similar to the mark applied for. Most of the word parts in these trademarks are completely different. When it comes to the element GT, the Office considered that it is not similar to the figurative trademark No 820738 because there is no phonetic, visual, and conceptual similarity.

The reason for this conclusion is that the earlier mark is stylized in such a way that requires from consumers a serious imagination in order to discover the letters GT. Most likely most consumers will recognize this sign only as an abstract and unitary shape

The European Court upheld this decision in its entirety.

Malaysia joins DesignView

The Intellectual Property Corporation of Malaysia (MyIPO) has added its national designs to the global database for industrial designs DesignView.

In that way, new 39 000 designs will be available through DesignView which gives access to more than 18 million designs.

All of this means that IP practitioners and business owners now will be able to search for registered designs in Malaysia easily saving time and money while building appropriate design strategies for this country.

Patent attorney’s fees and legal expenses – an opinion by the Advocate General of the EU Court

The Advocate General of the European Court M. CAMPOS SÁNCHEZ-BORDONA has issued an opinion on the case C‑531/20 NovaText GmbH срещу Ruprecht-Karls-Universität Heidelberg.

This dispute has the following background:

The Ruprecht-Karls-Universität Heidelberg (‘the University’) brought an action before the (Regional Court, Mannheim, Germany against NovaText GmbH for an order that the latter cease and desist from the infringement of the University’s EU trade marks and acknowledge the University’s rights in relation to those marks.

The University’s legal representative noted in the application that assistance had been provided by a patent attorney.

The proceedings concluded when the parties reached a written settlement, pursuant to Paragraph 278(6) of the Law on civil procedure. On 23 May 2017, the first-instance court made the settlement order.

On the same date, the first-instance court set the value of the dispute at EUR 50 000 and ordered NovaText to pay the costs of the proceedings. The appeal brought by NovaText against that decision was dismissed.

By order of 8 December 2017, the first-instance court set the amount of costs to be reimbursed by NovaText to the University at EUR 10 528.95. Of that sum, EUR 4 867.70 were for the assistance of the patent attorney in the proceedings at first instance and EUR 325.46 were for that patent attorney’s work in the appeal proceedings against the order as to costs.

NovaText appealed to the Higher Regional Court, Karlsruhe, Germany, seeking the annulment of the decision as to costs in so far as it had been ordered to bear the costs relating to the involvement of the patent attorney.

The appeal court dismissed NovaText’s appeal on the following grounds:

–   Since the dispute relates to trade marks and signs, it is not possible under Paragraph 140(3) of the MarkenG to determine whether the patent attorney’s assistance was necessary for the purpose of obtaining the legal remedy sought or whether that patent attorney provided a service which ‘added value’ to that provided by the lawyer instructed by the University.

–  Paragraph 140(3) of the MarkenG cannot be interpreted in a manner consistent with Articles 3(1) and 14 of Directive 2004/48 in order to verify whether the involvement of the patent attorney was necessary.

–   That paragraph does not infringe the general principle of equality laid down in Paragraph 3(1) of the German Basic Law either.

An appeal on a point of law was lodged against the appellate decision before the Federal Court of Justice. After explaining the prevailing interpretation of Paragraph 140(3) of the MarkenG, that court deduces from the judgment in United Video Properties that that provision may be incompatible with Articles 3(1) and 14 of Directive 2004/48, in conjunction with recital 17 thereof.

In the referring court’s view, the automatic imposition on the unsuccessful party of the requirement to reimburse the cost of a patent attorney’s assistance, regardless of whether that assistance was necessary, creates difficulties on three levels:

–  First, the reimbursement of costs relating to the work of a patent attorney whose involvement is not necessary for the purposes of obtaining the legal remedy sought might be excessively costly, thereby infringing Article 3(1) of Directive 2004/48.

–  Second, the reimbursement of such costs might not be proportionate, within the meaning of Article 14 of Directive 2004/48, if the assistance provided by the patent attorney is not directly and closely linked to the action seeking to have a trade mark right upheld.

–  Third, Article 14 of Directive 2004/48 requires the court responsible for making the order as to costs to examine the specific circumstances of the case (judgment in United Video Properties, paragraph 23). Reimbursement of the patent attorney’s costs, regardless of whether or not the patent attorney’s involvement was necessary for the purpose of obtaining the legal remedy sought, does not take adequate account of the specific characteristics of the particular case.

Against that background, the Bundesgerichtshof (Federal Court of Justice) has referred the following question to the Court of Justice for a preliminary ruling:

‘Are Article 3(1) and Article 14 of Directive 2004/48/EC to be interpreted as precluding national legislation imposing an obligation on the unsuccessful party to reimburse the costs incurred by the successful party for assistance by a patent attorney in judicial proceedings concerning trade marks, whether or not the patent attorney’s assistance was necessary for the purpose of appropriate legal action?’

The Advocate General’s opinion:

‘Articles 3 and 14 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights are to be interpreted as precluding national legislation imposing an obligation on the unsuccessful party to reimburse the costs incurred by the successful party for assistance by a patent attorney in judicial proceedings concerning trademarks, whether or not the patent attorney’s assistance was necessary in order to obtain the legal remedy sought.’