Louis Vuitton lost a trademark dispute in the EU for the abbreviations LV and NL

EUIPO has ruled recently in a dispute where Louis Vuitton tried to defend its famous abbreviation LV in the EU.

The case at hand concerns an application by one individual for the following figurative European trademarks in classes 25 and 26:

Against this application, an opposition was filed by Louis Vuitton based on the following earlier mark for the same classes of goods:

According to the company, both signs were confusingly similar for identical and similar goods especially in the light of the reputation attached to Louis Vuitton’s famous abbreviation.

Surprisingly or not so, the EUIPO dismissed the opposition finding the marks dissimilar.

According to the Office:

In the present case, the goods assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention varies from average to above average, bearing in mind that part of the goods concerned have a rather specialised nature and that they can have an impact on the final products manufactured by the users, and consequently on the users’ business.

The Office found that both signs share only L as a common letter in the abbreviations in common stylization while the other letters were different which was stressed by the presence of the words  LOVES VITTORIO too.

The Office concluded that:

The signs are visually and aurally similar to a very low degree and conceptually not similar.

This is not sufficient to lead to a likelihood of confusion, especially considering that the other letter is different (‘V/N’) and the quite remarkable presence of additional words in the contested sign. As already introduced above, the mere use of a similar stylisation, in presence of different elements of the signs, is not sufficient to lead the relevant public to think that the goods at issue can originate from the same or a economically linked undertaking. In fact, it is to be noted that consumers when encountering a fanciful stylisation of a verbal element tend to find the easiest way to address it and, based on their common knowledge and previous experience of the market, will tend to perceive a sign beyond its stylisation as a string of letters forming a verbal element. Therefore, despite their stylisation, the relevant public will be able to perceive immediately the letters ‘LV’ (or ‘VL’) in the earlier mark and ‘NL’ (or ‘LN’) in the contested sign. As explained above, the earlier mark is a short mark and the fact that it has only one letter in common with the first two letters of the contested sign is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs: the signs are not sufficiently similar to lead to a likelihood of confusion.

The EUIPO dismissed the claimed reputation of the earlier mark because Louis Vuitton hadn’t submitted the necessary evidence for that purpose in the prescribed term.

Source: TFL.

Samsung lost an opposition against FUNKY GALAXY in Japan

KING Entertainment Co., Ltd filed in 2019 an application for trademark „Funky Galaxy“ in Japan for Nice classes: 9 (telecommunication machines and apparatus; personal digital assistants; smartphones; electronic machines, and apparatus and their parts.), 16, 35, and 41.

One of the biggest smartphone manufacturers in the world Samsung filed an opposition against this application based on several earlier marks for GALAXY in classes  9, 35 и 41.

According to the company, both signs were confusingly similar especially in the light of the fact that Samsung’s Galaxy phones were some of the most well-sold phones in Japan.

The Patent Office, however, dismissed the opposition in its entirety. Although the Office acknowledged Samsung’s reputation for its Galaxy brand in the country, it found both signs as dissimilar from a phonetic and visual point of view due to the first element in the mark applied for FUNKY.

Conceptually both marks were not similar too because the latter sign has no specific meaning for the consumers in the country while the earlier marks are related to the term Galaxy as a huge space of stars and planets.

Source: Masaki MIKAMI – Marks IP Law Firm.

Lidl won a dispute over lidl-de.website

The well-known German retailer Lidl won a domain name dispute before the WIPO Arbitration and Mediation Center.

The case concerns a registered domain name for lidl-de.website by an individual. The domain hadn’t been used before the arbitration procedure with exception of a period when there was a website offering a survey dedicated to Lidl and redirecting to third parties websites.

The German company initiated a complaint wanting transfer of the domain to the company because of bad faith registration. In order for such a procedure to be successful the following cumulative factors are necessary:

(i) the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Lidl submitted many early registered trademarks such as:

– German registration No. 2006134 for LIDL registered on 11 November, 1991;
– German registration No. 30009606 for LIDL registered on 9 March, 2000;
– European Union registration No. 001779784 for 

logo

 registered on 12 November, 2001;
– European Union registration No. 001778679 for LIDL registered on 22 August, 2002;
– European Union registration No. 013192752 for 

logo

 registered on 27 February, 2015;
– International registration No. 748064 for LIDL registered on 26 July, 2000;
– International registration No. 974355 for LIDL registered on 9 May, 2008;

In addition, the company added a family of registered domain names that include lidl.

WIPO concluded that the domain name in dispute is confusingly similar to the earlier trademarks because they are included in the domain entirely. The rest of the domain elements .de and .website are generic and descriptive and are not able to create a difference.

According to Arbitrage, the domain registrant has no legitimate interest to use it because it associates with the business and geographical origin of Lidl as a company.

The domain was registered in bad faith because the registrant was aware of Lidl’s business taking advantage of its reputation.

Source: WIPO.

Can a phrase with the hashtag #darferdas be a valid trademark in Germany?

Is it possible for the hashtag phrase “#darferdas?”, which means “can he really do that#, to represent a valid trademark.

This case has come to an end recently after a decision by the German Federal Patent Court. The dispute has the following background:

AS applied to the German Patent Office for registration of the sign comprising the hashtag #darferdas? as a trademark in respect of goods in Class 25 – ‘Clothing, in particular, tee-shirts; footwear; headgear.’

The Patent Office rejected the application, since the sign at issue was, in its view, devoid of any distinctive character within the meaning of Paragraph 8(2)(1) of the Law on the protection of trademarks and other distinctive signs.

AS brought an action against that decision before the Federal Patents Court, Germany.

By order of 3 May 2017, that court dismissed the action. It held that the sign at issue represented a sequence of characters and words joined together essentially composed of common German words. It was merely a stylised presentation of a discussion point. The hashtag indicated solely that the public is invited to discuss the question ‘Darf er das?’ (‘Can he do that?’). The public would understand that question — placed, inter alia, on the front of tee-shirts — for what it is, namely a simple interrogative phrase.

AS brought an appeal against that decision before the Federal Court of Justice, Germany.

According to the referring court, it cannot be excluded that the use of the sign at issue on the front of clothing is one amongst several types of use. That sign could also be placed on the label sewn on the inside of garments. In that case, the public could perceive that sign as a mark, that is to say, as an indication of the commercial origin of the goods.

The referring court states that it is clear from its own case law that, in order for a sign to be regarded as having a distinctive character and, consequently, being eligible for registration as a mark, it is not necessary that every conceivable use of that sign be used as a mark. It is sufficient that use be plausible and there be practically significant possibilities of using the sign applied for in the case of the goods and services in respect of which protection is claimed in such a way that it is easily understood by the public as a trademark.

That court considers that that approach could be reconciled with paragraph 55 of the order of 26 April 2012, Deichmann v OHIM (C‑307/11 P, not published, EU:C:2012:254), according to which Article 7(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) could not be interpreted as requiring the Office for the Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) to extend its examination, based on the facts, of distinctive character to uses of the mark applied for other than that recognised as the most likely.

However, harboring doubts in that connection, the Federal Court of Justice decided to stay the proceedings and to refer the following question on Article 3(1)(b) of Directive 2008/95 to the Court for a preliminary ruling:

‘Does a sign have distinctive character when there are in practice significant and plausible possibilities for it to be used as an indication of origin in respect of goods or services, even if this is not the most likely form of use of the sign?’

The European Court ruled that:

Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trademarks must be interpreted as meaning that in examining the distinctive character of a sign in respect of which registration as a trademark is sought, all the relevant facts and circumstances must be taken into account, including all the likely types of use of the mark applied for. The latter corresponds, in the absence of other indications, to the types of use which, in the light of the customs in the economic sector concerned, can be practically significant.

Based on this the German Federal Patent Court has reconsidered its earlier position on the matter finding this time that #darferdas? can function as a trademark because it can be applied to sewn-in labels of clothing where traditionally trademarks are placed. From that perspective, consumers can perceive the sign as a mark.

Source: Michaela Ring, Adam Lai-Chieh Wan (Hoffmann Eitle) – Kluwer IP Law.

GAP lost a trademark dispute in Japan

The US worldwide clothing and accessories retailer GAP lost a trademark opposition against an application for word mark GAPACE in class 25 – clothes.

According to GAP this new trademark was confusingly similar to earlier trademarks GAP owned by the company. What’s more, GAP has a high level of reputation amongst consumers in Japan.

The Japan Patent Office, however, disagreed and dismissed the opposition in its entirety.

According to the Office, the claimed reputation wasn’t properly proved. The fact that GAP had been operating in Japan since 1994 managing 150 stores wasn’t enough in order to be concluded that the mark was popular.

When it comes to the signs themselves, the Office found them completely dissimilar from the visual and phonetic points of view.

Conceptually there is no similarity too because while GAPACE has no particular meaning, the word GAP can be interpreted as “separation in space”.

Based on this the Office reached a conclusion that both marks were different and not confusingly similar for the opposition to be upheld successfully.

Jamaica joins the Madrid Protocol for international registration of trademarks

WIPO reports about the accession of Jamaica to the Madrid Protocol for international registration of trademarks.

The Protocol will come into force for the country on 27.03.2022, a date after which Jamaica can be designated on the international application of trademarks.

This is the 110th Member State of the Protocol which facilitates significantly registration of trademarks around the world because applicants have to file only a single application designating as many countries Member States as they wish.