To be Apple or not to be – a trademark dispute in Japan

Masaki Mikami has published another interesting trademark dispute from Japan this time focusing our attention on the question – To be an apple or not to be.

In the case at hand, we have the following already registered figurative trademark in class 9 – protection covers and cases for smartphones, protection covers and cases for tablets, cases for laptops:

Apple Inc, filed an application for invalidation of the mark based on its following earlier figurative mark in class 9, for which an acquired reputation was claimed:

The Japan Patent Office acknowledged that Apple’s mark has a strong reputation amongst Japanese consumers.

Nevertheless, the Office dismissed the invalidation request finding both signs not confusingly similar.

From a visual point of view, the marks were not similar enough even if the later sign was rotated 90 degrees to the left. According to the Office, the sign does not create the same impression due to some details and overall appearance.

The phonetical comparison was not possible because both signs had no particular sound.

Conceptually, the earlier sign relates to Apple as a company and technology products and services whereas the latter mark has no specific meaning.

Based on this the Office concluded that there is no similarity and from that perspective any reason for invalidation.

Source: Masaki Mikami – Marks IP Law Firm.

The General Court confirmed that Moon Boot cannot be a 3D trademark in the EU

Not long ago this blog posted an article about the problems of the Italian company Tecnica Group S.p.A. to defend its European three-dimensional trademark in class 25: Clothing, footwear, headgear; footwear soles; insoles; heelpieces for footwear; footwear uppers:

This mark was invalidated by the EUIPO based on absolute grounds – lack of distinctive character.

The Office considers the “L” shape of the boots as a traditional one, which is not so different from the general shape of boots.

Tecnica Group stated that their sign is recognized as a trademark with a reputation in Italy but the EUIPO reminded that this decision was not binding for the Office’s practice.

The General Court of the European Union dismissed the appeal confirming the EUIPO decision.

The Court reminded that there is a difference between proved reputation and proved distinctiveness. While in the first case the trademark owner can prove reputation only for a significant part of the EU, in the case of acquired distinctiveness this must happen for the entire Union.

In the case of Tecnica Group S.p., they didn’t claim such distinctiveness earlier in the procedure.

Based on this the Court found the shape of the boot as not significantly departing from the industry norms for these types of products. What’s more, there were many similar or even identical boots on the market.

Source: Kluwer IP Law

European trademark applications hit a record

The EUIPO reports a serious increase in the number of applications for European trademarks in 2021 compared with 2022. The growth is 12%.

The top countries where the applications come from are China, Germany, and the USA.

The most popular Nice class in the applications is class 9 – software, apparatus, and instruments for scientific or research purposes, audiovisual and information technology equipment, as well as safety and life-saving equipment.

More than 20 000 oppositions were filed against new trademark applications in 2021 which represents an increase of 6.5%. This shows how important a preliminary trademark clearance search is in order for such oppositions to be avoided.

In general, these rising activities show the importance and attractiveness of the European Union as a place for doing business. On the other hand, all of this indicates the high level of competitiveness in branding and marketing in Europe.

Source: EUIPO

Volkswagen successfully defended its classic Van trademark in the EU

Protection of three-dimensional trademarks can be a real challenge both in the process of their registration with the Patent Offices and in case of enforcement.

One indicative case about this is the following EU trademark application filed by Pinball Factory GmbH for classes 11, 12(including camping vehicles), 20, 21 и 39:

Against this application, an opposition was filed by the German car manufacturer Volkswagen based on the following earlier three-dimensional trademark in classes 12, 20, 21 и 39:

Initially, the EUIPO dismissed the opposition finding both signs dissimilar. According to the Office, the images in the earlier mark represent “true-to-life depiction of a camper van, or bus” because of this they have a low distinctive character.

The mark applied for shares a similar image of a van but because of its low distinctiveness, it is not decisive for the assessment of similarity. On the other hand, the word part CULTCAMPER plays a differentiating role between both marks.

In the appeal, however, the Board of Appeal overturned this decision. The Board stated that the earlier mark has to be taken as a whole, not as individual perspectives only. The fact that the mark represents a depiction of a van is not sufficient to conclude that the marks’ distinctiveness was low.

On the contrary, the Board considered the earlier mark as distinctive enough because it departs from the norms and customs of the sector concerned.

In the case at hand, “the front of the van is characterised by a divided windshield and the curved V-shape on the bonnet with the circular headlights on each side“.

The same elements were shared by the mark applied for although stylized. The word part CULTCAMPER cannot be so differentiating because it can be interpreted as a laudatory word combination – CULT and CAMPER, that is to say, “camper van which is greatly admired or regarded as fashionable“.

Taking into account all of this the Boarded concluded that there was a likelihood of confusion and that the later mark can be associated with the earlier sign by consumers.

Source: Vlotina Liakatou – Baker McKenzie for Lexology.

China joins the Hague System for international registration of industrial designs

WIPO reports about the accession of China to the Hague System for the International Registration of Industrial Designs.

As it is well known, Hague System allows up to 100 designs to be included in one application and after that registered in 90 Member states. This saves a lot of time and money for the applicants.

The Agreement will come into force for China on 05.05.2022, after this date the country can be designated in applications for industrial designs.

Spotify won a trademark dispute against a cannabis app provider

Spotify won a trademark dispute in the US that has a slight tinge of marijuana.

The case concerns a trademark application for POTIFY by a small US company offering an app that connects users with firms that dispense and deliver cannabis.

Spotify, one of the largest music streaming companies in the world, filed an opposition based on earlier trademark SPOTIFY. According to the company, both signs were confusingly similar and what’s more, the mark applied for led to a trademark dilution by way of tarnishment and blurring.

The USPTO agreed with Spotify finding both marks confusingly similar due to clear visual and phonetic similarities. One letter difference was not enough to overcome this issue. According to the Office, dilution is possible too because of the clear association between the signs in the consumer’s mind.

The applicant’s arguments that their mark was created without relation to the famous brand, and that it focuses only on the term POT that is associated with the use of marijuana were dismissed.

The Office stated that taking into account the reputation of the earlier mark, it is highly unlikely that the owners of the cannabis app weren’t aware of the Spotify app service at all.

This dispute shows how risky such brand building can be. Although business areas can be different, a problem can arise again due to the established reputation of famous trademarks in the market.

Chanel failed to register its No. 5 perfume bottle as a trademark in Lithuania

One interesting case from Lithuania shows how difficult registration of 3D trademarks can be.

Chanel filed сх 2014 a trademark application for their No. 5 perfume bottle in class 3 – perfumes:

Although the same sign was a successfully registered trademark in many other countries, that was not the case for Lithuania where the local Patent Office refused it based on absolute grounds – lack of distinctiveness.

The decision had been appealed several times before reaching the Supreme Court.

The Court considered the sign as three-dimensional and confirmed the lack of distinctive character. The EU Court practice was cited, according to which consumers don’t usually associate the shape of packaging with the origin of a product. Because of this more solid arguments and evidence are necessary in order for such signs to become valid trademarks.

In the case at hand, the Court found the submitted packaging as not diverging from what is customary for these types of products. Many other similar packagings were existing on the market so consumers would not perceive the sign applied for as a source of a particular trade origin.

Based on this the Court concluded that Chanel’s perfume bottle lacks inherent distinctiveness.

In regard to the evidence for acquired distinctiveness through market use, the Court dismissed them as insufficient.

The consumer survey offered by Channel targeted only France but not Lithuania. This was crucial for the Court which found the rest of the evidence, such as marketing data and materials, as insufficient for proving a distinctive character for a three-dimensional mark for packaging.

This case comes to shows again how difficult registration of such trademarks can be for every applicant even for a big company like Chanel. A good IP strategy is necessary way before applying for a trademark which to target all possible scenarios and to secure adequate facts and figures supporting the existence of distinctive character.

Source: Neil Wilkof, Marijus Dingilevskis за IPKats