Facebook faces a trademark lawsuit for its META rebranding

As it is well-known, Facebook rebranded itself as a company to META in 2021. The main goal was for this name to fit better with the future development of the company, and in particular with the emergence of the metaverse as a new virtual world.

Facebook filed a trademark for META, and this blog has already discussed the probabilities of potential legal conflicts taking into consideration numerous early registered trademarks for META around the world including in the US.

So it is of no surprise that a trademark infringement lawsuit has been filed in New York against Facebook by a company named METAx LLC.

This company claimed the use of the META brand since 2010 in relation to VR and augmented reality technologies. What’s more, the company owns two earlier US trademarks:

No. 5,194,332, registered in class 35: Organizing and holding special events for commercial, promotional or advertising purposes; Event planning and management for the marketing, branding, promotion or advertising of the goods and services of third parties; Social media strategy and marketing consulting focused on helping clients create and expand their product and brand strategies by building virally engaging marketing solutions; Special event planning for business purposes; Arranging, organizing and conducting live interactive marketing promotional events for business promotional purposes, and

No. 6,055,841, registered in class 41: Media production services, namely, video and film production; Entertainment, namely, production of community sporting and cultural events using digital, virtual and augmented reality filmmaking and interactive displays of lights, sound and motion; Special event planning for social entertainment purposes.

According to METAx, Facebook has been aware of its business and trademarks since 2017 when there was communication between both companies.

To what extent this lawsuit can be successful depends on the particular facts. What is for sure is that Facebook can face more similar conflicts in the future taking into account the bunch of early registered Meta trademarks for similar goods and services. One possible defensive strategy for Facebook could be to claim a low-distinctive character of the word META at least for services related to the metaverse.

In general, the main rule when someone wants to file a trademark is to check for earlier rights and to avoid possible conflicts which can lead to complex lawsuits and a lot of expenditures. Of course, there is another strategy, that however requires deep pockets for out-of-court agreements.

Source: Reuters.

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Denmark lost a dispute regarding Feta cheese produced only for export from the territory of the EU

The European Court has ruled in the case C‑159/20 the European Commission v the Kingdom of Denmark which closed the door to one of the few misunderstandings regarding the scope of geographical indication protection in the EU.

In the case at hand, Greek complained before the Commission that cheese manufacturers from Denmark use the protected geographical indication Feta by labeling their products as ‘Danish Feta’ and ‘Danish Feta cheese’. Denmark refused to prohibit such use on its territory stating that the production was only for export purposes not for sale on the territory of the EU. According to the Kingdom, this type of GI use was not prohibited by the EY Regulations.

The European Commission disagreed and initiated a lawsuit against Denmark. The Advocate General issued its opinion that reasonings are now upheld by the Court.

According to the Court’s decision:

Recital 18 of Regulation No. 11512012 states that the specific objectives of PDO and PGI protection are to ensure fair income for farmers and producers according to the qualities and characteristics of a given product or its production method and to provide clear information about products with specific characteristics related to geographic origin, thereby enabling consumers to make more informed purchasing choices.

In addition, it follows from the Court’s practice that the purpose of the PDO and PGI protection system is mainly to guarantee consumers that agricultural products bearing a registered name have certain specific characteristics due to their origin in a certain geographical area and therefore provide a guarantee of quality due to their geographical origin in order to allow agricultural operators who have made a genuine effort to improve quality to receive higher incomes in return and to prevent third parties from unfairly benefiting from the reputation, related to the quality of those products (judgments of 17 December 2020, Syndicat interprofessional de défense du Fromage Morbier, C‑490/19, EU:C:2020:1043, paragraph 35 and the case-law cited and by the analogy of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 49).

Since the Kingdom of Denmark points out that it follows from these objectives that Regulation No 1151/2012 is aimed at introducing a system of protection of PDOs and PGIs for products placed on the internal market because the said users are those in the Union, it should be noted that this regulation clearly applies to these users and not to users in third countries. Indeed, that regulation, adopted on the basis of Article 118 TFEU, concerns the functioning of the internal market and, as that Member State points out, is aimed at the integrity of the internal market and consumer information in the Union.

It should also be noted that the objective of informing consumers and the objective of guaranteeing a fair income for producers in accordance with the qualities of their products are interrelated, since informing consumers is aimed in particular, as is clear from the case law, at this to allow agricultural operators who have made real efforts to improve quality to receive higher incomes in return.

However, as follows from recital 18 and from Article 4(a) of Regulation No 1151/2012, the objective of guaranteeing fair income to producers in accordance with the qualities of their products is itself an objective pursued by that regulation. This also applies to the purpose of ensuring the respect of intellectual property rights enshrined in Article 1, letter c) of this Regulation.

It is clear, however, that the use of the PDO ‘Feta’ to designate products produced in the territory of the Union which do not comply with the product specification of that PDO affects the two stated objectives, even if those products are intended for export to third countries.

Finally, as regards compliance with the principle of legal certainty, it should be noted that, undoubtedly, Regulation No. 1151/2012 does not explicitly state that it also applies to products produced in the Union for the purpose of export to third countries. However, in view in particular of the general and unequivocal nature of Articles 13, 36, and 37 of Regulation No 1151/2012, which do not provide for an exception to such products, and the fact that the said objectives are clearly stated in Articles 1 and 4 of that Regulation, Article 13(3) thereof appears clear and unequivocal in so far as it obliges Member States to take appropriate administrative and judicial measures to prevent or suspend the use of a PDO or a PGI to designate products produced on their territory that do not comply of the applicable product specification, including where these products are intended for export to third countries.

Based on the stated considerations, the Court decided:

By failing to prevent or stop the use by Danish milk producers of the Protected Designation of Origin (PDO) ‘Feta’ to designate cheese that does not comply with the product specification of that PDO, the Kingdom of Denmark has failed to fulfill its obligations under Article 13(3) of Regulation (EU) No. 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs.

(unofficial translation)

New forms for filing European trademarks and designs

The EUIPO reports about the upcoming launch of a new form for filing European trademarks and designs that will be available on 01.08.2022. This new form is part of a smooth transition to the new website and User Area that will provide:

• customization options allowing you to tailor your filing experience;
• a new design with full guidance and contextual help;
• faster goods and services management;
• enhanced security.

An instructional video can be found here.

Can Hallmark be a trademark for real estate?

The Federal Court in Canada has issued a decision regarding the option for registration of descriptive and low-distinctive signs.

In the case at hand, a trademark application for HALLMARK was filed that covers real estate services.

Against this application an opposition arises based, among others, on a claim for descriptiveness and non-distinctiveness of the sign. In English HALLMARK means a distinctive characteristic of something or someone related to excellence. The word is used for indication of gold, silver, etc. quality characteristics. Based on this the opponent claimed that the mark applied for has a laudatory meaning.

The Patent Office disagreed and dismissed the opposition. According to the Office descriptiveness of a term requires a “clear” meaning related to the goods and services mentioned in the trademark application.

Although the word Hallmark has a laudatory characteristic it does not relate directly to the real estate business. In regard to the non-distinctiveness, the opponent failed to provide any evidence that the sign has been commonly used in Canada for respecting services.

In the appeal, the Court upheld this decision stating that descriptiveness requires a clear connection with the goods and services in the application. Only abstract or associate meaning is not enough in order for this claim to be successful. The fact that one word is a laudatory term does not mean automatically that it cannot be a protected trademark as remains the case with suggestive trademarks that has an associative meaning which requires intellectual efforts from the public in order the connection with the goods and services to be discovered.

Source:  John McKeown, Goldman Sloan Nash & Haber LLP

What should social media influencers know about intellectual property rights?

Nowadays one of the most popular ways to attract consumers’ attention in order to convince them to purchase your product or service is to use the so-called social media influencers.

The reason is that consumers pay less and less heed to the classic advertisement, finding it too boring or not trustworthy enough. After all, every ad tells you that the promoted subject matter is the best one.

On the other side, social media influencers in the first place are just normal people expressing their thoughts which in many cases attract like-minded people who start to follow and believe them with time.

Based on this a new marketing channel has emerged offering great potential for marketing and sales activities.

In most cases influence marketing starts without planning, the relevant influence suddenly discovers options for monetarization and if done properly it could be a successful business model.

However, every business needs to be well organized and manage its assets including the intangible ones such as all sorts of intellectual property rights.

Because I’m passionate about this I’ve created a new Skillshare class that will teach every new or established influencer how to deal with intellectual property rights, including copyrights, trademarks, designs, domain names, etc.

All of this is really important because if done right it can boost the influencer’s business while if done badly it can jeopardize it.

Just for example, if one influencer does not know how to secure copyrights over the materials used on his or her channel this can lead to legal conflicts with the copyright holders.

If a popular influencer missed the point to register a trademark, someone else can start using hir or her distinguishing name or sign for unfair competition, similar social media channels, etc.

Social media influencers generate value with their work, value that has to be managed properly in order to become a sustainable business model.

In this class you will learn:

• What types of social media influencers exist?
• Why do Influencers need to understand intellectual property?
• What intellectual property rights can belong to influencers?
• What copyrights belong to influencers and how can they be managed?
• What are the copyright rules of social media platforms for every uploaded content?
• What influencers can protect as trademarks?
• How can influencers protect internet domain names and what do they need to bear in mind?
• How design rights can be beneficial for influencers?
• What role do trade secrets play for influencers?
• How publicity rights can help influencers?

This class will give you the knowledge of how one social media influencer can organize and manage his or her intellectual property rights building a strong and sustainable business project.

In case you are interested, you can use this link to my Skillshare class: https://skl.sh/3FOUiuk 

Thanks for your interest!

How virtual goods and NFTs to be classified in trademark applications – the EUIPO’s position

With the development of the Metaverse infrastructure (a virtual space that wants to replicate the real world) and the advent of all sorts of new business opportunities, many companies start to consider trademark protection for the so-called virtual goods and services. They represent NFT ( non-fungible tokens ) blockchain records that can be purchased by consumers in the Metaverse.

For example, Nike has filed trademark applications for virtual clothes and shoes, McDonald’s for virtual food and burgers, etc. The goal is based on such protection no one else to sell similar NFTs using trademarks from the real world. Bear in mind that one trademark is protected only for the goods and services mentioned in its applications and so far virtual goods haven’t been included in the list as a whole.

From that perspective, one important issue has arisen – how such virtual goods or services to be classified under the Nice Classification that does not cover them now. Many Patent Offices have started to receive trademark applications and ask applicants for more clarifications because virtual goods can mean many different things.

In the light of this the EUIPO has issued its current position on that topic, stating the following:

• Virtual goods are proper to Class 9 because they are treated as digital content or images. However, the term virtual goods on its own lack clarity and precision so must be further specified by stating the content to which the virtual goods relate (e.g. downloadable virtual goods, namely, virtual clothing).
• The 12th Edition of the Nice Classification will incorporate the term downloadable digital files authenticated by non-fungible tokens in Class 9. NFTs are treated as unique digital certificates registered in a blockchain, which authenticate digital items but are distinct from those digital items. For the Office, the term non fungible tokens on its own is not acceptable. The type of digital item authenticated by the NFT must be specified.
• Services relating to virtual goods and NFTs will be classified in line with the established principles of classification for services.
• The Office’s approach is set out in the 2023 draft Guidelines on which a range of stakeholders have until 3 October this year to comment.

Acquiescence in case of trademark infringements – an EU Court decision

The European Court has ruled in case C‑466/20 HEITEC AG срещу HEITECH Promotion GmbH which concerns the issue of trademark acquiescence in case of a trademark infringement. The dispute has the following background:

The applicant in the main proceedings, Heitec, is the proprietor of the EU word mark HEITEC, applied for on 18 March 1998, with seniority claimed as from 13 July 1991, and registered on 4 July 2005.

It was entered in the commercial register in 1984 under the name Heitec Industrieplanung GmbH. Its name was changed in 1988 to Heitec GmbH. Since the year 2000, it has been operating under the name of Heitec AG.

Heitech, of which RW is the managing director, was entered in the commercial register on 16 April 2003.

Heitech is the proprietor of a German figurative mark containing the word element ‘heitech promotion’, applied for on 17 September 2002 and registered on 4 February 2003, which it has used since 29 September 2004 at the latest, and of an EU figurative mark containing the word element ‘heitech’, applied for on 6 February 2008 and registered on 20 November 2008, which it has used since 6 May 2009 at the latest.

By letter of 29 November 2004, Heitech contacted the representatives of Heitec to ask whether the latter would agree to conclude a coexistence agreement.

On 7 July 2008 Heitec became aware of Heitech’s application for registration of the EU figurative mark containing the word element ‘heitech’.

By letter of 22 April 2009, Heitec sent Heitech a warning letter regarding the latter’s use of its trade name and the EU trade mark containing the word element ‘heitech’. In its reply of 6 May 2009, Heitech again proposed the conclusion of a coexistence agreement.

On 31 December 2012, the Regional Court, Nuremberg-Fürth, Germany received, by fax, the application initiating proceedings, submitted by Heitec against Heitech and RW. That application was dated 15 December 2012. By decision of 4 January 2013, Heitec was asked to pay an advance on the costs of the proceedings.

On 12 March 2013, that court pointed out to Heitec’s representative that that advance payment had not been made and that the originals of the application initiating proceedings had not been lodged.

By letter of 23 September 2013, Heitec informed Heitech that it refused to conclude a coexistence agreement and proposed to conclude a licence agreement while stating that it had initiated legal proceedings.

By letter of 29 December 2013, Heitec informed Heitech that it was relying on its trade name and that it was the proprietor of the EU trademark HEITEC. It stated that the legal proceedings were pending.

On 30 December 2013, the Regional Court, Nuremberg-Fürth received written submissions from Heitec dated 12 December 2013, together with a cheque for court fees and a new application initiating proceedings bearing the date 4 October 2013.

On 14 January 2014, that court drew Heitec’s attention to the fact that it was also necessary to serve the application initiating proceedings of 15 December 2012, and Heitec was therefore asked to lodge the original documents. Those originals were received by the court on 22 February 2014.

On 24 February 2014, that court alerted Heitec to the fact that the heads of claim in the originals of the application initiating proceedings received on 22 February 2014 were not consistent with the heads of claim in the initiating application submitted on 31 December 2012.

On 16 May 2014, the Regional Court, Nuremberg-Fürth opened the preliminary written procedure and ordered that copies, drawn up by that court, of the initiating application of 15 December 2012 be served on the defendants in the main proceedings. Notice was finally served on 23 May 2014.

By that action, Heitec brought claims based, primarily, on the infringement of the rights conferred by its trade name HEITEC and, in the alternative, on the infringement of its EU trade mark HEITEC. It claimed that Heitech should be ordered to refrain from identifying its company by the trade name HEITECH Promotion GmbH, to refrain from affixing the word elements ‘heitech promotion’ and ‘heitech’ on goods and from marketing or advertising goods or services under those signs, to refrain from using or transferring, for commercial purposes, the website heitech-promotion.de and to agree to the removal of its company name from the commercial register. Heitec also brought claims for information, for a finding of an obligation to pay compensation, for the destruction of goods and for the payment of the costs of sending the warning letter.

The Regional Court, Nuremberg-Fürth ordered Heitech to pay Heitec EUR 1 353.80, plus interest, for the costs of sending the warning letter and rejected the other claims brought by Heitec.

Heitec appealed against the decision of the Regional Court, Nuremberg-Fürth before the Higher Regional Court, Nuremberg, Germany.

The Higher Regional Court, Nuremberg held that Heitec’s action was unfounded on the ground that Heitec was time-barred. In that regard, it noted that Heitech had used its later signs for an uninterrupted period of at least five years and that Heitec had acquiesced in such use, since, although it was aware of that use, it had not taken sufficient measures to stop that use.

According to that court, that court action had not interrupted the period of limitation, since it had been served on Heitech and RW only after five years had elapsed since the warning letter which preceded that action.

Heitec brought an appeal before the referring court.

That court notes that the outcome of the appeal depends on whether Heitec is, pursuant to Paragraph 21(1) and (2) of the Law on trademarks and Article 54(1) and (2) and Article 111(2) of Regulation No 207/2009, time-barred from bringing its claim for an injunction and its ancillary claims.

That court notes that the time-barring of Heitec’s claims relating, in essence, to the use by Heitech of the German trademark of which the latter is the proprietor, is governed by Paragraph 21(1) of the Law on trade marks, read in conjunction with Paragraph 125b(3) of that law, in so far as those claims are based on the EU trade mark of which Heitec is the proprietor.

It states that Paragraph 21(1) of the Law on trade marks transposes into German law the limitation provided for in Article 9 of Directive 2008/95, on the right conferred by trade marks (Article 9(1) of Directive 2008/95) and by other signs – including trade names – used in the course of business (Article 9(2) of Directive 2008/95), to oppose the use of a registered trade mark.

In so far as Heitec opposes the use of the trade name Heitech, the limitation is, according to the findings of the referring court, governed by Paragraph 21(2) of the Law on trademarks. In this regard, that court states that, notwithstanding the fact that the scope of that provision goes beyond that of Directive 2008/95 and is not reflected in Article 54 of Regulation No 207/2009, it must be interpreted on the basis of the interpretation of Paragraph 21(1) of the Law on trade marks which is consistent with that directive.

As regards Heitec’s claims concerning the use by Heitech of the EU trademark of which it is the proprietor, the referring court finds that Articles 54 and 110 and Article 111(2) of Regulation No 207/2009 are relevant.

That court notes that the Oberlandesgericht Nürnberg (Higher Regional Court, Nuremberg) did not err in law in finding that there was ‘use’, within the meaning of Paragraph 21(1) and (2) of the Law on trademarks and Articles 54 and 111 of Regulation No 207/2009, in the present case from 6 May 2009 at the latest and that Heitec had become aware of that by the letter of 6 May 2009 which Heitech had sent it. It is, moreover, common ground that Heitech is not accused of having acted in bad faith.

In the light of those circumstances, it is necessary to determine exactly what constitutes ‘acquiescence’ within the meaning of Article 9 of Directive 2008/95 and Articles 54 and 111 of Regulation No 207/2009.

In that regard, first, it is necessary to clarify whether it is possible to exclude acquiescence not only where an appeal is brought before an administrative authority or a court, but also in the event of the sending of a warning letter. Secondly, it is necessary to determine whether, in the event of court action it is necessary to take as a basis, in order to determine whether that action was initiated before the expiry of the period of limitation, the date on which the document instituting the proceedings was lodged or the date on which that document was received by the defendant. It is necessary, in that context, to clarify whether the fact that the service of that document is delayed through the fault of the proprietor of the earlier mark is relevant in that regard.

It is also necessary to determine whether the time limit applies only to an application for an injunction or also to claims that are ancillary or related to such an application, such as claims for damages, the provision of information and the destruction of goods.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice, Germany) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)      Can acquiescence within the meaning of Article 9(1) and (2) of [Directive 2008/95] and Article 54(1) and (2) and Article 111(2) of Regulation No 207/2009 be excluded not only by means of an administrative or court action, but also through conduct not involving a court or administrative authority?

(2)  If Question 1 is answered in the affirmative:

does the sending of a warning letter, in which the proprietor of the earlier sign, before initiating legal proceedings, requires the proprietor of the later sign to agree to refrain from using the sign, and to enter into an obligation to pay a contractual penalty in the event of an infringement, constitute conduct precluding acquiescence within the meaning of Article 9(1) and (2) of [Directive 2008/95] and Article 54(1) and (2) and Article 111(2) of [Regulation No 207/2009]?

(3)  When seeking judicial redress, is the bringing of the action before the court or the receipt of the action by the defendant decisive for calculating the five-year acquiescence period for the purposes of Article 9(1) and (2) of [Directive 2008/95] and Article 54(1) and (2) and Article 111(2) of [Regulation No 207/2009]? Is it significant in this regard that receipt of the action by the defendant is delayed beyond the expiry of the five-year period through the fault of the proprietor of the earlier trademark?

(4) Does the limitation of rights in accordance with Article 9(1) and (2) of [Directive 2008/95] and Article 54(1) and (2) and Article 111(2) of [Regulation No 207/2009] encompass consequential claims under trade mark law, for example, claims for compensation, provision of information or destruction, as well as prohibitory injunctions?’

The Court’s decision:

1.  Article 9 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 trade marks and Articles 54, 110 and 111 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that an act, such as a warning letter, by which the proprietor of an earlier mark or other earlier right opposes the use of a later mark without taking the necessary steps to obtain a legally binding solution does not stop acquiescence and, consequently, does not interrupt the period of limitation.

2.  Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 must be interpreted to mean that the limitation in consequence of acquiescence referred to in those provisions may not be prevented by the bringing of a court action in which the proprietor of an earlier mark or other earlier right sought a declaration of invalidity of a later mark or opposed the use of that mark, where the application initiating proceedings, although filed before the date of expiry of the period of limitation, did not, owing to a lack of diligence on the part of the applicant, satisfy the requirements of the applicable national law for service and was rectified only after that date for reasons attributable to the applicant.

3.  Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 must be interpreted as meaning that, where the proprietor of an earlier mark or other earlier right, within the meaning of those provisions, is time-barred from seeking a declaration of invalidity of a later mark and from opposing the use of that mark, that proprietor is also time-barred from bringing ancillary or related claims, such as claims for damages, the provision of information or the destruction of goods.