A trademark dispute for LE MANS in Japan and its association with the famous car racing

The Japan Patent Office has recently ruled in a trademark dispute that focuses our attention on the world’s well-known car racing “24 hours of Le Mans”.

Everything started with a national trademark application for “Le mans de elegance” in class 25 – clothing, garters, sock suspenders, braces [suspenders] for clothing, waistbands, belts [clothing], footwear, masquerade costumes, sports shoes, clothes for sports.

This application triggered opposition by AUTOMOBILE CLUB DE L’OUEST (ACO) based on several earlier marks for LE MANS  in class 25.

According to ACO, the earlier marks were famous amongst consumers in Japan in relation to the oldest car racing in the world “24 hours of Le Mans”. The company stated that de elegance part in the later mark was descriptive of the goods in class 25. This made the first part Le mans identical to the AOC’s marks. What’s more the company argued that there is a relation between clothes and car racing citing a previous Patent Office practice on that matter.

The Office, however, wasn’t impressed and dismissed the opposition. While it was true that “24 hours of Le Mans” was a popular event, the submitted evidence didn’t prove that LE MANS alone is famous too.

According to the Office, the signs were not similar enough from a phonetic, visual, and conceptual point of view, especially the fact that Le man associates with a town in France.

Source: Masaki Mikami, Marks IP Law Firm.

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The Spanish Supreme Court rules on cases targeting football matches, LaLiga, and IP rights

The Spanish Supreme Court has recently ruled on two lawsuits that concern the broadcasting of sports events and the relation to intellectual property rights.

In the first case, the Spanish Football Federation LaLiga sued two media Atresmedia S.A. and Mediaset S.A. for using images and video clips from football matches without permission in light of the fact that the rights for broadcasting of these matches were granted to another company.

According to the Supreme Court, every media has the right to record images and broadcast short news reports including football matches and this is not against the exclusive broadcasting rights for the same events because it is of public interest.

In the second case, The Supreme Court has ruled that broadcasting football matches in bars or restaurants without paying the corresponding fee to LaLiga is not an intellectual property crime. The reason is that football matches do not fit into the definition of copyrightable work, that is to say, they are not literary, artistic, or scientific works. The Court did not consider matches as a performance of creative works. Because of this, every possible infringement of football match broadcasting should be regarded as a market and consumer crime under Spanish legislation.

Source: EUIPO.

Zara lost a trademark dispute against a small boutique in the UK

Sometimes when it comes to trademark disputes they can be defined as a battle between ‘David and Goliath’ considering the different positions and backgrounds of the Parties.

This is the case between an owner of a small boutique in the UK and the global clothes chain Zara.

Amber Kotrri owns a clothes boutique under the name ‘House of Zana’ for which she filed a trademark in the UK.

Against this application, an opposition was filed by ZARA based on an earlier mark for clothes and stores. Additionally an established reputation was claimed aiming to support the likelihood of confusion and the possible negative impacts on Zara’s famous brand.

Mrs. Kotrri pointed out that the name of her boutique stemmed from the Albanian word for fairies, and the reason for using it was the fact that her husband was Albanian.

The UKIPO accepted the meaning of the mark applied for but concluded that it is not popular among UK consumers at all, so it is irrelevant for the case.

Although the Office found some similarities between ZANA and ZARA, dismissed the entire similarity between the signs because the words HOUSE OF in the later mark created enough distinguishing impression.

When it comes to the claimed reputation of ZARA, the Office found only a small possibility for association with the latter mark in the consumer’s mind, so any detriment or tarnishment was not feasible as a whole.

Source: CMS Cameron McKenna Nabarro Olswang LLP – Kelly Saliger for Lexology.

When does Irish origin matter for trademark protection in the EU?

The General Court of the European Union has ruled in the case T-306/20 – Hijos de Moisés Rodriguez Gonzàlez SA v EUIPO, Ireland and Ornua Co-operative Ltd. The case has the following background:

In 2013, the Spanish company Hijos de Moisés Rodriguez Gonzàlez SA filed an EU trademark for the following figurative sign:

On 3 January 2014, the mark applied for was registered in respect of the following goods in Class 29: Meat, fish, poultry, and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

On 7 January 2015, Ireland and the intervener, Ornua Co-operative (previously known as Irish Dairy Board Co-operative Ltd), filed an application for a declaration that the contested mark was invalid in respect of all the goods above.

In the application for a declaration of invalidity it was claimed that the mark was deceptive under the provisions of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(g) of that regulation (now Article 59(1)(a) and Article 7(1)(g) of Regulation 2017/1001), and that the registration of that mark had been applied for in bad faith for the purposes of Article 52(1)(b) of that regulation (now Article 59(1)(b) of Regulation 2017/1001).

By decision of 15 June 2016, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. It found that Article 7(1)(g) of Regulation No 207/2009 was not applicable, because it had to be established that the contested mark was deceptive at the time it was filed. The Cancellation Division took the view that, in the case before it, any possible deception resulted from the use of that mark after the end of the commercial agreement which had been entered into by the applicant and the intervener and which was in force from 1967 to 2011. It found that that situation was specifically covered by the ground for revocation laid down in Article 51(1)(c) of Regulation No 207/2009 (now Article 58(1)(c) of Regulation 2017/1001). The Cancellation Division also rejected the argument raised under Article 52(1)(b) of that regulation, finding that no conclusion regarding bad faith could be drawn from the fact that the contested mark had been filed after the termination of the business relationship with the intervener.

On 12 August 2016, Ireland and the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

By decision of 6 December 2017, the Presidium of the Boards of Appeal referred the case to the Grand Board of Appeal.

By the contested decision, the Grand Board of Appeal of EUIPO found that, at the time when the application for registration was filed, the contested mark was used in a deceptive manner. It also found that the registration of that mark had been applied for in bad faith. Consequently, it annulled the Cancellation Division’s decision and declared the contested mark invalid.

According to the Board, consumers could believe that the goods originate from Ireland which could not be the case.

The decision was applied before the General Court.

The Court annulled the first part of the Board’s decision stating that the ground of deceptiveness should have to be evaluated at the time when the trademark application was filed.

Nevertheless, the invalidation was confirmed because the Court found that the mark was filed in bad faith.

The reason for this was that the Parties, in this case, had long-lasting trade relationships, where the Spanish company had been importing Irish butter under this mark. After the end of their partnership, the above trademark was filed, which could take advantage of the associations with the Irish origin of the goods. That is to say, consumers can believe that the goods under the same mark are still from Ireland which can not be the case.

According to the Court:

In the present case, in the first place, as regards the misleading use of the contested mark, it is common ground between the parties that: (i) for decades, the applicant sold butter of Irish origin under that mark in the context of its contractual relationship with the intervener; (ii) after that relationship came to an end, it continued to sell foodstuffs under that mark; and (iii) a not insignificant part of those foodstuffs, including dairy products and pork products, was not of Irish origin. In any event, the applicant has not claimed that all the goods which it sold under the contested mark originated in Ireland.

In other words, the applicant sold goods under the contested mark even though a not insignificant part of those goods was not of Irish origin and therefore did not correspond to the relevant public’s perception of those goods.

Once the applicant had extended the use of the contested mark to goods other than butter of Irish origin, Spanish-speaking consumers, who constitute the relevant public, were likely to be misled as to the geographical origin of those goods, since they had become accustomed over the course of several decades to the contested mark being affixed to butter originating from Ireland. Such conduct is evidence of bad faith inasmuch as it shows that, when filing the application for the contested mark, the applicant intended unfairly to transfer the advantage derived from the association with Ireland to goods not having that geographical origin, in particular after the end of its business relationship with the intervener which supplied it with Irish butter.

Red Bull attacked successfully a Portuguese trademark with a bull depiction

Red Bull won a dispute against a trademark with the depiction of a bull and one of the reasons for this result was the available reputation of the company’s trademarks.

Two individuals filed 2020 the following trademark application in Portugal for classes 25 and 41:

Against this application an opposition was filed by Red Bull based on the following several earlier marks for the same classes of goods and services:

Apart from this, the company claimed a proven reputation for these trademarks in Portugal.

The Patent Office dismissed the opposition despite the reputation of the Red Bull’s marks. The reason for this was the fact that the Office didn’t find similarities between the signs. The decision was appealed.

The Court overturned the Office decision, concluding that the mark applied for and the earlier sign was similar enough.

From one side, the word parts RED BULL and BULLS were similar from a phonetic, visual, and conceptual point of view.

From another side, the depictions of bulls were similar too, at least to a minimum degree. Taking into account the proven reputation of the Red Bulls’ marks, which gives stronger protection, the Court concluded that signs were similar and that the later mark could take advantage of the available reputation of the earlier marks.

This comes to show us that some attempts for circumventing the protection of reputable marks could be really risky and unsuccessful acts.

Source: Paulo Monteverde or Joana Cunha Reis for Lexology.

Apple lost a trademark dispute for MAC in Japan

One interesting trademark dispute from Japan shows us how difficult sometimes is famous trademarks to be invoked in opposition procedures.

The case concerns a trademark MACLOGIC filed by a local company in Japan for classes 9 and 42 – mainly computer software and design.

Against this mark, an opposition was filed by Apple Inc based on an earlier mark from MAC accompanied by a claim of trademark reputation. According to Apple, the mark applied for was similar to the earlier one due to the identical first part MAC, which was famous amongst Japanese consumers in relation to the company’s laptops and software. This was able to create consumer confusion in regard to the source of trade origin of the goods and services.

The Japan Patent Office, however, didn’t find both marks similar enough from a phonetic, visual, and conceptual point of view.

What’s a more, the Office considered the earlier mark reputation as established only for some consumers in the country but not for the public in general. Because of this, the opposition was dismissed.

The interesting moment in this decision was the fact that the reputation of a mark amongst the relevant consumers was not enough in order for this claim to be well established for the proceeding.

Source: Masaki MIKAMI, Marks IP Law Firm.

Can anyone register an EU trademark for Powerball?

Filing a trademark application in bad faith can jeopardise seriously trademark’s future protection because legislation allows such marks to be canceled.

One interesting example of such consequences is from the EU, where the Gibraltar-based company for online bets Lottoland successfully registered a trademark for “Powerball” in classes 35, 41, and 42.

As it is well-known “Powerball” is a US lottery, probably one of the most famous in the entire world, with a record jackpot of $1.5 billion USD.

The lottery is organized by the US Multi-State Lottery Association, whose EU trademark for Powerball was revoked based on non-use for 5 consecutive years.

When the US Accossiation found out about the later trademark Powerball it filed a cancelation request with the EUIPO claiming bad faith. According to the Association, the purpose of the Gibraltar company was to mislead the EU consumers about the real organizer of the lottery. Evidence for such dishonest behavior was the fact that Lottoland registered trademarks for other lotteries such as  EuroMillions and EuroJackpot whose organizers are different.

In contrast, Lottoland counterclaimed that its trademark was legally registered because Powerball has no reputation amongst the consumers in the EU.

The EUIPO agreed with the US Association and canceled the EU mark based on bad faith attempt in regard to its registration. According to the Office, there is no need for one trademark to be known in the EU in order bad faith claim to be possible. The Office considered Lottoland’s behavior dishonest, trying to restrict the real owner of the mark to use it in the EU as well as all other market participants, from one side, and to mislead consumers, from another.

The conclusion of this case is that you need to bear in mind the fact that although one trademark protection has lapsed, this does not mean automatically the sign can be used by someone else. Such use should be analyzed carefully considering all facts and risks.

Source: FRKelly – Adam Flynn for Lexology.