Brief IP news

1. New Guide: Cybercrimes and Trade Secret Protection in the EU & China. For more information here.

2. Anyway you see it: CJEU Advocate General issues Opinion on parts of designs ‘visible in normal use’. For more information here.

3. Global Innovation Index’s Global Science & Technology Clusters: East Asia Dominates Top Ranking. For more information here.


Nivea lost a trademark dispute in Japan

The well-known German producer of cosmetics Beiersdorf AG has recently faced some legal challenges in a trademark dispute in Japan.

The case concerns a trademark application for “NYFEA” filed by a Chinese company in classes  3, 8, 9, 10, 11, 16, and 21. Some of the goods covered were cakes of toilet soap, cleansing milk for cosmetic purposes, detergents, beauty masks, nail varnish, dentifrices, perfume, and incense.

Against this application, an opposition was filed by Beiersdorf AG based on an earlier mark NIVEA for the same goods. The company claimed a reputation of its mark stating trade use in the country since 1968 accompanied by strong sales and many advertisement campaigns. What’s more, the mark written in Japanese Katakana character was included in the Patent Office’s database with famous trademarks.

Surprisingly or not so, the Patent Office dismissed the opposition. First of all the Office didn’t consider the signs similar enough. The main argument for this was the difference between letters YF and IV which creates different phonetic and visual perceptions. There was no base for conceptual similarity as well.

Another important reason for the failure of this opposition was the fact that apart from stating its trademark reputation, the German company did not submit any evidence to support its claims. The fact that Katakana’s character version of the mark is proven famous mark was not enough for the assumption that the sign in Latin was famous too. Here evidence for sales, advertisements and market shares were necessary.

Source: Masaki MIKAMI, Marks IP Law Firm.

CAT won a tiger trademark dispute in the EU

The General Court of the European Union has ruled in the case T‑251/21, Tigercat International Inc. v Caterpillar Inc., that has the following background:

 On 26 August 2013, Tigercat International Inc. filed an application for registration of an EU trademark for Tigercat in class 7: specialised power-operated forestry equipment, namely, purpose built four wheel drive-to-tree and track type log bunchers, log loading machines, skidders and other forestry industry equipment, namely, bunching saws, bunching shears and components parts thereof.

Against this application, an opposition was filed from Caterpillar Inc. based on an earlier word mark CAT and the following combined mark, both in classes 7 and 12, including for forestry machines:

The EUIPO upheld the opposition in its entirety finding both signs similar enough. The decision was appealed.

The General Court found similarities and identities between the goods of the marks. When it comes to the signs themselves, the Court concluded that the relevant public can recognize two separate words in the later mark – Tiger and Cat because both have their own distinctive meaning.

According to the Court:

In the present case, the mere fact that the element ‘tiger’ has been placed at the beginning of the mark applied for is not sufficient to confer on it a dominant character. There is nothing to indicate that the average consumer of the relevant public will attach more importance to the element ‘tiger’ at the beginning of the mark applied for. That aspect is counterbalanced by the fact that the mark applied for is composed only of two relatively short words, which, although they are directly juxtaposed, each has a clear meaning for the relevant public. Thus, contrary to what the applicant submits, the element ‘cat’, which has a specific meaning distinct from the element ‘tiger’, does not have merely a laudatory connotation intended to highlight the element ‘tiger’.

In the present case, the Board of Appeal noted that the signs at issue had the element ‘cat’ in common, whereas they differed in the presence of the first element of the mark applied for, namely the word element ‘tiger’, and in the figurative elements of the earlier mark. It concluded from that that they had an average degree of visual similarity.

That assessment is irreproachable. Although the applicant takes the view that the signs at issue are visually different because of their different length and the presence of capital letters and figurative elements in the earlier mark, the fact remains that they coincide in the element ‘cat’, which constitutes the only word element of the earlier mark and has a distinctive character. The fact that the earlier mark is wholly included in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue, even where the relevant public has a high level of attention. The presence of the element ‘tiger’ – which is not dominant – at the beginning of the mark applied for does not lead to the conclusion that the signs at issue are dissimilar.

In the present case, it should be noted that the signs at issue differ in that the mark applied for contains, as an element placed at the beginning of that mark, the two syllables ‘ti’ and ‘ger’, whereas the earlier mark only contains the common element ‘cat’. Nonetheless, the fact remains that that common element could be pronounced when the goods at issue are purchased, thus justifying the Board of Appeal’s finding that the signs at issue are phonetically similar at least to an average degree.

Since the mark applied for, which is composed of the elements ‘tiger’ and ‘cat’, also refers to the concept of a ‘cat’, it should be concluded that the Board of Appeal was correct to conclude that the signs at issue were conceptually highly similar.

Against this backdrop, the Court dismissed the appeal and upheld the EUIPO’s decision.