As this blog mentioned, McDonald’s lost a trademark revocation procedure before the EUIPO in 2019, regarding its EU trademark BIG MAC. The revocation application was filed by the Irish fast food chain Supermac’s (Holdings) Ltd on the ground of an EU trademark not put to genuine use for a continuous five-year period.
The EUIPO revoked the mark finding McDonald’s evidence for real trademark use as insufficient. Of course, this decision was appealed.
No the Board of Appeal of the EUIPO annulled the previous decision stating that the mark’s use was proved for the following:
In Class 29 – Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches;
In Class 30 – Edible sandwiches, meat sandwiches, chicken sandwiches;
In Class 42 – Services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods.
The Board found that EUIPO failed to assess properly some of the submitted evidence. For instance, although Wikipedia’s page devoted to the mark can be edited, it contains links to external reliable sources such as newspapers and magazines that provide information for Big Mac too.
In addition, McDonald’s submitted new pieces of evidence in the appeal. For example, in some countries, the so-called ‘Big Mac Index’ is very popular for comparing the cost of living.
Consumer surveys, financial papers, and additional ad materials were provided too, and all of them show extensive trademark use in countries such as Germany, France, the UK (before Brexit), etc.
What’s more, the Big Mac brand has been used only in relation to McDonald’s stores and not by other competitors which in turn shows the sign is capable to indicate a particular trade origin.
Based on this the Board of Appeal concluded that Big Mac has been used as a trademark on the territory of the EU for a continuous five-year period.
This dispute focuses our attention on the issue of trademarks with a weak distinctive character and how this reflects on the scope of their protection.
In 2018, Mr. Swami Vidyanand filed the following international trademark where the EU was designated party, for class 41 – Education; providing of training; entertainment; sporting and cultural activities:
Against this application, an opposition was filed by YAplus DBA Yoga Alliance on the grounds of the following earlier mark in classes 35, 41, 42:
On 2 April 2020, the Opposition Division upheld the opposition. It found, in essence, first, that the services at issue were identical or similar and that they were aimed both at the general public and at professionals with an average level of attention, second, that the comparison of the signs had to be made from the point of view of non-English-speaking Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking consumers in the European Union and that the signs were visually similar to an average degree, highly similar phonetically and conceptually similar to a low degree. Third, it found that the distinctive character of the earlier mark was normal despite the presence within it of certain elements, at most weakly distinctive, such as their decorative elements or the common word element ‘yoga’. Lastly, it found that there was a likelihood of confusion on the basis of Article 8(1)(b) of Regulation 2017/1001.
An appeal followed where the Board of Appeal annulled the Opposition Division finding no likelihood of confusion between both signs.
The General Court upheld this finding. According to the Court:
It follows that excessive protection of marks consisting of elements which, as in the present case, have very weak distinctive character, if any, in relation to the services at issue could adversely affect the attainment of the objectives pursued by trademark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such elements in the signs at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case.
It should be remembered that the visual, phonetic, or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate, in that global assessment, to take into account the nature of the services at issue and to examine the objective conditions under which the marks may appear on the market.
Thus, in accordance with the case-law, in the present case, it must be held that, in view of the fact that the phonetic and conceptual similarities are based exclusively on word elements which are devoid of distinctive character, the clear visual differences between them have a greater impact in the global assessment of the likelihood of confusion.
In that regard, it should be borne in mind that, where the earlier trademark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does not often lead to a finding that such likelihood exists.
In those circumstances, it must be held that, in the context of a global assessment of the likelihood of confusion, having regard to the weak distinctive character of the common elements ‘yoga alliance’, the presence of figurative elements which are visually very different will enable the average consumer to make a clear distinction between the marks at issue, even for the part of the relevant public with an average level of attention, despite the identical or similar character of the services at issue. That is all the more true for the part of the relevant public with an above-average level of attention. Accordingly, it follows that the Board of Appeal’s error in relation to the level of attention of the relevant public in respect of the ‘educational’ services found in paragraph 50 above cannot have a decisive effect on the outcome of the global assessment of the likelihood of confusion.
This case reminds us what a trap can be if someone uses a weak distinctive element as a trademark. Although such an element can be registered in combination with graphics or other words, by its nature it is weak which means that monopolization of this element is not possible. This in turn means that competitors can use it too for their brands, and all of this means potential marketing and recognisability issues for the trademark owner.
Lego, one of the biggest toy manufacturers in the world, is well-known for its serious and consistent approach to intellectual property protection.
Thanks to our colleague Masaki Mikami we can acquaint ourselves with Lego’s struggles to receive protection for the following 3D mark in Japan, representing a figure from their famous toy constructors:
The Japan Patent Office refused to register this sign based on absolute grounds – descriptiveness, lack of distinctiveness, technical function, and aesthetic value.
The Office argued that other companies use similar human shape figures as toys. Apart from this, the sign, thanks to its specific arms and legs, allows configuration with other parts of the constructor including caps, hair wigs, clothes, etc. From that perspective, the Office considered that the shape provides technical results and has aesthetic value for consumers.
The court upheld this decision. Lego submitted a study that aimed to prove an acquired distinctiveness of the sign. According to the study, 37,32% of the respondents connect the figure with Lego as a brand. However, the court noted that 37,45% of respondents related the sign with other companies which were enough for the court to consider this evidence as not sufficient in the case at hand.
If one trademark is registered in the EU but its business model happens in a country outside the EU, whether this mark is regarded as used on the territory of the EU.
This was the question the Board of Appeal of the EUIPO had to answer in the dispute R 1841/2021-5, OSCAR.
The case concerns the European trademark OSCAR registered for class 41 – entertainment and educational services, namely, conducting an annual award ceremony recognizing exceptional achievement in the film industry.
Against this mark, an application for revocation was filed based on non-commercial use for 5 consecutive years.
The EUIPO dismissed the action entirely. Although the well-known OSCAR Awards ceremony takes place at a venue in Los Angeles, the EU trademark was subject to different advertisement campaigns that targeted EU consumers. Advertisements on their own constitute a way of trademark use according to EU legislation.
In addition, the trademark owner has provided licenses for broadcasting of the ceremony to many EU television programs which in turn means commercial use of the sign.
The Oscar Awards show was watched by millions of Europeans, and the ceremony itself represents an entertaining service.
The Board of Appeal confirmed this decision.
Last year the EUIPO issued another decision for a similar case relating to hotel services where the hotels themselves were outside the territory of the EU.
The General Court of the European Union has ruled in the case T‑596/21 Société Elmar Wolf v Fuxtec GmbH.
The case concerns the similarity between figurative marks based on the meaning they can convey to the consumers.
Fuxtec GmbH is the owner of the following international mark, where the EU is designated, for classes 4, 7, 8, 12, and 35:
Against this mark, an opposition was filed by Société Elmar Wolf based on several earlier figurative marks in classes 7, 8, and 35:
The EUIPO dismissed the opposition finding both signs dissimilar. The case was appealed.
The General Court upheld the EUIPO decision entirely. According to the Court, the earlier marks convey a clear impression of canine while the later mark is rather abstract, as a result of its clean curved lines, its sharp edges, and the lack of figurative details.
Due to this fact, consumers would need to put more effort and thoughts in order to discover the meaning of the sign if this is possible at all. This prevents the possibility of consumer confusion.
By contrast, as the Board of Appeal pointed out, the shape exhibited by the contested sign is rather abstract, as a result of its clean curved lines, its sharp edges and the lack of figurative details. It is true that that sign includes elements which could be perceived by a non-negligible part of the relevant public as the contours of the front view of a face, ears pointing upwards, a muzzle pointing downwards and eyes. However, the representation of a head which may emerge is obviously less realistic and considerably more stylised than the silhouette illustrated by the earlier marks, which represents some of the favourite attributes, a slightly open mouth and a menacing expression, of the representation of the head of a canine and which the rather abstract silhouette in the mark applied for does not have. In those circumstances, it is unlikely that the average consumer, who normally perceives a mark as a whole and does not carry out an analysis of its details at the time of purchase, will be capable of spontaneously associating the contested sign with the head of an animal, or even with the head of a canine, without engaging in an analysis which goes beyond that expected at the time of purchase.
It follows that it must be held, as the Board of Appeal found, that the overall impression created by the contested sign makes the identification of the head of an animal, let alone of a particular animal, highly arbitrary and, consequently, that the signs at issue are visually similar at most to a low degree.
The argument of the opposition applicant that the earlier marks have a high degree of inherent distinctiveness because they do not convey any meaning in relation to the goods and services covered by them, was dismissed by the Court, which considers that such consideration is not enough a high level of distinctiveness to be proved.
The German sportswear producer Adidas lost a trademark lawsuit against the famous designer Thom Browne in the US.
The dispute concerns an accusation by Adidas that Thom Browne uses a four strips design pattern that is confusingly similar to the famous three stripes pattern used by the German company that was initially introduced in 1952. For this pattern, Adidas owns a bunch of trademarks around the world including in the US.
Thom Browne uses four stripes pattern for his clothes now but in 2007 he settled a dispute with Adidas because he had used three stripes the years before.
The main issue with the current lawsuit was whether the four stripes pattern is confusingly similar to the three stripes one and what’s more whether this four-stripe design is not actually three-stripe if only the black stripes were counted.
The court dismissed the infringement claim stating that Adidas failed to prove that consumers would be confused between both patterns. One of the reasons was that both companies are not direct competitors. Thom Browne’s products are only high-priced while those of Adidas are affordable by most people. In addition, other companies used different patterns with stripes too, that is to say, this was not uncommon practice as a whole.