Is FUCKING GOOD WINE offensive as a European trademark?

Neleman is a well-known Dutch winery offering organic wines and using an unconventional marketing approach. The company has filed a European trademark application for the following combined mark in class 33 – Wine; Sparkling wines:

This application was refused by the EUIPO based on absolute grounds – Article 7(1)(f) EUTMR, trademarks that are contrary to public policy or to accepted principles of morality.

The Board of Appeal upheld this decision too.

It is the view of the Board that, although it is true that the term ‘fucking’ is used as a modern-day superlative when combined with another word (in particular, between close friends or in extremely informal settings, where the use of such taboo slang may be exceptionally acceptable), this meaning has not yet become so well established in all social strata that it has made the original meaning of the word ‘to fuck’ or ‘fucking’ more remote and forgettable.

Although ‘FUCKING GOOD WINE’ may be seen as an observation that the wine is very good, by choosing the word ‘FUCKING’ the sign is not only vulgar but taboo and offensive in which respect reference is made to paragraph 15 above.

The goods in question are everyday goods that can be seen by anyone in shops and displays. People of any age who consider the term ‘fucking’ to be offensive may perceive these goods, and therefore also the trademark that may appear on them, at any time. The fact that the goods at hand are not consumed by or sold to children does not alter the fact that such goods are normally prominently displayed in shops and supermarkets and thus can be seen by children, as well as, for example, people of any age who will find such use of an extremely vulgar and offensive swear word as morally unacceptable.

In this respect, the Board further notes that the applicant’s arguments that it had received many awards and no complaints are in any event irrelevant because what matters is the intrinsic meaning a word has (as appears from the dictionary) for the relevant public, which meaning is not influenced by a lack of consumer complaints and reputation not being an intrinsic quality.

Source: Global Advertising Lawyers Alliance (GALA) – Maarten Haak for Lexilogy.

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Puma lost a trademark dispute against Caterpillar in Canada

When it comes to the registration of trademarks the similarity between signs can be a delicate moment for every applicant even for the biggest and most famous companies in the world.

This was the case with the German well-known sportswear manufacturer Puma which applied for trademark PROCAT in Canada for footwear and headgear.

Against this application, an opposition was filed by Caterpillar based on earlier marks CAT for the same goods.

Initially, the Trademarks Opposition Board dismissed the opposition not finding enough similarity between the signs.

In the appeal, however, the Federal Court annulled this decision with the argument that PROCAT and CAT are similar signs for identical goods.

Puma claimed that the PRO prefix in their mark was sufficient in order to create a distinction between the signs in the consumer’s mind.

The Court didn’t credit this argument finding PRO meaning related to something suggestive or laudatory for the characteristic of the products. This word is used by many companies to stress the better quality or other characteristics of their goods or services.

From that perspective, PRO has weak distinctiveness and CAT has the dominant importance for the understanding of the mark’s meaning.

Puma failed to prove that PROCAT has its own distinctiveness as a whole and that this sign was related by consumers to their particular products.

Additionally, there was no evidence that CAT is a common word or such one with a low distinctive character for the above-mentioned goods in order for small differences between the signs to be sufficient for a dissimilarity conclusion.

On the other hand, Caterpillar successfully proved the reputation of their earlier marks for the goods in class 25.

Source: Canadianlawyermag.

Louis Vuitton failed to prove the distinctiveness of its figurative mark in the EU

The General Court of the European Union has ruled in the case T‑275/21 Louis Vuitton Malletier v Norbert Wisniewski, which focuses our attention on the proof of secondary distinctiveness.

The dispute concerns the following international figurative mark with a designation of the EU for class 18 – ‘Boxes of leather or imitation leather, trunks, suitcases, traveling sets (leatherware), traveling bags, luggage, garment bags for travel, hat boxes of leather, vanity cases (not fitted), toiletry bags (empty), backpacks, satchels, handbags, beach bags, shopping bags, shoulder-strap bags, carrier bags, shoulder bags, waist bags, purses, attaché cases, briefcases (leatherware), school bags, document holders, clutch bags, wallets, change purses, key cases, card cases (wallets), umbrellas, sunshades:

Against this mark, an application for invalidity was filed based on the assumption of a lack of inherent distinctiveness.

The EUIPO confirmed the invalidation but in the appeal, the decision was remitted to the Fifth Board of Appeal because of some errors. The Board confirmed the invalidation again and this decision was appealed once again.

Now the General Court upheld the EUIPO position finding the lack of distinctiveness of the mark. When it comes to the evidence for acquired distinctive character through use in the EU, submitted by Louis Vuitton, the Court considered them sufficient for some parts of the EU but not for the entire Union. There was not enough evidence for the mark’s awareness in Bulgaria, Estonia, Lithuania, Latvia, Slovakia, and Slovenia, together with Malta

That was a problem for Louis Vuitton because in order to rely on an acquired distinctiveness in the EU the trademark owner has to prove it for the territory of the entire EU, all Member States.

Louis Vuitton claimed that because their mark is popular in many EU countries, including neighboring to the above-mentioned, consumers in all countries are aware of the mark and its reputation. The Court dismissed this approach.

First, the applicant submits that the analysis, in the contested decision, of distinctive character acquired through use of the contested mark is detached from reality, since it ignores the fact that, throughout the European Union, consumers engage in homogeneous behaviour as regards luxury brands, particularly because they travel and use the internet regularly. However, that argument is too general in nature. Given that the burden of proof of the acquisition of distinctive character through use lies with the proprietor of the mark, it is for the proprietor to adduce specific and substantiated evidence for that purpose (see paragraph 20 above).

Secondly, the applicant claims, in essence, that the distinctive character acquired through use of the contested mark in the Member States concerned is corroborated by the geographical and cultural proximity of Latvia and Lithuania to Poland and Sweden, on the one hand, and of Bulgaria, Slovakia and Slovenia to Romania, on the other hand, it being noted that, according to the applicant, the mark had acquired a distinctive character with consumers in Poland, Sweden and Romania.

However, that argument is not at all substantiated. The applicant has not adduced any evidence to show that, due to their geographical and cultural proximity, the relevant Latvian and Lithuanian public had sufficient knowledge of the goods or services on the Polish and Swedish markets, or that the relevant Bulgarian, Slovenian or Slovakian public had such knowledge of the Romanian market, within the meaning of the case-law cited in paragraph 27 above. Nor has the applicant demonstrated, or even alleged, that it had grouped those Member States in the same distribution network or that it had treated them, particularly from the marketing strategy perspective, as if they constituted one and the same market.

Thirdly, nor may the applicant’s argument that the distinctive character acquired through use of the contested mark in Bulgaria, Slovakia and Slovenia is corroborated by the fact that those Member States are ‘in a strategic area for the circulation of counterfeit products in Eastern Europe’ be upheld due to its being too general in nature.

The US Copyright Office refused copyright protection over AI-generated images

AI has become a really trendy topic in recent years. With the emergence of AI tools such as Chat GPT, DeepAI, and DALL-E 2 many people have started to realize how useful AI could be for their daily life.

Such innovations although creating fun and excitement have the potential to create a lot of disturbance when it comes to future job replacements or some moral and legal issues.

One interesting case, in that regard, is reported by the IPKat blog. It focuses our attention on an attempt by Ms. Kristina Kashtanova to register her comic book “Zarya of the Dawn” with the US Copyright Office. The procedure requires the relevant work to be an original author’s creating product of creative efforts.

The US Copyright Office refused to register the images part of this comic book because there were generated through the Ai tool Midjourney. The use of the Ai wasn’t disclosed in the application but the Office found evidence that the images are produced with the help of Midjourney.

For the creation of these images, Midjourney requires human input in the form of basic instructions. They represent tokens for the training of date based on which the images are created. However, the end result is unpredictable, it relies entirely on the AI algorithms without any further human interactions and creative modifications. This is in contrast with tools such as Photoshop where the author can interact and modify the image based on his or her creative vision.

Taking all of that into account, the Office considered the Ai generated images as not original works because the author cannot influence their creation apart from the initial basic instructions.

It is quite clear that such issues will become more and more widespread considering the ongoing implementation of new and new AI tools. What is not completely clear is how the law will catch up with these new trends which are putting us in front of new challenges.

Source: IPKat.

When Google’s reputation matters – an EU Court decision

The General Court of the European Union has ruled in Case T‑ 569/21, Zoubier Harbaoui v Google LLC.

This dispute focuses our attention on a trademark application for GOOGLE CAR, filed by Mr Zoubier Harbaoui for class 12:

‘Vehicles and conveyances; Parts and fittings for vehicles; Air and space vehicles; Land vehicles and conveyances;
Water vehicles; Cable transport apparatus and installations; Air cushion vehicles; Cars for cable transport installations; Drones; Cable transport installations; Conveying installations [ski lifts]; Conveying installations (Aerial -) for the transportation of people; Cargo carriers for vehicles; Ski lifts; Aerial conveyors; Chairlifts; Vehicles’.

Against this trademark, an opposition was filed by Google Inc. based on an earlier EU trademark Google in classes 9, 35, 38, and 42. In addition, a reputation was claimed under Article 8(5) of Regulation (EU) 2017/1001.

The EUIPO confirmed the opposition finding both signs confusingly similar against the backdrop of the proven reputation of Google’s mark in the EU. The decision was appealed.

The General Court upheld the EUIPO decision. The Court found that the earlier mark’s reputation was well-established in the EU.

That difference between the goods and services covered by the marks at issue is not, in itself, sufficient to preclude certain proximity between the goods and services for the purposes of Article 8(5) of Regulation 2017/1001; a direct and immediate link between the goods and services is not necessary.

Nowadays it is widespread practice for different information technologies to be implemented in vehicles (one small example is Google Auto available in many cars). The target consumers of information technologies and vehicles are one and the same.

The Court found both signs similar. The Car word in the mark applied for is descriptive because of which first element Google has greater importance for the comparison.

Google’s mark has a strong reputation amongst consumers and if it is used by someone else for transport vehicles it is possible for consumers to relate these vehicles to Google as a company.

As correctly noted by EUIPO, the public, when purchasing a vehicle or conveyance sold under the mark applied for, will clearly
recognise the term ‘google’ and assume that the vehicles and conveyances incorporate Google technologies and tools, or that they have been developed by Google or in cooperation with Google.

Regarding the applicant’s argument that the mark WAYMO owned by the intervener and covering ‘cars’ in Class 12 would prevent him from taking unfair advantage of the earlier mark, it must first be stated that that assertion is in no way supported. Second, the mere existence of an additional mark owned by the proprietor of the earlier mark cannot have the effect of reducing or
even eliminating the risk of free-riding to the detriment of the earlier mark, where the relevant public will establish a link between the marks at issue.

Given the similarities between the marks at issue and the link which the relevant public will establish between those marks, the mark applied for carries a risk of benefiting from the attractiveness of the earlier mark, which is part of many aspects of the daily life of consumers.

Matterhorn will be no part of Toblerone packaging anymore

Toblerone is one of the most famous brands of chocolates in the world. Its history started in the early 20 century when Emil Baumann and Theodor Tobler created the product formula and its unique triangle shape that by itself is a registered trademark around the world.

Recently, the company owner of the brand Mondelez International Inc. announced its plan to transfer the production of the chocolate to Slovakia.

This is the reason why Mondelez has to change some elements of Toblerone’s packaging. In the future, the visual element of the well-known Matterhorn maintain will disappear from Toblerone as well as the claim “made in Switzerland”.

The reason for this is the strict Swiss law that protects Swissness. According to this legislation, one product can be labeled as made in the country and can use distinctive Swiss signs and geographical places only if 80% of the raw materials needed for the production are originating from Switzerland, for milk the requirement is 100%. There are some exceptions, for raw materials such as cacao which cannot be produced in the country.

This is a good example, of how one country’s reputation related to quality characteristics can be maintained over time. Apart from this, such an approach helps significantly in the development of the local economy too.

Source: Insider.

Aldi won a dispute over alcoholic beverages and its trademark in the EU

The General Court of the European Union has ruled in the case T‑429/21 Aldi Einkauf SE & Co. OHG v Cantina sociale Tollo SCA.

In 2018, Cantina successfully registered an EU trademark for ALDIANO in class 33 – alcoholic beverages (excluding beers).

An invalidation proceeding followed, initiated by the German retail chain Aldi based on two earlier marks for ALDI in classes 33 and 35.

Because these earlier marks had been registered for more than 5 years, as a counter-attack, Cantina requested proof of genuine use.

EUIPO considered the invalidation request only based on one of the earlier marks, that was registered for class 35. The Office concluded that the mark’s use was dully proved by Aldi taking into account that the store sells not only foods but alcoholic beverages too. In addition, the Office found both signs similar enough.

An appeal followed where the Board of Appeal annulled the earlier decision finding the proof of use as insufficient. The earlier Aldi’s mark for class 35 covered only the general term retailing in all product areas, and there was no sufficient evidence that the mark was used for alcoholic beverages t in particular.

It must be noted that, while it is true that the Court of Justice has held that, for the purposes of registration of a trade mark covering services provided in connection with retail trade, it is not necessary to specify in detail the service or services for which that registration is sought, the applicant must, however, be required to specify the goods or types of goods to which those services relate (judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte, C‑418/02, EU:C:2005:425, paragraphs 49 and 50).

However, first, the Court has stated that the line of authority derived from that judgment concerned only applications for registration as trademarks and did not concern the protection of trademarks registered at the date of that judgment’s delivery. Since, in the present case, the earlier mark, relied on by the applicant in support of its application for a declaration of invalidity, was registered before the date of delivery of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), it was not, in any event, concerned by the obligation arising from that judgment.

Secondly, it cannot be inferred from the considerations of that judgment that, when a trademark covering retail services, registered after that judgment’s delivery – which is the case with the earlier registration – is relied on in support of a ground for invalidity referred to in Article 60(1)(a) of Regulation 2017/1001, that ground may be rejected from the outset, simply by invoking the absence of any precise statement of the goods to which the retail services covered by the earlier mark may relate.

Lastly, it must be further stated that proof of genuine use of the earlier mark and of the earlier registration is one of the ways to determine the precise goods covered by the retail services for which those goods were registered.

The Board of Appeal therefore erred in finding that it was for the very broad specification of retail trade in all product areas that the applicant had to prove genuine use of the earlier mark. That error affects the contested decision and constitutes a sufficient basis for annulling it as regards the earlier mark for the services in Class 35.