Breaking news – The US Supreme Court has ruled in favor of Booking.com

The US Supreme Court has ruled in one of the most interesting cases recently regarding registration of generic names as trademarks.

The case at hand concerns the attempt of Booking.com to register the same domain name as a word trademark. The USPTO refused this application based on absolute grounds – the term booking is descriptive (more detail can be found here)

As an argument for its decision the USPTO relied on another Supreme Court’s decision in the case Goodyear’s India Rubber Glove Mfg. Co. v. Rubber Co., where the Court considered that the use of Company after low distinctive sign cannot create distinctiveness by itself in order the sign to be registered as a trademark.

In the present case, however, the Supreme Court disagreed. While the additional element Company is not enough to create distinctiveness because it is not so specific, the .com element speaks for a particular domain name address, which is unique.

This means that even generic names + .com or another domain address can serve as trademarks in case consumers perceive them as such. The reason is that when consumers distinguish the generic name with the particular web address, this name starts to serve as a trade indicator for the relevant products or services because it leads to a particular website.

This doesn’t mean that after receiving protection all other competitors will not be able to use BOOKING as a term. Quite the contrary, they will do this with exception of the specific web address booking.com taken in it entirety.

Source: IPKat.

“I LOVE JAPAN” cannot be a trademark in Japan after a Court decision

The Japan IP High Court has ruled that the following application for trademark in Japan for classes 14, 16, 18 and 24 cannot be registered:

This decision confirmed the same earlier position of the local Patent Office which had rejected the application.

The main argument for this was the fact that the sign lacks distinctive character. It consists of the letter I, a sign of a heart in red and the name of the country. It basically means “I love Japan”.

This phrase is used to show support to different sports events or tourist attractions, places, etc. It is widely used in the country by many people and companies.

Despite the fact that it is written in English it can be understood by the consumers easily.

It doesn’t indicate a particular trade source of origin, that is to say, the consumers will not perceive the sign as a trademark of a specific company.

From that perspective it cannot be registered as a trademark.

Source: Masaki MIKAMI

Louis Vuitton won an important lawsuit in the EU regarding one of its well-known trademarks

The General Court of the European Union has ruled out in the case T‑105/19, Louis Vuitton Malletier v Norbert Wisniewski.

It is an interesting case which concerns the following registered by Louis Vuitton figurative European trademark 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 by the Polish company Norbert Wisniewski based on absolute grounds – lack of distinctiveness.

The EUIPO concluded that the mark represents a checkerboard pattern in beige-black, which is an everyday pattern widely used by many.

Louis Vuitton appealed claiming that EUIPO erred in its conclusions not paying attention to important evidence.

The Court confirmed that the above mentioned pattern has low distinctive character.

However, the Court agreed that the EUIPO made some mistakes when assessing the pieces of evidence regarding the acquired distinctiveness related to the mark.

As it is well-known, evidence for acquired distinctive character over a trademark has to cover the territory of the entire EU.

Louis Vuitton separated its evidence into three groups, and the third group concerned countries where the company had no physical stores and official presents.

The EUIPO concluded that this is not sufficient and dismissed the claim for acquired distinctiveness.

The Court overturned this position stating that there is no need for submitting evidence for every single country if there are such that covers the whole territory of the EU.

Louis Vuitton had many internet and social media advertising campaigns that target all EU Member States. The fact that there were no stores in some countries doesn’t mean that consumers there are not aware about the brand or cannot buy it through internet for example.

What’s more, Louis Vuitton participated in different exhibitions, and in addition, there were many cases of seized counterfeit goods with the above trademark including in the countries from the third group, which comes to show that the consumers there have some information about the brand.

This decision is really important because gives some light on the issue with proving distinctive character which can be sometimes quite a challenge in the EU with its 27 Member States.

Nokia lost a dispute regarding its trademark in the EU

EUIPO has ruled out in the opposition No B 3 082 511 Nokia Corporation v Shenzhen Road Zhengtong Trading Co. Ltd.

The case at hand concerns an application for the following EU trademark for classes 9, 38, 42:

Against this application the Finnish company Nokia filed an opposition based on its early registered mark NOKIA in class 9.

The EUIPO dismissed the opposition. Phonetically both signs are similar to medium degree, visually to low degree and from conceptual point of view there are not similar at all.

Although both marks contain the string “O-K-I” and the final letter “A” their beginning is different “K” and “N”. This is important because consumers pay more attention on the beginning of trademarks.

Based on this and the fact that the applied for mark has a graphical representation, the EUIPO came to a conclusion that there was no danger for consumer confusion between both signs.

The stated enhanced distinctiveness and reputation of the Nokia brand were not been examined by the Office because the signs were not been similar enough.

Source: EUIPO.

Debranding screens can infringe Apple’s trademark too

The Supreme Court in Norway has ruled out in a lawsuits regarding the iPhone trademark.

The case concerns not original screens for iPhones imported into the country where the brand logo was covered up.

Initially the Court in Oslo ruled out that there was no infringement because the trademark was not been visible for the consumers.

The Supreme Court, however, overturned that decision stating the contrary. The arguments for this were the fact that although the brand was not visible the covering could be easily reversed in order to make the spare parts more valuable. This can create confusion whether the screen are original or not.

Apart from that, the target consumer group is not the end users but the repairers performing the installation in the repair shops. Because of this there was a higher degree of attention which can lead those consumers to the idea that the screens are counterfeit.

The Court cited the European Court’s position in the case Mitsubishi (C-129/17), where spare parts with even removed brands are considered as trademark infringements.

The only question that can bother the Court and the society as a whole in such cases is the fact that all infringed goods will be destroyed as a general rule of thumb which can reflect negatively on the environment. This issue is valid for most of the countries around the world where the legislation is similar. Probably the law has to stipulates an option at least for recycling.

Abercrombie & Fitch’s Store Front Sculpture can be protected by copyright

The US Copyright Office Review Board has recently issued a decision according to which the following Abercrombie & Fitch’s Store Front Sculpture is copyright protectable:

Initially the Office refused to register this sculpture stating that it is not original enough due to the fact that it consists of ordinary elements such as letters and geometric shapes which are not protected by the US Copyright law.

The Board, however, revised this decision, punting out that although the single elements are not protectable, the whole combination of them can be protected in case that there is at least a minimum level of creativity.

At the case at hand, the Board considered that this is satisfied based on the particular combination between the letters A and F, the ampersand symbol, and the abbreviation “Co.”.

Recently the US Copyright Office ruled out the UEFA Champion League’s logo and Vodafone’s corporate logo is not sufficiently original and refused their registration in the US.

Source: IPKat.

Can Booking.com be a trademark – that’s the question

Megan Taylor (Novagraaf) published an interesting article for Lexology where she discusses the topic for registration possibilities of low distinctive or generic names as trademarks.

The case at hand concerns the Booking.com’s attempt to register this domain name as a word trademark in the US. So far all applications for such trademarks have been refused by the USPTO. The arguments for this were the fact the booking is descriptive word for accommodation services for which the registration was sought.

The company’s position, however, was that the presence of .com makes the difference because it helps consumer to associate the word with the company’s business and in that way to create secondary meaning for the word.

The USPTO considers that such words have to be left for free use by all market participants.

Currently this case is submitted to the US Supreme Court and everyone expect its position.

In contrast, Booking.com was more successful in the EU. They received registration for its word mark in 2007 after proving acquired distinctiveness among the consumers.

Having said that, however, the EUIPO has changed its practice on the matter and nowadays it is really difficult such generic words to be registered as word marks even in case of evidence for a secondary meaning.