Russia will allow registration of geographical indications after 27.07.2020. Until now this was possible only for the so-called appellations-of-origin which protection, however, has more requirements.
Now another type of geographical indications will be allowed for registration in the country with fewer requirements for protection.
For example, while in the case of appellations-of-origin all row-materials and production have to be done in the relevant geographical area, with the geographical indication it is enough at least one of the production phases to be in the geographical place.
For more information here.
Source: CMS Russia for Lexology.
DC Comics won a dispute in the EU regarding its famous Superman trademark. The case concerns an attempt by Magic Box to register the following EU trademark in class 28 – toys and games:
Against this mark an opposition was filed by DC Comics based on the following earlier trademark in classes 3, 9, 14, 16, 25, 21, 24, 25, 28, 30, 32 и 41:
In addition, a trademark with reputation under Article 8(5) EUTMR was claimed.
The EUIPO found both sign similar at least in one of their aspects. The Office agreed that Superman trademark was well-known in the EU, but for the goods in class 16 – comics and books and not for film making services in class 41.
According to the EUIPO, it is a common practice different characters from books to be used for merchandising products including for different toys which are very much accepted by the consumers. From that point of view, and taking into account the reputation of the earlier mark, the Office considered that the consumers could find a link between both marks which can give some unfair advantages to the applicant of the later mark.
Because of this the trademark application was rejected.
The General Court of the European Union has ruled in case T‑572/19, Muratbey Gida Sanayi ve Ticaret AŞ v EUIPO. It concerns an attempt for registration of the following EU 3D trademark for the shape of cheese sticks in class 29 – milk products:
The EUIPO refused the registration with the argument that it is not distinctive. The Turkish applicant claimed that the shape was novel, original and unique, offered in the market for the first time by him. Because of this the company won a World Dairy Innovation Award 2018.
The Court disagreed. Novelty and originality are not criteria for assessment of the distinctive character of a sign. The award could be a factor but only if it was based on a consumer perception.
According to the Court, other producers were offering similar products too because of which the shape of this cheese is not distinctive enough to be registered as a trademark.
It has become recently known that the famous climate activist Greta Thunberg has filed several trademarks related to her names. All of them are European trademarks for classes 35, 36, 41, 42:
FRIDAYS FOR FUTURE
According to Greta Thunberg, the reason to seek trademark protection was the fact that her names and the hashtags that she uses were subject to unauthorized, falsely and misleading use by others claiming relation with her climate movement, which wasn’t true.
The practice famous people to register their names as trademarks are not new or strange. Quite the contrary, it is understandable because the names of such people can create a kind of value and reputation that deserves to be protected.
The key moment here, however, is to what extent such registrations will be effective. As it is known, 5 years after a trademark registration, every third party can try to cancel it if the mark is not genuinely used for the goods and services mentioned in its application.
Recently the famous graffiti artist Bansky had such problems regarding his trademark.
All of this comes to show that only registration is not enough when it comes to trademark protection. A good entire strategy is necessary in order for one brand name with value and reputation to be effectively protected in the market in the long run.
The General Court of the European Union has ruled in T‑589/18 Vins el Cep, SL v EUIPO. The case concerns an attempt for registration of the following EU trademark in class 33 – Alcoholic beverages (except beer).
Against this mark, an opposition was filed based on earlier marks MM, MUMM and the following combined mark, all for class 33:
The EUIPO upheld the opposition concluding that there is a risk for consumer confusion between the signs. The dominant element in the later mark was MIM, which was similar to MM and MUMM at the beginning and end of the words.
Visually and phonetically the marks at hand were similar too. Conceptually, there was no similarity because the word MUMM meant ‘courage’ in German.
The word part NATURA in the mark applied for, had secondary importance so it wasn’t able to make the difference.
Taking into account the identical goods in class 33, the Office accepted that there is a risk for consumer confusion.
The decision was upheld by the General court.
The UK based owner of a small business Tiffany Parmar applied for a UK trademark “Cotswold Lashes by Tiffany” in 2018. The scope of the application covers the following classes: 3 (cosmetics), 41 (education and beauty school services) and 44 (hygienic and beauty care services).
Against this application, the US company Tiffany&Co filed an opposition based on a family of early registered trademarks Tiffany for classes 3, 14 and 41. In addition, a trademark with reputation was claimed due to the fact that Tiffany&Co has been operating in the UK since 1868 making sales for millions of dollars every year.
The UKIPO upheld the opposition with the argument that there is a serious risk for consumer confusion between the signs. The claimed reputation was not taken into consideration, however, because according to the Office, it was stated for goods that are dissimilar with those in the later mark.
The case at hand shows clearly that it is not always possible for individuals to register their personal names as a trademark if they collide with an already established and well-known trademark.
Volkswagen has recently lost an opposition against a word trademark application for “Car-pollo” for the following goods and services:
class 9 – navigation apparatus (GPS) for vehicles [onboard computers]; car video recorders; batteries for vehicles; battery charging devices for motor vehicles; electric locks for vehicles and others;
class 12 – wheelbarrows; airplanes; vessels; bicycles; electric bicycles;
class 42 – automatic driving cars design;
The mark was filed by the Chinese company Baidu Online Network Technology Beijing Company Limited.
Against this application, the German company evoked its rights over POLO trademark in class 12.
According to Volkswagen, both signs are confusingly similar. The first part of the later mark is CAR which is a descriptive and not distinctive word for the list of goods and services at hand.
Apart from that, POLO trademark acquired a reputation in Japan due to its longstanding market presence in the country.
The Japan Patent Office, however, dismissed the opposition. According to the Office, both trademarks are dissimilar. The word CAR is descriptive whereas the term POLO means a game played on horseback between two teams. What’s more the POLLO part in the later mark has no dominant position.
Although the earlier mark is famous in Japan, the lack of similarity prevails the possibility of consumer confusion.
Source: Masaki MIKAMI.