Greta Thunberg wants to protect her names as a trademark

RS254_3-lprIt 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:

GRETA THUNBERG

FRIDAYS FOR FUTURE

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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.

MIM is similar to MUMM according to the General Court of the EU

gavel-3577254_1920The 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).

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Against this mark, an opposition was filed based on earlier marks MM, MUMM and the following combined mark, all for class 33:

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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.

Tiffany won a dispute against a British citizen with the same name

zurich-1207287_1920The 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 lost a dispute against Baidu in Japan

car-3333775_960_720.jpgVolkswagen 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.

Piaggio lost a dispute in the EU over scooter design

vespa-roller-motor-scooter-cult-159192.jpegThe General Court of the European Union has ruled in the case T‑219/18 Piaggio v EUIPO. The dispute concerns the following registered European design for scooters by a Chinese company in 2010:

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The Italian company Piaggio an invalidity procedure in 2014 claiming that this design is very similar to that implemented in its own scooters which are famous amongst the consumers for many years. In addition, some registered designs and trademarks were been invoked too.

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The EUIPO dismissed the application for invalidity concluding that the overall impression created by the later design and that of the earlier one is different.

The decision was appealed.

The General Court upheld the EUIPO’s position on the matter.  According to the court:

First of all, it should be noted, that the applicant has no reason to claim that the fact that process designs have several common elements and, in general, a very similar form, leads to the conclusion that the contested design creates the general impression for “Déjà vu” when compared to earlier industrial designs.

In fact, as the Board of Appeal correctly observed, that while in the contested industrial design, the angular lines were predominant, in the earlier industrial design the lines were rather rounded. The process designs give the opposite impression to the informed consumer, who is given particular vigilance and sensitivity, in particular to the design and aesthetic qualities of the products concerned.

It follows from all of the foregoing that the Board of Appeal did not err in its assessment that the contested and earlier designs gave different general impressions to the informed consumer, concluding that the contested designs were original in the meaning of Article 6 of Regulation No 6/2002 as compared to the earlier one.

As regards the opposing marks, the court considers that:

It follows from all the foregoing that, because, on the one hand, the earlier mark’s overall visual impression is different from that of the contested industrial design and, on the other, the importance that aesthetic qualities have for the choice, the average consumer, who is highly attentive, will not assume that the disputed industrial design uses the earlier mark despite the identity of the products concerned.

(unofficial translation)

Who are the IP superheroes?

robin-1115934_960_720.jpgDennemeyer & Associates published an interesting article for Lexology discussing intellectual property protection and the different specialist involved and their roles as IP superheroes. According to this article, there are several roles:

  • “Shadow Hunter” – anti-counterfeiting;
  • “The Visionary” – patent examiner;
  • “Doctor Inventor” – patent engineer;
  • “The Lawman” – patent prosecutor;
  • “Major Trail” – patent litigator;
  • “Captain Europe” – patent attorney;
  • “The Sidekick” – IP paralegal;
  • “The Wonder” – trademark attorney;
  • “The Alliance” – consultants and trainers

We would like to add one more role:

  • “New Stars” – Intellectual property managers that are responsible for the strategic management of all corporate intangible assets;

Can we do a visual search for trademarks in Croatia?

dubrovnik-512798_960_720.jpgEUIPO reports about the newly available option for trademark search by visual elements for Croatia. This is possible after the Croatian Patent Office gave the necessary access for this purpose to the global trademark database TMView, which can be used for conduction such trademark search.

The other countries that allow this search are: Estonia, Bulgaria, France, Greece, Lithuania, Romania, Spain, UK, Malta, Sweden, Italy, Ireland, Slovakia, and the Czech Republic.

For more information here.