A trademark dispute for LE MANS in Japan and its association with the famous car racing

The Japan Patent Office has recently ruled in a trademark dispute that focuses our attention on the world’s well-known car racing “24 hours of Le Mans”.

Everything started with a national trademark application for “Le mans de elegance” in class 25 – clothing, garters, sock suspenders, braces [suspenders] for clothing, waistbands, belts [clothing], footwear, masquerade costumes, sports shoes, clothes for sports.

This application triggered opposition by AUTOMOBILE CLUB DE L’OUEST (ACO) based on several earlier marks for LE MANS  in class 25.

According to ACO, the earlier marks were famous amongst consumers in Japan in relation to the oldest car racing in the world “24 hours of Le Mans”. The company stated that de elegance part in the later mark was descriptive of the goods in class 25. This made the first part Le mans identical to the AOC’s marks. What’s more the company argued that there is a relation between clothes and car racing citing a previous Patent Office practice on that matter.

The Office, however, wasn’t impressed and dismissed the opposition. While it was true that “24 hours of Le Mans” was a popular event, the submitted evidence didn’t prove that LE MANS alone is famous too.

According to the Office, the signs were not similar enough from a phonetic, visual, and conceptual point of view, especially the fact that Le man associates with a town in France.

Source: Masaki Mikami, Marks IP Law Firm.

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Ferrari lost a trademark dispute in Japan regarding its famous prancing horse

Masaki MIKAMI ( Marks IP Law Firm) reports about an interesting trademark dispute in Japan that includes a black horse and the mythological Pegasus.

The Japanese company CLOVER HOLDING Co. Ltd filed an application for the following trademark in class 12 – automobiles and its structural parts and accessories:

Against this application an opposition was filed by the well-known sport cars manufacturer Ferrari based on the following earlier figurative trademark in class 12:

According to the Italian company both signs were confusingly similar taking into account the long history of the Ferrari’s famous logo and its high level of recognition amongst consumers.

The Patent Office agreed that Ferrari’s trademark has a strong reputation in the market. Despite that fact, however, the Office dismissed the opposition in its entirety.

The reason was that both sign were not similar from visual, phonetic and conceptual point of view. In the later mark there is a white image of flying Pegasus whereas the earlier sign includes a black horse. What’s more the word parts in the mark applied for create additional difference.

From that perspective it was highly unlikely consumers to be confused between both trademarks even though they were for one and the same class of goods.

Volkswagen lost a dispute against Baidu in Japan

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.

Honda won a trademark dispute in the UK

Honda won an opposition in the UK against an application for a trademark ‘Vtecdirect’ in class 37 for the “the fitting and installation of Vehicle parts; the maintenance, repair, and servicing of vehicles”.

Against this mark, the Japanese company invoked its earlier mark for ‘VTEC’ in class 12.

According to the Patent Office, there is a similarity between both signs that can create consumer confusion. Both trademarks are visually similar due to the VTEC part which has a leading position. Although DIRECT word creates some conceptual difference it is not enough to overcome the similarity especially taking into account the fact that this word is not so distinctive.

The applicant’s argument that there was no confusion because both companies have different business models and in fact, its services enhance Honda’s sales were been dismissed. The trademark role is to indicate trade origin not to promote someone else’s brand.

Source: WIPR.

Debranding, rebranding and use of a trademark in the EU – the Mitsubishi case

The European court has ruled in C‑129/17, Mitsubishi Shoji Kaisha Ltd v Duma Forklifts NV. The case at hand concerns the following:

Mitsubishi, established in Japan, is the proprietor of the following marks (‘the Mitsubishi marks’):

–  The EU word mark MITSUBISHI, registered on 24 September 2001 under number 118042 for, inter alia, goods in Class 12 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, including motor vehicles, electric vehicles and forklift trucks;

–  The EU figurative mark, represented below, registered on 3 March 2000 under number 117713, designating in particular the products in Class 12 of that Agreement, including motor vehicles, electric vehicles and forklift trucks:

–  The Benelux word mark MITSUBISHI registered on 1 June 1974 under the number 93812, designating inter alia the goods in Class 12, including land vehicles and means of transport and Class 16, including books and printed matter;

–  The Benelux figurative mark MITSUBISHI registered on 1 June 1974 under the number 92755, designating inter alia the goods in Class 12, including land vehicles and means of transport and Class 16, including books and printed matter, identical to the EU figurative mark.

MCFE, established in the Netherlands, is exclusively authorised to manufacture and place on the market in the EEA forklift trucks supplied under the Mitsubishi mark.

Duma, established in Belgium, has as its main activity the worldwide purchase and sale of new and second hand forklift trucks. It also offers for sale its own forklift trucks under the names ‘GSI’, ‘GS’ and ‘Duma’. It was previously an official subdealer of Mitsubishi forklift trucks in Belgium.

GSI, also established in Belgium, is affiliated with Duma, whose administration and head office it shares. It constructs and repairs the forklift trucks that it imports and exports wholesale, with their components, on the world market. It adapts them to the applicable European standards, gives them their own serial numbers and delivers them to Duma, providing EU declarations of conformity.

It is stated in the order for reference that, in the period from 1 January 2004 to 19 November 2009, Duma and GSI proceeded to make parallel imports in the EEA of forklift trucks bearing the Mitsubishi marks, without the consent of the proprietors of those marks.

Since 20 November 2009, Duma and GSI have acquired from a company within the Mitsubishi group, outside the EEA, forklift trucks that they bring into EEA territory where they place them under a customs warehousing procedure. They then remove from those goods all the signs identical to the Mitsubishi marks, make the necessary modifications to render those goods compliant with European Union standards, replacing the identification plates and serial numbers with their own signs. They import those goods and then market them both within and outside the EEA.

Mitsubishi and MCFE applied to the Rechtbank van koophandel te Brussel (Commercial Court, Brussels, Belgium) seeking, in particular, that the court order the cessation of those activities. Their applications were rejected by a judgment of 17 March 2010, and so they appealed to the Hof van beroep te Brussel (Court of Appeal, Brussels, Belgium), before which they sought the prohibition of both the parallel trade in forklift trucks bearing the Mitsubishi mark and the importation and marketing of forklift trucks on which signs identical to those marks have been removed and new signs affixed.

Before that court, Mitsubishi submitted that the removal of the signs and affixing of new signs on forklift trucks purchased outside the EEA, the removal of identification plates and serial numbers, and the importation and marketing of those forklift trucks in the EEA, infringed the rights conferred on them by the Mitsubishi marks. It submitted in particular that the removal of the signs identical to those marks, without its consent, was an infringement of the right of the proprietor of the mark to control the first placing on the market in the EEA of the goods bearing that mark and harmed the mark’s functions of indicating origin and quality, as well as the functions of investment and advertising. It observed, in that regard, that despite that removal, the Mitsubishi forklift trucks remained recognisable to the consumer.

Duma and GSI submitted in particular that they must be regarded as the manufacturers of the forklift trucks that they purchased outside the EEA because they made modifications to those trucks in order to render them compliant with European Union regulation, and they were therefore entitled to affix their own signs.

As regards the parallel import into the EEA of forklift trucks bearing the Mitsubishi marks, the referring court held that that was a breach of the law on trademarks and upheld the applications made by Mitsubishi and MCFE. With regard to the importation and marketing in the EEA, with effect from 20 November 2009, of Mitsubishi forklift trucks originating in countries that are not members of the EEA on which the signs identical to the Mitsubishi marks were removed and new signs affixed, it observed that the Court had not yet ruled on the question of whether actions, such as those undertaken by Duma and GSI, constituted a use that the proprietor of the mark could prohibit, while observing that the Court’s case-law gave indications that led it to suppose that that question called for a positive response.

It was in those circumstances that the Hof van beroep te Brussel (Court of Appeal, Brussels) (Belgium) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

(1) (a) Do Article 5 of Directive 2008/95 and Article 9 of Council Regulation No 207/2009 cover the right of the trade mark proprietor to oppose the removal, by a third party, without the consent of the trademark proprietor, of all signs identical to the trademarks which had been applied to the goods (debranding), in the case where the goods concerned have never previously been traded within the EEA, such as goods placed in a customs warehouse, and where the removal by the third party occurs with a view to importing or placing those goods on the market within the EEA?

(b) Does it make any difference to the answer to question (a) above whether the importation of those goods or their placing on the market within the EEA occurs under its own distinctive sign applied by the third party (rebranding)?

(2) Does it make any difference to the answer to the first question whether the goods thus imported or placed on the market are, on the basis of their outward appearance or model, still identified by the relevant average consumer as originating from the trade-mark proprietor?’

The Court’s decision:

Article 5 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks and Article 9 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trademark must be interpreted as meaning that the proprietor of a mark is entitled to oppose a third party, without its consent, removing all the signs identical to that mark and affixing other signs on products placed in the customs warehouse, as in the main proceedings, with a view to importing them or trading them in the EEA where they have never yet been marketed.

Image: Tama66 on Pixabay.

Design, replica spare parts, wheel rims and an EU Court decision

The European Court ruled out in joined cases C‑397/16 and C‑435/16, Acacia Srl v Audi AG. These cases concern the following:

Case C‑397/16

Audi is the holder of a number of Community designs of alloy car wheel rims.

Acacia manufactures, under the brand WSP Italy, alloy car wheel rims that are sold on its own website, which is available in several languages. According to the referring court, some of those wheel rims are identical to Audi’s alloy wheel rims. The wheel rims manufactured by Acacia are stamped with the indication ‘NOT OEM’, which means not made by the original equipment manufacturer. The commercial and technical documents accompanying those products, the sales invoices and Acacia’s internet site indicate that the wheel rims at issue are sold exclusively as replacement parts for the purpose of making repairs.

Audi brought an action before the Tribunale di Milano (District Court, Milan, Italy) seeking, in essence, a declaration that Acacia’s manufacture and sale of the wheel rims at issue constitutes an infringement of its Community designs. That court upheld that action.

Acacia brought an appeal against that court’s judgment before the Corte d’appello di Milano (Court of Appeal, Milan, Italy). That court, after noting inter alia the existence of conflicting rulings from Italian courts and courts of other Member States concerning the application of the ‘repair’ clause, held that there were serious doubts as to the interpretation of Article 110(1) of Regulation No 6/2002.

In those circumstances, the Corte d’appello di Milano (Court of Appeal, Milan) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  Do [i] the principles of the free movement of goods and of the freedom to provide services within the internal market, [ii] the principle of the effectiveness of EU competition law and of the liberalisation of the internal market, [iii] the principles of effet utile and of the uniform application within the European Union of EU law and [iv] the provisions of secondary EU law, such as Directive 98/71, and in particular Article 14 thereof, Article 1 of [Commission Regulation (EU) No 461/2010 of 27 May 2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of vertical agreements and concerted practices in the motor vehicle sector (OJ 2010 L 129, p. 52)] and Regulation [No 124 of the Economic Commission for Europe of the United Nations (UN/ECE) — uniform provisions concerning the approval of wheels for passenger cars and their trailers (OJ 2006 L 375, p. 604, and corrigendum OJ 2007 L 70, p. 413)], preclude an interpretation of Article 110 of Regulation No 6/2002, which contains the repair clause, that excludes replica wheels aesthetically identical to original equipment wheels and approved on the basis of UNECE Regulation No 124 from the definition of a ‘component part of a complex product’ (that complex product being a motor vehicle) for the purpose of the repair of that complex product and the restoration of its original appearance?

(2) In the event that the first question is answered in the negative, do the rules on exclusive industrial rights in respect of registered designs, regard being had to the balancing of the interests referred to in the first question, preclude the application of the repair clause to replica complementary products that may be selected freely by the customer, on the basis that the repair clause is to be interpreted restrictively and may be relied upon only with respect to spare parts that come in one particular form only, that is to say, component parts the form of which has been determined in practically immutable fashion with respect to the external appearance of the complex product, to the exclusion of component parts that may be regarded as interchangeable and that may be applied freely, in accordance with the customer wishes?

(3)  In the event that the second question is answered in the negative, what steps must a manufacturer of replica wheels take in order to ensure the free movement of products the intended use of which is the repair of a complex product and the restoration of its original appearance?’

Case C‑435/16

Porsche is the holder of a number of Community designs of alloy car wheel rims.

The wheel rims manufactured by Acacia, referred to in paragraph 12 of the present judgment, are sold, in Germany, on its internet site, which is directed at end consumers and is accessible in German. According to the referring court, some of those wheel rims are identical to Porsche’s alloy wheel rims. That court observes that, according to Acacia, the rims it manufactures and which are intended for Porsche vehicles can be used only with Porsche vehicles. Porsche submits to that court that the rims in question are also offered in colours and sizes which do not correspond to the original products.

Porsche brought an action before the Landgericht Stuttgart (Regional Court, Stuttgart, Germany) seeking, in essence, a declaration that Acacia’s manufacture and sale of the wheel rims at issue constitutes an infringement of its Community designs. That court upheld that action.

As the appeal brought by Acacia and Mr D’Amato was dismissed, they brought an appeal on a point of law (Revision) before the referring court. That court notes that the outcome of the appeal on a point of law depends on whether Acacia may rely on the ‘repair’ clause in Article 110(1) of Regulation No 6/2002. However, the interpretation of that provision raises several difficulties.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice, Germany) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  Is the application of the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 limited to fixed shape parts, namely those parts whose shape is in principle immutably determined by the appearance of the product as a whole and cannot therefore be freely selected by the customer, such as rims for motor vehicles?

(2)  If Question 1 is answered in the negative: Is the application of the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 limited only to the supply of products of an identical design, which thus correspond also in colour and size to the original products?

(3)  If Question 1 is answered in the negative: Does the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 apply in favour of the supplier of a product that fundamentally infringes the design at issue only if this supplier objectively ensures that his product can be purchased exclusively for repair purposes and not for other purposes as well, such as the upgrading or customisation of the product as a whole?

(4)  If Question 3 is answered in the affirmative: Which measures must the supplier of a product that fundamentally infringes the design at issue take in order to objectively ensure that his product can be purchased exclusively for repair purposes and not for other purposes as well, such as the upgrading or customisation of the product as a whole? Is it enough:

(a)  that the supplier includes a note in the sales brochure to the effect that any sale takes place exclusively for repair purposes so as to restore the original appearance of the product as a whole; or

(b)  is it necessary that the supplier make delivery conditional on the customer (traders and consumers) declaring in writing that the product supplied is to be used for repair purposes only?’

By decision of the President of the Court of 25 April 2017, Cases C‑397/16 and C‑435/16 were joined for the purposes of the oral part of the procedure and the judgment.

The Court decision is:

1. Article 110(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that the ‘repair’ clause in it does not make the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the protected design is dependent upon the appearance of the complex product.

2. Article 110(1) of Regulation No 6/2002 must be interpreted as meaning that the ‘repair’ clause in it makes the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the replacement part must have an identical visual appearance to that of the part which was originally incorporated into the complex product when it was placed on the market.

3. Article 110(1) of Regulation No 6/2002 must be interpreted as meaning that, in order to rely on the ‘repair’ clause contained in that provision, the manufacturer or seller of a component part of a complex product are under a duty of diligence as regards compliance by downstream users with the conditions laid down in that provision.