Partial success for Cadbury over color trademarks dispute in the UK

night-photograph-starry-sky-night-sky-star-957040.jpegThe UKIPO has ruled in oppositions against the following trademark applications all for class 30, filed by Cadbury:

GB50000000003019362.jpg– № 3019361, with the following description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods.

GB50000000003019362.jpg– № 3019362, with the following description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.

GB50000000003019362.jpg– № 3025822, with the following description: The colour purple (Pantone 2685C), shown on the form of application.

Against these applications Nestle filed oppositions with the following arguments:

  • The reference in the description to a Pantone number is a necessary but not
    sufficient condition for the Application to comply with Section 1(1);
  • The reference in the description to something “being shown on the form of
    application” does not comply with the requirement of being self-contained,
    intelligible and/or accessible. The application form does not form part of the
    public register and those consulting the public register are unable to ascertain
    from that the nature of the material referred to in the description.
  • The reference in the description to something being “applied to the packaging
    of the goods” imports a reference to a means of configuration or
    representation which is not shown on the register and which may comprise a
    potentially limitless number of signs/means of representation.
  • The reference in the description to “the whole visible surface” is inherently
    ambiguous because the public and competitors will assume – and the
    applicant intends – that less than the whole visible surface is in fact meant by
    the words “whole visible surface” since products of this kind must of necessity
    bear words, logos and other elements of different colours on the surface of
    the packaging.

The UKIPO agreed that in the case of trademarks 3019361 and 3025822 their descriptions create ambiguity regarding what exactly these signs represent.

Regarding trademark 3019362, however, the UKIPO considered that the above-mentioned conclusion is not relevant because the trademark’s description gives an idea of what exactly trademark dimensions are.

Source: WIPR.

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The Black and white trademark color dominance in Sweden is over

sunnana-harbour-2914389_960_720.jpgHans Eriksson published an intriguing article for IPKat discussing the issue on color assessment of trademarks in Sweden.

Until that moment, the Swedish practice in that regard was to accept that trademarks in black and white covers all color combinations for the purpose of trademark assessment in case of disputes.

Not any more. The Swedish Patent Office and the Swedish court change that position implementing the European court decision in case C-252/12 Specsavers, according to which the registration of a trademark in black and white cannot be granted a scope of protection that automatically covers all possible color combinations.

Sweden alongside Denmark and Norway was one of the few countries in the EU which has continuously used this broader approach in color assessment of trademarks.

This change of the local practice will reflect on all future applicant who has to bear in mind that when they build their trademarks strategies for the territory of Sweden.

The full article can be found here.

Beats Electronics won a trademark case in the EU

pexels-photo-577769.jpegThe Board of Appeal of the EUIPO has ruled in a case regarding an application for the following European trademark applied for classes 9 (apparatus for recording, transmission or reproduction of sound or images), 35 (business management, business administration, market research services, export services), and 38 (telecommunication services, in particular mobile telephony, broadcasting of radio and television programmes):

beats1

Against this application, an opposition was filed by Beats Electronics based on the following earlier European trademarks for classes 9 (audio and video equipment including audio players, video players, media players, portable media players), 38 (providing online bulletin boards in the fields of media, music, video, film, book and television for the transmission of messages among users), and 41 (nightclub services, dance club services, provision of live entertainment and recorded entertainment) of the Nice Classification. EUTM 2 was for the same goods and services, with the addition of Class 42 (providing an interactive online network website, via electronic communication networks):

Initially, the EUIPO’s Opposition Division dismissed the opposition stating that there is no possibility for consumer confusion concerning both signs despite the identical and similar goods. The claim for trademarks with reputation by Beats Electronics was dismissed as not proved.

The decision was appealed and the Board of Appeal reversed it finding that the Opposition Division erred in its conclusions.

According to the the Board, both trademarks are similar and can create confusion amongst the consumers. The arguments behind this position were that both signs have similar visual elements as well as colors. The differences are not enough to overcome similarities. What’s more the earlier marks have a reputation on the market which was proved by the owner.

Source: Nedim Malovic, IPKat.

Brief IP news

briefs_1131. CJEU in C-395/16, Doceram vs. CeramTec, interprets the concept of technically required features of appearance excluded from protection under Community designs Regulation. For more information here.

2. Colour it mine: protecting colour trademarks. For more information here.

3.  Euro-PCT Guide: PCT procedure at the EPO. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here