When Google’s reputation matters – an EU Court decision

The General Court of the European Union has ruled in Case T‑ 569/21, Zoubier Harbaoui v Google LLC.

This dispute focuses our attention on a trademark application for GOOGLE CAR, filed by Mr Zoubier Harbaoui for class 12:

‘Vehicles and conveyances; Parts and fittings for vehicles; Air and space vehicles; Land vehicles and conveyances;
Water vehicles; Cable transport apparatus and installations; Air cushion vehicles; Cars for cable transport installations; Drones; Cable transport installations; Conveying installations [ski lifts]; Conveying installations (Aerial -) for the transportation of people; Cargo carriers for vehicles; Ski lifts; Aerial conveyors; Chairlifts; Vehicles’.

Against this trademark, an opposition was filed by Google Inc. based on an earlier EU trademark Google in classes 9, 35, 38, and 42. In addition, a reputation was claimed under Article 8(5) of Regulation (EU) 2017/1001.

The EUIPO confirmed the opposition finding both signs confusingly similar against the backdrop of the proven reputation of Google’s mark in the EU. The decision was appealed.

The General Court upheld the EUIPO decision. The Court found that the earlier mark’s reputation was well-established in the EU.

That difference between the goods and services covered by the marks at issue is not, in itself, sufficient to preclude certain proximity between the goods and services for the purposes of Article 8(5) of Regulation 2017/1001; a direct and immediate link between the goods and services is not necessary.

Nowadays it is widespread practice for different information technologies to be implemented in vehicles (one small example is Google Auto available in many cars). The target consumers of information technologies and vehicles are one and the same.

The Court found both signs similar. The Car word in the mark applied for is descriptive because of which first element Google has greater importance for the comparison.

Google’s mark has a strong reputation amongst consumers and if it is used by someone else for transport vehicles it is possible for consumers to relate these vehicles to Google as a company.

As correctly noted by EUIPO, the public, when purchasing a vehicle or conveyance sold under the mark applied for, will clearly
recognise the term ‘google’ and assume that the vehicles and conveyances incorporate Google technologies and tools, or that they have been developed by Google or in cooperation with Google.

Regarding the applicant’s argument that the mark WAYMO owned by the intervener and covering ‘cars’ in Class 12 would prevent him from taking unfair advantage of the earlier mark, it must first be stated that that assertion is in no way supported. Second, the mere existence of an additional mark owned by the proprietor of the earlier mark cannot have the effect of reducing or
even eliminating the risk of free-riding to the detriment of the earlier mark, where the relevant public will establish a link between the marks at issue.

Given the similarities between the marks at issue and the link which the relevant public will establish between those marks, the mark applied for carries a risk of benefiting from the attractiveness of the earlier mark, which is part of many aspects of the daily life of consumers.

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Aldi won a dispute over alcoholic beverages and its trademark in the EU

The General Court of the European Union has ruled in the case T‑429/21 Aldi Einkauf SE & Co. OHG v Cantina sociale Tollo SCA.

In 2018, Cantina successfully registered an EU trademark for ALDIANO in class 33 – alcoholic beverages (excluding beers).

An invalidation proceeding followed, initiated by the German retail chain Aldi based on two earlier marks for ALDI in classes 33 and 35.

Because these earlier marks had been registered for more than 5 years, as a counter-attack, Cantina requested proof of genuine use.

EUIPO considered the invalidation request only based on one of the earlier marks, that was registered for class 35. The Office concluded that the mark’s use was dully proved by Aldi taking into account that the store sells not only foods but alcoholic beverages too. In addition, the Office found both signs similar enough.

An appeal followed where the Board of Appeal annulled the earlier decision finding the proof of use as insufficient. The earlier Aldi’s mark for class 35 covered only the general term retailing in all product areas, and there was no sufficient evidence that the mark was used for alcoholic beverages t in particular.

It must be noted that, while it is true that the Court of Justice has held that, for the purposes of registration of a trade mark covering services provided in connection with retail trade, it is not necessary to specify in detail the service or services for which that registration is sought, the applicant must, however, be required to specify the goods or types of goods to which those services relate (judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte, C‑418/02, EU:C:2005:425, paragraphs 49 and 50).

However, first, the Court has stated that the line of authority derived from that judgment concerned only applications for registration as trademarks and did not concern the protection of trademarks registered at the date of that judgment’s delivery. Since, in the present case, the earlier mark, relied on by the applicant in support of its application for a declaration of invalidity, was registered before the date of delivery of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), it was not, in any event, concerned by the obligation arising from that judgment.

Secondly, it cannot be inferred from the considerations of that judgment that, when a trademark covering retail services, registered after that judgment’s delivery – which is the case with the earlier registration – is relied on in support of a ground for invalidity referred to in Article 60(1)(a) of Regulation 2017/1001, that ground may be rejected from the outset, simply by invoking the absence of any precise statement of the goods to which the retail services covered by the earlier mark may relate.

Lastly, it must be further stated that proof of genuine use of the earlier mark and of the earlier registration is one of the ways to determine the precise goods covered by the retail services for which those goods were registered.

The Board of Appeal therefore erred in finding that it was for the very broad specification of retail trade in all product areas that the applicant had to prove genuine use of the earlier mark. That error affects the contested decision and constitutes a sufficient basis for annulling it as regards the earlier mark for the services in Class 35.

McDonald’s strikes back regarding the revocation of its EU trademark Big Mac

As this blog mentioned, McDonald’s lost a trademark revocation procedure before the EUIPO in 2019, regarding its EU trademark BIG MAC. The revocation application was filed by the Irish fast food chain Supermac’s (Holdings) Ltd on the ground of an EU trademark not put to genuine use for a continuous five-year period.

The EUIPO revoked the mark finding McDonald’s evidence for real trademark use as insufficient. Of course, this decision was appealed.

No the Board of Appeal of the EUIPO annulled the previous decision stating that the mark’s use was proved for the following:

• In Class 29 – Foods prepared from meat and poultry products, meat sandwiches, chicken
  sandwiches;
• In Class 30 – Edible sandwiches, meat sandwiches, chicken sandwiches;
• In Class 42 – Services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods.

The Board found that EUIPO failed to assess properly some of the submitted evidence. For instance, although Wikipedia’s page devoted to the mark can be edited, it contains links to external reliable sources such as newspapers and magazines that provide information for Big Mac too.

In addition, McDonald’s submitted new pieces of evidence in the appeal. For example, in some countries, the so-called ‘Big Mac Index’ is very popular for comparing the cost of living.

Consumer surveys, financial papers, and additional ad materials were provided too, and all of them show extensive trademark use in countries such as Germany, France, the UK (before Brexit), etc.

What’s more, the Big Mac brand has been used only in relation to McDonald’s stores and not by other competitors which in turn shows the sign is capable to indicate a particular trade origin.

Based on this the Board of Appeal concluded that Big Mac has been used as a trademark on the territory of the EU for a continuous five-year period.

Source: EUIPO.

When Yoga can be a serious threat to trademark protection in the EU?

The General Court of the European Union has ruled in the case Case T‑443/21 YAplus DBA Yoga Alliance v Swami Vidyanand.

This dispute focuses our attention on the issue of trademarks with a weak distinctive character and how this reflects on the scope of their protection.

In 2018, Mr. Swami Vidyanand filed the following international trademark where the EU was designated party, for class 41 – Education; providing of training; entertainment; sporting and cultural activities:

Against this application, an opposition was filed by YAplus DBA Yoga Alliance on the grounds of the following earlier mark in classes 35, 41, 42:

On 2 April 2020, the Opposition Division upheld the opposition. It found, in essence, first, that the services at issue were identical or similar and that they were aimed both at the general public and at professionals with an average level of attention, second, that the comparison of the signs had to be made from the point of view of non-English-speaking Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking consumers in the European Union and that the signs were visually similar to an average degree, highly similar phonetically and conceptually similar to a low degree. Third, it found that the distinctive character of the earlier mark was normal despite the presence within it of certain elements, at most weakly distinctive, such as their decorative elements or the common word element ‘yoga’. Lastly, it found that there was a likelihood of confusion on the basis of Article 8(1)(b) of Regulation 2017/1001.

An appeal followed where the Board of Appeal annulled the Opposition Division finding no likelihood of confusion between both signs.

The General Court upheld this finding. According to the Court:

It follows that excessive protection of marks consisting of elements which, as in the present case, have very weak distinctive character, if any, in relation to the services at issue could adversely affect the attainment of the objectives pursued by trademark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such elements in the signs at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case.

It should be remembered that the visual, phonetic, or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate, in that global assessment, to take into account the nature of the services at issue and to examine the objective conditions under which the marks may appear on the market.

Thus, in accordance with the case-law, in the present case, it must be held that, in view of the fact that the phonetic and conceptual similarities are based exclusively on word elements which are devoid of distinctive character, the clear visual differences between them have a greater impact in the global assessment of the likelihood of confusion.

In that regard, it should be borne in mind that, where the earlier trademark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does not often lead to a finding that such likelihood exists.

In those circumstances, it must be held that, in the context of a global assessment of the likelihood of confusion, having regard to the weak distinctive character of the common elements ‘yoga alliance’, the presence of figurative elements which are visually very different will enable the average consumer to make a clear distinction between the marks at issue, even for the part of the relevant public with an average level of attention, despite the identical or similar character of the services at issue. That is all the more true for the part of the relevant public with an above-average level of attention. Accordingly, it follows that the Board of Appeal’s error in relation to the level of attention of the relevant public in respect of the ‘educational’ services found in paragraph 50 above cannot have a decisive effect on the outcome of the global assessment of the likelihood of confusion.

This case reminds us what a trap can be if someone uses a weak distinctive element as a trademark. Although such an element can be registered in combination with graphics or other words, by its nature it is weak which means that monopolization of this element is not possible. This in turn means that competitors can use it too for their brands, and all of this means potential marketing and recognisability issues for the trademark owner.

OSCAR trademark survived a revocation procedure in the EU

If one trademark is registered in the EU but its business model happens in a country outside the EU, whether this mark is regarded as used on the territory of the EU.

This was the question the Board of Appeal of the EUIPO had to answer in the dispute R 1841/2021-5, OSCAR.

The case concerns the European trademark OSCAR registered for class 41 – entertainment and educational services, namely, conducting an annual award ceremony recognizing exceptional achievement in the film industry.

Against this mark, an application for revocation was filed based on non-commercial use for 5 consecutive years.

The EUIPO dismissed the action entirely. Although the well-known OSCAR Awards ceremony takes place at a venue in Los
Angeles, the EU trademark was subject to different advertisement campaigns that targeted EU consumers. Advertisements on their own constitute a way of trademark use according to EU legislation.

In addition, the trademark owner has provided licenses for broadcasting of the ceremony to many EU television programs which in turn means commercial use of the sign.

The Oscar Awards show was watched by millions of Europeans, and the ceremony itself represents an entertaining service.

The Board of Appeal confirmed this decision.

Last year the EUIPO issued another decision for a similar case relating to hotel services where the hotels themselves were outside the territory of the EU.

How an abstract canine depiction reflects a trademark opposition in the EU?

The General Court of the European Union has ruled in the case T‑596/21 Société Elmar Wolf v Fuxtec GmbH.

The case concerns the similarity between figurative marks based on the meaning they can convey to the consumers.

Fuxtec GmbH is the owner of the following international mark, where the EU is designated, for classes 4, 7, 8, 12, and 35:

Against this mark, an opposition was filed by Société Elmar Wolf based on several earlier figurative marks in classes 7, 8, and 35:

The EUIPO dismissed the opposition finding both signs dissimilar. The case was appealed.

The General Court upheld the EUIPO decision entirely. According to the Court, the earlier marks convey a clear impression of canine while the later mark is rather abstract, as a result of its clean curved lines, its sharp edges, and the lack of figurative details.

Due to this fact, consumers would need to put more effort and thoughts in order to discover the meaning of the sign if this is possible at all. This prevents the possibility of consumer confusion.

By contrast, as the Board of Appeal pointed out, the shape exhibited by the contested sign is rather abstract, as a result of its clean curved lines, its sharp edges and the lack of figurative details. It is true that that sign includes elements which could be perceived by a non-negligible part of the relevant public as the contours of the front view of a face, ears pointing upwards, a muzzle pointing downwards and eyes. However, the representation of a head which may emerge is obviously less realistic and considerably more stylised than the silhouette illustrated by the earlier marks, which represents some of the favourite attributes, a slightly open mouth and a menacing expression, of the representation of the head of a canine and which the rather abstract silhouette in the mark applied for does not have. In those circumstances, it is unlikely that the average consumer, who normally perceives a mark as a whole and does not carry out an analysis of its details at the time of purchase, will be capable of spontaneously associating the contested sign with the head of an animal, or even with the head of a canine, without engaging in an analysis which goes beyond that expected at the time of purchase.

It follows that it must be held, as the Board of Appeal found, that the overall impression created by the contested sign makes the identification of the head of an animal, let alone of a particular animal, highly arbitrary and, consequently, that the signs at issue are visually similar at most to a low degree.

The argument of the opposition applicant that the earlier marks have a high degree of inherent distinctiveness because they do not convey any meaning in relation to the goods and services covered by them, was dismissed by the Court, which considers that such consideration is not enough a high level of distinctiveness to be proved.

Rolex lost a trademark dispute in the EU

Are clothes similar enough to watches – that’s the question The General Court of the European Union has ruled in recently  T‑726/21 Rolex SA v PWT A/S.

PWT filed a European trademark application for the following figurative mark for many classes including class 25 – clothing, footwear headgear:

Against this application an opposition was filed by Rolex SA based on the following trademarks in class 14 – watches, for which an established reputation was claimed:

The EUIPO decided that the goods in class 14 – watches and those in class 25 clothing, footwear headgear are not similar because of their different nature and intended purpose. While watches are perceived as accessories, the goods in class 25 aim to dress the human body.

In so far as the opposition was based on Article 8(5) of Regulation No 207/2009, it found that the reputation of the earlier purely figurative mark was not established and that the reputation of the earlier composite mark was established for wristwatches. It added that the latter mark and the mark applied for were, at most, visually similar to a very low degree, that a phonetic comparison was not possible between them, and that the conceptual similarity resulting from the common presence of a crown had a very limited impact. It inferred from this that the relevant public would not make a link between those marks, with the result that no risk of injury to the reputation of the earlier composite mark was established.

The General Court upheld this decision entirely. Regarding the goods similarity issue:

In the present case, the applicant merely alleges the growing importance of online trade, the growing tendency towards convergence of fashion and technology, including wristwear, and the supposed well-known fact, common in the fashion sector and usual for consumers, of seeing clothing and accessories, such as eyewear, jewelry and watches, being offered in the same sales outlets. However, it does not submit any evidence to that effect. The applicant adds that that practice results in a certain cognitive behavior and a certain state of mind, but without providing further detail.

In addition, it must be pointed out that the fact that the goods at issue may be sold in the same commercial establishments, such as department stores, is not particularly significant, since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin

Furthermore, the applicant’s arguments that the purchase of the goods at issue may be based on the search for an aesthetic complementarity must be rejected as ineffective. The applicant itself concedes that such a fact is insufficient to conclude that there is a similarity between those goods.

When it comes to the claimed reputation:

In order to benefit from the protection introduced by the provisions of Article 8(5) of Regulation No 207/2009, the proprietor of the earlier mark must, first of all, adduce proof, either that the use of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark, or that it would be detrimental to that distinctive character or that repute.

In that regard, although the proprietor of the earlier trade mark is not required to demonstrate actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 207/2009, it must, however, prove that there is a serious risk that such an injury will occur in the future.

The Board of Appeal noted that, in order to demonstrate the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009, the applicant had not submitted observations to it, but that, before the Opposition Division, it had argued that the intervener could take unfair advantage of the degree of recognition of the earlier composite mark on account of the fact that the signs at issue were almost identical and the immense reputation acquired by the earlier marks, which allegedly convey images of prestige, luxury and an active lifestyle. It found that, by those arguments, the applicant had in fact merely referred to the wording of Article 8(5) of Regulation No 207/2009, without submitting any coherent arguments as to why one of such injuries would occur. The Board of Appeal inferred from this that no injury referred to in that provision was established.

It must be stated at the outset that the applicant’s arguments do not make it possible to identify the injury or injuries set out in Article 8(5) of Regulation No 207/2009 which might be caused to the earlier composite mark, to its detriment, by the use of the mark applied for.

Source: IPKat.