Charlie Chaplin’s Charlot character cannot be trademarked in the EU

As it is well-known fictional characters can be registered as trademarks in many countries around the world. There are a lot of examples of such marks from Mickey Mouse and Superman to Super Mario.

The question is, however, what can represent an obstacle to the registration of these marks.

Recently, the EUIPO has issued a decision on a European trademark application for the following mark in classes 9 (scientific apparatus and instruments, photographic apparatus and instruments, cameras), 35 (advertising, business management, clerical services), 38 (telecommunication services), 41 (teaching, training, entertainment services), and 42 (computer software design):

The mark represents the great actor Charlie Chaplin in his most famous role as the Charlot character.

EUIPO refused to register this mark based on absolute grounds Article 7(1)(b) – (c) and 7(2) of Regulation 2017/1001 (EUTMR). According to the Office, consumers would perceive this character as conveying modern, liberal, and humanist values by denouncing totalitarianism and Nazi ideology.

This is the reason why consumers would perceive the image as an advertising approach to encourage sales based on the values attached to the Charlot character. From that perspective, it is not likely for consumers to get the image as a particular source of trade origin. This is emphasized by the widespread practice where famous people and characters are used for enforcement practices.

In addition, the image could be descriptive too if consumers consider the content of some services mentioned in the application as related to Charlot and Charlie Chaplin.

Source: IPKat.

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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.

Is SHAVETTE a trademark or a generic name for razors in the EU?

The Board of Appeal of the EUIPO has ruled in the case related to the invalidation of the EU trademark SHAVETTE.

The mark was filed in 2014 by the German company DOVO Stahlwaren Bracht GmbH & Co.KG for the following classes:

  • Class 8: Razors, electric or non-electric, and parts therefor; Containers and cases
    for razors.
  • Class 21: Shaving brushes; Holders for razors and shaving brushes.

The production of SHAVETTE razors started in the 1980s by DOVO and since then they have gained serious popularity amongst consumers.

In 2018, another company Sinelco International, BV filed a request for a declaration of invalidity of the registered mark for all the above goods on the ground of Articles 59(1)(a) EUTMR in conjunction with Article 7(1)(c) and 7(1)(d) EUTMR:

The following shall not be registered:
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

According to Sinelco, the word SHAVETTE is used by consumers as a generic term describing an entire category of razors with exchangeable blades. Evidence was submitted that shows such use by consumers in Sweden and the United Kingdom.

The Cancelation division of the EUIPO invalidated the mark agreeing that it is a generic term.

The fact that a trademark is being used as the common name to refer to a specific product or service is an indication that it has lost its ability to differentiate the goods or services in question from those of other undertakings. One indication that a trademark has become customary is when it is commonly used verbally to refer to a particular type or characteristic of the goods or services. It has been demonstrated that the contested trademark has become a name used as a synonym for straight razors with exchangeable blades so extensively that, as established by the cancellation applicant, in 2014 the trademark was not capable of differentiating the goods or services in question from those of other undertakings.

The decision was appealed and the Board of Appeal annulled it. One of the reasons is that the appeal happened after Brexit and the grace period that ended on 31.12.2021. This means that all evidence related to the UK is no more admissible no matter when the invalidation proceeding was started.

This is due, on the one hand, to the fact that the invalidity applicant has no interest to act where an absolute ground
only applies in relation to the UK. On the other hand, the above constitutes an application by analogy of Article 59(2) EUTMR and Article 209(2) EUTMR, which states that ‘the registration of an EU trademark which was under application at the date of accession may not be refused on the basis of any of the absolute grounds for refusal listed in Article 7(1) if these grounds became applicable merely because of the accession of a new Member State’. Finally, this is also confirmed by Article 54(3), 2nd sub-para, Withdrawal Agreement (‘WA’) according to which an equivalent UK trademark (that is a UK mark derived from a ‘parent’ EUTM according to Article 54(1)(a) ‘WA’) is not to be invalidated where the absolute ground of invalidity does not apply in the UK.

According to the Board, the rest of the evidence related to Sweden is not enough in order to support the conclusion that SHAVETTE is a common and generic name for razors.

This case shows us how important is for every company to communicate correctly that their mark is a source of trade origin and not a name of the related products or services. If this is not part of the marketing strategy of the company, in some cases there are some chances consumers to start indicating the whole product category using the same name which exposes the mark to the risk to be invalidated at some point.

Using a trademark as a decorative element is not the best option for its protection in the EU

The General Court of the European Union has ruled in the case T‑323/21 Castel Frères v Shanghai Panati Co., which reminds us how essential is one registered mark to be used correctly in order for its protection to be viable.

The case has the following background:

On 29 May 2018, Shanghai Panati Co filed an application with EUIPO for revocation of the EU trademark that had been registered further to an application filed on 17 March 2008 for the following figurative sign:

The goods covered by the contested mark, in respect of which a declaration of invalidity was sought, were inter alia in Class 33 of the Nice Agreement: ‘Still wines’.

The ground relied on in support of the application for revocation was the lack of genuine use of the contested mark within a continuous period of five years.

Evidence was submitted by Castel Frères that the mark was used for wine labels in the following way:

On 3 April 2020, the Cancellation Division rejected the application for revocation.

On 24 April 2020, Shanghai Panati Co. filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

By the contested decision, the Board of Appeal upheld the appeal and revoked the contested mark. The Board of Appeal found, in essence, that the differences between the contested mark and the mark as used were such as to alter the distinctive character of the contested mark.

The Court upheld this decision.

According to the Court, it must be borne in mind that the contested mark in its registered form is a figurative mark consisting of three characters from the Chinese alphabet. As the Board of Appeal correctly notes the relevant public will not be able to verbalise or to memorise those Chinese characters, which will rather be perceived as meaningless, abstract signs or as decorative elements referring to China or to Asia. It is appropriate, therefore, to find that, with regard to the goods at issue, the Chinese characters forming the contested mark have a lower-than-average degree of distinctive character.

In that regard, it must be emphasised that on the product packaging or in the advertisements, the contested mark, which appears in a very small size, is almost systematically accompanied by the word elements ‘dragon de chine’ and by the representation of a dragon, which appear together and are very close to one another. Moreover, in so far as the contested mark is composed of three characters from the Chinese alphabet, in a very small size, the added elements are always clearly visible and dominate the overall impression.

The Board of Appeal was therefore right to find that the contested mark as used, that is to say, in an ancillary position and in a much smaller size than the distinctive and dominant word elements ‘dragon de chine’ and the representation of a dragon, would be perceived by the relevant public as a decorative element and not as an indication of origin of the goods.

That finding cannot be called into question by the argument that, in essence, it is common in the wine sector for two or more trademarks to be used jointly and autonomously on labels, with or without the name of the manufacturer’s company, as is the case here with the mark Dragon de Chine. It must be stated that the word elements ‘dragon de chine’ are always clearly visible in that they occupy a dominant position in the overall impression created by the mark as used. In any event, even if it were established that those elements are a trademark, the fact remains that that is not capable of weakening the alteration by those terms of the distinctive character of the contested mark, since the relevant public no longer perceives those three characters from the Chinese alphabet as an indication of the origin of the goods in question, in accordance with the case-law.

Having regard to the above examination of the distinctive and dominant character of the added elements, based on the intrinsic qualities of each of those elements and on the relative position of the various elements, it must be held that the variations in use demonstrated alter the distinctive character of the contested mark as registered, as the Board of Appeal rightly found.

This decision comes to remind us that one trademark should always be used as an indication of trade origin and not as a complimentary or decorative element. In a similar case, Apple lost a dispute regarding its trademark Think Differently because of the way the mark was used on the package of the product.

The owner of the PHILADELPHIA trademark prevailed against VEGANDELPHIA in the EU

When you want to use a trademark that even vaguely associates with another well-known mark this always hides potential risks. Such is the case between Intercontinental Great Brands LLC and Costa & Casimiro, Lda.

The Portuguese company Costa & Casimiro registered successfully the following combined European trademark in class 29 – Spreading cream based on almonds; Prepared fruit products; Vegetable fats for edible purposes; Vegetable oils for edible purposes; Mixed vegetable oils for culinary use; Vegetable extracts for food; Vegetable pates; Almonds, processed; Almond oil:

Against this mark, an application for invalidation was filed by the US company Intercontinental Great Brands on the ground of several earlier EU, Spanish and Portuguese trademarks PHILADELPHIA in class 29 – meat, fish, poultry and game; meat extracts; Canned, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products, cheese, cream cheese; edible oils and fats.

On top of that, the US company claimed an acquired reputation for its trademarks based on Article 8(5) EUTMR. According to Intercontinental Great Brands, the Portuguese company tries to take advantage of their earlier marks by using a sign that associates with them.

The EUIPO considered the goods in both marks similar or identical. When it comes to the signs, the Office concluded that they are phonetically and visually similar to a mid-degree. The reason for this was the fact that the first part of the mark applied for VEGAN is descriptive of the goods in class 29. The second part DELPHIA duplicate the earlier marks in their last parts and conveys an association with them.

Conceptually the signs are not similar. PHILADELPHIA is a city in the USA, which name has the necessary distinctiveness for the goods in class 29.

Costa & Casimiro’s arguments that DELPHIA is a personal name were dismissed because there was no solid evidence that many people in the EU have such a name or are aware of it.

On the other hand, the US company successfully proved reputation of its marks in the EU, citing strong market shares in several countries and massive advertisement campaigns.

Based on this, the EUIPO decided that the signs are similar enough and that the available reputation of the earlier marks supports the conclusion that some unfair advantages could be taken from it through the later application. The element DELPHIA associates with PHILADELPHIA and consumers can perceive the VEGANDELPHIA brand as a vegan variant of the earlier signs.

The invalidation was upheld.

Source: Alicante news.

An Instagram post of Rihanna has caused trouble for Puma shoe design in the EU

The Board of Appeal of the EUIPO has ruled in one interesting case related to Community designs and why their protection should be considered in great detail.

The case concerns the RCD application filed in 2016 by PUMA for the following design of shoes:

Several years later, an invalidation proceeding was initiated against this design on the grounds of lack of novelty and individual character. For evidence, an Instagram post was submitted where the well-known signer Rihanna was pictured wearing quite similar shoes. The post was dated 2014.

According to the EU legislation, one design is protectable only if it is new and original. Novelty means that there has to be no public information for the design 12 months before the application is filed with the Patent Office.

In the case at hand, The Board found that Rihanna’s post on Instagram, having more than 300 000 likes and additional media coverage, was solid proof that the shoes design was public way before its application with the EUIPO.

Furthermore, the BoA points out that the designs under comparison create similar overall impressions
on account of the same shape and form of the shoe, consisting of an upper part with a number of lines
and holes placed and arranged the same way, as well as the same shape and form of the thick, vertically-striped sole. Thus, the contested design lacks individual character.

The case comes to show us how important is timing in the case of design protection. In such situations, there are two main options, the owner to file an application sooner or the marketing activities to be postponed.

CAT won a tiger trademark dispute in the EU

The General Court of the European Union has ruled in the case T‑251/21, Tigercat International Inc. v Caterpillar Inc., that has the following background:

 On 26 August 2013, Tigercat International Inc. filed an application for registration of an EU trademark for Tigercat in class 7: specialised power-operated forestry equipment, namely, purpose built four wheel drive-to-tree and track type log bunchers, log loading machines, skidders and other forestry industry equipment, namely, bunching saws, bunching shears and components parts thereof.

Against this application, an opposition was filed from Caterpillar Inc. based on an earlier word mark CAT and the following combined mark, both in classes 7 and 12, including for forestry machines:

The EUIPO upheld the opposition in its entirety finding both signs similar enough. The decision was appealed.

The General Court found similarities and identities between the goods of the marks. When it comes to the signs themselves, the Court concluded that the relevant public can recognize two separate words in the later mark – Tiger and Cat because both have their own distinctive meaning.

According to the Court:

In the present case, the mere fact that the element ‘tiger’ has been placed at the beginning of the mark applied for is not sufficient to confer on it a dominant character. There is nothing to indicate that the average consumer of the relevant public will attach more importance to the element ‘tiger’ at the beginning of the mark applied for. That aspect is counterbalanced by the fact that the mark applied for is composed only of two relatively short words, which, although they are directly juxtaposed, each has a clear meaning for the relevant public. Thus, contrary to what the applicant submits, the element ‘cat’, which has a specific meaning distinct from the element ‘tiger’, does not have merely a laudatory connotation intended to highlight the element ‘tiger’.

In the present case, the Board of Appeal noted that the signs at issue had the element ‘cat’ in common, whereas they differed in the presence of the first element of the mark applied for, namely the word element ‘tiger’, and in the figurative elements of the earlier mark. It concluded from that that they had an average degree of visual similarity.

That assessment is irreproachable. Although the applicant takes the view that the signs at issue are visually different because of their different length and the presence of capital letters and figurative elements in the earlier mark, the fact remains that they coincide in the element ‘cat’, which constitutes the only word element of the earlier mark and has a distinctive character. The fact that the earlier mark is wholly included in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue, even where the relevant public has a high level of attention. The presence of the element ‘tiger’ – which is not dominant – at the beginning of the mark applied for does not lead to the conclusion that the signs at issue are dissimilar.

In the present case, it should be noted that the signs at issue differ in that the mark applied for contains, as an element placed at the beginning of that mark, the two syllables ‘ti’ and ‘ger’, whereas the earlier mark only contains the common element ‘cat’. Nonetheless, the fact remains that that common element could be pronounced when the goods at issue are purchased, thus justifying the Board of Appeal’s finding that the signs at issue are phonetically similar at least to an average degree.

Since the mark applied for, which is composed of the elements ‘tiger’ and ‘cat’, also refers to the concept of a ‘cat’, it should be concluded that the Board of Appeal was correct to conclude that the signs at issue were conceptually highly similar.

Against this backdrop, the Court dismissed the appeal and upheld the EUIPO’s decision.