Burberry failed to register its famous pattern as an EU trademark for digital goods

Theoretically, patterns can be registered as trademarks which is really important for some industries such as fashion. However, not every pattern meets the trademark law requirement for distinctive character and this can be a huge challenge for every applicant.

Is this the same for the so-called digital goods and services that have become popular in recent years?

Absolutely yes, what’s more, it could be even more challenging because the Patent Offices’ practice is still not so developed for these new digital goods.

One case in that regard is an attempt by Burberry Limited to register as an EU trademark its famous pattern for different digital goods and services in classes 9, 35, and 41:

The EUIPO partially refused this trademark based on absolute grounds – lack of distinctiveness. According to the Office:

In the present case, the figurative mark applied for shows a combination of elements that form a check pattern design. The horizontal and vertical lines of red, white and black colour are placed in a base of beige colour. The Office notes that case-law,
which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself, also applies where the contested mark is a figurative mark consisting of the two-dimensional representation of that product. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the products it covers (21/04/2015, T-359/12, Device of a checked pattern (maroon & beige), EU:T:2015:215, § 24 and case-law cited). In general, a mark consisting of a decorative pattern that is simple and commonplace is considered devoid of any element that could attract the consumers’ attention, and insufficient to indicate the source or origin of goods or services.

Having regard to the goods in question, which include downloadable and virtual versions of real life clothing, footwear and decoration related goods, the Office notes that the figurative mark is presented in the form of a pattern intended either to be
placed on part of the goods or to cover the whole of their surface area and thus corresponds to the outward appearance of the goods. Therefore, the assessment of the distinctive character of the contested mark shall be based on the principles applicable to three-dimensional marks (21/04/2015, T-359/12, Device of a checked pattern (maroon & beige), EU:T:2015:215, § 28-31 and the case-law cited). The Office states that a combination of elements forming a check pattern is obvious and typical for the goods and not essentially different from other check patterns commonly found in the trade. The Office notes that the consumer’s perceptions for real-world goods can be applied to equivalent virtual goods as a key aspect of virtual goods is to emulate core concepts of real-world goods.

The Office showed examples of products using a similar pattern and from that point of view, the conclusion was that consumers will not perceive the pattern as a source of trade origin.

The mark was allowed only for the following:

• Class 9 Downloadable interactive characters, avatars and skins; Video games and downloadable video game software.
• Class 41 Providing online information about digital games; Providing online video games; Provision of online information in the field of computer games entertainment; Entertainment services, namely, providing online electronic games, providing a website with non-downloadable computer games and video games.

This decision was upheld by the Board of Appeal. Interestingly, the applicant already owns the same pattern as an EU trademark but for physical goods. That shows some inconsistency in the practice regarding distinctiveness in the case of digital and physical goods but on the other hand, shows the necessity of proving secondary distinctive character for the digital world too.

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Super Simon won a multimedia trademark dispute in the EU

Registration of multimedia trademarks can be a challenge taking into account that they are relatively new forms of marks as well as the lack of sufficient practice in this area.

One interesting case, reported by Anna Maria Stein for IPKat focuses our attention on the following multimedia EU trademark application in the form of 22 sec. video for the Super Simon charter, filed by the Dutch company Chiever B.V., covering goods and services from classes 16, 33, and 41:

The EUIPO refused registration based on art. 7 (1)(b) of the EUTMR- lack of distinctiveness. According to the Office:

The mark applied for would be perceived, by the average consumer in the EU, as a gripping animation or drawing video, but not as a sign of origin which will distinguish the undertaking covered by the mark applied for from other undertakings.

The complexity of the representation of the individual elements (which are not summarised at the end of the story, as usual in TV spots, and show a clear commercial origin), plus the fact that the public is accustomed to a different ‘format’ TV spot, means that the relevant consumer in the trademark will not see more than a joy narrative. In other words, the remembrance of the story cannot replace the need for a link to an indication of origin.

The decision was appealed and the Board of Appeal overturned it entirely. According to the Board, it is sufficient for only one of the elements in the multimedia mark to be distinctive in order for the mark to be accepted as a whole. In the case, at hand, the main superhero character is distinctive per se.

With the evolution of technology, it cannot be excluded that multimedia brands are also effectively placed on goods. Moreover, digital packaging is already a reality.

First of all, it is not necessary for the trademark to provide precise information on the identity of the manufacturer of the product or of the service provider. It is sufficient that the trademark enables the relevant public to distinguish the goods or services designated by it from those having a different commercial origin (21/01/2011, T 310/08, executive edition, EU:T:2011:16, § 22) and to conclude that all the goods or services which it designates have been manufactured, marketed or supplied under the control of the proprietor of that mark, to whom responsibility for quality can be attributed (10/10/2008, T 387/06, Representation of a pallet, not published, § 27).

Thus, by requiring that the multimedia mark applied must make clear who the producer or supplier is, the examiner has imposed a requirement that is not in line with the case law.

It is not intended that a trademark should refer to goods and services. That is exactly what a trademark should not do. From the moment a trademark refers directly and exclusively to certain goods and services, the network becomes descriptive or non-distinctive.

Metaverse cannot be a trademark for physical foods and drinks in the EU

Metaverse is one of the trendiest topics in recent years around the world. As a result, many companies have started to file trademarks related to virtual goods and services in analog to physical ones. The reason is that these virtual goods can be traded in the Metaverse. However, some companies try to monopolize the word Metaverse itself.

This is the case with the Polish company Oshee Polska which has filed applications for the following two European word marks:

• METAVERSE FOOD in classes 5, 29, 30 и 32 (food and drinks)
• METAVERSE DRINK in classes 32 (drinks) 

The EUIPO refused registration based on absolute grounds – lack of distinctive character. The Applicant’s expressed a counter-argument that Metaverse could have low distinctiveness but only for virtual goods whereas in the case at hand the signs target real, physical goods.

The Board of Appeal dismissed this argument stating that many companies use a virtual world called Metaverse in order to offer and sell not only virtual goods but physical analogs too. This practice was very similar to sales of real goods through the internet.

From that perspective, the signs applied for are still not distinctive in relation to the goods in their applications.

The strange moment here is the fact that there are other already registered marks covering Metaverse for physical goods.

Most likely the reason for such inconsistency in the Office practice is the fact that this Meta area is new and constantly developing, which obviously changes the Office’s own practice on that matter.

Is FUCKING GOOD WINE offensive as a European trademark?

Neleman is a well-known Dutch winery offering organic wines and using an unconventional marketing approach. The company has filed a European trademark application for the following combined mark in class 33 – Wine; Sparkling wines:

This application was refused by the EUIPO based on absolute grounds – Article 7(1)(f) EUTMR, trademarks that are contrary to public policy or to accepted principles of morality.

The Board of Appeal upheld this decision too.

It is the view of the Board that, although it is true that the term ‘fucking’ is used as a modern-day superlative when combined with another word (in particular, between close friends or in extremely informal settings, where the use of such taboo slang may be exceptionally acceptable), this meaning has not yet become so well established in all social strata that it has made the original meaning of the word ‘to fuck’ or ‘fucking’ more remote and forgettable.

Although ‘FUCKING GOOD WINE’ may be seen as an observation that the wine is very good, by choosing the word ‘FUCKING’ the sign is not only vulgar but taboo and offensive in which respect reference is made to paragraph 15 above.

The goods in question are everyday goods that can be seen by anyone in shops and displays. People of any age who consider the term ‘fucking’ to be offensive may perceive these goods, and therefore also the trademark that may appear on them, at any time. The fact that the goods at hand are not consumed by or sold to children does not alter the fact that such goods are normally prominently displayed in shops and supermarkets and thus can be seen by children, as well as, for example, people of any age who will find such use of an extremely vulgar and offensive swear word as morally unacceptable.

In this respect, the Board further notes that the applicant’s arguments that it had received many awards and no complaints are in any event irrelevant because what matters is the intrinsic meaning a word has (as appears from the dictionary) for the relevant public, which meaning is not influenced by a lack of consumer complaints and reputation not being an intrinsic quality.

Source: Global Advertising Lawyers Alliance (GALA) – Maarten Haak for Lexilogy.

Louis Vuitton failed to prove the distinctiveness of its figurative mark in the EU

The General Court of the European Union has ruled in the case T‑275/21 Louis Vuitton Malletier v Norbert Wisniewski, which focuses our attention on the proof of secondary distinctiveness.

The dispute concerns the following international figurative mark with a designation of the EU for class 18 – ‘Boxes of leather or imitation leather, trunks, suitcases, traveling sets (leatherware), traveling bags, luggage, garment bags for travel, hat boxes of leather, vanity cases (not fitted), toiletry bags (empty), backpacks, satchels, handbags, beach bags, shopping bags, shoulder-strap bags, carrier bags, shoulder bags, waist bags, purses, attaché cases, briefcases (leatherware), school bags, document holders, clutch bags, wallets, change purses, key cases, card cases (wallets), umbrellas, sunshades:

Against this mark, an application for invalidity was filed based on the assumption of a lack of inherent distinctiveness.

The EUIPO confirmed the invalidation but in the appeal, the decision was remitted to the Fifth Board of Appeal because of some errors. The Board confirmed the invalidation again and this decision was appealed once again.

Now the General Court upheld the EUIPO position finding the lack of distinctiveness of the mark. When it comes to the evidence for acquired distinctive character through use in the EU, submitted by Louis Vuitton, the Court considered them sufficient for some parts of the EU but not for the entire Union. There was not enough evidence for the mark’s awareness in Bulgaria, Estonia, Lithuania, Latvia, Slovakia, and Slovenia, together with Malta

That was a problem for Louis Vuitton because in order to rely on an acquired distinctiveness in the EU the trademark owner has to prove it for the territory of the entire EU, all Member States.

Louis Vuitton claimed that because their mark is popular in many EU countries, including neighboring to the above-mentioned, consumers in all countries are aware of the mark and its reputation. The Court dismissed this approach.

First, the applicant submits that the analysis, in the contested decision, of distinctive character acquired through use of the contested mark is detached from reality, since it ignores the fact that, throughout the European Union, consumers engage in homogeneous behaviour as regards luxury brands, particularly because they travel and use the internet regularly. However, that argument is too general in nature. Given that the burden of proof of the acquisition of distinctive character through use lies with the proprietor of the mark, it is for the proprietor to adduce specific and substantiated evidence for that purpose (see paragraph 20 above).

Secondly, the applicant claims, in essence, that the distinctive character acquired through use of the contested mark in the Member States concerned is corroborated by the geographical and cultural proximity of Latvia and Lithuania to Poland and Sweden, on the one hand, and of Bulgaria, Slovakia and Slovenia to Romania, on the other hand, it being noted that, according to the applicant, the mark had acquired a distinctive character with consumers in Poland, Sweden and Romania.

However, that argument is not at all substantiated. The applicant has not adduced any evidence to show that, due to their geographical and cultural proximity, the relevant Latvian and Lithuanian public had sufficient knowledge of the goods or services on the Polish and Swedish markets, or that the relevant Bulgarian, Slovenian or Slovakian public had such knowledge of the Romanian market, within the meaning of the case-law cited in paragraph 27 above. Nor has the applicant demonstrated, or even alleged, that it had grouped those Member States in the same distribution network or that it had treated them, particularly from the marketing strategy perspective, as if they constituted one and the same market.

Thirdly, nor may the applicant’s argument that the distinctive character acquired through use of the contested mark in Bulgaria, Slovakia and Slovenia is corroborated by the fact that those Member States are ‘in a strategic area for the circulation of counterfeit products in Eastern Europe’ be upheld due to its being too general in nature.

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.

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.