The battle for ICELAND continues

pexels-photo-414101Iceland Foods will appeal the EUIPO’s decision for cancelation of its trademark ICELAND registered in 2014 for classes 7, 11, 16, 29, 30, 31, 32, 35. This trademark is used for supermarkets in The UK.

The procedure was initiated by Promote Island, a government organization from Iceland based on Article 52(1) EUTMR in conjunction with Article 7(1)(c) EUTMR:

The following shall not be registered:

  • (a) signs which do not conform to the requirements of Article 4;
  • (b) trade marks which are devoid of any distinctive character;
  • (g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;

The EUIPO agreed with Promote Island and canceled the trademark. The arguments for this are:

It follows from all of the above that ‘ICELAND’ may serve, from the point of view of the public concerned, to designate an essential and desired characteristic of the goods and services.

Therefore, the mark conveys obvious and direct information regarding the geographical origin of the goods and services in question, and in some cases, the subject matter of the goods as well.

Considering all of the above, it follows that the link between the word ‘ICELAND’ and the contested goods and services is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR and that this was also the situation at the time of filing of the contested EUTM, namely, 19/04/2002.

The EUIPO found that Iceland Food failed to prove acquired secondary distinctiveness in the EU.

The Icelandic foreign minister Gudlaugur Thór Thórdarson expressed his satisfaction with this decision.

“It is contrary to common sense for a foreign company to be able to appropriate the name of a sovereign state as was being done in this case”, the minister said.

Iceland’s foreign ministry added that consumers were likely to associate the mark with “the country of Iceland for all goods and services the registration is claimed for”.

Source: WIPR.

Advertisements

Formula E crashed in a case before the European Court of Justice

race-track-flag-2035566_960_720.jpgThe European Court has ruled in case C‑282/18 – The Green Effort Limited v Fédération internationale de l’automobile (FIA). Even though the case is simple, it clearly shows why every trademark owner has to stick to the deadlines given by the EUIPO.

The Case concerns the following:

The Green Effort acquired rights over the word mark Formula E, the application for registration of which was filed on 17 November 2010.

The goods and services in respect of which registration was sought are:

–        Class 25: ‘Clothing’;

–        Class 38: ‘Broadcasting by radio, television and satellite’;

–        Class 41: ‘Organization of sporting events’.

The EU trademark application was published on 3 December 2010 and the trade mark applied for was registered on 14 March 2011.

On 15 March 2016, Fédération internationale de l’automobile (FIA) filed an application for revocation of the contested mark for all the goods and services, pursuant to Article 51(1)(a) of Regulation No 207/2009, now Article 58(1)(a) of Regulation 2017/1001, on the ground that it had not been put to genuine use within a continuous period of five years.

On 21 March 2016, the Cancellation Division of EUIPO invited The Green Effort to submit, by 21 June 2016, proof of genuine use of the contested mark. Since that proof was submitted on 22 June 2016, in disregard of the time limit prescribed, it was not taken into account.

On 27 July 2016, The Green Effort filed an application for restitutio in integrum with the Cancellation Division of EUIPO in order have its rights to submit that proof re-established.

By decision of 8 September 2016, the Cancellation Division rejected the application and revoked the contested mark in its entirety.

On 5 October 2016, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

By the contested decision, the Second Board of Appeal of EUIPO (‘the Board of Appeal’) dismissed the appeal.

In support of its decision, the Board of Appeal considered that neither the proprietor of the contested mark nor its representative showed that they had actually taken the utmost care to observe the time limit prescribed for submitting the documents proving genuine use of the contested mark. It took the view that, while there is evidence in the file of repeated attempts to send electronic communications and fax communications from The Green Effort to EUIPO, with respect to Spanish local time all communications were received on 22 June 2016, that is to say after the time limit prescribed had expired, since the explanations provided in that regard could not be regarded as ‘exceptional’.

Therefore, the Board of Appeal upheld the decision of the Cancellation Division to reject the application for restitutio in integrum, and, with regard to the application for revocation of the contested mark, it considered that, in the absence of any proof of genuine use in the European Union during the relevant period or of any indications of proper reasons for non-use, the rights acquired by The Green Effort had to be revoked in their entirety and deemed not to have had any effect as from 15 March 2016.

The Court dismissed the appeal by The Green Effort Limited considering that the EUIPO’s position on the matter is correct. The arguments are:

As set out in Article 4(4) of that decision, without prejudice to accurately establishing the date of notification, notification will be deemed to have taken place on the fifth calendar day following the day on which EUIPO placed the document in the user’s inbox.

That interpretation meets the requirements stemming from the principle of legal certainty by preventing a decision of the Board of Appeal from being called into question indefinitely, given that, if no access to the document concerned is requested after it has been placed in the recipient’s inbox, the notification is deemed to have taken place on the fifth calendar day after being so placed.

Therefore, since it is common ground that the representative of The Green Effort requested access to the contested decision on 19 September 2017, that he downloaded it and became aware of it on that same day, the General Court did not err in law in deciding that the time limit for bringing an action against the contested decision expired on 29 November 2017, that decision having been notified on 19 September 2017. Therefore, the ground of appeal alleging that the starting point of the time limit prescribed for bringing an action was wrongly determined must be rejected as unfounded.

Converse lost a dispute for a shoe sole in the EU

pexels-photo-1353361.jpegThe General Court of the European Union has ruled in the case T-611/17 All Star (Converse) v EUIPO – Carrefour Hypermarchés. The case concerns the following already registered figurative European trademark for classes 17, 25,35:

CJ4JX4FZVCC523YA2TMALSKFLG766LZ66GCBK6GKXEAMQE5QIQ22H3KCJTKP6CENMYIUUNBNEKJQU.jpg

Against this mark, an application for a declaration of invalidity was filed by the French company Carrefour based on Article 52(1)(a) EUTMR and Article 7(1)(b) and (e)(ii) and (iii) EUTMR.

EUIPO invalidated the trademark at hand concluding that it is not possible for consumers to perceive it as a sign for trade origin. According to the Office, the practice of using simple geometric shapes for soles are widespread, as can be seen for many examples:

Untitled

Consumers will look on them as something that will help them to walk easily, comfortably or securely but not as a sign for trade origin.

Although the Office made some mistakes when it comes to the scope of goods and services for which this invalidation is applicable (corrected after that), the General Court confirmed this decision in its entirety.

The EUIPO decision is accessible here.

Industrial lighting is not similar to Christmas tree lights according to the EU Court

pexels-photo-937548.jpeg

The Malaysian company IQ Group Holdings filed an application for LUMIQS as an European trademark through the Madrid system for the following goods:

Class 11: ‘Lighting fixtures for commercial use; LED (light-emitting diodes) lamps; light-emitting lighting apparatus; apparatus for lighting; electric lighting apparatus; bulbs for lighting; casings for lights; ceiling light fittings; ceiling lights; desk lights; electric lights; emergency lights; filters for lighting apparatus; gas lights; light bars; light reflectors; light shades; lighting panels; outdoor lightings; outdoor lighting fittings; spotlights; lighting tubes; security lightings; but not including Christmas tree lights or any of the aforesaid goods being for use with Christmas tree lights, and not including festival lights or any of the aforesaid goods for use with festival lights’.

Against this application, an opposition was filed by the German company  Krinner Innovation on the ground of its earlier European trademark LIMIX for classes:

Class 11: ‘lighting installations, namely electric lights for Christmas trees (chains of candle lights or decorative Christmas tree lights, candle lights without cables, decorative Christmas tree lights without cables), decorative, low-voltage Christmas tree lights’;

Class 28: ‘electric decorations for Christmas trees (chains and decorative Christmas tree lights without cables)’;

Initially, EUIPO upheld the opposition considering both signs similar for similar goods.

In the appeal, however, the General Court annulled this decision concluding that EUIPO erred in its assessment regarding the goods similarity.

According to the court:

In the present case, however, it is clear that the protection of the earlier marks is explicitly restricted to certain goods in Classes 11 and 28 for which they have been registered and does not extend to the goods in Class 11 referred to in the international registration in question. Moreover, the latter registration expressly excludes ‘Christmas tree lights or any of the aforesaid goods being for use with Christmas tree lights’ and ‘festival lights or any of the aforesaid goods for use with festival lights’ covered by the earlier marks.

Furthermore, it is not disputed that the goods concerned have different intended purposes. Thus, the goods in Class 11 covered by the international registration designating the European Union are used for practical and industrial purposes, whereas the goods in Classes 11 and 28 covered by the earlier marks, in respect of which proof of genuine use has been demonstrated, serve exclusively decorative and aesthetic purposes for Christmas trees.

 It follows from the foregoing that lighting apparatus for industrial use, on the one hand, and electric lights and decorations, on the other hand, cannot be deemed to be similar on the basis of the mere fact that they are both ‘light sources’ or ‘electrical lighting apparatus’, given that the nature and intended purpose of those goods are different, and that they are neither complementary nor in competition.

In addition, the fact that goods may be sold in the same commercial establishments, such as department stores or supermarkets, is not of particular importance, since very different kinds of goods may be found in such retail outlets and consumers do not automatically assume that they are from the same source. Thus, the sale of the goods covered by the conflicting signs may take place in retail outlets which are geographically close, without this giving rise to a clear complementarity between those goods from the consumer’s point of view. The same applies when, as in the present case, the goods at issue are sold online.

The full text of this decision can be found here.

Furnishing fabric can be a trademark – a decision by the EU Court

sofa-2155865_960_720.jpgThe European Court has issued a decision in case C‑21/18 Textilis Ltd, Ozgur Keskin v Svenskt Tenn AB, which concerns the following:

Svenskt Tenn markets and sells furniture and furnishing fabrics and other decorative accessories.

During the 1930s, Svenskt Tenn started to work with the architect, Joseph Frank, who designed various patterns for furnishing fabrics for it, including a pattern called MANHATTAN, which it markets and sells and in respect of which Svenskt Tenn claims to be the holder of rights under copyright law.

On 4 January 2012, Svenskt Tenn filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO). That figurative mark, designated MANHATTAN, was registered under number 010540268.

The goods and services for which that mark has been registered are in Classes 11, 16, 20, 21, 24, 27 and 35 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, and correspond to inter alia, lampshades (Class 11), table cloths, table napkins of paper; coasters of paper; wrapping paper; writing or drawing books (Class 16), furniture (Class 20), household or kitchen utensils and containers; brushes; glassware, porcelain and earthenware not included in other classes (Class 21), textiles and textile goods, not included in other classes; bed and table covers (Class 24), carpets; wall hangings (non-textile); wallpaper (Class 27), retail services connected with the sale of furniture, cushions, mirrors, wallpaper, carpets, lamps, textile fabrics, textile products, fancy goods, household and kitchen utensils and containers, tableware, glassware, porcelain, earthenware, candlesticks, paper napkins, bags, jewellery, books and magazines (Class 35).

The figurative mark MANHATTAN is represented as follows:

Untitled.png

Textilis is a company incorporated under English law, owned by Mr Keskin, whose online trading activity began in 2013. The company has marketed fabrics and goods for interior decoration bearing patterns similar to those of the figurative mark MANHATTAN.

Svenskt Tenn brought an action for infringement of the trade mark MANHATTAN of which it is the proprietor and an action for infringement of its copyright against Textilis and Mr Keskin before the Stockholms tingsrätt (District Court, Stockholm, Sweden). It also applied for an order that Textilis and Mr Keskin, on pain of a penalty, be prohibited, first, from marketing or distributing in any other way to the Swedish public certain designated objects and, second, from using that mark in Sweden for fabrics, cushions and furniture.

In response to those actions, Textilis and Mr Keskin brought before that court a counter-claim for a declaration that the trade mark MANHATTAN is invalid, in that, first, it lacks distinctive character and, second, having regard to the way in which it is used, it is made up of a shape which gives substantial value to the goods, within the meaning of Article 7(1)(e)(iii) of Regulation No 207/2009.

The Stockholms tingsrätt (District Court, Stockholm) dismissed the counterclaim, inter alia on the grounds that, first, under Article 4 of Regulation No 207/2009, all signs capable of being represented graphically, in particular drawings may be EU trade marks, provided that they have a distinctive character and, second, the mark MANHATTAN is not a shape within the meaning of Article 7(1)(e)(iii) of that regulation.

The Stockholms tingsrätt (District Court, Stockholm) ruled that Textilis and Mr Keskin had infringed the trade mark MANHATTAN and, moreover, had infringed the copyright of which Svenskt Tenn was also the proprietor.

Textilis and Mr Keskin appealed against that judgment before the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm), seeking, inter alia, a declaration, on the basis of Article 7(1)(e)(iii) of Regulation No 207/2009, that the trade mark MANHATTAN is invalid.

In support of their appeal, they argue that a sign consisting of the pattern on a fabric cannot be registered as a trade mark without subverting the principle of the limitation in time of copyright protection. They are of the view that this is why Article 7(1)(e)(iii) of Regulation No 207/2009 precludes the registration as a trade mark of signs which consist exclusively of a shape which gives substantial value to the goods.

Conversely, Svenskt Tenn contends that signs consisting of the shape of patterns may be registered as EU trade marks, such as the figurative mark MANHATTAN.

The Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm) seeks to ascertain whether a figurative mark such as MANHATTAN, which consists of the two-dimensional representation of two-dimensional goods, such as fabric, can be regarded as a shape within the meaning of that provision. It underlines in this respect that it is clear from Article 7(1)(e)(iii) of Regulation No 207/2009 that the ground for invalidity provided for in that provision applies to three-dimensional and two-dimensional marks representing three-dimensional shapes, such as, for example, the representation of a sculpture or a vase, as held by the EFTA Court, in paragraphs 110 to 115 of its judgment of 6 April 2017, Norwegian Board of Appeal for Industrial Property Rights — appeal from the municipality of Oslo (E-05/16), or, as the Court of Justice held in the judgment of 18 June 2002, Philips (C‑299/99, EU:C:2002:377).

It is unsure, however, whether such a ground of invalidity may apply to two-dimensional marks that represent two-dimensional goods, such as, for example, a pattern on a fabric or the reproduction of a painting. In that regard, it observes that it would be paradoxical not to accept such a ground for refusal of registration for such cases, in so far as there is no justification for a difference in treatment between sculpture, which is three-dimensional, and painting, which is two-dimensional.

It states that, unlike the mark at issue in the case which gave rise to the judgment of 12 June 2018, Louboutin and Christian Louboutin (C‑163/16, EU:C:2018:423), which consisted of a colour applied to the sole of a shoe, the figurative mark MANHATTAN at issue in the case pending before it is a work protected by copyright.

It queries whether the amendment of Article 7(1)(e)(iii) of Regulation No 207/2009 by Regulation No 2015/2424, under which registration is refused not only for signs which consist exclusively of ‘the shape’, but also ‘another characteristic of the goods’, which gives substantial value to it, is capable of altering the assessment to be made by virtue of that ground for invalidity. In that regard, it wishes to know whether, in the case before it, Regulation No 207/2009 or Regulation No 207/2009, as amended, taking account of the fact that the date of registration of the mark MANHATTAN, like that of the application for a declaration of invalidity and that of the judgment at first instance under appeal, is prior to 23 March 2016, the date of entry into force of Regulation 2015/2424.

 It states that, in any event and whatever the applicable version of Article 7(1)(e)(iii), if it is accepted that that provision applies to two-dimensional marks representing two-dimensional goods, the question arises as to the criteria for determining whether a sign such as that at issue in the main proceedings, may be regarded as consisting ‘exclusively of the shape which gives substantial value to the goods’ where the registration of that sign as a trade mark relates to a number of classes of goods and that the mark is designed in such a manner that it can cover the whole or substantial parts of the goods or be used as a logo.

In that regard, it points out the difficulty in assessing such a ground of invalidity, since the applicant for the trade mark is required only to indicate the goods for which it intends to use the mark and not to specify the practical conditions of use of the sign for which it seeks protection.

Thus, as the case may be, a mark may be affixed to the goods as a whole, like, for example, a furnishing fabric, paper or a tray, so that it becomes a key feature of the goods themselves and, in many of those cases, there is identity between the trade mark and the goods, or it may occupy a minor position on the goods, in particular where the mark is used as a logo.

In the light of those facts, the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm) decided to stay the proceedings and refer the following questions to the Court for a preliminary ruling:

‘1.  Is Article 4 of [Regulation 2015/2424] to be interpreted as meaning that Article 7(1)(e)(iii), in its new wording, is applicable to a court’s assessment of invalidity (under Article 52(1)(a) of the Trade Marks Regulation) that is made after the entry into force of the amendment, namely after 23 March 2016, even if the action concerns a declaration of invalidity where the action was brought before that date and therefore concerns a trademark registered before that date?

2. Is Article 7(1)(e)(iii) of [Regulation No 207/2009], in the version applicable, to be interpreted as meaning that its scope covers a sign which consists of the two-dimensional representation of a two-dimensional product, for example fabric decorated with the sign in question?

3.  If the answer to question 2 is in the affirmative, according to what principles is the wording ‘signs which consist exclusively of the shape (or another characteristic) which gives substantial value to the goods’ in Article 7(1)(e)(iii) of [Regulation No 207/2009, as amended,] to be interpreted, in a situation where the registration covers a wide range of classes of goods and goods and the sign may be affixed in different ways to the goods? Is the assessment to be made in accordance with more objective/general criteria, for example with the starting point of how the mark appears and how it is possible to affix it to different goods, that is to say without regard to the manner in which the trade mark proprietor may de facto have affixed or may intend to affix the sign to various goods?

The Court’s decision:

1. Article 7(1)(e)(iii) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trademark, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015, must be interpreted as meaning that it is not applicable to marks registered before the entry into force of Regulation No 207/2009, as amended by Regulation 2015/2424.

2. Article 7(1)(e)(iii) of Regulation No 207/2009 must be interpreted as meaning that a sign such as that at issue in the main proceedings, consisting of two-dimensional decorative motifs, which are affixed to goods, such as fabric or paper, does not ‘consist exclusively of the shape’, within the meaning of that provision.

EU trademarks in case of a hard Brexit – clarifications

brexit-4011711_960_720.jpgThe UK Patent Office published some clarifications what would happen with all European trademarks in case of a hard Brexit without a deal with the EU.

In that case, The UK will recognize all registered EU trademarks and will transform them into national trademarks. They will be indicated with UK009 in front of their EU numbers.

There will be no cost for the relevant owners and as little administrative burden as possible. However, the Patent Office will not issue trademark certifications for them. Information for these marks will be available in the UK trademark database.

When it comes to EU applications for trademarks, their owners will have up to 9 months to file identical applications in The UK. In that scenario, they will use the same priority date from their EU applications.

The full text can be found here.

Marry Me – not in the EU

heart-3698156_960_720.jpgThe General Court of the European Union has recently ruled on a case where the Swiss tech company Marry Me Group tried to register two European trademarks – a work mark MARRY ME and the following figurative sign:

CJ4JX4FZVCC523YA2TMALSKFLH5TSQ342QTDQUBJRERJKLYVSPPLPHARBN6WLBS46KAGSLCIXL6RE.jpg

The trademarks were been applied for the following Nice classes:

9 Communication software; Mobile software; Application software for social networking services via the Internet.

38 Providing access to forums (chat rooms) for social networks; Electronic transmission of messages; Providing online chat rooms for the transmission of messages, comments and multimedia content among users; Online conferencing of greeting cards; Providing access to forums [chat rooms] for public networks.

45 Matching services provided through social networking; Meeting, dating and personal presentation services via the Internet; Personal computer related services.

EUIPO refused to register both of them based on absolute grounds – lack of distinctiveness and descriptiveness. According to the Office MARRY ME can be directly perceived by consumers as a dating service. In regard to the figurative mark, the presence of graphical elements in combination with the word part is not enough to overcome the descriptiveness because of the shape of hearts that plays the opposite effect, it emphasizes, even more, the meaning of the phrase.

Marry Me Group argued that they already had received registration for their trademarks in Germany. However, that was to no avail. EUIPO stressed that when it comes to European trademarks their meaning has to be assessed on every language in the EU. From that perspective, all English speaking consumers will get immediately the meaning of the phrase as it is stated. So the signs will be descriptive.

The Court upheld this decision which is a good example of the practice where undistinctive signs are registered in combination with graphics or other words. Although this is possible, it has to be taken into account the fact that those graphics and words have to be distinctive enough and definitely not to support the meaning of the descriptive parts of the relevant trademark.

Source: WIPR.