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.

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The UK Wagamama won a trademark despite

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The UK restaurant chain for Japanese cuisine Wagamama won a trademark dispute against an application for a new trademark Wakayama applied for prepared meals, instant meals” and other food products “all consisting principally of noodles.

According to the restaurant chain, this trademark was confusingly similar to their one, what’s more, it could take advantage from Wagamama reputation on the market.

According to the applicant, there was no conflict between both signs because their trademark covers different letters.

The UK IPO has issued a decision stating that the later mark can create a consumer confusion due to the high level of visual and aural similarities in the presence of identical and similar goods. The different letters in the applied for trademark cannot overcome this negative outcome.

Source: WIPR.

PepsiCo won a crisp lawsuit in the EU

snack-1555522_960_720PepsiCo won lawsuit T‑82/17 before the General Court of the European Union regarding invalidation of ‘Exxtra Deep’ European trademark registered by the German-based company Intersnack Group for classes 29, 30 and 31.

According to PepsiCo, this trademark is descriptive and devoid of distinctive character for the goods in the above-mentioned classes.

The EUIPO upheld the invalidation partly, accepting that DEEP can be used from manufacturers to describe the crisp deep ridges, that is to say, the product shape. For some of the products, however, the trademark is not descriptive, namely for dried fruits and preserved vegetables.

PepsiCo appealed this decision.

According to the General Court, the EUIPO erred in its assessment because crisp can be produced based on fruits and vegetables too.

First, as is expressly indicated in the description of the goods in Class 29 covered by the contested mark, snack products (in particular crisps) are made from potatoes, which, it cannot be denied, are vegetables, as demonstrated in particular by the definition in the Oxford English Dictionary, produced by the applicant before EUIPO, according to which a vegetable is ‘any living organism that is not an animal; specifically one belonging to the plant kingdom’. That fact is not disputed by the intervener.

Second, crisps can be made from vegetables other than potatoes, or from fruit, as the applicant points out.

Third, there is nothing to prevent crisps made from vegetables or from fruit from being regarded as dried or cooked vegetables or fruits. As the applicant notes, crisps can be fried or dried or cooked.

Fourth, as the applicant correctly states, fruit and vegetables in Class 29 are ‘preserved, dried and cooked’. They are not fresh fruit, which comes under Class 31. Crisps, or more broadly, ‘extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks’, are produced from preserved, dried or cooked vegetables and fruits.

Thus, on the grounds put forward by the applicant, which are not disputed by EUIPO, ‘extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks’, in Class 29, are covered by the category of ‘preserved, dried and cooked fruit and vegetables’ in the same class.

How Tesco kept the surprise about its new stores?

shop-2607121_960_720Claire Jones (Novagraaf) published an interesting article for Lexology which presents Tesco’s approach regarding the launch of its new retail stores in the UK and what is common with the trademark strategy that the company used.

Tesco, as one of the biggest retailer in the country, decided to launch new stores that would compete directly with Lidl and Aldi under Jack’s brand.

The company desire was to keep this in a complete secrecy because of which Tesco signed non-disclosure agreements with its employees and partners.

So far so good, but what about the trademark protection that this new brand needs. If the company had filed an application in the UK or the EU this would have revealed its intentions to some extent.

To prevent this, Tesco filed for a trademark Jack’s in Sri Lanka for all classes of the Nice classification.

You may ask how this does help the company bearing in mind that the stores are in Europe?

Well according to the Paris Convention for protection of industrial property, if you file for a trademark in one Member State of the Convention and within 6 months you do this in another Member State for the same mark, your second application can use the priority date of the first one.

So in the case of Tesco they did exactly this. Of course, this by itself doesn’t mean that you will register successfully your mark because, for example, owners of earlier identical or similar marks can oppose you. Nevertheless, such a strategy can help you to hide your moves to your competitors.

The full text can be found here.

 

 

The taste of food is not subject to copyright protection according to the EU Court

pexels-photo-1435184The European Court issued a decision on the case C‑310/17 Levola Hengelo BV vSmilde Foods BV which in brief concerns the question whether the taste of foods can be protected by copyrights.

The background is as follow:

‘Heksenkaas’ or ‘Heks’nkaas’(‘Heksenkaas’) is a spreadable dip containing cream cheese and fresh herbs, which was created by a Dutch retailer of vegetables and fresh produce in 2007. By an agreement concluded in 2011 and in return for remuneration linked to the turnover to be achieved by sales of Heksenkaas, its creator transferred his intellectual property rights over that product to Levola.

A patent for the method of manufacturing Heksenkaas was granted on 10 July 2012.

Since January 2014 Smilde has been manufacturing a product called ‘Witte Wievenkaas’ for a supermarket chain in the Netherlands.

Levola took the view that the production and sale of ‘Witte Wievenkaas’ infringed its copyright in the ‘taste’ of Heksenkaas and brought proceedings against Smilde before the Rechtbank Gelderland (Gelderland District Court, Netherlands).

After stating that, from its point of view, copyright in a taste refers to the ‘overall impression on the sense of taste caused by the consumption of a food product, including the sensation in the mouth perceived through the sense of touch’, Levola asked the Rechtbank Gelderland (Gelderland District Court) to rule (i) that the taste of Heksenkaas is its manufacturer’s own intellectual creation and is therefore eligible for copyright protection as a work, within the meaning of Article 1 of the Copyright Law, and (ii) that the taste of the product manufactured by Smilde is a reproduction of that work. It also asked that court to issue a cease and desist order against Smilde in relation to all infringements of its copyright and, in particular, in relation to the production, purchase, sale, supply or other trade in the product known as ‘Witte Wievenkaas’.

By judgment of 10 June 2015, the Rechtbank Gelderland (Gelderland District Court) held that it was not necessary to rule on whether the taste of Heksenkaas was protectable under copyright law, given that Levola’s claims had, in any event, to be rejected since it had not indicated which elements, or combination of elements, of the taste of Heksenkaas gave it its unique, original character and personal stamp.

Levola appealed against that judgment before the referring court.

The latter considers that the key issue in the case before it is whether the taste of a food product may be eligible for copyright protection. It adds that the parties to the main proceedings have adopted diametrically opposed positions on this issue.

According to Levola, the taste of a food product may be classified as a work of literature, science or art that is eligible for copyright protection. Levola relies by analogy, inter alia, on the judgment of 16 June 2006 of the Hoge Raad der Nederlanden (Supreme Court of the Netherlands), Lancôme (NL:HR:2006:AU8940), in which that court accepted in principle the possibility of recognising copyright in the scent of a perfume.

Conversely, Smilde submits that the protection of tastes is not consistent with the copyright system, as the latter is intended purely for visual and auditory creations. Moreover, the instability of a food product and the subjective nature of the taste experience preclude the taste of a food product qualifying for copyright protection as a work. Smilde further submits that the exclusive rights of the author of a work of intellectual property and the restrictions to which those rights are subject are, in practical terms, inapplicable in the case of tastes.

The referring court notes that the Cour de cassation (Court of Cassation, France) has categorically rejected the possibility of granting copyright protection to a scent, in particular in its judgment of 10 December 2013 (FR:CCASS:2013:CO01205). There is therefore divergence in the case-law of the national supreme courts of the European Union when it comes to the question –– which is similar to that raised in the case in the main proceedings –– as to whether a scent may be protected by copyright.

In those circumstances, the Gerechtshof Arnhem-Leeuwarden (Regional Court of Appeal, Arnhem-Leeuwarden, Netherlands) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  (a) Does EU law preclude the taste of a food product — as the author’s own intellectual creation — being granted copyright protection? In particular:

(b) Is copyright protection precluded by the fact that the expression “literary and artistic works” in Article 2(1) of the Berne Convention, which is binding on all the Member States of the European Union, includes “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”, but that the examples cited in that provision relate only to creations which can be perceived by sight and/or by hearing?

(c) Does the (possible) instability of a food product and/or the subjective nature of the taste experience preclude the taste of a food product being eligible for copyright protection?

(d) Does the system of exclusive rights and limitations, as governed by Articles 2 to 5 of Directive [2001/29], preclude the copyright protection of the taste of a food product?

(2) If the answer to question 1(a) is in the negative:

(a) What are the requirements for the copyright protection of the taste of a food product?

(b) Is the copyright protection of a taste based solely on the taste as such or (also) on the recipe of the food product?

(c) What evidence should a party who, in infringement proceedings, claims to have created a copyright-protected taste of a food product, put forward? Is it sufficient for that party to present the food product involved in the proceedings to the court so that the court, by tasting and smelling, can form its own opinion as to whether the taste of the food product meets the requirements for copyright protection? Or should the applicant (also) provide a description of the creative choices involved in the taste composition and/or the recipe on the basis of which the taste can be considered to be the author’s own intellectual creation?

(d) How should the court in infringement proceedings determine whether the taste of the defendant’s food product corresponds to such an extent with the taste of the applicant’s food product that it constitutes an infringement of copyright? Is a determining factor here that the overall impressions of the two tastes are the same?’

The Court’s decision:

Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as precluding (i) the taste of a food product from being protected by copyright under that directive and (ii) national legislation from being interpreted in such a way that it grants copyright protection to such a taste.

“Cooking Chef Gourmet” cannot be a trademark according to the EU General Court

food-mixer-413737_960_720.jpgThe General Court of the European Union has issued a decision which confirmed the EUIPO position to reject trademark protection for “Cooking Chef Gourmet” applied for Classes 7 and 11 (cooking appliances) filed by the Italian company De’Longhi.

According to EUIPO, this slogan is laudatory and descriptive because it is widely used for food and drink by general and specialised (in the restaurant business) public that uses English language.

The Court upheld this decision dismissing De’Longhi’s arguments that its mark has acquired distinctive character based on its connection with the famous Chef that has been using since the 1950s.

The Court considered this as an inappropriate suggestion because there was no evidence submitted before the EUIPO that supported this statement. What’s more, the applied-for mark and the famous earlier mark were too different for such a conclusion.

Source:WIPR.

Red Bull prevailed in a UK barbecue dispute

pexels-photo-555775Red Bull won an opposition against the following UK trademark application in Class 11 – barbecue smokers and grills, pellet smokers and grills.

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The opposition was based on an earlier word mark RED BULL and the following figurative mark, both in Class11:

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According to the the UKIPO, there is a phonetic similarity between the sign which shares identical first part Red Bull. The presence of the words BBQ Grills in the later mark is not sufficient to differentiate them due to its lack of distinctiveness.

From a conceptual point of view, both marks are highly similar wheres from a visual side they are not because of the different graphical representations.

The earlier marks are within their 5 year period for use, so there is no need for a genuine use to be proved although Red Bull doesn’t use its trademarks for such goods.

In its conclusion, the Patent Office summarized that the signs at hand are similar to the extent that they can lead consumers to think that the goods are produced by the same or an economically linked undertaking.

Source: WIPR.