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.

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Information from Intellectual Property Center at the UNWE. More information can be found here

“BON GOÛT” can be a valid trademark in Japan

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Masaki MIKAMI  published an interesting article regarding the registrability of  “BON GOÛT” as a trademark in Japan.

This mark was filed for the following goods and services in Class 30 buns and bread, confectioneries, hamburgers, pizza, hot dogs, spices, noodles, pasta, coffee, tea, and Class 43 restaurant service, rental of cooking apparatus and microwave ovens.

Initially, the Patent Office refused this application based on absolute grounds, lack of distinctiveness for the specified goods and services due to the fact that “BON GOÛT” means good taste in French.

However, the Board of Appeal overruled this decision, stating that this sign can be a valid trademark because it has no meaning that can be understood by the relevant consumers in Japan who are not familiar with the French language as a whole.

A US non-profit organisation attacks Jamie Oliver for trademark infringement

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The US non-profit organisation Gluten Intolerance Group (GIG) has initiated a lawsuit against the world well-known chef Jamie Oliver.

GIG possesses a certification trademark GF which certifies that the relevant food products are gluten free. It is required the products to pass strict certification program.

In the case at hand, GIG claims that Jamie Oliver has used the sign GF for some of his recipes without to prove that the products have passed any certification process.

According to the organisation, this constitutes a trademark infringement which can create a confusion among the consumers that the products have been previously certified so as to use the sign GF.

Source: WIPR. 

Iceland versus Iceland supermarkets – a trademark conflict in process

iceland-flag-mapA trademark conflict between the UK supermarkets Iceland and the Republic of Iceland has gathered pace recently.

In short, the case concerns the fact the UK stores has been using that name for 50 years and of course they possess a family of trademarks across the EU. The problem has arisen when the company started to file oppositions against EU trademarks with applicants from Iceland who include in these marks the name of the country as geographical source. The case escalated additionally when the UK supermarkets opposed even a trademark filed by the Iceland Government which in turn launched an invalidation procedure against the store’s marks.

The last development is that a delegation from the UK company will go to Iceland to negotiate an amicable  deal on the case.

This case is really interesting because shows clearly one possible lapse in brand building process. When the UK store choose the name Iceland they were been caught in a kind of trap, because they quite normally sought to register that name as a trademark. The problem is that in such case the mark owner is obliged to enforce its rights and in this case to file the relevant oppositions, otherwise they can lose the protection over their marks and even worse can allow other companies, including stores to enter the market  with the same name.

The main issue here is that the mark is identical with the name of the country.

So the conclusion is that when you choose a new brand name you need to take into account all possible consequences and negative outcomes so as to try to escape them as early as possible.

Source: WIPR.

McDonald’s won a lawsuit for its Mc

top-10-mcdonalds-1020687-TwoByOneThe General court of EU ruled in Case T-518/13, which concerns invalidation of an EU trademark MACCOFFEE registered by a Singaporean company. McDonald’s attacked this mark on the ground of its family of well-known trademarks McFISH, McTOAST, McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN, EGG McMUFFIN, McFEAST, BIG MAC, PITAMAC and McDonald’s.

The General court upheld the invalidity of the mark because of the suffix MAC which is the only distinctive element in the mark taking into account that  COFFEE is descriptive. Based on this there is possibility the EU consumers to perceive the later mark as part of the McDonald’s family of marks which combines Mc and MAC suffixes with descriptive words too.

According to the court:

“In the present case, the Board of Appeal concluded, in paragraph 90 of the contested decision, that the relevant public was the relevant public for the goods covered by the contested mark, namely the general public within the European Union, with an average level of attention. Furthermore, the Board of Appeal found, in paragraph 108 of the contested decision, that it was sufficiently established that the use without due cause of the contested mark took unfair advantage of the repute of the McDONALD’S trade mark. As is apparent in paragraphs 102 to 108 of that decision, it indeed felt it was highly likely that the contested mark rode on the coat-tails of the McDONALD’S trade mark, in order to benefit from its power of attraction, its reputation and its prestige, and exploited, without paying any financial compensation, the marketing effort made by the intervener in order to create and maintain the image of the McDONALD’S trade mark. According to the Board of Appeal, all the factors of the case made it possible to conclude that the relevant public or a substantial part of it, could establish a mental link between the marks at issue, in so far as, upon seeing the contested mark affixed to the goods closely linked to those of the intervener, it could be attracted by the fact that that mark had practically the same prefix and reproduced the same structure as the McDONALD’S trade mark and could associate that mark with the ‘Mc’ family of marks, of which the McDONALD’S trade mark was the original trade mark.

Therefore, the Board of Appeal concluded that the use of the contested mark could entail a transfer of the image of the McDONALD’S trade mark, or of the characteristics which it projects, to the goods covered by the contested mark. The relevant factors for its assessment were, as stated in paragraphs 99 to 101 of the contested decision (i) the considerable reputation of the McDONALD’S trade mark, (ii) the distinctive character acquired by the prefix ‘mc’, combined with the name of a menu item or foodstuff, for fast-food restaurant services and goods on the menu of fast-food establishments, (iii) the fact that the contested mark reproduced the same structure as ‘Mc’ family of marks and (iv) the fact that the goods and services in question had a certain degree of similarity, because of the close links between them.”

Source: Marques Class 46.