Chile won a dispute against Pery for the term PISCO

chile-970444_960_720The Chilean vineyard Sociedad Anónima Viña Santa Rita won a dispute before the UK patent office regarding its following trademark for class 33 that contains the word PISCO:

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The Peruvian IP office objected to this registration claiming that only producers from Peru can use the term PISCO to label their products in particular wine.

According to the Chilean vineyard, this wasn’t the case due to the fact that wine under the same name had been producing in Chily for centuries.

The UKIPO ruled that in the case at hand there was no risk for consumer confusion because it was highly unlikely for them to connect the term PISCO only with Pery. In addition, taking into account the whole mark the likelihood of confusion was even smaller.

Similar disputes between Chile and Pery exist in India and Australia too.

Source: WIPR.

BIO cannot be registered as an EU trademark

environmental-protection-683437_1280The Board of Appeal of the EUIPO has ruled in case  R1507/2019-2, which concerns an attempt for registration of the following EU trademark for classes 3 and 5:

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EUIPO refused to register the mark based on absolute grounds, Article 7(1)(b) EUTMR, descriptiveness, and lack of distinctiveness for the goods in the aforementioned classes.

The word BIO means ‘biological, organic’  and cannot serve as a source of trade origin.

The Board upheld this decision. The fact that the word BIO is displayed with colors and graphical elements is not enough to overcome the weakness of the sign because alone or in combination these additional elements are not capable to create the necessary distinctiveness.

Source: Alicante news.

New requirements for trademark filing in the US

flag-1291945_1920Marques Class 46 reports about new requirements by the USPTO in cases of filing trademark applications. From now on, every application has to contain the applicant’s email address. It doesn’t matter whether it is filed by industrial property representative or trademark attorney, the owner’s mail has to be mentioned in order for the mark to receive a filing date.

Another important announcement is the fact that in the case of specimens submitted for the purpose of proving trademark use in the US, all of them has to show not only the brand or its label, but as they are attached to the product itself, the image of which can represent a specimen. Otherwise, it is possible for specimens to be rejected by the Office.

Can bicycle functional shapes be protected with copyright?

pexels-photo-686230The Advocate General of the European Court Campos Sánchez-Bordona has given his opinion in Case C‑833/18 SI, Brompton Bicycle Ltd. v Chedech / Get2Get. This case concerns the following:

In 1975, Mr SI created a design for a folding bicycle, which he named Brompton.

The following year, Mr SI founded Brompton Ltd. for the purpose of marketing his folding bicycle in collaboration with a larger undertaking which would deal with manufacturing and distributing the bicycle. Mr SI did not find any undertakings that were interested and therefore he continued to work alone.

In 1981, Mr SI received his first order for 30 Brompton bicycles, which he manufactured with an appearance that was slightly different from the original.

After that, Mr SI expanded his company’s activities to increase awareness of his folding bicycle design which, since 1987, has been marketed in the following form:

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Brompton Ltd. was the holder of a patent for its bicycle’s folding mechanism (the main feature of which is that it has three positions: unfolded, stand-by and folded); that patent later fell into the public domain. (7)

Mr SI also asserts that he holds the economic rights arising from the copyright in the appearance of the Brompton bicycle.

The Korean company Get2Get, which specialises in the production of sports equipment, produces and markets a bicycle which also folds into three different positions (Chedech) and is similar in appearance to the Brompton bicycle:

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Brompton Ltd. and Mr SI took the view that Get2Get had infringed their copyright in the Brompton bicycle and, therefore, they brought an action against that company before the referring court, from which they sought, in essence: (a) a ruling that Chedech bicycles, irrespective of the distinctive signs affixed to those bicycles, infringe Brompton Ltd.’s copyright and Mr SI’s non-pecuniary rights in the Brompton bicycle, and (b) an order to cease the activities which breach their copyright and to withdraw the product from the market. (8)

Get2Get submitted that the appearance of its bicycle was dictated by the technical solution sought and that it deliberately adopted the folding technique (previously covered by Brompton Ltd.’s patent, which subsequently expired) because that was the most functional method. Get2Get maintains that that technical constraint dictates the appearance of the Chedech bicycle.

Brompton Ltd. and Mr SI countered that there are other bicycles on the market which fold into three positions and are different in appearance from their own, from which it follows that they have copyright over their bicycle. The appearance of the bicycle demonstrates the existence of creative choices on their part and, therefore, originality.

In those circumstances, the referring court has referred the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Must EU law, in particular 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, which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result?

(2)  In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria:

–   The existence of other possible shapes which allow the same technical result to be achieved?

–   The effectiveness of the shape in achieving that result?

–   The intention of the alleged infringer to achieve that result?

–    The existence of an earlier, now expired, patent on the process for achieving the technical result sought?’

The Advocate’s opinion:

‘(1) Articles 2 to 5 of 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 do not provide for copyright protection of creations of products with an industrial application whose shape is exclusively dictated by their technical function.

(2) In order to determine whether the specific features of the shape of a product are exclusively dictated by its technical function, the competent court must take into account all the relevant objective factors in each case, including the existence of an earlier patent or design right in the same product, the effectiveness of the shape in achieving the technical result and the intention to achieve that result.

(3) Where the technical function is the only factor which determines the appearance of the product, the fact that other alternative shapes exist is not relevant. On the other hand, the fact that the shape chosen incorporates important non-functional elements which were freely chosen by its creator may be relevant.’

South Africa joins the Madrid Protocol soon

south-africa-1184103_1920Marques Class 46  announced that South Africa is on its way to join the Madrid Protocol for international registration of trademarks. The accession was approved by the Parliament and now is waiting for such approval by the President too.

As it is well-known, the Madrid System allows the international filing of trademarks based on a single application and fee. This news is a great relief for all foreign businesses that operate in South Africa or want to do that because they will be able to protect their trademarks easily.

Why searching for registered trademarks is crucial for every business nowadays?

laptop-3087585_1920As it is well-known in order to be distinguished and successful every business needs a good brand name. However, the brand-building process is not the only thing that has to be bear in mind when you launch a new mark in the market.

One crucial moment is whether your new brand name can infringe someone else’s already registered trademarks.

This is a situation when your brand name is identical or similar to a registered mark for identical or similar goods and services.

The logical question here is to what extent such a conflict can arise. The brief answer is that this is highly possible especially in the current global market where there are millions of registered signs all over the world.

If such a scenario happens the consequences could be quite negative. The first aftermath is the fact that when you applied for registration of your brand name it can face opposition by the owners of early registered similar signs.

Another, even a more daunting result could be a lawsuit for infringement of an already registered trademark.

In all cases, this could mean ceasing the trademark use and choosing a new brand name that will require new investments, etc.

In light of this one, unfortunately sometimes underestimated moment, is a preliminary trademark clearance search which to show whether you can use your mark or not.

You can do such a search for free using the official Patent Offices’ trademark databases.

However, to use them correctly you need to know some detail for trademark protection and how these database work.

In that regard, e new Udemy course has been published recently, which explains how you can conduct a trademark search on your own. You can assess the course from here, which by the way is on promotion with a 93% discount.

Coming your way

MIM is similar to MUMM according to the General Court of the EU

gavel-3577254_1920The General Court of the European Union has ruled in T‑589/18 Vins el Cep, SL v EUIPO. The case concerns an attempt for registration of the following EU trademark in class 33 –  Alcoholic beverages (except beer).

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Against this mark, an opposition was filed based on earlier marks MM, MUMM and the following combined mark, all for class 33:

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The EUIPO upheld the opposition concluding that there is a risk for consumer confusion between the signs. The dominant element in the later mark was MIM, which was similar to MM and MUMM at the beginning and end of the words.

Visually and phonetically the marks at hand were similar too. Conceptually, there was no similarity because the word MUMM meant ‘courage’ in German.

The word part NATURA in the mark applied for, had secondary importance so it wasn’t able to make the difference.

Taking into account the identical goods in class 33, the Office accepted that there is a risk for consumer confusion.

The decision was upheld by the General court.