Adidas lost a lawsuit against Thom Browne in the US

The German sportswear producer Adidas lost a trademark lawsuit against the famous designer Thom Browne in the US.

The dispute concerns an accusation by Adidas that Thom Browne uses a four strips design pattern that is confusingly similar to the famous three stripes pattern used by the German company that was initially introduced in 1952. For this pattern, Adidas owns a bunch of trademarks around the world including in the US.

Thom Browne uses four stripes pattern for his clothes now but in 2007 he settled a dispute with Adidas because he had used three stripes the years before.

The main issue with the current lawsuit was whether the four stripes pattern is confusingly similar to the three stripes one and what’s more whether this four-stripe design is not actually three-stripe if only the black stripes were counted.

The court dismissed the infringement claim stating that Adidas failed to prove that consumers would be confused between both patterns. One of the reasons was that both companies are not direct competitors. Thom Browne’s products are only high-priced while those of Adidas are affordable by most people. In addition, other companies used different patterns with stripes too, that is to say, this was not uncommon practice as a whole.

Source: The Guardian.

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Charlie Chaplin’s Charlot character cannot be trademarked in the EU

As it is well-known fictional characters can be registered as trademarks in many countries around the world. There are a lot of examples of such marks from Mickey Mouse and Superman to Super Mario.

The question is, however, what can represent an obstacle to the registration of these marks.

Recently, the EUIPO has issued a decision on a European trademark application for the following mark in classes 9 (scientific apparatus and instruments, photographic apparatus and instruments, cameras), 35 (advertising, business management, clerical services), 38 (telecommunication services), 41 (teaching, training, entertainment services), and 42 (computer software design):

The mark represents the great actor Charlie Chaplin in his most famous role as the Charlot character.

EUIPO refused to register this mark based on absolute grounds Article 7(1)(b) – (c) and 7(2) of Regulation 2017/1001 (EUTMR). According to the Office, consumers would perceive this character as conveying modern, liberal, and humanist values by denouncing totalitarianism and Nazi ideology.

This is the reason why consumers would perceive the image as an advertising approach to encourage sales based on the values attached to the Charlot character. From that perspective, it is not likely for consumers to get the image as a particular source of trade origin. This is emphasized by the widespread practice where famous people and characters are used for enforcement practices.

In addition, the image could be descriptive too if consumers consider the content of some services mentioned in the application as related to Charlot and Charlie Chaplin.

Source: IPKat.

Is SHAVETTE a trademark or a generic name for razors in the EU?

The Board of Appeal of the EUIPO has ruled in the case related to the invalidation of the EU trademark SHAVETTE.

The mark was filed in 2014 by the German company DOVO Stahlwaren Bracht GmbH & Co.KG for the following classes:

  • Class 8: Razors, electric or non-electric, and parts therefor; Containers and cases
    for razors.
  • Class 21: Shaving brushes; Holders for razors and shaving brushes.

The production of SHAVETTE razors started in the 1980s by DOVO and since then they have gained serious popularity amongst consumers.

In 2018, another company Sinelco International, BV filed a request for a declaration of invalidity of the registered mark for all the above goods on the ground of Articles 59(1)(a) EUTMR in conjunction with Article 7(1)(c) and 7(1)(d) EUTMR:

The following shall not be registered:
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

According to Sinelco, the word SHAVETTE is used by consumers as a generic term describing an entire category of razors with exchangeable blades. Evidence was submitted that shows such use by consumers in Sweden and the United Kingdom.

The Cancelation division of the EUIPO invalidated the mark agreeing that it is a generic term.

The fact that a trademark is being used as the common name to refer to a specific product or service is an indication that it has lost its ability to differentiate the goods or services in question from those of other undertakings. One indication that a trademark has become customary is when it is commonly used verbally to refer to a particular type or characteristic of the goods or services. It has been demonstrated that the contested trademark has become a name used as a synonym for straight razors with exchangeable blades so extensively that, as established by the cancellation applicant, in 2014 the trademark was not capable of differentiating the goods or services in question from those of other undertakings.

The decision was appealed and the Board of Appeal annulled it. One of the reasons is that the appeal happened after Brexit and the grace period that ended on 31.12.2021. This means that all evidence related to the UK is no more admissible no matter when the invalidation proceeding was started.

This is due, on the one hand, to the fact that the invalidity applicant has no interest to act where an absolute ground
only applies in relation to the UK. On the other hand, the above constitutes an application by analogy of Article 59(2) EUTMR and Article 209(2) EUTMR, which states that ‘the registration of an EU trademark which was under application at the date of accession may not be refused on the basis of any of the absolute grounds for refusal listed in Article 7(1) if these grounds became applicable merely because of the accession of a new Member State’. Finally, this is also confirmed by Article 54(3), 2nd sub-para, Withdrawal Agreement (‘WA’) according to which an equivalent UK trademark (that is a UK mark derived from a ‘parent’ EUTM according to Article 54(1)(a) ‘WA’) is not to be invalidated where the absolute ground of invalidity does not apply in the UK.

According to the Board, the rest of the evidence related to Sweden is not enough in order to support the conclusion that SHAVETTE is a common and generic name for razors.

This case shows us how important is for every company to communicate correctly that their mark is a source of trade origin and not a name of the related products or services. If this is not part of the marketing strategy of the company, in some cases there are some chances consumers to start indicating the whole product category using the same name which exposes the mark to the risk to be invalidated at some point.

Hyatt lost a trademark dispute in Japan

The Japan Patent Office has issued an interesting decision relating to trademark similarity which might be viewed as debatable in some countries.

The case at hand concerns the registered trademark GRAN CLUB by a Japanese company for classes 43 and 44 – restaurants, hotels and temporary accommodations, retirement homes, beauty salons, and so on.

Against this mark, an invalidation procedure was initiated by the well-known multinational hospitality company Hyatt International Corporation on the grounds of their earlier mark for GRAND CLUB being protected and used for the same services.

The Patent Office found both marks dissimilar due to the fact that the first word in the later mark has no specific meaning and the presence of the letter D in the earlier sign. The Office considered this as enough reason for consumers not to be confused.

Hyatt argued that their mark was being pronounced ɡræn-klʌb where D was a silent letter but the Office considered there was no evidence that consumers in Japan pronounce the word in that way.

In a contrast, such a dispute in Europe most likely will end with a conclusion for similarity. The reason is that one letter difference at the end of a word is not enough to overcome the similarity thread in most cases especially when the other words are identical and the goods and services are similar.

However, this case not only shows that trademark practice varies in different countries but that language perception and understanding can play a decisive role in some situations.

Source: Masaki MIKAMI – Marks IP Law Firm.

Can you rebrand medicines in the EU – a European Court decision

The European Court has ruled in joined cases C‑253/20 and C‑254/20 Impexeco NV v Novartis AG which target the issue of pharmaceutical products rebranding and parallel importation. The cases have the following background:

Case C‑253/20

Novartis developed a medicinal product with the active substance letrozole, marketed in Belgium and the Netherlands under the EU trademark ‘Femara’, of which Novartis is the proprietor.

That medicinal product is sold on the market in packages of 30 and 100 film-coated tablets of 2.5 mg in Belgium, and in packages of 30 film-coated tablets of 2.5 mg in the Netherlands.

Sandoz BV and Sandoz NV, respectively in the Netherlands and in Belgium, market the generic medicinal product ‘Letrozol Sandoz 2.5 mg’, in packages of 30 film-coated tablets in the Netherlands, and 30 and 100 film-coated tablets in Belgium.

According to the referring court, the medicinal products marketed under the names ‘Femara’ and ‘Letrozol Sandoz’ are identical.

By letter of 28 October 2014, Impexeco informed Novartis of its intention to import from the Netherlands and to place on the Belgian market, from 1 December 2014, the medicinal product ‘Femara 2.5 mg x 100 tablets (letrozol)’. It is apparent from the order for reference that that medicinal product was, in actual fact, the medicinal product ‘Letrozol Sandoz 2.5 mg’, repackaged in new outer packaging to which Impexeco intended to affix the trade mark ‘Femara’.

By letter of 17 November 2014, Novartis opposed the parallel import planned by Impexeco, claiming that a new marking of that product with the trade mark of the reference medicinal product produced by Novartis, that is to say, the trade mark ‘Femara’, constituted a manifest infringement of its rights in that mark and was likely to mislead the public.

In July 2016, Impexeco marketed in Belgium the medicinal product ‘Letrozol Sandoz 2.5 mg’, repackaged in new packaging bearing the trade mark ‘Femara’.

According to the referring court, the public price of the medicinal products ‘Femara (Novartis) 2.5 mg’, ‘Letrozol Sandoz 2.5 mg’ and ‘Femara (Impexeco) 2.5 mg’ are identical in Belgium. By contrast, the public price of ‘Letrozol Sandoz 2.5 mg’ is significantly lower in the Netherlands.

Claiming that the marketing referred to in paragraph 19 above infringed its trade mark rights, on 16 November 2016, Novartis brought an action against Impexeco before the Court of Cessations, Brussels, Belgium.

By letter of 10 April 2017, Impexeco also informed Novartis of its intention to market in Belgium the medicinal product ‘Femara 2.5 mg’ in packaging of 30 film-coated tablets imported from the Netherlands and re-labelled. It is apparent from the order for reference that that medicinal product was the medicinal product ‘Letrozol Sandoz 2.5 mg’ and that Impexeco intended to re-label that product and to affix the trade mark ‘Femara’ to it.

Case C‑254/20

Novartis developed a medicinal product with the active substance methylphenidate. Novartis Pharma NV markets that medicinal product in Belgium under the Benelux word mark ‘Rilatine’, of which it is the proprietor, inter alia in packs of 20 tablets of 10 mg. In the Netherlands, that medicinal product is marketed by Novartis Pharma BV under the trade mark ‘Ritalin’, inter alia in packs of 30 tablets of 10 mg.

Sandoz BV places on the market in the Netherlands the generic medicinal product ‘Methylphenidate HC1 Sandoz 10 mg’ in packaging of 30 tablets.

According to the referring court, the medicinal products marketed under the names ‘Methylphenidate HC1 Sandoz 10 mg tablet’ and ‘Ritalin 10 mg tablet’ are identical.

By letter of 30 June 2015, PI Pharma informed Novartis Pharma NV of its intention to import from the Netherlands and to place on the Belgian market the medicinal product ‘Rilatine 10 mg x 20 tablets’. It is apparent from the order for reference that that medicinal product was, in actual fact, the medicinal product ‘Methylphenidate HC1 Sandoz 10 mg’, in new outer packaging on which PI Pharma intended to affix the trade mark ‘Rilatine’.

In a letter of 22 July 2015, Novartis stated its opposition to the parallel import planned by PI Pharma, claiming that a new marking of the medicinal product ‘Methylphenidate HC1 Sandoz 10 mg’ with the trade mark of the reference medicinal product of Novartis, that is to say, the trade mark ‘Rilatine’, manifestly infringed its rights in that trade mark and was likely to mislead the public.

In October 2016, PI Pharma marketed that repackaged medicinal product in Belgium in new packaging bearing the trade mark ‘Rilatine’.

The referring court states that, in Belgium, the public price of the medicinal product ‘Rilatine 10 mg x 20 tablets Novartis’ is EUR 8.10 (EUR 0.405 per tablet) and the price of the medicinal product ‘Rilatine 10 mg x 20 tablets PI Pharma’ is EUR 7.95 (EUR 0.398 per tablet), while in the Netherlands the public price of the medicinal product ‘Methylphenidate HC1 Sandoz 10 mg’ is EUR 0.055 per tablet.

Claiming that the marketing referred to in paragraph 28 above infringed its trade mark rights, on 28 July 2017, Novartis brought an action against PI Pharma before the Court of Cessations, Brussels.

Factors common to the disputes in the main proceedings

By two judgments of 12 April 2018, the Court of Cessations, Brussels held that the two actions referred to in paragraphs 21 and 30 above were well founded on the ground, inter alia, that the practice of affixing the trade marks ‘Femara’ and ‘Rilatine’ respectively to the repackaged generic medicinal products ‘Letrozol Sandoz 2.5 mg’ and ‘Methylphenidate HC1 Sandoz 10 mg’, imported from the Netherlands, infringed the trade mark rights of Novartis, for the purposes, respectively, of Article 9(2)(a) of Regulation No 207/2009 and of Article 2.20(1)(a) of the Benelux Convention. Consequently, the Court of Cessations, Brussels ordered that that practice be discontinued.

Impexeco and PI Pharma, respectively, appealed against those two judgments before the referring court.

Before that court, they argue that the practices of using different packaging and different trade marks for the same product both contribute to the partitioning of Member States’ markets and, therefore, have the same adverse effect on trade within the European Union.

Relying on paragraphs 38 to 40 of the judgment of 12 October 1999, Upjohn (C‑379/97, EU:C:1999:494), Impexeco and PI Pharma submit that the opposition of the proprietor of a trade mark to the reaffixing of a trade mark by a parallel importer constitutes an obstacle to intra-Community trade creating artificial partitioning of the markets between Member States, where such reaffixing is necessary in order for the products concerned to be marketed by that importer in the importing Member State. That case-law can be applied to a situation in which a generic medicinal product is given a new marking by affixing the trade mark of the reference medicinal product, where those medicinal products have been placed on the market in the EEA by economically linked undertakings.

Novartis submits that, under Article 13(1) of Regulation No 207/2009 and Article 2.23(3) of the Benelux Convention, the rights conferred by a trade mark may be exhausted only in respect of goods which have been placed on the market in the EEA ‘under that trade mark’ by the proprietor or with its consent, and not where a parallel importer gives the goods concerned a new marking.

Taking the view, in those circumstances, that the disputes pending before it raise questions of interpretation of EU law, the hof van beroep te Brussel (Court of Appeal, Brussels, Belgium) decided to stay the proceedings and to refer the following questions, which are worded identically in Cases C‑253/20 and C‑254/20, to the Court of Justice for a preliminary ruling:

(1) Must Articles 34 to 36 TFEU be interpreted as meaning that, where a branded medicine (reference medicine) and a generic medicine have been put on the market in the EEA by economically linked undertakings, a trade mark proprietor’s opposition to the further commercialisation of the generic medicine by a parallel importer after the repackaging of that generic medicine by the affixing to it of the trade mark of the branded medicine (reference medicine) in the country of importation may lead to an artificial partitioning of the markets of the Member States?

(2) If the answer to that question is in the affirmative, must the trade mark proprietor’s opposition to that [new marking] be assessed by reference to the … conditions [set out in paragraph 79 of the judgment of 11 July 1996, Bristol-Myers Squibb and Others (C‑427/93, C‑429/93 and C‑436/93, EU:C:1996:282)]?

(3) Is it relevant to the answer to those questions that the generic medicine and the branded medicine (reference medicine) are identical or have the same therapeutic effect as referred to in Article 3(2) of the … Royal Decree of 19 April 2001 on parallel imports [of medicinal products for human use and the parallel distribution of medicinal products for human and veterinary use, as amended by the Royal Decree of 21 January 2011]?’

The EU Court decision:

Article 9(2) and Article 13 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015, and Article 5(1) and Article 7 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, read in the light of Articles 34 and 36 TFEU,

must be interpreted as meaning that the proprietor of the trade mark of a reference medicinal product and the trade mark of a generic medicinal product may oppose the placing on the market of a Member State, by a parallel importer, of that generic medicinal product imported from another Member State, where that medicinal product has been repackaged in new outer packaging to which the trade mark of the corresponding reference medicinal product has been affixed, unless, first, the two medicinal products are identical in all respects and, second, the replacement of the trade mark satisfies the conditions laid down in paragraph 79 of the judgment of 11 July 1996, Bristol-Myers Squibb and Others (C‑427/93, C‑429/93 and C‑436/93, EU:C:1996:282); in paragraph 32 of the judgment of 26 April 2007, Boehringer Ingelheim and Others (C‑348/04, EU:C:2007:249); and in paragraph 28 of the judgment of 17 May 2018, Junek Europ-Vertrieb (C‑642/16, EU:C:2018:322).

Amazon may be liable for trademark infringement after a European Court decision

The European Court has ruled in joined cases C‑148/21 et C‑184/21Christian Louboutin v Amazon

The main issue that focuses our attention, in this case, is whether Amazon can be liable for unauthorized use of trademarks shown in ads of third parties.

As it is well-known, Amazon is the biggest online retailer in the world offering a myriad of goods, directly or through third parties that use Amazon’s platform to sell their products.

The problem arises when these third parties offer fake goods bearing trademarks of other companies without permission and promote them through Amazon ads.

Several months ago, the Advocate General of the EU Court Maciej Szpunar gave its opinion that in such a situation Amazon is not liable for ads that infringe other trademarks, because the company does to use these marks itself.

The European Court, however, disagreed with the Advocate General, and conclude that Amazon may be liable for trademark infringement related to such ads.

The reason for this is the fact that Amazon itself uses ads to promote the same, but original, goods. These ads are very similar to those used by third parties but for fake goods. Thus it is difficult for consumers to make a distinction between the ads which in turn can lead to misleading about the fact that the fake goods can originate from Amazon. From that perspective, Amazon can be held liable for unauthorized trademark use.

In addition, the possible confusion between the ads is enhanced by the fact that Amazon is often involved in the storage, shipping, and management of returns for third-party products on its sites.

Source: Marks & Clerk – Megan Rannard for Lexology.

The new edition of the WIPO Magazine is available

WIPO has issued a new edition of its WIPO Magazine where you can find the following main topics:

1. Tencent, video games, the metaverse and diversity: an insider’s view

2. Fashion forward: pioneering African designer eyes luxury brands market

3. Brazilian agri-tech startup digitizes farm management with dividends for cattle farmers and sustainability

4. Why vaccine independence is so important for Africa

5. Green trademarks and the risk of greenwashing

For more information here.