MILLENNIALFALCON crashed after a US trademark dispute

Lucasfilm Entertainment Company won a trademark opposition in the US against an application for “MILLENNIALFALCON” in class 41: “entertainment services in nature of live musical performance by musical bands, production services of sound and music recordings”.

This trademark was applied for by Ilan Moskowitz who used it for his musical performances including parody against corporate culture and in particular one related to Disney.

Lucasfilm invoked an earlier trademark for MILLENNIUM FALCON in class 28: “Toy vehicles”. In addition they claimed that their mark had been used for many other activities and products such as entertainment services, theater productions, television programs, motion picture films, comic books, books, toys, dolls, sporting goods, bags, personal-care products, linens, towels, apparel, food, online games, computer games, video games, music, and mobile applications.

They provided the USPTO with the necessary evidence for sales, licensing agreements, advertisements etc.

As it is well-know MILLENNIUM FALCON is the name of a space ship from the Star Wars series, which have become tremendously popular for the last almost 40 years.

Ilan Moskowitz claimed that both signs were not similar. Firstly because of the three letters IAL in the first word which were different and create different meaning. Secondly because the goods and services were completely different.

The USPTO disagreed. Although the earlier mark is registered only for toys, it has been used for many different products and services for a long period of time (in the US trademark protection arises based on real market use). Additionally the phrase MILLENNIUM FALCON is very well known by all consumers.

The three different letters couldn’t overcome the similarities between both signs including from conceptual point of view.

Bearing in mind all of that, the USPTO considered that there is a possibility of consumer confusion between both trademarks. It was decided that the parody defense claim is not allowed because the marks did not have any difference in the eyes of the possible consumer and did not carry the necessary conditions for the parody claim to be valid.

Source: Ankara Patent Bureau – Cansu ÇATMA BİLEN and Önder Erol Ünsal for Lexology.

Louis Vuitton won an important lawsuit in the EU regarding one of its well-known trademarks

The General Court of the European Union has ruled out in the case T‑105/19, Louis Vuitton Malletier v Norbert Wisniewski.

It is an interesting case which concerns the following registered by Louis Vuitton figurative European trademark for class 18 ( boxes of leather or imitation leather, trunks, suitcases, traveling sets (leatherware), traveling bags, luggage, garment bags for travel, hat boxes of leather, vanity cases (not fitted), toiletry bags (empty), backpacks, satchels, handbags, beach bags, shopping bags, shoulder-strap bags, carrier bags, shoulder bags, waist bags, purses, attaché cases, briefcases (leatherware), school bags, document holders, clutch bags, wallets, change purses, key cases, card cases (wallets), umbrellas, sunshades):

Against this mark, an application for invalidity was filed by the Polish company Norbert Wisniewski based on absolute grounds – lack of distinctiveness.

The EUIPO concluded that the mark represents a checkerboard pattern in beige-black, which is an everyday pattern widely used by many.

Louis Vuitton appealed claiming that EUIPO erred in its conclusions not paying attention to important evidence.

The Court confirmed that the above mentioned pattern has low distinctive character.

However, the Court agreed that the EUIPO made some mistakes when assessing the pieces of evidence regarding the acquired distinctiveness related to the mark.

As it is well-known, evidence for acquired distinctive character over a trademark has to cover the territory of the entire EU.

Louis Vuitton separated its evidence into three groups, and the third group concerned countries where the company had no physical stores and official presents.

The EUIPO concluded that this is not sufficient and dismissed the claim for acquired distinctiveness.

The Court overturned this position stating that there is no need for submitting evidence for every single country if there are such that covers the whole territory of the EU.

Louis Vuitton had many internet and social media advertising campaigns that target all EU Member States. The fact that there were no stores in some countries doesn’t mean that consumers there are not aware about the brand or cannot buy it through internet for example.

What’s more, Louis Vuitton participated in different exhibitions, and in addition, there were many cases of seized counterfeit goods with the above trademark including in the countries from the third group, which comes to show that the consumers there have some information about the brand.

This decision is really important because gives some light on the issue with proving distinctive character which can be sometimes quite a challenge in the EU with its 27 Member States.

Nokia lost a dispute regarding its trademark in the EU

EUIPO has ruled out in the opposition No B 3 082 511 Nokia Corporation v Shenzhen Road Zhengtong Trading Co. Ltd.

The case at hand concerns an application for the following EU trademark for classes 9, 38, 42:

Against this application the Finnish company Nokia filed an opposition based on its early registered mark NOKIA in class 9.

The EUIPO dismissed the opposition. Phonetically both signs are similar to medium degree, visually to low degree and from conceptual point of view there are not similar at all.

Although both marks contain the string “O-K-I” and the final letter “A” their beginning is different “K” and “N”. This is important because consumers pay more attention on the beginning of trademarks.

Based on this and the fact that the applied for mark has a graphical representation, the EUIPO came to a conclusion that there was no danger for consumer confusion between both signs.

The stated enhanced distinctiveness and reputation of the Nokia brand were not been examined by the Office because the signs were not been similar enough.

Source: EUIPO.

Debranding screens can infringe Apple’s trademark too

The Supreme Court in Norway has ruled out in a lawsuits regarding the iPhone trademark.

The case concerns not original screens for iPhones imported into the country where the brand logo was covered up.

Initially the Court in Oslo ruled out that there was no infringement because the trademark was not been visible for the consumers.

The Supreme Court, however, overturned that decision stating the contrary. The arguments for this were the fact that although the brand was not visible the covering could be easily reversed in order to make the spare parts more valuable. This can create confusion whether the screen are original or not.

Apart from that, the target consumer group is not the end users but the repairers performing the installation in the repair shops. Because of this there was a higher degree of attention which can lead those consumers to the idea that the screens are counterfeit.

The Court cited the European Court’s position in the case Mitsubishi (C-129/17), where spare parts with even removed brands are considered as trademark infringements.

The only question that can bother the Court and the society as a whole in such cases is the fact that all infringed goods will be destroyed as a general rule of thumb which can reflect negatively on the environment. This issue is valid for most of the countries around the world where the legislation is similar. Probably the law has to stipulates an option at least for recycling.

Manchester United initiated lawsuits against “Football Manager” video game producers

One of the most famous football clubs in the world the UK Manchester United initiated lawsuits against SI and SEGA which are producers of the video game Football Manager.

The reason for this action was the fact that this video game includes the name of the club and a logo in red and white which although not similar to the original club’s emblem associate with it.

According to Manchester United, when consumers see the name of the football club they will recall about the original emblem. In addition, the video game providers allow using of patches through which gamers can use even the original club’s signs.

For the UK club, all of that ruin the opportunity for licensing revenues from the use of its intellectual property.

The lawyers of the SI and SEGA stated that the potential ban for using the club’s name will restrict the right to freedom of expression. What’s more, the club had no right to claim infringement because it had been aware for this use for years without doing anything. This means that Manchester United had acquiesced in the use of its name by the video game producers.

The court decision is expecting.

Source: UDL Intellectual Property – Christopher Banister, за Lexology.

Breaking news: storage of goods by individuals can constitute a trademark use in the EU

The European Court has ruled in the case C‑772/18 which concerns the following background:

 On 4 April 2011 B, a natural person resident in Finland, received from China a consignment of 150 ball bearings weighing in total 710 kg, used as spare parts in transmission mechanisms, generators and engines and in the construction of bridges and tramways. On those bearings there was affixed a sign corresponding to the international word mark INA, of which A is the proprietor, covering, inter alia, goods classed as ‘bearings’.

Once customs clearance was completed in B’s name, on 12 April 2011 B withdrew the consignment from the customs warehouse at the airport of Helsinki-Vantaa (Finland), where it was stored, and took it to his home.

A few weeks later, the bearings were delivered to a third party in order to be exported to Russia.

B received as remuneration for those services a carton of cigarettes and a bottle of brandy.

In criminal proceedings for trade mark infringement brought against B before the Court of first instance of Helsinki, Finland, to which proceedings A was joined with respect to his civil interest, that court acquitted B on the ground that it could not be proved that he had deliberately committed an offence. That court however ordered B not to continue or repeat such conduct and ordered him to pay compensation and damages to A for the harm suffered by the latter.

B challenged those orders before the Court of Appeal of Helsinki, Finland.

That court, referring to the judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497), held that (i) B’s activity was, to a certain extent, equivalent to an activity of storage and onward transport of goods, and it had not been B’s objective to obtain any economic benefit from that activity, and (ii) the remuneration received on that occasion was not based on the economic exploitation of the goods in the course of a business but constituted only consideration for the storage of goods on behalf of a third party.

In the light of the foregoing, the Court of Appeal of Helsinki held that B had not used in the course of trade a sign similar to the registered trade mark at issue in the main proceedings and, consequently, held that the claim for compensation and damages made by A was unfounded.

A brought an appeal against that judgment before the Supreme Court, Finland.

The Supreme Court submits that it is not clearly apparent from the Court’s case-law whether the extent of the economic benefit obtained by a private person by reason of an alleged infringement of a trade mark is a relevant factor in order to determine whether or not there is use of a trade mark in the course of trade.

Further, while it is plain that Article 5 of Directive 2008/95 applies where a person uses a trade mark in the course of his or her own economic activity, there may be some doubt on that point where that person uses it for the benefit of a third party.

The Supreme Court submits that, in the judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497), it was held that the proprietor of a tax and customs warehouse who does no more than store on behalf of a third party goods bearing a sign identical or similar to a trade mark does not use that sign. The referring court is uncertain whether such case-law can be transposed by analogy to a case, such as that in the main proceedings, where an individual, in exchange for a bottle of cognac and a carton of cigarettes, has imported goods on behalf of a third party and has retained and stored them, prior to their being uplifted for onward shipment to a non-Member State.

The referring court is uncertain, last, whether the fact that an individual makes known his or her address to a dealer in goods, and takes delivery of them, although he or she did not request that those goods be sent to him or her and he or she took no other active role, can be considered to constitute the importing of goods, within the meaning of Article 5(3)(c) of Directive 2008/95.

In that regard, the referring court notes that, in the judgment of 18 October 2005, Class International (C‑405/03, EU:C:2005:616), the Court held that a prerequisite of goods being put on the market is that those goods have been released for free circulation within the meaning of Article 29 TFEU, which means that the customs duties and charges having equivalent effect that are due have been collected in that Member State. The referring court submits that there is uncertainty as to whether importing can be considered to occur where the person concerned does no more than take delivery of goods sent to his or her address, although he or she did not request that those goods be sent and there is no other active participation by that person in the shipment of those goods into the country.

In the light of all the foregoing, the Supreme Court decided to stay the proceedings and to refer to the Court the following questions for a preliminary ruling:

‘(1)  Is the amount of the benefit received from an alleged infringement of a trade mark by a private individual relevant when assessing whether his conduct is the use of a trade mark in the course of trade within the meaning of Article 5(1) of [Directive 2008/95]or purely private use? If a private individual uses a trade mark, does use in the course of trade require the satisfaction of criteria other than the requirement of economic benefit obtained from the transaction in question concerning the trade mark?

(2)  If the economic benefit must have a certain degree of significance, and a person, on the basis of the triviality of the economic benefit received by him and the non-fulfilment of other possible criteria of use in the course of trade, may not be regarded as having used a trade mark in the course of his own trade, is the condition of use in the course of trade within the meaning of Article 5(1) of [Directive 2008/95] satisfied if a private individual uses a trade mark on behalf of another person as part of that other person’s trade, where he is not, however, an employee in the service of that other person?

(3)  Does a person keeping goods use a trade mark in relation to goods within the meaning of Article 5(1) and (3)(b) of [Directive 2008/95] if the goods on which the trade mark is affixed, sent to a Member State and released into free circulation there, are taken delivery of and retained on behalf of a company that deals in goods by a person who does not carry on a business of importing and storing goods and who does not have a licence to operate a customs warehouse or tax warehouse?

(4)   May a person be regarded as importing goods on which a trade mark is affixed within the meaning of Article 5(3)(c) of [Directive 2008/95] if the goods were not imported at the person’s request, but the person provided his address to a dealer and the goods released into free circulation in the Member State were taken delivery of by that person on behalf of the dealer, and that person retained them for some weeks and delivered them for shipment to a third country outside the European Union for the purpose of resale there?’

The Court’s decision:

Article 5(1) 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 conjunction with Article 5(3)(b) and (c) of that directive, must be interpreted as meaning that a person who does not engage in trade as an occupation, who takes delivery of, releases for free circulation in a Member State and retains goods that are manifestly not intended for private use, where those goods were sent to his or her address from a third country and where a trade mark, without the consent of the proprietor of that trade mark, is affixed to those goods, must be regarded as using that trade mark in the course of trade, within the meaning of Article 5(1) of that directive.

Whether INCREDIBLE BURGER is similar to IMPOSSIBLE BURGER – Nestle faced some problems in the EU

The Court in Hague, Nederland, has issued a provisional pan-EU ban against a meat burger made of plant produced by Nestle, which uses the name INCREDIBLE BURGER.

The reason for this was a registered EU trademark for IMPOSSIBLE BURGER owned by the US startup company Impossible Burger that offers food products imitating meat.

Against this mark Nestle initiated a cancellation procedure before the EUIPO based on descriptiveness and lack of distinctiveness for the relevant products.

Meanwhile, the US company responded with a lawsuit in Nederland.

The Court came to a conclusion that the Nestle’s INCREDIBLE BURGER is similar enough to still registered EU trademark IMPOSSIBLE BURGER from a phonetic, visual and partly to a conceptual point of view.

The another thing that led the Court to consider a possible immigration of the IMPOSSIBLE BURGER mark was the fact that both companies were in licence negotiations which, however, failed. In the process of these negotiations Nestle acquired some confidential and sensitive information from the US startup regarding the mark and the product.

Nestle considers to change its product name to Sensational Burger in an attempt to distinguish it from INCREDIBLE BURGER.