Adidas won a trademark opposition in Japan

great-torii-of-miyajima-1425480_960_720.jpgAdidas won an opposition against the following application for a figurative trademark, applied for Class 25 by a Chinese company:

0.jpg

Against this sign, Addidas opposed its following earlier national trademark in Japan in Class 25 too:

0 (1).jpg

According to the German producer, both signs are confusingly similar because their visual elements create a similar impression in consumers. What’s more, Adidas’s mark has a reputation which increases, even more, the risk of confusion.

The Opposition Board coalesce with Adidas concluding that there is a possibility for consumer confusion because both signs are visually similar for identical goods and all of that is supported by the earlier trademark’s reputation.

Source:  Masaki Mikami, MARKS IP LAW FIRM (JAPAN) 

Advertisements

The power of biscuits on the EU stage

short-term-exposure-1600292_960_720.jpgThe EUIPO Board of Appeal ruled in the case R2378/2017-2 between Intercontinental Great Brands LLCи  and the Spanish company GALLEAS Gullón, S.A.

The case concerns an application for the following EU trademark applied by Gullón in class 30:

c96713fb-14e4-4c00-bd4b-a91e654aea1a

Against this application an opposition was field based on the following earlier marks in class 30 too:

22b9c9a1-d75d-4eb9-9f1a-a953759fcb5d

Untitled.png

According to the Opposition division, there is a possibility for consumer confusion regarding these marks because there is visual and conceptual similarity due to the shared image of sandwich biscuits. These particular biscuits have a reputation among consumer based on prolonging use throughout the years which was proved by a survey.

The Board of Appeal upheld the decision. Although there are differences between the word parts of the marks, this cannot overcome the similarities that the signs have supported by the reputation acquired by the biscuit images related to the earlier marks. This creates a real possibility for consumers to consider that there is a link between the later mark and the owner of the earlier marks.

What should we know about trademark oppositions?

pexels-photo-277124It is a widespread opinion that protection of a trademark requires its registration before the Country’s Patent Office. Even though this is true it is not the end of the story when it comes to trademark protection. Why?

The main reason for this is the fact that the legislation in most of the countries around the world doesn’t require from Patent Offices to stop every new trademark application even in a case that it is identical or similar to already registered one. This responsibility is given to the trademark owner who can file an opposition against such new marks if and only if he wants to do this.

But if the owner misses out on filling an opposition on time, the new mark will be registered and the following options for its cancellation could be more expensive and time-consuming.

So all in all every trademark holder has two main variants to support its already registered mark:

  1. To monitor the Patent Office’s trademark bulletins by himself – it has to be noted here that although everyone can assess identical marks for identical goods and services (a mark X for a good Y is a mark X for a good Y), the situation is much more complex when it comes to similarity, which requires in-depth knowledge regarding trademark legislation and case law.
  2. To subscribe for different software decisions which will alert him in case of new identical or similar marks and after that to discuss the results with a trademark attorney.

In any case, it is vital such monitoring to be carried out on a regular base and oppositions to be filed on time in order for the trademark protection to be maintained properly.

Apple lost a battle against Swatch in Singapore

pexels-photo-982660Apple failed to stop a trademark application for ‘Tick different’ applied by the Swiss company Swatch in Singapore for class 9 and 14.

The opposition was based on an earlier mark  ‘Think different’ owned by Apple for class 9. The US company argued that the Swatch mark is confusingly similar and filed in a bad-faith.

The Patent Office, however, wasn’t impressed and dismissed the opposition. According to the Office, both signs are not similar due to the differences in their first words which convey different meanings. On top of that, some of the goods weren’t similar too.

Source: WIPR.

Who can file oppositions against EU trademarks?

flag-2608475_960_720

The Advocate General of the European Court BOT issued an opinion on the case C‑139/17 P QuaMa Quality Management GmbH v EUIPO. This case concerns the following:

The background to the present dispute is described in detail in the judgment under appeal, to which I would refer (5). The facts essential to and necessary for an understanding of this Opinion may be summarised as follows.

In its action before the General Court, the appellant put forward two pleas in law.

In support of its first plea, the appellant argued that the opposition should be rejected as it was submitted after the period laid down in Article 41(1) of Regulation No 207/2009 had expired. At the time the notice of opposition was filed, SMSC Europe GmbH, not the intervener, was registered as the proprietor of the earlier mark. According to the appellant, given that the intervener, by the date of expiry of the opposition period, had submitted a request for a change of name and address only and not an application for registration of a transfer, it was not, therefore, entitled to file a notice of opposition pursuant to Article 17(7) and Article 41(1) of Regulation No 207/2009. In addition, the appellant asserted that EUIPO could not reclassify the request for a change of name and address as an application for registration of a transfer, as shown by the Opposition Division’s initial rejection of the first application and the submission of a second application by the intervener.

The General Court rejected that plea.

The General Court recalled, in paragraphs 18 to 27 of the judgment under appeal, the principles on which opposition proceedings are based, as well as the conditions that must be met in order to submit an application for registration of a transfer. It concluded, in paragraph 29 of that judgment, by reference to Article 17(7) and Article 41(1) of Regulation No 207/2009, that successors in title who are not yet registered as proprietors but to whom the earlier mark has been transferred are entitled to file a notice of opposition, provided that EUIPO has received their application for registration of a transfer.

Taking the view that the intervener had indeed remedied the deficiencies in the application for transfer, submitted as a request for a change of name and address, and had submitted proof of its entitlement to file a notice of opposition within the period allowed by EUIPO, the General Court found, in paragraph 35 of the judgment under appeal, that the notice of opposition filed at the same time as the request for a change of name and address of the proprietor of the earlier mark had been submitted within the period prescribed in Article 41(1) of Regulation No 207/2009, in the light of the combined provisions of Article 17(7) of that regulation and Rule 31(1) and (6) of Regulation No 2868/95.

The General Court rejected the appellant’s argument that the request for a change of name and address should not have been reclassified as an application for registration of a transfer, taking the view, in paragraph 37 of the judgment under appeal, that EUIPO cannot attach importance only to the formal title of a request without taking its content into account. In that regard, the General Court, first of all observed, in paragraph 38 of the judgment under appeal, that it does not follow from any provision of Regulations No 207/2009 or No 2868/95 that the use of the correct form is an essential pre-condition for an application to be valid. Next, it stated, in paragraph 39 of the judgment under appeal, that it was clear from the intervener’s request for a change of name and address that the request related to a change of ownership of the earlier mark. Finally, the General Court considered, in paragraph 40 of the judgment under appeal, that the fact that the Opposition Division had registered the two applications under two different numbers had no bearing whatsoever on the finding that EUIPO was entitled to regard the request for a change of name and address, in the light of its clear content, as an application for registration of a transfer.

In the light of those findings, the General Court considered, in paragraph 41 of the judgment under appeal, that EUIPO had not erred in interpreting the request for a change of name and address as an application for registration of a transfer for the purpose of Article 17(7) of Regulation No 207/2009.

In paragraph 42 of the judgment under appeal, the General Court therefore held that the Board of Appeal had been fully entitled to find that Article 41(1) of Regulation No 207/2009 had not been infringed in the case in the main proceedings, as the intervener was entitled to file a notice of opposition on 9 April 2013 and had done so within the prescribed period.

In support of its second plea, the appellant argued that the Board of Appeal of EUIPO infringed Article 8(1)(b) of Regulation No 207/2009 by failing to carry out a proper assessment of the likelihood of confusion between the marks at issue.

The General Court rejected that plea after examining each of the appellant’s claims concerning the definition of the relevant public, the comparison of the signs in question and the assessment of the likelihood of confusion between the marks at issue.

The Advocate’s opinion:

Admittedly, the appellant specifies the points that, in its view, were distorted by the General Court, namely, the request for a change of name and address submitted by the intervener on 9 April 2013 and EUIPO’s request in its letter to the intervener of 15 April 2013. Nonetheless, the appellant has failed to establish that that evidence was distorted, as the arguments it raises are not, in my view, sufficient to show that the General Court manifestly exceeded the limits of a reasonable assessment, as required by the Court’s case-law.

As regards the appellant’s arguments relating to an alleged distortion of the request for a change of name and address submitted by the intervener on 9 April 2013, it is clear that the appellant is in fact seeking a re-examination of its arguments before the General Court. The appellant merely repeats the arguments it made before the General Court with a view to obtaining a fresh assessment of the facts, which, as indicated above, falls outside the Court’s jurisdiction.

As regards the appellant’s arguments relating to an alleged distortion of EUIPO’s letter to the intervener of 15 April 2013, the appellant, in fact, focuses its criticism on the manner in which the General Court assessed the content of that letter and suggests a different reading to that adopted by the General Court. It thereby provides its own assessment of the facts and evidence before the General Court, but fails to show, to my mind, that that court’s analysis is manifestly incorrect.

In my view, the second head of complaint must be rejected as unfounded.

The head of complaint is based on a misreading of paragraph 30 of the judgment under appeal. In that paragraph, the General Court merely noted the facts which, as shown by the use of the expression ‘it is not disputed’ at the beginning of that paragraph, were established between the parties and not disputed by either party. When it observed that ‘only sufficient proof of transfer, in accordance with Rule 31(5) of Regulation No 2868/95 and Point 3.5 of Chapter 1 in Section 3 of Part E of the EUIPO Guidelines, was lacking’, the General Court merely took note of the content of Rule 31(1) and (5) of Regulation No 2868/95 and the EUIPO Guidelines and in no way asserted that, by submitting the form headed ‘Recordal application’ (application for registration), the intervener had provided sufficient proof of transfer allegedly required by EUIPO. The question of whether the submission of such a form was sufficient proof of the intervener’s entitlement to file a notice of opposition, for the purposes of those provisions, was not raised or discussed before the General Court.

Even if that point were to have been raised expressly before the General Court, I observe that the appellant does not dispute the fact that the information listed in Rule 31(a) to (d) of Regulation No 2868/95, which must be contained in an application for transfer, was already apparent from the notice of opposition and the request for a change of name and address submitted on 9 April 2013, as observed by the General Court in paragraph 30 of the judgment under appeal. Although, in its arguments, the appellant refers, in addition, to ‘the taking of evidence’, I note that nor does the appellant dispute the General Court’s interpretation or application of Rule 31(1) and (5) of Regulation No 2868/95 and Point 3.5 of Chapter 1 in Section 3 of Part E of the EUIPO Guidelines, in particular Rule 31(5) of that regulation, which clearly states that the signing of the application for registration of a transfer by the registered proprietor of the earlier mark and by the successor in title constitutes sufficient proof of transfer for the purposes of Article 17 of Regulation No 207/2009. While the appellant thus attempts to explain the reasons for which the proof of transfer was, in its view, insufficient to demonstrate that the intervener was entitled to file a notice of opposition, it fails to identify any error of law that might vitiate the judgment under appeal.

Brief IP news

briefs_1131. Opposition by an owner of a non-registered sign. For more information here.

2. Copyright: architect’s drawings. For more information here.

3. Are My Customer Lists a Trade Secret? For more information here.

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

Sports Direct lost an opposition against Fitness Direct in UK

WIPR reports about a decision of the UK Patent Office regarding the following trademark applications in Class 28:

Untitled

Against these marks, an opposition was been filed by Sports Direct base on a family of earlier trademarks Sports Direct for the same Class of goods.

According to the UK IPO, there is no enough similarity between the respective trademarks which to create a confusion among the consumers. There is no visual similarity and only low level of phonetic similarity exists. What’s more, these marks have a low level of inhabitant distinctiveness due to the fact that Sports and Fitness are descriptive to the sports goods in class 28 and Direct associates with the access to them.

The IPO rejected the Sports Direct claims that the later mark can cause negative consequences for the company’s own brands and reputation because no pieces of evidence in that regard were been submitted or any other which to show a high level of reputation on the market.

More information here.