When Yoga can be a serious threat to trademark protection in the EU?

The General Court of the European Union has ruled in the case Case T‑443/21 YAplus DBA Yoga Alliance v Swami Vidyanand.

This dispute focuses our attention on the issue of trademarks with a weak distinctive character and how this reflects on the scope of their protection.

In 2018, Mr. Swami Vidyanand filed the following international trademark where the EU was designated party, for class 41 – Education; providing of training; entertainment; sporting and cultural activities:

Against this application, an opposition was filed by YAplus DBA Yoga Alliance on the grounds of the following earlier mark in classes 35, 41, 42:

On 2 April 2020, the Opposition Division upheld the opposition. It found, in essence, first, that the services at issue were identical or similar and that they were aimed both at the general public and at professionals with an average level of attention, second, that the comparison of the signs had to be made from the point of view of non-English-speaking Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking consumers in the European Union and that the signs were visually similar to an average degree, highly similar phonetically and conceptually similar to a low degree. Third, it found that the distinctive character of the earlier mark was normal despite the presence within it of certain elements, at most weakly distinctive, such as their decorative elements or the common word element ‘yoga’. Lastly, it found that there was a likelihood of confusion on the basis of Article 8(1)(b) of Regulation 2017/1001.

An appeal followed where the Board of Appeal annulled the Opposition Division finding no likelihood of confusion between both signs.

The General Court upheld this finding. According to the Court:

It follows that excessive protection of marks consisting of elements which, as in the present case, have very weak distinctive character, if any, in relation to the services at issue could adversely affect the attainment of the objectives pursued by trademark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such elements in the signs at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case.

It should be remembered that the visual, phonetic, or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate, in that global assessment, to take into account the nature of the services at issue and to examine the objective conditions under which the marks may appear on the market.

Thus, in accordance with the case-law, in the present case, it must be held that, in view of the fact that the phonetic and conceptual similarities are based exclusively on word elements which are devoid of distinctive character, the clear visual differences between them have a greater impact in the global assessment of the likelihood of confusion.

In that regard, it should be borne in mind that, where the earlier trademark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does not often lead to a finding that such likelihood exists.

In those circumstances, it must be held that, in the context of a global assessment of the likelihood of confusion, having regard to the weak distinctive character of the common elements ‘yoga alliance’, the presence of figurative elements which are visually very different will enable the average consumer to make a clear distinction between the marks at issue, even for the part of the relevant public with an average level of attention, despite the identical or similar character of the services at issue. That is all the more true for the part of the relevant public with an above-average level of attention. Accordingly, it follows that the Board of Appeal’s error in relation to the level of attention of the relevant public in respect of the ‘educational’ services found in paragraph 50 above cannot have a decisive effect on the outcome of the global assessment of the likelihood of confusion.

This case reminds us what a trap can be if someone uses a weak distinctive element as a trademark. Although such an element can be registered in combination with graphics or other words, by its nature it is weak which means that monopolization of this element is not possible. This in turn means that competitors can use it too for their brands, and all of this means potential marketing and recognisability issues for the trademark owner.

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How an abstract canine depiction reflects a trademark opposition in the EU?

The General Court of the European Union has ruled in the case T‑596/21 Société Elmar Wolf v Fuxtec GmbH.

The case concerns the similarity between figurative marks based on the meaning they can convey to the consumers.

Fuxtec GmbH is the owner of the following international mark, where the EU is designated, for classes 4, 7, 8, 12, and 35:

Against this mark, an opposition was filed by Société Elmar Wolf based on several earlier figurative marks in classes 7, 8, and 35:

The EUIPO dismissed the opposition finding both signs dissimilar. The case was appealed.

The General Court upheld the EUIPO decision entirely. According to the Court, the earlier marks convey a clear impression of canine while the later mark is rather abstract, as a result of its clean curved lines, its sharp edges, and the lack of figurative details.

Due to this fact, consumers would need to put more effort and thoughts in order to discover the meaning of the sign if this is possible at all. This prevents the possibility of consumer confusion.

By contrast, as the Board of Appeal pointed out, the shape exhibited by the contested sign is rather abstract, as a result of its clean curved lines, its sharp edges and the lack of figurative details. It is true that that sign includes elements which could be perceived by a non-negligible part of the relevant public as the contours of the front view of a face, ears pointing upwards, a muzzle pointing downwards and eyes. However, the representation of a head which may emerge is obviously less realistic and considerably more stylised than the silhouette illustrated by the earlier marks, which represents some of the favourite attributes, a slightly open mouth and a menacing expression, of the representation of the head of a canine and which the rather abstract silhouette in the mark applied for does not have. In those circumstances, it is unlikely that the average consumer, who normally perceives a mark as a whole and does not carry out an analysis of its details at the time of purchase, will be capable of spontaneously associating the contested sign with the head of an animal, or even with the head of a canine, without engaging in an analysis which goes beyond that expected at the time of purchase.

It follows that it must be held, as the Board of Appeal found, that the overall impression created by the contested sign makes the identification of the head of an animal, let alone of a particular animal, highly arbitrary and, consequently, that the signs at issue are visually similar at most to a low degree.

The argument of the opposition applicant that the earlier marks have a high degree of inherent distinctiveness because they do not convey any meaning in relation to the goods and services covered by them, was dismissed by the Court, which considers that such consideration is not enough a high level of distinctiveness to be proved.

Puma won a dispute over figurative trademarks in Japan

Masaki MIKAMI reports about a dispute over figurative trademarks in Japan. The case at hand concerns a trademark application for the following figurative mark applied for class 25:

Against this sign an opposition was filed by the German sportswear manufacturer PUMA on the ground of the following early famous sign in class 25 too:

Puma has been using this sign for most of its sports shoes since 1958. The company submitted evidence for the available reputation of its mark in Japan, amongst other annual sales of 15 billion yen and 4% market share.

The Patent Office agreed that the earlier sign has a strong reputation in the market. In the assessment of the signs, the Office concluded significant similarities to the extent that the new sign can be perceived as a reversed version of the earlier sign.

Taking into account the identity and similarity between the goods in both marks, the Office considered both marks as similar enough to create consumer confusion about the source of trade origin.

Volkswagen successfully defended its classic Van trademark in the EU

Protection of three-dimensional trademarks can be a real challenge both in the process of their registration with the Patent Offices and in case of enforcement.

One indicative case about this is the following EU trademark application filed by Pinball Factory GmbH for classes 11, 12(including camping vehicles), 20, 21 и 39:

Against this application, an opposition was filed by the German car manufacturer Volkswagen based on the following earlier three-dimensional trademark in classes 12, 20, 21 и 39:

Initially, the EUIPO dismissed the opposition finding both signs dissimilar. According to the Office, the images in the earlier mark represent “true-to-life depiction of a camper van, or bus” because of this they have a low distinctive character.

The mark applied for shares a similar image of a van but because of its low distinctiveness, it is not decisive for the assessment of similarity. On the other hand, the word part CULTCAMPER plays a differentiating role between both marks.

In the appeal, however, the Board of Appeal overturned this decision. The Board stated that the earlier mark has to be taken as a whole, not as individual perspectives only. The fact that the mark represents a depiction of a van is not sufficient to conclude that the marks’ distinctiveness was low.

On the contrary, the Board considered the earlier mark as distinctive enough because it departs from the norms and customs of the sector concerned.

In the case at hand, “the front of the van is characterised by a divided windshield and the curved V-shape on the bonnet with the circular headlights on each side“.

The same elements were shared by the mark applied for although stylized. The word part CULTCAMPER cannot be so differentiating because it can be interpreted as a laudatory word combination – CULT and CAMPER, that is to say, “camper van which is greatly admired or regarded as fashionable“.

Taking into account all of this the Boarded concluded that there was a likelihood of confusion and that the later mark can be associated with the earlier sign by consumers.

Source: Vlotina Liakatou – Baker McKenzie for Lexology.

GAP lost a trademark dispute in Japan

The US worldwide clothing and accessories retailer GAP lost a trademark opposition against an application for word mark GAPACE in class 25 – clothes.

According to GAP this new trademark was confusingly similar to earlier trademarks GAP owned by the company. What’s more, GAP has a high level of reputation amongst consumers in Japan.

The Japan Patent Office, however, disagreed and dismissed the opposition in its entirety.

According to the Office, the claimed reputation wasn’t properly proved. The fact that GAP had been operating in Japan since 1994 managing 150 stores wasn’t enough in order to be concluded that the mark was popular.

When it comes to the signs themselves, the Office found them completely dissimilar from the visual and phonetic points of view.

Conceptually there is no similarity too because while GAPACE has no particular meaning, the word GAP can be interpreted as “separation in space”.

Based on this the Office reached a conclusion that both marks were different and not confusingly similar for the opposition to be upheld successfully.

How powerful Mickey Mouse’s silhouette is – a trademark dispute from Japan

Masaki Mikami reports about one interesting trademark conflict from Japan. The disputer at hand concerns the following application for a combined trademark for class 35 – retail or wholesales service in relation to confectionery, processed foods, and beverage (tea, coffee, cocoa):

Against this application, an opposition was filed by Disney Enterprises, Inc. based on the following figurative trademark, for which a reputation was claimed:

The Patent Office dismissed the opposition in its entirety although acknowledging the existing reputation of the earlier sign in Japan.

According to the Office, both signs are not similar from a visual point of view because one of them contains word elements and because the graphic representation is depicted upside down.

Phonetically, the marks are not similar because only the latter one can be pronounced whereas the earlier one has no phonetic structure at all.

Conceptually, both signs are not similar. While the applied-for mark has meaning, Disney’s sign has no inherent meaning.

Based on this, the Office concludes that there is no similarity between the signs which is capable to trigger consumer confusion.

IOC won a dispute regarding the Olympic trademark in Germany

The International Olympic Committee succeeded in a dispute in Germany on a trademark associating with the Olympic Games.

The case at hand regards the following German trademark application for classes 28, 35 and 41:

The German Patent and Trademark Office refused this trademark based on the German Law on the Protection of the Olympic Emblem and Designations (OlympSchG). According to this law, any use of  “Olympiade”, “Olympia”, “olympisch” or similar is prohibited if it is not authorized by the the National Olympic Committee for Germany or the International Olympic Committee. 

The decision was appealed and overturned. Because of this The International Olympic Committee intervened filing an opposition against this mark based on early registered mark for OLYMPIC.

This time, however, the Patent Office didn’t find similarity between the signs dismissing the opposition. In the appeal the German Federal Patent Court upheld this decision as valid.

Another appeal followed and the German Federal Supreme Court overturned the decision entirely. According to the court, the opposition was admissible. The fact that special legislation protects the Olympic Games symbols and signs doesn’t mean that they cannot be protected by the trademark law too.

When comparing the signs, the Court found enough similarities in order to upheld the opposition. The figurative element in the mark applied for would be perceived as an indication for the Olympic fire. In addition the lower court didn’t take into consideration the enormous reputation the earlier mark possesses. What’s more the first element of the mark RETRO has descriptive character.

The case has now been referred back to the German Federal Patent Court for new decision.

Source:  Yvonne Stone, Jana Bogatz – D Young & Co LLP for Lexology.