Puma won one interesting trademark opposition in Finland. The case concerns a trademark application for RUMA in classes 25 and 28 (clothes and toys among others).
Against this application an opposition was filed by Puma based on early registered trademark for PUMA in the same classes.
The Finish Patent and Registration Office dismissed the opposition considering the two marks as not confusingly similar. The reasons were the different first leters and the conceptual dissimilarity.
The decision was appealed. The Court upheld it after which the decision was applied again.
The Supreme Administrative Court overturned the decision finding both marks visually similar despite the first letters that are different. According to the Court the letters P and R are similar in appearance.
The Court questioned whether consumers would understand directly the meaning of PUMA as a word. Even if this was the case PUMA was distinctive for all the goods in classes 25 and 28. What’s more because of its reputation it has even stronger distinctive character. The interesting part here was the fact that the Court concluded on the existence of PUMA’s trademark reputation without submitted evidence in the proceeding.
According to the Court, when it comes to clothes they are often sold in stores where consumers choose between them mostly based on their visual aspects and not so based on conceptual or phonetic characteristics.
Taking all of this, the Court considered that both marks are similar enough.
Source: Johanna Säteri, Jenni Ihalainen – Berggren Oy.
The US sportswear company New Balance has won an important lawsuit in China related to its trademark.
The case at hand concerns the Chinese company New Barlun that uses the letter N on shoes. This letter is a New Balance well-know trademark all over the world. However, New Barlun succeeded to registered the sign first in China.
The US company initiated a lawsuit seeking invalidation of the mark based on a bad faith registration that took advantages of the New Balance’s trademark global reputation.
The court concurred with the US company finding bad faith approached by New Barlun, which was proven by the fact that the Chinese company failed to cease infringement despite the court issuing an interim injunction order.
The Court ordered $2.83 million in damages to New Balance for the trademark infringement. This is one of the biggest sum awarded by a Chinese court in case of trademark infringement in the field of sportswear.
Another indicative moment regarding this dispute is that trademark registration doesn’t mean a save harbor for the relevant applicant if the mark is registered in bad faith especially in light of worldwide well-known brands.
The General Court of the European Union has ruled in a dispute between Decathlon and the Greek company Athlon Custom Sportswear.
Athlon filed an application in 2016 for the following EU trademark in classes 25 (clothing and hats) and 28 (sporting articles and equipment):
Against this application an opposition was filed by Decathlon based on an earlier EU trademark DECATHLON for the same classes of goods.
The EUIPO upheld the opposition in its entirety considering both signs as confusingly similar.
The decision was appealed before the Board of Appeal and the trademark application was limited only to class 25 (athletic clothes and hats). The Board annulled the previous decision stating that there was no enough similarity between the marks.
Decathlon appealed but the General Court upheld the Board’s position.
According to the Court, although there is some phonetic and conceptual similarity this is not enough the marks to be considered confusingly similar.
The reason is that the common element for both signs ATHLON means “contest” in Greek, which can be associated with a sport competition. What’s more Athlon is a commonly used suffix in English in relation to athletic events. On the other hand, Decathlon means a competition in which athletes compete in various sporting events.
Because of that both signs have a low distinctive character. From that point of view, the assessment has to focus on the entire impression created by the signs, which in this case cannot lead to a conclusion for similarity. A low distinctive character cannot be monopolize in the same why as a distinctive sign because everyone has to have the right to use it in the relevant area.
The evidence produced by Decathlon for acquired secondary meaning of their trademark was dismissed by the Court as insufficient.
This case is a good example about the widespread attempt by many companies to use low distinctive elements as trademarks. Although this could sound great from marketing point of view because the brand communicates a particular meaning to the consumers, from legal point of view such sign are either difficult to be protected or at least they have limited scope of protection that does not allow competitors to be restricted to use similar marks too.
The US Major League Soccer (MLS) filed an opposition against a US trademark application for INTER owned by the Italian football club Inter Milan for classes 9, 18, 21, 24, 25, 28, 41.
The main ground for this opposition was lack of distinctiveness and descriptiveness of the word INTER in relation to the football goods and services.
MLS started this proceeding because of its plans for the new Inter Miami football club, which will start playing in the league in 2020. The president and one of the shareholders in this club is David Beckham.
According to the trademark law in The US and around the world, the trademark owner has the right to use the mark, dispose of it and to prohibit third parties of using it.
In light of this, MLS considers the word INTER as not distinctive for the reason of which it has not to be monopolized by any sport club bearing in mind how many clubs use it such as Inter Turku, Inter Leipzig, Inter Baku, Inter de Grand-Goave, NK Inter Zapresic, Inter Moengotapoe, Inter de Luanda. Inter Club d’Escaldes, Inter Atlanta FC.
It is highly likely that this opposition will be successful but for goods and services which regard football as a sport. For those of the goods and services, however, where INTER has inherited distinctiveness, the trademark can be registered which at least will give some merchandising advantages to Inter Milan.
Most likely there will be negotiations between the clubs.
The well-known MMA fighter Conor McGregor fights not only on the boxing ring but on the IP scene too.
The fighter has been trying to register various marks around the world for years but has met oppositions in different jurisdictions. An example for this is his attempt to register EU trademarks for Conor McGregor, The Notorious, Notorious, I Am Boxing, ChampChamp, Mystic Mac.
On the other hand, he fights against any attempt for registration of similar marks by third parties. This is the situation with the UK trademark applications, which include Conor McGregor and Notorious, filed by Gazala Khan as an individual.
The McGregor’s wish to possess such trademarks is not strange. This is part of his merchandising strategy to license these names to be used for different products and services. This by itself could be quite a profitable approach for every famous sportsman.
The onliest problem in that regard is the fact that this requires an adequate intellectual property strategy, built in advance, which to cover all steps in order the necessary protection to be achieved successfully. One of the set requirement in that light is a trademark clearing to be done as early as possible. The other important moment is that applications for trademarks have to be filed earlier in the sportsman carrier in order bad faith applications by third parties to be prevented.
Source: Claire Jones, Novagraaf.
The legendary Jamaican sprinter Usain Bolt has put an end of its professional career recently but this doesn’t mean that the merchandising business regarding his persona has ended too.
As many other well-known sportsmen such as Michael Jorden, for example, Bolt will continue to use its name for different merchandising and endorsement campaigns.
One of the reasons behind this conclusion is not only the Bolt’s celebrity status but the existence of many registered trademarks for his name. A quick check in the TM View database shows the following results:
The US Supreme Court ruled in the case STAR ATHLETICA, L.L.C. v. VARSITY BRANDS, INC., which in brief concerns clarification whether clothes design is copyright protectable.
As it is well-known there is no copyright over the so-called “useful article” objects having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. Examples are clothing, furniture, machinery, dinnerware, and lighting fixtures.
According to the court, even in this case copyright protection can be invoked but under some requirements:
- the element can be perceived as a work of art separate from the useful article;
- and the element would qualify as a protectable pictorial, graphic or sculptural work if imagined separately from the article of clothing (or other useful article).
In the particular case, the court considers that copyright over designs fixed on the clothes exist because the same designs could be transferred to another medium such as canvas in which respect it could be perceived as a separate piece of art.
More information here.