Masaki Mikami reports about another interesting trademark dispute in Japan which concerns an application for the following trademark in class 25 – clothes and related goods:
Against this application, an opposition was filed by the Italian fashion company FURLA S.P.A. on the ground of an earlier mark for FURLA in class 25.
The company claimed that the difference between L and N was not enough to overcome the similarity and the possible consumer confusion, especially in light of the established reputation of the Furla brand amongst Japanese consumers and the identity of the goods.
The Japan Patent Office, however, disagreed finding both marks as not similar. Visually the difference between the L and N letters and the stylization of the later mark was enough to overcome confusion. Phonetically these two letters created different impressions. Conceptually the mark applied for had no meaning while the earlier one was related to Furla’s brand and its founder Aldo Furlanetto.
While accepting Furla’s reputation as proven, the Office dismissed the opposition based on the lack of similarity between the signs.
Strangely enough but the word FURNA has meaning in some languages such as Bulgarian for example, where it means oven 🙂
The European Court has ruled in the case C‑104/22 Lännen MCE Oy v Berky GmbH, Senwatec GmbH & Co. KG. This dispute focuses our attention on the issue which jurisdiction is relevant in the case of online infringement of EU trademarks and where the lawsuits should be initiated. The background of the case is as follows:
Lännen, a company established in Finland, manufactures, inter alia, amphibious dredgers which it markets under the EU trade mark WATERMASTER, registered on 12 July 2004 under number 003185758.
On 28 January 2020, that company brought an infringement action before the (Market Court, Finland against Berky and Senwatec, two companies established in Germany and belonging to the same group of undertakings.
Lännen complains that Senwatec committed an act of infringement in Finland, by using paid referencing, in an internet search engine operating under the national top-level domain for that Member State; accordingly, if the term ‘Watermaster’ was searched for, an advertisement for Senwatec’s products was displayed on that search engine’s website. Thus, in August 2016, when the term ‘Watermaster’ was searched for in Finland on the website http://www.google.fi the first result displayed was a Google Adwords advertisement for Senwatec’s products, separated from the other search results by a line and containing the word ‘Ad’.
The national court notes that neither the advertising link obtained by that search nor the associated text contained any elements specifically referring to Finland or the geographical area where the products were to be supplied. However, the referring court states that Senwatec’s website to which that advertising link led contained, inter alia, a text in English indicating that Senwatec’s products are used worldwide and a world map on which the countries in which Senwatec claimed to be active were highlighted in darker colours. Finland did not form part of those countries.
Lännen complains that Berky infringed its trade mark by using, in the period from 2005 to 2019, the natural referencing of images, freely accessible on the photo-sharing website Flickr.com, of Berky’s machines, by means of a meta tag containing the keyword ‘Watermaster’, which was intended to enable internet search engines to identify those images better. Thus, a search in Finland on http://www.google.fi using the term ‘Watermaster’ produced a link to a page showing images of Berky machines.
The referring court points out that the link displayed as a search result was not an advertising link, but an ‘organic’ search result. The captions for the images on the Flickr.com service included the names of the machines in English and, in addition, their model numbers. Berky’s logo also appeared in connection with the images. Each image was accompanied by several meta tags consisting in keywords in English and other languages, in particular the term ‘Watermaster’.
According to Lännen, Berky and Senwatec carried out marketing activities on the internet that were directed at the territory of Finland and were visible to consumers or traders in that Member State. It submits that Senwatec’s and Berky’s products are sold throughout the world. In Lännen’s view, the advertising at issue, which is in English, is addressed to an international public, and is aimed at every country in which it is visible.
In their defence, Berky and Senwatec challenge the jurisdiction of the referring court, on the ground that the alleged acts of infringements were not committed in Finland.
They maintain that their marketing activities were not targeted at Finland, a Member State where they do not offer their products for sale and on whose market they are not present. Neither the search result on http://www.google.fi nor the use of a meta tag using the keyword ‘Watermaster’ would establish that their activities targeted Finland. Thus, in order to establish the jurisdiction of the referring court, the decisive factor is not whether the allegedly illegal content is visible online in Finland, but rather whether that content has a relevant connecting factor with that Member State.
The referring court states that the parties disagree as to whether the map depicted on Senwatec’s website shows that the area of supply of Senwatec’s products is limited to a geographical area from which Finland appears to be excluded. According to Senwatec, the map is evidence that Finland is not part of the market area for the company’s products whereas, according to Lännen, the market for Senwatec’s products is global and extends beyond the areas covered by that map.
The referring court considers, in the context of ascertaining the jurisdiction of a court seised on the basis of the place where the act of infringement was committed, that it is appropriate, in order to determine the territories of the Member States in which the consumers or traders, to whom advertising posted on a website is directed, are situated, to take account, in particular, of the geographical areas where the products concerned are to be supplied.
That court nevertheless considers that other factors might prove relevant for the purposes of such a verification, as is apparent from the Opinion of Advocate General Szpunar in AMS Neve and Others (C‑172/18, EU:C:2019:276), without it being clear what those other factors might be, since the Court has not ruled on that point.
The referring court is uncertain, in particular, whether, in order to determine whether it has jurisdiction under Article 125(5) of Regulation 2017/1001, account may be taken of the Member State under whose national top-level domain the search engine website providing access to the advertisements constituting the alleged acts of infringement is operated.
In those circumstances the Market Court decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘Company A is established in Member State X, where it has its registered office, and has used on a website a sign identical to an [EU] trade mark belonging to Company B, in advertising or as a keyword.
(1) In the situation described above, may it be concluded that the advertising is directed at consumers or traders in Member State Y, where Company B has its registered office, and does an [EU] trade mark court in Member State Y have jurisdiction to hear an action for infringement of an [EU] trade mark under Article 125(5) of [Regulation 2017/1001] where, in the advertising published electronically or on an advertiser’s website connected to that advertising via a link, the geographical area where the goods are to be supplied is not specified, at least not expressly, or no individual Member State is expressly excluded from that area? May the nature of the goods to which the advertising relates and the fact that the market for Company A’s products is allegedly global and thus covers the entire territory of the European Union, including Member State Y, be taken into account in that respect?
(2) May it be concluded that the above advertising is directed at consumers or traders in Member State Y if it appears on a search engine website operated under the national top-level domain of Member State Y?
(3) If Question 1 or 2 is answered in the affirmative, what other factors, if any, should be taken into account in determining whether the advertisement is directed at consumers or traders in Member State Y?’
The Court’s decision:
Article 125(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark,
must be interpreted as meaning that the proprietor of an EU trade mark who considers that he or she has been prejudiced by the use, without his or her consent, by a third party, of a sign identical with that mark in online advertisements and offers for sale in respect of goods identical with, or similar to, those for which that mark is registered, may bring an infringement action against that third party before an EU trade mark court of the Member State in which consumers and traders targeted by those advertisements or offers for sale are located, notwithstanding the fact that the third party does not expressly and unambiguously list that Member State among the territories to which a supply of the goods in question might be made, if that third party has made use of that sign by means of paid referencing on a search engine website which uses a national top-level domain name of that Member State. By contrast, that is not the case simply because the third party concerned has used the natural referencing of images of its goods on an online photo-sharing service under a generic top-level domain, having recourse to meta tags using the trade mark concerned as a keyword.
This blog has published news here and here about Christian Louboutin‘s struggles to protect its red-sole ladies’ shoes around the world. After failing to register a trademark for its red sole in Japan the company tried to protect it against the Japanese competitor Eizo Collection Co., Ltd. based on the Unfair Competition Prevention Law.
Eizo produces ladies’ shoes including one with red soles.
Being unhappy with this Christian Louboutin filed a lawsuit in order to prohibit such use claiming an established reputation for its red soles.
The Tokyo District Court wasn’t impressed and dismissed the case which provoked an appeal.
The IP High Court upheld the lower Court’s position. Reaching this conclusion the Court considered that Louboutin’s shoes and those of Eizo are in different price segments. More expensive products require more attention in the process of purchasing as a rule of thumb. In addition, the Court pointed out that most shoes bear the producer’s brand apart from the visual aspects, this is true even in the case of online sales.
When it comes to the claimed reputation, the Court considered that it was not proved sufficiently. The provided research showed that 51,6% of the women between their 20s and 50s living only in big cities associate the red soles with Louboutin. According to the Court, this was not enough for a remarkable reputation to be established in the market as a whole.
The General Court of the European Union has ruled in the case T‑323/21 Castel Frères v Shanghai Panati Co., which reminds us how essential is one registered mark to be used correctly in order for its protection to be viable.
The case has the following background:
On 29 May 2018, Shanghai Panati Co filed an application with EUIPO for revocation of the EU trademark that had been registered further to an application filed on 17 March 2008 for the following figurative sign:
The goods covered by the contested mark, in respect of which a declaration of invalidity was sought, were inter alia in Class 33 of the Nice Agreement: ‘Still wines’.
The ground relied on in support of the application for revocation was the lack of genuine use of the contested mark within a continuous period of five years.
Evidence was submitted by Castel Frères that the mark was used for wine labels in the following way:
On 3 April 2020, the Cancellation Division rejected the application for revocation.
On 24 April 2020, Shanghai Panati Co. filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
By the contested decision, the Board of Appeal upheld the appeal and revoked the contested mark. The Board of Appeal found, in essence, that the differences between the contested mark and the mark as used were such as to alter the distinctive character of the contested mark.
The Court upheld this decision.
According to the Court, it must be borne in mind that the contested mark in its registered form is a figurative mark consisting of three characters from the Chinese alphabet. As the Board of Appeal correctly notes the relevant public will not be able to verbalise or to memorise those Chinese characters, which will rather be perceived as meaningless, abstract signs or as decorative elements referring to China or to Asia. It is appropriate, therefore, to find that, with regard to the goods at issue, the Chinese characters forming the contested mark have a lower-than-average degree of distinctive character.
In that regard, it must be emphasised that on the product packaging or in the advertisements, the contested mark, which appears in a very small size, is almost systematically accompanied by the word elements ‘dragon de chine’ and by the representation of a dragon, which appear together and are very close to one another. Moreover, in so far as the contested mark is composed of three characters from the Chinese alphabet, in a very small size, the added elements are always clearly visible and dominate the overall impression.
The Board of Appeal was therefore right to find that the contested mark as used, that is to say, in an ancillary position and in a much smaller size than the distinctive and dominant word elements ‘dragon de chine’ and the representation of a dragon, would be perceived by the relevant public as a decorative element and not as an indication of origin of the goods.
That finding cannot be called into question by the argument that, in essence, it is common in the wine sector for two or more trademarks to be used jointly and autonomously on labels, with or without the name of the manufacturer’s company, as is the case here with the mark Dragon de Chine. It must be stated that the word elements ‘dragon de chine’ are always clearly visible in that they occupy a dominant position in the overall impression created by the mark as used. In any event, even if it were established that those elements are a trademark, the fact remains that that is not capable of weakening the alteration by those terms of the distinctive character of the contested mark, since the relevant public no longer perceives those three characters from the Chinese alphabet as an indication of the origin of the goods in question, in accordance with the case-law.
Having regard to the above examination of the distinctive and dominant character of the added elements, based on the intrinsic qualities of each of those elements and on the relative position of the various elements, it must be held that the variations in use demonstrated alter the distinctive character of the contested mark as registered, as the Board of Appeal rightly found.
This decision comes to remind us that one trademark should always be used as an indication of trade origin and not as a complimentary or decorative element. In a similar case, Apple lost a dispute regarding its trademark Think Differently because of the way the mark was used on the package of the product.
The well-known German producer of cosmetics Beiersdorf AG has recently faced some legal challenges in a trademark dispute in Japan.
The case concerns a trademark application for “NYFEA” filed by a Chinese company in classes 3, 8, 9, 10, 11, 16, and 21. Some of the goods covered were cakes of toilet soap, cleansing milk for cosmetic purposes, detergents, beauty masks, nail varnish, dentifrices, perfume, and incense.
Against this application, an opposition was filed by Beiersdorf AG based on an earlier mark NIVEA for the same goods. The company claimed a reputation of its mark stating trade use in the country since 1968 accompanied by strong sales and many advertisement campaigns. What’s more, the mark written in Japanese Katakana character was included in the Patent Office’s database with famous trademarks.
Surprisingly or not so, the Patent Office dismissed the opposition. First of all the Office didn’t consider the signs similar enough. The main argument for this was the difference between letters YF and IV which creates different phonetic and visual perceptions. There was no base for conceptual similarity as well.
Another important reason for the failure of this opposition was the fact that apart from stating its trademark reputation, the German company did not submit any evidence to support its claims. The fact that Katakana’s character version of the mark is proven famous mark was not enough for the assumption that the sign in Latin was famous too. Here evidence for sales, advertisements and market shares were necessary.
Sometimes when it comes to trademark disputes they can be defined as a battle between ‘David and Goliath’ considering the different positions and backgrounds of the Parties.
This is the case between an owner of a small boutique in the UK and the global clothes chain Zara.
Amber Kotrri owns a clothes boutique under the name ‘House of Zana’ for which she filed a trademark in the UK.
Against this application, an opposition was filed by ZARA based on an earlier mark for clothes and stores. Additionally an established reputation was claimed aiming to support the likelihood of confusion and the possible negative impacts on Zara’s famous brand.
Mrs. Kotrri pointed out that the name of her boutique stemmed from the Albanian word for fairies, and the reason for using it was the fact that her husband was Albanian.
The UKIPO accepted the meaning of the mark applied for but concluded that it is not popular among UK consumers at all, so it is irrelevant for the case.
Although the Office found some similarities between ZANA and ZARA, dismissed the entire similarity between the signs because the words HOUSE OF in the later mark created enough distinguishing impression.
When it comes to the claimed reputation of ZARA, the Office found only a small possibility for association with the latter mark in the consumer’s mind, so any detriment or tarnishment was not feasible as a whole.
One interesting trademark dispute from Japan shows us how difficult sometimes is famous trademarks to be invoked in opposition procedures.
The case concerns a trademark MACLOGIC filed by a local company in Japan for classes 9 and 42 – mainly computer software and design.
Against this mark, an opposition was filed by Apple Inc based on an earlier mark from MAC accompanied by a claim of trademark reputation. According to Apple, the mark applied for was similar to the earlier one due to the identical first part MAC, which was famous amongst Japanese consumers in relation to the company’s laptops and software. This was able to create consumer confusion in regard to the source of trade origin of the goods and services.
The Japan Patent Office, however, didn’t find both marks similar enough from a phonetic, visual, and conceptual point of view.
What’s a more, the Office considered the earlier mark reputation as established only for some consumers in the country but not for the public in general. Because of this, the opposition was dismissed.
The interesting moment in this decision was the fact that the reputation of a mark amongst the relevant consumers was not enough in order for this claim to be well established for the proceeding.
INTELLECTUAL PROPERTY PLANET 