Neymar won a dispute about his name in EU

brazil-germany-1201762_960_720.jpgThe well-known Brazilian footballer Neymar has won a trademark dispute before the General Court of the European Union.

The case concerns a registered in 2012 European trademark NEYMAR in class 25  – Clothing, footwear, headgear, owned by Carlos Moreira.

The footballer filed a request for invalidation of this mark based on a claim that it is filed in bad faith.

The EUIPO invalidated the mark because of which Moreira appealed the decision.

The General Court confirmed the EUIPO conclusions that this sign has been filed in a bad faith.

According to the court, there were sufficient pieces of evidence that clearly showed the celebrity status of Neymar at the time when the application was filed. Because of his rising career, many football clubs have interest in him at that time. This generated serious media coverage.

In that regard, the Moreira’s claims that he didn’t know who Neymar was were dismissed.

Another negative point for Moreira was that at the moment when he filed an application for this trademark he did the same for another mark Iker Casillas which is the name of the former Real Madrid goalkeeper.

Source: WIPR.

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Vita as a white trademark in The EU

blueberry-1245702_960_720.jpgThe European Court has ruled in case T‑423/18 Fissler GmbH v EUIPO which concerns whether or not words describing colors can be registered as trademarks.

The background of the case is as follow:

On 27 September 2016, the applicant, Fissler GmbH, filed an application for registration of an EU a word trade mark for VITA.

The goods in respect of which registration was sought are:

– Class 7: ‘Food processors, electric; parts and accessories for the aforesaid goods’;

– Class 11: ‘Pressure cookers, electric; parts and accessories for the aforesaid goods’;

– Class 21: ‘Household or kitchen utensils and containers; cooking pot sets; pressure cookers, non-electric; parts and accessories for the aforesaid goods’.

By decision of 28 April 2017, the examiner refused registration of the mark applied for in respect of the goods concerned on the grounds that it was descriptive and devoid of any distinctive character for the purposes of Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001).

On 20 June 2017, the applicant filed a notice of appeal with EUIPO.

By decision of 28 March 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, as regards the relevant public, it found that the goods concerned were aimed above all at the general public, but also in part at a specialist public, for example chefs, and that the level of attention varied from average to high. It added that, as the mark applied for was a Swedish term, it was necessary to take into account the Swedish-speaking public in the European Union.

In the second place, as regards the descriptiveness of the mark applied for, the Board of Appeal, first, pointed out that the sign vita is the definite plural form of the word ‘vit’, which means ‘white’ in Swedish. Next, it found that, for the purposes of applying Article 7(1)(c) of Regulation 2017/1001, the question whether or not white was a common colour for those goods was not determinative. It was sufficient that those goods could exist in white and that the sign could be descriptive of them. After stating that the colour white was not the most common colour for ‘electronic and non-electronic’ (that is to say, electric and non-electric) pressure cookers and other household utensils, but that it was at least a fairly usual colour for those goods, it found that that showed that an average consumer would associate the goods concerned with the colour white and therefore found that the mark applied for was descriptive. Furthermore, the Board of Appeal pointed out that some kitchen utensils and household appliances are often referred to as ‘white goods’ in English and Swedish (‘vitvaror’). On the basis of an extract from the website which could be accessed via the internet address http://www.vitvara.n.nu/vad-ar-vitvaror, it deduced that some of the goods concerned, such as electric food processors or electric pressure cookers, could collectively be described as ‘white goods’. It stated that, even if that were not possible, because it is mainly large household appliances, like washing machines and dishwashers, which are described as ‘white goods’, it clearly demonstrated that the colour white was generally associated with household utensils. Lastly, it found that the mark applied for was purely descriptive.

In the third place, as regards the lack of distinctive character of the mark applied for, the Board of Appeal found that the mark applied for would be understood by the relevant public as a simple statement of fact in the sense that the goods concerned were goods that were available in white. It concluded that that mark was purely descriptive and, consequently, had no distinctive character. It took the view that any manufacturer of food processors and cooking pot sets could manufacture its goods in white and that that mark was not therefore capable of distinguishing the applicant’s goods from those of other undertakings. Furthermore, the Board of Appeal rejected the applicant’s argument that there are other registered trade marks which consist solely of colours.

The General Court annulled the EUIPO’s decision with the following arguments:

In the present case, it must be stated that the colour white does not constitute an ‘intrinsic’ characteristic which is ‘inherent to the nature’ of the goods concerned (such as food processors, electric pressure cookers and household utensils), but a purely random and incidental aspect which only some of them may have and which does not, in any event, have any direct and immediate link with their nature. Such goods are available in a multitude of colours, among them the colour white, which is not more prevalent than the others. The Board of Appeal itself acknowledges this because the website that it mentions in paragraph 23 of the contested decision states that ‘these days, [household] utensils come in all colours’.

The mere fact that the goods concerned are more or less usually available in white, among other colours, is not disputed, but is irrelevant, since it is not ‘reasonable’ to believe that for that reason alone the colour white will actually be recognised by the relevant public as a description of an intrinsic characteristic which is inherent to the nature of those goods.

Consequently, neither of the two grounds relied upon by the Board of Appeal  is sufficient to establish that there is a sufficiently direct and specific link, within the meaning of the case-law referred to in paragraph 28 above, between the term ‘vita’ in Swedish and the goods concerned. The Board of Appeal did not show that the relevant public, when faced with the mark applied for, would immediately perceive it, without further thought, as a description of those goods or of one of the intrinsic characteristics of those goods that is inherent to their nature.

Furthermore, in so far as the Board of Appeal inferred the lack of distinctive character of the mark applied for from its being understood as a simple statement of fact in the sense that the goods concerned are available in white, it must be held that the relevant Swedish-speaking public will not perceive a description of an intrinsic characteristic of the goods concerned in the mark applied for and will not be able to associate it directly with those goods. On the contrary, the term ‘vita’ requires some interpretation on the part of Swedish and Finnish consumers. Those consumers will not understand the mark applied for as a simple statement of fact according to which those goods are available in white, but rather as an indication of their origin. That is particularly so because that mark will be affixed to goods of any colour, and not only to those which are white.

The ground for refusal relied on in the present case cannot therefore preclude the mark applied for from being regarded by the relevant public as being capable of identifying the commercial origin of the goods in question and distinguishing them from those of other undertakings.

MLS and David Beckham attacked Inter Milan in The US

football-1406106_960_720.jpgThe 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.

Source: SI.com.

GRAND CANYON was refused as a trademark in Japan

horseshoe-bend-page-arizona-colorado-river-86703.jpegThe Japanese Patent Office refused to register as a trademark the phrase  GRAND CANYON  for class 25 – clothes, shoes etc.

The reason behind this decision was the fact that according to the law in Japan and many other countries, signs that indicate a geographical origin in regard with the relevant goods and services are not allowed for registration as trademarks.

In the case at hand, GRAND CANYON  is a well-known US national park, recognized by UNESCO as a World Heritage Site.

What’s more, GRAND CANYON is famous with all sorts of merchandising products known and purchased by consumers around the world, including those in Japan.

From that perspective, it is highly likely consumers to perceive it in connection with the US national park than as a trademark sign.

Source: Masaki MIKAMI, Marks IP Law Firm.

Why SPRITE has problems with JallaXXXXXX brand in Norway?

pexels-photo-1028637.jpegTom Ekeberg (Zacco) published an interesting story for Lexology regarding a trademark dispute between Coca Cola and the Norwegian beverage producer OM, which tried to use the trademark JALLASPRITE. Coca Cola complained about such use and as a result, OM replaced its mark with JallaXXXXXX.

However, even with that outcome, Coca Cola initiated a lawsuit claiming that with XXXXXX part of the mark OM was trying to take advantages of SPRITE trademark well-known status amongst the consumers. The reason for this is the fact that according to the US company most of the consumers will understand that XXXXX is a replacement of SPRITE bearing in mind the dispute between the companies.

According to the Court’s decision, when it comes to JALLASPRITE there is no need for a temporary injunction due to the fact that OM took all necessary steps to discontinue the use of the sign at hand.

With regard to JallaXXXXXX, however, the court supports the Coca Cola’s position because OM did their best to communicate amongst Norwegian consumers that XXXXXX is a replacement of SPRITE as a consequence of the US company’s legal proceeding against them. In that way, OM tried to take unfair marketing advantages of the situation. This creates a clear connection between SPRITE and JallaXXXXXX as brands.

How online stores to communicate with their customers – the Amazon case?

ecommerce-3021581_960_720The Advocate General of the European Court G. PITRUZZELLA has given an opinion on case  C‑649/17 Bundesverband der Verbraucherzentralen und Verbraucherverbände, Verbraucherzentrale Bundesverband e. V. v Amazon EU Sàrl., which concerns the following:

The Bundesverband alleges that Amazon, an online sales platform, has failed to fulfil, in a clear and comprehensible manner, its obligations regarding the provision of information to consumers and has thereby infringed the German legislation implementing Directive 2011/83.

In particular, the applicant in the main proceedings submits that Amazon does not, prior to the conclusion of (online) distance sales, inform customers of a fax number; it also requires customers to answer a series of questions, including questions concerning their identity, before displaying the telephone number of its general helpline.

The applicant in the main proceedings alleges that Amazon is thus infringing the statutory consumer protection rules in force in Germany which, in implementation of Directive 2011/83, require traders to indicate, in a clear and comprehensible manner, their geographical address and telephone number and, where appropriate, their fax number and email address, so as to enable consumers to contact them quickly and efficiently.

Amazon does offer an automated call-back facility and an online chat service, but these are not, according to the applicant in the main proceedings, sufficient to discharge its legal obligations.

Having brought proceedings before the Landgericht Köln (Regional Court, Cologne, Germany), which rejected its application on 13 October 2015, the Bundesverband brought an appeal before the Oberlandesgericht Köln (Higher Regional Court, Cologne, Germany).

By judgment of 8 July 2016, that court dismissed the appeal and upheld the judgment at first instance.

Finally, the Bundesverband brought an appeal on a point of law before the Bundesgerichtshof (Federal Court of Justice).

The Bundesgerichtshof (Federal Court of Justice), being in doubt as to the consistency with EU law of legislation such as the German legislation at issue, which requires traders to give a telephone number in every case, rather than only where available, made the reference for a preliminary ruling to the Court of Justice.

The Bundesgerichtshof (Federal Court of Justice) decided to ask the Court about the proper interpretation of the expression ‘where available’, used in Article 6(1)(c), whether the list of means of communication set out in that provision is exhaustive or not, and about the scope of the obligation of transparency incumbent on traders.

It was in that context that the Bundesgerichtshof (Federal Court of Justice) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  May the Member States enact a provision which — like the provision in point 2 of the first sentence of Article 246a(1)(1) of the EGBGB — obliges traders when entering into distance contracts to give consumers their telephone number prior to acceptance of the contract not only where they have one available but in every case?

(2)  Does the expression “gegebenenfalls” (meaning “where available”) used in [the German language-version of] Article 6(1)(c) of Directive [2011/83] mean that traders must, if they decide to enter into distance contracts, provide information solely about the means of communication that are already actually available within their business, and that they are therefore not required to set up a new telephone or fax connection or email account?

(3)  If the second question is answered in the affirmative:

Does the expression “gegebenenfalls” (meaning “where available”) used in [the German language-version of] Article 6(1)(c) of Directive [2011/83] refer solely to the means of communication that are already available in the business and are actually used by the trader for communication with consumers when entering into distance contracts, or does it also refer to means of communication that are available in the business but have hitherto been used by the trader exclusively for other purposes, such as to communicate with other traders or authorities?

(4)  Is the list of means of communication (telephone, fax and email) set out in Article 6(1)(c) of Directive [2011/83] exhaustive, or may traders also use other means of communication not mentioned in that list, such as online chat services or call-back facilities, provided that they ensure rapid contact and efficient communication?

(5) Is it relevant to fulfilment of the obligation of transparency under Article 6(1) of Directive [2011/83] — in accordance with which traders must inform consumers in a clear and comprehensible manner of the means of communication referred to in Article 6(1)(c) of the directive — that that information is supplied quickly and efficiently?’

The Advocate’s position:

(1) Given its function of full harmonisation and in light of its literal, systematic and teleological interpretation, Directive 2011/83/EU of the European Parliament and of the Council of 25 October 2011 on consumer rights, amending Council Directive 93/13/EEC and Directive 1999/44/EC of the European Parliament and of the Council and repealing Council Directive 85/577/EEC and Directive 97/7/EC of the European Parliament and of the Council, precludes national legislation which obliges traders, when entering into distance contracts, to give consumers their telephone number prior to acceptance of the contract not only where they have such a number but in all cases.

(2) The expression ‘gegebenenfalls’ used in the German-language version of Article 6(1)(c) of Directive 2011/83 must be interpreted, literally, systematically and teleologically, as not imposing on traders any obligation, if they decide to enter into distance contracts, to set up a new telephone or fax connection or email account.

(3) The expression ‘gegebenenfalls’ used in the German-language version of Article 6(1)(c) of Directive 2011/83 must be interpreted, literally, systematically and teleologically, in the sense that only those means of communication which a trader has decided to employ in dealings with consumers when concluding distance contracts are ‘available’ within the undertaking.

(4) The list of means of communication set out in Article 6(1)(c) of Directive 2011/83 (i.e. telephone, fax and email) is not exhaustive and traders may also use other means of communication not mentioned in that list, such as online chat services or call-back facilities, provided that, whatever means of communication are employed, they actually offer consumers a choice of what means to use and ensure rapid contact and efficient communication, and provided that the information regarding those means of communication is provided in a clear and comprehensible manner.

(5)  Fulfilment of the obligation of transparency under Article 6(1) of Directive 2011/83 requires that consumers should be able to access the information regarding the means of communication which traders make available to them in a simple, efficient and relatively rapid manner.

Monster Energy lost a trademark dispute against a pair of legs

c7360330-09fd-4bf7-89fc-1b3aeb156732_2.409754b353d8e5dd7bf86be2e7f601ad.jpg

The well-known energy drink producer Monster Energy lost an interesting opposition against the following UK trademark application in class 32 (beers, ales, stouts; low-alcohol beers; non-alcoholic and de-alcoholized cider, perry and beers; syrups and preparations for making any of these aforesaid; excluding energy drinks):

GB50000000003231996.jpg

Against this mark, Monster invoked several earlier European trademarks in class 32 (Non-alcoholic beverages; beer):

GB50000000002439068

The UKIPO dismissed the opposition internally. The reason for this was the lack of possibility for consumer confusion. According to the Office, both signs are visually and conceptually different. While in the case of the earlier mark there is a pair of legs, the earlier signs represent a scratch created by an animal. Although both can be viewed as the letter M, the differences between them are enough in order to escape consumer confusion even though the goods are similar due to their nature.

The full text of the decision can be found here.

Source: WIPR.