The Chilean vineyard Sociedad Anónima Viña Santa Rita won a dispute before the UK patent office regarding its following trademark for class 33 that contains the word PISCO:
The Peruvian IP office objected to this registration claiming that only producers from Peru can use the term PISCO to label their products in particular wine.
According to the Chilean vineyard, this wasn’t the case due to the fact that wine under the same name had been producing in Chily for centuries.
The UKIPO ruled that in the case at hand there was no risk for consumer confusion because it was highly unlikely for them to connect the term PISCO only with Pery. In addition, taking into account the whole mark the likelihood of confusion was even smaller.
Similar disputes between Chile and Pery exist in India and Australia too.
The Board of Appeal of the EUIPO has ruled in case R1507/2019-2, which concerns an attempt for registration of the following EU trademark for classes 3 and 5:
EUIPO refused to register the mark based on absolute grounds, Article 7(1)(b) EUTMR, descriptiveness, and lack of distinctiveness for the goods in the aforementioned classes.
The word BIO means ‘biological, organic’ and cannot serve as a source of trade origin.
The Board upheld this decision. The fact that the word BIO is displayed with colors and graphical elements is not enough to overcome the weakness of the sign because alone or in combination these additional elements are not capable to create the necessary distinctiveness.
Source: Alicante news.
Marques Class 46 reports about new requirements by the USPTO in cases of filing trademark applications. From now on, every application has to contain the applicant’s email address. It doesn’t matter whether it is filed by industrial property representative or trademark attorney, the owner’s mail has to be mentioned in order for the mark to receive a filing date.
Another important announcement is the fact that in the case of specimens submitted for the purpose of proving trademark use in the US, all of them has to show not only the brand or its label, but as they are attached to the product itself, the image of which can represent a specimen. Otherwise, it is possible for specimens to be rejected by the Office.
Marques Class 46 announced that South Africa is on its way to join the Madrid Protocol for international registration of trademarks. The accession was approved by the Parliament and now is waiting for such approval by the President too.
As it is well-known, the Madrid System allows the international filing of trademarks based on a single application and fee. This news is a great relief for all foreign businesses that operate in South Africa or want to do that because they will be able to protect their trademarks easily.
The General Court of the European Union has ruled in T‑589/18 Vins el Cep, SL v EUIPO. The case concerns an attempt for registration of the following EU trademark in class 33 – Alcoholic beverages (except beer).
Against this mark, an opposition was filed based on earlier marks MM, MUMM and the following combined mark, all for class 33:
The EUIPO upheld the opposition concluding that there is a risk for consumer confusion between the signs. The dominant element in the later mark was MIM, which was similar to MM and MUMM at the beginning and end of the words.
Visually and phonetically the marks at hand were similar too. Conceptually, there was no similarity because the word MUMM meant ‘courage’ in German.
The word part NATURA in the mark applied for, had secondary importance so it wasn’t able to make the difference.
Taking into account the identical goods in class 33, the Office accepted that there is a risk for consumer confusion.
The decision was upheld by the General court.
The UK based owner of a small business Tiffany Parmar applied for a UK trademark “Cotswold Lashes by Tiffany” in 2018. The scope of the application covers the following classes: 3 (cosmetics), 41 (education and beauty school services) and 44 (hygienic and beauty care services).
Against this application, the US company Tiffany&Co filed an opposition based on a family of early registered trademarks Tiffany for classes 3, 14 and 41. In addition, a trademark with reputation was claimed due to the fact that Tiffany&Co has been operating in the UK since 1868 making sales for millions of dollars every year.
The UKIPO upheld the opposition with the argument that there is a serious risk for consumer confusion between the signs. The claimed reputation was not taken into consideration, however, because according to the Office, it was stated for goods that are dissimilar with those in the later mark.
The case at hand shows clearly that it is not always possible for individuals to register their personal names as a trademark if they collide with an already established and well-known trademark.
1. Popping prosecco’s bubble: geographical indications and the prosecco war. For more information here.
2. The importance of choosing the right brand protection strategy. For more information here.
3. EU General Court Confirms Similarity of Trade Marks BILLA and BILLABON. For more information here.