Breaking news – Brazil joins the Madrid Protocol

brazil-3001462_960_720WIPO reports the exciting news about the accession of Brazil to the Madrid Protocol for international registration of trademarks. The Protocol will come into force for the country on 02.10.2019. After this date, every applicant from a country part of the Madrid System will be able to designate Brazil in its international trademark applications. This is huge facilitation and a very cost-effective way for trademark registration.

For more information here.

Advertisements

China tries to combat trademark applications filed in bad-faith

wood-door-1711004_960_720.jpgRecently China has introduced some amendments to its trademark law which main aim is to fight against the widespread practice in the country trademark applications to be filed in quantity without any intention for real use.

Because of this, according to the new amendments, every applicant will have to declare intent of use otherwise the application will be refused. What’s more, this will be a ground for oppositions and invalidations against the mark. So far, if one trademark has not been used for 3 years it can be subject to invalidation. Now, this can happen even earlier.

Apart from this, damages awarded by the courts in case of trademark infringements are increased significantly. The procedure for ceasing and destruction of countrified goods becomes more efficient.

Source: IPKat.

A successful indigo battle for O2 in The UK

telephone-booth-768610_960_720.jpgThe UK telecom O2 successfully won an opposition against a UK trademark application for Indigo Blue applied for class 41:

Arranging and conducting of concerts; Services for the showing of video recordings; Services providing entertainment in the form of live musical performances; Showing of prerecorded entertainment; Singing concert services; Song publishing; Song writing services; Songwriting; Sound recording and video entertainment services; Sound recording services; Sound recording studio services; Music concerts; Music entertainment services; Music festival services; Music performance services; Music performances; Music production; Music publishing; Music publishing and music recording services; Music publishing services; Music recording studio services; Musical concert services; Musical concerts by radio; Musical concerts by television; Musical entertainment services; Musical performances; Entertainer services; Entertainer services provided by musicians; Entertainment; Entertainment by means of concerts; Entertainment by means of radio; Entertainment by means of roadshows; Entertainment by means of telephone; Entertainment by means of television; Entertainment in the form of live musical performances (Services providing – );Entertainment in the form of recorded music (Services providing -);Entertainment in the form of television programmes (Services providing -);Entertainment services; Entertainment services for matching users with audio and video recordings; Entertainment services for matching users with computer games; Entertainment services for producing live shows; Entertainment services for sharing audio and video recordings; Entertainment services in the form of concert performances; Entertainment services in the form of musical vocal group performances; Entertainment services performed by a musical group; Entertainment services performed by musicians; Entertainment services performed by singers; Entertainment services provided by a music group; Entertainment services provided by a musical group; Entertainment services provided by a musical vocal group; Entertainment services provided by performing artists; Entertainment services provided by vocalists.

O2 invoked rights over several of its earlier EU trademarks for INDIGO  and INDIGO2 for the same class.

According to the UKIPO, both signs are very similar because of the word INDIGO. The difference between them is the word Blue and the number 2.

From a conceptual point of view, the trademarks are almost identical bearing in mind that for some of the consumers Indigo is a shade of blue. A slight difference can arise only if Indigo is perceived as purple. However, even in that case, both colors are closed.

Taking into account that the first part of the marks is identical, the UKIPO uphold the opposition in its entirety.

This is yet another case which comes to show how important is preliminary trademark clearance search. This search can help a lot in the assessment of the chances one sign has to be registered as a trademark and from another hand to avoid eventual disputes.

It is always advisable to do your homework before to file an application. This will save you time and money.

Source: WIPR.

Bear in mind this if you want to register a trademark in Canada

canada-1157521_960_720.jpgThe trademark registration process in Canada will have some significant changes this year as a result of the trademark law reform which has been addopted recently.

The main changes that have to be taken into account by all who want to protect a trademark in there are:

 1. The term of trademark protection will be reduced from 15 to 10 years.

2.  Declaration of Use will be no longer required from trademark applicants –  as it is well-known Canada, similarly to The US, has required until now such declarations which to show a real use of the sign on the market. This was one of the significant differences when it comes to trademark filing compare to Europe, for instance. But no more. Still, trademark use will remain an important element of the protection because it will be a ground for invalidation in the case of a lack of genuine use.

3. Canada will introduce Nice Classification for goods and services for the purpose of trademark filing. In that way, Canada has joined almost all countries around the world that already use this classification.

4. An additional fee will be paid for every class above the first in case of filling of a trademark application or trademark renewal.

Source: April L. Besl (Dinsmore & Shohl LLP), Lexology.

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.

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.