How a trademark can become a generic term and what is the danger in that regard?

door-green-closed-lock.jpgThe US-based company Safe Skies successfully revoked a European trademark ‘TSA lock’  registered by Travel Sentry for classes:

Class 6:      Metal locks (for luggage).

Class 18:    Bags; backpacks, canvas backpacks, athletics bags, carry-on bags, gym bags, travel bags, beach bags, briefcases, purses, suitcases, trunks, luggage, straps for luggage, waist packs, and wallets.

Class 20:    Non-metal locks (for luggage).

The ground for this revocation was Article 58(1)(b) and (c) EUTMR:

The rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:

  • (b) if, in consequence of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service in respect of which it is registered;
  • (c) if, in consequence of the use made of the trademark by the proprietor of the trademark or with his consent in respect of the goods or services for which it is registered, the trademark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

According to Safe Skies, this trademark hadn’t been used as a trademark sign but only as a product name. In the case at hand, TSA lock’ was in use for special type of lock for luggage which allows Border Agencies to open it using a universal master key.

EUIPO revoked the trademark dismissing the owner’s arguments that nobody in the EU understands TSA as an abbreviation for Transportation Security Administration.

According to the Office, this is irrelevant because the consumers of this product named it as TSA lock not perceiving it as a trademark sign.

The submitted pieces of evidence weren’t enough to overcome this conclusion.

This case, although rare, is very essential when it comes to trademark protection because it shows clearly what is the danger when one trademark is used as a product name which sometimes is very tempting from marketing point of view.

Source: WIPR.

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Why ‘Botanical Origin’ cannot be a European trademark?

water-lily-1857350_960_720The EUIPO Board of Appeal has rules in case R 881/2019-5, which concerns an attempt for registration of a word European trademark for ‘Botanical Origin’ in class 3:

All purpose cleaning preparations for household, commercial, industrial and institutional use; cleaning preparations for toilets, bath tubs, sinks and floors; cleaning preparations for kitchen and bathroom surfaces; disposable wipes impregnated with cleaning compounds for use in bathrooms and kitchens; polishing preparations for kitchen and glassware; oven cleaning preparations; stove-top cleaning preparations; cleaning preparations for vitroceramic and kitchen surfaces; glass and metal cleaning preparations; window cleaning preparations; bleaching preparations and other substances for laundry use, whether in solid, fluid or gel form; laundry preparations; carpet cleaning preparations; decalcifying and descaling preparations for household purposes; fabric softeners; laundry detergents and additives; stain removing preparations; scent boosters; prewash and stain loosening preparations; starch; laundry blue; bleaching preparations and other substances for use in dishwashing; cleaning, polishing, scouring and abrasive preparations; dishwasher cleaners, fresheners and deodorizers; rinsing agents; preparations for cleaning and de-clogging dishwashers; decalcifying and descaling agents for household purposes; dish detergents; all the above-mentioned products with or without disinfecting components; soaps; detergents; rust removers and grease removers; drain and sink unblocking preparations; preparations for prevention of limescale, rust or grease

EUIPO refused to register this sign based on absolute grounds art. 7(1)(b) EUTMR, lack of distinctiveness. The decision was appealed.

The Board of Appeal upheld the initial EUIPO position. The arguments for this is that the expression Botanical Origin would be perceived by the relevant public as information that the goods come from a botanical source and/or contain ingredients that have a plant-based origin.

The applicant argued that the sign is distinctive at least for some of the goods where there is no such connotation.

This was dismissed too. According to the Board, the phrase would be “perceived by the relevant public as only providing promotional information on the nature, purpose, performance and subject matter of the goods and services concerned and not as indicating their [commercial] origin”.

Source: WIPR.

Honda won a trademark dispute in the UK

photo-1505326841080-510ac2d537c9.jpgHonda won an opposition in the UK against an application for a trademark ‘Vtecdirect’ in class 37 for the “the fitting and installation of Vehicle parts; the maintenance, repair, and servicing of vehicles”.

Against this mark, the Japanese company invoked its earlier mark for ‘VTEC’ in class 12.

According to the Patent Office, there is a similarity between both signs that can create consumer confusion. Both trademarks are visually similar due to the VTEC part which has a leading position. Although DIRECT word creates some conceptual difference it is not enough to overcome the similarity especially taking into account the fact that this word is not so distinctive.

The applicant’s argument that there was no confusion because both companies have different business models and in fact, its services enhance Honda’s sales were been dismissed. The trademark role is to indicate trade origin not to promote someone else’s brand.

Source: WIPR.

Uber won another trademark dispute in the UK

pexels-photo-417005Uber won an opposition in the UK against a trademark application ‘ChefUber’ applied for in class 35 – recruitment services in the catering trade.

Against this application, Uber invoked several of its earlier UBER trademarks for the same class including the UberEats trademark used for food delivery. According to the company its marks are similar to the later one in a greate scale.

The Applicant argued that there is no similarity due to the fact that the first part of its mark is Chef, which makes the sign to stand alone.

The Patent Office came to the conclusion that the services between the trademarks at hand are similar or identical.

When it comes to the sign, the Office considered them confusingly similar. The fact that there is a Chef in front of Uber in the later mark is not enough to overcome this possibility because this word is not distinctive and it is even descriptive for the listed services.

What’s more, the Office considered that the later sign tries to take advantage of the Uber reputation as a brand on the market.

Source: WIPR.

Marvel fights against BlackBerry because of ‘Jarvis’

iron-man-933709_960_720.jpgMarvel filed an opposition against a BlackBerry’s attempt to register a trademark for ‘Jarvis’ in class 42 in the US.

As it is well-known ‘Jarvis’ is a character, an AI software assistant to Toni Stark, another character from the “Iron Man” comics and movies.

Marvel is the owner of an earlier trademark ‘Jarvis’ registered in class 9:

Computer application software that may be downloaded via global computer networks and electronic communication networks for use in connection with mobile
computers, mobile phones, and tablet computers, namely, software for use as a
voice-controlled personal digital assistant.

According to the company, there is a significant chance for consumer confusion between both marks because of the reputation of its trademark which has been gained throughout the years in connection with Marvel movies and different merchandising activities such as Lego own movies, video games, etc.

This case is intriguing by its own. On one hand, we have a registered trademark for a name which is used as a character in comics and movies. On another hand, there is an attempt for registration of the same mark but for another class of real services. The question here is whether the use of a trademark as a character is enough in order to stop such following applications. Yes, merchandising use, especially for video games, is a point in the right direction but it is interesting to what extent a reputation connected to a fictional character for software can be useful to stop identical signs for real software in the real world.

Source: WIPR (Marvel hits out at BlackBerry over ‘Jarvis’ TM)

 

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.

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.