Eleonora Rosati published an interesting story for IP Kat regarding a lawsuit in Milano, Italy which concerns a fight with biscuits and cushions.
Barilla is the owner of several EU trademarks for Pan di Stelle,Galletti, Abbracci, Rigoli, Mooncake, Crostatina, Batticuori, Ringo, and Gocciole, all used for different types of biscuits and desserts.
Another Italian company tried to negotiate to use these marks for production of cushions. The deal never happened, nevertheless this company started production of such cushions using similar names such as Pandistelloso, Gallettoso, Rigoloso.
As a result, Barilla initiated a lawsuit in Milano for trademark infringement and won it.
According to the court, the defendant used similar marks and in that way infringed IPRs belong to Barilla. The defendant’s argument that there was no infringement due to the fact that biscuits and cushions are in different Nice classes was dismissed. The Court stated that Barilla’s trademarks have a well-known status among the consumers, because of which the defendant tried to take unfair advantages of the reputation of the trademarks.
The court ordered the defendant to pay damages for EUR 150,000, as well as covering the costs of litigation.
This case is indicative of the fact that although trademark protection is limited to the Nice classes of goods and services mentioned in the trademark application, that’s not always the case. There are additional facts that have to be taken into account before another trademark use to be initiated.
The General Court of the EU ruled in Cases T-629/16 and T-85/16 Shoe Branding Europe BVBA v EUIPO.
These cases concern an attempt by Shoe Branding to register the following EU trademark for Class 25:
Against this mark, an opposition was filed by Adidas based on earlier marks for a similar sign:
EUIPO upheld the opposition, finding that there is a likelihood of confusion based on the similarity of the signs and the reputation attached to the Adidas’ earlier marks.
Shoe Branding appealed before the Court claiming that there is no similarity and what’s more both signs had been peacefully coexisting in Germany for many years.
The Court upheld the EUIPO’s decision as correct. Apart from the fact that both marks are confusingly similar, according to the court, the applicant was trying to take unfair advantages from the proved reputation of the earlier marks. An evidence for this was an advertising slogan “TWO STRIPES ARE ENOUGH“ used in Portugal, which indirectly made a link with the Adidas’ marks.
With regard to the trademarks coexistence, the Court dismissed it, because there was no evidence for such on an EU level.
The General Court of the European Union ruled in Case T-31/16; adp Gauselmann GmbH v EUIPO.
The Case concerns an attempt for registration of an EU trademark JUWEL for classes 9, 29, 41.
The EUIPO refused the registration of this mark based on absolute grounds, Article 7(1)(b) and (c) EUTMR.
The word JUWEL has German origin and posses two meanings: precious gemstone and something that is precious for someone.
The Office refused this mark not because it communicates a direct descriptiveness but because it is not distinctive for the aforementioned goods and services. The public
will perceive the word mark as a direct indication of the quality of the goods and services and not as an indication of commercial origin.
Source: Alicante news.
The Federal Administrative Court of Switzerland ruled on a lawsuit between the Swiss Army and the Swiss watch producer Charmex.
The reason for this conflict was the fact that Charmex as an owner of a registered trademark ‘Swiss Military’ for watches filed an opposition against Army’s application for an identical mark for identical goods.
The Patent Office upheld this opposition because of which the Army appealed.
According to the Federal Administrative Court, the Army has the right to register such a trademark. What’s more, only the Army has to have the right to use this mark. The Court considers that there is no evidence suggesting that consumers connect the term ‘Swiss Military’ with the watch producer rather than the Swiss Army.
According to Charmex this decision is quite disappointing for them taking into account all efforts and investments they made in their brand throughout the years of its existence on the market.
The General Court of the European Union has issued a decision on case T‑765/16, Grupo Ganaderos de Fuerteventura, SL, établie à Puerto del Rosario v EUIPO.
This case concerns an attempt by the Spanish company Grupo Ganaderos to register the following European trademark for foodstuffs including milk and meat products:
EUIPO refused registration of this mark for some of the goods, considering the word tofio, which is part of the mark, as a term describing a bowl used to collect goat’s milk in the Canary Islands.
The decision was appealed because the applicant claimed that this term wasn’t used anymore and there was no strong connection between its mark and the bowl.
The Court upheld the appeal stating that EUIPO failed to prove that the consumers in Spain are familiar with this term and are being aware of the function of the ‘tofio’ and of its links with the relevant products.
WIPR reports about an interesting lawsuit in the US which concerns the well-known Grumpy Cat which has become an internet sensation in the recent years.
The owners of this cat, trying to use its commercial power, gave in 2013 a license regarding copyrights and trademarks over the cat’s image to the coffee company Grenade Beverage. The license specified that the company has the right to use this intellectual property only for one specific beverage called “Grumppuccino”. However, Grenade Beverage started to use Grumpy Cat for other products too.
As a consequence, the cat’s owners filed a lawsuit for copyright and trademark infringement.
According to the court, there is such intellectual property infringement, because of which a damage in the amount of 710 000 dollars was ordered.
This case is interesting and indicative of the fact that every IP license should be draft very carefully in order to cover all aspects of the IP exploitation and what’s more it has to be executed precisely after that.
The Brussels Court of Appeal has ruled in a case between Aldi and InBev, which concerns an accusation that Aldi infringed InBev’s rights over Jupiler trademark in a way contrary to fair commercial practices.
The Court, however, has concluded that there is no infringement at the case in hand because of the following:
- Both products are sold in different sales channels. In case of Buval, the beer is sold only in Aldi’s stores, whereas, in case of Jupiler, the product is sold everywhere with exception of Aldi’s stores. The Court did not find any post-sales confusion, which occurs at the point of consumption rather than purchase;
- The consumers have become used to the red, black and white colors in relation to various brewers;
- The consumers have become used to the use of shields and animals with regard to beer packaging by various brewers.
Source: CMS Belgium, Lexology.