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.

Advertisements

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.

Kellogg lost an opposition against a UK brewery

pexels-photo-459280.jpegKellogg Company lost an opposition in The UK. The case concerns the trademark application for FRUIT LOOP filed by the local brewery Fuller for class 32 – Beer, ale, lager, stout and porter; non-alcoholic beers.

Against this mark, Kellogg invoked its rights over the early registered trademark with reputation FREET LOOPS for class 30 – Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and non-frozen confectionery; honey, treacle; yeast, bakingpowder; salt, mustard; vinegar, sauces (condiments); spices.

The opponent claims that it has reputation under the above mark in respect of “preparations made from cereals”. It claims that use of the mark in suit would take unfair advantage of its mark and use of it would ride upon the coat tails of the opponent’s reputation and marketing efforts which would provide an unfair advantage. Use of the mark in suit would also dilute the distinctiveness of its mark, and the association of the opponent’s product with use on alcoholic beverages is likely to cause detriment to its reputation.

The Patent Office disagreed dismissing the opposition. According to the Office, there was only a low level of similarity between both signs for dissimilar goods.

The key moment in the opposition was the claimed reputation of the earlier sign. According to the Office, it wasn’t proved sufficiently which to show that the mark had been used for a prolonged period in the UK in a way that consumers are aware for its high level of reputation.

Source: WIPR.

Swatch prevailed over Apple in a trademark dispute

sydney-363244_960_720A recent trademark battle between Apple and Swatch has ended with success for the Swiss company.

The dispute at hand concerned a trademark application for ‘one more thing’ filed by Swatch.

Apple filed an opposition arguing that this phrase was well-known by consumers in relation to its products because it had been used in their launching.

The Australian Patent Office disagreed stating that according to the evidence Apple had used this phrase only once. This wasn’t enough to constitute real trade usage for the purpose of the trademark opposition procedure.

In addition, Swatch emphasized that the idea for this trademark was inspired by the  “film noir” genre and in particular by the character of Colombo detective who regularly used this phrase in his investigations.

Source: WIPR.

The battle for ICELAND continues

pexels-photo-414101Iceland Foods will appeal the EUIPO’s decision for cancelation of its trademark ICELAND registered in 2014 for classes 7, 11, 16, 29, 30, 31, 32, 35. This trademark is used for supermarkets in The UK.

The procedure was initiated by Promote Island, a government organization from Iceland based on Article 52(1) EUTMR in conjunction with Article 7(1)(c) EUTMR:

The following shall not be registered:

  • (a) signs which do not conform to the requirements of Article 4;
  • (b) trade marks which are devoid of any distinctive character;
  • (g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;

The EUIPO agreed with Promote Island and canceled the trademark. The arguments for this are:

It follows from all of the above that ‘ICELAND’ may serve, from the point of view of the public concerned, to designate an essential and desired characteristic of the goods and services.

Therefore, the mark conveys obvious and direct information regarding the geographical origin of the goods and services in question, and in some cases, the subject matter of the goods as well.

Considering all of the above, it follows that the link between the word ‘ICELAND’ and the contested goods and services is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR and that this was also the situation at the time of filing of the contested EUTM, namely, 19/04/2002.

The EUIPO found that Iceland Food failed to prove acquired secondary distinctiveness in the EU.

The Icelandic foreign minister Gudlaugur Thór Thórdarson expressed his satisfaction with this decision.

“It is contrary to common sense for a foreign company to be able to appropriate the name of a sovereign state as was being done in this case”, the minister said.

Iceland’s foreign ministry added that consumers were likely to associate the mark with “the country of Iceland for all goods and services the registration is claimed for”.

Source: WIPR.

Video explaining how to protect trademarks in Bulgaria

The Bulgarian Patent Office started a new initiative for brief video tutorials regarding registration of different intellectual property objects.

The video below gives information on how you can register trademarks in Bulgaria. Although this video is on Bulgarian it has subtitles in English.

Partial success for Cadbury over color trademarks dispute in the UK

night-photograph-starry-sky-night-sky-star-957040.jpegThe UKIPO has ruled in oppositions against the following trademark applications all for class 30, filed by Cadbury:

GB50000000003019362.jpg– № 3019361, with the following description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods.

GB50000000003019362.jpg– № 3019362, with the following description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.

GB50000000003019362.jpg– № 3025822, with the following description: The colour purple (Pantone 2685C), shown on the form of application.

Against these applications Nestle filed oppositions with the following arguments:

  • The reference in the description to a Pantone number is a necessary but not
    sufficient condition for the Application to comply with Section 1(1);
  • The reference in the description to something “being shown on the form of
    application” does not comply with the requirement of being self-contained,
    intelligible and/or accessible. The application form does not form part of the
    public register and those consulting the public register are unable to ascertain
    from that the nature of the material referred to in the description.
  • The reference in the description to something being “applied to the packaging
    of the goods” imports a reference to a means of configuration or
    representation which is not shown on the register and which may comprise a
    potentially limitless number of signs/means of representation.
  • The reference in the description to “the whole visible surface” is inherently
    ambiguous because the public and competitors will assume – and the
    applicant intends – that less than the whole visible surface is in fact meant by
    the words “whole visible surface” since products of this kind must of necessity
    bear words, logos and other elements of different colours on the surface of
    the packaging.

The UKIPO agreed that in the case of trademarks 3019361 and 3025822 their descriptions create ambiguity regarding what exactly these signs represent.

Regarding trademark 3019362, however, the UKIPO considered that the above-mentioned conclusion is not relevant because the trademark’s description gives an idea of what exactly trademark dimensions are.

Source: WIPR.