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.

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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.

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.

‘Trump TV’ was refused as a trademark in The UK

pexels-photo-134469.jpegThe English High Court has dismissed an appeal from Trump International company (owned by German national Michael Gleissner) against the UKIPO decision to refuse registration as a trademark for ‘Trump TV’ in classes 38 and 41.

The US company DDTM Operations, which manages Donald Trump’s IP portfolio, filed an opposition against this mark based on alleged bad faith application. According to DDTM Operations, this trademark tries to take advantages from the reputation of the US President.

The UKIPO agreed with this claim and refused the application taking into account the Gleissner’s previous attempt to register similar signs.

The Court upheld this decision concluding that the applicant failed to give any reasonable arguments to support an eventual bona fide nature of its application.

Source: WIPR.

Furnishing fabric can be a trademark – a decision by the EU Court

sofa-2155865_960_720.jpgThe European Court has issued a decision in case C‑21/18 Textilis Ltd, Ozgur Keskin v Svenskt Tenn AB, which concerns the following:

Svenskt Tenn markets and sells furniture and furnishing fabrics and other decorative accessories.

During the 1930s, Svenskt Tenn started to work with the architect, Joseph Frank, who designed various patterns for furnishing fabrics for it, including a pattern called MANHATTAN, which it markets and sells and in respect of which Svenskt Tenn claims to be the holder of rights under copyright law.

On 4 January 2012, Svenskt Tenn filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO). That figurative mark, designated MANHATTAN, was registered under number 010540268.

The goods and services for which that mark has been registered are in Classes 11, 16, 20, 21, 24, 27 and 35 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to inter alia, lampshades (Class 11), table cloths, table napkins of paper; coasters of paper; wrapping paper; writing or drawing books (Class 16), furniture (Class 20), household or kitchen utensils and containers; brushes; glassware, porcelain and earthenware not included in other classes (Class 21), textiles and textile goods, not included in other classes; bed and table covers (Class 24), carpets; wall hangings (non-textile); wallpaper (Class 27), retail services connected with the sale of furniture, cushions, mirrors, wallpaper, carpets, lamps, textile fabrics, textile products, fancy goods, household and kitchen utensils and containers, tableware, glassware, porcelain, earthenware, candlesticks, paper napkins, bags, jewellery, books and magazines (Class 35).

The figurative mark MANHATTAN is represented as follows:

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Textilis is a company incorporated under English law, owned by Mr Keskin, whose online trading activity began in 2013. The company has marketed fabrics and goods for interior decoration bearing patterns similar to those of the figurative mark MANHATTAN.

Svenskt Tenn brought an action for infringement of the trade mark MANHATTAN of which it is the proprietor and an action for infringement of its copyright against Textilis and Mr Keskin before the Stockholms tingsrätt (District Court, Stockholm, Sweden). It also applied for an order that Textilis and Mr Keskin, on pain of a penalty, be prohibited, first, from marketing or distributing in any other way to the Swedish public certain designated objects and, second, from using that mark in Sweden for fabrics, cushions and furniture.

In response to those actions, Textilis and Mr Keskin brought before that court a counter-claim for a declaration that the trade mark MANHATTAN is invalid, in that, first, it lacks distinctive character and, second, having regard to the way in which it is used, it is made up of a shape which gives substantial value to the goods, within the meaning of Article 7(1)(e)(iii) of Regulation No 207/2009.

The Stockholms tingsrätt (District Court, Stockholm) dismissed the counterclaim, inter alia on the grounds that, first, under Article 4 of Regulation No 207/2009, all signs capable of being represented graphically, in particular drawings may be EU trade marks, provided that they have a distinctive character and, second, the mark MANHATTAN is not a shape within the meaning of Article 7(1)(e)(iii) of that regulation.

The Stockholms tingsrätt (District Court, Stockholm) ruled that Textilis and Mr Keskin had infringed the trade mark MANHATTAN and, moreover, had infringed the copyright of which Svenskt Tenn was also the proprietor.

Textilis and Mr Keskin appealed against that judgment before the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm), seeking, inter alia, a declaration, on the basis of Article 7(1)(e)(iii) of Regulation No 207/2009, that the trade mark MANHATTAN is invalid.

In support of their appeal, they argue that a sign consisting of the pattern on a fabric cannot be registered as a trade mark without subverting the principle of the limitation in time of copyright protection. They are of the view that this is why Article 7(1)(e)(iii) of Regulation No 207/2009 precludes the registration as a trade mark of signs which consist exclusively of a shape which gives substantial value to the goods.

Conversely, Svenskt Tenn contends that signs consisting of the shape of patterns may be registered as EU trade marks, such as the figurative mark MANHATTAN.

The Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm) seeks to ascertain whether a figurative mark such as MANHATTAN, which consists of the two-dimensional representation of two-dimensional goods, such as fabric, can be regarded as a shape within the meaning of that provision. It underlines in this respect that it is clear from Article 7(1)(e)(iii) of Regulation No 207/2009 that the ground for invalidity provided for in that provision applies to three-dimensional and two-dimensional marks representing three-dimensional shapes, such as, for example, the representation of a sculpture or a vase, as held by the EFTA Court, in paragraphs 110 to 115 of its judgment of 6 April 2017, Norwegian Board of Appeal for Industrial Property Rights — appeal from the municipality of Oslo (E-05/16), or, as the Court of Justice held in the judgment of 18 June 2002, Philips (C‑299/99, EU:C:2002:377).

It is unsure, however, whether such a ground of invalidity may apply to two-dimensional marks that represent two-dimensional goods, such as, for example, a pattern on a fabric or the reproduction of a painting. In that regard, it observes that it would be paradoxical not to accept such a ground for refusal of registration for such cases, in so far as there is no justification for a difference in treatment between sculpture, which is three-dimensional, and painting, which is two-dimensional.

It states that, unlike the mark at issue in the case which gave rise to the judgment of 12 June 2018, Louboutin and Christian Louboutin (C‑163/16, EU:C:2018:423), which consisted of a colour applied to the sole of a shoe, the figurative mark MANHATTAN at issue in the case pending before it is a work protected by copyright.

It queries whether the amendment of Article 7(1)(e)(iii) of Regulation No 207/2009 by Regulation No 2015/2424, under which registration is refused not only for signs which consist exclusively of ‘the shape’, but also ‘another characteristic of the goods’, which gives substantial value to it, is capable of altering the assessment to be made by virtue of that ground for invalidity. In that regard, it wishes to know whether, in the case before it, Regulation No 207/2009 or Regulation No 207/2009, as amended, taking account of the fact that the date of registration of the mark MANHATTAN, like that of the application for a declaration of invalidity and that of the judgment at first instance under appeal, is prior to 23 March 2016, the date of entry into force of Regulation 2015/2424.

 It states that, in any event and whatever the applicable version of Article 7(1)(e)(iii), if it is accepted that that provision applies to two-dimensional marks representing two-dimensional goods, the question arises as to the criteria for determining whether a sign such as that at issue in the main proceedings, may be regarded as consisting ‘exclusively of the shape which gives substantial value to the goods’ where the registration of that sign as a trade mark relates to a number of classes of goods and that the mark is designed in such a manner that it can cover the whole or substantial parts of the goods or be used as a logo.

In that regard, it points out the difficulty in assessing such a ground of invalidity, since the applicant for the trade mark is required only to indicate the goods for which it intends to use the mark and not to specify the practical conditions of use of the sign for which it seeks protection.

Thus, as the case may be, a mark may be affixed to the goods as a whole, like, for example, a furnishing fabric, paper or a tray, so that it becomes a key feature of the goods themselves and, in many of those cases, there is identity between the trade mark and the goods, or it may occupy a minor position on the goods, in particular where the mark is used as a logo.

In the light of those facts, the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm) decided to stay the proceedings and refer the following questions to the Court for a preliminary ruling:

‘1.  Is Article 4 of [Regulation 2015/2424] to be interpreted as meaning that Article 7(1)(e)(iii), in its new wording, is applicable to a court’s assessment of invalidity (under Article 52(1)(a) of the Trade Marks Regulation) that is made after the entry into force of the amendment, namely after 23 March 2016, even if the action concerns a declaration of invalidity where the action was brought before that date and therefore concerns a trademark registered before that date?

2. Is Article 7(1)(e)(iii) of [Regulation No 207/2009], in the version applicable, to be interpreted as meaning that its scope covers a sign which consists of the two-dimensional representation of a two-dimensional product, for example fabric decorated with the sign in question?

3.  If the answer to question 2 is in the affirmative, according to what principles is the wording ‘signs which consist exclusively of the shape (or another characteristic) which gives substantial value to the goods’ in Article 7(1)(e)(iii) of [Regulation No 207/2009, as amended,] to be interpreted, in a situation where the registration covers a wide range of classes of goods and goods and the sign may be affixed in different ways to the goods? Is the assessment to be made in accordance with more objective/general criteria, for example with the starting point of how the mark appears and how it is possible to affix it to different goods, that is to say without regard to the manner in which the trade mark proprietor may de facto have affixed or may intend to affix the sign to various goods?

The Court’s decision:

1. Article 7(1)(e)(iii) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trademark, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015, must be interpreted as meaning that it is not applicable to marks registered before the entry into force of Regulation No 207/2009, as amended by Regulation 2015/2424.

2. Article 7(1)(e)(iii) of Regulation No 207/2009 must be interpreted as meaning that a sign such as that at issue in the main proceedings, consisting of two-dimensional decorative motifs, which are affixed to goods, such as fabric or paper, does not ‘consist exclusively of the shape’, within the meaning of that provision.

Monster Energy lost a trademark dispute against a pair of legs

c7360330-09fd-4bf7-89fc-1b3aeb156732_2.409754b353d8e5dd7bf86be2e7f601ad.jpg

The well-known energy drink producer Monster Energy lost an interesting opposition against the following UK trademark application in class 32 (beers, ales, stouts; low-alcohol beers; non-alcoholic and de-alcoholized cider, perry and beers; syrups and preparations for making any of these aforesaid; excluding energy drinks):

GB50000000003231996.jpg

Against this mark, Monster invoked several earlier European trademarks in class 32 (Non-alcoholic beverages; beer):

GB50000000002439068

The UKIPO dismissed the opposition internally. The reason for this was the lack of possibility for consumer confusion. According to the Office, both signs are visually and conceptually different. While in the case of the earlier mark there is a pair of legs, the earlier signs represent a scratch created by an animal. Although both can be viewed as the letter M, the differences between them are enough in order to escape consumer confusion even though the goods are similar due to their nature.

The full text of the decision can be found here.

Source: WIPR.

EU trademarks in case of a hard Brexit – clarifications

brexit-4011711_960_720.jpgThe UK Patent Office published some clarifications what would happen with all European trademarks in case of a hard Brexit without a deal with the EU.

In that case, The UK will recognize all registered EU trademarks and will transform them into national trademarks. They will be indicated with UK009 in front of their EU numbers.

There will be no cost for the relevant owners and as little administrative burden as possible. However, the Patent Office will not issue trademark certifications for them. Information for these marks will be available in the UK trademark database.

When it comes to EU applications for trademarks, their owners will have up to 9 months to file identical applications in The UK. In that scenario, they will use the same priority date from their EU applications.

The full text can be found here.