Pans, red dots and Tefal struggles in the UK

Throughout the Christmas and holiday season it is typical for most people to cook and eat more than usual. With that regard, probably it will be of interest to you the news for the red dot problems of Tefal’s pans in the UK.

In 2018 Tefal applied for the following figurative trademark in the UK for class 21 – frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, and woks:

The UKIPO issued a refusal against this application based on absolute grounds section 3(1)(b) TMA – lack of distinctive character. According to the Office it was not clear whether consumers would perceive this red dot as a trademark sign of itself or just as a decorative or functional element.

Tefal submitted evidence for acquired distinctiveness through use in the UK. The UKIPO dismissed the evidence as insufficient.

Although there were significant sales and advertisement related to this type of pans, the evidence didn’t show in any way that the red dot was functioning as a stand alone sign of trade origin. On the contrary, some of the advertisement related this dot to its heating indication function.

More interestingly in the provided consumers survey, some of the respondents identified the red dot as a ‘heat spot’ or ‘when the pan is hot’.

Based on this the Office confirmed its position that the applied for sign is not distinctive and it is functional, that is to say it cannot serve as a source of trade origin.

This case is valuable as a case law because it shows quite clearly how difficult is to register some figurative trademarks sometimes. In such scenarios one possible solution can be an early implemented strategy by the trademark owner to indicate in every advertisement and other communication that the relevant sign is a mark. In that way, hopefully, consumers will start to perceive it as such in the long run.

Source: IPKat.

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Puma lost a dispute against Nike for the FOOTWARE trademark in the UK

Puma lost an opposition against trademark FOOTWARE for classes 9, 38, 42, filed by Nike in the United Kingdom.

According to Puma this sign is obvious misspelling of the word FOOTWEAR which has particular meaning related to shoes.

From that perspective the mark applied for is not distinctive and it is descriptive even for the specified goods and services because it can be perceived, for example, as a software used in relation to footwear.

Nike response was that the sign was distinctive enough. The WARE part has been already registered as a separate trademark for the same classes. On top of that Puma themselves owns a trademark SPORTSWEAR.

The UK Patent Office dismissed the opposition stating that there were no sufficient evidence that the word FOOTWARE can be understood in a descriptive way for the specified goods and services.

What’s more, the way how it is spelled requires additional considerations from the consumers in order they to get the meaning of the word Footwear.

This case is an example about the so-called suggestive trademarks which meaning is not direct but requires additional intellectual efforts from the consumers to be determined. In some cases these marks can receive protection.

Source: Charlotte Wilding – Kemp Little LLP за Lexology.

Land Rover lost a lawsuit regarding 3D trademarks in the UK

Jaguar Land Rover lost a lawsuit in the UK regarding its attempt to register the following 3D trademarks in class 12 for its off-read vehicle models Land Rover Series 1, Series 2, Defender 90 and Defender 110:

Although the UKIPO allowed these application initially, there was an opposition by Ineos Industries after that on the following grounds:

  • the shapes were not capable of being registered;
  • lack of inherent distinctiveness/descriptive in nature;
  • the shapes had become customary in the established practice of trade of the goods;
  • the shapes resulted from the nature of the goods themselves and/or are necessary to achieve a technical result and/or give substantial value to the goods themselves;
  • registration would be contrary to public policy; and
  • that the applications were filed in bad faith.

The UKIPO decided that these 3D forms cannot constitute trademarks. The arguments for this position were:

  1. The vehicle models as depicted lack of distinctive character. Although some of their element can be perceived as unique compared with other similar models, as a whole the design of the cars are classic one for off-read vehicles. The ordinary consumer will not identified them as separate trademarks.
  2. The submitted evidence for acquired distinctiveness is not sufficient to prove that consumers perceive these 3D forms as a source of trade origin apart from the word marks Land Rover and Defender.
  3. According to the Office it is possible these applications to being filed in bad fight. It is obvious that their purpose is to monopolies these particular classic car designs, they will not be used for other products.

The Court upheld the UKIPO’s position. The 3D trademark applications at hand lack of distinctive character and cannot constitute s source of trade origin.

Source: Automotive News Europe.

Source: IPKat.

Is NOSECCO different from PROSECCO for wines?

One interesting news from the UK shows clearly how powerful can be the protection of geographical indications.

In the case at hand, Les Grands Chais De France applied for an international trademark NOSECCO for class 32 – non-alcoholic wines; non-alcoholic sparkling wines, where the UK is a designated country.

Against this application, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco filed an opposition based on registered geographical indication for PROSECCO.

As it is well-known, Prosecco is a famous wine that can be produced only in some areas in Italy.

The UKIPO upheld the opposition and refused the NOSECCO trademark application stating that both signs are similar for identical goods.

While Les Grands tried to claim that these marks are different based on the different beginnings, the Patent Office disagreed. In this case, there is a visual and phonetic similarity which can create consumers ‘ confusion.

This case comes to show that geographical indications protection can be invoked not only against identical signs but against similar too, especially where there is a strong reputation of the earlier indication among the consumers.

Source: Claire Keating – Marks & Clerk.

“Final Fantasy” producer prevailed over two parasite trademarks in the UK

video-controller-336657_1920The Final Fantasy’s producer, the Japanese video game company Square Enix, won two invalidation disputes against trademarks Parasite Eve и Parasite.

Both marks have been registered in the UK by Michael Gleissner, a person notoriously known for cases of bad faith registered trademarks in the EU.

According to the Square Enix, its unregistered trademark Parasite Eve has been in use for video games in the UK since 1998. Because of that, it has built a strong reputation amongst the consumers in the country. In light of this, the above mentioned two trademarks are confusingly similar and can damage the reputation of the earlier mark.

The UKIPO agreed with the Japanese company considering the later two trademarks as confusingly similar and registered in bad faith with the purpose to take advantage of the earlier trademark established reputation.

Source: WIPR.

Audemars Piguet lost a dispute regarding a watch trademark in the UK

audemars-piguet-4859559_1920The Swiss watchmaker Audemars Piguet lost an opposition in the UK against an application for trademark Oakky in class 14.

The Swiss company filed its opposition based on an earlier registered trademark Royal Oak in class 14.

The UKIPO dismissed the opposition considering both signs similar only to a low extent which wasn’t enough to cause consumer confusion. According to the Office, there was only some conceptual similarity on the ground of the meaning of Oak and Oakky. However, this wasn’t enough in the case at hand.

With regard to the claimed reputation of the earlier mark, the Office considered it as not proved. Although it was clear that watches with the brand Royal Oak had been sold in the UK, there is no evidence about their volume and turnover. Apart from that, it wasn’t clear to what extent the mark was popular among the consumers.

This case shows clearly that in such situations only one piece of evidence is not enough to prove a reputation or a well-know status. In most of cases numerous examples about the trademark use and popularity have to be submitted.

Source: WIPR.

Tiffany won a dispute against a British citizen with the same name

zurich-1207287_1920The UK based owner of a small business Tiffany Parmar applied for a UK trademark “Cotswold Lashes by Tiffany” in 2018. The scope of the application covers the following classes: 3 (cosmetics), 41 (education and beauty school services) and 44 (hygienic and beauty care services).

Against this application, the US company Tiffany&Co filed an opposition based on a family of early registered trademarks Tiffany for classes 3, 14 and 41. In addition, a trademark with reputation was claimed due to the fact that Tiffany&Co has been operating in the UK since 1868 making sales for millions of dollars every year.

The UKIPO upheld the opposition with the argument that there is a serious risk for consumer confusion between the signs. The claimed reputation was not taken into consideration, however, because according to the Office, it was stated for goods that are dissimilar with those in the later mark.

The case at hand shows clearly that it is not always possible for individuals to register their personal names as a trademark if they collide with an already established and well-known trademark.