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New fees for international marks for Colombia
WIPO reports about new individual fees for the designation of Colombia in international trademark applications. The new fees will come into force on 01.01.2023 and are as follow:
Meta faces new infinite trademark problems in the US
As it is well-known Facebook’s parent company has been renamed Meta not so long ago, which triggers new trademark applications for META. This blog has already written about Facebook’s attempt to register such trademarks and the potential challenges due to many early registered similar trademarks around the world for similar goods and services.
In that regard, the Swiss non-profit Dfinity Foundation has initiated a lawsuit against Meta in the US, based on the following international trademark registered for the US, the EU, China, and Russia with priority since 2017:
The trademark is registered for:
09 Software; electronic publications for download.
35 Collection and systematization of information into computer databases; Data processing services; Business process management services and related services provided by consultants.
38 Providing access to computer networks, internet platforms, data banks and electronic publications; Digital audio and video data transmission services; Providing access to databases on the Internet, digital music, especially in MP3 format, including; Transmission of video via digital networks; Providing access to databases and information via global computer networks; Providing connections to a global communications network or to databases by telecommunications.
42 Design and development of computers and software; computer database design; design and development of electronic databases; creation and development of computer programs for data processing; Data migration services; hosting computer sites (websites); Hosting computerized data, files, applications and information; Hosting software applications for others; computer database hosting; Hosting multimedia and interactive applications; hosting platforms on the Internet.
Apart from this Dfinity has the following separate figurative trademark in the US:
According to the Foundation Meta infringes the rights over its earlier marks by using the mathematical symbol for infinity.
Most of Meta’s trademarks are filed in 2021 while no figurative trademarks for the infinity sign were discovered.
It’s a matter of time what will happen and whether this dispute will be solved as a result of a court decision or an out-of-court settlement. Nevertheless, the case shows clearly how difficult such rebranding could be and how important are preliminary trademark searches.
Source: TURNER WRIGHT, Cointelegraph.com
To be Apple or not to be – a trademark dispute in Japan
Masaki Mikami has published another interesting trademark dispute from Japan this time focusing our attention on the question – To be an apple or not to be.
In the case at hand, we have the following already registered figurative trademark in class 9 – protection covers and cases for smartphones, protection covers and cases for tablets, cases for laptops:
Apple Inc, filed an application for invalidation of the mark based on its following earlier figurative mark in class 9, for which an acquired reputation was claimed:
The Japan Patent Office acknowledged that Apple’s mark has a strong reputation amongst Japanese consumers.
Nevertheless, the Office dismissed the invalidation request finding both signs not confusingly similar.
From a visual point of view, the marks were not similar enough even if the later sign was rotated 90 degrees to the left. According to the Office, the sign does not create the same impression due to some details and overall appearance.
The phonetical comparison was not possible because both signs had no particular sound.
Conceptually, the earlier sign relates to Apple as a company and technology products and services whereas the latter mark has no specific meaning.
Based on this the Office concluded that there is no similarity and from that perspective any reason for invalidation.
Will there be a shortage of available trademark names in the future?
James Nurton has published an interesting article for IPWatchdog that focuses our attention on one potential problem – a future trademark names depletion in the US and the EU.
According to professor Barton Beebe of NYU School of Law, 75% of English words in daily use are already registered as trademarks in the US as well as 55% of common surnames.
When it comes to the European Union, the situation is even more concerning. The professor’s data shows that 77% of the 20,000 most common English words are registered as trademarks.
In some classes of goods and services, the situation is even worse. For example, in class 25 – clothes, shoes, etc. 80% of common words are registered.
This trend is similar for other languages as French, Italian, Spanish.
According to Beebe, this can be a serious challenge for the trademark registration process in this century. The problem is that in the presence of “trademark crowding” the cost for registration of new trademarks will arise because the registration process will be accompanied by more oppositions from owners of earlier rights. And at some moment new registration can be really difficult.
There are different solutions to this problem. For instance, Patent Offices can do an examination of whether the applied-for trademarks are identical or similar to already registered signs for the same Nice classes. The EUIPO doesn’t do that whereas there are such checks in other jurisdictions. The Offices can start requiring for narrow specification of goods and services limiting the trademark protection scope. Another option is the requirement for trademark use to be examined by the Patent Offices ex officio. For example, you need to prove trademark use every 5 years in the US otherwise the Patent Office will cancel the trademark registration.
Apart from this procedure and legislation options, new technologies can be of help. One immediate example is blockchain. What is typical for this technology is the fact that it offers uniqueness. A blockchain record is immutable. This corresponds with one of the trademark characteristics, it is a source of trade origin. Trademarks are valid to the extent the mark is used in the market in the way how it is registered.
So blockchain can be helpful in the future but what I mean is not this technology to be used for proving trademark use of fight against counterfeit goods. Probably in the future, the blockchain coding signs can be trademarks themselves identified by consumers through different technical tools, for example.
This topic is quite interesting. What is for sure is the fact that trademark registration becomes more and more complex. There are millions of registered marks all around the world and every new application can face oppositions or cancelations by owners of already registered signs.
That’s why the application process must be preceded by a good trademark clearance search and analyses that to show all possible risks.
Facebook filed a trademark for META but whether this will be a successful registration
Recently Facebook has announced that the mother company behind its services related to Facebook, Instagram WhatsUp, Oculus will be renamed META.
Apart from all corporate and marketing arguments, it is interesting what the case of trademark protection is. Although company names are registered in relation to the Commercial Law, most of the companies prefer to have an identical mark for the same name.
This is the case with Facebook too. They filed an application for a US trademark META in classes 9, 28, 35, 38, 41, 42, 45.
The main question is to what extent they will successfully register this name.
One brief trademark search for META for the same classes shows that there are 2 988 filed or already registered trademarks for META around the world. That’s a lot.
What’s more, the US company NFT Technology Inc filed an application for META № 97097845 in class 9 – software on the same day when Facebook did that.
It is interesting whether Facebook did a preliminary trademark clearance search and analysis. Taking into account the similarity and identity between the goods and services and the signs that are already registered or filed, there are possibilities for many oppositions if Facebook tries to register such a trademark globally.
In one word, although the proclaimed Metaverse can be a new big space for business and communication, the IP universe can become quite small for Facebook from a trademark protection point of view.
But is it possible for Facebook to be forced to stop using META in case of a conflict?
This depends on many circumstances. If Facebook uses this name only as a corporate name probably there will be no problems. But if the company starts offering products or services under such a mark, it could be an issue taking into account all available earlier trademarks for META.
Time will tell whether trademark conflicts will arise or not. What is for sure is the fact that choosing a trademark for global use is really challenging these days and most likely will become even more challenging in the future.
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