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.


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.

Source: Masaki Mikami – Marks IP Law Firm.

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.

Mary Poppins can be a trademark not related to Disney?

One interesting dispute from Japan that focuses on the relation between films titles, famous characters and registered trademarks.

The Japanese company Mary Poppins Inc., which provides babysitting services, registered successfully in 2014 a word mark for MARY POPPINS in class 45.

Everything had been cloudless until 2019 when Disney intervened filing an application for invalidation. The grounds were that the mark in question takes unfair advantages from the well-known and famous movie “Mary Poppins” and its main character. In that way the mark could be associated with Disney as a company. What’s more this could be against public order or morality, and  could cause confusion with Disney’s well-known goods or services and its famous earlier trademarks.

The Patent Office, however, disagreed with these claims. Although the Office acknowledged the presence of reputation and popularity of the film and character “Mary Poppins”, it concluded that there is no violation of the trademark law.

The fact that Disney has used “Mary Poppins” for merchandising products in its stores does not show clearly that this use was as a source of trade origin. That is to say “Mary Poppins” wasn’t use as a brand for particular products or services but only in connection with the name and character from the movie. From that point of view, the Office concluded that there was unlikely consumers in the country to associate the registered mark with Disney as a company.

Source: Masaki MIKAMI, Mark IP Law.

Puma partially won an EU dispute thanks to its strong trademark reputation

The European Court has ruled in the Case T‑71/20 Puma SE v CAMäleon Produktionsautomatisierung GmbH.

It refers to a dispute related to a European trademark application for PUMA SOLUTION filed by CAMäleon for the following goods and services:

–  Class 7: ‘Machine tools for machining and cutting profiles; cross-cut saws and circular saws for wood and light alloys; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); packaging machines; automatic warehouses; robots; machines for treatment of PVC; power screwdriver; painting machines; machines for the production of door and window frames; machines for assembling shuttering components; machines for processing aluminium, plastic and steel profiles, in particular for the window, door and facade industry; table and mitre saws; double mitre saws; automatic saws; wedge-cutting and V-cutting saws; milling machines; copy milling cutters; end milling cutters and automatic notching machines; water slot milling cutters; corner crimping machines; rod machining centres; welding machines; roughcasting machines; welding and cleaning lines; bending machines, including bending furnaces and bending installations; screw systems for reinforcing profiles; drilling machines, drilling rigs; punching; stops for machines for processing aluminium, plastic and steel profiles; assembly stands and assembly tables; rotary tables; saw fences for use on table saws; metalworking machine tools’;

–  Class 9: ‘Computer hardware; computer software; computer hardware and software for the management of door and window frame production cycles and installations; magnetic and optical data carriers; computer programmes [programs], recorded; computers; computer peripheral devices; computer hardware and software for automation purposes; computer hardware and software for the management of machine tools; warehouse management systems; management systems for door and window frame production installations; communications systems for data relating to the production, assembly, storage, delivery of door and window frames; automatic handling systems for door and window frame production installations; cell phones; portable computers; printers for computers; programs for personal computers, mobile telephones and handheld computers; heatdetectors; level indicators; headphones; headsets; cables for personal computers, mobile telephones and palmtop computers; bar code readers; measuring instruments; programs for computers; computer-aided design (CAD) software; software for estimating, selling, designing and producing shuttering and curtain walls; software for programming and managing machine tools; software for checking (supervision) of industrial production and automation; computer programs for estimating, selling, designing and producing shuttering and curtain walls; computer programs for programming and managing machine tools; computer programs for checking (supervision) of industrial production and automation; software for the management of door and window frame production cycles and installations; computer programs for managing shuttering production cycles and installations; computers; peripherals adapted for use with computers; magnetic and optical data carriers; data-processing equipment and computers’;

–  Class 16: ‘Catalogues relating to computer software; computer software operating manuals; instruction manuals; instruction manuals for personal computers, mobile telephones and palmtop computers; instruction manuals for the certification of door and window frames; printed forms; printed matter for promoting and selling software for designing, producing and/or selling doors, windows and partitions; printed matter for promoting and selling software for managing machine tools and checking (supervision) of industrial production and automation; books; user manuals (handbooks) for computer programs for designing, producing and/or selling doors, windows and partitions; user manuals (handbooks) for computer programs for managing machine tools and checking (supervision) of industrial production and automation’;

–   Class 42: ‘Updating and maintenance of computer software and programs; configuring computer hardware using software; configuration of computer networks by software; configuration of computer software; computer hardware and software consultancy; creation, maintenance and adaptation of software; installation, maintenance, updating and upgrading of computer software; computer systems integration services; rental of computer hardware and computer software; design, development and implementation of software; computer software research; computer software technical support services; technical project studies in the field of computer hardware and software; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (CAD/CAM); development of computer software for computer aided design/computer aided manufacturing [CAD/CAM]; upgrading of computer software; development and testing of computing methods, algorithms and software; computer programming; testing, analysis and evaluation of the goods and services of others for certification purposes; computer programming in relation to applications for designing, producing and/or selling doors, windows and partitions; computer programming in relation to applications for managing machine tools and checking (supervision) of industrial production and automation; creating programmes for data processing.’

Against this application an opposition was filed by the well-known sportswear producer Puma based on really registered trademarks for PUMA in classes 18, 25, 28.

On top of that, Puma claimed a trademark with reputation on the territory of the EU.

The EUIPO found both marks similar and the fact the earlier mark has a reputation. However the Office concluded that there was no possibility for a consumer confusion because the goods in both signs were completely dissimilar with a few exceptions in class 9. So the Office dismissed the opposition for almost all goods and services.

With regard to the reputation, according the EU law, a trademark with a reputation is able to stop later marks even for dissimilar goods or services in case these three cumulative conditions are met:

  • both marks must be identical or similar,
  • the earlier mark must have a reputation, and
  • that there must be a likelihood that the use of the later mark will take unfair advantage of the distinctive character or the earlier mark’s reputation.

According to the EUIPO, the third requirement was not fulfilled because the target audiences of both signs were so different.

This decision was appealed by Puma.

According to the General Court of the European Union, a presence of reputation is not enough to affirm the existence of a link between two trademarks.

On the other hand, the Court found an error in the EUIPO decision. The Office done an  incomplete examination of the goods and services covered by the mark applied for focusing only on fact that the goods are used by industry professionals. According to the Court, some of the goods and services can be used by the general public too. From that point of view, the target audiences of both sign can overlap to some extent. For the rest of the goods and services, however, there was no evidence that the later mark would take unfair advantages from the reputation of the earlier one.

Taking into account all of this, the Court upheld partially the Puma’s appeal and confirmed the opposition for the following goods and services:

  • Class 7: ‘power screwdriver’;
  • Class 9: ‘computer hardware’, ‘computers’, ‘data-processing equipment and computers’, ‘computer peripheral devices’, ‘peripherals adapted for use with computers’, ‘magnetic and optical data carriers’, ‘printers for computers’, ‘heatdetectors’ and ‘measuring instruments’;
  • Class 16: ‘catalogues relating to computer software’, ‘computer software operating manuals’, ‘instruction manuals’, ‘instruction manuals for personal computers, mobile telephones and palmtop computers’ and ‘books’;
  • Class 42: ‘updating and maintenance of computer software and programs’, ‘configuring computer hardware using software’, ‘configuration of computer networks by software’, ‘configuration of computer software’, ‘computer hardware and software consultancy’ and ‘computer software technical support services’;