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.

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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’;

Salesforce lost a trademark dispute in the UK

One of the biggest software companies in the world Salesforce lost a trademark dispute in the UK.

The case concerns a trademark application filed by Syft Online for “SyftForce” for classes 9 (computer software), 35 (personnel placement and recruitment services, 38 ( telecommunications services), 41 (education services) and 42 (software as a service).

Against this application an opposition was filed by Salesforce based on earlier trademarks for SALESFORCE and SOCIALFORCE for similar goods and services.

The UKIPO focused its attention only on the SALESFORCE earlier mark. According to the Office both signs have some visual and phonetic similarities. However this is not enough for a general conclusion that the mark applied for can create a consumer confusion.

The reason for this was the fact that the shared part in both signs – FORCE has low distinctive character in regard to the goods and services covered by the new trademark application.

According to the Cambridge Dictionary, force means group of people organized and trainedespecially for a particular purpose.

Based on this the Office dismissed the opposition in its entirety.

The case is a good example for words with low distinctiveness that are used as trademarks. In some cases such words cannot be protected at all. In other cases, when they are part of complex trademarks with more words or graphics, they can weak their protection abilities.

Source: WIPR.

Ariana Grande lost a trademark dispute in Japan

The company GrandAri Inc that manages Ariana Grande’s trademarks lost a dispute in Japan.

The case concerns a trademark application for ARIANNA filed by Arianna Co. Ltd for Class 3 – cosmetics, soaps, and detergents and Class 10 – medical apparatus.

GrandAri Inc filed an opposition against this application based on an earlier international trademark for ARIANA GRANDE for Class 3 – Perfume; eau de perfume; fragranced body care preparations, namely, body lotions, body scrubs.

According to the company, both marks were highly similar due to the element Ariana in the earlier mark which was dominant one. Because Ariana Grande was a celebrity its fans often call her just Ariana. Sometimes the merchandising products with its trademark were referred only as Ariana.

GrandAri Inc stated that the pop star was very famous in Japan because of which it was possible the consumers to be confused when it comes to the later mark ARIANNA. One letter difference was not enough to overcome this negative possibility.

The Japan Patent Office dismissed the opposition in its entirety. According to the Office, although Ariana Grande is very famous celebrity in the country, there were not sufficient evidence that her first name ARIANA served as a source of trade origin alone apart for the whole trademark Ariana Grande. The Office stressed the need trademarks to be evaluated in their entirety not only part of them.

From that perspective, the Office considered both signs dissimilar and not confusing for the consumers in Japan.

Source: Masaki MIKAMI – Marks IP Law Firm.

Crocs’ footwear with trademark problems in Sweden

In 2018 Crocs Inc. filed the following three-dimensional trademark in Sweden for class 25 – footwear:

Initially the Patent Office refused to register this mark on absolute grounds. Crocs submitted evidence for acquired distinctiveness which resulted in a successful registration.

The Swedish discount store ÖoB was selling similar products between 2014 and 2019.

Because of this Crocs Inc. initiated a lawsuit proceeding for trademark infringement. As a counter attack ÖoB asked for invalidation claiming that the Crocs’ trademark was not distinctive, it consists exclusively of a shape, which resulted from the nature of the goods themselves and a shape necessary to obtain a technical result.

The Swedish Patent and Market Court dismissed the claim for trademark infringement and invalidated the Crocs’ mark. The arguments for this decision was that the mark represents a footwear with the following characteristics 1) holes on the top 2) holes on each side 3) the heel strap 4) flat rivets, and 5) wide toe-area. Every of these characteristic could be attributed to the basic functions and properties of this type of footwear. It therefore concluded that the shape of the mark was the result from the nature of the goods themselves and the shape of goods was also necessary to obtain a technical result because the holes provides a better ventilation and enabled water to drain out.

The decision was appealed.

The Swedish Patent and Market Court of Appeal disagreed with the Court of first instance. According to the court the shape of such a footwear can be designed in different ways not only in that particular. The size, holes and overall design can be accomplished in many different ways. Because of this it cannot be assumed that the shape is a result from the nature of the goods.

The court considered that ventilation and draining a water out, in the particular case, can not be views as a technical function.

Nevertheless, the Court invalidated the Croc’s mark based on a lack of distinctive character. According to the Court, the evidence for acquired secondary meaning provided by Crocs mainly show significant sales figures but there is no information on how exactly consumers perceived the shape of the product and whether this perception is related to a sign of trade origin.

The Court considered the market survey from 2008 provided by the company as insufficient. The respondents in this survey associated the footwear with “Foppatoffeln” a name that is related to the hockey player Peter Forsberg who suffered from a heel injury, prompting him to wear the Crocs footwear on TV and in other public contexts. Only 7% of them related the product shape with Crocs as manufacturer while 46% suggested that the footwear could originate by any manufacturer. The survey didn’t include an option for an answer “do not know”, which ruined its credibility up to a point.

The advertisement campaigns with this footwear included the Crocs name and the depiction of crocodile too. The Court considered this as another evidence that consumers perceived the shape as a product characteristic not as a trademark.

Source: IPKat.