As it is well-known Taco is one of the most popular Mexican street food around the world including in the US. Taco consists of a tortilla topped with a filling such as meat, vegetables, sauce, etc.
A US company filed a trademark application for the phrase TACO TUESDAY for class 32 – beer, claiming that the sign is inherently distinctive for this product in particular.
The USPTO disagreed pointing out different pieces of evidence that show many restaurants in the US using this phrase for indicating a daily event where tacos and drinks, including beer, are offered to consumers.
What’s more, the website of the trademark’s applicant promotes beer as the ultimate pairing for tacos too.
Based on this the Office concluded that the phrase is descriptive of beers as well, and cannot serve as a source for a particular trade origin. Because of this, the mark was reduced entirely.
How such trademarks can receive protection?
Well if the word part is combined with graphics and colors it can be registered although in such cases it will be debatable to what extent the protection can be enforced in all cases because the word part will be still descriptive
Another option is if the applicant proves acquired distinctive character, that is to say, that consumers identify only one company as the owner of the sign.
Source: The TTABlog.
The world’s most famous electric vehicle manufacturer TESLA has initiated a lawsuit in China against the local company Sino Drinks Food Company for infringement of trademark TESLA and the following figurative mark:
Sino Drinks Food Company offers beer and liqueur under a similar name TESILIA and a similar figurative sign.
Most likely the grounds for the dispute will be a trademark with reputation and unfair competition because Tesla does not have a registered mark for alcohol in China. As far as it is known this Chinese company has registered about 200 other trademarks that imitate famous signs.
Source: Alice Liang, The Drinks Business.
As a general rule of thumb, not every sign can be registered as a trademark. Trademark legislations around the world prohibit registration of descriptive and not distinctive signs. The reason for this is the fact that such signs cannot be perceived by consumers as a source of trade origin, that is to say that the product or services comes from a particular company.
One interesting case in that regard is from Hungary where a trademark application was filed for “BEER, BURGER, BARBECUE FESTIVAL” in Classes 32, 41 and 43.
The Hungarian Patent Office refused this application based on absolute grounds, descriptiveness and lack of distinctiveness. In the appeal the Court upheld this decision.
The Court stressed the well-known EU Court position that a combination of descriptive elements cannot make one sign distinctive as a whole.
The submitted evidence for acquires secondary distinctiveness was dismissed as irrelevant and not sufficient.
The case comes as a good example about the protection of such signs. By default this is not possible except in cases where distinctiveness is acquired through consistent and long term market use. This means that when you apply for such signs you need to be well prepared with evidence in advance in order to have chances for a successful registration.
Source: Danubia Patent and Law Office LLC – Sándor Vida
Grupo Modelo, part of one of the biggest brewery in the world Anheuser-Busch InBev, has initiated a lawsuit against the US company Constellation Brands concerning the use of trademark CORONA.
As it is well-known, AB InBev took control over Grupo Modelo in 2013 including over the Corona brand, one of the most famous brands for beer in the world. Because of antitrust restrictions, however, AB InBev sold the US part of the Grupo Modelo business to Constellation Brands including the right for use of trademark CORONA for beer.
In 2020, Constellation launched its new product Corona Hard Seltzer that shortly took 6% market share.
According to Grupo Modelo, the fact that Constellation uses Corona for seltzer was against the license’s terms.
On the other hand, the US company stated that there was no violation of the agreement and the only reason for the lawsuit was an attempt by AB InBev to restrict its business as a competitor.
We are expecting to see what the result of this dispute will be. Nevertheless the case is indicative how important the precise wording and the scope of a trademark license agreement are. It is always recommendable all points to be discussed in-depth and carefully in order future misunderstanding to be avoided.
Kellogg 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.
Heineken Italy lost a trademark case T‑378/17 before the General Court of the EU, which concerns a company’s attempt to register the following EU trademark for classes 32 and 33:Against this application, an opposition was filed by the Spanish company La Zaragozana, SA based on an earlier Spanish trademark CERVISIA AMBAR for class 32 – beer.
Initially, the EUIPO upheld the opposition due to the similarity between the word parts of the marks in the presence of similar and identical goods.
The Board of Appeal, however, annulled this decision stating that the signs are not similar because the visual elements in the later mark create a difference. What’s more the word part in the mark applied for was barely legible.
The General Court revoked this decision accepting that both trademarks are confusingly similar. The reasons for this is that the word part in the later mark can be read by the consumers and the fact that visual elements cannot outweigh the word once in such an assessment.
The Brussels Court of Appeal has ruled in a case between Aldi and InBev, which concerns an accusation that Aldi infringed InBev’s rights over Jupiler trademark in a way contrary to fair commercial practices.
The Court, however, has concluded that there is no infringement at the case in hand because of the following:
- Both products are sold in different sales channels. In case of Buval, the beer is sold only in Aldi’s stores, whereas, in case of Jupiler, the product is sold everywhere with exception of Aldi’s stores. The Court did not find any post-sales confusion, which occurs at the point of consumption rather than purchase;
- The consumers have become used to the red, black and white colors in relation to various brewers;
- The consumers have become used to the use of shields and animals with regard to beer packaging by various brewers.
Source: CMS Belgium, Lexology.