Mario Balotelli won a trademark dispute for “MB45” in Italy

The well-known Italian footballer Mario Balotelli won a trademark dispute in Italy.

In 2013, the Italian individual Mr. Gabriele Casagrande registered a trademark “MB45” for class 25 – clothing, shoes, headgear. This mark was duplicated as a European mark and after that both were transferred to a Lithuanian company.

In 2015, finding about this mark, Mario Balotelli initiated a lawsuit asking for invalidation of the sign and the domain name “www.mb45.it”. The grounds for this were the fact that “MB45” is the Balotelli’s pseudonym. MB means Mario Balotelli and 45 is the number of the jersey that he uses. What’s more this sign was used on shoes produced and sold in collaboration with Puma in 2013.

Gabriele Casagrande disagreed with these accusations, stating that his mark “MB45” was inspired by the name of a tugboat of the Russian Navy Morsokoy Buksir with the same name.

The Court in Rome wasn’t impressed by this argument and invalidated the mark. According to the Court, the consumers in Italy, especially the football fans, are quite familiar with “MB45” as an indication related to Mario Balotelli. Additionally, the goods related to Gabriele Casagrande’s mark are typical and common products that famous people and sportsmen used their names or indications for.

The application for the later mark was made only a few days after Mario Balotelli, bearing “MB45”, was included in media materials. Because of this, the application for the mark was deemed as made in bad faith. The same conclusion was reach for the domain “www.mb45.it”.

Source: Martini Manna Law Firm – Margherita Stucchi for Lexology.

Puma won a trademark dispute in China

Puma won a trademark dispute in China. The case at hand concerns the following registered trademark by Ningbo Spark Motor Co., Ltd. in 2005 for class 7 – mechanical engines, gasoline and diesel generator sets, water pumps, washing machines, construction machinery, agricultural machinery, etc.:

The Chinese characters “彪马” (BIAO MA) within the mark mean Puma in translation.

Puma initiated an invalidation proceeding against this mark based on early registered trademarks Puma for class 25 clothes, shoes etc.

The Patent Office dismissed the invalidation finding both marks dissimilar for completely different goods and target consumers.

In the appeal, the Court upheld this conclusion stating that there is no possibility for a consumer confusion even though the submitted evidence that Puma is a well-known trademark.

A new appeal followed and this time the Beijing Hight Court overturned the court of first instance decision. According to the Court in the case at hand the registered later mark was against article 13.3 of the China Trademark Law or the so-called “well-known mark dilution”. This means that the later mark takes advantages from the reputation of the earlier mark even for dissimilar goods weaken its distinctive quality.

This decision is interesting and contrast significantly with the General Court of the EU recent decision where Puma lost the case against figurative mark for class 7.

Source: CCPIT Patent & Trademark Law Office – Ling Zhao and Lan Zhou за Lexology.

Sony won a trademark dispute against SONICODE in Japan

Sony Corporation hadn’t given up and won a trademark dispute in Japan. The case concerns a trademark SONICODE filed by Field System Inc. for classes 9, 38 and 41.

Against this mark an opposition was filed by Sony based on early registered trademarks SONY for the similar goods and services.

The Japan Patent Office dismissed the opposition finding both marks as dissimilar. Three years later Sony filed a request for invalidation. This is possible according to the law in Japan.

The ground was that because of the serious reputation trademarks SONY have consumers would discover easily the SONI part in the later mark as similar to SONY. What’s more this was particularly possible in the light of the fact that the second part CODE is not so distinctive.

To support their arguments SONY gave an example with voice assistants offered by Google, Apple, Microsoft and Amazon. When someone ask for SONICODE the first information those assistants provide is for SONY.

This time, the Patent Office upheld the Sony’s position and invalidate the SONICODE mark. According to the office, consumers can spot easily the SONI part in the later mark and connect it with the earlier SONY trademarks from visual and phonetic point of view. One of the reason for this, apart from the high reputation that SONY has, is the fact that consumers can perceive the later mark as consisting of two words SONI and CODE.

Source: Masaki MIKAMI (Marks IP Law Firm)

Instagram won a domain name dispute against instagam.nl.

The well-known social-media Instagram part of Facebook won a domain name dispute. The case filed before the WIPO Arbitration and Mediation Center regards a third party registered domain name for instagam.nl.

Instagram pointed out that this domain is confusingly similar to its registered trademarks INSTAGRAM insofar the difference is only one letter R.

According to the US company, the Respondent had no rights to or legitimate interests in the domain name. This domain was used to point to a webpage entitled “Instagam” under which it was stated: “Allways online / stay connected”. Below the title, the website displayed graphics containing the camera logos of Complainant. The website contained three hyperlinks, including a hyperlink resolving to a page which was headed “instagam IGTV: Watch Instagram Videos”. However, none of the hyperlinks enabled the viewing of videos of Complainant.

The Respondent didn’t use the domain for any goods and services in a fair trade way. 

Instagram asserts that the domain name has been registered and is being used in bad faith. Bearing in mind that INSTAGRAM trademark is distinctive and well known throughout the world, Respondent could not reasonably argue that it did not have knowledge of it at the time of registration of the domain.

The WIPO Arbitration upheld all Instagram claims and transferred the domain name.

Source: WIPO.

When a letter combination can create trademark problems – an EU Court decision

The European Court has ruled in case T‑860/19, Alkemie Group sp. z o.o срещу Mann & Schröder GmbH.

This dispute concerns a European trademark application for the following classes:

• _{Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;}

• _{Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;}
• _{Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing preparations, shampoos, cosmetic products for therapeutic use, food supplements, hygiene products, clothing, bedding [linen], toys, children’s furniture; advertising and marketing; services relating to the presentation of goods; organization of participation in fairs and exhibitions ”.}

Against this application an opposition was filed by Mann & Schröder GmbH based on early registered trademark for ALKMENE in the following classes:

• _{Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;}

• _{Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;}
• _{Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos ”.}

The EUIPO upheld the opposition finding both sign as confusingly similar for the consumers in the EU. The decision was appealed.

According the the applicant both marks were not similar because their first part ALK had been widely used in many other registered trademarks, which in turn meant that this letter combination was not distinctive.

The Court disagreed. The fact that other trademarks cover the same letters combination doesn’t mean that it is not distinctive. Such an assumption has to be proved by particular evidence that to show low distinctive character of the combination in relation the the particular goods and services. This didn’t happen in the case at hand.

The Court pointed out that when word mark is compared with combined one, the word part has a dominant position in most of the cases.

From that perspective, the Court considered that there is a similarity between both marks. This was due to their identical beginnings as well as to their identical length and similarity from visual and phonetic point of view.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB.

CHANEL lost a trademark dispute in Japan regarding its famous COCO brand

One interesting trademark dispute from Japan where the local company 196+ Inc. applied for a trademark “COCOMIST” in class 3 – cosmetics, perfumery, fragrances, incense, toiletry preparations, etc.

Against this application an opposition was filed by the well-known fashion company CHANEL SARL based on an earlier mark for COCO for the same goods. According to the French company both signs are similar and there is a likelihood for a consumer confusion especially taking into account the reputation of the earlier mark in Japan.

In addition, the company suggested that the COCO reputation is enhanced by the nickname of the French fashion designer “Gabrielle COCO CHANEL” who was the founder of the brand.

The Japanese Patent Office, however, wasn’t impressed enough from these arguments. According to the Office when compared both signs have to be taken in their entirety. From that point of view the signs are dissimilar. The Office couldn’t find any particular meaning when it comes to the mark applied for in order to conclude likelihood of confusion between both marks even though the earlier mark has a strong reputation in Japan.

Source: Masaki MIKAMI, Marks IP Law Firm.

A Jeff Bezos’ nonprofit organization lost a trademark dispute in the EU

The Jeff Bezos’ nonprofit organization “The Bezos Family Foundation” lost a trademark dispute in the EU.

The case concerns an EU trademark application ‘Vroom’ filed by the foundation in 2017 for – computer software, specifically “a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education.

Against this application an opposition was filed by the France’s national state-owned railway company SNCF Mobilités based on an earlier French trademark for ‘Pop & Vroom’ for software.

The EUIPO upheld the opposition finding both signs and their goods similar enough to create a confusion in the consumer mind.

The decision was appealed. The foundation claimed that both marks were not similar. The reason for this was that the leading element of the earlier mark is POP which attracts consumer’s attention because as a general rule of thumb the first part of a trademark is more important from that point of view. In addition, the goods in the marks target different audiences. While in the case of the foundation’s mark the software focuses on children education, in the case of earlier mark the focus is on a software for transport services.

The General Court of the European Union dismissed the appeal. According to the Court the signs are visually and phonetically similar to average degree. The fact that the first part of the earlier sign is different is not enough to overcome the similarity because for trademark assessment is important the entire impression produced by the sign.

The Court considers that when a trademark owner register its mark for one a general good, in this case software, the owner has the right to use it for different types of software. In this way, the stated difference in consumers targeting is not sufficient argument.

Source: WIPR.