Can Hallmark be a trademark for real estate?

The Federal Court in Canada has issued a decision regarding the option for registration of descriptive and low-distinctive signs.

In the case at hand, a trademark application for HALLMARK was filed that covers real estate services.

Against this application an opposition arises based, among others, on a claim for descriptiveness and non-distinctiveness of the sign. In English HALLMARK means a distinctive characteristic of something or someone related to excellence. The word is used for indication of gold, silver, etc. quality characteristics. Based on this the opponent claimed that the mark applied for has a laudatory meaning.

The Patent Office disagreed and dismissed the opposition. According to the Office descriptiveness of a term requires a “clear” meaning related to the goods and services mentioned in the trademark application.

Although the word Hallmark has a laudatory characteristic it does not relate directly to the real estate business. In regard to the non-distinctiveness, the opponent failed to provide any evidence that the sign has been commonly used in Canada for respecting services.

In the appeal, the Court upheld this decision stating that descriptiveness requires a clear connection with the goods and services in the application. Only abstract or associate meaning is not enough in order for this claim to be successful. The fact that one word is a laudatory term does not mean automatically that it cannot be a protected trademark as remains the case with suggestive trademarks that has an associative meaning which requires intellectual efforts from the public in order the connection with the goods and services to be discovered.

Source:  John McKeown, Goldman Sloan Nash & Haber LLP

Advertisement

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.

Beer, Burger and Barbecue – not the best combination for trademark protection

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

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.

Decathlon lost a dispute with a Greek company before the EU Court

The General Court of the European Union has ruled in a dispute between Decathlon  and the Greek company Athlon Custom Sportswear.

Athlon filed an application in 2016 for the following EU trademark in classes 25 (clothing and hats) and 28 (sporting articles and equipment):

Against this application an opposition was filed by Decathlon based on an earlier EU trademark DECATHLON for the same classes of goods.

The EUIPO upheld the opposition in its entirety considering both signs as confusingly similar.

The decision was appealed before the Board of Appeal and the trademark application was limited only to class 25 (athletic clothes and hats). The Board annulled the previous decision stating that there was no enough similarity between the marks.

Decathlon appealed but the General Court upheld the Board’s position.

According to the Court, although there is some phonetic and conceptual similarity this is not enough the marks to be considered confusingly similar.

The reason is that the common element for both signs ATHLON means “contest” in Greek, which can be associated with a sport competition. What’s more Athlon is a commonly used suffix in English in relation to athletic events. On the other hand, Decathlon means a competition in which athletes compete in various sporting events.

Because of that both signs have a low distinctive character. From that point of view, the assessment has to focus on the entire impression created by the signs, which in this case cannot lead to a conclusion for similarity. A low distinctive character cannot be monopolize in the same why as a distinctive sign because everyone has to have the right to use it in the relevant area.

The evidence produced by Decathlon for acquired secondary meaning of their trademark was dismissed by the Court as insufficient.

This case is a good example about the widespread attempt by many companies to use low distinctive elements as trademarks. Although this could sound great from marketing point of view because the brand communicates a particular meaning to the consumers, from legal point of view such sign are either difficult to be protected or at least they have limited scope of protection that does not allow competitors to be restricted to use similar marks too.

Source: IPKat.

Pans, red dots and Tefal struggles in the UK

Throughout the Christmas and holiday season it is typical for most people to cook and eat more than usual. With that regard, probably it will be of interest to you the news for the red dot problems of Tefal’s pans in the UK.

In 2018 Tefal applied for the following figurative trademark in the UK for class 21 – frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, and woks:

The UKIPO issued a refusal against this application based on absolute grounds section 3(1)(b) TMA – lack of distinctive character. According to the Office it was not clear whether consumers would perceive this red dot as a trademark sign of itself or just as a decorative or functional element.

Tefal submitted evidence for acquired distinctiveness through use in the UK. The UKIPO dismissed the evidence as insufficient.

Although there were significant sales and advertisement related to this type of pans, the evidence didn’t show in any way that the red dot was functioning as a stand alone sign of trade origin. On the contrary, some of the advertisement related this dot to its heating indication function.

More interestingly in the provided consumers survey, some of the respondents identified the red dot as a ‘heat spot’ or ‘when the pan is hot’.

Based on this the Office confirmed its position that the applied for sign is not distinctive and it is functional, that is to say it cannot serve as a source of trade origin.

This case is valuable as a case law because it shows quite clearly how difficult is to register some figurative trademarks sometimes. In such scenarios one possible solution can be an early implemented strategy by the trademark owner to indicate in every advertisement and other communication that the relevant sign is a mark. In that way, hopefully, consumers will start to perceive it as such in the long run.

Source: IPKat.

WhatsApp – problems in Norway

Facebook faced unexpected problems to register the following figurative trademark in Norway for its well-known app WhatsApp:

This mark was filed for the following Nice classes: software in Class 9, telecommunication services in Class 38, computer software in Class 42, and encryption and security services in Class 45.

The Norwegian Industrial Property Office refused registration for this sign based on absolute grounds: lack of distinctive character. According to the Office this sign representing a receiver is widespread used as indication for contacts which consumers can use to communicate with companies etc. It refers not only to phones, but to emails, chats and so on.

The decision was appealed. Facebook argued that this sign was very famous in Norway and what’s more the app itself was number one as a choice by the consumers in the country. The company submitted evidence in that regard.

The Board of Appeal wasn’t impressed and dismissed the evidence as insufficient. The reason was that in most of the submitted documents the sign above was been combined with the word part WhatsApp. According to the Board this was not enough in order acquired distinctiveness to be proved for the sign alone.

Source: AWA – Lars Platou for Lexology.