When food content is important for design protection?

food-2490641_960_720The General Court of the European Union has ruled in case Case T‑352/19, Gamma-A SIA v Zivju pārstrādes uzņēmumu serviss SIA.

It concerns the following European design registered for class Class 9-3: ‘Packaging for foodstuffs’:

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The packaging represents a container with a transparent lid.

Against this design an application for invalidity was filed based on lack of novelty and individual character. The reason for this was the following earlier design for similar packaging:

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Initially the EUIPO dismissed the invalidity request stating that the food contained in the container is part of the deigns protection which makes both design dissimilar.

The Board of Appeal, however annulled this decision considering both design identical.

The General Court upheld this position. The fact that the contents of the packaging in which it is intended to be incorporated are visible does not extend the
protection conferred on the contested design to those contents. The presence of visible foodstuffs inside the products merely provides a better illustration of the purpose of the design, namely as packaging for foodstuffs, as well as one of their components, specifically the transparent lid. The comparison of the overall impressions produced
by the designs must relate solely to the elements actually protected . The protection
conferred by the contested design relates to its appearance in that it is intended to be incorporated into packaging for foodstuffs having certain components with specific characteristics, namely a metal container that has a transparent lid with a
translucent tab. The foodstuffs inside the container must not, therefore, be taken into consideration for the purpose of assessing the ‘overall impression’.

Based on this the registered design was invalidated successfully.

Source: Alicante News

Not everyone is allowed to use Irish names and symbols to sell products – an EUIPO decision

irish-844928_1920The Grand Board of Appeal of the EUIPO has ruled in an interesting case which concerns deceptive trademarks registered in bad faith.

The case at hand regards the following European trademark registered by the Spanish company Hijos de Moisés Rodríguez González S.A for the goods in class 29 (meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats):

La Irlandesa

This trademark was attacked by the Irish Ministry for Jobs, Enterprise and the Irish Dairy Board jointly with an invalidation request.

According to both institutions, the registered trademark can lead consumers to think that the branded goods originate from Ireland which could not be the case. What’s more the mark was registered in bad faith because the owner had trade relations with the Irish Dairy Board in the past and tried to registered several similar trademarks for La Irlandesa.

Although EUIPO initially dismissed the request for invalidation, the Grand Board upheld it entirely.

The name La Irlandesa has clear meaning associating with Ireland. In addition, the color and the graphical elements have such connotations too. This can deceive the consumer to think that the products are from Ireland. According to some evidence the mark was used not only for products imported from Ireland but for other goods too.

In order bad faith to be established consideration must be taken of: (a) the origin of the contested sign and its use since its creation; (b) the commercial logic underlying the filing of the application for registration of the sign as an EUTM; and (c) the chronology of events leading up to that filing (T-257/11, COLOURBLIND).

In addition, the concept of bad faith involves a dishonest intention or other deceitful motive that departs from accepted principles of ethical behaviour or honest commercial and business practices (T-795/17, NEYMAR).

Finally, pursuant to Articles 5(4) and 6(1)(b) of the Directive 2005/29/EC (Unfair Commercial Practices Directive), commercial practices are considered ‘unfair’ and therefore dishonest if they contain false information or are in any way such as to deceive the average consumer in relation, inter alia, to the main characteristics of the product, such as its geographical or commercial origin.

Taking into account all of the above, the Grand Board concluded that there is a bad faith intention for the registration of the mark bearing the mind the trade relations between the trademark owner and the Irish Dairy Board and the possibility for consumer deception.

Source: IPKat.

EUIPO extends time limits again in the light of Covid-19

envato-4966945_1920EUIPO announced its decision to extend time limits regarding different procedures related to European trademark and design protection.

1) In accordance with Article 101(4) EUTMR and Article 58(4) CDIR, all time limits expiring between 1 May 2020 and 17 May 2020 inclusive that affect all parties in proceedings before the Office are extended until 18 May 2020.

(2) In the event parties to proceedings before the Office choose to discharge their procedural obligations before the expiry of the extended time limit, by submitting observations, documents or performing any other procedural act, the relevant time limit will be considered exhausted and the proceedings will continue without awaiting its expiration pursuant to Article 1.

The full text of the decision is available here.

Superman upheld his reputation in the EU

photo-1538051046377-5ad74dc62f95DC Comics won a dispute in the EU regarding its famous Superman trademark. The case concerns an attempt by Magic Box to register the following EU trademark in class 28 – toys and games:

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Against this mark an opposition was filed by DC Comics based on the following earlier trademark in classes 3, 9, 14, 16, 25, 21, 24, 25, 28, 30, 32 и 41:

superman

In addition, a  trademark with reputation under Article 8(5) EUTMR was claimed.

The EUIPO found both sign similar at least in one of their aspects. The Office agreed that Superman trademark was well-known in the EU, but for the goods in class 16 – comics and books and not for film making services in class 41.

According to the EUIPO, it is a common practice different characters from books to be used for merchandising products including for different toys which are very much accepted by the consumers. From that point of view, and taking into account the reputation of the earlier mark, the Office considered that the consumers could find a link between both marks which can give some unfair advantages to the applicant of the later mark.

Because of this the trademark application was rejected.

Source: IPKat.

Turkish cheese sticks cannot be a 3D trademark in the EU

music-1262026_960_720The General Court of the European Union has ruled in case T‑572/19,  Muratbey Gida Sanayi ve Ticaret AŞ v EUIPO. It concerns an attempt for registration of the following EU 3D trademark for the shape of cheese sticks in class 29 – milk products:

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The EUIPO refused the registration with the argument that it is not distinctive. The Turkish applicant claimed that the shape was novel, original and unique, offered in the market for the first time by him. Because of this the company won a World Dairy Innovation Award 2018.

The Court disagreed. Novelty and originality are not criteria for assessment of the distinctive character of a sign. The award could be a factor but only if it was based on a consumer perception.

According to the Court, other producers were offering similar products too because of which the shape of this cheese is not distinctive enough to be registered as a trademark.

Source: WIPR.

Extended time limits before the EUIPO and EPO because of the COVID-19

face-mask-4890115_1920Taking into account the dissemination of COVID-19 in the EU and its declaration as a pandemic, the European Intellectual Property Office (EUIPO) took a decision to extend all tome limits regarding different trademark and design procedures. According to the announcement:

The Executive Director of the EUIPO has today (16 March) signed a decision extending all time limits expiring between 9 March 2020 and 30 April 2020, that affect all parties before the Office, to 1 May 2020. In practice, this means that time limits are extended until Monday 4 May, given that Friday 1 May is a public holiday.

Similar decision was taken by the EPO too.