McDonald’s strikes back regarding the revocation of its EU trademark Big Mac

As this blog mentioned, McDonald’s lost a trademark revocation procedure before the EUIPO in 2019, regarding its EU trademark BIG MAC. The revocation application was filed by the Irish fast food chain Supermac’s (Holdings) Ltd on the ground of an EU trademark not put to genuine use for a continuous five-year period.

The EUIPO revoked the mark finding McDonald’s evidence for real trademark use as insufficient. Of course, this decision was appealed.

No the Board of Appeal of the EUIPO annulled the previous decision stating that the mark’s use was proved for the following:

• In Class 29 – Foods prepared from meat and poultry products, meat sandwiches, chicken
  sandwiches;
• In Class 30 – Edible sandwiches, meat sandwiches, chicken sandwiches;
• In Class 42 – Services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods.

The Board found that EUIPO failed to assess properly some of the submitted evidence. For instance, although Wikipedia’s page devoted to the mark can be edited, it contains links to external reliable sources such as newspapers and magazines that provide information for Big Mac too.

In addition, McDonald’s submitted new pieces of evidence in the appeal. For example, in some countries, the so-called ‘Big Mac Index’ is very popular for comparing the cost of living.

Consumer surveys, financial papers, and additional ad materials were provided too, and all of them show extensive trademark use in countries such as Germany, France, the UK (before Brexit), etc.

What’s more, the Big Mac brand has been used only in relation to McDonald’s stores and not by other competitors which in turn shows the sign is capable to indicate a particular trade origin.

Based on this the Board of Appeal concluded that Big Mac has been used as a trademark on the territory of the EU for a continuous five-year period.

Source: EUIPO.

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When Yoga can be a serious threat to trademark protection in the EU?

The General Court of the European Union has ruled in the case Case T‑443/21 YAplus DBA Yoga Alliance v Swami Vidyanand.

This dispute focuses our attention on the issue of trademarks with a weak distinctive character and how this reflects on the scope of their protection.

In 2018, Mr. Swami Vidyanand filed the following international trademark where the EU was designated party, for class 41 – Education; providing of training; entertainment; sporting and cultural activities:

Against this application, an opposition was filed by YAplus DBA Yoga Alliance on the grounds of the following earlier mark in classes 35, 41, 42:

On 2 April 2020, the Opposition Division upheld the opposition. It found, in essence, first, that the services at issue were identical or similar and that they were aimed both at the general public and at professionals with an average level of attention, second, that the comparison of the signs had to be made from the point of view of non-English-speaking Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking consumers in the European Union and that the signs were visually similar to an average degree, highly similar phonetically and conceptually similar to a low degree. Third, it found that the distinctive character of the earlier mark was normal despite the presence within it of certain elements, at most weakly distinctive, such as their decorative elements or the common word element ‘yoga’. Lastly, it found that there was a likelihood of confusion on the basis of Article 8(1)(b) of Regulation 2017/1001.

An appeal followed where the Board of Appeal annulled the Opposition Division finding no likelihood of confusion between both signs.

The General Court upheld this finding. According to the Court:

It follows that excessive protection of marks consisting of elements which, as in the present case, have very weak distinctive character, if any, in relation to the services at issue could adversely affect the attainment of the objectives pursued by trademark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such elements in the signs at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case.

It should be remembered that the visual, phonetic, or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate, in that global assessment, to take into account the nature of the services at issue and to examine the objective conditions under which the marks may appear on the market.

Thus, in accordance with the case-law, in the present case, it must be held that, in view of the fact that the phonetic and conceptual similarities are based exclusively on word elements which are devoid of distinctive character, the clear visual differences between them have a greater impact in the global assessment of the likelihood of confusion.

In that regard, it should be borne in mind that, where the earlier trademark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does not often lead to a finding that such likelihood exists.

In those circumstances, it must be held that, in the context of a global assessment of the likelihood of confusion, having regard to the weak distinctive character of the common elements ‘yoga alliance’, the presence of figurative elements which are visually very different will enable the average consumer to make a clear distinction between the marks at issue, even for the part of the relevant public with an average level of attention, despite the identical or similar character of the services at issue. That is all the more true for the part of the relevant public with an above-average level of attention. Accordingly, it follows that the Board of Appeal’s error in relation to the level of attention of the relevant public in respect of the ‘educational’ services found in paragraph 50 above cannot have a decisive effect on the outcome of the global assessment of the likelihood of confusion.

This case reminds us what a trap can be if someone uses a weak distinctive element as a trademark. Although such an element can be registered in combination with graphics or other words, by its nature it is weak which means that monopolization of this element is not possible. This in turn means that competitors can use it too for their brands, and all of this means potential marketing and recognisability issues for the trademark owner.

OSCAR trademark survived a revocation procedure in the EU

If one trademark is registered in the EU but its business model happens in a country outside the EU, whether this mark is regarded as used on the territory of the EU.

This was the question the Board of Appeal of the EUIPO had to answer in the dispute R 1841/2021-5, OSCAR.

The case concerns the European trademark OSCAR registered for class 41 – entertainment and educational services, namely, conducting an annual award ceremony recognizing exceptional achievement in the film industry.

Against this mark, an application for revocation was filed based on non-commercial use for 5 consecutive years.

The EUIPO dismissed the action entirely. Although the well-known OSCAR Awards ceremony takes place at a venue in Los
Angeles, the EU trademark was subject to different advertisement campaigns that targeted EU consumers. Advertisements on their own constitute a way of trademark use according to EU legislation.

In addition, the trademark owner has provided licenses for broadcasting of the ceremony to many EU television programs which in turn means commercial use of the sign.

The Oscar Awards show was watched by millions of Europeans, and the ceremony itself represents an entertaining service.

The Board of Appeal confirmed this decision.

Last year the EUIPO issued another decision for a similar case relating to hotel services where the hotels themselves were outside the territory of the EU.

How an abstract canine depiction reflects a trademark opposition in the EU?

The General Court of the European Union has ruled in the case T‑596/21 Société Elmar Wolf v Fuxtec GmbH.

The case concerns the similarity between figurative marks based on the meaning they can convey to the consumers.

Fuxtec GmbH is the owner of the following international mark, where the EU is designated, for classes 4, 7, 8, 12, and 35:

Against this mark, an opposition was filed by Société Elmar Wolf based on several earlier figurative marks in classes 7, 8, and 35:

The EUIPO dismissed the opposition finding both signs dissimilar. The case was appealed.

The General Court upheld the EUIPO decision entirely. According to the Court, the earlier marks convey a clear impression of canine while the later mark is rather abstract, as a result of its clean curved lines, its sharp edges, and the lack of figurative details.

Due to this fact, consumers would need to put more effort and thoughts in order to discover the meaning of the sign if this is possible at all. This prevents the possibility of consumer confusion.

By contrast, as the Board of Appeal pointed out, the shape exhibited by the contested sign is rather abstract, as a result of its clean curved lines, its sharp edges and the lack of figurative details. It is true that that sign includes elements which could be perceived by a non-negligible part of the relevant public as the contours of the front view of a face, ears pointing upwards, a muzzle pointing downwards and eyes. However, the representation of a head which may emerge is obviously less realistic and considerably more stylised than the silhouette illustrated by the earlier marks, which represents some of the favourite attributes, a slightly open mouth and a menacing expression, of the representation of the head of a canine and which the rather abstract silhouette in the mark applied for does not have. In those circumstances, it is unlikely that the average consumer, who normally perceives a mark as a whole and does not carry out an analysis of its details at the time of purchase, will be capable of spontaneously associating the contested sign with the head of an animal, or even with the head of a canine, without engaging in an analysis which goes beyond that expected at the time of purchase.

It follows that it must be held, as the Board of Appeal found, that the overall impression created by the contested sign makes the identification of the head of an animal, let alone of a particular animal, highly arbitrary and, consequently, that the signs at issue are visually similar at most to a low degree.

The argument of the opposition applicant that the earlier marks have a high degree of inherent distinctiveness because they do not convey any meaning in relation to the goods and services covered by them, was dismissed by the Court, which considers that such consideration is not enough a high level of distinctiveness to be proved.

Charlie Chaplin’s Charlot character cannot be trademarked in the EU

As it is well-known fictional characters can be registered as trademarks in many countries around the world. There are a lot of examples of such marks from Mickey Mouse and Superman to Super Mario.

The question is, however, what can represent an obstacle to the registration of these marks.

Recently, the EUIPO has issued a decision on a European trademark application for the following mark in classes 9 (scientific apparatus and instruments, photographic apparatus and instruments, cameras), 35 (advertising, business management, clerical services), 38 (telecommunication services), 41 (teaching, training, entertainment services), and 42 (computer software design):

The mark represents the great actor Charlie Chaplin in his most famous role as the Charlot character.

EUIPO refused to register this mark based on absolute grounds Article 7(1)(b) – (c) and 7(2) of Regulation 2017/1001 (EUTMR). According to the Office, consumers would perceive this character as conveying modern, liberal, and humanist values by denouncing totalitarianism and Nazi ideology.

This is the reason why consumers would perceive the image as an advertising approach to encourage sales based on the values attached to the Charlot character. From that perspective, it is not likely for consumers to get the image as a particular source of trade origin. This is emphasized by the widespread practice where famous people and characters are used for enforcement practices.

In addition, the image could be descriptive too if consumers consider the content of some services mentioned in the application as related to Charlot and Charlie Chaplin.

Source: IPKat.

Rolex lost a trademark dispute in the EU

Are clothes similar enough to watches – that’s the question The General Court of the European Union has ruled in recently  T‑726/21 Rolex SA v PWT A/S.

PWT filed a European trademark application for the following figurative mark for many classes including class 25 – clothing, footwear headgear:

Against this application an opposition was filed by Rolex SA based on the following trademarks in class 14 – watches, for which an established reputation was claimed:

The EUIPO decided that the goods in class 14 – watches and those in class 25 clothing, footwear headgear are not similar because of their different nature and intended purpose. While watches are perceived as accessories, the goods in class 25 aim to dress the human body.

In so far as the opposition was based on Article 8(5) of Regulation No 207/2009, it found that the reputation of the earlier purely figurative mark was not established and that the reputation of the earlier composite mark was established for wristwatches. It added that the latter mark and the mark applied for were, at most, visually similar to a very low degree, that a phonetic comparison was not possible between them, and that the conceptual similarity resulting from the common presence of a crown had a very limited impact. It inferred from this that the relevant public would not make a link between those marks, with the result that no risk of injury to the reputation of the earlier composite mark was established.

The General Court upheld this decision entirely. Regarding the goods similarity issue:

In the present case, the applicant merely alleges the growing importance of online trade, the growing tendency towards convergence of fashion and technology, including wristwear, and the supposed well-known fact, common in the fashion sector and usual for consumers, of seeing clothing and accessories, such as eyewear, jewelry and watches, being offered in the same sales outlets. However, it does not submit any evidence to that effect. The applicant adds that that practice results in a certain cognitive behavior and a certain state of mind, but without providing further detail.

In addition, it must be pointed out that the fact that the goods at issue may be sold in the same commercial establishments, such as department stores, is not particularly significant, since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin

Furthermore, the applicant’s arguments that the purchase of the goods at issue may be based on the search for an aesthetic complementarity must be rejected as ineffective. The applicant itself concedes that such a fact is insufficient to conclude that there is a similarity between those goods.

When it comes to the claimed reputation:

In order to benefit from the protection introduced by the provisions of Article 8(5) of Regulation No 207/2009, the proprietor of the earlier mark must, first of all, adduce proof, either that the use of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark, or that it would be detrimental to that distinctive character or that repute.

In that regard, although the proprietor of the earlier trade mark is not required to demonstrate actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 207/2009, it must, however, prove that there is a serious risk that such an injury will occur in the future.

The Board of Appeal noted that, in order to demonstrate the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009, the applicant had not submitted observations to it, but that, before the Opposition Division, it had argued that the intervener could take unfair advantage of the degree of recognition of the earlier composite mark on account of the fact that the signs at issue were almost identical and the immense reputation acquired by the earlier marks, which allegedly convey images of prestige, luxury and an active lifestyle. It found that, by those arguments, the applicant had in fact merely referred to the wording of Article 8(5) of Regulation No 207/2009, without submitting any coherent arguments as to why one of such injuries would occur. The Board of Appeal inferred from this that no injury referred to in that provision was established.

It must be stated at the outset that the applicant’s arguments do not make it possible to identify the injury or injuries set out in Article 8(5) of Regulation No 207/2009 which might be caused to the earlier composite mark, to its detriment, by the use of the mark applied for.

Source: IPKat.

Is SHAVETTE a trademark or a generic name for razors in the EU?

The Board of Appeal of the EUIPO has ruled in the case related to the invalidation of the EU trademark SHAVETTE.

The mark was filed in 2014 by the German company DOVO Stahlwaren Bracht GmbH & Co.KG for the following classes:

• Class 8: Razors, electric or non-electric, and parts therefor; Containers and cases
  for razors.
• Class 21: Shaving brushes; Holders for razors and shaving brushes.

The production of SHAVETTE razors started in the 1980s by DOVO and since then they have gained serious popularity amongst consumers.

In 2018, another company Sinelco International, BV filed a request for a declaration of invalidity of the registered mark for all the above goods on the ground of Articles 59(1)(a) EUTMR in conjunction with Article 7(1)(c) and 7(1)(d) EUTMR:

The following shall not be registered:
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

According to Sinelco, the word SHAVETTE is used by consumers as a generic term describing an entire category of razors with exchangeable blades. Evidence was submitted that shows such use by consumers in Sweden and the United Kingdom.

The Cancelation division of the EUIPO invalidated the mark agreeing that it is a generic term.

The fact that a trademark is being used as the common name to refer to a specific product or service is an indication that it has lost its ability to differentiate the goods or services in question from those of other undertakings. One indication that a trademark has become customary is when it is commonly used verbally to refer to a particular type or characteristic of the goods or services. It has been demonstrated that the contested trademark has become a name used as a synonym for straight razors with exchangeable blades so extensively that, as established by the cancellation applicant, in 2014 the trademark was not capable of differentiating the goods or services in question from those of other undertakings.

The decision was appealed and the Board of Appeal annulled it. One of the reasons is that the appeal happened after Brexit and the grace period that ended on 31.12.2021. This means that all evidence related to the UK is no more admissible no matter when the invalidation proceeding was started.

This is due, on the one hand, to the fact that the invalidity applicant has no interest to act where an absolute ground
only applies in relation to the UK. On the other hand, the above constitutes an application by analogy of Article 59(2) EUTMR and Article 209(2) EUTMR, which states that ‘the registration of an EU trademark which was under application at the date of accession may not be refused on the basis of any of the absolute grounds for refusal listed in Article 7(1) if these grounds became applicable merely because of the accession of a new Member State’. Finally, this is also confirmed by Article 54(3), 2nd sub-para, Withdrawal Agreement (‘WA’) according to which an equivalent UK trademark (that is a UK mark derived from a ‘parent’ EUTM according to Article 54(1)(a) ‘WA’) is not to be invalidated where the absolute ground of invalidity does not apply in the UK.

According to the Board, the rest of the evidence related to Sweden is not enough in order to support the conclusion that SHAVETTE is a common and generic name for razors.

This case shows us how important is for every company to communicate correctly that their mark is a source of trade origin and not a name of the related products or services. If this is not part of the marketing strategy of the company, in some cases there are some chances consumers to start indicating the whole product category using the same name which exposes the mark to the risk to be invalidated at some point.