Amazon failed to register its RING trademark in the EU

doorbell-143467_960_720Amazon lost a dispute in Case T‑270/19 v EUIPO before the General Court of the European Union.  The case concerns an attempt by the US company to register the following EU trademark:

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The mark was applied for:

Class 9: ‘Consumer electronic products, namely, doorbells, motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled doorbells; electronic doorbells; electronic doorbells with a camera allowing persons to identify who is at their door from remote locations; motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; downloadable software and software applications permitting users to identify and communicate with persons at their door; downloadable software and software applications permitting users to monitor their home, office and other facilities; downloadable applications for monitoring a user’s home, office and other facilities, for use over the internet, mobile devices, wireless internet networks or systems and other computer and electronic communication networks; speakers; wireless local area network enabled speakers; customisable electronic speakers; computer application software for use in controlling and managing speakers, wireless local area network enabled speakers, customisable electronic speakers; luminous signs; electric signs; electronic signs; backlit signs; lighting controllers; lighting control apparatus; electric control devices for lighting fixtures; computer software for sharing videos; computer application software for sharing videos; computer application software for mobile phones and other mobile devices, namely, software for sharing videos’.

The EUIPO rejected the registration of this mark based on absolute grounds. According to the Office, the sign is completely descriptive for the mentioned goods and cannot serve as a source of trade origin.

Amazon appealed argued that the mark applied for was only suggestive or allusive, and not communication particular characteristics of the goods.

The Court dismissed the appeal stating that the mark was completely descriptive for the relevant goods and in that way not able to indicate trade origin. According to the Court  “the verbal element “ring”, which means in particular to “make a clear resonant or vibrating sound”, immediately informed the consumers, without their further thought, that the goods in question, “doorbells, motion sensors, monitoring equipment, namely video monitors and video cameras”, include a system to enable them to produce a clear resonant or vibrating sound.”

The General Court of the EU found similarity between trademarks for wine

wine-1761613_1920The General Court of the European Union has ruled in case Case T‑239/19 Vinos de Arganza v Nordbrand Nordhausen GmbH. It concerns an attempt for registration of the following combined EU trademark for class 33 – wine:

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Against this application, an opposition was filed based on an earlier German trademark BELCANTO for class 33 – Alcoholic beverages.

EUIPO upheld the opposition entirely. According to the Office, the goods for both marks were identical. From a visual point of view, both signs were similar to a low degree. Phonetically they were similar because of their end sounds. Conceptually both trademarks were neutral because they had no meaning for the German-speaking public.

The Court confirmed this decision.

What is interesting here is the fact that although the beginning of the marks has a bigger impact on such comparisons in the case at hand the different letters, in the beginning, weren’t able to overcome the entire possibility for consumer confusion between the signs.

BIO cannot be registered as an EU trademark

environmental-protection-683437_1280The Board of Appeal of the EUIPO has ruled in case  R1507/2019-2, which concerns an attempt for registration of the following EU trademark for classes 3 and 5:

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EUIPO refused to register the mark based on absolute grounds, Article 7(1)(b) EUTMR, descriptiveness, and lack of distinctiveness for the goods in the aforementioned classes.

The word BIO means ‘biological, organic’  and cannot serve as a source of trade origin.

The Board upheld this decision. The fact that the word BIO is displayed with colors and graphical elements is not enough to overcome the weakness of the sign because alone or in combination these additional elements are not capable to create the necessary distinctiveness.

Source: Alicante news.

MIM is similar to MUMM according to the General Court of the EU

gavel-3577254_1920The General Court of the European Union has ruled in T‑589/18 Vins el Cep, SL v EUIPO. The case concerns an attempt for registration of the following EU trademark in class 33 –  Alcoholic beverages (except beer).

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Against this mark, an opposition was filed based on earlier marks MM, MUMM and the following combined mark, all for class 33:

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The EUIPO upheld the opposition concluding that there is a risk for consumer confusion between the signs. The dominant element in the later mark was MIM, which was similar to MM and MUMM at the beginning and end of the words.

Visually and phonetically the marks at hand were similar too. Conceptually, there was no similarity because the word MUMM meant ‘courage’ in German.

The word part NATURA in the mark applied for, had secondary importance so it wasn’t able to make the difference.

Taking into account the identical goods in class 33, the Office accepted that there is a risk for consumer confusion.

The decision was upheld by the General court.

Keep calm – no change regarding EU marks and designs after approval of the Brexit agreement

brexit-4011711_1920The European Intellectual Property Office (EUIPO) issued a press release in which clarifies the situation with the approved Withdrawal Agreement for Brexit by the European Parliament.

EUIPO stated that there will be no change regarding the EU trademarks and designs and their validity on the territory of the UK by the end of 2020. This includes the possibility of citing the national marks in procedures before the Office as well as the work of British Industrial property representatives.

For more information here.

McDonald’s won a ‘dream’ lawsuit in the EU

people-2569070_1920The General Court of the European Union has ruled in case T‑428/18 McDreams Hotel GmbH v EUIPO.

It concerns an attempt for registration of the following European trademark in class 43:

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Against this application, McDONALD’S filed an opposition based on 16 earlier trademarks such as McDONALD’S, Mc, McCOUNTRY,  McCAFE, McFAMILY for 29, 30, 43. In addition trademarks with reputation were claimed.

The EUIPO initially dismissed the opposition stating that both signs are not enough similar and what’s more the claimed reputation didn’t cover the restaurant’s and hotels’ services in class 43.

The Board of Appeal annulled this decision accepting that the later and the earlier signs are similar up to a point and that MC DEARMS can be perceived by the consumers as a part of the McDONALD’S family of trademarks that have established reputation in the EU for many years.

The General Court upheld this position. According to the court, the signs are similar enough both from a phonetic and visual point of view. They start with the MC abbreviation and their second words DONALD’S and DREAMS start with D and ending with S. Apart from this the colors in the later mark are similar to those used by the US company.

The Court considers that there is a link between the services offered by McDONALD’S and these in class 43 because of which the reputation of the earlier marks has to be taken into consideration as an important argument for possible consumer confusion.

Brief IP News

news-in-brief1. Report on the protection and enforcement of IPR in third countries. For more information here

2. Improved e-filing for designs in Romania. For more information here

3. New EUIPO report shows the value of licensing EUTMs for SMEs. For more information here

Source: Intellectual Property Center at the UNWE. More information can be found here.