Vita as a white trademark in The EU

blueberry-1245702_960_720.jpgThe European Court has ruled in case T‑423/18 Fissler GmbH v EUIPO which concerns whether or not words describing colors can be registered as trademarks.

The background of the case is as follow:

On 27 September 2016, the applicant, Fissler GmbH, filed an application for registration of an EU a word trade mark for VITA.

The goods in respect of which registration was sought are:

– Class 7: ‘Food processors, electric; parts and accessories for the aforesaid goods’;

– Class 11: ‘Pressure cookers, electric; parts and accessories for the aforesaid goods’;

– Class 21: ‘Household or kitchen utensils and containers; cooking pot sets; pressure cookers, non-electric; parts and accessories for the aforesaid goods’.

By decision of 28 April 2017, the examiner refused registration of the mark applied for in respect of the goods concerned on the grounds that it was descriptive and devoid of any distinctive character for the purposes of Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001).

On 20 June 2017, the applicant filed a notice of appeal with EUIPO.

By decision of 28 March 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, as regards the relevant public, it found that the goods concerned were aimed above all at the general public, but also in part at a specialist public, for example chefs, and that the level of attention varied from average to high. It added that, as the mark applied for was a Swedish term, it was necessary to take into account the Swedish-speaking public in the European Union.

In the second place, as regards the descriptiveness of the mark applied for, the Board of Appeal, first, pointed out that the sign vita is the definite plural form of the word ‘vit’, which means ‘white’ in Swedish. Next, it found that, for the purposes of applying Article 7(1)(c) of Regulation 2017/1001, the question whether or not white was a common colour for those goods was not determinative. It was sufficient that those goods could exist in white and that the sign could be descriptive of them. After stating that the colour white was not the most common colour for ‘electronic and non-electronic’ (that is to say, electric and non-electric) pressure cookers and other household utensils, but that it was at least a fairly usual colour for those goods, it found that that showed that an average consumer would associate the goods concerned with the colour white and therefore found that the mark applied for was descriptive. Furthermore, the Board of Appeal pointed out that some kitchen utensils and household appliances are often referred to as ‘white goods’ in English and Swedish (‘vitvaror’). On the basis of an extract from the website which could be accessed via the internet address http://www.vitvara.n.nu/vad-ar-vitvaror, it deduced that some of the goods concerned, such as electric food processors or electric pressure cookers, could collectively be described as ‘white goods’. It stated that, even if that were not possible, because it is mainly large household appliances, like washing machines and dishwashers, which are described as ‘white goods’, it clearly demonstrated that the colour white was generally associated with household utensils. Lastly, it found that the mark applied for was purely descriptive.

In the third place, as regards the lack of distinctive character of the mark applied for, the Board of Appeal found that the mark applied for would be understood by the relevant public as a simple statement of fact in the sense that the goods concerned were goods that were available in white. It concluded that that mark was purely descriptive and, consequently, had no distinctive character. It took the view that any manufacturer of food processors and cooking pot sets could manufacture its goods in white and that that mark was not therefore capable of distinguishing the applicant’s goods from those of other undertakings. Furthermore, the Board of Appeal rejected the applicant’s argument that there are other registered trade marks which consist solely of colours.

The General Court annulled the EUIPO’s decision with the following arguments:

In the present case, it must be stated that the colour white does not constitute an ‘intrinsic’ characteristic which is ‘inherent to the nature’ of the goods concerned (such as food processors, electric pressure cookers and household utensils), but a purely random and incidental aspect which only some of them may have and which does not, in any event, have any direct and immediate link with their nature. Such goods are available in a multitude of colours, among them the colour white, which is not more prevalent than the others. The Board of Appeal itself acknowledges this because the website that it mentions in paragraph 23 of the contested decision states that ‘these days, [household] utensils come in all colours’.

The mere fact that the goods concerned are more or less usually available in white, among other colours, is not disputed, but is irrelevant, since it is not ‘reasonable’ to believe that for that reason alone the colour white will actually be recognised by the relevant public as a description of an intrinsic characteristic which is inherent to the nature of those goods.

Consequently, neither of the two grounds relied upon by the Board of Appeal  is sufficient to establish that there is a sufficiently direct and specific link, within the meaning of the case-law referred to in paragraph 28 above, between the term ‘vita’ in Swedish and the goods concerned. The Board of Appeal did not show that the relevant public, when faced with the mark applied for, would immediately perceive it, without further thought, as a description of those goods or of one of the intrinsic characteristics of those goods that is inherent to their nature.

Furthermore, in so far as the Board of Appeal inferred the lack of distinctive character of the mark applied for from its being understood as a simple statement of fact in the sense that the goods concerned are available in white, it must be held that the relevant Swedish-speaking public will not perceive a description of an intrinsic characteristic of the goods concerned in the mark applied for and will not be able to associate it directly with those goods. On the contrary, the term ‘vita’ requires some interpretation on the part of Swedish and Finnish consumers. Those consumers will not understand the mark applied for as a simple statement of fact according to which those goods are available in white, but rather as an indication of their origin. That is particularly so because that mark will be affixed to goods of any colour, and not only to those which are white.

The ground for refusal relied on in the present case cannot therefore preclude the mark applied for from being regarded by the relevant public as being capable of identifying the commercial origin of the goods in question and distinguishing them from those of other undertakings.

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The battle for ICELAND continues

pexels-photo-414101Iceland Foods will appeal the EUIPO’s decision for cancelation of its trademark ICELAND registered in 2014 for classes 7, 11, 16, 29, 30, 31, 32, 35. This trademark is used for supermarkets in The UK.

The procedure was initiated by Promote Island, a government organization from Iceland based on Article 52(1) EUTMR in conjunction with Article 7(1)(c) EUTMR:

The following shall not be registered:

  • (a) signs which do not conform to the requirements of Article 4;
  • (b) trade marks which are devoid of any distinctive character;
  • (g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;

The EUIPO agreed with Promote Island and canceled the trademark. The arguments for this are:

It follows from all of the above that ‘ICELAND’ may serve, from the point of view of the public concerned, to designate an essential and desired characteristic of the goods and services.

Therefore, the mark conveys obvious and direct information regarding the geographical origin of the goods and services in question, and in some cases, the subject matter of the goods as well.

Considering all of the above, it follows that the link between the word ‘ICELAND’ and the contested goods and services is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR and that this was also the situation at the time of filing of the contested EUTM, namely, 19/04/2002.

The EUIPO found that Iceland Food failed to prove acquired secondary distinctiveness in the EU.

The Icelandic foreign minister Gudlaugur Thór Thórdarson expressed his satisfaction with this decision.

“It is contrary to common sense for a foreign company to be able to appropriate the name of a sovereign state as was being done in this case”, the minister said.

Iceland’s foreign ministry added that consumers were likely to associate the mark with “the country of Iceland for all goods and services the registration is claimed for”.

Source: WIPR.

Formula E crashed in a case before the European Court of Justice

race-track-flag-2035566_960_720.jpgThe European Court has ruled in case C‑282/18 – The Green Effort Limited v Fédération internationale de l’automobile (FIA). Even though the case is simple, it clearly shows why every trademark owner has to stick to the deadlines given by the EUIPO.

The Case concerns the following:

The Green Effort acquired rights over the word mark Formula E, the application for registration of which was filed on 17 November 2010.

The goods and services in respect of which registration was sought are:

–        Class 25: ‘Clothing’;

–        Class 38: ‘Broadcasting by radio, television and satellite’;

–        Class 41: ‘Organization of sporting events’.

The EU trademark application was published on 3 December 2010 and the trade mark applied for was registered on 14 March 2011.

On 15 March 2016, Fédération internationale de l’automobile (FIA) filed an application for revocation of the contested mark for all the goods and services, pursuant to Article 51(1)(a) of Regulation No 207/2009, now Article 58(1)(a) of Regulation 2017/1001, on the ground that it had not been put to genuine use within a continuous period of five years.

On 21 March 2016, the Cancellation Division of EUIPO invited The Green Effort to submit, by 21 June 2016, proof of genuine use of the contested mark. Since that proof was submitted on 22 June 2016, in disregard of the time limit prescribed, it was not taken into account.

On 27 July 2016, The Green Effort filed an application for restitutio in integrum with the Cancellation Division of EUIPO in order have its rights to submit that proof re-established.

By decision of 8 September 2016, the Cancellation Division rejected the application and revoked the contested mark in its entirety.

On 5 October 2016, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

By the contested decision, the Second Board of Appeal of EUIPO (‘the Board of Appeal’) dismissed the appeal.

In support of its decision, the Board of Appeal considered that neither the proprietor of the contested mark nor its representative showed that they had actually taken the utmost care to observe the time limit prescribed for submitting the documents proving genuine use of the contested mark. It took the view that, while there is evidence in the file of repeated attempts to send electronic communications and fax communications from The Green Effort to EUIPO, with respect to Spanish local time all communications were received on 22 June 2016, that is to say after the time limit prescribed had expired, since the explanations provided in that regard could not be regarded as ‘exceptional’.

Therefore, the Board of Appeal upheld the decision of the Cancellation Division to reject the application for restitutio in integrum, and, with regard to the application for revocation of the contested mark, it considered that, in the absence of any proof of genuine use in the European Union during the relevant period or of any indications of proper reasons for non-use, the rights acquired by The Green Effort had to be revoked in their entirety and deemed not to have had any effect as from 15 March 2016.

The Court dismissed the appeal by The Green Effort Limited considering that the EUIPO’s position on the matter is correct. The arguments are:

As set out in Article 4(4) of that decision, without prejudice to accurately establishing the date of notification, notification will be deemed to have taken place on the fifth calendar day following the day on which EUIPO placed the document in the user’s inbox.

That interpretation meets the requirements stemming from the principle of legal certainty by preventing a decision of the Board of Appeal from being called into question indefinitely, given that, if no access to the document concerned is requested after it has been placed in the recipient’s inbox, the notification is deemed to have taken place on the fifth calendar day after being so placed.

Therefore, since it is common ground that the representative of The Green Effort requested access to the contested decision on 19 September 2017, that he downloaded it and became aware of it on that same day, the General Court did not err in law in deciding that the time limit for bringing an action against the contested decision expired on 29 November 2017, that decision having been notified on 19 September 2017. Therefore, the ground of appeal alleging that the starting point of the time limit prescribed for bringing an action was wrongly determined must be rejected as unfounded.

Converse lost a dispute for a shoe sole in the EU

pexels-photo-1353361.jpegThe General Court of the European Union has ruled in the case T-611/17 All Star (Converse) v EUIPO – Carrefour Hypermarchés. The case concerns the following already registered figurative European trademark for classes 17, 25,35:

CJ4JX4FZVCC523YA2TMALSKFLG766LZ66GCBK6GKXEAMQE5QIQ22H3KCJTKP6CENMYIUUNBNEKJQU.jpg

Against this mark, an application for a declaration of invalidity was filed by the French company Carrefour based on Article 52(1)(a) EUTMR and Article 7(1)(b) and (e)(ii) and (iii) EUTMR.

EUIPO invalidated the trademark at hand concluding that it is not possible for consumers to perceive it as a sign for trade origin. According to the Office, the practice of using simple geometric shapes for soles are widespread, as can be seen for many examples:

Untitled

Consumers will look on them as something that will help them to walk easily, comfortably or securely but not as a sign for trade origin.

Although the Office made some mistakes when it comes to the scope of goods and services for which this invalidation is applicable (corrected after that), the General Court confirmed this decision in its entirety.

The EUIPO decision is accessible here.

Industrial lighting is not similar to Christmas tree lights according to the EU Court

pexels-photo-937548.jpeg

The Malaysian company IQ Group Holdings filed an application for LUMIQS as an European trademark through the Madrid system for the following goods:

Class 11: ‘Lighting fixtures for commercial use; LED (light-emitting diodes) lamps; light-emitting lighting apparatus; apparatus for lighting; electric lighting apparatus; bulbs for lighting; casings for lights; ceiling light fittings; ceiling lights; desk lights; electric lights; emergency lights; filters for lighting apparatus; gas lights; light bars; light reflectors; light shades; lighting panels; outdoor lightings; outdoor lighting fittings; spotlights; lighting tubes; security lightings; but not including Christmas tree lights or any of the aforesaid goods being for use with Christmas tree lights, and not including festival lights or any of the aforesaid goods for use with festival lights’.

Against this application, an opposition was filed by the German company  Krinner Innovation on the ground of its earlier European trademark LIMIX for classes:

Class 11: ‘lighting installations, namely electric lights for Christmas trees (chains of candle lights or decorative Christmas tree lights, candle lights without cables, decorative Christmas tree lights without cables), decorative, low-voltage Christmas tree lights’;

Class 28: ‘electric decorations for Christmas trees (chains and decorative Christmas tree lights without cables)’;

Initially, EUIPO upheld the opposition considering both signs similar for similar goods.

In the appeal, however, the General Court annulled this decision concluding that EUIPO erred in its assessment regarding the goods similarity.

According to the court:

In the present case, however, it is clear that the protection of the earlier marks is explicitly restricted to certain goods in Classes 11 and 28 for which they have been registered and does not extend to the goods in Class 11 referred to in the international registration in question. Moreover, the latter registration expressly excludes ‘Christmas tree lights or any of the aforesaid goods being for use with Christmas tree lights’ and ‘festival lights or any of the aforesaid goods for use with festival lights’ covered by the earlier marks.

Furthermore, it is not disputed that the goods concerned have different intended purposes. Thus, the goods in Class 11 covered by the international registration designating the European Union are used for practical and industrial purposes, whereas the goods in Classes 11 and 28 covered by the earlier marks, in respect of which proof of genuine use has been demonstrated, serve exclusively decorative and aesthetic purposes for Christmas trees.

 It follows from the foregoing that lighting apparatus for industrial use, on the one hand, and electric lights and decorations, on the other hand, cannot be deemed to be similar on the basis of the mere fact that they are both ‘light sources’ or ‘electrical lighting apparatus’, given that the nature and intended purpose of those goods are different, and that they are neither complementary nor in competition.

In addition, the fact that goods may be sold in the same commercial establishments, such as department stores or supermarkets, is not of particular importance, since very different kinds of goods may be found in such retail outlets and consumers do not automatically assume that they are from the same source. Thus, the sale of the goods covered by the conflicting signs may take place in retail outlets which are geographically close, without this giving rise to a clear complementarity between those goods from the consumer’s point of view. The same applies when, as in the present case, the goods at issue are sold online.

The full text of this decision can be found here.

Marry Me – not in the EU

heart-3698156_960_720.jpgThe General Court of the European Union has recently ruled on a case where the Swiss tech company Marry Me Group tried to register two European trademarks – a work mark MARRY ME and the following figurative sign:

CJ4JX4FZVCC523YA2TMALSKFLH5TSQ342QTDQUBJRERJKLYVSPPLPHARBN6WLBS46KAGSLCIXL6RE.jpg

The trademarks were been applied for the following Nice classes:

9 Communication software; Mobile software; Application software for social networking services via the Internet.

38 Providing access to forums (chat rooms) for social networks; Electronic transmission of messages; Providing online chat rooms for the transmission of messages, comments and multimedia content among users; Online conferencing of greeting cards; Providing access to forums [chat rooms] for public networks.

45 Matching services provided through social networking; Meeting, dating and personal presentation services via the Internet; Personal computer related services.

EUIPO refused to register both of them based on absolute grounds – lack of distinctiveness and descriptiveness. According to the Office MARRY ME can be directly perceived by consumers as a dating service. In regard to the figurative mark, the presence of graphical elements in combination with the word part is not enough to overcome the descriptiveness because of the shape of hearts that plays the opposite effect, it emphasizes, even more, the meaning of the phrase.

Marry Me Group argued that they already had received registration for their trademarks in Germany. However, that was to no avail. EUIPO stressed that when it comes to European trademarks their meaning has to be assessed on every language in the EU. From that perspective, all English speaking consumers will get immediately the meaning of the phrase as it is stated. So the signs will be descriptive.

The Court upheld this decision which is a good example of the practice where undistinctive signs are registered in combination with graphics or other words. Although this is possible, it has to be taken into account the fact that those graphics and words have to be distinctive enough and definitely not to support the meaning of the descriptive parts of the relevant trademark.

Source: WIPR.