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.

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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:

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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:

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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

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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:

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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.

Apple lost a lawsuit against Pear in the EU

fruit-2637058_960_720.jpgApple Inc. lost an interesting lawsuit before the General Court of the European Union regarding its famous trademark logo. The case at hand concerns an attempt by the Chinese company Pear Technologies Ltd to register the following European trademark:

download.pngFor classes of goods and services:

 Class 9: ‘Personal computers; laptop computers; handset and tablet mobile digital electronic devices for the sending and receiving of telephone calls and/or any digital data and for use as a handheld computer; apparatus for recording, transmission or reproduction of sound or images; videophones, video-tablets, pre-recorded computer programs for personal information management, database management software, electronic mail and messaging software, paging software, computer hardware, software and firmware, namely operating system programs, application development computer software programs for personal and handheld computers or handheld mobile digital electronic devices; computer, handheld and mobile handset device peripherals products; parts, fittings and accessories for all the aforesaid goods’;

Class 35: ‘Providing consultancy on digital marketing; providing CRM solution and business solution design services’;

Class 42: ‘Maintenance and updating of computer software; providing information concerning computer software via the internet and other computer and electronic communication networks; computer network services; providing consultancy on networking, webpage design; providing server hosting services; providing domain management services; provision of software applications for handheld, tablets, personal computer and laptop computer devices and data centre management; technical consultancy; all aforesaid services also as business to business and all aforesaid services also as business to consumer or consumers’.

Against this application an opposition was filed by Apple on the ground of its following earlier figurative trademark:

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For classes of goods and services:

Class 9: ‘… Computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; … digital music and/or video players; MP3 and other digital format audio players; … handheld and mobile digital electronic devices for the sending and receiving of telephone calls; … computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multi-media content, software featuring musical sound recordings, entertainment-related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; … computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server …’;

Class 35: ‘… Retail store and online store services in the field of entertainment featuring music, video, … musical works, pre-recorded audio and audio-visual works and related merchandise, and music related electronic products, via the Internet and other computer, electronic and communications networks …’;

Class 42: ‘… Application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing temporary internet access to use on-line non-downloadable software to enable users to program, audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs …’

Initially, the EUIPO upheld the opposition, the main argument for which was the proved reputation of Apple’s trademark among the consumers in the EU.

In the appeal, however, The General Court annulled this decision stating that EUIPO erred in its assessment. The reasons for this conclusion were that even though Apple’s sign has a reputation, which broadens its protection scope, this can be an argument only in a case that both trademarks are phonetically, visually and conceptually similar.  In the case at hand, this is not true.

  In that regard, it should be noted, first, that it is admittedly true that each of the conflicting marks may be described as using the image of a fruit. However, as all the parties to this action also argue, the mere fact that there is a generic term which includes the terms used to describe the semantic content of the marks at issue is not a relevant factor in the context of the conceptual comparison. In the same vein, it should be borne in mind that the examination of the similarity takes into consideration the conflicting marks as they have been registered or as they have been applied for. Accordingly, it should be observed that the conflicting marks evoke the concept of ‘fruit’ only in an indirect manner. It follows from the considerations set out in paragraphs 62 and 63 above that the conflicting marks will not be perceived as depicting two unidentifiable fruits, but rather as (i) an apple with a bite taken out of it, possessing a leaf, and (ii) a pear with a stem. In those circumstances, it is inconceivable that the relevant public displaying a high level of attention will use the term ‘fruit’ instead of ‘pear’ or ‘apple’ when referring to the conflicting marks.

  Next, it should be borne in mind that, according to the case-law cited in paragraphs 22 and 61 above, the comparison of the conflicting marks must be based on the overall impression given by them, by reference to the intrinsic qualities of those marks, and, moreover, conceptual similarity arises from the fact that both marks use images with a similar semantic content. These considerations counter the taking into account of factors such as those mentioned in paragraph 32 of the contested decision, which are not based on the perception of the semantic content of the images used by the conflicting marks, as they have been registered or as they have been applied for, but which are distant from the actual depiction of them. The protection which is granted to an earlier figurative mark does not apply, in the absence of commonalities with the depiction of the mark cited in opposition, to the general category of phenomena that it depicts. The Board of Appeal was therefore wrong to take the view that the marks at issue could be regarded as being conceptually similar on the sole ground that the fruits which they depicted shared several characteristics in real life.

Case T‑215/17, Pear Technologies Ltd v European Union Intellectual Property Office (EUIPO)

The Polo/Lauren Company won a case in The EU regarding its famous logo

polo-1039337_960_720.jpgThe Board of Appeal of the EUIPO has ruled in case R 1272/2018-5 STYLE & TASTE, S.L. v The Polo/Lauren Company L.P., which concerns an invalidation procedure against the following European trademark registered in 2005 for classes 9, 20, 24 and 25:

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The ground for this invalidation is the following earlier registered Spanish industrial designs:

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The EUIPO dismissed the request because:

  • by not submitting the translation of the registered certificate for the earlier Spanish industrial design, the cancellation applicant did not prove the validity and scope of protection of this earlier right,
  • mere reference to national law would not be considered sufficient, and
  • the cancellation applicant did not submit the necessary national legislation in force and did not put forward a cogent line of argument as to why it would succeed under the specific national law in preventing the use of the contested EUTM.

The decision was appealed.

According to the the Board of Appeal, the applicant failed to prove its rights and to submit the necessary argumentation in order to invalidate the trademark at hand. What’s more, after some inspection, it is turned out that the aforementioned designs are not valid anymore due to a lack of renewal.

This case comes to show how essential is the good preparation and implementation for initiating such procedures before the Patent Offices around the world.

Source: IPKat.