McDonald’s lost a Big Mac dispute in the EU

pexels-photo-1600727McDonald ’s lost a trademark dispute with the Irish food chain Supermac’s regarding its European trademark ‘Big Mac’. The Irish company attacked this mark with a request for cancelation based on a lack of genuine use on the territory of EU.

According to the EU law, if the trademark owner doesn’t use its mark for a period of 5 years before the cancelation request, he can lose the rights over its mark unless evidence for genuine use is submitted.

McDonald’s did exactly this, submitting affidavits with sales figures under the grand as well as brochures and printouts of the company’s websites and a Wikipedia page providing information on the Big Mac.

According to the EUIPO, however, these materials don’t show a real use of the aforementioned trademark. First of all, affidavits are signed by McDonald ’s employees which give them less weight because they are not independent evidence.

Regarding the brochures, there was no information on how they were used and whether they reached the consumers. The printouts from the company’s site can’t show any interactions with the consumers or any sales.

“Wikipedia entries cannot be considered as a reliable source of information”, as they can be edited by the website’s users, the ruling said.

It is highly likely that McDonald ’s will appeal this decision. Nevertheless, this case clearly shows the need for thorough preparation when it comes to gathering evidence for such trademark disputes because otherwise the trademark rights can be threatened.

Source: WIPR.

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Beats Electronics won a trademark case in the EU

pexels-photo-577769.jpegThe Board of Appeal of the EUIPO has ruled in a case regarding an application for the following European trademark applied for classes 9 (apparatus for recording, transmission or reproduction of sound or images), 35 (business management, business administration, market research services, export services), and 38 (telecommunication services, in particular mobile telephony, broadcasting of radio and television programmes):

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Against this application, an opposition was filed by Beats Electronics based on the following earlier European trademarks for classes 9 (audio and video equipment including audio players, video players, media players, portable media players), 38 (providing online bulletin boards in the fields of media, music, video, film, book and television for the transmission of messages among users), and 41 (nightclub services, dance club services, provision of live entertainment and recorded entertainment) of the Nice Classification. EUTM 2 was for the same goods and services, with the addition of Class 42 (providing an interactive online network website, via electronic communication networks):

Initially, the EUIPO’s Opposition Division dismissed the opposition stating that there is no possibility for consumer confusion concerning both signs despite the identical and similar goods. The claim for trademarks with reputation by Beats Electronics was dismissed as not proved.

The decision was appealed and the Board of Appeal reversed it finding that the Opposition Division erred in its conclusions.

According to the the Board, both trademarks are similar and can create confusion amongst the consumers. The arguments behind this position were that both signs have similar visual elements as well as colors. The differences are not enough to overcome similarities. What’s more the earlier marks have a reputation on the market which was proved by the owner.

Source: Nedim Malovic, IPKat.

Extracts from TMView can be used in EUIPO proceedings

flag-2608475_960_720The General Court of the European Union has ruled in Case T-848/16 Deichmann v EUIPO – Vans (V). According to its decision, extracts from TMview are acceptable evidence in proceedings before EUIPO in order to prove registered rights over trademarks.

As it is well-known, TMView is a database that gives access not only to European trademarks but to national once from the relevant participating Patent Offices.

The General Court’s position is that such extracts from this database can represent a copy of trademark registration certificate if they contain all relevant information. The onliest requirement here is that if the list of goods or services contained in the TMview extract is not in the language of the proceedings, the excerpt must be submitted together with a translation of that list.

For more Information here.

Heineken Italy lost a beer lawsuit in the EU

beer-2695358_960_720Heineken Italy lost a trademark case T‑378/17 before the General Court of the EU, which concerns a company’s attempt to register the following EU trademark for classes 32 and 33:downloadAgainst this application, an opposition was filed by the Spanish company La Zaragozana, SA based on an earlier Spanish trademark CERVISIA AMBAR for class 32 – beer.

Initially, the EUIPO upheld the opposition due to the similarity between the word parts of the marks in the presence of similar and identical goods.

The Board of Appeal, however, annulled this decision stating that the signs are not similar because the visual elements in the later mark create a difference. What’s more the word part in the mark applied for was barely legible.

The General Court revoked this decision accepting that both trademarks are confusingly similar. The reasons for this is that the word part in the later mark can be read by the consumers and the fact that visual elements cannot outweigh the word once in such an assessment.

Source: WIPR.

Smart Things cannot be a trademark in The EU

turn-on-2944067_960_720Samsung Electronics won an invalidation proceeding against the following European trademark registered for classes 9, 20 and 35:

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The invalidation was based on absolute grounds – descriptiveness in relation to the trademark’s goods and services. The applicant argued that its mark was distinctive because when it was applied for in 2012 it wasn’t included in dictionaries and on top of that the concept for the internet of things wasn’t popular among consumers.

Initially, the EUIPO dismissed Samsung’s request stating that although Smart Things are descriptive words the presence of an emoticon in the sign is enough to create a necessary level of distinctiveness.

The decision was appealed.

According to the Board of Appeal, the trademark at hand is fully descriptive for the relevant goods and services and this cannot be overcome by the emoticon. What’s more, this phrase has to be left free for use for all market participant taking into account that it is highly used for different technologies. The fact that it wasn’t included in a dictionary in 2012 is irrelevant for the case.

Source: WIPR.

Can H2O+ be a trademark in The EU?

drop-of-water-545377_960_720The General Court of the European Union has issued a decision on case T‑824/17 H2O Plus LLC v EUIPO, which concerns an EU application filed by the US company H2O Plus for the following trademark:

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for the following goods:

Class 3: ‘Non-medicated skin care preparations; cosmetic preparations for skin care; cosmetic preparations for body care; skin care products, namely non-medicated skin serum, beauty serums, non-medicated anti-aging serum, cosmetic creams, face and body creams, eye creams, anti-wrinkle creams, anti-aging creams, night creams, age spot reducing creams; sunscreen creams, nail cream, face and body lotions, skin lotions, body lotions with SPF, gels for cosmetic purposes, beauty gels and shower and bath gel; eye lotions; eye gels; facial masks; facial washes; facial creams; facial cleansers; facial moisturisers; skin moisturisers; skin masks; cosmetic masks; beauty masks; gel eye masks; toning lotion for the face, body and hands; anti-aging toner; skin toners; soap; anti-aging cleanser; skin cleansers, wipes impregnated with a skin cleanser; skin cleansing gels; skin care preparations, namely skin peels; cosmetic preparations, namely, firming creams, firming lotions, facial moisturiser with SPF, face powder, non-medicated exfoliating preparations for use on the face, skin, body, hands and feet; lip cream; lip balm; non-medicated lip care preparations; lip balm with SPF; make-up remover; cloths or tissues impregnated with a skin cleanser; cosmetic body scrubs for the face, skin, body, hands and feet; beauty creams for body care; body and beauty care cosmetics; body wash; skin care preparations, namely, body balm, skin and body topical lotions, creams and oils for cosmetic use; body butter, body oil, hair care preparations, hair shampoos and conditioners; hand cream; non-medicated foot cream and foot scrubs; lipstick; after-shave balms; shaving soaps; shaving preparations, pre-shave creams, pre-shave oils; non-medicated bath salts, non-medicated bath preparations; skin refreshers; antiperspirants; personal deodorants; deodorants for body care; cosmetic pads; pre-moistened cosmetic towelettes; body masks; body washes; cosmetic preparations for eye care; lip glosses; nail care preparations; non-medicated acne treatment lotions; non-medicated acne treatment preparations;’

Class 5: ‘Medicated sunscreen, namely, lotions containing sunscreen; acne treatment preparations, namely, cleansing pads, lotions, creams, and cleansers’.

The EUIPO refused to register this mark based on the absolute grounds – descriptiveness and lack of distinctiveness with regard to above-mentioned goods. Consumers will perceive the sign as an indication of the ingredients and chemical formula of the products and not as a source of origin. The presence of + sign can be deemed as a quality indication.

The decision was appealed. According to the company, the combination between letters, numbers and signs can represent a distinctive trademark.

The court dismissed the appeal upholding the EUIPO position. Although not all of the products, consist predominantly of water, still these products contain water so the trademark applied for is descriptive. The + sign is not enough to overcome this.

PepsiCo won a crisp lawsuit in the EU

snack-1555522_960_720PepsiCo won lawsuit T‑82/17 before the General Court of the European Union regarding invalidation of ‘Exxtra Deep’ European trademark registered by the German-based company Intersnack Group for classes 29, 30 and 31.

According to PepsiCo, this trademark is descriptive and devoid of distinctive character for the goods in the above-mentioned classes.

The EUIPO upheld the invalidation partly, accepting that DEEP can be used from manufacturers to describe the crisp deep ridges, that is to say, the product shape. For some of the products, however, the trademark is not descriptive, namely for dried fruits and preserved vegetables.

PepsiCo appealed this decision.

According to the General Court, the EUIPO erred in its assessment because crisp can be produced based on fruits and vegetables too.

First, as is expressly indicated in the description of the goods in Class 29 covered by the contested mark, snack products (in particular crisps) are made from potatoes, which, it cannot be denied, are vegetables, as demonstrated in particular by the definition in the Oxford English Dictionary, produced by the applicant before EUIPO, according to which a vegetable is ‘any living organism that is not an animal; specifically one belonging to the plant kingdom’. That fact is not disputed by the intervener.

Second, crisps can be made from vegetables other than potatoes, or from fruit, as the applicant points out.

Third, there is nothing to prevent crisps made from vegetables or from fruit from being regarded as dried or cooked vegetables or fruits. As the applicant notes, crisps can be fried or dried or cooked.

Fourth, as the applicant correctly states, fruit and vegetables in Class 29 are ‘preserved, dried and cooked’. They are not fresh fruit, which comes under Class 31. Crisps, or more broadly, ‘extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks’, are produced from preserved, dried or cooked vegetables and fruits.

Thus, on the grounds put forward by the applicant, which are not disputed by EUIPO, ‘extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks’, in Class 29, are covered by the category of ‘preserved, dried and cooked fruit and vegetables’ in the same class.