Is there bad faith in the case of new registration of former trademarks?

Is it possible for an old former trademark that is not protected anymore to be registered by a new owner and whether this can be a bad faith practice? This is the question to which the General Court of the European Union has answered recently in the case T‑250/21 Ladislav Zdút v EUIPO: The case has the following background:

On 6 May 2013,  Ladislav Zdút filed an application for registration of an EU trademark with EUIPO for the following sign:

The goods for which registration was sought were:

–  Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks’;

–  Class 24: ‘Bed covers; Table covers’;

–  Class 25: ‘Clothing, footwear, headgear’.

The mark was registered on 31 October 2014 under number 11794112.

On 17 June 2019, the interveners, Ms Isabel Nehera, Mr Jean-Henri Nehera and Ms Natacha Sehnal, filed an application for a declaration of invalidity against that mark (‘the contested mark’), in accordance with the provisions of Article 59(1)(b) of Regulation 2017/1001, in respect of all the goods covered by that mark. They claimed that the applicant was acting in bad faith when he filed the application for registration of the contested mark. They stated, inter alia, that in Czechoslovakia in the 1930s, their grandfather, Mr Jan Nehera, had established a business marketing clothing and accessories and had filed and used a national mark identical to the contested mark (‘the former Czechoslovak trademark’).

By decision of 22 April 2020, the Cancellation Division of EUIPO dismissed the application for a declaration of invalidity, on the ground that the applicant’s bad faith when he filed the contested mark had not been established.

On 15 June 2020, the applicants filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.

By the contested decision, the Second Board of Appeal of EUIPO upheld the interveners’ appeal, annulled the decision of the Cancellation Division, and declared the contested mark invalid.

In essence, the Board of Appeal found that the former Czechoslovak trademark was a well-known mark and had been put to genuine use in Czechoslovakia in the 1930s. It held that the applicant was aware of the existence and celebrity both of Mr Jan Nehera and of the former Czechoslovak trademark, which retained a certain surviving reputation. The Board of Appeal also stated that the applicant had attempted to create an association between himself and that former Czechoslovak trademark. In those circumstances, the Board of Appeal considered that the applicant’s intention was to take unfair advantage of the reputation of Mr Jan Nehera and of the former Czechoslovak trademark. It found that the applicant was acting in bad faith when he filed the application for registration of the contested mark.

The decision was appealed.

According to the Court, the fact that one mark was been protected in the past, being reputable amongst consumers, does not mean automatically that every new application for the same mark will be deemed as made in bad faith. It is necessary for the reputation of the old mark still to exist and the bad faith actions to be proved.

According to the Court:

However, it should be borne in mind that, according to the case-law, the existence on the part of the relevant public of a link between a later trademark and a former sign or name cannot be sufficient, on its own, to support a finding that unfair advantage was taken of the reputation of the sign or of the former name.

In addition, it should be noted that the concept of unfair advantage being taken of the reputation of a sign or a name covers a situation in which a third party rides on the coat-tails of a formerly renowned sign or name in order to benefit from its power of attraction, its reputation and its prestige and, without any financial compensation and without having to make any efforts of its own in that regard, to exploit the commercial effort expended by the proprietor or user of that sign or of that name in order to create and maintain the image of that sign or of that name.

However, in the present case, the applicant claims, unchallenged either by EUIPO or by the interveners, that in 2013, the former Czechoslovak trademark and the name of Mr Jan Nehera were completely forgotten by the relevant public, and that he himself devoted considerable effort, time and money to revive the Nehera mark and to make known the history of Mr Jan Nehera and of his business. It follows that, far from merely having exploited in a parasitic way the past reputation of the former Czechoslovak trademark and the name of Mr Jan Nehera, the applicant made his own commercial efforts in order to revive the image of the former Czechoslovak trademark and thus, at his own expense, to restore that reputation. In those circumstances, the mere fact of having referred, for the purposes of promoting the contested mark, to the historic image of Mr Jan Nehera and of the former Czechoslovak trademark does not appear to be contrary to honest practices in industrial or commercial matters.

Secondly, and in any event, the former Czechoslovak trademark and Mr Jan Nehera’s name no longer benefited from any legal protection in favour of a third party at the date on which the application for registration of the contested mark was filed (see paragraphs 42 and 43 above). It follows that Mr Jan Nehera’s descendants and heirs did not hold any right that might be susceptible to fraud or to being usurped by the applicant. Therefore it does not appear that, in applying for registration of the contested mark, the applicant intended to defraud the descendants and heirs of Mr Jan Nehera or to usurp their alleged rights.

In the fifth and last place, EUIPO claims, as the Board of Appeal stated in paragraph 36 of the contested decision, that the concept of bad faith does not necessarily imply any degree of moral turpitude.

In that regard, it is sufficient to note that, according to the case-law cited in paragraph 23 above, the concept of bad faith presupposes the presence of a dishonest state of mind or intention. In the present case, EUIPO and the interveners have not established that the applicant was driven by a dishonest state of mind or intention when he filed the application for registration of the contested mark.

It follows from all of the foregoing that the Board of Appeal erred in finding that the applicant intended to take unfair advantage of the reputation of Mr Jan Nehera and of the former Czechoslovak trademark and in finding that he was acting in bad faith when filing the application for registration of the contested mark.

Louis Vuitton lost a trademark dispute in the EU for the abbreviations LV and NL

EUIPO has ruled recently in a dispute where Louis Vuitton tried to defend its famous abbreviation LV in the EU.

The case at hand concerns an application by one individual for the following figurative European trademarks in classes 25 and 26:

Against this application, an opposition was filed by Louis Vuitton based on the following earlier mark for the same classes of goods:

According to the company, both signs were confusingly similar for identical and similar goods especially in the light of the reputation attached to Louis Vuitton’s famous abbreviation.

Surprisingly or not so, the EUIPO dismissed the opposition finding the marks dissimilar.

According to the Office:

In the present case, the goods assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention varies from average to above average, bearing in mind that part of the goods concerned have a rather specialised nature and that they can have an impact on the final products manufactured by the users, and consequently on the users’ business.

The Office found that both signs share only L as a common letter in the abbreviations in common stylization while the other letters were different which was stressed by the presence of the words  LOVES VITTORIO too.

The Office concluded that:

The signs are visually and aurally similar to a very low degree and conceptually not similar.

This is not sufficient to lead to a likelihood of confusion, especially considering that the other letter is different (‘V/N’) and the quite remarkable presence of additional words in the contested sign. As already introduced above, the mere use of a similar stylisation, in presence of different elements of the signs, is not sufficient to lead the relevant public to think that the goods at issue can originate from the same or a economically linked undertaking. In fact, it is to be noted that consumers when encountering a fanciful stylisation of a verbal element tend to find the easiest way to address it and, based on their common knowledge and previous experience of the market, will tend to perceive a sign beyond its stylisation as a string of letters forming a verbal element. Therefore, despite their stylisation, the relevant public will be able to perceive immediately the letters ‘LV’ (or ‘VL’) in the earlier mark and ‘NL’ (or ‘LN’) in the contested sign. As explained above, the earlier mark is a short mark and the fact that it has only one letter in common with the first two letters of the contested sign is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs: the signs are not sufficiently similar to lead to a likelihood of confusion.

The EUIPO dismissed the claimed reputation of the earlier mark because Louis Vuitton hadn’t submitted the necessary evidence for that purpose in the prescribed term.

Source: TFL.

Graffiti artist Futura sues The North Face for a copyright infringement

Graffiti artist Futura initiated a lawsuit for copyright infringement against the fashion company The North Face.

According to the artist, whose real name is Leonard McGurr, the company launched an advertising campaign that uses a logo which is similar to the following graphic design created by him:

The North Face’s logo design is:

Leonard McGurr stated that the company didn’t ask for permission to include his work in its advertisements. As evidence that The North Face was using his design he pointed out the fact that they use a trademark Futurelight that associates with his artistic name Futura.

In the lawsuit, initiated in California, US, Leonard McGurr is seeking an injunction as well as “exemplary or punitive damages”.

Source: WIPR.

Whether Tiffany is a generic term – a question for $21 million

One interesting recent lawsuit from the US where Tiffany & Co. initiated legal proceeding against Costco Wholesale.

The dispute at hand concerns unbranded diamond engagement rings labeled “Tiffany” on point-of-sale signage.

According to Tiffany & Co. this trade practice was a trademark infringement.

According to Costco there was no infringement because the term Tiffany has become generic for those sort of products. It merely indicated the setting not the source of trade origin. Because of that the use of the word was fair.

The New York court dismissed the Costco’s arguments as groundless stating that the trademark infringement was completely clear. The court awarded $21 million in damages.

In the appeal, however, the U.S. Court of Appeals disagreed with this decision. According to the court, the Costco’s argumentation for possible generic character of Tiffany wasn’t scrutinize enough. Because of that the court returned the case to the district court for a new trial.

It would be interesting whether Costco will be able to prove that Tiffany is a generic term which sounds a bit unlikely at that point.

Source: John M. Bowler and Shaleen J. Patel – Troutman Pepper за Lexology.

Can fashion designers register their names as trademarks in Japan?

One interesting case from Japan regarding the possibility for registration of personal names as trademarks.

Kabushiki Kaisha Soloist, founded by the well-know fashion designer Takahiro Miyashita applied for the following trademark TAKAHIROMIYASHITATheSoloist for classes 14, 18 and 25.

The Japanese Patent Offices refused to registered this sign based on absolute grounds – name of any person cannot be registered as a trademark for the purpose of protecting personal rights of a living individual.

According to the Office, it was clear that other people in Japan have the same name, so its monopolization was not been possible. The only exception from this rule is if the applicant provide the Office with a written consent from all people who bear the same name. That wasn’t happen.

In the appeal the IP High Court upheld this decision. The fact that the trademark application includes the name of the company was not enough to overcome the law prohibition in the case at hand.

In Europe, personal names are possible to be registered as trademarks, for example, but in many cases the applicant should prove acquired distinctiveness among consumers in order to succeed.

Source: Masaki MIKAMI (Marks IP)

Diego Maradona won a lawsuit against Dolce & Gabbana

Diego Maradona prevailed in a lawsuit against the famous Italian fashion house Dolce & Gabbana.

The reason for the dispute was an event organised by Dolce & Gabbana which aim was to celebrate the symbols and the story of the city of Naples.

During this event, one model showed a blue and white football shirt with number 10 and the name of the former footballer.

As it is well-known, Diego Maradona made a name as one of the best footballers in the world when he played for the local football club Napoli in the 80s of the 20th century.

The problem was that Dolce & Gabbana didn’t ask Maradona whether they can use his name for this event. According to the article 8(3) of The Italian Industrial Property Code, names of famous people are protected when they are used commercially even in case these names are not registered as trademarks.

The Court in Milan ruled in favor of Maradona. The reason for this was the fact that by using the name of the famous footballer, the fashion house could lead consumers to the conclusion that there was a commercial relationships between both parties. Merchandising and celebrities endorsement campaigns are a widespread marketing approach around the world.

In that way, Dolce & Gabbana took advantage of the name and reputation of Diego Maradona.

The fact that the event was only to praise the symbols of Naples could not warrant the use of the footballer’s names because it was possible consumers to be misled to belief that there were commercial relationships between both parties which was not the case.

The Court ordered 78 000 dollars in damages.

Source: WIPR.

Off-White can be a trademark in the EU

The US fashion company Off-White succeeded to register the following European combined trademark:

The classes of goods mentioned in the application were:

  • Class 3, including soaps for personal use, perfumery and colognes; 
  • Class 9, including glasses and sunglasses; 
  • Class 14, including jewellery, cufflinks and watches; and 
  • Class 20, including pillows and cushions. 

The EUIPO issued a refusal against this application based on absolute grounds – Article 7(1)(b) and (c) of Regulation 2017/1001 (the EU Trade Mark Regulation, or EUTMR.

The word part of the mark OFF-WHITE can be a descriptive characteristic for the mentioned goods because it means a color that is close to white with a grey or yellow tinge.

The Board of Appeal upheld this position for classes 9 and 20 and for “watches, wall clocks, horological and chronometric instruments; watch bands; presentation boxes for watches; and jewellery cases” and “precious stones; and semi-precious stones” in Class 14.

In the appeal, however, the General Court of the EU annulled this decision. According to the Court, although color is a product’s characteristic it can be descriptive if only it is an intrinsic, permanent characteristic inherent to the nature of the goods. This was not the case when it comes to Off-White because the mentioned goods can be offered in variety of colors. There is no single color that to be deeply connected to their nature as goods.

Apart from this the Court considered that off-white color cannot create an aesthetic value for the goods which to be a reason for purchasing because color is a subjective matter and every consumer has a different preference in that regard.

Source: IPKat.