As a general rule of thumb, not every sign can be registered as a trademark. Trademark legislations around the world prohibit registration of descriptive and not distinctive signs. The reason for this is the fact that such signs cannot be perceived by consumers as a source of trade origin, that is to say that the product or services comes from a particular company.
One interesting case in that regard is from Hungary where a trademark application was filed for “BEER, BURGER, BARBECUE FESTIVAL” in Classes 32, 41 and 43.
The Hungarian Patent Office refused this application based on absolute grounds, descriptiveness and lack of distinctiveness. In the appeal the Court upheld this decision.
The Court stressed the well-known EU Court position that a combination of descriptive elements cannot make one sign distinctive as a whole.
The submitted evidence for acquires secondary distinctiveness was dismissed as irrelevant and not sufficient.
The case comes as a good example about the protection of such signs. By default this is not possible except in cases where distinctiveness is acquired through consistent and long term market use. This means that when you apply for such signs you need to be well prepared with evidence in advance in order to have chances for a successful registration.
Source: Danubia Patent and Law Office LLC – Sándor Vida
One of the biggest and most popular festivals in the world Coachella Valley Music and Arts Festival (‘Coachella’) was postponed for October this year.
However, this wasn’t the only problem for the company organizer of the festival AEG Presents Ltd.
Recently, the European Office for intellectual property – trademarks and design (EUIPO) has revoked one of the AEG Presents’ European trademarks: ‘Coachella’ registered in classes 9, 16, 25, 35, and 41.
The reason was a request by a Spanish company that applied for an EU trademark ‘Coachella’ for wines. AEG Presents filed an opposition against this mark and the Spanish company initiated revocation procedure based on lack of genuine use on the EU territory.
AEG Presents submitted evidence for its trademark well-known status amongst the consumer in the EU and the sales of tickets.
However, the EUIPO revoked the ‘Coachella’ for all classes except the following services in class 41: Organisation, production and conducting of performing arts entertainments and festivals, such services provided on-line from a computer database or the Internet; performance of music, such services provided on-line from a computer database or the Internet; musical and visual entertainment provided on-line from a computer database or the Internet; providing digital music from the Internet.
This case serves as a good example of the complexity of proving a trademark genuine use in one territory when the products and services associated with the mark are offered mainly on another territory.
Source: Marks & Clerk – Jack Kenny for Lexology.