How a trademark can become a generic term and what is the danger in that regard?

door-green-closed-lock.jpgThe US-based company Safe Skies successfully revoked a European trademark ‘TSA lock’  registered by Travel Sentry for classes:

Class 6:      Metal locks (for luggage).

Class 18:    Bags; backpacks, canvas backpacks, athletics bags, carry-on bags, gym bags, travel bags, beach bags, briefcases, purses, suitcases, trunks, luggage, straps for luggage, waist packs, and wallets.

Class 20:    Non-metal locks (for luggage).

The ground for this revocation was Article 58(1)(b) and (c) EUTMR:

The rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:

  • (b) if, in consequence of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service in respect of which it is registered;
  • (c) if, in consequence of the use made of the trademark by the proprietor of the trademark or with his consent in respect of the goods or services for which it is registered, the trademark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

According to Safe Skies, this trademark hadn’t been used as a trademark sign but only as a product name. In the case at hand, TSA lock’ was in use for special type of lock for luggage which allows Border Agencies to open it using a universal master key.

EUIPO revoked the trademark dismissing the owner’s arguments that nobody in the EU understands TSA as an abbreviation for Transportation Security Administration.

According to the Office, this is irrelevant because the consumers of this product named it as TSA lock not perceiving it as a trademark sign.

The submitted pieces of evidence weren’t enough to overcome this conclusion.

This case, although rare, is very essential when it comes to trademark protection because it shows clearly what is the danger when one trademark is used as a product name which sometimes is very tempting from marketing point of view.

Source: WIPR.

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What can you find in the latest issue of WIPO Magazine?

pexels-photo-315658.jpegWIPO announced the new issue of it WIPO Magazine, where you can find:

  • GII 2019: Creating healthy lives – the future of medical innovation
  • Curbing cultural appropriation in the fashion industry with intellectual property
  • Singapore’s biggest copyright reform in 30 years
  • The harsh reality of life as a musician: an interview with Miranda Mulholland
  • With Teqball the world is curved
  • Five years after Alice: five lessons learned from the treatment of software patents in litigation
  • A History of Intellectual Property in 50 Objects

For more information here.

Poland attacks the new EU Copyright Directive before the EU Court

notebook-614213_960_720.jpgPoland initiated a legal proceeding against the new EU Copyright Directive and in particular against the texts that require automatic filtering of content. According to the complaint:

The Republic of Poland seeks the annulment of Article 17(4)(b) and Article 17(4)(c), in fine (i.e. the part containing the following wording: ‘and made best efforts to prevent their future uploads in accordance with point (b)’) of Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC (OJ EU L 130 of 17.5.2019, p. 92) and an order that the European Parliament and the Council of the European Union are to pay the costs.

In the alternative, should the Court find that the contested provisions cannot be deleted from Article 17 of Directive (EU) 2019/790 without substantively changing the rules contained in the remaining provisions of that article, the Republic of Poland claims that the Court should annul Article 17 of Directive (EU) 2019/790 in its entirety.

The Republic of Poland raises against that the contested provisions of Directive 2019/790 a plea alleging infringement of the right to freedom of expression and information guaranteed by Article 11 of the Charter of Fundamental Rights of the European Union.

The Republic of Poland claims specifically that the imposition on online content-sharing service providers of the obligation to make best efforts to ensure the unavailability of specific works and other subject matter for which the rightholders have provided the service providers with the relevant and necessary information (point (b) of Article 17(4) of Directive 2019/790) and the imposition on online content-sharing service providers of the obligation to make best efforts to prevent the future uploads of protected works or other subject-matter for which the rightsholders have lodged a sufficiently substantiated notice (point (c), in fine, of Article 17(4) of Directive 2019/790) make it necessary for the service providers — in order to avoid liability — to carry out prior automatic verification (filtering) of content uploaded online by users, and therefore make it necessary to introduce preventive control mechanisms. Such mechanisms undermine the essence of the right to freedom of expression and information and do not comply with the requirement that limitations imposed on that right be proportional and necessary.

Why ‘Botanical Origin’ cannot be a European trademark?

water-lily-1857350_960_720The EUIPO Board of Appeal has rules in case R 881/2019-5, which concerns an attempt for registration of a word European trademark for ‘Botanical Origin’ in class 3:

All purpose cleaning preparations for household, commercial, industrial and institutional use; cleaning preparations for toilets, bath tubs, sinks and floors; cleaning preparations for kitchen and bathroom surfaces; disposable wipes impregnated with cleaning compounds for use in bathrooms and kitchens; polishing preparations for kitchen and glassware; oven cleaning preparations; stove-top cleaning preparations; cleaning preparations for vitroceramic and kitchen surfaces; glass and metal cleaning preparations; window cleaning preparations; bleaching preparations and other substances for laundry use, whether in solid, fluid or gel form; laundry preparations; carpet cleaning preparations; decalcifying and descaling preparations for household purposes; fabric softeners; laundry detergents and additives; stain removing preparations; scent boosters; prewash and stain loosening preparations; starch; laundry blue; bleaching preparations and other substances for use in dishwashing; cleaning, polishing, scouring and abrasive preparations; dishwasher cleaners, fresheners and deodorizers; rinsing agents; preparations for cleaning and de-clogging dishwashers; decalcifying and descaling agents for household purposes; dish detergents; all the above-mentioned products with or without disinfecting components; soaps; detergents; rust removers and grease removers; drain and sink unblocking preparations; preparations for prevention of limescale, rust or grease

EUIPO refused to register this sign based on absolute grounds art. 7(1)(b) EUTMR, lack of distinctiveness. The decision was appealed.

The Board of Appeal upheld the initial EUIPO position. The arguments for this is that the expression Botanical Origin would be perceived by the relevant public as information that the goods come from a botanical source and/or contain ingredients that have a plant-based origin.

The applicant argued that the sign is distinctive at least for some of the goods where there is no such connotation.

This was dismissed too. According to the Board, the phrase would be “perceived by the relevant public as only providing promotional information on the nature, purpose, performance and subject matter of the goods and services concerned and not as indicating their [commercial] origin”.

Source: WIPR.

Uber won another trademark dispute in the UK

pexels-photo-417005Uber won an opposition in the UK against a trademark application ‘ChefUber’ applied for in class 35 – recruitment services in the catering trade.

Against this application, Uber invoked several of its earlier UBER trademarks for the same class including the UberEats trademark used for food delivery. According to the company its marks are similar to the later one in a greate scale.

The Applicant argued that there is no similarity due to the fact that the first part of its mark is Chef, which makes the sign to stand alone.

The Patent Office came to the conclusion that the services between the trademarks at hand are similar or identical.

When it comes to the sign, the Office considered them confusingly similar. The fact that there is a Chef in front of Uber in the later mark is not enough to overcome this possibility because this word is not distinctive and it is even descriptive for the listed services.

What’s more, the Office considered that the later sign tries to take advantage of the Uber reputation as a brand on the market.

Source: WIPR.

Balsamico and an Italian-German legal conflict

food-3360720_960_720.jpgThe Advocate General of the European Court G. HOGAN has issued his opinion in case C‑432/18 Consorzio Tutela Aceto Balsamico di Modena v BALEMA GmbH. The case concerns the following:

BALEMA GmbH produces vinegar-based products and markets them in the Baden region (Germany). For at least 25 years, it has been selling products under the designations ‘Balsamico’ and ‘Deutscher Balsamico’. The labels on its products bear the legend ‘Theo der Essigbrauer, Holzfassreifung, Deutscher Balsamico traditionell, naturtrüb aus badischen Weinen’ [Theo the vinegar brewer, matured in wooden barrels, German balsamic vinegar, traditional, naturally cloudy, made from Baden wine] or ‘1. Deutsches Essig-Brauhaus, Premium, 1868, Balsamico, Rezeptur No 3’ [first German vinegar brewery, premium, 1868, balsamic, recipe No 3].

It is agreed that BALEMA’s products designated as ‘Balsamico’ are not covered by the registration ‘Aceto Balsamico di Modena (PGI)’ pursuant to Article 1 of and Annex I to Regulation No 583/2009 because they do not fulfill the product specifications contained in Annex II of that regulation.

Consorzio Tutela Aceto Balsamico di Modena (‘the Consorzio’) is a consortium of producers of the products designated by the name ‘Aceto Balsamico di Modena’. It considers that BALEMA’s use of the designation ‘Balsamico’ infringes the protected geographical indication ‘Aceto Balsamico di Modena’. The Consorzio thus served a warning notice on BALEMA. BALEMA, in turn, brought an action in the German courts against the Consorzio seeking a negative declaration to the effect that there had been no trade mark infringement. That action was unsuccessful.

In the appeal on the merits, BALEMA sought a declaration that it is not obliged to refrain from using the designation ‘Balsamico’ for vinegar-based products produced in Germany. The appeal on the merits was upheld as the court considered that the use of the name ‘Balsamico’ in respect of vinegar did not infringe Article 13(1)(b) of Regulation No 1151/2012. According to that court, the protection for the name ‘Aceto Balsamico di Modena’ granted by Regulation No 583/2009 was conferred only on the entire name and not on the non-geographical components of the term as a whole, even if used jointly.

The case was appealed to the referring court.

The referring court considers that the appeal on a point of law will succeed if the names ‘Balsamico’ and ‘Deutscher Balsamico’ used by BALEMA infringe Article 13(1)(a) or (b) of Regulation No 1151/2012. According to that court such a finding would require that the protection of the entire name ‘Aceto Balsamico di Modena’ granted by Article 1 of Regulation No 583/2009 also covers the use of the individual non-geographical components of the term as a whole (‘Aceto’, ‘Balsamico’, ‘Aceto Balsamico’).

The Federal Court of Justice notes that it is clear from the second subparagraph of Article 13(1) of Regulation No 1151/2012 and the case-law of the Court that, pursuant to Article 13(1)(a) or (b) of that regulation, a protected geographical indication that consists of several terms can be protected against not only the use of the entire indication, but also against the use of individual terms of that indication. The second subparagraph of Article 13(1) of Regulation No 1151/2012 governs the specific case in which a protected geographical indication contains within it the name of a product which is considered to be generic. That provision stipulates that the use of that generic name is not to be considered to be contrary to Article 13(1)(a) or (b) of that regulation. The Federal Court of Justice also refers to the fact that the Commission regulation registering the name may restrict the scope of the protection of a protected geographical indication that consists of several terms so that it does not cover the use of individual terms of that indication. In that regard, the fact that an applicant may state that it does not seek protection for all elements of a name shows that the protection granted by its registration can be restricted.

The Federal Court of Justice considers that recitals 3, 5 and 10 of Regulation No 583/2009 militate in favor of a restriction of the scope of protection to the name ‘Aceto Balsamico di Modena’ as a whole, to the exclusion of individual non-geographical components. It also considers that, contrary to the view taken in the appeal on a point of law, the assumption that protection is granted to the name ‘Aceto Balsamico di Modena’ as a whole did not give rise to an inconsistency with the registration of the protected designations of origin ‘Aceto balsamico tradizionale di Modena’ and ‘Aceto balsamico tradizionale di Reggio Emilia’. Contrary to Regulation No 583/2009, the references to a restricted scope of protection in Regulation No 813/2000, which may be attributable to the fact that there was no opposition by Member States pursuant to Article 7 of Council Regulation (EEC) No 2081/92 (now Articles 51 and 52 of Regulation No 1151/2012) in the preceding registration procedure, does not preclude a restriction of the protective effect of the name ‘Aceto Balsamico di Modena’ as a whole.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does the protection of the entire name “Aceto Balsamico di Modena” extend to the use of the individual non-geographical components of the term as a whole (“Aceto”, “Balsamico”, “Aceto Balsamico”)?’

The Advocate’s position is:

The protection of the entire name ‘Aceto Balsamico di Modena’ under Commission Regulation (EC) No 583/2009 of 3 July 2009 does not extend to the use of the individual common words or non-geographical components, namely, ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’.