AI has become a really trendy topic in recent years. With the emergence of AI tools such as Chat GPT, DeepAI, and DALL-E 2 many people have started to realize how useful AI could be for their daily life.
Such innovations although creating fun and excitement have the potential to create a lot of disturbance when it comes to future job replacements or some moral and legal issues.
One interesting case, in that regard, is reported by the IPKat blog. It focuses our attention on an attempt by Ms. Kristina Kashtanova to register her comic book “Zarya of the Dawn” with the US Copyright Office. The procedure requires the relevant work to be an original author’s creating product of creative efforts.
The US Copyright Office refused to register the images part of this comic book because there were generated through the Ai tool Midjourney. The use of the Ai wasn’t disclosed in the application but the Office found evidence that the images are produced with the help of Midjourney.
For the creation of these images, Midjourney requires human input in the form of basic instructions. They represent tokens for the training of date based on which the images are created. However, the end result is unpredictable, it relies entirely on the AI algorithms without any further human interactions and creative modifications. This is in contrast with tools such as Photoshop where the author can interact and modify the image based on his or her creative vision.
Taking all of that into account, the Office considered the Ai generated images as not original works because the author cannot influence their creation apart from the initial basic instructions.
It is quite clear that such issues will become more and more widespread considering the ongoing implementation of new and new AI tools. What is not completely clear is how the law will catch up with these new trends which are putting us in front of new challenges.
This dispute focuses our attention on a trademark application for GOOGLE CAR, filed by Mr Zoubier Harbaoui for class 12:
‘Vehicles and conveyances; Parts and fittings for vehicles; Air and space vehicles; Land vehicles and conveyances; Water vehicles; Cable transport apparatus and installations; Air cushion vehicles; Cars for cable transport installations; Drones; Cable transport installations; Conveying installations [ski lifts]; Conveying installations (Aerial -) for the transportation of people; Cargo carriers for vehicles; Ski lifts; Aerial conveyors; Chairlifts; Vehicles’.
Against this trademark, an opposition was filed by Google Inc. based on an earlier EU trademark Google in classes 9, 35, 38, and 42. In addition, a reputation was claimed under Article 8(5) of Regulation (EU) 2017/1001.
The EUIPO confirmed the opposition finding both signs confusingly similar against the backdrop of the proven reputation of Google’s mark in the EU. The decision was appealed.
The General Court upheld the EUIPO decision. The Court found that the earlier mark’s reputation was well-established in the EU.
That difference between the goods and services covered by the marks at issue is not, in itself, sufficient to preclude certain proximity between the goods and services for the purposes of Article 8(5) of Regulation 2017/1001; a direct and immediate link between the goods and services is not necessary.
Nowadays it is widespread practice for different information technologies to be implemented in vehicles (one small example is Google Auto available in many cars). The target consumers of information technologies and vehicles are one and the same.
The Court found both signs similar. The Car word in the mark applied for is descriptive because of which first element Google has greater importance for the comparison.
Google’s mark has a strong reputation amongst consumers and if it is used by someone else for transport vehicles it is possible for consumers to relate these vehicles to Google as a company.
As correctly noted by EUIPO, the public, when purchasing a vehicle or conveyance sold under the mark applied for, will clearly recognise the term ‘google’ and assume that the vehicles and conveyances incorporate Google technologies and tools, or that they have been developed by Google or in cooperation with Google.
Regarding the applicant’s argument that the mark WAYMO owned by the intervener and covering ‘cars’ in Class 12 would prevent him from taking unfair advantage of the earlier mark, it must first be stated that that assertion is in no way supported. Second, the mere existence of an additional mark owned by the proprietor of the earlier mark cannot have the effect of reducing or even eliminating the risk of free-riding to the detriment of the earlier mark, where the relevant public will establish a link between the marks at issue.
Given the similarities between the marks at issue and the link which the relevant public will establish between those marks, the mark applied for carries a risk of benefiting from the attractiveness of the earlier mark, which is part of many aspects of the daily life of consumers.
Toblerone is one of the most famous brands of chocolates in the world. Its history started in the early 20 century when Emil Baumann and Theodor Tobler created the product formula and its unique triangle shape that by itself is a registered trademark around the world.
Recently, the company owner of the brand Mondelez International Inc. announced its plan to transfer the production of the chocolate to Slovakia.
This is the reason why Mondelez has to change some elements of Toblerone’s packaging. In the future, the visual element of the well-known Matterhorn maintain will disappear from Toblerone as well as the claim “made in Switzerland”.
The reason for this is the strict Swiss law that protects Swissness. According to this legislation, one product can be labeled as made in the country and can use distinctive Swiss signs and geographical places only if 80% of the raw materials needed for the production are originating from Switzerland, for milk the requirement is 100%. There are some exceptions, for raw materials such as cacao which cannot be produced in the country.
This is a good example, of how one country’s reputation related to quality characteristics can be maintained over time. Apart from this, such an approach helps significantly in the development of the local economy too.
In 2018, Cantina successfully registered an EU trademark for ALDIANO in class 33 – alcoholic beverages (excluding beers).
An invalidation proceeding followed, initiated by the German retail chain Aldi based on two earlier marks for ALDI in classes 33 and 35.
Because these earlier marks had been registered for more than 5 years, as a counter-attack, Cantina requested proof of genuine use.
EUIPO considered the invalidation request only based on one of the earlier marks, that was registered for class 35. The Office concluded that the mark’s use was dully proved by Aldi taking into account that the store sells not only foods but alcoholic beverages too. In addition, the Office found both signs similar enough.
An appeal followed where the Board of Appeal annulled the earlier decision finding the proof of use as insufficient. The earlier Aldi’s mark for class 35 covered only the general term retailing in all product areas, and there was no sufficient evidence that the mark was used for alcoholic beverages t in particular.
It must be noted that, while it is true that the Court of Justice has held that, for the purposes of registration of a trade mark covering services provided in connection with retail trade, it is not necessary to specify in detail the service or services for which that registration is sought, the applicant must, however, be required to specify the goods or types of goods to which those services relate (judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte, C‑418/02, EU:C:2005:425, paragraphs 49 and 50).
However, first, the Court has stated that the line of authority derived from that judgment concerned only applications for registration as trademarks and did not concern the protection of trademarks registered at the date of that judgment’s delivery. Since, in the present case, the earlier mark, relied on by the applicant in support of its application for a declaration of invalidity, was registered before the date of delivery of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), it was not, in any event, concerned by the obligation arising from that judgment.
Secondly, it cannot be inferred from the considerations of that judgment that, when a trademark covering retail services, registered after that judgment’s delivery – which is the case with the earlier registration – is relied on in support of a ground for invalidity referred to in Article 60(1)(a) of Regulation 2017/1001, that ground may be rejected from the outset, simply by invoking the absence of any precise statement of the goods to which the retail services covered by the earlier mark may relate.
Lastly, it must be further stated that proof of genuine use of the earlier mark and of the earlier registration is one of the ways to determine the precise goods covered by the retail services for which those goods were registered.
The Board of Appeal therefore erred in finding that it was for the very broad specification of retail trade in all product areas that the applicant had to prove genuine use of the earlier mark. That error affects the contested decision and constitutes a sufficient basis for annulling it as regards the earlier mark for the services in Class 35.
As this blog mentioned, McDonald’s lost a trademark revocation procedure before the EUIPO in 2019, regarding its EU trademark BIG MAC. The revocation application was filed by the Irish fast food chain Supermac’s (Holdings) Ltd on the ground of an EU trademark not put to genuine use for a continuous five-year period.
The EUIPO revoked the mark finding McDonald’s evidence for real trademark use as insufficient. Of course, this decision was appealed.
No the Board of Appeal of the EUIPO annulled the previous decision stating that the mark’s use was proved for the following:
In Class 29 – Foods prepared from meat and poultry products, meat sandwiches, chicken sandwiches;
In Class 30 – Edible sandwiches, meat sandwiches, chicken sandwiches;
In Class 42 – Services rendered or associated with operating restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods.
The Board found that EUIPO failed to assess properly some of the submitted evidence. For instance, although Wikipedia’s page devoted to the mark can be edited, it contains links to external reliable sources such as newspapers and magazines that provide information for Big Mac too.
In addition, McDonald’s submitted new pieces of evidence in the appeal. For example, in some countries, the so-called ‘Big Mac Index’ is very popular for comparing the cost of living.
Consumer surveys, financial papers, and additional ad materials were provided too, and all of them show extensive trademark use in countries such as Germany, France, the UK (before Brexit), etc.
What’s more, the Big Mac brand has been used only in relation to McDonald’s stores and not by other competitors which in turn shows the sign is capable to indicate a particular trade origin.
Based on this the Board of Appeal concluded that Big Mac has been used as a trademark on the territory of the EU for a continuous five-year period.
This dispute focuses our attention on the issue of trademarks with a weak distinctive character and how this reflects on the scope of their protection.
In 2018, Mr. Swami Vidyanand filed the following international trademark where the EU was designated party, for class 41 – Education; providing of training; entertainment; sporting and cultural activities:
Against this application, an opposition was filed by YAplus DBA Yoga Alliance on the grounds of the following earlier mark in classes 35, 41, 42:
On 2 April 2020, the Opposition Division upheld the opposition. It found, in essence, first, that the services at issue were identical or similar and that they were aimed both at the general public and at professionals with an average level of attention, second, that the comparison of the signs had to be made from the point of view of non-English-speaking Czech-, Greek-, Croatian-, Hungarian- and Polish-speaking consumers in the European Union and that the signs were visually similar to an average degree, highly similar phonetically and conceptually similar to a low degree. Third, it found that the distinctive character of the earlier mark was normal despite the presence within it of certain elements, at most weakly distinctive, such as their decorative elements or the common word element ‘yoga’. Lastly, it found that there was a likelihood of confusion on the basis of Article 8(1)(b) of Regulation 2017/1001.
An appeal followed where the Board of Appeal annulled the Opposition Division finding no likelihood of confusion between both signs.
The General Court upheld this finding. According to the Court:
It follows that excessive protection of marks consisting of elements which, as in the present case, have very weak distinctive character, if any, in relation to the services at issue could adversely affect the attainment of the objectives pursued by trademark law, if, in the context of the assessment of the likelihood of confusion, the mere presence of such elements in the signs at issue led to a finding of a likelihood of confusion without taking into account the remainder of the specific factors in the present case.
It should be remembered that the visual, phonetic, or conceptual aspects of the signs at issue do not always have the same weight and it is appropriate, in that global assessment, to take into account the nature of the services at issue and to examine the objective conditions under which the marks may appear on the market.
Thus, in accordance with the case-law, in the present case, it must be held that, in view of the fact that the phonetic and conceptual similarities are based exclusively on word elements which are devoid of distinctive character, the clear visual differences between them have a greater impact in the global assessment of the likelihood of confusion.
In that regard, it should be borne in mind that, where the earlier trademark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 does not often lead to a finding that such likelihood exists.
In those circumstances, it must be held that, in the context of a global assessment of the likelihood of confusion, having regard to the weak distinctive character of the common elements ‘yoga alliance’, the presence of figurative elements which are visually very different will enable the average consumer to make a clear distinction between the marks at issue, even for the part of the relevant public with an average level of attention, despite the identical or similar character of the services at issue. That is all the more true for the part of the relevant public with an above-average level of attention. Accordingly, it follows that the Board of Appeal’s error in relation to the level of attention of the relevant public in respect of the ‘educational’ services found in paragraph 50 above cannot have a decisive effect on the outcome of the global assessment of the likelihood of confusion.
This case reminds us what a trap can be if someone uses a weak distinctive element as a trademark. Although such an element can be registered in combination with graphics or other words, by its nature it is weak which means that monopolization of this element is not possible. This in turn means that competitors can use it too for their brands, and all of this means potential marketing and recognisability issues for the trademark owner.