Uber won a dispute in the UK

london-722520_960_720Uber succeeded in an opposition procedure against the following UK trademark application:

GB50000000003168791.jpg

This sign was filed for the following goods and services:

In Class 9: Mobile phones and accessories; batteries; battery charges; media for storing
information, data, signals, images and/or sounds; photographic apparatus and instruments; parts and fittings for the aforesaid goods.

In Class 35: Retail services connected with the sale of mobile phones and accessories;
batteries; battery charges; media for storing information, data, signals, images and/or sounds; photographic apparatus and instruments; parts and fittings for the aforesaid goods”.

In Class 38: Advisory and consultancy services relating to communications apparatus,
equipment and accessories; rental and hire of communications apparatus, equipment, and accessories; provision of information relating to communications apparatus, equipment and accessories”.

Uber invoked a family of earlier Uber trademarks against this application, for the same classes, stating possible consumer confusion.

According to the UKIPO the goods and services of the marks were identical or complementary.

The applicant tried to claim that Uberfone poses a specific meaning in German which is to something “superb or happy”.

The Office dismissed it considering that the German language is not so popular in the UK and most of the people wouldn’t be able to get the meaning.

Taking into account the phonetic and visual similarities between the signs, the UKIPO upheld the opposition.

Source: WIPR.

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China tries to combat trademark applications filed in bad-faith

wood-door-1711004_960_720.jpgRecently China has introduced some amendments to its trademark law which main aim is to fight against the widespread practice in the country trademark applications to be filed in quantity without any intention for real use.

Because of this, according to the new amendments, every applicant will have to declare intent of use otherwise the application will be refused. What’s more, this will be a ground for oppositions and invalidations against the mark. So far, if one trademark has not been used for 3 years it can be subject to invalidation. Now, this can happen even earlier.

Apart from this, damages awarded by the courts in case of trademark infringements are increased significantly. The procedure for ceasing and destruction of countrified goods becomes more efficient.

Source: IPKat.

La Liga was fined with 250 000 Euro for breaching GDPR

pexels-photo-2101030The organizer of the Spanish top football division La Liga was fined with $250 000 because of breach of the EU’s General Data Protection Regulation (GDPR) rules.

The reason for that sanction was the La Liga practice potentially to use its mobile app to spy whether bars and restaurants show football matches without paying license fees.  According to the information, this could be done through phones microphones.

The Spanish Data Protection Agency considered this as breaching of the GDPR.

According to La Liga, this decision was wrong and unfair because the Agency failed to understand the mobile app technology and how it works.

Source: TBO.

How important trademark disclaimers are?

midsummer-2263200_960_720.jpgThe European Court has ruled in case C‑705/17 Patent- och registreringsverket v Mats Hansson.

In nutshell, this case concerns whether disclaimers regarding the trademark scope of protection have to be taken into consideration for the purpose of trademark assessment. What exactly happened?

Swedish company Norrtelje Brenneri Aktiebolag registered in 2007 the following trademark in Class 33 of the Nice Agreement:

That registration was accompanied by a disclaimer stating that ‘registration does not give an exclusive right over the word RoslagsPunsch’. The disclaimer was required by the Swedish Patent Office as a condition of registration of the trademark because the term ‘Roslags’ refers to a region of Sweden and the term ‘Punsch’ describes one of the goods covered by the registration.

Mr Hansson, as an individual, applied in 2015 for registration of the word mark ‘ROSLAGSÖL’ in Sweden for goods in Class 32, in particular non-alcoholic beverages and beers.

The Swedish Patent Office rejected the application for registration because of the likelihood of confusion between the new application and the earlier trademark. The problem was that the term ‘Roslags’ is descriptive. The fact that both signs also included other words or figurative elements did not reduce the similarity. Moreover, the signs referred to identical or similar products which address the same customers.

Mr Hansson appealed this decision before the Patents and Market Court, arguing that there was no likelihood of confusion between the signs in question. As regards the effect of the disclaimer relating to the earlier trademark on the outcome of the action, the Patent Office argued before that court that an element of a trademark which has been excluded from protection by means of a disclaimer must in principle be regarded as not distinctive. In the present case, registration of the earlier trade mark had been granted with such a disclaimer because the trademark included a term that was descriptive of a geographical region, ‘Roslags’.

However, The Patent Office’s practice concerning the non-distinctive character of geographical names had developed in the meantime, putting into practice the conclusions in paragraphs 31 and 32 of the judgment of 4 May 1999, Windsurfing Chiemsee(C‑108/97 and C‑109/97, EU:C:1999:230). The term ‘Roslags’ was now capable of registration in itself as a trademark and was distinctive for the goods at issue in the present case so that it could even dominate the overall impression given by the earlier trade mark. It thus followed from a global assessment of the signs at issue that because of the common element ‘Roslags’ the relevant public could have the impression that the goods referred to by those signs had the same commercial origin.

The Patents and Market Court allowed Mr Hansson’s application and approved the registration of his sign as a trademark, finding that there was no likelihood of confusion. The court also stated that, despite the disclaimer, the terms to which it related had to be taken into account in the assessment of that likelihood, in so far as they could have an effect on the overall impression created by the earlier trade mark, and hence on the extent of protection of that mark. According to the court, the purpose of the disclaimer was to make it clear that the exclusive right deriving from registration of the earlier trade mark did not relate to the terms referred to as such.

The Patent Office appealed against the judgment of the court to the Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm, Sweden.

That court explains that in its view Directive 2008/95 and the associated case-law confirm that the substantive rules on the protection of a national trade mark are in principle fully harmonized at the level of EU law, while the procedural rules are within the competence of the Member States. It therefore asks whether a national rule allowing a disclaimer to be made may be categorised as a procedural rule, even though it has the effect of changing the criteria on which is based the global assessment to be carried out in order to examine the likelihood of confusion within the meaning of Article 4(1)(b) of that directive.

That court is uncertain whether that provision, having regard in particular to the settled case-law of the Court according to which the assessment of the likelihood of confusion must be based on an overall impression and the perceptions of consumers play a dominant part in the global assessment of that likelihood, may be interpreted as meaning that a disclaimer can affect that assessment because an element of the earlier trade mark was, at the time of registration, expressly excluded from protection by means of that disclaimer, so that that element must be given less importance in the analysis of the overall impression than it would have had in the absence of the disclaimer.

So the Svea Court of Appeal, Patents and Market Court of Appeal decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  Must Article 4(1)(b) of [Directive 2008/95] be interpreted as meaning that the global assessment of all relevant factors which is to be made in an assessment of the likelihood of confusion may be affected by the fact that an element of the trade mark has expressly been excluded from protection on registration, that is to say, that a so-called disclaimer has been entered on registration?

(2) If the answer to the first question is in the affirmative, can the disclaimer in such a case affect the global assessment in such a way that the competent authority has regard to the element in question but gives it a more limited importance so that it is not regarded as being distinctive, even if the element would de facto be distinctive and prominent in the earlier trade mark?

(3) If the answer to the first question is in the affirmative and the answer to the second question in the negative, can the disclaimer even so affect the global assessment in any other way?’

The European Court’s decision:

Article 4(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the global analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, or to attribute to such an element, in advance and permanently, limited importance in that analysis.

Breaking news – Brazil is on the way to access the Madrid Protocol

brazil-3001462_960_720.pngMarques Class 46 reports about the forthcoming accession of Brazil to the Madrid Protocol for international registration of trademarks. The bill for that purpose has already been approved by the Parliament. Now The Brazilian President Jair Bolsonaro is expected to sign it in order Brazil to access the Madrid System.

This is a huge step for the country when it comes to trademark registration and it is a significant convenience for all companies that have an interest in the local market. The reason is that through Madrid Protocol you can register a trademark for Brazil easier and cheaper. Brazil is one of the few big economies that haven’t been part of the Madrid system so far. Fortunately, this will be changed as it is in the case of Canada too.

For more information here.

Bear in mind this if you want to register a trademark in Canada

canada-1157521_960_720.jpgThe trademark registration process in Canada will have some significant changes this year as a result of the trademark law reform which has been addopted recently.

The main changes that have to be taken into account by all who want to protect a trademark in there are:

 1. The term of trademark protection will be reduced from 15 to 10 years.

2.  Declaration of Use will be no longer required from trademark applicants –  as it is well-known Canada, similarly to The US, has required until now such declarations which to show a real use of the sign on the market. This was one of the significant differences when it comes to trademark filing compare to Europe, for instance. But no more. Still, trademark use will remain an important element of the protection because it will be a ground for invalidation in the case of a lack of genuine use.

3. Canada will introduce Nice Classification for goods and services for the purpose of trademark filing. In that way, Canada has joined almost all countries around the world that already use this classification.

4. An additional fee will be paid for every class above the first in case of filling of a trademark application or trademark renewal.

Source: April L. Besl (Dinsmore & Shohl LLP), Lexology.