When does Irish origin matter for trademark protection in the EU?

The General Court of the European Union has ruled in the case T-306/20 – Hijos de Moisés Rodriguez Gonzàlez SA v EUIPO, Ireland and Ornua Co-operative Ltd. The case has the following background:

In 2013, the Spanish company Hijos de Moisés Rodriguez Gonzàlez SA filed an EU trademark for the following figurative sign:

On 3 January 2014, the mark applied for was registered in respect of the following goods in Class 29: Meat, fish, poultry, and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

On 7 January 2015, Ireland and the intervener, Ornua Co-operative (previously known as Irish Dairy Board Co-operative Ltd), filed an application for a declaration that the contested mark was invalid in respect of all the goods above.

In the application for a declaration of invalidity it was claimed that the mark was deceptive under the provisions of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(g) of that regulation (now Article 59(1)(a) and Article 7(1)(g) of Regulation 2017/1001), and that the registration of that mark had been applied for in bad faith for the purposes of Article 52(1)(b) of that regulation (now Article 59(1)(b) of Regulation 2017/1001).

By decision of 15 June 2016, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. It found that Article 7(1)(g) of Regulation No 207/2009 was not applicable, because it had to be established that the contested mark was deceptive at the time it was filed. The Cancellation Division took the view that, in the case before it, any possible deception resulted from the use of that mark after the end of the commercial agreement which had been entered into by the applicant and the intervener and which was in force from 1967 to 2011. It found that that situation was specifically covered by the ground for revocation laid down in Article 51(1)(c) of Regulation No 207/2009 (now Article 58(1)(c) of Regulation 2017/1001). The Cancellation Division also rejected the argument raised under Article 52(1)(b) of that regulation, finding that no conclusion regarding bad faith could be drawn from the fact that the contested mark had been filed after the termination of the business relationship with the intervener.

On 12 August 2016, Ireland and the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

By decision of 6 December 2017, the Presidium of the Boards of Appeal referred the case to the Grand Board of Appeal.

By the contested decision, the Grand Board of Appeal of EUIPO found that, at the time when the application for registration was filed, the contested mark was used in a deceptive manner. It also found that the registration of that mark had been applied for in bad faith. Consequently, it annulled the Cancellation Division’s decision and declared the contested mark invalid.

According to the Board, consumers could believe that the goods originate from Ireland which could not be the case.

The decision was applied before the General Court.

The Court annulled the first part of the Board’s decision stating that the ground of deceptiveness should have to be evaluated at the time when the trademark application was filed.

Nevertheless, the invalidation was confirmed because the Court found that the mark was filed in bad faith.

The reason for this was that the Parties, in this case, had long-lasting trade relationships, where the Spanish company had been importing Irish butter under this mark. After the end of their partnership, the above trademark was filed, which could take advantage of the associations with the Irish origin of the goods. That is to say, consumers can believe that the goods under the same mark are still from Ireland which can not be the case.

According to the Court:

In the present case, in the first place, as regards the misleading use of the contested mark, it is common ground between the parties that: (i) for decades, the applicant sold butter of Irish origin under that mark in the context of its contractual relationship with the intervener; (ii) after that relationship came to an end, it continued to sell foodstuffs under that mark; and (iii) a not insignificant part of those foodstuffs, including dairy products and pork products, was not of Irish origin. In any event, the applicant has not claimed that all the goods which it sold under the contested mark originated in Ireland.

In other words, the applicant sold goods under the contested mark even though a not insignificant part of those goods was not of Irish origin and therefore did not correspond to the relevant public’s perception of those goods.

Once the applicant had extended the use of the contested mark to goods other than butter of Irish origin, Spanish-speaking consumers, who constitute the relevant public, were likely to be misled as to the geographical origin of those goods, since they had become accustomed over the course of several decades to the contested mark being affixed to butter originating from Ireland. Such conduct is evidence of bad faith inasmuch as it shows that, when filing the application for the contested mark, the applicant intended unfairly to transfer the advantage derived from the association with Ireland to goods not having that geographical origin, in particular after the end of its business relationship with the intervener which supplied it with Irish butter.

Red Bull attacked successfully a Portuguese trademark with a bull depiction

Red Bull won a dispute against a trademark with the depiction of a bull and one of the reasons for this result was the available reputation of the company’s trademarks.

Two individuals filed 2020 the following trademark application in Portugal for classes 25 and 41:

Against this application an opposition was filed by Red Bull based on the following several earlier marks for the same classes of goods and services:

Apart from this, the company claimed a proven reputation for these trademarks in Portugal.

The Patent Office dismissed the opposition despite the reputation of the Red Bull’s marks. The reason for this was the fact that the Office didn’t find similarities between the signs. The decision was appealed.

The Court overturned the Office decision, concluding that the mark applied for and the earlier sign was similar enough.

From one side, the word parts RED BULL and BULLS were similar from a phonetic, visual, and conceptual point of view.

From another side, the depictions of bulls were similar too, at least to a minimum degree. Taking into account the proven reputation of the Red Bulls’ marks, which gives stronger protection, the Court concluded that signs were similar and that the later mark could take advantage of the available reputation of the earlier marks.

This comes to show us that some attempts for circumventing the protection of reputable marks could be really risky and unsuccessful acts.

Source: Paulo Monteverde or Joana Cunha Reis for Lexology.

Apple lost a trademark dispute for MAC in Japan

One interesting trademark dispute from Japan shows us how difficult sometimes is famous trademarks to be invoked in opposition procedures.

The case concerns a trademark MACLOGIC filed by a local company in Japan for classes 9 and 42 – mainly computer software and design.

Against this mark, an opposition was filed by Apple Inc based on an earlier mark from MAC accompanied by a claim of trademark reputation. According to Apple, the mark applied for was similar to the earlier one due to the identical first part MAC, which was famous amongst Japanese consumers in relation to the company’s laptops and software. This was able to create consumer confusion in regard to the source of trade origin of the goods and services.

The Japan Patent Office, however, didn’t find both marks similar enough from a phonetic, visual, and conceptual point of view.

What’s a more, the Office considered the earlier mark reputation as established only for some consumers in the country but not for the public in general. Because of this, the opposition was dismissed.

The interesting moment in this decision was the fact that the reputation of a mark amongst the relevant consumers was not enough in order for this claim to be well established for the proceeding.

Source: Masaki MIKAMI, Marks IP Law Firm.

Can anyone register an EU trademark for Powerball?

Filing a trademark application in bad faith can jeopardise seriously trademark’s future protection because legislation allows such marks to be canceled.

One interesting example of such consequences is from the EU, where the Gibraltar-based company for online bets Lottoland successfully registered a trademark for “Powerball” in classes 35, 41, and 42.

As it is well-known “Powerball” is a US lottery, probably one of the most famous in the entire world, with a record jackpot of $1.5 billion USD.

The lottery is organized by the US Multi-State Lottery Association, whose EU trademark for Powerball was revoked based on non-use for 5 consecutive years.

When the US Accossiation found out about the later trademark Powerball it filed a cancelation request with the EUIPO claiming bad faith. According to the Association, the purpose of the Gibraltar company was to mislead the EU consumers about the real organizer of the lottery. Evidence for such dishonest behavior was the fact that Lottoland registered trademarks for other lotteries such as  EuroMillions and EuroJackpot whose organizers are different.

In contrast, Lottoland counterclaimed that its trademark was legally registered because Powerball has no reputation amongst the consumers in the EU.

The EUIPO agreed with the US Association and canceled the EU mark based on bad faith attempt in regard to its registration. According to the Office, there is no need for one trademark to be known in the EU in order bad faith claim to be possible. The Office considered Lottoland’s behavior dishonest, trying to restrict the real owner of the mark to use it in the EU as well as all other market participants, from one side, and to mislead consumers, from another.

The conclusion of this case is that you need to bear in mind the fact that although one trademark protection has lapsed, this does not mean automatically the sign can be used by someone else. Such use should be analyzed carefully considering all facts and risks.

Source: FRKelly – Adam Flynn for Lexology.

Be careful with non-distinctive elements in case of trademark protection

One of the main requirements for the registration of trademarks is for the relevant sign to be distinctive and not descriptive of the goods or services mentioned in the application for protection.

Nevertheless, not distinctive signs can be protected if they are in combination with other, however, distinctive, elements such as text, colors, graphics, etc.

The problem with such trademarks is that they are weak when it comes to their not distinctive elements because such elements can be used by others in most cases.

One example of this issue is a dispute in Denmark between the following marks for class 5:

v

According to the Danish Court, both signs are not confusingly similar. The reason is that the words YUMMY and YUMMI have a meaning of something tasty, and pleasing in English, a language with which the Danes are familiar enough. The different letter I at the end of one of the signs cannot change this conclusion. Based on this, the Court considered these elements not distinctive for the assessment of the signs.

In regard to the other words included in the marks, GUMMI is understood as a short word for fruit gum in Danish and it is not distinctive too, while VITA means life, which creates a different conceptual meaning of the mark.

Because of this, the signs are considered dissimilar although the goods in class 5 are similar.

Source: Louise Thorning Ahle for Kluwer Trademark Blog.

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.

Puma won a dispute over figurative trademarks in Japan

Masaki MIKAMI reports about a dispute over figurative trademarks in Japan. The case at hand concerns a trademark application for the following figurative mark applied for class 25:

Against this sign an opposition was filed by the German sportswear manufacturer PUMA on the ground of the following early famous sign in class 25 too:

Puma has been using this sign for most of its sports shoes since 1958. The company submitted evidence for the available reputation of its mark in Japan, amongst other annual sales of 15 billion yen and 4% market share.

The Patent Office agreed that the earlier sign has a strong reputation in the market. In the assessment of the signs, the Office concluded significant similarities to the extent that the new sign can be perceived as a reversed version of the earlier sign.

Taking into account the identity and similarity between the goods in both marks, the Office considered both marks as similar enough to create consumer confusion about the source of trade origin.