Bacardi won a case in Turkey for a trademark that has been never used there

pexels-photo-1571849Mutlu Köse published an interesting article for Marques Class 46 which discusses the court practice in Turkey regarding cases of non-use of trademarks.

The dispute at hand concerns a lawsuit initiated by Bacardi against a local beverage producer for a trademark infringement of BREEZER mark owned by the company.

The Turkey company uses similar sign FREEZER and look-alike packaging.

As a response, KIRBIYIK FREEZER started revocation proceeding against Bacardi’s BREEZER mark for lack of genuine use in the country for a period of 5 years as it is stipulated by the law.

Bacardi had never used its trademark but the reason for this was the fact that the Turkish regulations do not allow the sale of cocktail beverages containing distilled alcohols.

According to the Court, however, this represented a valid reason for non-use of the registered mark (the onliest option for overcoming such revocation apart from actual use) and dismissed the Turkish company request. At the same time, the court accepted the claims for trademark infringement and unfair competition against KIRBIYIK FREEZER.

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Lacoste lost a crocodile case in Nederland

The Hague District Court ruled in a lawsuit between Lacoste and Hema, which concerns a children’s underwear with a crocodile motif.

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According to Lacoste, Hema infringed the rights over their registered trademarks, which above all is well-known amongst the consumers.

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The Court, however, disagreed with Lacoste stating that there was no infringement in the case at hand because the use of a repetitive crocodile pattern was perceived as a decoration, not as a source of origin. The practice of using animal depictions for children’s clothing is widespread.

Lacoste claimed that confusion could be created due to the fact that their trademarks have had a reputation on the market for many years. In addition, a survey was been provided, in which many respondents stated that they connect crocodile depictions with the Lacoste’s trademark.

The Court dismissed this evidence because the questions in the survey were leading, making respondents think about trademarks. On top of that, the relevant public wasn’t defined correctly.

According to Lacoste, some of the clothes contained only one depiction of crocodile which made even easier for the consumers to make a connection with their trademark.

The Court disagreed for this too, concluding that this cloth had been selling in a package with others and only in the Hema’s stores so the relevant consumers would not be confused neither be able to connect it with the Lacoste’s trademarks.

Source: AKD NV – Bram Woltering, Lexology.

Apple lost a lawsuit against Pear in the EU

fruit-2637058_960_720.jpgApple Inc. lost an interesting lawsuit before the General Court of the European Union regarding its famous trademark logo. The case at hand concerns an attempt by the Chinese company Pear Technologies Ltd to register the following European trademark:

download.pngFor classes of goods and services:

 Class 9: ‘Personal computers; laptop computers; handset and tablet mobile digital electronic devices for the sending and receiving of telephone calls and/or any digital data and for use as a handheld computer; apparatus for recording, transmission or reproduction of sound or images; videophones, video-tablets, pre-recorded computer programs for personal information management, database management software, electronic mail and messaging software, paging software, computer hardware, software and firmware, namely operating system programs, application development computer software programs for personal and handheld computers or handheld mobile digital electronic devices; computer, handheld and mobile handset device peripherals products; parts, fittings and accessories for all the aforesaid goods’;

Class 35: ‘Providing consultancy on digital marketing; providing CRM solution and business solution design services’;

Class 42: ‘Maintenance and updating of computer software; providing information concerning computer software via the internet and other computer and electronic communication networks; computer network services; providing consultancy on networking, webpage design; providing server hosting services; providing domain management services; provision of software applications for handheld, tablets, personal computer and laptop computer devices and data centre management; technical consultancy; all aforesaid services also as business to business and all aforesaid services also as business to consumer or consumers’.

Against this application an opposition was filed by Apple on the ground of its following earlier figurative trademark:

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For classes of goods and services:

Class 9: ‘… Computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; … digital music and/or video players; MP3 and other digital format audio players; … handheld and mobile digital electronic devices for the sending and receiving of telephone calls; … computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multi-media content, software featuring musical sound recordings, entertainment-related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; … computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server …’;

Class 35: ‘… Retail store and online store services in the field of entertainment featuring music, video, … musical works, pre-recorded audio and audio-visual works and related merchandise, and music related electronic products, via the Internet and other computer, electronic and communications networks …’;

Class 42: ‘… Application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing temporary internet access to use on-line non-downloadable software to enable users to program, audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs …’

Initially, the EUIPO upheld the opposition, the main argument for which was the proved reputation of Apple’s trademark among the consumers in the EU.

In the appeal, however, The General Court annulled this decision stating that EUIPO erred in its assessment. The reasons for this conclusion were that even though Apple’s sign has a reputation, which broadens its protection scope, this can be an argument only in a case that both trademarks are phonetically, visually and conceptually similar.  In the case at hand, this is not true.

  In that regard, it should be noted, first, that it is admittedly true that each of the conflicting marks may be described as using the image of a fruit. However, as all the parties to this action also argue, the mere fact that there is a generic term which includes the terms used to describe the semantic content of the marks at issue is not a relevant factor in the context of the conceptual comparison. In the same vein, it should be borne in mind that the examination of the similarity takes into consideration the conflicting marks as they have been registered or as they have been applied for. Accordingly, it should be observed that the conflicting marks evoke the concept of ‘fruit’ only in an indirect manner. It follows from the considerations set out in paragraphs 62 and 63 above that the conflicting marks will not be perceived as depicting two unidentifiable fruits, but rather as (i) an apple with a bite taken out of it, possessing a leaf, and (ii) a pear with a stem. In those circumstances, it is inconceivable that the relevant public displaying a high level of attention will use the term ‘fruit’ instead of ‘pear’ or ‘apple’ when referring to the conflicting marks.

  Next, it should be borne in mind that, according to the case-law cited in paragraphs 22 and 61 above, the comparison of the conflicting marks must be based on the overall impression given by them, by reference to the intrinsic qualities of those marks, and, moreover, conceptual similarity arises from the fact that both marks use images with a similar semantic content. These considerations counter the taking into account of factors such as those mentioned in paragraph 32 of the contested decision, which are not based on the perception of the semantic content of the images used by the conflicting marks, as they have been registered or as they have been applied for, but which are distant from the actual depiction of them. The protection which is granted to an earlier figurative mark does not apply, in the absence of commonalities with the depiction of the mark cited in opposition, to the general category of phenomena that it depicts. The Board of Appeal was therefore wrong to take the view that the marks at issue could be regarded as being conceptually similar on the sole ground that the fruits which they depicted shared several characteristics in real life.

Case T‑215/17, Pear Technologies Ltd v European Union Intellectual Property Office (EUIPO)

BMW won a lawsuit regarding its Mini Cooper brand

red-84593_960_720BMW won a lawsuit in Germany against the Chinese company Ninebot which offer electric scooters.

The case concerns an advertisement spot for the Ninebot’s scooter which includes among other a Mini Cooper car producing by BMW.

According to the German company, this was unfair trade practice because, first of all, Ninebot had no permission to include the Mini Cooper brand in the spot, and secondly, by doing that the company took unfair advantages from the longstanding Mini Cooper’s reputation on the market.

The court went along with BMW, accepting that the Mini Cooper brand was exposed clearly and in a non-descriptive manner in the advertisement.

Source: WIPR.

Can H2O+ be a trademark in The EU?

drop-of-water-545377_960_720The General Court of the European Union has issued a decision on case T‑824/17 H2O Plus LLC v EUIPO, which concerns an EU application filed by the US company H2O Plus for the following trademark:

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for the following goods:

Class 3: ‘Non-medicated skin care preparations; cosmetic preparations for skin care; cosmetic preparations for body care; skin care products, namely non-medicated skin serum, beauty serums, non-medicated anti-aging serum, cosmetic creams, face and body creams, eye creams, anti-wrinkle creams, anti-aging creams, night creams, age spot reducing creams; sunscreen creams, nail cream, face and body lotions, skin lotions, body lotions with SPF, gels for cosmetic purposes, beauty gels and shower and bath gel; eye lotions; eye gels; facial masks; facial washes; facial creams; facial cleansers; facial moisturisers; skin moisturisers; skin masks; cosmetic masks; beauty masks; gel eye masks; toning lotion for the face, body and hands; anti-aging toner; skin toners; soap; anti-aging cleanser; skin cleansers, wipes impregnated with a skin cleanser; skin cleansing gels; skin care preparations, namely skin peels; cosmetic preparations, namely, firming creams, firming lotions, facial moisturiser with SPF, face powder, non-medicated exfoliating preparations for use on the face, skin, body, hands and feet; lip cream; lip balm; non-medicated lip care preparations; lip balm with SPF; make-up remover; cloths or tissues impregnated with a skin cleanser; cosmetic body scrubs for the face, skin, body, hands and feet; beauty creams for body care; body and beauty care cosmetics; body wash; skin care preparations, namely, body balm, skin and body topical lotions, creams and oils for cosmetic use; body butter, body oil, hair care preparations, hair shampoos and conditioners; hand cream; non-medicated foot cream and foot scrubs; lipstick; after-shave balms; shaving soaps; shaving preparations, pre-shave creams, pre-shave oils; non-medicated bath salts, non-medicated bath preparations; skin refreshers; antiperspirants; personal deodorants; deodorants for body care; cosmetic pads; pre-moistened cosmetic towelettes; body masks; body washes; cosmetic preparations for eye care; lip glosses; nail care preparations; non-medicated acne treatment lotions; non-medicated acne treatment preparations;’

Class 5: ‘Medicated sunscreen, namely, lotions containing sunscreen; acne treatment preparations, namely, cleansing pads, lotions, creams, and cleansers’.

The EUIPO refused to register this mark based on the absolute grounds – descriptiveness and lack of distinctiveness with regard to above-mentioned goods. Consumers will perceive the sign as an indication of the ingredients and chemical formula of the products and not as a source of origin. The presence of + sign can be deemed as a quality indication.

The decision was appealed. According to the company, the combination between letters, numbers and signs can represent a distinctive trademark.

The court dismissed the appeal upholding the EUIPO position. Although not all of the products, consist predominantly of water, still these products contain water so the trademark applied for is descriptive. The + sign is not enough to overcome this.

IBM and Groupon reached a multi-million dollar deal

hammer-802298_960_720The online platform Groupon and IBM have reached a patent deal. The case concerns a lawsuit initiated by IBM against Groupon for infringing the US patents 5,796,967; 5,961,601; 7,072,849; и7,631,346 related to online advertising and ways of allowing web users to connect to an internet provider.

After long negotiations and an ask by IBM for doubling the damages to 165 million dollars, both companies have reached an agreement to cease the lawsuit for which Groupon will pay 57 million dollars.

This case is just another good example of the role and potential that intellectual property has for generating additional revenue for its owners.

In the case at hand IBM will monetarize its patents giving longstanding licenses to Groupon against which the company will allow its employees to use some of the services offered by Groupon with cross-licenses.

Although intellectual property disputes can be quite tough sometimes, if they are used and managed skillfully they can lead to a win-win situation for both parties at the end of the day.

Source: WIPR.

Instagram in a strategic trademark attack

instagram-3198093_960_720The US Kirusa initiated a lawsuit in the US against Instagram which aim is to find non-infringement and non-dilution of the Instagram trademark.

The case at hand concerns a registered trademark for Instavoice by Kirusa which was attacked with cancellation by Instagram based on its earlier well-known trademarks.

According to Kirusa, there are no similarities between the signs because the prefix Insta has weak distinctive character, it means something instant, fast.

The company claimed that its registration for Instavoice mark has been done in good faith at least because the company is not a direct competitor to Instagram and do not threaten its business model.

What’s more, Kirusa asked the Court to order Facebook, as an Instagram’s mother company, to stop blocking Kirusa’s profiles and applications in the social network.

This case is part of a more broader approach by Instagram to prevent using the Insta and Gram prefixes and suffixes as trademarks. In light of that, the company has been attacked more than 200 such trademarks trying to accomplish this strategy.

Source: WIPR.