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.

 

BET 365 won a bet before the General Court of the EU

cards-1030852_960_720The General Court of the European Union has ruled in a case regarding a European trademark BET 365.

This mark was been registered in 2007 for different Classes of the Nice Classification including Class 41. Initially, EUIPO refused the registration based on absolute grounds – descriptiveness. The word BET means betting whereas 356 can be interpreted as the number of days when you can bet.

After submitted pieces of evidence for acquired distinctiveness, the mark was been registered successfully.

In 2013, Bet365 Group filed an opposition against a trademark application for ‘b365’. As a counter attack, the applicant applied to invalidate the registration of ‘BET365’ mark because of alleged descriptiveness.

EUIPO dismissed the invalidation request, however, the Board of Appeal uphold it. An appeal followed.

According to the the General Court, ‘BET365’ is not descriptive for Class 41 taking into consideration all available evidence for acquired distinctiveness such as web analytics, advertisement campaigns, sales, financial figures.

Source: Stobbs IP – Daniel Bailey, Lexology.

 

Marks, furniture, and distinctiveness in Finland

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Marques Class 46 (information by Suvi Haavisto) reports about an interesting case regarding trademark lawsuit in Finland.

Laulumaa Huonekalut Oy, a furniture producer, filed a trademark infringement claim against Pohjanmaan Kaluste Oy, claiming that this company had been using its registered combine trademarks SARA, OLIVIA and SOFIA (in class 20) for branding different items of furniture.  Laulumaa asked the Court to order Pohjanmaan to cease the infringement and a compensation to be paid.

Pohjanmaan rejected this claim stating that those names were widespread in Finland for branding furniture for many years so in light of this they are not distinctive.

The Court allied with Pohjanmaan confirming that the names are not distinctive. The scope of protection of the already registered marks is limited only to their combine nature. In the case at hand, however, Pohjanmaan didn’t use these combine trademarks but only word names in standard font. So in that regard, there is no infringement.

This case is quite indicative of the way how applicants define their trademark strategies. Some companies, in an attempt to escape possible trademark refusals by Patent Offices, applied for not so distinctive signs combining them with graphical elements or fonts. Although they can register such marks successfully most of the times, this, unfortunately, doesn’t mean that they can rely on them in such lawsuits because of the limited scope of protection.

Harley-Davidson won 19 million dollars in a trademark lawsuit

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Harley-Davidson won a lawsuit for more than 19 million dollars. The case concerns the internet platform SunFrog which offers for sell t-shirts based on designs submitted by consumers.

According to the accusation, SunFrog offered more than 100 designs containing Harley-Davidson’s registered trademarks.

Although SunFrog agreed to stop selling such products, the infringement continued. Because of this, the Court issued a judgment in Harley-Davidson’s favor, permanently prohibiting SunFrog from making any Harley-Davidson branded apparel products.

In addition, the Court awarded 19,2 million dollars in statutory damages, which amount of money had been determined on the ground of the fact that SunFrog infringing products attract wide exposure judging on the interest of the Facebook ads regarding them. What’s more, the Court took into account Harley-Davidson’s licensing business which amounted to 400 million dollars for a period of about 10 years.

Source: WIPR.