Brief IP news

briefs_1131.  Green technologies and renewable energies – Innovating and patenting – 20.11.2018, Oslo. For more information here.

2. Know how to protect your know-how. For more information here.

3. News Flash – Philips v ASUS & HTC. For more information here.

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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.

A fight with buscuits and cushions in Milano

Eleonora Rosati published an interesting story for IP Kat regarding a lawsuit in Milano, Italy which concerns a fight with biscuits and cushions.

Barilla is the owner of several EU trademarks for Pan di Stelle,Galletti, Abbracci, Rigoli, Mooncake, Crostatina, Batticuori, Ringo, and Gocciole, all used for different types of biscuits and desserts.

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Another Italian company tried to negotiate to use these marks for production of cushions. The deal never happened, nevertheless this company started production of such cushions using similar names such as Pandistelloso, Gallettoso, Rigoloso.

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As a result, Barilla initiated a lawsuit in Milano for trademark infringement and won it.

According to the court, the defendant used similar marks and in that way infringed IPRs belong to Barilla. The defendant’s argument that there was no infringement due to the fact that biscuits and cushions are in different Nice classes was dismissed. The Court stated that Barilla’s trademarks have a well-known status among the consumers, because of which the defendant tried to take unfair advantages of the reputation of the trademarks.

The court ordered the defendant to pay damages for EUR 150,000, as well as covering the costs of litigation.

This case is indicative of the fact that although trademark protection is limited to the Nice classes of goods and services mentioned in the trademark application, that’s not always the case. There are additional facts that have to be taken into account before another trademark use to be initiated.

 

“Swiss Military” – between watch industry and the Army

pexels-photo-821650The Federal Administrative Court of Switzerland ruled on a lawsuit between the Swiss Army and the Swiss watch producer Charmex.

The reason for this conflict was the fact that Charmex as an owner of a registered trademark ‘Swiss Military’ for watches filed an opposition against Army’s application for an identical mark for identical goods.

The Patent Office upheld this opposition because of which the Army appealed.

According to the Federal Administrative Court, the Army has the right to register such a trademark. What’s more, only the Army has to have the right to use this mark. The Court considers that there is no evidence suggesting that consumers connect the term ‘Swiss Military’ with the watch producer rather than the Swiss Army.

According to Charmex this decision is quite disappointing for them taking into account all efforts and investments they made in their brand throughout the years of its existence on the market.

Source: WIPR.

 

Red Color, Shoes and Value

pexels-photo-267292The Advocate General of the European Court M. Szpunar gave its opinion regarding the interesting Case C‑163/16 – Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV.

This is his second opinion because surprisingly the Court took a decision to reassign the case to the Grand Chamber.  The Court decided to reopen the oral procedure and requested the interested parties to attend a new hearing.

In a nutshell, the case concerns the following:

Mr Christian Louboutin is a fashion designer who designs, amongst other things, high-heeled shoes for women. Those shoes have the particular feature that the outer sole is always red.

On 28 December 2009, Louboutin lodged an application for a trade mark which led to the registration, on 6 January 2010, for goods in Class 25, namely ‘footwear (other than orthopaedic footwear)’, of Benelux trade mark No 0874489 (‘the contested mark’). On 10 April 2013, the registration was amended so as to limit the goods covered to ‘high-heeled shoes (other than orthopaedic shoes)’.

The trade mark is described as consisting ‘of the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’. It is reproduced below:

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Van Haren operates shoe retail outlets in the Netherlands. During 2012, Van Haren sold high-heeled women’s shoes with red soles.

Louboutin brought proceedings before the Rechtbank Den Haag (District Court of The Hague, Netherlands) seeking a finding of trade mark infringement on the part of Van Haren, which it obtained.

This judgment, given by default, was challenged by Van Haren by way of opposition under Article 2.1(2) of the Benelux convention, alleging that the contested mark was invalid.

In the order for reference, the Rechtbank Den Haag (District Court of The Hague) explains that Van Haren’s line of defence is based on the assertion that the contested mark is in fact a two-dimensional mark, more specifically the colour red which, when applied to the soles of shoes, conforms to the shape of the shoes and gives them substantial value.

The referring court considers that the mark at issue is not a simple two-dimensional mark in that it is inextricably linked to the sole of a shoe. It observes that, while it is clear that the contested mark is an element of the goods, it is unclear whether the concept of ‘shape’, within the meaning of Article 3(1)(e)(iii) of Directive 2008/95, is limited to three-dimensional properties of the goods, such as their contours, measurements and volume, to the exclusion of colours.

In this regard, the referring court considers that if it were to be held that the concept of ‘shape’ does not extend to the colours of goods, then the grounds for refusal set out in Article 3(1)(e)(iii) would be inapplicable. It would therefore be possible to obtain permanent protection for marks incorporating a colour resulting from a function of the goods, for example, in relation to reflective safety clothing, or bottles covered with insulating material.

The new Advocate General’s opinion is as follow:

Article 3(1)(e)(iii) 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 is to be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain colour. The concept of a shape which ‘gives substantial value’ to the goods, within the meaning of that provision, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.