Spotify won a trademark dispute in the US that has a slight tinge of marijuana.
The case concerns a trademark application for POTIFY by a small US company offering an app that connects users with firms that dispense and deliver cannabis.
Spotify, one of the largest music streaming companies in the world, filed an opposition based on earlier trademark SPOTIFY. According to the company, both signs were confusingly similar and what’s more, the mark applied for led to a trademark dilution by way of tarnishment and blurring.
The USPTO agreed with Spotify finding both marks confusingly similar due to clear visual and phonetic similarities. One letter difference was not enough to overcome this issue. According to the Office, dilution is possible too because of the clear association between the signs in the consumer’s mind.
The applicant’s arguments that their mark was created without relation to the famous brand, and that it focuses only on the term POT that is associated with the use of marijuana were dismissed.
The Office stated that taking into account the reputation of the earlier mark, it is highly unlikely that the owners of the cannabis app weren’t aware of the Spotify app service at all.
This dispute shows how risky such brand building can be. Although business areas can be different, a problem can arise again due to the established reputation of famous trademarks in the market.
The General Court of the European Union has ruled in case T‑204/20 Zoom KK v Facetec, Inc. This case is indicative for trademark conflicts where almost identical signs cannot be confusingly similar for consumers.
Facetec, Inc. filed an application for a word European trademark ZOOM in class 9: Computer application software for mobile phones, smartphones, portable media players, handheld computers, and tablets, namely, security software that allows users to secure and access their mobile devices through multi-dimensional facial recognition identification.
Against this application an opposition was filed by the Japanese company Zoom KK based on the following two earlier marks:
A word mark ZOOM in classes 9 and 15;
A combined mark in classes 9 and 15:
The opponent proved a genuine use of the earlier marks for the following goods: in the case of the combined mark for portable recorders; magnetic compact discs, [records]; rhythm machines, drum machines; and sound processors, effect processors and their parts’ in Class 9 and for the goods ‘multi-track recorders, multi-effect apparatus, rhythm machines, guitar effects consoles and pedals, bass effects pedals, acoustic effects pedals, guitar effect processors’ in Class 15 and, in the case of the word mark for ‘portable recorders’ in Class 9.
The EUIPO dismissed the opposition. According to the Office despite the fact that both signs are visually, phonetically and conceptually similar they cannot be confusingly similar as a whole for the consumers in the EU.
The reasons for this are three:
First of all the goods in the earlier marks are related to editing and changing sounds while recording music whereas those in the later mark target identification of a person accessing a mobile device such as a smartphone. This means that the target audiences are different;
The level of consumer attention related to these goods is high due to their specifics. This lower the chance for confusion even in case of similar signs.
The distinctive character of the word ZOOM is low for the English speakers in the EU. This word has a meaning that can relate to musical sounds.
The General Court upheld this decision in its entirity.
This case is intriguing because shows clearly how important is all trademark protection requirements to be taken into consideration in the brand building process. Sometimes it is really tempting the selected brand name to have a meaning related to a particular goods or services. Although this can be a great idea form marketing point of view it can create a lot of troubles when it comes to trademark protection because it can reduces its the scope significantly.
The General Court of the European Union has ruled in case T‑368/20 Smiley Miley, Inc. v Cyrus Trademarks Ltd. This dispute started with a European trademark application for MILEY CYRUS in classes 9, 16, 28, 41 filed by Smiley Miley Inc. , a company owned by the famous pop singer Miley Cyrus.
Against this application an opposition was filed by Cyrus Trademarks Ltd based on the following earlier trademark for classes 9 and 20:
The EUIPO upheld partially the opposition concluding that both signs are confusingly similar. The reason for this was the fact that Cyrus was not common name and can be perceived as a short name for Miley Cyrus. In addition, earlier mark was included in its entirety in the later one with the presence of similar goods and services.
The decision was appealed.
The General Court disagreed with EUIPO and overturned the decision. According to the Court every mark has to be assessed in its entirety. From that perspective it is highly likely most of people to associate the mark applied for with the famous singer due to her global reputation.
Accordingly, the Board of Appeal erred in finding that the name of the famous American singer and actress, MileyCyrus, of which the mark applied for consists, has no conceptual meaning.
As regards, next, the earlier mark CYRUS, it must be held that, contrary to what EUIPO claims, the fact that the name Cyrus is not a common surname does not necessarily support the inference, in the present case, that the relevant public will perceive that surname alone as the short version of the full name MileyCyrus, thus identifying the same person. As has been stated in paragraph 37 above, MileyCyrus markets her activities and performs on stage using her first name and surname taken together. By contrast, it has been neither suggested nor demonstrated that she has been known as a singer or actress by her surname alone. It is thus apparent that the fact that MileyCyrus is well known, as a singer and actress, results from her first name and surname taken together, and not from her surname alone. Accordingly, the mere fact that that name is not common does not support the inference that the relevant public will perceive the word ‘cyrus’, taken alone, as referring to the famous singer and actress MileyCyrus, who, according to the evidence before the Court, has specifically never used the name Cyrus in isolation in the course of her career. It must therefore be held that the earlier mark has no particular semantic meaning for the relevant public.
It thus follows from the foregoing considerations that the applicant is correct in claiming that the marks at issue are conceptually different and that the Board of Appeal erred in finding that the conceptual comparison was neutral.
That is the case here. The mark applied for, MILEYCYRUS, has a clear and specific semantic content for the relevant public given that it refers to a public figure of international reputation, known by most well-informed, reasonably observant and circumspect persons, as has been pointed out in paragraph 51 above, whereas the earlier mark has no particular semantic meaning. Furthermore, the reputation of the singer and actress MileyCyrus is such that it is not plausible to consider that, in the absence of specific evidence to the contrary, the average consumer, confronted with the mark MILEYCYRUS designating the goods and services in question, will disregard the meaning of that sign as referring to the name of the famous singer and actress and perceive it principally as a mark, among other marks, of such goods and services (see, to that effect, judgment of 17 September 2020, EUIPO v Messi Cuccittini, C‑449/18 P and C‑474/18 P, not published, EU:C:2020:722, paragraph 36).
It follows that the conceptual differences existing in the present case between the marks at issue are such as to counteract the visual and phonetic similarities set out.
This is another decision of the European Court that gives priority to the reputation of a celebrity in case of trademark similarity assessment. Recently there was a similar case with Lionel Messi and his European trademark.
The well-known music producer and DJ Marshmello won a copyright lawsuit in the US regarding his track “Happier” created in collaboration with the pop band Bastille.
The lawsuit was initiated by the Russian DJ Arty who blamed Marshmello on copyright infringement regarding his remix of a song by One Republic. According to Arty apart from using the original song he added his own music elements in the remix, elements that were been used by Marshmello in his track “Happier”.
The Court disagreed. The reason for this was the fact that Arty signed a contract with Interscope for the One Republic’s song remix according to which he disclaimed any ownership or financial interest related to the remix.
Arty ‘s position was that this concerned only the One Republic part of the remix but not the additional music elements.
The Court dismissed this claim stating that the contract covers the entire remix not only part of it. There was no exceptions under the contract provisions that could suggest the Arty obligations concerned only part of the final work.
The company GrandAri Inc that manages Ariana Grande’s trademarks lost a dispute in Japan.
The case concerns a trademark application for ARIANNA filed by Arianna Co. Ltd for Class 3 – cosmetics, soaps, and detergents and Class 10 – medical apparatus.
GrandAri Inc filed an opposition against this application based on an earlier international trademark for ARIANA GRANDE for Class 3 – Perfume; eau de perfume; fragranced body care preparations, namely, body lotions, body scrubs.
According to the company, both marks were highly similar due to the element Ariana in the earlier mark which was dominant one. Because Ariana Grande was a celebrity its fans often call her just Ariana. Sometimes the merchandising products with its trademark were referred only as Ariana.
GrandAri Inc stated that the pop star was very famous in Japan because of which it was possible the consumers to be confused when it comes to the later mark ARIANNA. One letter difference was not enough to overcome this negative possibility.
The Japan Patent Office dismissed the opposition in its entirety. According to the Office, although Ariana Grande is very famous celebrity in the country, there were not sufficient evidence that her first name ARIANA served as a source of trade origin alone apart for the whole trademark Ariana Grande. The Office stressed the need trademarks to be evaluated in their entirety not only part of them.
From that perspective, the Office considered both signs dissimilar and not confusing for the consumers in Japan.
The European Court has ruled in case C‑147/19Atresmedia Corporación de Medios de Comunicación S.A. v Asociación de Gestión de Derechos Intelectuales (AGEDI), Artistas Intérpretes o Ejecutantes, Sociedad de Gestión de España (AIE).
On 29 July 2010, AGEDI and AIE brought an action before the Commercial Court, Madrid, Spain against Atresmedia seeking payment of compensation in respect of acts of communication to the public of phonograms published for commercial purposes, or reproductions of those phonograms, carried out between 1 June 2003 and 31 December 2009 via the television channels operated by Atresmedia, and for the unauthorised reproduction of phonograms in connection with those acts of communication to the public.
Since that action was declared unfounded by the Commercial Court, Madrid, AGEDI and AIE brought an appeal against that court’s judgment before the Provincial Court, Madrid, Spain, which set aside that judgment and upheld their application in its entirety.
Atresmedia brought an appeal on a point of law before the referring court against the judgment of the Provincial Court, Madrid.
The referring court notes that the appeal relates exclusively to whether the communication to the public of audiovisual works carried out by Atresmedia via its television channels gives rise to the right to the single equitable remuneration provided for in Spanish law in Article 108(4) and Article 116(2) of the LPI, which correspond, in EU law, to Article 8(2) of Directive 92/100 and to Article 8(2) of Directive 2006/115. In particular, that court states that it falls to it to determine whether, from the moment when a phonogram published for commercial purposes, or a reproduction of that phonogram, has been incorporated or ‘synchronised’ in an audiovisual recording containing the fixation of an audiovisual work, the performers and phonogram producers concerned may demand that single equitable remuneration.
The referring court adds that since AGEDI and AIE claim compensation from Atresmedia in respect of the communication to the public of audiovisual works carried out between 1 June 2003 and 31 December 2009, both Directive 92/100 and Directive 2006/115 are applicable rationae temporis to the main proceedings.
In those circumstances the Supreme Court, Spain decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘(1) Does the concept of the “reproduction of a phonogram published for commercial purposes” referred to in Article 8(2) of Directives 92/100 and 2006/115 include the reproduction of a phonogram published for commercial purposes in an audiovisual recording containing the fixation of an audiovisual work?
(2) In the event that the answer to the previous question is in the affirmative, is a television broadcasting organisation which, for any type of communication to the public, uses an audiovisual recording containing the fixation of a cinematographic or audiovisual work in which a phonogram published for commercial purposes has been reproduced, under an obligation to pay the single equitable remuneration provided for in Article 8(2) of the aforementioned directives?’
The Court’s decision:
Article 8(2) of Council Directive 92/100/EEC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property and Article 8(2) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property must be interpreted as meaning that the single equitable remuneration referred to in those provisions must not be paid by the user where he or she makes a communication to the public of an audiovisual recording containing the fixation of an audiovisual work in which a phonogram or a reproduction of that phonogram has been incorporated.
One of the biggest and most popular festivals in the world Coachella Valley Music and Arts Festival (‘Coachella’) was postponed for October this year.
However, this wasn’t the only problem for the company organizer of the festival AEG Presents Ltd.
Recently, the European Office for intellectual property – trademarks and design (EUIPO) has revoked one of the AEG Presents’ European trademarks: ‘Coachella’ registered in classes 9, 16, 25, 35, and 41.
The reason was a request by a Spanish company that applied for an EU trademark ‘Coachella’ for wines. AEG Presents filed an opposition against this mark and the Spanish company initiated revocation procedure based on lack of genuine use on the EU territory.
AEG Presents submitted evidence for its trademark well-known status amongst the consumer in the EU and the sales of tickets.
However, the EUIPO revoked the ‘Coachella’ for all classes except the following services in class 41: Organisation, production and conducting of performing arts entertainments and festivals, such services provided on-line from a computer database or the Internet; performance of music, such services provided on-line from a computer database or the Internet; musical and visual entertainment provided on-line from a computer database or the Internet; providing digital music from the Internet.
This case serves as a good example of the complexity of proving a trademark genuine use in one territory when the products and services associated with the mark are offered mainly on another territory.