The French fashion house HERMES INTERNATIONAL won an opposition against a trademark application in Japan for D.KELLY” in class 18 – bags and pouches.
Against this application Hermes invoked its earlier trademark for “KELLY” in class 18 too. In addition a trademark with reputation was claimed.
According to the French company there was a clear similarity between both signs which could create confusion among the consumer in the country. The dominant element in the later mark was “KELLY” whereas the “D” letter had no significant implication for the understanding of the mark.
Hermes submitted evidence for the reputation of its mark which had been in use since 1956. The brand was inspired by the Princess Grace Kelly of Monaco. The annual turnover from sales in Japan under this trademark was about 43 million dollars. Apart from this there were many advertising campaigns.
The Patent Office upheld the opposition concluding there both sign are confusingly similar which was supported by the high level of reputation of the earlier mark in Japan.
Source: Masaki MIKAMI.
The Swiss watchmaker Audemars Piguet lost an opposition in the UK against an application for trademark Oakky in class 14.
The Swiss company filed its opposition based on an earlier registered trademark Royal Oak in class 14.
The UKIPO dismissed the opposition considering both signs similar only to a low extent which wasn’t enough to cause consumer confusion. According to the Office, there was only some conceptual similarity on the ground of the meaning of Oak and Oakky. However, this wasn’t enough in the case at hand.
With regard to the claimed reputation of the earlier mark, the Office considered it as not proved. Although it was clear that watches with the brand Royal Oak had been sold in the UK, there is no evidence about their volume and turnover. Apart from that, it wasn’t clear to what extent the mark was popular among the consumers.
This case shows clearly that in such situations only one piece of evidence is not enough to prove a reputation or a well-know status. In most of cases numerous examples about the trademark use and popularity have to be submitted.
The General Court of the European Union has ruled in case Case T‑239/19 Vinos de Arganza v Nordbrand Nordhausen GmbH. It concerns an attempt for registration of the following combined EU trademark for class 33 – wine:
Against this application, an opposition was filed based on an earlier German trademark BELCANTO for class 33 – Alcoholic beverages.
EUIPO upheld the opposition entirely. According to the Office, the goods for both marks were identical. From a visual point of view, both signs were similar to a low degree. Phonetically they were similar because of their end sounds. Conceptually both trademarks were neutral because they had no meaning for the German-speaking public.
The Court confirmed this decision.
What is interesting here is the fact that although the beginning of the marks has a bigger impact on such comparisons in the case at hand the different letters, in the beginning, weren’t able to overcome the entire possibility for consumer confusion between the signs.
The General Court of the European Union has ruled in T‑589/18 Vins el Cep, SL v EUIPO. The case concerns an attempt for registration of the following EU trademark in class 33 – Alcoholic beverages (except beer).
Against this mark, an opposition was filed based on earlier marks MM, MUMM and the following combined mark, all for class 33:
The EUIPO upheld the opposition concluding that there is a risk for consumer confusion between the signs. The dominant element in the later mark was MIM, which was similar to MM and MUMM at the beginning and end of the words.
Visually and phonetically the marks at hand were similar too. Conceptually, there was no similarity because the word MUMM meant ‘courage’ in German.
The word part NATURA in the mark applied for, had secondary importance so it wasn’t able to make the difference.
Taking into account the identical goods in class 33, the Office accepted that there is a risk for consumer confusion.
The decision was upheld by the General court.
Jaguar Land Rover lost an opposition in Japan against the following national trademark application in class 12:
Against this application, the UK company invoked a family of its earlier figurative and combined trademarks in class 12:
According to the company, there was a significant similarity between the signs due not only to the Jaguar image but the first part of the words JAG.
The Japan Patent Office, however, disagreed stating that the trademarks at hand are not confusingly similar for the consumers although they are for identical and similar goods.
According to the Office, the stated reputation of the earlier signs in Japan wasn’t proved enough and cannot play a significant role in the assessment.
Source: Masaki MIKAMI
Amazon won a dispute before the UK Patent Office against a word trademark application for “SPARKK” in class 9 for goods including computer application software, mobile applications, and software for social networking services.
The opposition was based on the earlier trademark “Amazon Spark” for the same class of goods.
The UKIPO upheld the opposition stating that although Amazon is the first word in the earlier mark, Spark has a roughly equal contribution to the overall impression of the sign.
What’s more, the additional letter K in the later mark is not enough to overcome the possible consumer confusion. This is supported by the fact that Amazon is a distinctive and well-known mark and because of this consumers may think that SPARKK is just another sub-brand related to “Amazon Spark” .
Kellogg Company lost an opposition in The UK. The case concerns the trademark application for FRUIT LOOP filed by the local brewery Fuller for class 32 – Beer, ale, lager, stout and porter; non-alcoholic beers.
Against this mark, Kellogg invoked its rights over the early registered trademark with reputation FREET LOOPS for class 30 – Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and non-frozen confectionery; honey, treacle; yeast, bakingpowder; salt, mustard; vinegar, sauces (condiments); spices.
The opponent claims that it has reputation under the above mark in respect of “preparations made from cereals”. It claims that use of the mark in suit would take unfair advantage of its mark and use of it would ride upon the coat tails of the opponent’s reputation and marketing efforts which would provide an unfair advantage. Use of the mark in suit would also dilute the distinctiveness of its mark, and the association of the opponent’s product with use on alcoholic beverages is likely to cause detriment to its reputation.
The Patent Office disagreed dismissing the opposition. According to the Office, there was only a low level of similarity between both signs for dissimilar goods.
The key moment in the opposition was the claimed reputation of the earlier sign. According to the Office, it wasn’t proved sufficiently which to show that the mark had been used for a prolonged period in the UK in a way that consumers are aware for its high level of reputation.