HYDRO and HYLO are similar enough according to the General Court of the EU

The General Court of the European Union has ruled in case  T‑817/19, Olimp Laboratories sp. z o.o v EUIPO.

This case concerns an attempt by Olimp Laboratories to register the following European trademark in class 05 – Pharmaceutical preparations, Pharmaceutical preparations for the treatment of eye diseases and conditions; Medical preparations; Eye drops, Preparations for ocular lubrication, Medicated eye-washes, Eye lotions for medical use; Topical anti-infective substances for the treatment of infections of the eye; Cachets for pharmaceutical purposes, Capsules for medicines, Lozenges for pharmaceutical purposes, Lozenges for pharmaceutical purposes; Medicines for human purposes, Tonics [medicines], Medicines for medical purposes, Adjuvants for medical purposes, Medicaments in liquid form; Ointments for pharmaceutical purposes, Eye ointment for medical use; Eye pads for medical use, Eye compresses; analgesic and anti-inflammatory preparations; Medicinal herbs.

Against this application an opposition was filed by OmniVision GmbH  based on an earlier European trademark for HYLO-VISION in class 05 – Dietary supplements and dietetic preparations; Medical and veterinary preparations and articles.

Both the EUIPO Opposition division and the Board of Appeal upheld the opposition finding the signs similar enough.

The decision was appealed. Olimp Laboratories argued that the earlier mark is devoid of distinctive character. The element VISION is used by many producers of such products. On the other hand HYLO refers to sodium hyaluronate.

The General Court disagreed and dismissed the appeal.

The Court found the goods as identical. In terms of the signs, the Court considered that the stylistic elements of the mark applied for are purely decorative. The figurative element of an eye and the word HYDRO have low distinctive character. In addition, VISION is descriptive for the goods at hand.

The Court found the claim for relation between HYLO and sodium hyaluronate as not proved and insufficient.

When it comes to the comparison between the marks, the Court considered them visually and phonetically similar. Conceptual similarity was found only in regard to the VISION element but not for the signs as a whole.

The difference between the mark in the letters L and DR was not enough to overcome the similarity.

The EUIPO decision was upheld

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KFC Japan won a hot trademark dispute

One interesting and a really hot trademark dispute in Japan has come to an end recently. Kentucky Fried Chicken Japan filed the following trademark application for RED HOT written in Japanese Katakana character:

The mark covered variety of goods in classes 29 and 30, including meat but with exception of seasonings and spices.

Against this mark an application was filed by the US company  French’s Food Company LLC based on the following earlier two marks for class 30 – seasonings and spices:

According to the US company, its marks had reputation in Japan for these goods and because of it there was a likelihood of confusion between the signs.

That wasn’t the opinion of the Patent Office, however. The opposition was dismissed in its entirety. The argument for this was the fact that seasonings and spices are not similar to the rest of the products in classes 29 and 30.

When it comes to the reputation of the earlier marks, the Office wasn’t convinced entirely. The fact that the mark was popular among specific dining restaurants  in the country is not enough a strong reputation to be established.

What’s more the presence of the distinctive work FRANK’S created the necessary distinguishing feature between the signs at hand.

Source: Masaki MIKAMI, Marks IP Law Firm.

Puma lost a trademark opposition against a cougar

Every trademark owner has the right to file an opposition against new applications for identical or similar marks. This, however, requires a correct analysis and strategy because the final result is not always so clear.

The General Court of the European Union has ruled in case T‑510/19, Puma SE v Gemma Group Srl, which concerns some struggles in that regard.

In the dispute at hand, the following European trademark application was filed for class 7 – Machines for processing of wood; machines for processing aluminum; machines for treatment of PVC:

Against this application an opposition was filed by Puma based on two earlier figurative trademarks for classes 18a 25 and 28:

The EUIPO dismissed the opposition because although these signs had some visual similarities their goods were completely dissimilar.

The decision was appealed several times and was turned to the Board of Appeal of the EUIPO by the European court due to some errors.

The Board confirmed the EUIPO position. It found that notwithstanding their obvious differences, the marks had a certain degree of visual similarity and conveyed the same concept of ‘pouncing feline recalling a puma’. It further found that a phonetic comparison of the marks at issue was not possible and that, visually, those marks were far from being identical. The Board of Appeal stated, in essence, that the applicant had not shown that the relevant, and entirely distinct, sections of the public targeted by the goods covered by each of the marks at issue established a link between those marks even though the goods covered by them were different. Next, it found that the applicant had not shown, in essence, that the positive values associated with the earlier marks could be transferred to the mark applied for. In particular, first, the Board of Appeal found that the applicant had not established the reasons why the image of the sports articles covered by the earlier marks positively influenced consumers in their choice of the goods covered by the mark applied for, which bore no relation to the concepts of sports, competition, active lifestyle, youth, pleasure and leisure conveyed by the earlier marks. The Board of Appeal found, secondly, that the applicant had not shown that the use of that mark for very specific industrial goods could devalue the image of the earlier marks.

The decision was appealed again by Puma but this time the Court dismissed it. Although there were arguments whether the reputation of the earlier marks was stated in time and in the official language of the EUIPO, the Court concluded that Puma failed to prove that the image of the earlier marks could be affected by the use of the mark applied for; the Board of Appeal rightly so decided.

Source: Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Puma prevailed over Ruma in a trademark dispute

Puma won one interesting trademark opposition in Finland. The case concerns a trademark application for RUMA in classes 25 and 28 (clothes and toys among others).

Against this application an opposition was filed by Puma based on early registered trademark for PUMA in the same classes.

The Finish Patent and Registration Office dismissed the opposition considering the two marks as not confusingly similar. The reasons were the different first leters and the conceptual dissimilarity.

The decision was appealed. The Court upheld it after which the decision was applied again.

The Supreme Administrative Court overturned the decision finding both marks visually similar despite the first letters that are different. According to the Court  the letters P and R are similar in appearance.

The Court questioned whether consumers would understand directly the meaning of PUMA as a word. Even if this was the case PUMA was distinctive for all the goods in classes 25 and 28. What’s more because of its reputation it has even stronger distinctive character. The interesting part here was the fact that the Court concluded on the existence of PUMA’s trademark reputation without submitted evidence in the proceeding.

According to the Court, when it comes to clothes they are often sold in stores where consumers choose between them mostly based on their visual aspects and not so based on conceptual or phonetic characteristics.

Taking all of this, the Court considered that both marks are similar enough.

Source: Johanna Säteri, Jenni Ihalainen – Berggren Oy. 

Chanel lost a dispute against Huawei in the EU

The General Court of the European Union has ruled in case  T-44/20 Chanel v Huawei Technologies which targets an issue with figurative trademarks.

The case concerns the following European trademark application in class 9 filed by Huawei:

Against this mark an opposition was filed by Chanel based on the following earlier French trademark in class 9:

In addition, the company claimed a trademark with reputation for the following another French trademark registered for dissimilar goods:

The EUIPO dismissed the opposition founding both signs as not confusingly similar. The fact that they share two connected elements in circle is not enough in order confusion to be established. What’s more both mark are completely dissimilar from conceptual point of view.

The decision was appealed. According to Chanel these marks were similar at least to low degree as they are applied for and to an average to high degree when the Huawei trademark was rotated by 90 degrees.

The Court disagreed reminding that a trademark comparison has to take into account the way signs are applied for not the way how they will be used after that. The Court considered both marks as not similar. They have connected elements but in different arrangements – one in horizontal and another in vertical. In addition, conceptually they are different. The later mark can be perceived as the letter H while the earlier marks can be viewed as letters C.

When a letter combination can create trademark problems – an EU Court decision

The European Court has ruled in case T‑860/19, Alkemie Group sp. z o.o срещу Mann & Schröder GmbH.

This dispute concerns a European trademark application for the following classes:

  • Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;
  • Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;
  • Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing preparations, shampoos, cosmetic products for therapeutic use, food supplements, hygiene products, clothing, bedding [linen], toys, children’s furniture; advertising and marketing; services relating to the presentation of goods; organization of participation in fairs and exhibitions ”.

Against this application an opposition was filed by Mann & Schröder GmbH based on early registered trademark for ALKMENE in the following classes:

  • Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;
  • Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;
  • Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos ”.

The EUIPO upheld the opposition finding both sign as confusingly similar for the consumers in the EU. The decision was appealed.

According the the applicant both marks were not similar because their first part ALK had been widely used in many other registered trademarks, which in turn meant that this letter combination was not distinctive.

The Court disagreed. The fact that other trademarks cover the same letters combination doesn’t mean that it is not distinctive. Such an assumption has to be proved by particular evidence that to show low distinctive character of the combination in relation the the particular goods and services. This didn’t happen in the case at hand.

The Court pointed out that when word mark is compared with combined one, the word part has a dominant position in most of the cases.

From that perspective, the Court considered that there is a similarity between both marks. This was due to their identical beginnings as well as to their identical length and similarity from visual and phonetic point of view.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB.

When Brownies trademarks are really used?

When it comes to protection of trademarks, the law requires these trademarks to be genuine used within 5 years after their registration. If this doesn’t happen or the use is ceased for 5 consecutive years one registered trademark can be revoked.

This is used often in opposition procedures by trademark applicants who ask the opposition applicant to prove trademark use for a period of 5 years. If there is no evidence for such use, oppositions are dismissed.

The General Court has ruled in case T‑598/18 that concerns such a situation. The case background is as follow:

On 30 April 2015, Mr Juan Morera Morral filed an application for registration of an EU trade mark for BROWNIE in classes 18, 25 and 35.

Against this application an opposition was filed by The Guide Association based on earlier marks for BROWNIES and BROWNIE for similar goods and services.

On 26 August 2016, the applicant requested that the intervener furnish proof that the earlier trade mark had been put to genuine use.

On 18 January 2017, the intervener produced several documents, consisting of an affirmed statement by its Corporate Resources Director (‘the affirmed statement’) and five annexes, as proof of genuine use of the earlier mark (‘the second series of documents’). One of the marks was used in this graphic representation:

On 23 October 2017, the Opposition Division partially upheld the opposition. In particular, it considered that the intervener had furnished proof of genuine use of the earlier trade mark for the goods and services such as ‘Key rings’; ‘Rucksacks; daysacks; bags for children’; ‘Articles of clothing, all for girls’; ‘Badges; emblems; ribbons; embroidery; patrol names, shoulder patches, all in the nature of embroidery; woggles’; ‘Organisation of group activities in the education, cultural, training and entertainment fields; provision of courses of instruction and training in camping, sports, homemaking, wood-craft’.

In addition, it found that there was a likelihood of confusion between the marks at issue.

On 18 December 2017, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

By decision of 4 July 2018 the Second Board of Appeal of EUIPO dismissed the appeal. In particular, first, it found that the intervener had furnished proof of genuine use of the earlier trade mark in respect of some of the goods and.

This decision was appealed again.

The General Court dismissed the appeal. In brief, according to the Court, one word trademark can be deemed as used even represented in graphics and colors if there are no significant differences with its dominant and distinctive elements. In the case at hand, although used in a graphic representation, the dominant and distinctive element is still the word part. From that perspective this constitutes proof of use of the registered word mark.