Google won a dispute for STREET VIEW in Japan

The the Japan Patent Office has ruled in a case related to a trademark application for “STREET VIEW MODEL (SVM)”, written in Japanese Katakana character, for class 41: providing online non-downloadable videos and photographs’:

Against this application an opposition was filed by Google based on an earlier trademark with reputation STREET VIEW for classes 9 and 42.

Although the phrase STREET VIEW is not so unique, the Patent Office concluded that based on the acquired distinctiveness and reputation of the earlier mark, there is a possibility for a consumer confusion. This is enhanced by the fact that both business models concern digital images and videos offered via the Internet.

Source: Masaki MIKAMI, Marks IP Law Firm.

Bentley won a dispute against Bentley Life in Japan

The UK Arthur Brand Management Company Limited filed a trademark application in Japan for the following sign in Class 41 – health club services [health and fitness training]; club services [entertainment or education]; teaching and educational services; organization of competitions [education or entertainment]; presentation of movies:

Against this mark an opposition was filed by Bentley Motors Company based on the following earlier trademarks registered in Japan for Class 12 – vehicles:

In addition, the company claimed that these marks have a strong and longstanding reputation in the country which is the reason who the applicant try to take advantage of it by copying the marks and free-riding in general.

The Japan Patent Office upheld the opposition. Although the services in class 41 are completely different from the goods in class 12, the applied for sign and the earlier once are almost identical. This in conjunction with the high level of acquired reputation by the Bentley Motors’ trademarks since 1920, can mislead and confuse the consumers to believe that the later mark has a relation with the Bentley Motors’ business.

Source: Masaki MIKAMI, Mark IP Law Firm.

Lionel Messi is so famous that he doesn’t need to prove it – a decision by the European Court

The European Court has issued its decision in the case – 449/18 P EUIPO v Messi Cuccittini and C-474/18 P J.M.-E.V. e hijos v Messi Cuccittini.

This dispute concerns an attempt by one of the most famous footballer in the world for all time Lionel Messi to register the following European trademark in 2011 for clothes and shoes:

Against this application an opposition was filed by a Spanish company based on early registered trademark for MASSI for the same goods.

The EUIPO upheld the opposition finding both signs similar. From phonetic and visual point of view they are very similar due to the one letter difference.

From conceptual side, the fact that the word Messi refers the the well-known footballer Lionel Messi was not enough to overcome the similarity because only part of the consumers are interested in the football as a sport.

The decision was appealed. The General Court of the EU annulled it entirely.

According to the Court, both marks are not similar and the reason for this conclusion is that MESSI is a word that consumers will automatically refer to the particular footballer. This will make the necessary difference due to which a confusing between the signs is not possible.

The EUIPO retorted that the footballer didn’t claim any reputation in the initial proceeding and there were no evidence submitted in that regard. That’s why the Office didn’t take into account this fact, the official procedure requires reputation to be proved.

The Court clarified that some publicly well-known facts have to be considered by the Office without they to be proved. In the case at hand the footballer reputation is such a fact.

Although this decision is logical it arises some question.

It is a fact that Leonel Messi is very famous as a whole. But is is a fact that brands such as CoCa Cola, Nike, Apple are so famous as well.

From that perspective is this decision means that such brands don’t have to prove their reputation in disputes before the EUIPO any more.

And what about the McDonald’s case from the last year when the company lost its EU trademark for Big Mac due to insufficient evidence for acquired reputation provided in the procedure. The fact is that most of the people regard Big Mac as a product by McDonald’s.

It will be interesting to what extent this decision by the European Court will reflect the future practice of the EUIPO and all national Patent Offices in the EU.

Source: IPKat.

Hermes won a dispute in Japan over its trademark for bags “Kelly”

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.

Audemars Piguet lost a dispute regarding a watch trademark in the UK

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.

Source: WIPR.

The General Court of the EU found similarity between trademarks for wine

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.

MIM is similar to MUMM according to the General Court of the EU

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.