How an abstract canine depiction reflects a trademark opposition in the EU?

The General Court of the European Union has ruled in the case T‑596/21 Société Elmar Wolf v Fuxtec GmbH.

The case concerns the similarity between figurative marks based on the meaning they can convey to the consumers.

Fuxtec GmbH is the owner of the following international mark, where the EU is designated, for classes 4, 7, 8, 12, and 35:

Against this mark, an opposition was filed by Société Elmar Wolf based on several earlier figurative marks in classes 7, 8, and 35:

The EUIPO dismissed the opposition finding both signs dissimilar. The case was appealed.

The General Court upheld the EUIPO decision entirely. According to the Court, the earlier marks convey a clear impression of canine while the later mark is rather abstract, as a result of its clean curved lines, its sharp edges, and the lack of figurative details.

Due to this fact, consumers would need to put more effort and thoughts in order to discover the meaning of the sign if this is possible at all. This prevents the possibility of consumer confusion.

By contrast, as the Board of Appeal pointed out, the shape exhibited by the contested sign is rather abstract, as a result of its clean curved lines, its sharp edges and the lack of figurative details. It is true that that sign includes elements which could be perceived by a non-negligible part of the relevant public as the contours of the front view of a face, ears pointing upwards, a muzzle pointing downwards and eyes. However, the representation of a head which may emerge is obviously less realistic and considerably more stylised than the silhouette illustrated by the earlier marks, which represents some of the favourite attributes, a slightly open mouth and a menacing expression, of the representation of the head of a canine and which the rather abstract silhouette in the mark applied for does not have. In those circumstances, it is unlikely that the average consumer, who normally perceives a mark as a whole and does not carry out an analysis of its details at the time of purchase, will be capable of spontaneously associating the contested sign with the head of an animal, or even with the head of a canine, without engaging in an analysis which goes beyond that expected at the time of purchase.

It follows that it must be held, as the Board of Appeal found, that the overall impression created by the contested sign makes the identification of the head of an animal, let alone of a particular animal, highly arbitrary and, consequently, that the signs at issue are visually similar at most to a low degree.

The argument of the opposition applicant that the earlier marks have a high degree of inherent distinctiveness because they do not convey any meaning in relation to the goods and services covered by them, was dismissed by the Court, which considers that such consideration is not enough a high level of distinctiveness to be proved.

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Fiat Chrysler lost a trademark dispute over JEEP in Japan

One new interesting trademark dispute, reported by Masaki Mikami, was solved by the Japan Patent Office.

The case at hand concerns a new trademark application in Japan filed by an individual for the sign JEEPER in class 8 –  hand tools.

Against this application, an opposition was filed by the automotive manufacturer Fiat Chrysler. The ground was an earlier mark JEEP for which the company claimed reputation amongst Japanese consumers due to which arising of confusion was possible.

The Patent Office admitted that the earlier mark JEEP has some level of reputation in the country but disputed the fact that it covers the above-mentioned goods in class 8.

According to the Office, both signs were not similar enough from the visual and phonetic points of view. Conceptually there was no similarity too because the mark applied for had no specific meaning while the earlier mark was associating with 4×4 vehicles.

Based on this the opposition was dismissed in its entirety.

Is MAIMAI similar to YAMAMAY in the EU?

The European Court has ruled in case T-589/20, Calzaturificio Emmegiemme Shoes Srl v Inticom SpA.

The dispute at hand concerns a European trademark application, filed by Calzaturificio Emmegiemme Shoes Srl, for a wordmark MAIMAI MADE IN ITALY in classes:

18: “Leather and imitation leather; goods made of these materials and not included in other classes; animal skins ”;
25: “Clothing; shoes; head hats ”;
26: “Shoe Clips”.

Against this application, an opposition was filed by Inticom SpA on the ground of an earlier EU mark for YAMAMAY for the same classes of goods and services.

After some back and forth the Board of Appeal of the EUIPO confirmed partially the opposition due to the identity and similarity of the goods and a low visual and medium phonetic similarity of the signs.

The letters Y and I are pronounced and sound similar to most of the languages in the EU.

The part MADE IN ITALY in the mark applied for is not distinctive because indicates the geographic origin of the goods.

Conceptual assessment between the marks is not possible because they don’t have a specific meaning.

In addition, the owner of the earlier mark proved successfully genuine use of its mark in the EU.

The decision was appealed but the European Court upheld the EUIPO’s conclusions.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Volkswagen successfully defended its classic Van trademark in the EU

Protection of three-dimensional trademarks can be a real challenge both in the process of their registration with the Patent Offices and in case of enforcement.

One indicative case about this is the following EU trademark application filed by Pinball Factory GmbH for classes 11, 12(including camping vehicles), 20, 21 и 39:

Against this application, an opposition was filed by the German car manufacturer Volkswagen based on the following earlier three-dimensional trademark in classes 12, 20, 21 и 39:

Initially, the EUIPO dismissed the opposition finding both signs dissimilar. According to the Office, the images in the earlier mark represent “true-to-life depiction of a camper van, or bus” because of this they have a low distinctive character.

The mark applied for shares a similar image of a van but because of its low distinctiveness, it is not decisive for the assessment of similarity. On the other hand, the word part CULTCAMPER plays a differentiating role between both marks.

In the appeal, however, the Board of Appeal overturned this decision. The Board stated that the earlier mark has to be taken as a whole, not as individual perspectives only. The fact that the mark represents a depiction of a van is not sufficient to conclude that the marks’ distinctiveness was low.

On the contrary, the Board considered the earlier mark as distinctive enough because it departs from the norms and customs of the sector concerned.

In the case at hand, “the front of the van is characterised by a divided windshield and the curved V-shape on the bonnet with the circular headlights on each side“.

The same elements were shared by the mark applied for although stylized. The word part CULTCAMPER cannot be so differentiating because it can be interpreted as a laudatory word combination – CULT and CAMPER, that is to say, “camper van which is greatly admired or regarded as fashionable“.

Taking into account all of this the Boarded concluded that there was a likelihood of confusion and that the later mark can be associated with the earlier sign by consumers.

Source: Vlotina Liakatou – Baker McKenzie for Lexology.

GAP lost a trademark dispute in Japan

The US worldwide clothing and accessories retailer GAP lost a trademark opposition against an application for word mark GAPACE in class 25 – clothes.

According to GAP this new trademark was confusingly similar to earlier trademarks GAP owned by the company. What’s more, GAP has a high level of reputation amongst consumers in Japan.

The Japan Patent Office, however, disagreed and dismissed the opposition in its entirety.

According to the Office, the claimed reputation wasn’t properly proved. The fact that GAP had been operating in Japan since 1994 managing 150 stores wasn’t enough in order to be concluded that the mark was popular.

When it comes to the signs themselves, the Office found them completely dissimilar from the visual and phonetic points of view.

Conceptually there is no similarity too because while GAPACE has no particular meaning, the word GAP can be interpreted as “separation in space”.

Based on this the Office reached a conclusion that both marks were different and not confusingly similar for the opposition to be upheld successfully.

How powerful Mickey Mouse’s silhouette is – a trademark dispute from Japan

Masaki Mikami reports about one interesting trademark conflict from Japan. The disputer at hand concerns the following application for a combined trademark for class 35 – retail or wholesales service in relation to confectionery, processed foods, and beverage (tea, coffee, cocoa):

Against this application, an opposition was filed by Disney Enterprises, Inc. based on the following figurative trademark, for which a reputation was claimed:

The Patent Office dismissed the opposition in its entirety although acknowledging the existing reputation of the earlier sign in Japan.

According to the Office, both signs are not similar from a visual point of view because one of them contains word elements and because the graphic representation is depicted upside down.

Phonetically, the marks are not similar because only the latter one can be pronounced whereas the earlier one has no phonetic structure at all.

Conceptually, both signs are not similar. While the applied-for mark has meaning, Disney’s sign has no inherent meaning.

Based on this, the Office concludes that there is no similarity between the signs which is capable to trigger consumer confusion.

IOC won a dispute regarding the Olympic trademark in Germany

The International Olympic Committee succeeded in a dispute in Germany on a trademark associating with the Olympic Games.

The case at hand regards the following German trademark application for classes 28, 35 and 41:

The German Patent and Trademark Office refused this trademark based on the German Law on the Protection of the Olympic Emblem and Designations (OlympSchG). According to this law, any use of  “Olympiade”, “Olympia”, “olympisch” or similar is prohibited if it is not authorized by the the National Olympic Committee for Germany or the International Olympic Committee. 

The decision was appealed and overturned. Because of this The International Olympic Committee intervened filing an opposition against this mark based on early registered mark for OLYMPIC.

This time, however, the Patent Office didn’t find similarity between the signs dismissing the opposition. In the appeal the German Federal Patent Court upheld this decision as valid.

Another appeal followed and the German Federal Supreme Court overturned the decision entirely. According to the court, the opposition was admissible. The fact that special legislation protects the Olympic Games symbols and signs doesn’t mean that they cannot be protected by the trademark law too.

When comparing the signs, the Court found enough similarities in order to upheld the opposition. The figurative element in the mark applied for would be perceived as an indication for the Olympic fire. In addition the lower court didn’t take into consideration the enormous reputation the earlier mark possesses. What’s more the first element of the mark RETRO has descriptive character.

The case has now been referred back to the German Federal Patent Court for new decision.

Source:  Yvonne Stone, Jana Bogatz – D Young & Co LLP for Lexology.