Chanel failed to register its No. 5 perfume bottle as a trademark in Lithuania

One interesting case from Lithuania shows how difficult registration of 3D trademarks can be.

Chanel filed сх 2014 a trademark application for their No. 5 perfume bottle in class 3 – perfumes:

Although the same sign was a successfully registered trademark in many other countries, that was not the case for Lithuania where the local Patent Office refused it based on absolute grounds – lack of distinctiveness.

The decision had been appealed several times before reaching the Supreme Court.

The Court considered the sign as three-dimensional and confirmed the lack of distinctive character. The EU Court practice was cited, according to which consumers don’t usually associate the shape of packaging with the origin of a product. Because of this more solid arguments and evidence are necessary in order for such signs to become valid trademarks.

In the case at hand, the Court found the submitted packaging as not diverging from what is customary for these types of products. Many other similar packagings were existing on the market so consumers would not perceive the sign applied for as a source of a particular trade origin.

Based on this the Court concluded that Chanel’s perfume bottle lacks inherent distinctiveness.

In regard to the evidence for acquired distinctiveness through market use, the Court dismissed them as insufficient.

The consumer survey offered by Channel targeted only France but not Lithuania. This was crucial for the Court which found the rest of the evidence, such as marketing data and materials, as insufficient for proving a distinctive character for a three-dimensional mark for packaging.

This case comes to shows again how difficult registration of such trademarks can be for every applicant even for a big company like Chanel. A good IP strategy is necessary way before applying for a trademark which to target all possible scenarios and to secure adequate facts and figures supporting the existence of distinctive character.

Source: Neil Wilkof, Marijus Dingilevskis за IPKats

CHANEL lost a trademark dispute in Japan regarding its famous COCO brand

One interesting trademark dispute from Japan where the local company 196+ Inc. applied for a trademark “COCOMIST” in class 3 – cosmetics, perfumery, fragrances, incense, toiletry preparations, etc.

Against this application an opposition was filed by the well-known fashion company CHANEL SARL based on an earlier mark for COCO for the same goods. According to the French company both signs are similar and there is a likelihood for a consumer confusion especially taking into account the reputation of the earlier mark in Japan.

In addition, the company suggested that the COCO reputation is enhanced by the nickname of the French fashion designer “Gabrielle COCO CHANEL” who was the founder of the brand.

The Japanese Patent Office, however, wasn’t impressed enough from these arguments. According to the Office when compared both signs have to be taken in their entirety. From that point of view the signs are dissimilar. The Office couldn’t find any particular meaning when it comes to the mark applied for in order to conclude likelihood of confusion between both marks even though the earlier mark has a strong reputation in Japan.

Source: Masaki MIKAMI, Marks IP Law Firm.

Ariana Grande lost a trademark dispute in Japan

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.

Source: Masaki MIKAMI – Marks IP Law Firm.

Dior’s famous 3D trademark case will guide the courts in China

The China’s Supreme People’s Court included the famous dispute over Dior’s three dimensional trademark for its water droplet-shaped bottle to a list of “Guiding” cases in China.

As it is well-known, Dior tried to register the following 3D trademark for fragrance in 2015 in China:

The Patent Office, however, refused to register this mark considering lack of enough distinctiveness. The submitted evidence for acquired secondary meaning was dismissed as insufficient. In the appeal the court upheld this decision.

The Supreme People’s Court, however, disagreed and annulled these decisions. According to the court, the Dior’s trademark has acquired distinctiveness throughout the years among the Chinese consumers based on its unique form and famous status.

Now this decision will be used as a guidance for all courts in the country in an attempt for harmonizing the practice regarding the protection of 3D trademarks in the China.

Source: The FashionLaw.

Breaking news – Amazon repelled an attack by Coty after an EU Court decision

photo-1522780550166-284a0288c8dfThe European court has ruled in the case C‑567/18 Coty Germany GmbH  v Amazon. The case concerns the following background:

Coty, a distributor of perfumes, holds a licence for the EU trade mark DAVIDOFF registered under No 876 874 (‘the mark at issue’), which enjoys protection for ‘perfumes, essential oils, cosmetics’.

Amazon Services Europe enables third-party sellers to place offers for sale in respect of their goods in the ‘Amazon-Marketplace’ section of the website http://www.amazon.de. In the event of sale, contracts concerning those goods are concluded between the third-party sellers and the purchasers. Those third-party sellers may also avail themselves of the ‘Fulfilment by Amazon’ scheme, under which goods are stored by Amazon group companies, including Amazon FC Graben, which operates a warehouse. Those goods are dispatched by external service providers.

On 8 May 2014 one of Coty’s test purchasers ordered on the website http://www.amazon.de a bottle of ‘Davidoff Hot Water EdT 60 ml’ perfume that was offered for sale by a third-party seller (‘the seller’) and dispatched by the Amazon group under that scheme. After Coty sent a letter of formal notice to the seller on the ground that the rights conferred by the mark at issue were not exhausted in respect of the goods consigned by the seller to Amazon FC Graben under that scheme, those goods not having been put on the market in the European Union under that trade mark by the proprietor or with its consent, the seller signed a cease-and-desist declaration, coupled with a penalty clause.

By letter of 2 June 2014, Coty requested Amazon Services Europe to return all the bottles of perfume bearing the mark at issue stocked on behalf of the seller. Amazon Services Europe sent Coty a package containing 30 bottles of perfume. After another company belonging to the Amazon group informed Coty that 11 out of the 30 bottles sent originated from another seller’s stock, Coty requested that Amazon Services Europe disclose the name and address of that other seller, as the rights conferred on 29 out of the 30 bottles by the mark at issue had not been exhausted. Amazon Services Europe replied that it was not in a position to accede to that request.

Taking the view that Amazon Services Europe’s conduct, on the one hand, and that of Amazon FC Graben, on the other, infringed its rights in the mark at issue, Coty requested, in essence, that those two companies be ordered, subject to penalties, to desist, in the course of trade, from stocking or dispatching ‘Davidoff Hot Water’ brand perfumes in Germany, or from causing them to be stocked or dispatched, if those goods were not put on the Union market with Coty’s consent. It requested, in the alternative, that the same order be made against those companies in relation to ‘Davidoff Hot Water EdT 60 ml’ brand perfumes and, in the further alternative, that the same order be made against them in relation to ‘Davidoff Hot Water EdT 60 ml’ brand perfumes which have been stored on behalf of the seller or which cannot be attributed to another seller.

The Regional Court, Germany dismissed the action brought by Coty. The appeal brought by Coty was dismissed, with the court of appeal holding, inter alia, that Amazon Services Europe had neither stocked nor dispatched the goods concerned and that Amazon FC Graben had kept those goods on behalf of the seller and other third-party sellers.

Coty brought an appeal on a point of law (Revision) before the referring court. Only Amazon Services Europe and Amazon FC Graben are respondents before that court.

The referring court states that whether that appeal is successful, in so far as Coty disputes the court of appeal’s finding that Amazon FC Graben is not liable as a perpetrator of an infringement of trade mark rights, depends on the interpretation to be given to Article 9(2)(b) of Regulation No 207/2009 and Article 9(3)(b) of Regulation 2017/1001.

In particular, it emphasises that whether the appeal on a point of law is successful depends on whether those provisions are to be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stocks those goods in order to offer them or put them on the market for the purposes of those provisions, even if it is only the third party who intends to offer those goods or put them on the market.

The referring court also states that, since Coty bases one of its claims on the risk of a repeat infringement, its action is well founded only if the conduct of the Amazon group companies in question is established to be unlawful both at the material time in the main proceedings and when the decision on the appeal on a point of law is issued.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice, Germany) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for the purpose of offering them or putting them on the market, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market?’

The Court’s decision:

Article 9(2)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark and Article 9(3)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark must be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark rights, without being aware of that infringement, must be regarded as not stocking those goods in order to offer them or put them on the market for the purposes of those provisions, if that person does not itself pursue those aims.

Parfumes and exhaustion of rights in Austria

aromatherapy-3173580_960_720The Supreme Court in Austria ruled in a lawsuit that had been initiated by Davidoff against a trading company in the country which was selling original perfumes branded with trademarks  Davidoff – word and combined. According to Davidoff this could lead to a consumer misleading that this company is part if its distributional channel, taking into account that the company put the trademarks on its website.

According to the court, however, there is no breach of law in the case at hand because the trademark use was only for information purposes and it is in accordance with the legislation on trademark exhaustion, in particular:

A mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.

Source: Taylor Wessing, Lexology.