Hugo Boss lost a trademark dispute against Rakuten in Japan

Masaki Mikami informs us for yet another interesting trademark dispute from Japan.

In the case at hand, the Japanese e-trade company Rakuten filed an application for word trademark BOSS in classes 35 and 42 – providing computer programs on e-commerce, software as a service (SaaS), and other related services.

BOSS in this case is abbreviation from the service ‘Back Office Support System’ offered by Rakuten.

Against this application an opposition was filed by the German company HUGO BOSS Trademark Management GmbH & Co KG, based on an earlier mark HUGO BOSS for which an acquired reputation was claimed.

The German company filed evidence for its reputation including Deloitte’s annual list of the world’s largest luxury companies where HUGO BOSS is No.19 in 2015.

The Patent Office agreed that Hugo Boss has a reputation in Japan but disagreed that this is true for the part BOSS alone taking into account that the earlier mark is used as HUGO BOSS.

However, the Office concluded that even in case both signs are considered similar the respected goods and services are not. The processing services in classes 35 and 42 are not directly associated with clothes, perfumes, jewelry etc., which Hugo Boss is famous for.

From that point of view the Office dismissed the opposition finding highly unlikely consumers to be confused or deceived from the existence of both marks in the market.

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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.

Adidas won a case against “ADIDOG” trademark in Japan

Adidas won an interesting opposition against a trademark application for “ADIDOG”, applied for clothing for dogs in Japan.

According to the German manufacturer, which invoked several of its earlier Adidas trademarks, the trademarks in the case at hand were very similar, which in turn could create a consumer cofusion. Another reason that could lead to this conclusion were the fact that Adidas has a significant and longstanding reputation in Japan and that the signs were used for similar goods although the target market is different.

The Japanese Patent Office confirmed this position refusing the ADIDOG” application. This was a second win for Adidas which successfully stopped the following application for combined “ADIDOG” mark some time ago:

Source:  The Fashion Law and Masaki Mikami

Marvel fights against BlackBerry because of ‘Jarvis’

Marvel filed an opposition against a BlackBerry’s attempt to register a trademark for ‘Jarvis’ in class 42 in the US.

As it is well-known ‘Jarvis’ is a character, an AI software assistant to Toni Stark, another character from the “Iron Man” comics and movies.

Marvel is the owner of an earlier trademark ‘Jarvis’ registered in class 9:

Computer application software that may be downloaded via global computer networks and electronic communication networks for use in connection with mobile
computers, mobile phones, and tablet computers, namely, software for use as a
voice-controlled personal digital assistant.

According to the company, there is a significant chance for consumer confusion between both marks because of the reputation of its trademark which has been gained throughout the years in connection with Marvel movies and different merchandising activities such as Lego own movies, video games, etc.

This case is intriguing by its own. On one hand, we have a registered trademark for a name which is used as a character in comics and movies. On another hand, there is an attempt for registration of the same mark but for another class of real services. The question here is whether the use of a trademark as a character is enough in order to stop such following applications. Yes, merchandising use, especially for video games, is a point in the right direction but it is interesting to what extent a reputation connected to a fictional character for software can be useful to stop identical signs for real software in the real world.

Source: WIPR (Marvel hits out at BlackBerry over ‘Jarvis’ TM)

 

Puma won a lawsuit related to its brand reputation

The General Court of the EU ruled in case T‑62/16 Puma SE v EUIPO and Doosan Machine Tools Co. Ltd.

The case concerns an attempt by Doosan to register the following European trademark in class 7: Lathes; CNC (computer numerical control) lathes; machining centres; turning centre; electric discharge machine. Puma claimed a mark with a reputation on top of that.Against this mark, an opposition was filed by Puma based on the following earlier marks for Classes 18,25, 28, one of them for Class 7 too:

EUIPO rejected the opposition stating that the goods are so dissimilar that there are no possibilities for consumer confusion especially bearing in mind the fact that the relevant public in both of the cases is different.

Puma appealed this decision.

The General Court sided with the German company and annulled the EUIPO’s decision with the following arguments:

It follows from the considerations set out in paragraphs 68 to 71, 77 and 78 above that the Board of Appeal, first, did not properly take account of the degree of reputation relied on by the applicant and, secondly, did not properly assess the degree of inherent distinctive character of the earlier marks in its examination of whether there was a link between the marks at issue in the mind of the relevant public.

It should be recalled that the strength of the reputation and the degree of distinctive character, inherent or acquired by use, of the earlier marks may have a significant effect on the assessment of whether there is a link between the marks at issue.

In accordance with the case-law, certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, the relevant section of the public as regards the goods or services for which the later mark is registered might make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

Thus, where the public concerned by the goods designated by the earlier mark and the public concerned by the goods designated by the mark applied for are distinct, it may be necessary to take account of the strength of the reputation of the earlier mark in order to determine whether that reputation extends beyond the public concerned by that mark.

Therefore, in the present case, even if there is no direct link between the goods designated by the marks at issue, which are dissimilar as the Board of Appeal found in paragraph 32 of the contested decision, the finding of an association with the earlier marks could, nevertheless, still have been possible if the Board of Appeal had properly taken account of the degree of reputation relied on by the applicant. Thus, even if the sections of the public which are respectively the target of the goods and services covered by each of those marks do not overlap, given that the goods concerned are different, it is possible that a connection between the marks at issue may be established, considering also the high degree of similarity between them.

The dissimilarity between the goods designated respectively by the marks at issue is therefore not a sufficient factor for excluding the existence of a link between those marks, bearing in mind also that the existence of such a link must be assessed globally, that is to say, by taking into account all of the relevant factors of the case.

The case was returned to the EUIPO for re-examination.

How Puma proved a trademark with reputation – a European court decision

The European Court issued a decision in case C‑564/16 P, EUIPO v PUMA. This case concerns an attempt by an Italian company to register the following EU trademark for Class 7 – ‘Machines for processing of wood; Machines for processing aluminium; Machines for treatment of PVC’:

Against this mark an opposition was been filed by Puma on the ground of several earlier trademarks for Classes:

• Class 18: ‘Leather goods or imitation leather goods included in this class; handbags and other cases that are not adapted to the goods which they are intended to contain, as well as small articles made from leather, particularly purses, pocket wallets and cases for keys; handbags, … ’;
• Class 25: ‘Clothing, footwear, headgear; parts and components of footwear, soles, insoles and adjustment soles, heels, boot uppers; … ’;
• Class 28: ‘Games, toys, including miniature footwear and miniature balls (used as toys); apparatus and gear for physical training, gymnastics, and sport included in this class; … ’;

On top of that, Puma claimed an acquired reputation of its marks on the territory of the EU.

The EUIPO rejected the opposition considering that the goods are not similar and that there is no strong evidence for a reputation of the earlier marks. The reason for this was the fact that Puma claimed its reputation based on older EUIPO decision regarding its trademarks where they were assessed as such with a reputation.

In the following appeal, The General Court stated that the EUIPO was wrong not to take into account the older decisions.

The European court upholds this conclusion stating:

It is also clear from paragraph 30 of the judgment under appeal that, in the three previous decisions, the competent EUIPO bodies had established that one of the earlier marks had been found, ‘on the basis of a large number of items of evidence’, to have a ‘substantial reputation, at least in France’ and that one of them was also considered ‘in the light of the extensive evidence provided,’ to have acquired ‘a substantial reputation through use in the European Union’, enjoying a ‘high degree of distinctiveness as a result of its “long standing and intensive use” and “high degree of recognition”’. The General Court also established that some of those decisions described in great detail the evidence which had led to the conclusion that the earlier marks had a reputation.

In that context, the three previous decisions, in so far as they had recognised the reputation of the earlier marks, were a strong indication, in the opposition proceedings at issue, that those marks could also be regarded as having a reputation for the purposes of Article 8(5) of Regulation No 207/2009, as has already been stated in paragraph 81 above.

Therefore, as has already been held in paragraph 76 above, EUIPO was required to take into account the three previous decisions relied on by Puma and had to provide an explicit statement of its reasoning in the present case in so far as it had decided to depart from the approach adopted in those decisions on the reputation of the earlier marks.