KING Entertainment Co., Ltd filed in 2019 an application for trademark „Funky Galaxy“ in Japan for Nice classes: 9 (telecommunication machines and apparatus; personal digital assistants; smartphones; electronic machines, and apparatus and their parts.), 16, 35, and 41.
One of the biggest smartphone manufacturers in the world Samsung filed an opposition against this application based on several earlier marks for GALAXY in classes 9, 35 и 41.
According to the company, both signs were confusingly similar especially in the light of the fact that Samsung’s Galaxy phones were some of the most well-sold phones in Japan.
The Patent Office, however, dismissed the opposition in its entirety. Although the Office acknowledged Samsung’s reputation for its Galaxy brand in the country, it found both signs as dissimilar from a phonetic and visual point of view due to the first element in the mark applied for FUNKY.
Conceptually both marks were not similar too because the latter sign has no specific meaning for the consumers in the country while the earlier marks are related to the term Galaxy as a huge space of stars and planets.
Source: Masaki MIKAMI – Marks IP Law Firm.
Samsung Electronics won an invalidation proceeding against the following European trademark registered for classes 9, 20 and 35:
The invalidation was based on absolute grounds – descriptiveness in relation to the trademark’s goods and services. The applicant argued that its mark was distinctive because when it was applied for in 2012 it wasn’t included in dictionaries and on top of that the concept for the internet of things wasn’t popular among consumers.
Initially, the EUIPO dismissed Samsung’s request stating that although Smart Things are descriptive words the presence of an emoticon in the sign is enough to create a necessary level of distinctiveness.
The decision was appealed.
According to the Board of Appeal, the trademark at hand is fully descriptive for the relevant goods and services and this cannot be overcome by the emoticon. What’s more, this phrase has to be left free for use for all market participant taking into account that it is highly used for different technologies. The fact that it wasn’t included in a dictionary in 2012 is irrelevant for the case.
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Information from Intellectual Property Center at the UNWE. More information can be found here