Skechers lost a trademark dispute in the EU

The US-based footwear company Skechers lost a case T‑598/20 before the General Court of the European Union.

The dispute at hand concerns an application for a European trademark ARCHFIT in class 25 – Footwear.

The EUIPO refused to register this sign based on absolute grounds Article 7(1)(b) and (c) of Regulation 2017/1001 – descriptiveness and lack of distinctiveness.

The decision was appealed. According to Skechers, the Office erred in its assessment because the sign could have more than one meaning. What’s more a similar mark EXACT FIT was registered as an EU trademark in classes 18 and 25 overcoming an initial refusal.

The General Court, however, dismissed the appeal finding the EUIPO decision as correct in the light of the particular circumstances.

According to the Court:

 In the present case, in the first place, in the context of footwear, the average consumer, who is reasonably well informed and reasonably circumspect, in the relevant public, namely the English-speaking general public, will perceive the element ‘arch’ as relating to the ‘raised part of the foot formed by a curved section of bones’. That meaning is one of the basic – that is to say, not remote or nuanced – meanings of that word, as is apparent from the online dictionary for English learners that can be consulted at the following address: https://www.oxfordlearnersdictionaries.com. When confronted with the word ‘arch’ designating footwear, the English-speaking general public will not engage in an analysis for the purpose of verifying, on its part, whether other meanings of the word ‘arch’ could also be chosen. In connection with footwear, that public will not hesitate to associate that word with the human foot.

As for the element ‘fit’, the English-speaking general public will understand it as a verb referring directly to the meaning of the terms ‘be the right shape and size for somebody/something’, in accordance with one of the first meanings of that verb set out in the online dictionary referred to in paragraph 39 above. This is a common and obvious meaning that will come to mind naturally and without further thought for the relevant public. The element ‘fit’ could also be perceived by the relevant public as a common noun referring, in the circumstances of the present case, to the meaning of the terms set out in the online dictionary referred to in paragraph 39 above, the ‘way that two things match each other or are suitable for each other’, such as in the expression ‘a perfect fit’. The average consumer, who is reasonably well informed and reasonably circumspect and part of the English-speaking general public will rule out any other meaning of the element ‘fit’ in the circumstances of the present case. More specifically, he or she will not think of the meaning that ‘fit’ has in, for example, the expressions ‘a fit of laughter’ or ‘epileptic fit’.

Without there being any need to ascertain whether, in the mark applied for, the word ‘fit’ will be perceived as a verb or a common noun, it must be stated that, as the Board of Appeal stated correctly of the contested decision, the combination of the words ‘arch’ and ‘fit’ will be understood by the English-speaking general public as an indication that the footwear designated by the mark applied for is designed specifically to fit the arch of the user’s foot.

The fact that the footwear fits or must fit the foot, the raised part of the human foot called ‘the arch’ in particular, must be regarded as the description of one of the characteristics which is objective and inherent to the nature of those goods and intrinsic and permanent with regard to those goods, within the meaning of the case-law cited.

In the second place, it must be borne in mind that, according to case-law, if a mark which consists of a word produced by a combination of elements is to be regarded as descriptive, it is not sufficient that each of its components may be found to be descriptive. The word itself must be found to be descriptive (judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86). This applies mutatis mutandis to an expression which is merely a combination of word elements. Moreover, it must be borne in mind that, as a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned (judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86).

In the present case, not only are the terms ‘arch’ and ‘fit’ capable, in themselves, of communicating a descriptive message relating to footwear, but so is their combined use. Taken as a whole, the grammatical structure of the expression ‘arch fit’ is not so unusual as to lead to a finding that it modifies the message communicated by each of those elements by itself in the context of footwear.

In the third and last place, it must be found that, in the present case, the link between the mark applied for and the goods in question, namely footwear, is sufficiently direct and specific, within the meaning of the case-law cited in paragraph 28 above, for the relevant public immediately to perceive, without any particular mental effort, that mark as the description of one of the characteristics of those goods. For the English-speaking general public, the message communicated by ‘arch fit’ in connection with footwear will be unambiguous, as the words comprising that expression will be understood in accordance with one of their basic meanings and that expression does not contain any grammatical or semantic peculiarities likely to modify those basic meanings.

Puma won a trademark dispute in China

Puma won a trademark dispute in China. The case at hand concerns the following registered trademark by Ningbo Spark Motor Co., Ltd. in 2005 for class 7 – mechanical engines, gasoline and diesel generator sets, water pumps, washing machines, construction machinery, agricultural machinery, etc.:

The Chinese characters “彪马” (BIAO MA) within the mark mean Puma in translation.

Puma initiated an invalidation proceeding against this mark based on early registered trademarks Puma for class 25 clothes, shoes etc.

The Patent Office dismissed the invalidation finding both marks dissimilar for completely different goods and target consumers.

In the appeal, the Court upheld this conclusion stating that there is no possibility for a consumer confusion even though the submitted evidence that Puma is a well-known trademark.

A new appeal followed and this time the Beijing Hight Court overturned the court of first instance decision. According to the Court in the case at hand the registered later mark was against article 13.3 of the China Trademark Law or the so-called “well-known mark dilution”. This means that the later mark takes advantages from the reputation of the earlier mark even for dissimilar goods weaken its distinctive quality.

This decision is interesting and contrast significantly with the General Court of the EU recent decision where Puma lost the case against figurative mark for class 7.

Source: CCPIT Patent & Trademark Law Office – Ling Zhao and Lan Zhou за Lexology.

Pirelli won a tyre dispute in the EU

The European Court has ruled recently on joined cases C‑818/18 P и C‑6/19 P The Yokohama Rubber Co. Ltd v Pirelli Tyre SpA.

The dispute at hand concerns the following figurative European trademark registered by Pirelli in 2001 for class 12 – tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds“:

On 27 September 2012, Yokohama filed before EUIPO an application for a declaration of invalidity of the mark at issue for the goods ‘Tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds’, based on Article 52(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(b) or Article 7(1)(e)(ii) of that regulation.

By decision of 28 August 2014, the Cancellation Division of EUIPO declared the mark at issue invalid for those goods, as well as for ‘rims and covers for vehicle wheels of all kinds’, on the ground that the mark at issue consisted exclusively of the shape of the goods concerned necessary to obtain a technical result within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94.

Pirelli filed a notice of appeal against that decision with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009.

The Fifth Board of Appeal of EUIPO upheld the appeal in part, annulling the decision of the Cancellation Division in so far as it had declared the mark at issue invalid for ‘rims and covers for vehicle wheels of all kinds’. It dismissed the appeal as to the remainder, thus confirming the invalidity of the mark at issue in respect of ‘Tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds’.

The decision was appealed before the General Court of the EU.

The Court overturned it concluding that the sign at hand does not perform any technical functions. The reason for this is that the mark represents only a single groove of a tyre tread and just alone it cannot has technical function. In order such a function to be achieved other elements from the tyre are necessary. What’s more the groove represents one very small part of the entire tyre.

The European Court upheld this position. Nevertheless the Court highlighted that the scope of protection of the above mark is quite limited. Other manufacturers can use similar grooves if they are part of tyres with different overall shapes.

OATLY lost a trademark dispute in the UK

The popular Swedish plant milk manufacturer OATLY lost a trademark dispute in the UK.

The case concerns a trademark application for PUREOATY for oat milk products filed by the family farm Glebe Farm.

Against this mark an opposition was filed by Swinish company based on several earlier marks OATLY for the same goods.

This case stirred up a lot of of negative comments for the company which was accused that of being bigger tries to block a smaller market competitor as the trademark applicant.

The Court dismissed the opposition in its entirety. Although finding some low level of similarity, the Court consider that from phonetic, visual and conceptual point of view both signs were not similar enough in order to create consumer confusion. The element PURE in the later mark was sufficient to overcome any possibility for such thing.

According to the Court, the common part OAT is descriptive for the relevant products and has not power to contribute to the potential similarity.

The claim that the mark tries to take unfair advantages from the established reputation of the earlier marks was dismissed too.

The claim for passing-off didn’t success either. The Court didn’t find any misrepresentation or misleading action by the Glebe Farm when using their PUREOATY mark.

This case is indicative how tricky could be a company to rely entirely or partially on descriptive terms for its trademarks. The Swedish company was successful before the EU Court regarding its slogan “It’s like milk but made for humans”  but in this new case failed. In addition, every attempt for monopolizing descriptive terms can cause negative public reaction that can even threaten the company’s sales. So managing such disputes can be really difficult. That’s why all of this has to be taken into account in the brand building strategy.

Source: Kilburn & Strode LLP – Ruby Vinsome за Lexology.

A Lego toy or a real gun – that’s the question

We are all aware about toys in the form of guns used by kids for playing. However, it is rare a real gun in the form of toy to be found, a dangerous product which can cause a harm if used by children.

This is the case with the gun cover produced by the US company Culper Precision. They offer a gun cover (Block 19) in the form of a Lego toy, using the well-know design pattern typical for this type of toys. The gun under the cover is real.

Of course the Danish company sent a cease and desist letter insisting sales of such covers to be stopped immediately due to the potential misleading effect on children and possible dangerous incidents that can happen as a result.

Although Culper Precision didn’t infringe a registered trademark belonging to Lego, they used a style typical for Legos’ toys, which could mislead consumers about the product characteristics.

The US company agreed to stop producing this cover after selling 20 items of it. It will be interesting whether Lego will initiate a lawsuit for passing off for example.

Source: EAGLEGATE – Nicole Murdoch

Be careful what brand you want to create – an EU Court decision

Sometimes the brand-building process and protection of trademarks could create tension between the marketing experts and intellectual property specialists.

The reason for this is the fact that the former want, in some cases, their brand to have a particular meaning associating with the relevant goods and services. Although this sounds tempting it can create a lot of problems when it comes to trademark registration.

One example in that regard is a case before the General Court of the European Union Case T‑48/20, Sahaj Marg Spirituality Foundation v EUIPO.

This case concerns an international trademark for HEARTFULNESS, designating the EU, in the following classes:

  • Class 16: ‘Printed matter; instructional and teaching materials’;
  • Class 41: ‘Education; providing of training and cultural activities’;
  • Class 45: ‘Consultancy services in spirituality’.

The EUIPO refused registration of this mark based on absolute grounds – lack of distinctive character and descriptiveness. According to the Office the term HEARTFULNESS describes a particular meditation technique which means that consumers will perceive its meaning directly in relation to the above goods and services. The Board of Appeal upheld this position too.

The applicant appealed arguing that HEARTFULNESS was newly created word by the company in order to describe a particular relaxation and meditation technique. The purpose was consumers to link this technique with the applicant only.

The Court dismissed the appeal. The fact that one term is newly created doesn’t mean that it can be registered as a trademark automatically. If the term describes the goods and services which it will be used for, it cannot serve as a source of trade origin.

According to the Court, in the case at hand HEARTFULNESS is a descriptive term for a relaxation and meditation technique. An additional argument for this was a book titled The Heartfulness Way.

All in all this means that if you create a term that speaks for the goods and services branded with it, it is highly likely this term not to be registered as a trademark.