Lewis Hamilton lost a dispute for his name in the EU

Lewis Hamilton, the seven-time Formula One champion, lost a trademark dispute for his name in the EU.

The case concerns a EU trademark application for HAMILTON filed in 2014 by the Swiss watchmaker Hamilton International in classes 9 and 14.

The company that manages Lewis Hamilton’s intellectual property rights 44IP filed an application for a declaration of invalidity against all the goods of the EUTM on the grounds laid down in Article 59(1)(b) EUTMR, bad faith, and Article 59(1)(a) EUTMR in conjunction with Article 7(1)(f) EUTMR, registration of the contested mark contrary to public policy.

According to the 44IP, the reason why Hamilton International filed this EU trademark was to secure broader scope of goods because their identical earlier mark was attacked for non-use in a past dispute between both parties.

The EUIPO dismissed this claim. According the the practice of the European Court: ‘the lack of clarity and precision of the terms used to designate the goods or services covered by the registration of a national trademark or a European Union trademark cannot be considered a ground for invalidity of the national trademark or European Union trade mark concerned’.

The Court moreover held that ‘in accordance with its usual meaning in everyday language, the concept of “bad faith” presupposes the presence of a dishonest state of mind or intention, regard must be had, for the purposes of interpreting that concept, to the specific context of trade mark law, which is that of the course of trade. Admittedly, the applicant for a trade mark is not required to indicate or even to know precisely on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for and he or she has a period of five years for beginning actual use consistent with the essential function of that trade mark. (…)

Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark’

In the case at hand, Hamilton International proved that they had been using their trademark for many years since 1892, way before the well-known sportsman were born.

In addition, the EUIPO considered that the earlier marks for LEWIS HAMILTON were not a reason the later mark to be stopped because Hamilton is a widespread name in the English speaking countries.

Source: ESPN.com

MILLENNIALFALCON crashed after a US trademark dispute

Lucasfilm Entertainment Company won a trademark opposition in the US against an application for “MILLENNIALFALCON” in class 41: “entertainment services in nature of live musical performance by musical bands, production services of sound and music recordings”.

This trademark was applied for by Ilan Moskowitz who used it for his musical performances including parody against corporate culture and in particular one related to Disney.

Lucasfilm invoked an earlier trademark for MILLENNIUM FALCON in class 28: “Toy vehicles”. In addition they claimed that their mark had been used for many other activities and products such as entertainment services, theater productions, television programs, motion picture films, comic books, books, toys, dolls, sporting goods, bags, personal-care products, linens, towels, apparel, food, online games, computer games, video games, music, and mobile applications.

They provided the USPTO with the necessary evidence for sales, licensing agreements, advertisements etc.

As it is well-know MILLENNIUM FALCON is the name of a space ship from the Star Wars series, which have become tremendously popular for the last almost 40 years.

Ilan Moskowitz claimed that both signs were not similar. Firstly because of the three letters IAL in the first word which were different and create different meaning. Secondly because the goods and services were completely different.

The USPTO disagreed. Although the earlier mark is registered only for toys, it has been used for many different products and services for a long period of time (in the US trademark protection arises based on real market use). Additionally the phrase MILLENNIUM FALCON is very well known by all consumers.

The three different letters couldn’t overcome the similarities between both signs including from conceptual point of view.

Bearing in mind all of that, the USPTO considered that there is a possibility of consumer confusion between both trademarks. It was decided that the parody defense claim is not allowed because the marks did not have any difference in the eyes of the possible consumer and did not carry the necessary conditions for the parody claim to be valid.

Source: Ankara Patent Bureau – Cansu ÇATMA BİLEN and Önder Erol Ünsal for Lexology.

Google won a dispute for STREET VIEW in Japan

The the Japan Patent Office has ruled in a case related to a trademark application for “STREET VIEW MODEL (SVM)”, written in Japanese Katakana character, for class 41: providing online non-downloadable videos and photographs’:

Against this application an opposition was filed by Google based on an earlier trademark with reputation STREET VIEW for classes 9 and 42.

Although the phrase STREET VIEW is not so unique, the Patent Office concluded that based on the acquired distinctiveness and reputation of the earlier mark, there is a possibility for a consumer confusion. This is enhanced by the fact that both business models concern digital images and videos offered via the Internet.

Source: Masaki MIKAMI, Marks IP Law Firm.

Sports cars are not just cars when it comes to trademarks – an EU Court’s decision

The General Court of the European Union has recently ruled in Case T‑677/19, Polfarmex S.A v EUIPO.

This case concerns an EU trademark SYRENA registered in 2011 for the following goods:

  • Class 9: ‘Computer and video game programs and software, none of the aforesaid goods relating to the aeronautical field, and in particular helicopters and rotorcrafts’;
  • Class 12: ‘Motor vehicles for locomotion by land and parts therefor (included in Class 12)’;
  • Class 28: ‘Games and playthings, model vehicles; scale model vehicles made of all materials, in particular paper model vehicles and die-cast model vehicles or plastic model vehicles’.

In 2016, Polfarmex filed an application for revocation of this mark based on lack of a genuine use for a period of 5 years.

The EUIPO revoked the mark for all goods with an exception of class 12 – cars.

Although there weren’t many invoices for sales of cars under this mark, the Office concluded that this is normal because the mark had been used only for sport cars. The market and demand of these cars is limited compare with the traditional vehicles. Due to this fact, advertisement and preparation related to the mark was deemed as sufficient. The decision was appealed.

According to the Court:

As is apparent from the case-law, it is common knowledge that the market for high-end sports cars with technical specifications that are not intended for normal, everyday road use and the price of which exceeds that of most private use cars is often characterised by relatively low demand, by production to specific order and by the sale of a limited number of vehicles. The Court held that, in such circumstances, the provision of accounting documents setting out sales figures or invoices is not necessary for the purposes of establishing genuine use of the mark in question. Further, the Court noted that publications demonstrated that the mark in question was the subject matter of public discussion in anticipation of a revival of production and sale of a car model bearing the mark in question.

 It follows that, having regard to the specific features of the relevant market, duly taken into account by the Board of Appeal when it relied on the case-law cited in paragraph 70 above, the evidence produced by the intervener shows the existence of various preparatory tasks and advertising efforts in relation to the SYRENA Meluzyna R model. Moreover, it shows, as contended by EUIPO, not only that the car was about to be marketed, but also that it was available to order.

To the question to what extent sport cars can cover the whole cattegory of vehichles, however, the General Court disagreed with the EUIPO.

According to the Court:

Contrary to EUIPO’s claim, racing cars are capable of constituting a coherent subcategory, for, unlike cars, their purpose is not the same as that of vehicles intended to carry a driver and passengers. Those cars, as acknowledged by the Board of Appeal in paragraph 61 of the contested decision, are not intended to be driven on public roads and such use is even prohibited on account of the absence of type approval. Their purpose is therefore different from that of other cars.

It follows that, to the extent that genuine use of the mark has been established in relation to racing cars alone, which constitute an independent subcategory within the meaning of the case-law cited in paragraph 116 above, the Board of Appeal was wrong to find that genuine use had been shown in respect of cars in Class 12. On that basis, the second complaint of the third plea and the fourth plea must be upheld and the contested decision must be annulled to the extent that it upheld the registration of the contested mark in respect of ‘cars’ in Class 12, with the exception of ‘racing cars’, in respect of which registration must be upheld.

To what extent can UpWork use the word Freelancer?

The popular platform for freelance services UpWork won a trademark dispute against its rival Freelancer in the US.

The case at hand concerns the way how UpWork use the word Freelancer for its apps.

According to Freelancer, Upwork uses this word as an indication of its app in Apple and Google stores, which is a problem for the company that owns trademarks for FREELANCER in classes 9, 35, 36, 45.

The Court in California, however, dismissed this claim. In the case of low distinctive and descriptive trademarks with limited protection, other market participants can use the descriptive word insofar this use is not a trademark one and serves only for description purposes related to the relevant goods and services.

In the case of UpWork, they did exactly this, using the word Freelancer as a descriptive term. There was no possibilities for consumer confusion because the UpWork logo was completely different based on which consumers can distinguish both apps clearly.