Audemars Piguet lost a dispute regarding a watch trademark in the UK

audemars-piguet-4859559_1920The Swiss watchmaker Audemars Piguet lost an opposition in the UK against an application for trademark Oakky in class 14.

The Swiss company filed its opposition based on an earlier registered trademark Royal Oak in class 14.

The UKIPO dismissed the opposition considering both signs similar only to a low extent which wasn’t enough to cause consumer confusion. According to the Office, there was only some conceptual similarity on the ground of the meaning of Oak and Oakky. However, this wasn’t enough in the case at hand.

With regard to the claimed reputation of the earlier mark, the Office considered it as not proved. Although it was clear that watches with the brand Royal Oak had been sold in the UK, there is no evidence about their volume and turnover. Apart from that, it wasn’t clear to what extent the mark was popular among the consumers.

This case shows clearly that in such situations only one piece of evidence is not enough to prove a reputation or a well-know status. In most of cases numerous examples about the trademark use and popularity have to be submitted.

Source: WIPR.

Amazon failed to register its RING trademark in the EU

doorbell-143467_960_720Amazon lost a dispute in Case T‑270/19 v EUIPO before the General Court of the European Union.  The case concerns an attempt by the US company to register the following EU trademark:

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The mark was applied for:

Class 9: ‘Consumer electronic products, namely, doorbells, motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled doorbells; electronic doorbells; electronic doorbells with a camera allowing persons to identify who is at their door from remote locations; motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; downloadable software and software applications permitting users to identify and communicate with persons at their door; downloadable software and software applications permitting users to monitor their home, office and other facilities; downloadable applications for monitoring a user’s home, office and other facilities, for use over the internet, mobile devices, wireless internet networks or systems and other computer and electronic communication networks; speakers; wireless local area network enabled speakers; customisable electronic speakers; computer application software for use in controlling and managing speakers, wireless local area network enabled speakers, customisable electronic speakers; luminous signs; electric signs; electronic signs; backlit signs; lighting controllers; lighting control apparatus; electric control devices for lighting fixtures; computer software for sharing videos; computer application software for sharing videos; computer application software for mobile phones and other mobile devices, namely, software for sharing videos’.

The EUIPO rejected the registration of this mark based on absolute grounds. According to the Office, the sign is completely descriptive for the mentioned goods and cannot serve as a source of trade origin.

Amazon appealed argued that the mark applied for was only suggestive or allusive, and not communication particular characteristics of the goods.

The Court dismissed the appeal stating that the mark was completely descriptive for the relevant goods and in that way not able to indicate trade origin. According to the Court  “the verbal element “ring”, which means in particular to “make a clear resonant or vibrating sound”, immediately informed the consumers, without their further thought, that the goods in question, “doorbells, motion sensors, monitoring equipment, namely video monitors and video cameras”, include a system to enable them to produce a clear resonant or vibrating sound.”

The General Court of the EU found similarity between trademarks for wine

wine-1761613_1920The General Court of the European Union has ruled in case Case T‑239/19 Vinos de Arganza v Nordbrand Nordhausen GmbH. It concerns an attempt for registration of the following combined EU trademark for class 33 – wine:

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Against this application, an opposition was filed based on an earlier German trademark BELCANTO for class 33 – Alcoholic beverages.

EUIPO upheld the opposition entirely. According to the Office, the goods for both marks were identical. From a visual point of view, both signs were similar to a low degree. Phonetically they were similar because of their end sounds. Conceptually both trademarks were neutral because they had no meaning for the German-speaking public.

The Court confirmed this decision.

What is interesting here is the fact that although the beginning of the marks has a bigger impact on such comparisons in the case at hand the different letters, in the beginning, weren’t able to overcome the entire possibility for consumer confusion between the signs.

New Zealand joins TMView

EMkZQjSuEUxoDst-800x450-noPadEUIPO reports about the accession of New Zealand to the global trademark database TMView. This means that in future all national trademarks from this country will be accessible through the database. In that way, the participating Patent Offices became 73, and now TMView gives access to more than 57 million trademarks.

For more information here.

Trademark oppositions in China will be publicly accessible

china-641112_960_720The National Intellectual Property Administration (NIPA) announced its intention to published online all of its decisions regarding trademark oppositions in China. This will happen within 20 days after the relevant decision is issued.

The only option this not to happen is if the parties in the opposition proceeding require this based on not revealing confidential information contained in the decisions.

Obviously, this is another step that NIPA takes to make the trademark registration process in China more clear and transparent.

Source: WIPR.

One key moment when you launch a new brand

man-wearing-gray-long-sleeved-shirt-374598Launching a new brand in the market is always a challenge. It requires lots of effort and good business and marketing strategies as a ground.

Before launching the brand, however, you need to have an appropriate brand name which in most the cases is a product of a brand-building process.

You have two main options in that regard, to try to create the brand name on your own, in case that you don’t have a big marketing budget, or to hire an agency that will do that for you.

In both of the cases, however, there is one specific moment that you need to pay attention to. It is related to the question to what extent you can use and protect your brand.

It can sound not so an important issue at first glance but it is. The reason for this is that if you start using a brand for which there are already registered trademarks by someone else, you risk becoming a trademark infringer. This can create a myriad of problems for you including the need to re-brand and pay compensations.

And what is the chance for this?

It is not negligible at least because there are millions of registered trademarks in the world which in turn require a lot of attention when a new brand is introduced in the market.

One of the ways to escape such negative scenarios is a trademark clearance search to be implemented before the launch. This can save you not only time but money but will protect you from legal pitfalls.

If you want to learn how to do such trademark searches in the US, Canada, the UK, Ireland, Australia, and New Zealand, you can check this new and useful Udemy course on this topic here.

USPTO soften the email requirement in case of new trademark applications

usptoUSPTO changed its mind and soften the requirement for providing an owner email address in every trademark application for the US. This was required apart from the email of the industrial property representative or trademark attorney.

According to the amendments, this second mail will be still required, however, it could be not the owner’s email. That is to say, apart from the attorney email every applicant has to submit another email address too.

Sourse: DSP Paper.