EasyJet won a dispute against EZY.COM in the UK

plane-841441_960_720.jpgThe UK airline company EasyGroup won an invalidation procedure against the UK registered trademark EZY.COM in class 41.

The base for this invalidation was earlier trademarks EASY.COM and EASYJET for class 41.

According to the company, there was a serious possibility for consumer confusion including because of the fact that EASYJET has a reputation in the UK and because EZY was the airline code of the company.

The UKIPO upheld the opposition confirming the possible consumer confusion due to the phonetic and visual similarities between the signs which are registered for identical and similar services.

Source: WIPR.

Advertisements

Uber won a dispute in the UK

london-722520_960_720Uber succeeded in an opposition procedure against the following UK trademark application:

GB50000000003168791.jpg

This sign was filed for the following goods and services:

In Class 9: Mobile phones and accessories; batteries; battery charges; media for storing
information, data, signals, images and/or sounds; photographic apparatus and instruments; parts and fittings for the aforesaid goods.

In Class 35: Retail services connected with the sale of mobile phones and accessories;
batteries; battery charges; media for storing information, data, signals, images and/or sounds; photographic apparatus and instruments; parts and fittings for the aforesaid goods”.

In Class 38: Advisory and consultancy services relating to communications apparatus,
equipment and accessories; rental and hire of communications apparatus, equipment, and accessories; provision of information relating to communications apparatus, equipment and accessories”.

Uber invoked a family of earlier Uber trademarks against this application, for the same classes, stating possible consumer confusion.

According to the UKIPO the goods and services of the marks were identical or complementary.

The applicant tried to claim that Uberfone poses a specific meaning in German which is to something “superb or happy”.

The Office dismissed it considering that the German language is not so popular in the UK and most of the people wouldn’t be able to get the meaning.

Taking into account the phonetic and visual similarities between the signs, the UKIPO upheld the opposition.

Source: WIPR.

A successful indigo battle for O2 in The UK

telephone-booth-768610_960_720.jpgThe UK telecom O2 successfully won an opposition against a UK trademark application for Indigo Blue applied for class 41:

Arranging and conducting of concerts; Services for the showing of video recordings; Services providing entertainment in the form of live musical performances; Showing of prerecorded entertainment; Singing concert services; Song publishing; Song writing services; Songwriting; Sound recording and video entertainment services; Sound recording services; Sound recording studio services; Music concerts; Music entertainment services; Music festival services; Music performance services; Music performances; Music production; Music publishing; Music publishing and music recording services; Music publishing services; Music recording studio services; Musical concert services; Musical concerts by radio; Musical concerts by television; Musical entertainment services; Musical performances; Entertainer services; Entertainer services provided by musicians; Entertainment; Entertainment by means of concerts; Entertainment by means of radio; Entertainment by means of roadshows; Entertainment by means of telephone; Entertainment by means of television; Entertainment in the form of live musical performances (Services providing – );Entertainment in the form of recorded music (Services providing -);Entertainment in the form of television programmes (Services providing -);Entertainment services; Entertainment services for matching users with audio and video recordings; Entertainment services for matching users with computer games; Entertainment services for producing live shows; Entertainment services for sharing audio and video recordings; Entertainment services in the form of concert performances; Entertainment services in the form of musical vocal group performances; Entertainment services performed by a musical group; Entertainment services performed by musicians; Entertainment services performed by singers; Entertainment services provided by a music group; Entertainment services provided by a musical group; Entertainment services provided by a musical vocal group; Entertainment services provided by performing artists; Entertainment services provided by vocalists.

O2 invoked rights over several of its earlier EU trademarks for INDIGO  and INDIGO2 for the same class.

According to the UKIPO, both signs are very similar because of the word INDIGO. The difference between them is the word Blue and the number 2.

From a conceptual point of view, the trademarks are almost identical bearing in mind that for some of the consumers Indigo is a shade of blue. A slight difference can arise only if Indigo is perceived as purple. However, even in that case, both colors are closed.

Taking into account that the first part of the marks is identical, the UKIPO uphold the opposition in its entirety.

This is yet another case which comes to show how important is preliminary trademark clearance search. This search can help a lot in the assessment of the chances one sign has to be registered as a trademark and from another hand to avoid eventual disputes.

It is always advisable to do your homework before to file an application. This will save you time and money.

Source: WIPR.

Kellogg lost an opposition against a UK brewery

pexels-photo-459280.jpegKellogg Company lost an opposition in The UK. The case concerns the trademark application for FRUIT LOOP filed by the local brewery Fuller for class 32 – Beer, ale, lager, stout and porter; non-alcoholic beers.

Against this mark, Kellogg invoked its rights over the early registered trademark with reputation FREET LOOPS for class 30 – Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and non-frozen confectionery; honey, treacle; yeast, bakingpowder; salt, mustard; vinegar, sauces (condiments); spices.

The opponent claims that it has reputation under the above mark in respect of “preparations made from cereals”. It claims that use of the mark in suit would take unfair advantage of its mark and use of it would ride upon the coat tails of the opponent’s reputation and marketing efforts which would provide an unfair advantage. Use of the mark in suit would also dilute the distinctiveness of its mark, and the association of the opponent’s product with use on alcoholic beverages is likely to cause detriment to its reputation.

The Patent Office disagreed dismissing the opposition. According to the Office, there was only a low level of similarity between both signs for dissimilar goods.

The key moment in the opposition was the claimed reputation of the earlier sign. According to the Office, it wasn’t proved sufficiently which to show that the mark had been used for a prolonged period in the UK in a way that consumers are aware for its high level of reputation.

Source: WIPR.

The battle for ICELAND continues

pexels-photo-414101Iceland Foods will appeal the EUIPO’s decision for cancelation of its trademark ICELAND registered in 2014 for classes 7, 11, 16, 29, 30, 31, 32, 35. This trademark is used for supermarkets in The UK.

The procedure was initiated by Promote Island, a government organization from Iceland based on Article 52(1) EUTMR in conjunction with Article 7(1)(c) EUTMR:

The following shall not be registered:

  • (a) signs which do not conform to the requirements of Article 4;
  • (b) trade marks which are devoid of any distinctive character;
  • (g) trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;

The EUIPO agreed with Promote Island and canceled the trademark. The arguments for this are:

It follows from all of the above that ‘ICELAND’ may serve, from the point of view of the public concerned, to designate an essential and desired characteristic of the goods and services.

Therefore, the mark conveys obvious and direct information regarding the geographical origin of the goods and services in question, and in some cases, the subject matter of the goods as well.

Considering all of the above, it follows that the link between the word ‘ICELAND’ and the contested goods and services is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR and that this was also the situation at the time of filing of the contested EUTM, namely, 19/04/2002.

The EUIPO found that Iceland Food failed to prove acquired secondary distinctiveness in the EU.

The Icelandic foreign minister Gudlaugur Thór Thórdarson expressed his satisfaction with this decision.

“It is contrary to common sense for a foreign company to be able to appropriate the name of a sovereign state as was being done in this case”, the minister said.

Iceland’s foreign ministry added that consumers were likely to associate the mark with “the country of Iceland for all goods and services the registration is claimed for”.

Source: WIPR.

Partial success for Cadbury over color trademarks dispute in the UK

night-photograph-starry-sky-night-sky-star-957040.jpegThe UKIPO has ruled in oppositions against the following trademark applications all for class 30, filed by Cadbury:

GB50000000003019362.jpg– № 3019361, with the following description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the packaging of goods.

GB50000000003019362.jpg– № 3019362, with the following description: The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface of the packaging of the goods.

GB50000000003019362.jpg– № 3025822, with the following description: The colour purple (Pantone 2685C), shown on the form of application.

Against these applications Nestle filed oppositions with the following arguments:

  • The reference in the description to a Pantone number is a necessary but not
    sufficient condition for the Application to comply with Section 1(1);
  • The reference in the description to something “being shown on the form of
    application” does not comply with the requirement of being self-contained,
    intelligible and/or accessible. The application form does not form part of the
    public register and those consulting the public register are unable to ascertain
    from that the nature of the material referred to in the description.
  • The reference in the description to something being “applied to the packaging
    of the goods” imports a reference to a means of configuration or
    representation which is not shown on the register and which may comprise a
    potentially limitless number of signs/means of representation.
  • The reference in the description to “the whole visible surface” is inherently
    ambiguous because the public and competitors will assume – and the
    applicant intends – that less than the whole visible surface is in fact meant by
    the words “whole visible surface” since products of this kind must of necessity
    bear words, logos and other elements of different colours on the surface of
    the packaging.

The UKIPO agreed that in the case of trademarks 3019361 and 3025822 their descriptions create ambiguity regarding what exactly these signs represent.

Regarding trademark 3019362, however, the UKIPO considered that the above-mentioned conclusion is not relevant because the trademark’s description gives an idea of what exactly trademark dimensions are.

Source: WIPR.

‘Trump TV’ was refused as a trademark in The UK

pexels-photo-134469.jpegThe English High Court has dismissed an appeal from Trump International company (owned by German national Michael Gleissner) against the UKIPO decision to refuse registration as a trademark for ‘Trump TV’ in classes 38 and 41.

The US company DDTM Operations, which manages Donald Trump’s IP portfolio, filed an opposition against this mark based on alleged bad faith application. According to DDTM Operations, this trademark tries to take advantages from the reputation of the US President.

The UKIPO agreed with this claim and refused the application taking into account the Gleissner’s previous attempt to register similar signs.

The Court upheld this decision concluding that the applicant failed to give any reasonable arguments to support an eventual bona fide nature of its application.

Source: WIPR.