Can love to be a trademark?

Recent registration of a word mark has been in the public eye in the UK as BBC reports in this article.

The case concerns a trademark for Cariad registered for candles by Fizzy Foam company. In translation from Welsh, this means Love.

Another company that uses the name for its candles has expressed criticism regarding the fact that such widespread words are monopolized only by one undertaking.

As a matter of fact, this is completely possible from a legal point of view. According to trademark legislation in most countries around the world, one name can be protected as far as it is distinctive and not descriptive of the goods and services mentioned by the application. Bear in mind that the legal protection of trademarks covers only these precise goods and services, for everything else the relevant name can be used by everyone, especially in cases where it describes the relevant goods or services.

However, one word with meaning can be a trademark for not related goods or services. The classic example is APPLE, which is a trademark for tech products but it cannot be such one for selling apples.

So in the case at hand, the only argument that I can think of against the registration is the probable low distinctive character of Cariad for candles because they are related to a romantic atmosphere, although this would require solid facts to be proved. The main meaning of the word has no direct connection with candles so it is not descriptive per se.

Еlectronic cigarette liquids oils are not similar to donuts – DONUT KING lost a dispute in the UK

One interesting trademark dispute has come to its end in the UK which targets the question of to what extent donuts are similar to electronic cigarette liquids oils.

The following national combined trademark was filed in the UK for class 34 – electronic cigarettes, electronic cigarette liquids oils and flavorings boxes, cartomisers and atomisers:

Against this application, an opposition was filed by the Australian company Donut King Franchise Pty Ltd based on an earlier international trademark DONUTKING with the UK designation. The mark was registered for classes 29, 30, and 43.

According to the company, both signs were similar, the earlier mark was with reputation that the applicant tried to take advantage of, and there was a passing-off action. What’s more the goods in both marks were complimentary. Some UK vape shops were combined with cafes so both groups of goods were offered in one place. Additionally, it was a common practice for electronic cigarette liquids oils to mimic the taste and smell of food products including donuts.

The UKIPO dismissed the claim for complementary goods finding the submitted evidence insufficient. Only 4 vape shops offered such service and only one of them was within the relevant date range. Apart from this complimentary goods require they to be indispensable or important for the use of each other which was clearly not the case when it comes to electronic cigarette liquids oils or cigarettes and food products.

The common taste or smell is not enough to create such a close connection between goods that are so different in their nature, purpose, and use.

According to the Office, the signs were visually similar to a low level and phonetically and conceptually to a medium to a high level.

Nevertheless, the lack of goods similarity was the reason the opposition was dismissed in its entirety.

The claim for acquired reputation in the UK was not accepted because of insufficient exposure amongst the consumers. Because of the passing-off claim was dismissed too.

Source: WTR (by Alison Brennan and Louise Carey – Burges Salmon LLP) for Lexology.

Wonder Woman lost a battle against Wonder Mum in the UK

One interesting trademark case has been solved by the England and Wales High Court recently.

In 2019, Unilever filed a trademark application for WONDER MUM in class 3 – soaps; perfumery; essential oils; deodorants and antiperspirants; hair care products, etc.

Against this application, an opposition was filed in 2020 by DC Comics, based on an earlier European trademark for WONDER WOMAN in class 16. An acquired reputation for the mark was claimed too.

The opposition was dismissed by the UK Patent Office, which decision was upheld by the Court.

According to the Office, both signs were not confusingly similar. There was only a law degree of conceptual similarity that was not enough to cause confusion in the consumer’s mind.

The evidence for trademark reputation was identified as insufficient. The general statement by DC that WONDER WOMAN is one of the most popular comics characters is not enough in order for a conclusion for the acquired reputation on the territory of the UK to be made.

The data for global sales related to WONDER WOMAN do not show what percentage of them are related to the UK alone.

Another significant problem is the fact that there is no clear evidence that UK consumers perceive WONDER WOMAN specifically as a trademark and not as a title of a movie or a name of a popular character.

This is important because trademark protection cover only signs able to indicate the commercial origin of particular goods and services.

The fact that many people know WONDER WOMAN as a comics character does not mean that they perceive the name as a trademark sign.

The claim for passing off was dismissed as not well-established.

This case shows once again how difficult is trademarks for popular characters to be enforced in reality. Such trademarks have to be used in their role of signs showing trade origin not relying only on their popularity as artistic works.

Source: IPKAT.

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.

Salesforce lost a trademark dispute in the UK

One of the biggest software companies in the world Salesforce lost a trademark dispute in the UK.

The case concerns a trademark application filed by Syft Online for “SyftForce” for classes 9 (computer software), 35 (personnel placement and recruitment services, 38 ( telecommunications services), 41 (education services) and 42 (software as a service).

Against this application an opposition was filed by Salesforce based on earlier trademarks for SALESFORCE and SOCIALFORCE for similar goods and services.

The UKIPO focused its attention only on the SALESFORCE earlier mark. According to the Office both signs have some visual and phonetic similarities. However this is not enough for a general conclusion that the mark applied for can create a consumer confusion.

The reason for this was the fact that the shared part in both signs – FORCE has low distinctive character in regard to the goods and services covered by the new trademark application.

According to the Cambridge Dictionary, force means group of people organized and trainedespecially for a particular purpose.

Based on this the Office dismissed the opposition in its entirety.

The case is a good example for words with low distinctiveness that are used as trademarks. In some cases such words cannot be protected at all. In other cases, when they are part of complex trademarks with more words or graphics, they can weak their protection abilities.

Source: WIPR.

Huawei lost a trademark dispute in the UK

Huawei filed a trademark application in the UK for ‘Mind Studio’ in classes 9 and 42 – software development tools, computer software platforms for mobile devices, computer software management services, and the development of software applications.

Against this application an opposition was filed by the education company Minds Studio based on an early registered European trademark for Minds Studio in clauses 41 and 42 – design services; IT services; science and technology services; and testing, authentication, and quality control.

According to the Chinese company there was no similarity between the goods and services of both signs because they target different consumer groups.

The Patent Office disagreed. First of all, the Office considered both marks as highly similar almost identical. The difference of only one letter “s” at the end of the first word is not enough to overcome this conclusion.

As to the goods and services, the Office consider them similar and identical. They target the same consumers, distribution and trade channels.

In light of this it is possible a confusion to arise in the consumer mind regarding both signs. The opposition was upheld in its entirety.

Source: WIPR.

Pans, red dots and Tefal struggles in the UK

Throughout the Christmas and holiday season it is typical for most people to cook and eat more than usual. With that regard, probably it will be of interest to you the news for the red dot problems of Tefal’s pans in the UK.

In 2018 Tefal applied for the following figurative trademark in the UK for class 21 – frying pans, saucepans, casseroles, stew-pans, cooking pots, crepe pans, grills, and woks:

The UKIPO issued a refusal against this application based on absolute grounds section 3(1)(b) TMA – lack of distinctive character. According to the Office it was not clear whether consumers would perceive this red dot as a trademark sign of itself or just as a decorative or functional element.

Tefal submitted evidence for acquired distinctiveness through use in the UK. The UKIPO dismissed the evidence as insufficient.

Although there were significant sales and advertisement related to this type of pans, the evidence didn’t show in any way that the red dot was functioning as a stand alone sign of trade origin. On the contrary, some of the advertisement related this dot to its heating indication function.

More interestingly in the provided consumers survey, some of the respondents identified the red dot as a ‘heat spot’ or ‘when the pan is hot’.

Based on this the Office confirmed its position that the applied for sign is not distinctive and it is functional, that is to say it cannot serve as a source of trade origin.

This case is valuable as a case law because it shows quite clearly how difficult is to register some figurative trademarks sometimes. In such scenarios one possible solution can be an early implemented strategy by the trademark owner to indicate in every advertisement and other communication that the relevant sign is a mark. In that way, hopefully, consumers will start to perceive it as such in the long run.

Source: IPKat.