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.

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A UK trademark dispute over “FIT KITCHEN”

One interesting trademark dispute from the UK gives us some valuable insights about the UK practice and legislation subtleties when it comes to trademark invalidation.

In the case at hand Fit Kitchen Limited is the owner of the registered FIT KITCHEN trademark used for website food delivery services.

Another UK company Scratch Meals started to use the same mark for ready meals distributed to supermarkets.

A lawsuit followed. The Scratch Meals defense position was that there is no trademark infringement because the earlier mark was registered in bad faith. The argument for this was the fact that Fit Kitchen Limited applied for the mark six days before to be dissolved as a company.

Fit Kitchen Limited, however, proved that they weren’t aware of that fact because they didn’t receive the official notice for this. What’s more immediately after being informed they applied to restore the company.

Scratch Meals than claimed that in a case where a trademark was filed by a dissolved company it has to be owned by the Crown.

However, the court dismissed this claim because it wasn’t stating initially.

Finally the court considered that the earlier mark wasn’t filed in bad faith. From that point of view the mark was valid and taking into account that it was identical to the later mark, for identical and similar goods and services, there was a trademark infringement.

One strong point for this conclusion was evidence submitted by Fit Kitchen Limited for consumers who were confused between both brands in the market.

This case shows clearly how important is a preliminary trademark clearance search. The search has to be done before the relevant brand is launched in order for any legal conflicts to be avoided.

If you are interested to learn how you can conduct such searches on your own, check this Udemy course – Complete course on trademark search, for example.

Source: Simon Bennett and Scott Steinberg – Fox Williams LLP for Lexology.

Puma lost a dispute against Nike for the FOOTWARE trademark in the UK

Puma lost an opposition against trademark FOOTWARE for classes 9, 38, 42, filed by Nike in the United Kingdom.

According to Puma this sign is obvious misspelling of the word FOOTWEAR which has particular meaning related to shoes.

From that perspective the mark applied for is not distinctive and it is descriptive even for the specified goods and services because it can be perceived, for example, as a software used in relation to footwear.

Nike response was that the sign was distinctive enough. The WARE part has been already registered as a separate trademark for the same classes. On top of that Puma themselves owns a trademark SPORTSWEAR.

The UK Patent Office dismissed the opposition stating that there were no sufficient evidence that the word FOOTWARE can be understood in a descriptive way for the specified goods and services.

What’s more, the way how it is spelled requires additional considerations from the consumers in order they to get the meaning of the word Footwear.

This case is an example about the so-called suggestive trademarks which meaning is not direct but requires additional intellectual efforts from the consumers to be determined. In some cases these marks can receive protection.

Source: Charlotte Wilding – Kemp Little LLP за Lexology.

A pizza war between US and UK based companies rose the issue of the international IP strategy

One interesting dispute between pizza restaurants from the US and the UK brings to us the importance of intellectual property strategy for business development on international level.

Imapizza LLC  is a US based company owner of &pizza restaurants which main differentiating character is the oval form of their pizzas. The company has plans to start business in the UK but without taking further steps.

Meanwhile, the UK based company @pizza opened restaurants in Glasgow and Birmingham offering oval pizzas too.

Imapizza LLC initiated a lawsuit in the US alleging copyright infringement, trademark infringement and trespass.

According to the company, employees of @pizza visited their restaurants taking photographs in order to copy their business model and intellectual property. What’s more @pizza downloaded and used photos from the Imapizza’s website.

The court dismissed all claims as groundless. In the appeal the Court of Appeals for the D.C. Circuit upheld this decision.

According to the court there was no copyright infringement. Uploading and downloading of content by itself cannot constitute copyright breach under the US law. Probably the use of these photos could be an infringement but this happened in the UK and local court can decided on this issue.

Regarding the photos that were been taken in the Imapizza’s restaurants, they cannot infringe copyrights of the company because its restaurants are public places and copyright protection doesn’t cover such cases.

When it comes to both trademarks, although they are similar their was no infringement too. The US trademark law can be invoked in case of unauthorized trademark use in another country only if this can effect upon US commerce.

The Court dismissed the Imapizza’s arguments that this effect is connected with the US students and tourists in the UK which can be mislead by the UK trademark.

With regard to the trespass allegation, the Court found it groundless too because all photos took by the employees of the UK company happened on public places. Every costumer is allowed to take photos when going to a restaurant. If this activities happened in restricted premises probably the conclusion would be different but in the case at hand there was no illegal acts.

This dispute shows clearly how important an intellectual property strategy could be for every company. Some steps have to be implemented in that regard in order the business development of every company to be safeguard in the future on all markets of interest.

The targeted consumers are a key element in cases of trademark infringement in the EU

An interesting case for a trademark infringement from the UK. The local company for audio equipment AMS Neve initiated a lawsuit against the Spanish rival Heritage Audio for trademark infringement and passing-off.

The case concerns similar imitating products under the brand 1073 offered by the Spanish company not directly in the UK but through a website, social media and online advertisements accessible in the UK.

According to Heritage Audio there was no infringement because there were no sales in the UK. What’s more, due to that fact the UK Court had no jurisdiction to intervene.

The Intellectual Property Enterprise Court decided to ask the European Court about the issue with online sales and the jurisdiction that is applicable in such scenarios.

According to the EU Court, when it comes to online sales the most essential element is not where sales happened or where the infringer is located but the consumers that are targeted.

In the case at hand, the UK consumers were targeted by the Spanish company through websites and social media which means that the UK Court have the right to decide whether or not there is a trademark infringement.

This case is important especially in the light of the internet business development in the recent decades.

When you want to sale products in the EU as a whole you need to be sure that the trademark you want to use are not already protected by someone else. If this is the case, the fact that you don’t have direct sales in one Member State is irrelevant if your online business model target in some ways the consumers in that particular country.

Source:Nina Goodyear – Taylor Wessing for Lexology.

Land Rover lost a lawsuit regarding 3D trademarks in the UK

Jaguar Land Rover lost a lawsuit in the UK regarding its attempt to register the following 3D trademarks in class 12 for its off-read vehicle models Land Rover Series 1, Series 2, Defender 90 and Defender 110:

Although the UKIPO allowed these application initially, there was an opposition by Ineos Industries after that on the following grounds:

  • the shapes were not capable of being registered;
  • lack of inherent distinctiveness/descriptive in nature;
  • the shapes had become customary in the established practice of trade of the goods;
  • the shapes resulted from the nature of the goods themselves and/or are necessary to achieve a technical result and/or give substantial value to the goods themselves;
  • registration would be contrary to public policy; and
  • that the applications were filed in bad faith.

The UKIPO decided that these 3D forms cannot constitute trademarks. The arguments for this position were:

  1. The vehicle models as depicted lack of distinctive character. Although some of their element can be perceived as unique compared with other similar models, as a whole the design of the cars are classic one for off-read vehicles. The ordinary consumer will not identified them as separate trademarks.
  2. The submitted evidence for acquired distinctiveness is not sufficient to prove that consumers perceive these 3D forms as a source of trade origin apart from the word marks Land Rover and Defender.
  3. According to the Office it is possible these applications to being filed in bad fight. It is obvious that their purpose is to monopolies these particular classic car designs, they will not be used for other products.

The Court upheld the UKIPO’s position. The 3D trademark applications at hand lack of distinctive character and cannot constitute s source of trade origin.

Source: Automotive News Europe.

Source: IPKat.

Is NOSECCO different from PROSECCO for wines?

One interesting news from the UK shows clearly how powerful can be the protection of geographical indications.

In the case at hand, Les Grands Chais De France applied for an international trademark NOSECCO for class 32 – non-alcoholic wines; non-alcoholic sparkling wines, where the UK is a designated country.

Against this application, Consorzio di Tutela della Denominazione di Origine Controllata Prosecco filed an opposition based on registered geographical indication for PROSECCO.

As it is well-known, Prosecco is a famous wine that can be produced only in some areas in Italy.

The UKIPO upheld the opposition and refused the NOSECCO trademark application stating that both signs are similar for identical goods.

While Les Grands tried to claim that these marks are different based on the different beginnings, the Patent Office disagreed. In this case, there is a visual and phonetic similarity which can create consumers ‘ confusion.

This case comes to show that geographical indications protection can be invoked not only against identical signs but against similar too, especially where there is a strong reputation of the earlier indication among the consumers.

Source: Claire Keating – Marks & Clerk.