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.

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Is NOSECCO different from PROSECCO for wines?

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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.

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

The 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 defended its SPARK brand in the UK

Amazon won a dispute before the UK Patent Office against a word trademark application for “SPARKK” in class 9 for goods including computer application software, mobile applications, and software for social networking services.

The opposition was based on the earlier trademark “Amazon Spark” for the same class of goods.

The UKIPO upheld the opposition stating that although Amazon is the first word in the earlier mark, Spark has a roughly equal contribution to the overall impression of the sign.

What’s more, the additional letter K in the later mark is not enough to overcome the possible consumer confusion. This is supported by the fact that Amazon is a distinctive and well-known mark and because of this consumers may think that SPARKK is just another sub-brand related to “Amazon Spark” .

Source: WIPR.

Kellogg lost an opposition against a UK brewery

Kellogg 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.