Trademark Opposition

AC Milan scores against Marriot Hotels

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The football club from Milan filed its logo in 2013 in the European Union for various products and services, among which class 43. However, the application in class 43 finds resistance, from AC Hotels, not the most usual opponent for AC Milan.

The AC-element is the most dominant element of AC Hotels and they have to keep AC-trademarks away in class 43, the most important class for AC Hotels. Besides their logo and the wordmark AC HOTELS BY MARRIOTT, their best weapon is the wordmark AC.

But the opposition is rejected. The trademarks are sufficient different. The only corresponding element is AC. According to EUIPO, “the letters AC are negligible elements due to their minuscular size and position in the middle of the other letters in the contested sign, and are not noticeable at first sight, considering also that this complex sign has other visually outstanding elements and, therefore, it is very likely that the letters AC are being disregarded by the relevant public.”

On 19 June 2019, the EU General Court ruled that the EUIPO had been correct in granting registration of the figurative sign that Associazione Calcio Milan SpA (AC Milan) had applied for. [Case T‑28/18].

PEAR TRADEMARK IS NOT CONFUSING WITH APPLE

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The EU Court recently ruled on the visual and conceptual similarity between brands and, reversing the decision of the EUIPO on this point, found that the well-known Apple brand and the Pear brand cannot be confused with each other.

The story takes its cue from the opposition presented by Apple to the application for registration of the European figurative mark 'Pear', filed by Pear Technologies Ltd. Following the acceptance of the opposition, the latter lodged an appeal before the EUIPO, which confirmed but the first decision. Consequently, Pear Technologies challenged the provision before the EU Court which denied the existence of a similarity between the two signs, comparing them both visually and conceptually.

At first the EUIPO Board of Appeal recognized a remote degree of similarity between the two signs, as both represented rounded shapes of a fruit with the related stem / leaf in an identical position but the Court then came to a different conclusion.

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The judge in fact observed that the two signs are visually very different from each other: in fact, they represent two distinct fruits and the one (the Apple brand) constitutes a solid form, while the other (Pear) is a set of separate objects between them; moreover, the element in the upper right corner represents in one case a leaf (Apple) and in the other a stem (Pear); finally, the word element of the Pear brand cannot be underestimated, as it has significant dimensions with respect to the shape, a different color, a particular font and is in capital letters. In conclusion, the judge ruled that the reputation of the earlier sign does not matter in a similarity judgment, and that the marks in question are visually different.

From a conceptual point of view, the Court overturned the conclusions of the Board of Appeal EUIPO, emphasizing that there is conceptual similarity only when two signs evoke images having a similar or identical semantic content.

In the present case, the EUIPO had at first considered that the two marks represented two distinct fruits but that however they were similar for biological characteristics but the court held that the signs in question evoke the idea of a certain fruit, while they recall the general concept of "fruit" only indirectly.

Secondly, he reiterated that, in many states, members of apples and pears are used in proverbs as examples of different things and not comparable, and the possible similarity in size, color or consistency (characteristics that, moreover, share with many others fruits) is however an element that can be perceived by the public only in the context of a very detailed analysis, without considering that it is unlikely to assume that the consumer is aware of their origin from the same family of plants.

Based on these considerations, therefore, the EU Court annulled the decision of the EUIPO Board of Appeal, recognizing the possible influence exercised by the reputation of the earlier trademark.

THE "BREXIT BEER" CASE.

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On January 30, 2019 EUIPO Grand Board of decisions was recently faced with the case of the application of the “Brexit” Trademark. The case concerns the eligibility for registration of the figurative sign “BREXiT” for ‘energy drinks containing caffeine; beer’ in Class 32.

 The application was refused by the examiner for lack of distinctiveness and against public policy as it was pointed out that the relevant public includes all consumers in the EU as they frequently encounter the term through the mass media and the internet.

With respect to the infringement of public policy or to accepted principles of morality the GB found that word ‘Brexit’ denotes a sovereign political decision, that was taken legally and has no negative moral connotations; it is neither an incitement to crime, nor an emblem for terrorism or a byword for sexism or racism. The word alone does not express an opinion. The fact that part of the UK public may have been upset by a controversial decision taken democratically does not constitute an offence. The GB therefore concluded that the sign cannot be deemed to be contrary to the accepted principles of morality, in and of itself, nor when used as a brand for the goods applied for.

Nevertheless, the term was, already at its filing date, so well-known to consumers as the name of an event of a historical and political nature that it would not be associated, prima facie, with specific goods originating from a specific trader. It may only acquire distinctiveness if consumers are sufficiently exposed to it in a trade context. Moreover, the colours and font are unable to divert the attention of the public away from the non-distinctive message conveyed by the word. The background evoking the Union jack accentuates this message. For the above reasons, the GB refused the application and dismissed the appeal.

NIKE'S ATTEMPT TO REGISTER THE WORD FOOTWARE

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Late last month, Nike filed an intent-to-use trademark application for registration with the U.S. Patent and Trademark Office (“USPTO”) for the word “FOOTWARE” – for use in connection with sneaker-specific “computer hardware modules for receiving, processing, and transmitting data in Internet of things electronic devices; electronic devices and computer software that allow users to remotely interact with other smart devices for monitoring and controlling automated systems,” among other hardware and software products and services.  

It appears that Nike has tried to extend the registration to class 25 (i.e., the trademark class that covers shoes). Well that is a registration that not even Nike likely would not obtain, because the mark would be deemed descriptive of the products that refer to shoes, and thus, not registerable. 

It appears that Nike will start to brand any smart shoes as FOOTWARE as opposed to FOOTWEAR. Judging by just how famous and powerful its “Just Do It” and swoosh marks are, the new trademark just might catch on, and ultimately, serve to identify Nike’s smart shoes as a whole (and not just their tech components). As for the application, itself, it is currently pending review by the USPTO.

If the company can win over the USPTO on this one (and if the similar proceedings currently underway before the UKIPO are any indication, there’s a chance it will be able to), it might walk away with not just a major win but the beginning of a pretty striking trademark and branding scheme.

Christian Louboutin's Red Shoe Soles are a valid Trademark.

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According to a recent decision by the Court of Justice, the red color of the Christian Louboutin shoe sole is a mark of position and not a mere form and as such constitutes a valid right of property.

This is the decision rendered by the EU Court of Justice, after the French maison had sued the Dutch company Van Haren for selling women's shoes with high heels and red soles.

The Dutch company in 2012 had started selling the "5th avenue by Halle Berry" model - and was sued by Louboutin for counterfeiting. Van Haren defended itself by invoking the "nullity" of the Louboutin brand, appealing to the fact that "the EU Directive on trademarks lists several grounds for invalidity to registration, in particular, with respect to signs consisting exclusively of the shape that gives a substantial value to the product ".

The decision c-163/16 establishes instead that the "protection" of the Louboutin brand red sole "does not concern a specific shape of high-heeled shoe sole (which would not be protected as a EU trademark), as the description of said mark expressly indicates that the outline of the shoe is not part of the mark, but only serves to highlight the position of the red color to which the registration refers. The Court also added that a trademark cannot be considered to be "exclusively from the shape where the main object of this sign is a color specified by an internationally recognized identification code".

The fashion house speaks of a "Victory for the Maison Christian Louboutin" because "the protection of the Christian Louboutin red sole brand is strengthened by the European Court of Justice". According to the company today's ruling in Luxembourg "has confirmed that the legal regime that governs the shape trademarks does not apply to the 'red sole' of Christian Louboutin", which is on the contrary "a position mark, as it has supported the Maison for many years ".

Surprise Decision on Steve Jobs Trademark.

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The European Union Intellectual Property Office (EUIPO) has upheld its prior decision to grant the registration of trademark STEVE JOBS, in the name of two Neapolitan brothers, Vincenzo and Giacomo Barbato.

The trademark  was not only for STEVE JOBS, but also for a stylization, and a very particular letter J, that likely reminds consumers of another company’s logotype.

The Neapolitan brothers noticed that Apple had neglected to register its founder’s name as a trademark and, unwilling to let this opportunity go by,  registered the trademark as shown above before the EUIPO (Registration No. 011041861), in International Classes 9, 18, 25, 38 and 42.

After noticing this, Apple Inc. attacked this registration before the EUIPO, arguing that the letter J was a copy of Apple Inc.’s own apple device, with a very similar leaf, and a bite taken off it, as shown here:

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After years of arguments, the EUIPO ruled in favor of the Barbato brothers, arguing that letter J is not edible, and consequently there is no relation between the bitten apple of the technological company and the “bitten” J of the Italian brothers.

Consequently, the registration was sustained, and there are now clothes being sold under the STEVE JOBS trademark. The trademark owners have also indicated that they would eventually be interested in selling electronic devices with this trademark and, with the Class 9 protection, this is very likely to happen.

Unfortunately, it is impossible to foresee how a company or market will develop and these situations cannot always be avoided, but it is important to note that comprehensive planning, and to proactively protect through trademark registration those terms important to a company.

Note: Trademark STEVE JOBS was also applied for before the USPTO (Serial No. 79141888), but rejected by said institution.

The German Battle for the Balck Friday Trademark.

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In 2013, a trade mark application for Black Friday was filed in Germany. Today, the German trade mark is registered for Super Union Holdings Ltd., Hong Kong which has licensed the trade mark “Black Friday” to Black Friday GmbH, a company based in Vienna.

Since 2016, Super Union Holdings Ltd. has started to attack companies using the term Black Friday by sending warnings, such as the US e-commerce marketplace Groupon in 2016, as media reported. Another party concerned is a German entrepreneur who hosts the domain black-friday.de, a platform offering Black Friday deals.

In 2017, Super Union Holdings Ltd. sued Amazon for its use of the sign „Black Friday“ in Germany by raising, inter alia, forbearance and damage claims („Black Friday“ wird Fall für die Gerichte, Frankfurter Allgemeine Zeitung, November 6, 2017).

Of course, some companies, affected by the attacks of Super Union Holdings Ltd., have started to fire back. It is no surprise that there are more than twelve pending cancellation actions against the German trademark Black Friday. In addition, just recently a court in Düsseldorf / Germany has issued a preliminary injunction against Super Union Holdings Ltd. and its licensee Black Friday GmbH to refrain, inter alia, from claiming against clients of the operator of the aforementioned website black-friday.de, that the use of “Black Friday” in an ad is a trade mark infringement.

In Germany, the registration of a trade mark can be cancelled on request of any third party if it has been registered despite absolute grounds for refusal, e.g. if the mark is descriptive or does constitute an indication which needs to be kept freely available. So, what is your opinion?

Hendrix vs Hendrix

Experience Hendrix, a subsidiary of Janie Handrix, who owns the rights to all the entire estate of the guitarist and most famous brother Jimi, sued Leon Hendrix and his partner Pitsicalis for breach of copyright and trademark. In fact, Leon and Pitsicalis would illegally used some of the many Experience’s trademarks (the signature and the images of the face and bust of Jimi) to trade marijuana cigarettes and alcoholic beverages. But the battles for the commercial use of the Jimi’s name are going back in time. In 2015, the Washington District Court had ruled on the matter, forbidding Leon and Pitsicalis to use images of the musician. In addition, in January 2017, the District Court of Georgia declared illegal the use of the words "Jimi" and "Hendrix" on their websites, social media and online platforms. The lawsuit filed in March 2017 in front of the Court of New York by the Experience Hendrix declared illegal, for infringement, also the use of the name "Purple Haze" in the sale of marijuna cigarettes and T-shirts. Purple Haze, in fact, is a song written in 1967 by Jimi Handrix. Experience Hendrix has requested injunctive relief, the elimination from the market of goods violating the trademark’s right and the relatives damages. On the other hand, Thomas Osinski, Pitsicalis and Leon Hendrix’s lawyer, said that "Experience Hendrix has long known long of my clients’ products and it brings this suit only to tarnish and interfere with the lawful and correct Leon’s businesses, which respects Jimi Hendrix’s legacy." Furthermore, Osinski, regarding the content of the claim, said that, although previous rulings have excluded Leon Hendrix and his family from Jimi’s music catalog and denied the possibility to use the trademarks created by Experience Hendrix, nothing prevents Leon and his partner to sell other merchandise Hendrix-related. Who knows how the Court will fix this new family dispute.

Cavalli vs Cavalli

The court of Catania has sentenced Roberto Cavalli to pay the costs of proceedings in the trial against Mrs. Luciana Cavalli, a craftswoman, producer of shoes in Sicily.

The famous Florentine designer, six years ago, had sued his namesake for the misuse of“Cavalli” brand.

It doesn’t matter thatthe Sicilian designer’s surname is actually Cavalli and that her brand exists even before Mr. Robert’s: in his opinion, this name is used out of turn and it represents a case of unfair competition. This is why Roberto Cavalli asked the judge to ascertain an economic damage against his company and to establish a compensation, calculated in 10,000 Euros per day of use, under Article 2600 of Italian Civil Code.

But the Court has rejected the requests made by the complainant and, as Luciana Cavalli’s lawyer says, the judge has awarded the good faith and the continuous use of the trademark “Cavalli” by the manufacturer of shoes and accessories. Thus, Mrs. Cavalli won’t withdrawn her name from the market and she will be able to continue her production of leather goods “made in Italy”.

The Sicilian judgement is at odds with what was stated by the Supreme Court about Fiorucci. In that case, the Court judged unlawful the use of the brand Love Therapy by Elio Fiorucci by Mr. Fiorucci himself, because the famous trademark had been sold to a Japanese holding. That time, it was ruled that the use of the name, even if his own name, it’s not legal if it is a patronymic mark owned by third parties. It can happen, the Court explained, that a coupling effect is generated and that this leads to confusion about the more renowned trademark.

Round Two in the Sky against Skype Trademark Battles goes to Murdoch's men.

British broadcaster BSkyB has won round two in its trademark infringement battle with Skype.

The European Union General Court found on Tuesday that the two names are too similar and could cause confusion. In 2012 and 2013 the Office for Harmonisation in the Internal Market (OHIM) upheld Sky’s complaint, but Skype then appealed to the EU court.

In today’s decision the court said that there were a number of contributing factors to its decision - in particular, their “degree of visual, phonetic and conceptual similarity”. Skype has attempted to argue that the “pronunciation of the vowel ‘y’ is no shorter in the word ‘skype’ than it is in the word ‘sky’.”

Skype also copped it over its cloud-shaped logo which the court found would be reminiscent of the standalone word "sky".

The argument that the word "skype" is highly distinctive and had even entered the lexicon for identifying voice over IP services was dismissed by the court.

Skype has one last lifeline - it can appeal to the European Court of Justice, but only on points of law and within the next 2 months. Calls to Skype and parent company Microsoft for comment were not returned at time of publication.

Is Pinocchio a valid Trademark?

With its decision of 25 February 2015 the Second Board of Appeal of OHIM partially upholding an appeal, has in fact confirmed the registrability as a trade mark of the word "Pinocchio".

In 2009, Disney had obtained by the Office of the registration of the word term "Pinocchio" for goods and services included in several classes. 

In 2012, Yves Fostier owner of a Community trade mark application which contains, the word "Pinocchio", but in a figurative trademark, had filed an application at OHIM to invalidate Disney’s trademark.

According to Mr. Fostier, Disney’s Trademark established an unacceptable monopoly on matters of law which entered in popular folklore and tradition. In any case, Disney’s application lacked of distinctive character, because popular and because it fell into the public domain. 

In the first degree the Office had, however, rejected Mr. Fostier’s arguments, observing that, on the one hand, the mere fact that a sign constitute the title of a story does not exclude the ability of the same sign to function as a trademark, and, second, the plaintiff had failed to demonstrate that the term "Pinocchio" was not capable of distinguishing the goods and services for which the mark was registered, nor he had proved that the term had become customary in a European language.

Mr. Fostier appealed the decision. 

This time, the Second Board of Appeal noted that, if a title is so well known to the audience to the point that it perceives the mark corresponding to designate primarily a title of a story or a book, that brand may be lacking distinctiveness. This will be more likely if it can be shown that several versions of the story have been published or that there have been numerous television and film adaptations, that have reached a wide audience. Therefore, although in principle the titles or the names of fictional characters can be registered and function as indicators of origin, it must be asked whether a sign is capable of being distinctive for the specific products and services covered by the mark.

According to the Second Board of Appeal Pinocchio belong to this special category of signs lacking distinctive character in relation to certain goods and services in Classes 9 (in particular film, video games, films, audio and video), 16 (children's books , books of drawings, cartoons), 28 (toys and the like), 41 (amusement parks and the like, theater productions, live performances) as consumers could be be led to believe that these goods and services are connected with the history and the character of Pinocchio.

Are decisions rendered by the UIBM subject to Res Judicata?

Following the introduction of administrative oppositions in front of the UIBM in 2009, the Italian doctrine has discussed on the possible preclusive effect of decisions rendered by the Italian trademark office.

The decision rendered by the Case T-11/13 (MEGO / TEGO) at the end of September, confirms what we knew: the decisions of opposition and nullity trademarks in front of the OHIM (but the same goes for the UIBM) do not have the effect of res judicata. This means that if an opposition has been rejected, the same party can bring another action for invalidity for the same reasons and under the same earlier grounds on which the Office has already taken a decision.

Of course the same applies when an action is introduced in front of a specialized court for nullity, revocation or infringement, when the UIBM has already rendered a judgment for the same trademarks.