In the US to indicate two things which are truly… incomparable, one says “oranges and apples”. In continental EU, we say “apples and pears”.
This case deals indeed with apples and pears.
On 31 January 2019, the General Court of the European Union had to decide about the similarity between an apple and a pear (case T-215/17):
Pear Technologies Ltd, tried once again to obtain registration for a pear in relation to technological goods and services in classes 9, 35 and 42.
Apple Inc. opposed the registration, hoping to obtain the same result as in its opposition against a grey pear (shown below), where the Board of Appeal’s view was that the two signs were visually similar and the applicant was trying to mimic the iconic apple, riding on its coat-tails.
Also in this case, the Opposition Division and the Board of Appeal, despite the new stylisation, still held that trademark applied for ‘imitated and at the same time mocked and defied’ the earlier reputed mark, by using the fruit which is the most similar to the image of an apple and which is its closest alternative in real life. In this way, consumers would perceive products bearing the “pear” as alternative to Apple’s products.
The General Court (GC) reversed. It held that the finding of several commonalities on a visual level was incorrect. Indeed, the only commonalities are the presence of black colour and the similar positioning of the figurative elements placed on top which will probably go unnoticed among the relevant public, while the dissimilarities are more striking:
the marks will immediately be perceived as depicting different fruits;
the shapes of the figurative elements and the fruits depicted are dissimilar as the pear is made up of a large number of squares of different sizes without an edge while the apple is depicted with a solid image;
the mark applied for contains no trace of the bite present in the earlier mark and, finally,
there is the word element ‘pear’ not appearing the earlier mark [of course… it is an apple].
Therefore, having regard to those differences, the GC held that the conflicting marks, each considered as a whole, produce a different overall visual impression.
As for the conceptual “link”, the GC held that the BoA’s finding that apples and pears were associated in many ways throughout the relevant territory and were common alternatives to each other was not supported by any concrete evidence. Furthermore, there is a ‘specific concept of antagonism’ between apples and pears, in several EU languages, as they are used to illustrate two things different and not comparable. The application of Article 8(5) EUTMR (the special protection of marks with a reputation in EUTM oppositions) requires the signs at issue to be at least similar. Even assuming that the conflicting marks evoke the idea that two things are incomparable, this does make them similar, but rather supports the absence of any conceptual similarity.
In other words, the GC found that the BoA’s idea that something like “apple and pears”, commonly understood as figurative speech for things that are totally incompatible, at odds, incongruous, conflicting, clashing, discordant, antagonistic, mutually exclusive, different, were instead considered capable of creating a link from one to another, was illogical.
It’s been a busy couple of weeks for the UK government, and what can now only be described as the Brexit nightmare rumbles on.
Despite the deadline for the UK’s departure from the EU being just over a week away, we are still no clearer on how or when exactly this will take place, with talks of possible extensions to the 29th March deadline continuing.
Amidst the chaos, Her Majesty’s Revenue and Customs (“HMRC”) has provided some further guidance on how the customs protection regime and Applications for Action (“AFAs”) will operate once Brexit takes place, in particular, if the UK should leave the EU without a deal. Whilst the possibility of a ‘no deal Brexit’ is now looking improbable given the events of last week in Parliament, the guidance is still worth noting.
Understandably, the focus for businesses and IP professionals has been on the enforceability of EUTM trade mark and design rights in the UK post-Brexit. However, customs protection and enforcement, which is a highly important issue for many businesses, has not received as much attention and consequently, guidance is patchy.
We understand that the Anti-Counterfeiting Group (“ACG”) in the UK is pushing hard for more clarity on it and some guidance has recently been given by HMRC to existing holders of AFAs in the UK.
An AFA is part of a current EU-wide mechanism on customs enforcement relating to intellectual property rights. The AFA process allows IP rights holders to register rights with the customs authorities throughout the EU. Currently, an AFA can be filed in any member state of the EU and can either be an EU AFA (i.e. have EU-wide applicability) or can be limited to a particular member state (or states).
The European Commission issued some guidance on this in June 2018. This Notice confirmed that if the UK leaves the EU without a deal on 29th March, EU AFAs (i.e. those that have effect throughout the EU) cannot be submitted via UK customs after that date. Any EU AFAs filed pre-29th March, and which designate the UK, will continue to have effect throughout the remaining 27 EU member states but will no longer have effect in the UK (see below).
However, EU AFAs will cease to have effect in the remaining EU member states if they were filed via the UK customs authorities. EU AFAs filed in other member states will continue to be enforceable.
EU AFAs filed through UK customs will therefore need to be refiled in the remaining EU member states once the UK leaves in order to be enforceable.
This will have massive implications for rights holders who currently rely on UK based EU AFAs as part of their brand protection strategy.
Recent guidance from HMRC suggests that UK Customs will replace the current EU AFA with a UK AFA, meaning that rights owners will not need to take action to convert existing EU AFAs in order for them to continue to have effect in the UK. This will happen automatically provided the AFA was applied for before 29th March 2019 and the AFA will be valid for the remaining term.
Customs protection is an important part of an IP strategy for many businesses and can be a very effective mechanism for controlling counterfeit activity. We would encourage businesses to review their current customs protection strategy in light of Brexit to ensure no loss of rights in the event that the UK leaves the EU without a deal.
The Third Circuit ruled that Galderma Laboratories owned the trademark to “Restoraderm” pursuant to a 2002 contract between Galderma’s predecessor in interest and the individual inventor of “Restoraderm,” reversing a lower court ruling that the inventor owned the trademark because a subsequent 2004 contract superseded the 2002 agreement.
Case date: 26 February 2019
Case number: No. 17-3148
Court: United States Court of Appeals, Third Circuit
Yet another trademark dispute has been taken to court by APPLE. This time, APPLE lodged a trademark opposition against the letter „j“ trademark of an Italian incorporation by the name „Steve Jobs“ in front of the Swiss Federal Administrative Court (FAC) (B-1176/2017 (FAC)).
After APPLE had failed to cancel the opposed trademark before the Institute for Intellectual Property (IPI), it appealed the case to the FAC. However, with its decision dated 10 January 2019, the FAC confirmed the ruling of the IPI and held that there is no likelihood of confusion between the APPLE trademarks and the opposed mark.
The court held that the overall impression and distinctiveness of a device mark with an inherent meaning is characterized by both its shape as well as its meaning. Thus, their similarity on either level contributes to a risk of confusion, whereas differences can prevent such a risk. In particular, a risk of confusion exists if the opposed mark only constitutes a variation or modernization of the prior trademark without conveying an individual impression.
Apple (fig.) CH P-502206 Leaf (fig.) CH 640382 J (fig.) IR Nr. 1’292’997
In its assessment of the similarity of the signs, the court observed that the overall impression of the opposing trademark 1 (“the apple”) was characterized by a stylized apple (1) coloured in monochromatic black (2) with a semicircle semi-circular recess on the right side (3), and a leaf. The opposed trademark, in comparison, features the form of a stylized letter “j” (1) and is also coloured in monochromatic black (2) with a semi-circular recess on the right side (3) and an elliptical dot on the “j” (4). Furthermore, the opposed trademark incorporates the opposing trademark 2 (“the leaf”), thereby resulting in two matching characteristics, namely the form of the leaf (1) and its colouring in monochromatic black (2). Due to their accordance in three, respectively two, characteristic features, the court found the opposed mark and the opposing trademarks 1 + 2 visually similar.
However, despite their visual similarities, the court ultimately rejected a likelihood of confusion between the marks, stating that the opposed trademark lacked the decisive figurative element “apple” as transported by the opposing trademark 1. Furthermore, the opposing trademark 2 – although integrated in its entirety in the opposed mark – is trite and merely weakly distinctive. Therefore, the trademarks differ in their overall impression.
The outcome of the decision shows the weakness of the opposition procedure for famous trademarks, in which only a strict sign comparison is carried out and arguments such as exploitation of reputation are ignored. In order to assert claims in relation to an unfair reference to a famous trademark like APPLE, a cancellation claim before an ordinary court relying on the so called “famous trademark” according to Art. 15 of the Swiss Trademark Act or on an “unnecessary exploitation of reputation” according to Art. 3 lit. e of the Swiss Unfair Competition Act might be the more favorable way.
In India, so-called translation cases, where a later mark is (or is alleged to be) a mere translation of an earlier mark leading to confusion resulting from conceptual similarity, are dealt with under the concept of “deceptive similarity”. While earlier decisions seemed to favour a broad interpretation of this concept, the judgment of the Delhi High Court dated
In this case, the Court ruled that the trademarks “Officer’s Choice” and “Fauji’s” were not deceptively similar.
The plaintiff had trademarked the term ‘Officer’s Choice’ in the year 1988 and was using this for alcoholic beverages. The defendants were using the mark ‘Fauji’ with respect to the same products. The plaintiff argued that the literal translation of the term “Fauji” would be “military officer”. Also, since they were in the same business, the likelihood of confusion among the consumers would be high. The Court held that the trademarks were not similar. The words were phonetically different and, whilst the expression “officer” referred to “a person in power”, the term “Fauji” meant a simple soldier. The case laws relied on by the plaintiff was not accepted by the Court.
The concept of deceptive similarity is, however, not limited to conceptual similarity. In the case Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahindra Ltd., the Supreme Court decided in 2001 that the name “Mahendra & Mahendra” infringed the earlier business name “Mahindra” which had been in use for over five decades and had acquired distinctiveness and a secondary meaning as a result, basing this on phonetic similarity.
Lasse Søndergaard Christensen and Kathrine Spinner Madsen
In the beginning of this year a decision regarding the trademark right to the name of the iconic Danish faience set with the thin blue line on the edges, was issued by the Danish Maritime and Commercial Court (Decision no. BS.9705/2017-SHR of 18 January 2019). Both the designer of the faience set as pictured here, Grethe Meyer, and the manufacturer and distributor of the faience set, the Danish porcelain company Royal Copenhagen (owned by the Finnish company Fiskars), claimed to be the rightful owners of the trademark rights to the name under which the faience set had been marketed, namely BLÅKANT (which translates into BLUE LINE). The court ruled in favor of Fiskars who had manufactured and marketed the faience set using this name over a period of 50 years.
The BLUE LINE faience set was created in the beginning of the 1960s by the designer Grethe Meyer and was marketed for the first time in 1965. The set was manufactured by a company, which later became Royal Copenhagen, with whom the designer Grethe Meyer had entered into license agreements with in 1963 and 2004 respectively. In the license agreements it was specified that the copyright to the design of the set would remain with the licensor (the designer Grethe Meyer), but that Royal Copenhagen had the exclusive right to the manufacture and sale of faience set. The BLUE LINE faience set was marketed by Royal Copenhagen (and later Fiskars) from 1965 to 2015.
When Grethe Meyer passed away in 2008 the rights to the design were transferred to her heirs according to the license agreement. When the daughter of Grethe Meyer passed away in 2016 she left a will in which it was stated that her niece was to inherit “all rights to my late mother’s designs, including royalties thereto”.
When Fiskars in 2015 applied for the trademark BLÅKANT (BLUE LINE), the Danish Patent and Trademark Office refused to register the name because it was considered descriptive since the mark merely indicated that the goods in question, for instance plates, vases etc., were decorated with a blue line. However Fiskars were subsequently able to prove that the name BLÅKANT had acquired distinctive character through use since it had been used extensively for a long period as a trademark originating from the company.
When BLÅKANT was registered on the basis of acquired distinctiveness, the daughter of Grethe Meyer opposed the registration of the mark on the ground that Grethe Meyer and her subsequent heirs were the rightful owners of the trademark BLÅKANT. In December 2017 the company Grethe Meyer Design initiated legal procedings against Fiskars. The opposition pending at the Danish Patent and trademark office was suspended on the basis of the court proceedings.
In support of Grethe Meyer and her heirs it was argued that Grethe Meyer was the inventor of the name and that there was a natural close connection between the faience set and the name, and that the design rights related to the faience set could not be separated from the name, which it had been marked under for 50 years, namely BLÅKANT. As Grethe Meyer had come up with name and since the name was used in relation to her design, it was argued that Royal Copenhagen had used the name on behalf of Grethe Meyer who was therefore the rightful owner of both the design rights and the trademark rights.
Fiskars on the other hand argued that when the original license agreement was made, no trademark right existed since the name BLÅKANT was merely a description of the faience set and therefore such right could not be considered part of the license agreement. The trademark BLÅKANT had been established only be means of use by Royal Copenhagen through a period of 50 years and therefore the trademark right belonged to this company who had invested many resources in the marketing of the product. Fiskars also argued that only the design rights and the copyrights (and not the name or any trademark rights) had been passed to the heirs of Grethe Meyer.
The court ruled that first of all the wording of the will which mentioned “all rights to Grethe Meyer’s designs” did not necessarily refer only to design rights and copyrights, but could also include any potential trademark rights. However the agreements between the parties only focused on the design rights and the payments of royalties and did not mention the right to the name or any trademark rights. The court therefore went on the conclude that it had not been proved that the designer Grethe Meyer had preserved the right to the name or acquired any trademark rights to this. Consequently the court ruled in favor of Fiskars who were entitled to keep the trademark registration of BLÅKANT in Denmark.
Is being environmentally friendly a quality which matters for consumers? And if it does, what it is “allure”?
On the judgment of the General Court of 12 December 2018 in case T-253/17 regarding genuine use of the sign of Der Grüne Punkt
Der Grüne Punkt – Duales System Deutschland GmbH is the owner of a collective EUTM registration for various goods and services in classes 1 to 35, 39, 40 and 42 for the following sign:
The particular function of this mark, placed on external packaging of different goods, was to enable consumers and traders to recognise packaging as part of a system of recycling and to distinguish them from other packaging and products not part of this system.
Haltston Properties s.r.o., filed a revocation action which was upheld for all the contested goods, except for some goods related to packaging. The Board of Appeal (BOA) confirmed, holding that Der Grüne Punkt had failed to prove that it had used the mark in accordance with its main function, namely to guarantee the identity of the origin of the goods. According to the BOA, consumers would only consider the mark as an indicator of the manufacturer’s heightened sensitivity to ecology and not a reference to the commercial origin of the products.
Der Grüne Punkt therefore filed an action before the General Court (GC) claiming, among others, that the function to communicate to consumers the ‘ecological’ image of the manufacturer and the ecological quality of such products did not only relate to the packaging but to the products themselves and hence could attract consumers’ attention and influence their choices. Thus, use on the packaging could be considered as genuine use with regard to the products inside the packaging.
The GC disagreed. It held that consumers clearly distinguish trademarks that indicate the commercial origin of products from those that indicate an ecological quality of packaging. In addition, the GC held that that the mark would not create or preserve an outlet for the goods at issue, but only for their packaging, even in the “unlikely” case where all things being equal, price included, a consumer’s final choice might be influenced by whether or not the external packaging of one product would be recycled when another would become a (more or less) permanent feature of a landfill.
However, this conclusion is puzzling. If the choice is influenced, would this be enough to recognize such function as equally important than the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services? After all, the CJEU (cf. C-487/07, L’Oreal v Bellure), recognized that there are other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising which deserve protection. And in Copad (case C-59/08) the CJEU held that the quality of certain goods “is not just the result of their material characteristics, but also of the allure and prestigious image which bestows on them an aura of luxury”, as “the aura of luxury emanating from them is essential in that it enables consumers to distinguish them from similar goods”.
Thus, when the GC albeit reluctantly, recognized that it is possible that consumers might choose one product, among other identical products, only for the ecological characteristic of its packaging, the GC also implicitly admitted that consumers’ choices may be indeed influenced by the intangible value of being “environmentally friendly”, for “it enables consumers to distinguish them from similar goods”. And it is also difficult to deny that in such a case the transfer of the “environmental allure” is to the product itself and not only the packaging, as “that” product is ultimately sold (not just the packaging!). Should we thus now recognize an environmental allure? The GC judgment is in line with its findings in the TEFLON case (T-660/11 of 16 June 2015), where the Court also denied genuine use of TEFLON for the final products despite the use of the sign for those and its potentially decisive impact on the purchase decision. This seems to be an unfortunate development for the protection of brands for goods or services that serve to improve the quality of a range of products.
The discrepancy between the case law using geographical origin as a reason for rejection of a trademark in the EU and at the DKPTO, respectively, is becoming increasingly noticeable; most recently with the judgement from the General Court in T-122/17 DEVIN on the registrability of the geographical name DEVIN. The discrepancy concerns the issue when a geographical name is considered a geographical origin in the EU and when a geographical name is a ground for objection at the DKPTO.
In practice, it is next to impossible to obtain a trademark registration for any geographical name in Denmark – even if the name is historical, like HAFNIA (historical name for Copenhagen), for a specific address in Denmark, or if the geographical scope under the geographical name is diffuse.
The very strict practice at the DKPTO on geographical names is reasoned by the fact that (previously) Danish businesses used the geographical names to distinguish themselves from other businesses within the same line of business, e.g. a hairdresser in Copenhagen and a hairdresser in Aarhus. This historical use of geographical names in combination with the name of the business has resulted in a(n extremely) strict practice for Danish geographical names, meaning that it is not possible to obtain trademark registration for a geographical name in Denmark unless it is impossible to perform the particular kind of business from that geographical location. An example of this is the geographical name RINGSTED (a middle-sized non-coastal town in the middle of Zealand) for Shipbuilding in Class 37, meaning that RINGSTED would be considered acceptable for Shipbuilding by the DKPTO.
Recently, the DKPTO has inter alia rejected the following marks as they consider the signs to be of geographical origin and thus descriptive:
NYHAVN 17 for inter alia tattooing services in Class 44 (a specific address in Copenhagen). Is that sign not be considered registrable for the number ‘17’ alone? And is there indeed a need to keep this sign free for third parties to use as it is possible for one single undertaking only to be located at that address? EUIPO accepted the sign for the same services without the blink of an eye.
SLAGTER VOLSTED for Classes 29 and 30 (SLAGTER means ’butcher’ in English and VOLSTED can be seen as the geographical name of a small town with 148 inhabitants). Should this sign not be considered registrable as ‘SLAGTER’ is, in the sign, used like ‘Mr.’ and VOLSTED is also a last name in Danish, thus VOLSTED is used as a last name and not as an indication of geographical origin?
GREATER COPENHAGEN in Classes 9, 16, 35, 36, 39, 41, 42, 43 and 45 (a diffuse area including Copenhagen and the urban areas around). Should this sign not be considered registrable as its geographical scope is diffuse?
Even though traditionally, Denmark and Sweden have similar case law due to the Nordic IP-law collaboration, Sweden is much more lenient than Denmark when it comes to accepting (Swedish) geographical names as trademarks.
Lately, the General Court has outlined the reasons for using geographical origin as a ground for rejection in T-122/17 DEVIN. The judgement concerns the request for a declaration of invalidity of DEVIN for inter alia mineral water in Class 32. The Haskovo Chamber of Commerce and Industry (HCCI, Bulgaria) filed the request for a declaration of invalidity of DEVIN and intervened in the case before the General Court.
The General Court outlined the following criteria for using geographical origin as a ground for rejection:
descriptive signs may be freely used by all traders offering such goods or services;
geographical names must remain available as they may be an indication of the quality and other characteristics of the categories of goods or services concerned, and may also, in various ways, influence consumer preferences by, for instance, associating the goods or services with a place that may evoke positive feelings;
the registration of geographical names as trademarks where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned, and which are therefore associated with that category in the mind of the relevant class of persons, is excluded;
geographical names which are liable to be used by undertakings and must remain available to such undertakings as indications of the geographical origin of the category of goods or services concerned.
The General Court decided to annul the decision of the Board of Appeal as they concluded that DEVIN had required distinctive character in Bulgaria (on the home market) and is, to a vast majority of the relevant public outside Bulgaria, unknown, and thus DEVIN is not considered a geographical origin by the General Court.
In view of, the DKPTO is taking the criterion liable to be used too far when considering diffuse, historical and geographical names used as a last name to be a geographical origin. Hopefully, the Danish case law will soon be in line with the case law from the General Court. Until then, it may be advisable to apply for registration through the EUIPO for Danish geographical names.
It would be fair to say that the implementation of GDRP last year caused a number of headaches for businesses that handle personal data. However, one of the lesser publicised implications of GDPR was the redaction of all WHOIS information for registered domain names.
Suddenly, information about the registrant of a domain name, i.e. WHOIS data, was redacted by most domain name registrars. This information was previously freely accessible, provided that the registrant hadn’t opted to privacy shield their data, and was a useful tool to trade mark owners in enforcing their rights, particularly in complaints about domain names before the World Intellectual Property Office (WIPO) under its Uniform Dispute Resolution Policy (UDRP).
The UDRP requires that 1) the complainant have rights in a mark identical or confusingly similar to the domain name, 2) the registrant has no legitimate interest in the domain name, and 3) that the domain name was registered and is being used in bad faith. Both the second and third of these elements have been affected by the WHOIS blackout.
Lack of legitimate interest
Typical arguments that the registrant lacks a legitimate interest in the domain name include: the registrant is not an authorised licensee or reseller of the complainant; the registrant would have been aware of the complaint and its rights due to the registrant’s location and the reputation of the complainant’s mark; and that the domain name is not being used in connection with a bona fide offering of goods and services.
However, if the identity of the registrant is blocked, it is not possible for the complainant to know or confirm any of these details. It is also not able to point to the geographical location of the registrant and claim with certainty that it would have been aware of the complainant’s reputable trade mark rights in a particular territory when registering the domain name.
In terms of the third element, common arguments for bad faith include: the domain was registered for the purpose of selling the domain to the trade mark owner at an excessive cost; the domain was registered to prevent the trade mark holder reflecting its name in a corresponding domain name, and there is a pattern of such conduct; the domain was registered to disrupt the complainant’s business; or that the domain is being used in a commercial capacity to confuse consumers.
Given the absence of registrant details, it is now harder for trade mark owners to contact registrants before filing a complaint. So, trade mark owners potentially lose the opportunity to obtain useful evidence indicating the bad faith intentions of a registrant in pre-complaint correspondence, such as an offer to transfer the domain for an excessive sum. Reverse WHOIS searches can also no longer be conducted if the registrant is unknown. Plus, given the unknown identity and location of the registrant, trade mark owners can less convincingly argue that the registrant would have known about their trade mark rights, therefore have registered the domain name with the intention of disrupting its business or confusing its consumers.
So, the lack of WHOIS information following GDPR has put trade mark owners on the back foot when seeking to enforce their trade mark rights via the WIPO UDRP. There has been some discussion within the Internet Corporation for Assigned Names and Numbers (ICANN) regarding an ‘accreditation model’ which would allow certain parties access to WHOIS information, for example trade mark owners and their legal representatives. However, as yet, no such system has been established.