This week, an EU Court has upheld an earlier decision that the design of Crocs shoes cannot be protected under intellectual property laws. The original decision was from 2016 by the EUIPO who canceled the patent because Crocs made the design public before registering it.
Crocs were originally granted a patent in the EU in 2005, but a rival French shoe manufacturer, Gigi Diffusion appealed against the decision in 2013. The EU patent office agreed, saying that Crocs’ design had already been made public in 2003 on its website and at a boat show in Fort Lauderdale, Florida, and therefore “lacked novelty”. Under EU regulations any design which has been made public in the 12 months prior to a patent application cannot be given a patent.
Robert Watson, Partner and European Patent Attorney at Mewburn Ellis, commented on the decision:
“The General Court of the CJEU has upheld the EUIPO’s decision that a design registered by Crocs is invalid because it was disclosed earlier than 12 months before the application was filed. Crocs failed to provide convincing evidence that the relevant circles in the EU were not aware of these early disclosures. In the absence of such evidence, the decision is not surprising.
“As it stands, without a valid design right, Crocs will be unable to prevent third parties from using this recognizable, and commercially successful design. If Crocs decide to appeal the decision to the ECJ it is likely they will need to challenge the legal standard for establishing whether a disclosure is known to the relevant circles within the EU. This could prove difficult.
“The late filing of this design application was a major commercial oversight – perhaps because Crocs sought to reduce or defer intellectual property costs before the success of their product could be determined. However, registered design rights are cheaper and faster to obtain than patents and Crocs will undoubtedly regret not investing to protect their intellectual property sooner. When seeking design protection globally, it is important to remember that grace period provisions vary all over the world. Where possible, it is recommended that applications for design protection are filed before the design is made public, whether in the EU or elsewhere.”
Nando’s have started a litigation trial with an Independent chicken shop called Fernando’s, claiming they are intentionally trying to benefit from the established brand.
The chicken giant has asked the independent chicken shop in Reading to change
its name and logo, accusing it of too many similarities with its trademark branding.
Fernando’s received a legal letter claiming that the shop’s name and logo was an infringement of Nando’s intellectual property rights. However, the independent shop claims they named it after the holiday island of Fernandos from popular UK TV Show ‘Take Me Out’.
The letter claimed that cockerel and chilli images that Fernando’s uses on its menus and in store are “highly similar” to the Nando’s-owned trademarks “Barcelos Cockerel” and “Peri-ometer”.
Nando’s also claimed that the Fernando’s name is too similar to its own.
But the restaurant owner claims he came up with the idea for his restaurant’s theme with the help of his friends. The name came from the fictitious island in TV show Take Me Out which Aziz told the Standard he watches “every Saturday.”
He said that he just wanted to make a halal chicken shop in Reading which he says is lacking in the city. He added: “I had no intention and I had no idea that it was close to Nando’s chicken. We opened about seven months ago and everything was fantastic. I was overwhelmed, it’s really popular and really busy.”
Aziz says the large chain has now given him two weeks to make changes. Nando’s told the BBC: “We believe it is trying to benefit from some of the things that make us who we are.”
A chain of Pizzerias named ‘The Mafia’ has had their appeal rejected to keep EU trademark protection for its marketing slogan by EU Judges this week.
The European Union’s General Court in Luxembourg agreed with a complaint by the Italian government that it was immoral to trade on the name of a “criminal organization” whose “activities breach the very values on which the EU is founded”.
The judgment found that the EU Intellectual Property Office was right to accept Italy’s demand in 2015 to cancel a 10-year-old trademark held by La Mafia Franchises of Madrid, which runs a national chain offering pizzas, pasta, and other Italian cuisines. This can still be appealed.
Rejecting the company’s arguments about alluding to “The Godfather” films, the judges said it was not right to grant legal protection to the slogan “La Mafia se sienta a la mesa” — “The Mafia’s at the table” in Spanish — because it “promoted” an organization known for extortion, corruption and murder.
This week, Anaqua have once again made huge progress with the beginning of a new business deal. McDonald’s Corporation has entered into a multi-year agreement to use the ANAQUA platform to manage trademark prosecution, enforcement, and related legal matters.
The company’s IP portfolio includes more than 10,000 active trademark applications and registrations. McDonald’s will use the ANAQUA platform to help protect and enforce its global trademark portfolio by closely tracking its global trademark matters and continually monitoring and maintaining its portfolio.
The ANAQUA platform’s ability to manage oppositions, cancellations, revocations, infringements and other enforcement actions will help bolster McDonald’s legal operations. With ANAQUA, McDonald’s IP legal team can collaborate between internal business units, outside counsel, and other stakeholders.
“We are excited about the opportunity to assist one of the world’s best known brands in managing and protecting their valuable trademark assets,” said Bob Romeo, CEO of Anaqua. “McDonald’s and its trademark operations and related legal matters will be fully supported with Anaqua’s state-of-the-art software.”
Blackberry – the former phone giant – has sued Facebook – the largest social media platform in the world – in LA this week over their messaging service. The lawsuit is targetting facebook and Facebook-owned Instagram and Whatsapp. It came after what BlackBerry said was “several years of dialogue” with the social network. The suit isn’t available online yet.
Although BlackBerry is not predominately focusing on mobile phones anymore, they are not stopping fighting their intelelctual property rights.
The lawsuit targets messaging apps similar to the original BlackBerry Messenger (BBM). BBM is/was a secure way to exchange text and images and an early competitor to the likes of WhatsApp. BBM was an attractive form of global communication, particularly in countries where text message rates were high. In the years since, Facebook and its subsidiaries have become go-to services replacing many of BBM’s functions. Facebook alone is the world’s largest social network, with more than 2 billion people logging in each month. WhatsApp, meanwhile, has become a de facto text message replacement, garnering 1.5 billion active users, according to data compiled by Statista. And don’t forget Instagram, with photo sharing and messaging that attract more than 800 million people each month.
Blackberry said in a statement to Reuters: “As a cybersecurity and embedded software leader, BlackBerry’s view is that Facebook, Instagram, and WhatsApp could make great partners in our drive toward a securely connected future, and we continue to hold this door open to them.”
In response, Facebook noted that “Blackberry’s suit sadly reflects the current state of its messaging business,” said Paul Grewal, deputy general counsel for Facebook. “Having abandoned its efforts to innovate, Blackberry is now looking to tax the innovation of others. We intend to fight.”
Just in time for International Women’s Day 2018, Pharell has secured the approval to trademark his ‘Girl’ logo. The trademark was filed for in November but was accepted by the USPTO this week.
According to TMZ, the 44-year-old could implement “Girl By Pharrell Williams” and “Pharrell Williams Girl” as possible titles to women’s gear ranging from luggage, cosmetics, jewelry, lingerie, clothing and athletic gear moving forward. With multiple men’s lines under his belt, it looks as if Pharrell could be tending to the ladies in the near future. The trademark doesn’t just stick to apparel, as the legal motion will also reportedly cover recordings, online books, and other music-related digital media.
In a bizarre case this week, a non-league UK football team have been told they can no longer use their name or initials after their landlord applied to trademark them to prevent them from using it.
Dulwhich Hamlet have been targetted by the landowner of their grounds in Dulwhich, south of London, as he wants to build properties on the land instead. As he could not get them off the land any other way, the landlord has instead filed intellectual property to shut the team down from a different angle as they will no longer be able to use their own name without breaking the law.
Dulwich were presented with a cease and desist letter earlier this week on behalf of ‘Greendales IP LLC’ – a brand new subsidiary of property investment fund Meadow, who currently own Champion Hill. The letter was from solicitors Blake Morgan LLP and it informed that club that Dulwich Hamlet Football Club’, ‘The Hamlet’ and ‘DHFC’ had been registered as trademarks on 17 October 2017 and demanded that those trademarks “no longer be used on any printed literature and any online activity including websites and Twitter”.
A Meadow spokesman toldThe Independent that “Meadow’s issue is with the club’s owner and board attacking Meadow in public, not with the fans or the wider community.” Meadow bought Champion Hill for £5.7m four years ago but have been unable to develop it after losing a legal battle with Southwark Council last October.
Interestingly, former England and Manchester United captain Rio Ferdinand is watching the situation with interest after his affordable housing group Legacy Foundation bid £10m to save the club just before Christmas. Ferdinand, a close friend of Dulwich manager Gavin Rose since childhood, wants Legacy to build affordable housing in compliance with Southwark’s requirements, as well as providing a new ground and funding for the football club.
A Dutch makeup artist waited too long to bring a lawsuit against Kim Kardashian over her KKW beauty venture, according to Kardashian’s latest filing. After being slapped with a trademark infringement lawsuit in July, in which Kirsten Kjaer Weis alleged that Kardashian is infringing her “KW” trademark by way of the KKW brand, the budding beauty mogul’s legal team has filed its answer. In its formal response to Weis’ suit, Kimsaprincess Inc. – Kardashian’s corporate entity – denied Weis’ claims of infringement and put forth a couple of defenses, as well.
According to Weis’s lawsuit, which was filed in the U.S. District Court for the Northern District of Illinois, she has made use of her federally registered “KW” trademark since September 2010 on cosmetics, a full seven years before Kardashian launched her wildly successful KKW cosmetics line. Weis forther alleged that Kardashian’s use of the KKW logo is causing confusion amongst customers (the central issue for trademark infringement suits), and that such use is a “knowing, willing, and deliberate” choice made by Kardashian, whose KKW brand is a “direct competitor” of Weis’s line.
In addition to denying Weis’ trademark infringement and unfair competition assertions, Kardashian put forth two affirmative defenses: Laches, which asserts that the plaintiff waited an “unreasonable” amount of time before making an assertion or claim, or filing suit; and unclean hands, a defense that asserts that the plaintiff (Weis in this case) has acted in bad faith in connection with the subject of the complaint. Even if Kardashian is infringing Weis’ KKW mark, that does not matter because: a) Weis delayed significantly in filing to suit against Kardashian; and b) Weis is acting in bad faith in connection with her own use of the KW trademark.
The unclean hands defense is almost certainly related to the fact that before launching her KKW line, “Kardashian received approval for KKW, KKW BEAUTY, and KKW FRAGRANCE from the U.S. Patent and Trademark Office,” according to Kardashian’s counsel. “When Ms. Weis asked for a re-examination, the USPTO again approved the brand names for Kim’s company a second time. Kim has done everything by the book.”
The latest development comes after Kardashian scored an early win and got the case transferred to federal court in California. Despite Weis’ allegation that Kardashian has “nearly infinite resources to defend against [her] claims in any district,” the court held in November that they are to face off in California, “the same place where the allegedly infringing products are produced.”
The court further held that “while California might be inconvenient in some way for [Weis], she has already chosen a forum to which she would have to travel for this suit. Changing [the] venue to California would increase her cost of travel (at least marginally) but it would not create a cost for [Weis] where none had previously existed.”
A verdict has been delivered by the European Court of Justice today, stating that German sporting goods maker Adidas may oppose the registration of three parallel stripes on shoes as an EU trademark, affirming an earlier decisions by the European Union Intellectual Property Office (EUIPO).
Adidas had opposed Belgian company Shoe Branding Europe’s application for two EU trademarks for two parallel stripes on shoes as it was too similar to its own iconic three-stripe design. You can read the ECJ verdict here.
The case began when Belgian company Shoe Branding Europe filed an application with the European Union Intellectual Property Office for registration of two EU trademarks, one for footwear and the other for safety footwear. This was opposed by retail giant Adidas on the grounds that those trademarks relied, inter alia, on one of its own marks. In 2015 and 2016, the EUIPO allowed Adidas’ oppositions and refused registration of the two marks applied for by Shoe Branding Europe.
Given the degree of similarity between the marks at issue plus the reputation of adidas’ earlier mark, the ECJ has upheld the decision of the EUIPO and ruled that there is a likelihood that members of the public might confuse the marks. As a result, the Court has ruled the use of the marks applied for could take unfair advantage of the reputation of Adidas’ mark and that such use would be unjustified by due cause.
Jacqueline Pang, a trademark attorney at Mewburn Ellis, specialized in trademark prosecution, opposition and cancellation proceedings in the consumer industries in the UK and before the EUIPO, comments on the verdict:
“Today’s decisions by the General Court of the EU are unsurprising. The Boards of Appeal had simply adopted the General Court’s analysis in an earlier judgement between the same parties and taken it to its logical conclusion. That General Court decision had also subsequently been confirmed by the Court of Justice of the EU, the EU’s highest court. Ultimately it was the significant reputation of Adidas’s three stripes on footwear that won the day.”
Pang continues: “Today’s decision will make it much harder for third parties to get away with adopting a mark with only minor variations to that of Adidas’s three stripes, such as adding or removing a stripe or changing its direction. Shoe Branding Europe partly shot itself in the foot. Its promotion campaign in 2007 in Spain and Portugal used the slogan ‘two stripes are enough’, which was felt to be a ‘concrete element’ in finding that it had taken unfair advantage of Adidas’s mark and also in proving that Shoe Branding’s use of its mark was not always in good faith.”
“The decision also proves that although it may be initially difficult to obtain protection for non-traditional marks, they can be well worth the effort as potentially effective and powerful weapons against third parties.However, brands should watch this space carefully. Adidas may have won the battle but the war continues. In an unrelated case last year, Shoe Branding successfully cancelled one of Adidas’s EU trade mark registrations for 3 stripes despite copious evidence purportedly showing use of the mark and this is under appeal at the General Court. The saga continues.”
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