On 18 January 2018, the General Court of the European Union (GC) upheld the decision of the Board of Appeal in the case T-804/16. LG´s application for the EU word mark “Dual Edge” was found to lack distinctive character and was therefore refused to be registered by the EUIPO.

Samsung Galaxy S8, Source: Pixabay

On 12 August 2015, LG Electronics Inc., a South Korean company producing consumer electronics, filed an application for registration of the EU word trademark for the sign “Dual Edge” for all goods in class 9 of the Nice Agreement. The application No 014463178 was rejected by the EUIPO for all class 9 goods except for “portable mobile phone chargers, headphones, earphones, wireless headphones”. For all other goods, the word trademark was found descriptive and lacking any distinctive character on the basis of Article 7 (1) (b) and (c) and Article 7 (2) of Regulation No 207/2009 (now Regulation No 2017/1001).

On 6 March 2016, LG appealed against this decision to the Second Board of Appeal at the EUIPO (BoA). LG argued that the trademark consists of words that are newly coined and invented. The sign as a whole cannot be found in any dictionary and therefore it possesses a distinctive character. Nevertheless, the BoA did not agree with the above mentioned arguments and dismissed the appeal. The main argument of the BoA was based upon the evidence of use in the market. The relevant public links the sought for trademark and one of the most significant characteristics of such goods, namely that the screen is inserted along the edges of the mobile phone device. Furthermore, the term was seen as descriptive.

LG then filed an appeal to the next instance, the GC. Even though the applicant claimed that the trademark does not refer to a screen and therefore does not describe the characteristic of the good, the Court upheld the decision of the BoA. The Court agreed with the previous instances and found the trademark to be descriptive and therefore not able to be registered.

As the matter of interest, also another South Korean company, Samsung, has tried to register the same trademark for goods in class 9. But after a while, maybe realising the problematic point, Samsung withdrew its application and instead filed an application for the word mark “SAMSUNG DUAL EDGE”. On 6 July 2015, the EUIPO successfully registered it under the No. 013808308.

On 18 January 2018, the Intellectual Property Office of the European Union (EUIPO) published its opinion paper answering the most burning questions concerning the impact of the UK´s withdrawal from the EU regarding EU Trademarks and EU Designs.

Source: Pixabay

The EUIPO raises in 29 questions and answers the consequences on intellectual property law in case of a “hard Brexit”. A hard Brexit would lead to the situation that after the withdrawal date no EU rules about trademarks and designs would be applicable in the United Kingdom. Although there is a possibility that some bilateral or unilateral agreements might be closed in the future, up to date the final consequences of the Brexit are unclear as the negotiations are still in process. Therefore, the position paper is only based on the current status (18 January 2018) and does not consider any future arrangements. 

In the statement, the EUIPO answered questions concerning following ten main fields:

• ownership of the EU Trademarks (EUTM)
• scope of protection of the EUTM
• maintenance of rights conferred to the EUTM
• capacity to act and representation before the EUIPO
• English language in the proceedings before the EUIPO
• priority and seniority claims
• absolute grounds of refusal and invalidity
• relative grounds of refusal and invalidity
• revocation for non-use
• EU Designs

For a better insight on this topic, read the whole paper here or our previous articles about the position papers on Brexit published by European Commission and MARQUES.

On 20 December 2017, the Court of Justice of the European Union (CJEU) gave its opinion on the “Champagner Sorbet” case. The Court stated the conditions of using the Protected Designation of Origin (PDO) for “Champagne” on a product which only contained 12% of Champagne.

Source: Pixabay

Background of the case:

In 2012, Aldi Süd Dienstleistungs-GmbH & Co. OHG, a German discounter supermarket chain, had started to sell a frozen product under the name “Champagner Sorbet” which contained 12% of Champagne. An association of champagne producers, Comité Inteprofessionnel du Vin de Champagne (CIPV), brought proceedings before the Regional Court in Munich I. against this use. The plaintiff requested an injunction prohibiting Aldi from further usage of the PDO “Champagne” for the sorbet products. CIPV claimed the infringement of the PDO for exploitation of the reputation, misuse, false and misleading indication concerning such PDO on the basis of Article 118m of Regulation No 1234/2007 and Article 103 of Regulation No 1308/2013.

The plaintiff, CIPV, succeeded in the first instance. However, the second instance, the Higher Regional Court in Munich came to the opposite conclusion and dismissed the application of CIPV. The appeal court stated that the conditions for declaring infringement were not fulfilled as Aldi has a “legitimate interest in using the name “Champagner Sorbet” to refer to a food product known to the public under that name and in which champagne was an essential ingredient”. On that account there was no misleading indication.

CIPV then lodged an appeal on a point of law before the Federal Court of Justice (BGH). The BGH stayed the proceedings and referred the case to the CJEU for a preliminary ruling. The CJEU had to clarify the conditions under which it would be in compliance with the law for the producer to use the PDO term Champagne for products that are not Champagne but only contain some percentage of it.

The CJEU held that an unlawful exploitation is to be understood as usage of the protected PDO in order to take an undue advantage of its reputation. The Court then stated that the product can only use the PDO Champagne in its name when two conditions are fulfilled. Firstly, the product has to really contain Champagne and secondly, the taste of the product has to be attributable to Champagne as one of its essential features. CJEU then stressed that although the quantity of Champagne in the sorbet might be significant; in itself it is not determinative enough to state an undue advantage. Therefore, the consideration has to always depend on the evidence at hand.

Now, the case is back at the BGH which has to decide whether Aldi fulfilled all above mentioned requirements stated by CJEU for a lawful usage of the name “Champagner Sorbet”.

For more information read the whole CJEU decision here. 

On 20 December 2017, the Court of Appeal in Sweden sentenced some of the scammers from the Uppsala trademark scam case to serve a prison sentence. They were found guilty of fraud for sending misleading invoices to EU trademark owners using the name “OMIH” on the letterhead.

Source: Pixabay

The Uppsala trademark case involves more than 20 persons. They were sending fraudulent invoices to EU trademark holders using the letterhead “OMIH”.  Many of the recipients made the payments, convinced that the invoices were sent by the real EU Trademark Office OHIM (now EUIPO).

In the criminal trial, the first instance found some of the involved fraudsters guilty for attempted fraud and gave them prison sentences. Against this decision, the Swedish prosecutor appealed to the Court of Appeal. On 20 December 2017, the Court changed the criminal classification for the two ringleaders from attempted fraud to complete gross fraud.  

The Court also approved the claims for damages for those aggrieved ones, who had made the payments on the basis of the fraudulent invoices.

To gain a better insight on this topic, read the summary of the judgment written by the EUIPO here.

On 11 January 2018, Melchior Wathelet, the Advocate General of the Court of Justice of the European Union (CJEU), published his opinion about the dispute concerning the Neuschwanstein EU trademark. In his opinion, he recommended the CJEU to uphold the previous decision of the General Court. Wathelet states that the trademark is not descriptive for the goods and services covered and therefore there is no legal barrier for its registration.

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Source: Pixabay

Background of the case:

Neuschwanstein is a castle which was built from 1869 to 1886 during the reign of the King Ludwig II of Bavaria. Because of its appearance, the castle is often compared to a fairy tale castle which was for example also an inspiration for the castle in the original Disney version of the Sleeping and the Beauty. The castle is a major tourist attraction and therefore commercially very successful. The owner, the Bavarian State, decided to regulate the souvenir industry and filed an application for registration of a German national word trademark and later also a registration of an EU word trademark. The German national trademark was registered on 4 October 2005 under the number 30544198, the EU trademark then on 12 December 2011 under the number 10144392.

Against both of these applications for registration, the German Federal Association (Bundesverband Souvenir Geschenke Ehrenpreise e.V. - BSGE) filed invalidity applications. BSGE, a trademark network of souvenir producers, argued that the registration of the above mentioned trademarks would lead to censorship of the Neuschwanstein souvenir trade. Nevertheless, BSGE was only successful in cancelling the German national trademark. On the European level, the EU trademark so far was seen as complying with all requirements set forth in the Regulation 207/2009. Now in the last instance, the CJEU, is about to state its final view and render a decision on this case.  

Background of the German national trademark case:

Before taking a closer look on the current European case, here is a brief summary of the fate of the German national trademark.

The sign “Neuschwanstein” was registered as a German national trademark on 4 October 2005 under the number 30544198. On 14 January 2008, BSGE filed an application of invalidity according to Article 8 (2) No. 1 of German Trademark Act. The German Patent and Trademark Office (DPMA) agreed with the argumentation of the applicant and ordered cancellation of the trademark for lack of distinctive character. The trademark owner, the State of Bavaria, tried to reverse the verdict and filed a notice of appeal, which remained unsuccessful. Nevertheless, the dispute continued to the next instance – to German Federal Patent Court (BPatG). On 4 February 2011 the BPatG decided in compliance with the previous decisions about the invalidity of the concerned trademark. The trademark owner then filed an appeal to the final possible instance – to German Federal Court of Justice (BGH). The Court stated in his decision from 8 March 2012 that according to Article 8 (2) No. 1 of German Trademark Act souvenir goods do not possess distinctive character. The Court then explained that the sign “Neuschwanstein” was establishing a link to a sightseeing destination and so to be understood as a sign indicating geographical origin for the souvenir goods. As a result of above mentioned arguments, the German national trademark was declared to be invalid. For a better insight into this decision, read here.

Background of the European trademark case:

On 22 July 2011 the Bavarian State filed an application for registration of the sign “Neuschwanstein” as an EU word trademark, which was later, on 12 December 2011, registered under the number 10144392. On 10 February 2012 the BSGE filed an application of invalidity according to Article 7 (1) b) and c) of Regulation 207/2009 (EUTMR). On 21 October 2013 the application was rejected by the Cancellation Division of EUIPO. The Cancellation Division stated that the “EU trademark did not consist of indication which may serve to designate the geographical origin” and therefore the trademark did not breach the Article 7 (1) c) of EUTMR. It also did not breach requirements of Article 7 (1) b) EUTMR because the trademark is to be considered distinctive in respect of the goods and services in question.

The dispute continued to the next instance when the BSGE filed notice of appeal with EUIPO. Nevertheless, on 22 January 2015 the Board of Appeal (BoA) dismissed this appeal and confirmed the previous decision of the Cancellation Division. The BoA found the trademark not indicative of geographical origin and not devoid of the distinctive character, too. In addition, the BoA stated that the Bavarian State government was not in bad faith in view of the purpose of Article 52 (1) b) EUTMR.

The BSGE then brought an action for annulment of the BoA decision before the General Court. But, on 5 July 2016, the applicant´s pleas were again dismissed when the General Court did not find any arguments for declaring the trademark as invalid. In the opinion of the Court, the sign “Neuschwanstein” fulfilled all requirements under the EUTMR. The sign was seen as referring to the castle as a museum location and as the castle is not a place where the goods or services are manufacutred, it also cannot be seen as a reference to the geographical origin of the products. In addition, the trademark is a fantasy name and therefore it lacks a descriptive connection with the offered goods and services.      

Now, the CJEU, the final instance, will decide about the faith of this EU trademark. On 11 January 2018, the Advocate General Wathelet already published his opinion. As the previous instances, Wathelet pointed out that the trademark was not indicative of the geographical origin of the registered goods and services as those were merely marketed at the castle and furthermore could equally be marketed anywhere else. The Advocate General then also mentioned his definition of souvenir goods when describing them as “items that recall a person, place or event, they are items evoking emotions. And, human emotions cannot be covered by an EU trade mark”. Therefore they have to be understood as everyday goods. As a result, the Advocate General recommended the CJEU to uphold the General Court´s decision. For more information read here.

At the moment it is questionable, whether the Court will decide in compliance with the above outlined AG recommendation or will side with the point of view of the German Federal Court of Justice.

The new year brought some changes at WIPO and the EUIPO which are taking effect on 1 January 2018. Here is a brief summary of the most important ones for all trademark practitioners.

Source: Pixabay

Madrid Monitor

WIPO has announced that from the beginning of the year 2018 there is going to be only one tool for monitoring the status of international trademark applications and registrations under the Madrid System – namely Madrid Monitor. The other tools, such as ROMARIN, Madrid e-Alert or Madrid Realtime Status are no longer online. Madrid Monitor now has new features and will integrate all the functions of the before mentioned discontinued tools. For more details read here.

Nice Classification

WIPO has also published the 11^th edition of the Nice Classification that came into force on 1 January 2018. The 11^th edition of the Nice Classification can be found here.

Faxes at EUIPO

As of 1 January 2018 EUIPO will no longer accept faxes for filling EUTM applications. For more details read here.

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On 30 November 2017, the European General Court (EGC) upheld the previous decision of the Board of Appeal of the EUIPO in the joined cases T-101/15 and T-102/15, Red Bull v EUIPO. The EGC confirmed that the registered trademark consisting of two colors allowed several different combinations as the application did not display the requirements of precision and uniformity set out by Article 4 of Regulation No 207/2009. Now, the case continues to the next instance and so the highest court in the EU, the Court of Justice of the European Union (CJEU), will have the last word, whether the color combination will further benefit from legal protection.

    EU trademark No. 002534774                                  EU trademark No. 009417668

Background of the case

The Austrian company Red Bull GmbH, founded in 1987, is the market leader for energy drinks. In 2002 and 2010 the company filed for two color combinations as EU trademarks for energy drinks in class 32, No. 002534774 and No. 009417668. The first trademark was described as a combination of the colors blue (RAL 5002) and silver (RAL 9006) with ratio of the colors of approximately 50%-50%. The later one was then characterized as combination of the colors blue (Pantone 2747C) and silver (Pantone 877C). These two colors should be applied in equal proportion and juxtaposed to each other. However, in 2011 and 2013 a Polish company, Optimum Mark, filed a cancellation request against these two trademarks.

The cancellation division, and later also the Board of Appeal (BoA), decided in both cases that the trademarks do not fulfil the requirements of Article 4 of Regulation No 207/2009. The graphic representation of the depicted color combination was found lacking the qualities of precision and uniformity. In their opinion, it just constituted the mere side-by-side contrast of two colors, designated in an abstract format and without any contours.

On 30 November 2017, the EGC upheld this point of view in a joined decision. It argued that the trademarks “allowed several different combinations of the two colors and the accompanying description did not provide additional precision”. Now, the case continues further to the next instance as Red Bull filed an appeal to the CJEU.

MARQUES, the European brand owners´ association, supported Red Bull and intervened before the Court in its favour. Now, MARQUES publicly expressed its disappointment with the outcome. According to their assessment, the current decision unfairly discriminates owners of color combination trademarks by requiring an additional explicit description. In the result, the applicants will be obliged to explain how the colors will be placed on products or applied in marketing materials. This requirement is to be fulfilled even though such trademark has already once been proven to be distinctive due to extensive use. In consequence of above mentioned, the decision of the EGC might wrongly set the bar too high and make the protection of color combination trademarks effectively impossible.   

On 20 November 2017 the European brand owner association (MARQUES) published a Brexit position paper where it sets out its position about the upcoming Brexit and the concerns towards the so far not drawn consequences for EU harmonised IP rights. 

Source: Pixabay

Even though the Brexit day is in less than 18 months away, the governments of the UK, EU member states and the EU Commission still have not commenced any negotiations concerning this topic. Therefore, many businesses are in a constant insecurity about the future of their trademark, design and geographical indicator rights.

In order to avoid any risk of potential material threat to the interests of European IP right proprietors, the association states that the above mentioned parties should primarily agree on following three points. Firstly, no loss or diminution of protection of existing IP rights has to be guaranteed in the EU as well as in the UK. Then there should be no additional costs in order to maintain now existing rights. Finally, to prevent administrative burden on businesses when retaining their rights. The association furthermore sets a 12-point plan which includes proposals about how the EU harmonised rights should be regulated during and after Brexit. This plan covers, for instance, topics as to rights in force at the time of Brexit, creation of new rights in the UK after Brexit or how to deal with pending applications and litigation that are based on EU rights.

For a better insight on this topic, check the whole MARQUES position paper here.

As of December 2017, ROMARIN, Mardid e-Alert and Madrid Realtime Status will take the back seat as Madrid Monitor becomes WIPO´s only tool for tracking international trademark registrations.

Source: http://www.wipo.int/madrid/en/

As elaborated in our previous post of 6 June 2017, Madrid Monitor represents the next generation of ROMARIN, offering a simple and more streamlined search engine regarding international trademarks. It was built based on the user feedback and thus aims to provide exhaustive and user friendly search functions. Madrid Monitor covers all the trademarks registered through the Madrid System, and as a result, it provides a comprehensive overview and support of trademark portfolios with up-to-date information. Through Madrid Monitor, one can easily search trademarks with both pictures and key words. Among the search functions of the tool it is also possible to save and share search reports.

In order to offer an easy start with the tool as well as to ensure the effective use of all the features of Madrid Monitor, WIPO has created a free eight-part tutorial series for your information.

To receive a better insight of the topic and to learn the secrets of the tool, take a look at the WIPO´s free tutorials here.