On 21 October 2015, the German Federal Court of Justice (BGH) ruled that the registered 3D trademark of Mars‘ „Bounty“ chocolate bar is protected against trademark use by competitors. The Court held that if the public perceived the shape of a product as a source indicator, then it was very likely to do the same with a highly similar shape of a competitor’s product, as long as the goods were identical.
Background of the case
On 11 October 2011, the German Patent and Trademark Office registered the following shape as a 3D trademark under No. 30 2010 033 190 for Mars Inc. for „non-medical sweets“:
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Registration had become possible because by presenting a survey from 2004, Mars had been able to prove that 53.2 % of the relevant German public recognized the form of the „Bounty“ chocolate bar as coming from a single source and that the mark had, thus, acquired distinctiveness through secondary meaning.
During a German trade fair in 2012, Mars became aware that a competitor was distributing chocolate bars under the trademark „Wish“,
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, that Mars thought to be identical, but at least very similar, to its newly registered German trademark.
In fact, the competitor’s product is a little flatter and the ridges on the top are somewhat coarser than on the „Bounty“ bar.
The German licensee of Mars Inc. sued the competitor for trademark infringement.
While the Court of First Instance (Landgericht) decided in favor of Mars Inc., the Court of Appeal (Oberlandesgericht) denied the claims. It stated that the shape of the „Wish“ chocolate bar did not differ significantly from the usual forms of chocolate bars and would, thus, not be perceived as an indicator of the source of origin of the goods. Consequently, it was not used as a trademark and Mars could not claim trademark infringement.
Upon further appeal, the decision was overturned by the German Federal Court of Justice (BGH).
Decision of the BGH
With regard to three-dimensional trademarks, the BGH had stated in earlier decisions that experience showed that the public would first and foremost attribute a functional and aesthetic purpose to the shape of a good. Thus, the shape would not be perceived as an indicator of the source of origin of the good in the same way as it would have been the case with a word or figurative mark.
However, the „Bounty“ chocolate bar had been registered because it had acquired distinctiveness through secondary meaning. That showed that the public perceived the shape of the „Bounty“ chocolate bar as an indication of the source of origin and, thus, as a trademark.
When the BGH now had to decide if the form of the „Wish“ chocolate bar was used as a trademark, it found no reason why the public would treat the shape of the „Wish“ chocolate bar differently from the „Bounty“ chocolate bar. The judges said that if the public perceived the „Bounty“ shape as a source indicator, then it was very likely to do the same with the shape of the „Wish“ chocolate bar – as long as the goods were identical and the signs highly similar to each other which was confirmed in the present case. Therefore, the decision of the Court of Appeal was corrected and trademark infringement confirmed.
Overall, the decision strengthens the position of the owners of German 3D trademarks that have been registered because of acquired distinctiveness and the value of those trademarks is enhanced.
Greek Police has had a productive month. With a massive destruction of seized counterfeits, they are showing the counterfeiters they are a force to be reckoned with. On March 17, 2016 Hellenic Police conducted a huge raid and seizure of counterfeit goods. The Police reported appropriation of around 19 000 items, 11.517 of which were blouses, 2.918 pairs of sports shoes, 1.845 purses and bags, 1.444 pieces of underwear, and the rest was divided between pants, shirts and caps.
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One person was held liable, arrested and charged with forgery, market regulation violation and trademark and unfair competition criminal offences. The raid was recorded and posted online, and the video is available here. Also, the a full report by the Police can be read here.
The raid is a part of Greece´s five-year effort to reduce distribution of counterfeit goods. The number of seized items has dropped significantly and during the last few years the statistical data has shown it to be more or less stable. What has not changed is the origin of the goods as well as the destination. Most goods come from China or Hong Kong and are heading for the Balkan countries or central Europe.
Starting 2015, the new EU Regulation concerning customs´ enforcement of intellectual property rights became applicable. The main changes concern enabling customs control to destroy items suspected to be fakes, without waiting for decision of the court, and simplifying the destruction procedure for goods of smaller value. The Regulation has resulted in a decrease of sales of counterfeit goods. The most common fakes are still cigarettes, clothing, accessories and bags.
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As of 23 March, the Office's name has changed to the European Union Intellectual Property Office (EUIPO).
The name of the unitary trade mark administered by the Office has changed to the European Union trade mark.
These changes took effect upon the entry into force of Regulation (EU) 2015/2424.
The EUIPO's website, e-business applications, fee calculators and online tools have all been updated to reflect the change of name, the new trade mark fee structure and other technical changes brought about by the Regulation.
Its website address has changed to www.euipo.europa.eu.
For more information on the changes in EU trademark law, please see our detailed, previous blog entry under: https://lexdellmeier.wordpress.com/2016/03/01/summary-of-changes-in-eu-trademark-law-as-from-23-march-2016/
With the CJEU´s ruling on 17 February 2016, a lengthy saga concerning Adidas might have come to an end. After contesting everything from two to five stripes, creating and using an abundance of case law, logging a fair share of hours in the courtroom, it might have all- at least in the EU- come down to one thing: acquired distinctiveness.
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Background of the case
In 2009, Shoe Branding Europe BVBA (‘Shoe Branding’) applied for a Community Trademark with OHIM. The filed trademark was a position mark, consisting of two stripes, sloping from the instep to the sole. Adidas opposed the application, protecting their famous figurative three-stripe trademark (CTM nr. 003517646). When the Opposition Division rejected the opposition, Adidas tried to appeal, also with a negative outcome.
The Board of Appeals decided to disregard the reputation of the marks due to the simplicity of the trademark. The Board was of the opinion that the trademark´s banality combined with a different number of stripes and positioning means it is unlikely that the public would be confused.
Adidas sought justice in front of the General Court (EGC), which in deed annulled the previous decision, stating the abovementioned differences are minimal and will be overlooked by the average consumer. This decision led to Shoe Branding´s revolt. The case was finally brought to the European Court of Justice (CJEU).
Decision of the CJEU
Shoe Branding started the appeal criticizing the EGC´s definition of their average consumer. According to Shoe Branding, their products are specialized sporting goods, and the consumers should be expected make a distinction between different brands of sporting goods. Therefore, a higher threshold of necessary awareness is required. The Court disagreed, noting that sporting goods are everyday products and the average consumer is only reasonably informed and observant.
Next, the EGC ruled that likelihood of the confusion must be assessed regarding the entire product, but, with a focus on the distinctive parts of the product, which the CJEU confirmed. The CJEU added that the small differences, like the number of stripes, do not influence the overall impression of the product.
Finally, the CJEU challenged Board of Appeal´s view, stating that the reputation of the mark is important and can not be disregarded.
This may be the final curtain for a long series of “stripe cases”. Only three months prior, the “five-stripe shoe” case had reached its end. K-Swiss Inc. lost the battle against OHIM, who rejected registration of a position trademark they applied for. The trademark in question is a sport shoe with five stripes on the outer side of each shoe. The case was brought in front of the EGC. The decision was reached that there is no distinctiveness in putting five stripes on a shoe and it is not an indication of a commercial origin. The interesting part of the ruling is where the Court says: ” …to accept that every geometric shape, even the most simple, has distinctive character because it features on the side of a sports shoe would make it possible for some manufacturers to appropriate simple, and above all decorative, shapes, which must remain accessible to everyone, with the exception of those situations in which the distinctive character of the sign has been acquired by use.”
This statement, combined with the “Shoe Branding” decision, might be the final recognition of Adidas´rights, and a proof that three really is a charm.
On 26 February 2016, the European General Court (EGC) upheld OHIM´s decision dated 13 May 2014 and ruled in favor of Renfro Corp., deciding that the name “HOT SOX” for hosiery is not descriptive and does not lack distinctiveness.
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Background of the Case and Subject Matter
In 2008, Renfro Corp. registered Community word mark “HOT SOX”(CTM No. 0962191), the brand name of their socks line, but was challenged by provima Warenhandels GmbH, a seller of special grain products which become wearable thermophores upon microwaving. The applicant said the name “HOT SOX” for socks lacks distinctive character and is overly descriptive, asking for cancellation of the registration. Both the Cancellation Division and the Board of Appeal of OHIM rejected the claims, explaining that terms “socks” and “hot” (in any possible meaning) are not terms that come to mind as complementary, and therefore, are neither descriptive, nor insufficiently distinctive.
The applicant, still standing their grounds, contested OHIM´s decision again and finally brought the case before the EGC.
Decision of the EGC
The EGC agreed with OHIM´s Board of Appeals´ decision: “hot” is not characteristic or usually affiliated with socks, nor does it imply the purpose of socks. The function of socks is to keep feet warm, so there might had been a problem if the term “warming” was used. “Hot” means “overly warm” and it might be seen as actually having a negative connotation.
When it came to the other meaning of “hot”, indicating something alluring, sexy or seductive, it is highly unlikely the average consumer would consider those terms a natural pairing. It could be considered “hot” as “fashionable” or “currently popular”, but, the Court deemed it was not the intended meaning in the word mark “HOT SOX”.
The applicant also tried to prove that the word “sox” is an obvious misspelling of the word “socks”, which makes it descriptive. The Court did take this argument into consideration, but noted that the term “sox” never stands alone. It is always accompanied by the adjective hot. In this case, the trademark should be regarded as a whole sign, and not as individual words that are evaluated separately .
“Sox” is also the distinctive element of the term, meant to catch the consumer´s attention. Combined with the word “hot”, it is sufficient to make the wordmark unusual and distinguishable.
Every angle taken into consideration, the EGC decided the name “HOT SOX” is distinctive and nondescriptive, and therefore eligible for trademark registration.
ECJ´s full decision is available here.
The Federal Administrative Court in Switzerland recently ruled that Apple’s home button cannot be registered as a trademark as it lacks distinctive character. The Court did not find it evident that the mark had acquired distinctiveness. (Judgement B-2418_2014 of 17 February 2016).
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Background of the case
Apple Inc. applied to the World Intellectual Property Organisation (WIPO) to register an international trademark consisting of a representation of the home button used on iPhones as shown above. The international registration (No. 1051626) has been accepted by most of the trademark offices it was designated for, including OHIM (registration no. 1051626).
OHIM originally objected to the registration on the grounds that the mark lacked distinctive character. However, they found the evidence raised by Apple Inc. sufficiently convincing to support a finding of acquired distinctiveness.
In Switzerland, the Swiss Intellectual Property Office refused trademark registration of the home button as they considered it to lack distinctiveness.
The decision of the Federal Administrative Court
The Federal Administrative Court confirmed the Swiss Intellectual Property Office`s refusal. They agreed that the graphic representation of the iPhone’s home button lacked inherent distinctive character and was thus not able to function as an indication of source of origin.
The Court reasoned that in general, shapes that consumers expect to be based on the function or aesthetics of the product will not be perceived as indication of origin. Apple’s home button is an integral part of the iPhone and the Court found that the consumers will perceive the shape of the button as being purely functional and decorative.
Apple tried to overcome the refusal by filing evidence showing acquired distinctiveness. Apple has a higher market share in Switzerland than across all member states of the European Union. Still, they did not succeed to prove that the home button could lead the consumer to perceive the indication of origin.
Apple argued that the placement of the home button centrally below the screen on the most popular electronic device in Switzerland could prove that it was used as a trademark. However, the evidence provided mostly concerned the marks “Apple” or “iPhone”, and not the home button as a mark. The Court ruled that the fact that the sign was used a part of the product did not demonstrate use of the home button as a trademark.
Furthermore, the Court agreed that trademarks usually can be found centrally below the screen on these types of products, but noted that this concerned traditional word or figurative marks and was thus not convinced of Apple’s arguing.
It is not certain whether Apple will appeal this decision yet.
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1. Change of Name of the Office for Harmonization in the Internal Market
On 23 March 2016, the central registry for trademarks that provides protection throughout the territory of the European Union – that is in all 28 Member States – will change its name from “Office for Harmonization in the Internal Market” (OHIM) to “European Union Intellectual Property Office” (EUIPO). In parallel, the “Community Trademark” (CTM) and “Community Trademark Application” (CTMA) will be renamed to “European Union Trademark” (EUTM) and “European Union Trademark Application” (EUTMA).
2. Change in Official Fees
Since through its official fees the OHIM had earned substantial surpluses in recent years, the fee structure is now being reorganized.
While the basic fee for a trademark application so far covered up to three classes of goods and services, the system will be changed to a per class fee.
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The fees for the renewal of Community Trademarks due after 23 March 2016 are lowered significantly and will then meet the application fees in amount and structure. The due date for the renewal shall be the date of expiry of the Community Trademark regardless of the date on which payment is actually received by the Office. If the due date is on 23 March 2016 or later, the new fees will apply. In case the renewal fees are paid before 23 March 2016 following the old fee schedule, the Office will refund the difference. Should the protection of a trademark expire before 23 March 2016 and the renewal fee is not paid until after 23 March 2016, the old (higher) fees will nevertheless apply.
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The official opposition fee will amount to EUR 320 instead of EUR 350. For applications for invalidity or revocation (because of an alleged non-use) only EUR 630 instead of EUR 700 are to be paid. The appeal fee is reduced from EUR 800 to EUR 720 respectively.
3. Use of Class Headings of the Nice Classification in Lists of Goods and Services
In the following, the term „Community Trademarks“ shall also comprise International Registrations designating the European Union.
Trademark registrations are always protected only for the goods and services that have been designated in the so-called list of goods and services at the time of application. At a later stage, the scope of protection may only be reduced by restricting the list, but not extended. Therefore, it was and is common practice to draw up the list as broad in scope as possible at the time of filing. This is often done by resorting to the International Classification of Goods and Services, the so-called Nice Classification. This classification, in its currently 10th edition, includes 45 classes, of which the first 34 refer to goods and the other 11 to services. The classification contains class headings which consist of general indications that show the basic direction of the goods / services generally falling into the respective class. In fact, regardless of those general indications that are explicitly listed, each class comprises ALL the goods / services that fall into the same field of goods / services as described by the general indications contained in the class headings. Even though the headings of each class are complemented by an alphabetical list with additional goods / services, this list is also not exhaustive. Instead, there exists no list of ALL conceivable goods / services of a class. Theoretically, however, each conceivable term describing a good or a service shall be assignable to one of the 45 classes and their thematic order.
For many years, it has therefore – although not without controversy – been assumed that Community Trademarks that if their respective list of goods and services covered all the class headings of the Nice Classification in a class were protected for all goods / services of that specific class including goods / services that were not covered by the literal meaning of the explicitly listed terms. This understanding changed in 2012 when the Court of Justice of the European Union, in its decision “IP Translator”, found that:
- The goods and services for which protection of a trademark is sought are to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trademark.
- The general indications of the class headings of the Nice Classification may still be used in trademark applications to identify the goods and services for which the protection of a trademark is sought, provided that such identification is sufficiently clear and precise.
- An applicant for a trademark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trademark is sought must specify whether the application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.
a. The Scope of Protection of a Class when using the Class Headings
Against the background of this decision and starting from 23 March 2016, the EUIPO (formerly OHIM) will interpret general terms, including the general indications of the class headings of the Nice Classification, by their literal meaning only. In other words, general terms will only comprise those goods and services which are clearly covered by its literal meaning. The German Patent and Trademark Office has been following this approach for some time already.
Proprietors of Community Trademarks that have an application date before 22 June 2012 and are registered for the whole class heading of a Nice class, now have the opportunity to declare in writing until 24 September 2016 at the latest that it had been their intention on the date of filing to seek protection for goods and services beyond those covered by the literal meaning of the respective class heading. Those additional goods and services have to be listed in a clear and precise manner and have to be contained in the alphabetical list of the edition of the Nice Classification in force at the date of filing.
Meanwhile, the OHIM has published a list of terms of the alphabetical list of the Nice Classification that it deems not comprised by the literal meaning of the class headings. The list is sorted by class and edition of the Nice Classification. It is not exhaustive, but still provides a good indication for a possible amendment of the list of goods and services of a registered Community Trademark. Upon request, we will be pleased to provide you with the OHIM list as well as the respective alphabetical list(s) of the Nice Classification.
If no such supplement declaration is filed until 24 September 2016, the respective Community Trademarks will only be protected for those goods or services, which are clearly covered by the literal meaning of the terms in the heading of the relevant class.
As far as Community Trademark Applications were filed after 22 June 2012, it is assumed that the applicants already had the chance to consider the decision "IP Translator" of the Court of Justice of the European Union and to amend their applications accordingly. For these pending and / or registered trademarks, there is no possibility to complement the terms of the list of goods and services.
b. The Scope of Protection of a Trademark for which the List of Goods and Services is amended until 24 September 2016
If the list of goods and services of a Community Trademark is amended to contain additional terms that were originally not covered by the literal meaning of the list, the trademark proprietor may nevertheless not proceed against the use of a mark by a third party in relation to goods or services where and to the extent that the use of the trademark for those goods or services commenced before the register was amended and did not infringe the proprietor's rights based on the literal meaning of the goods and services as registered at that time.
c. Trademark Applications using general Indications
In addition, the trademark offices of the European Union identified 5 general indications in the class headings of the Nice Classification that they deem too vague to meet the requirement of clarity and precision of goods and services as confirmed by the Court of Justice of the European Union. These terms are the following:
- Class 7: Machines
- Class 37: Repair
- Class 37: Installation services
- Class 40: Treatment of materials
- Class 45: Personal and social services rendered by others to meet the needs of individuals
When filing a new trademark application, the use of these general indications is no longer accepted. Instead, the applicant must file a clear and precise description of the goods or services for which protection is sought. Unfortunately, there is no exhaustive list of the individual terms covered by the above mentioned general indications. However, the applicant may rely on the alphabetical list of the Nice Classification. The individual terms contained therein will be generally suitable to describe the field of goods and services that a trademark is intended to cover. For any future trademark applications, we will, of course, take these requirements into account and propose lists of goods and services that have been drawn up accordingly.
However, the Office will not ex officio change these non-acceptable 5 general indications as far as they are contained in the list of goods and services of already registered Community Trademarks. Instead, it is at the discretion of the trademark proprietor to amend and clarify the wording of the list of goods and services by way of a partial limitation so that in case of conflict the list will be sufficiently clear to proceed against a potential infringer. If you are not sure whether such a restriction is advisable in your case, you are welcome to contact us at any time for further advice.
4. Disclaimer
Furthermore, no disclaimers will be permitted from 23 March 2016. A disclaimer is a statement from a trademark applicant that – in view of an element of his trademark that is deemed not distinctive and that could give rise to doubts as to the scope of protection of the trademark – he will not claim any exclusive right to that element.
This applies to the kind of disclaimers that have been proposed by examiners ex officio in the course of registration proceedings or were voluntarily included by applicants. However, as far as such disclaimers are already contained in the description of registered trademarks, those are not affected. There is no need for action for trademark proprietors.
5. Black and White Marks
Moreover, the question frequently arose what effect it had if a trademark that was registered in black and white or greyscale was only used in color (or vice versa). The majority of the trademark offices of the European Union in the meantime agreed as part of their convergence program to the following and issued a Common Communication:
To maintain the rights that are granted by a trademark registration, the mark must be put to genuine use. That, however, is only the case if the mark is used in its registered form in the course of trade. An exception is made only if a trademark is used in a form that differs in elements which do not alter the distinctive character of the mark as registered; such use constitutes use of the mark as registered.
With regard to differences in color, the question is whether the use of a color version of a trademark registered in black and white or greyscale (or vice-versa) is acceptable for the purpose of establishing genuine use of the registered mark. The offices agreed to answer that question with „yes“ – as long as the mere change in color does not alter the distinctive character of the (registered) trademark. This is presumed if the following requirements are met:
- The word / figurative elements in the mark as registered and as used coincide and are the main distinctive elements.
- The contrast of shades is respected.
- Color or combination of colors does not possess distinctive character in itself and
- Color is not one of the main contributors to the overall distinctiveness of the mark.
Although these specifications continue to leave room for interpretation and argumentation, they may still be used as a reference by the trademark proprietor when he decides on the design of his trademark that he would like to use in the market. We encourage you to review the genuine use of your trademarks in particular with a view to the use in color. A timely change of use might prevent revocation requests by third parties alleging non-use of your trademark and reduce the effort needed to provide proof of genuine use of your trademark in case of dispute. Should you have any doubts whether the actual use of your trademark qualifies as genuine use of the registered mark, please do not hesitate to contact us at any time for a discussion and / or further advice.
Status: 1 March 2016 - © LexDellmeier
The European General Court (EGC) decided that the sole shape of the crest of the FC Barcelona has no distinctive character neither itself or through use (Judgment dated 10 December 2015; Case No.: T-615/14).
Background of the Case and Subject Matter
On 24 April 2013, Fútbol Club Barcelona (FC Barcelona) filed an application for registration of a Community Trademark (CTM) at the Office for Harmonization in the Internal Market (OHIM). The figurative mark in respect of which registration was sought is the shape of the crest of the FC Barcelona (see below) for – among others – stationery, clothing items and sports activities.
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In May 2014, OHIM rejected the application for registration because the sign is not distinctive. The examiner of OHIM is convinced that the trademark applied for did not contain any specific element which is suitable to be an indication of origin of the goods and services covered by the application for the consumer. Furthermore, the sign does not really differ from other basic shapes which are used in various sectors only for ornamental purposes.
The football club also filed evidence at OHIM which should prove that the shape had acquired distinctive character through use in the European Union (EU). The filed evidence are copies of documents consisting of web pages, documents that concerning the applicant’s participation in social networks, extracts from newspapers and the online encyclopedia “Wikipedia” which contained information about the Football Club itself and football in general, especially its economic importance. OHIM refused this evidence in general because they are not sufficient to prove that the shape had acquired distinctive character.
FC Barcelona brought an action against OHIM’s decision before the EGC.
Decision of the EGC
The EGC dismissed the appeal.
First, the EGC follows OHIM’s arguments and comes to the result that the shape has no distinctive character. In this connection the court observes that crests are commonly used in business for purely decorative purposes without fulfilling the function of a trademark. Consequently, the sign cannot be registered as a trademark, except if it has acquired distinctive character through its use.
Secondly, the EGC is of the opinion that the football club has not succeeded in demonstrating that the sign has acquired distinctive character through its use. The court stated that the filed evidence is too general and therefore did not allow drawing conclusions about the perception of the shape in the EU. Therefore, it cannot be proven that a significant proportion of consumers in the EU connect the mark applied for with the FC Barcelona at the date of filing.
Therefore, the court decided to dismiss the action brought by the football club FC Barcelona.