#IPLaw, ​#DELaw – Entry into force of the Trademark Modernization Act.

After EUIPO in particular, Germany has just put into force a new law on the unusual categories of brands. The Markenrechtsmodernisierungsgesetz came into force on January 14, 2019. For the record, this follows a corresponding European directive in force since 2016. Movement marks, multimedia marks and holographic marks are now officially filable before the German Office.

Another category is the certification mark, which makes it possible to confer quality labels with a better defined legal framework.

This new law improves the rights of applicants and makes it possible to approximate the provisions of the EUIPO marks.

SOTERYAH IP

#TMLaw – The setbacks of the application for registration of the figurative mark « MESSI » at the EUIPO

The multi-balloon d’or Lionel Messi has filed several European trademarks with varying degrees of success.

One of them encountered an obstacle that proved to be major, whereas, from our point of view, ways to overcome these obstacles could have been used.
The trademark application in question is the European application 010181154 filed on 08.08.2011, not yet registered. It is a sign with a stylized « M » with a MESSI notation in a specific caligraphy where the E is in another color and another calygraphy.

This filing was made without knowing of an earlier word mark, « MASSI », which its holder Mr. Jaime Masferrer Coma raised in the context of an opposition to the registration of the « MESSI » mark, in November 2011 in essence on the basis of an argument of risk of confusion between the two signs for sporting goods.

In 2013, the European Intellectual Property Office (EUIPO) decided to reject the registration of the mark  « MESSI » mark.

Lionel MESSI then filed an appeal.

In April 2014, EUIPO rejected MESSI’s appeal, arguing in essence that there would be visual and auditory similarity between the two signs.

Lionel MESSI filed an appeal before the European Union Court (EUT) to seek the annulment of the EUIPO decision.

On April 26, the EUT decided in favor of Lionel MESSI. The EUT considered in essence that Lionel MESSI’s reputation is such that a consumer would necessarily associate the MESSI mark with the footballer, and concluded that there was no likelihood of confusion.

So it was a victory for Lionel MESSI, but the owner of the « MASSI » mark has filed an appeale.

To follow up closely …

This dispute illustrates, on the one hand, the importance of constituting IP rights as soon as possible, especially when international fame is not indisputable, and to avoid years of procedure and high costs. On the other hand, it appears that it is also essential to carry out availability searches including signs similar to the one whose protection is sought, and not to be limited to an identical search.

Expertise in these questions can help avoid litigation …

In fact, an earlier filing would not have had a major impact in the case of MESSI because the « MASSI » mark was filed on 27/11/1996, while Lionel MESSI was still only 9 years old …

SOPERYAH IP

#IPLaw #TMlaw – UE Decision against the 3D Mark of KitKat Bars

Since 2007, a litigation occurs between NESTLE (CH) and MONDELEZ (US) (formerly CADBURRY), in particular in Europe. This litigation and the underlying legal reasoning illustrate some elements to be taken into account when a three-dimensional (3D) trademark filing is envisaged.

The subject-matter of the litigation concerns the 3D mark recorded by NESTLE on a chocolate product with 4 glued bars, with an ingot shape. The graphic representation of the mark includes a view in the black and white space of the 4 associated bars without logo.

The European Union Intellectual Property Office (EUIPO) has accepted the registration of the mark with effect from August 7, 2006, with number 002632529, in class 30, designating: « Sweets; bakery products, pastries, cookies; cakes, waffles ».

On 23 March 2007, CADBURRY (later MONDELEZ) initiated a procedure at EUIPO to cancel the 3D mark in question. Looking in the details of this case, we can see that MONDELEZ sells a similar chocolate bar claimed as being a Norwegian chocolate bar « Kvikk Lunsj » (for « Quick Lunch ») marketed since 1933 by the Norwegian company FREIA, bought in 1993 by KRAFT FOODS, which became MONDELEZ Intl. This gives a clear picture of the interest of MONDELEZ in this case.

As for Kit Kat products, they would also have been marketed since 1933.

On 11 January 2011, the EUIPO annulled the mark in first instance, which NESTLE appealed to later obtain a cancellation of the first instance decision and a rejection of the demand of MONDELEZ. In second instance, EUIPO essentially held that even if there is no « inherent distinctiveness », NESTLE had shown that that mark had acquired such a character in relation to those goods by the use which has been done.

The Court of the European Union seised by MONDELEZ considered in substance that:

1 °) the distinctive character by the use should have been considered not only in the category (30) but in each subcategory (including in particular bakery products) and concludes that the proof is not established for the products other than sweets and biscuits.

2) EUIPO should have taken into account the distinctiveness achieved by use in EU countries. The investigations showed that the distinctive character was acquired in 10 out of 28 countries (Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland,
Sweden and United Kingdom), but EUIPO did not analyze the evidence for the other Member States, namely Belgium, Ireland, Greece and Portugal.

The EU Court refers the case to EUIPO to re-examine the EU-wide distinctiveness for sweets and biscuits.

This shows a disadvantage of unitary IP titles, because individual marks would have been more likely to succeed in each relevant country.

An English decision of January 2016, also went against NESTLE, judging that the shape of chocolate bars can not be filed as a trademark.

As a conclusion, the acquired distinctiveness
– in the relevant category(ies) and subcategories, and
– in the relevant territory
are  thus important features to review when intending to claim a protection of a 3D shape as a trademark.

SOPERYAH IP

#IPLaw, #TMLaw – Introduction to so-called non-traditional marks acceptable in Europe

As you may already know, the trademark is a title deed, having the specificity of protecting a distinctive sign for products and / or services designated. As a title deed, it enters the company’s assets and significantly affects its valuation.

The trademark principle is to enable the consumer to associate your competitive advantage with your business. In broad outline, if a consumer sees a sign on a third-party’s product that makes him think it’s your product (because of the similarity to your trademark), the third-party has de facto infringed your trademark. In practice, it is recommended to file trademarks for both the company name, the logo, and each new product or service.

The European Union IP Office (EUIPO) has modified its rules to remove the requirement of graphic representation of the registered trademarks. This opened the door to the filing of what was later called non-traditional marks.

We will now give a classification of these marks. Non-traditional marks are those whose filing may be of interest but may generate specific issues that are critical to registration. Prior to the change of law, some of these categories had a high probability of rejection for reasons that may persist and that must be addressed in each case.

Traditional trademarks include
– word mark, and
– figurative mark with or without word elements;

Non-traditional trademarks include
– shape mark with or without verbal elements;
– position mark;
– pattern mark;
– color mark or combination of colors;
– sound mark;
– motion mark;
– multimedia brand; and
– hologram mark.

1 °) Word mark

In the terms used by the EUIPO, « a word mark consists exclusively of words or letters, numerals, other standard typographic characters or a combination thereof that can be typed« .

These are classically words forming a mark regardless of the style and colors of the of characters.

For example « SOTERYAH » is protected by a French and UK filings independently of the logo. This is probably the case with the name of your company.

2 °) Figurative mark

According to the official definition, « it is a trade mark where non-standard characters, stylisation or layout, or a graphic feature or a colour are used, including marks that consist exclusively of figurative elements » .

Company logos, product ranges or products fall into this category.

The figurative mark may include word elements and forms a separate category. It is for example the case of a mark combining a logo and a company name or product / service name. For a better protection, it is recommeded to give preference to a figurative mark and a word mark as much as possible (although this increases the costs).

3 °) Shape mark

In the terms used by the EUIPO, « a shape mark consists of, or extends to, a three-dimensional shape. It can include containers, packaging, the product itself or its appearance« .

It concerns the protection of the three-dimensional form of a product or its packaging, considering that this form is considered by the public as identifying the products of the applicant, and that the form is not guided by technical considerations.

The shape of the Mini-Cooper was the subject of many comments. The main examples concern the shapes of bottles and perfume flasks.

The shape mark may also include verbal elements. Again, for better protection, preference should be given, as much as possible, to separate filings, for example a figurative mark and a word mark (in spite of the costs).

4 °) Position mark

According to the official definition, « a position mark consists of the specific way in which the mark is placed or affixed to the product« .

The most related example concern the position of elements on shoe sides or soles. Distinctiveness and non-deceptiveness must, however, be verified on a case-by-case basis.

5 °) Pattern mark

In the terms used by the EUIPO, « a pattern mark consists exclusively of a set of elements which are repeated regularly« .

Many examples come to mind, including motifs of leather luggages or bags.

6 °) Color mark (single color)

According to the official definition, « a colour single mark is just that – a trade mark which consists exclusively of a single colour (without contours)« .

Examples could include colors of product or of their packaging, such as packagings of sodas or chocolates. Here again, particular attention must be given to the criteria of distinctiveness and non-deceptiveness namely.

The combination of colors is also possible and belongs to a separate category.

7 °) Sound mark

In the terms used by the EUIPO, « a sound mark consists exclusively of a sound or a combination of sounds« .

This category includes jingles or sound backgrounds, such as the famous ones of a transport company jingle or of a lion roar.

8 °) Motion mark

According to the official definition, « a trade mark consisting of, or extends to, a movement or a change in the position of the elements of a mark« .

Moving logos of computer programs or cinematographic productions may fall into this category.

9 °) Multimedia mark

According to EUIPO, « it consists, or extends to, the combination of images and sound« .

This category should be considered if it is not planned to separate the movement from the sound. In the opposite case, preference should be given to multiple filings, for example a movement mark and a sound mark, for better protection.

10 °) Hologram mark

According to the official definition, « a hologram mark consists of elements with holographic characteristics« .

They can be defined as 3D images appearing as « suspended in the air ». Typical examples are anti-fraud systems such as holograms of identity documents.

As a conclusion there are at least 10 ways to mark your territory, so on your marks!

SOPERYAH IP

#IPlaw #TMlaw – Confirmation of the validity of the Louboutin red sole trademark.

After the Paris High Court (TGI) in March 2017, the Paris Court of Appeal recognized, on May 17, 2018, the distinctive character of the Louboutin red sole.

In the shoe industry, many eagerly wait for a court decision establishing that a shoe sole color would not be protectable and could not be appropriate by a company.

For the record, schematically, an infringement of a trademark right can be characterized when consumers perceiving a sign believe that they are dealing with company A, when in fact it is an operation of a company B. But it is important that the sign in question be registered as a trademark in the relevant operating territory.

Applying this principle to the case of the red sole, it appears that the Court of Appeal rightfully recognized the distinctive character of this sole.

A similar decision was made in favor of Louboutin in the United States in 2012, according to which in essence, the trademark may be claimed unless the rest of the shoe has the same color.

A decision of the Court of Justice of the European Union is expected in another dispute …

To be followed up closely…

Eric TZEUTON