WEDNESDAY, 20 JULY 2016
General Court: Mad Catz v. Monster

The following summary about this "cat fight" was kindly prepared by Vlotina Liakatou, Trade Mark associate at MARQUES member Baker & McKenzie.

In Cases T‑567/15 and T-429/15 (Monster Energy Company v EUIPO & Mad Catz Interactive, Inc.), handed down on 14 July 2016, the General Court ("GC") found no likelihood of confusion between the following parties' marks:

 Mad Catz Interactive, Inc. - EUTM Applicant

Monster Energy Company - Opponent

EUTM Application No. 011390853011390853

Image not found

EUTM Application No. 011390846

 

EUTM registration No 6433817

Image not found

EUTM registration No 7444243

Image not found

EUTM registration No 7451552

Image not found

IR (designating the EU) No 1048069

Image not found

 

In 2012, Mad Catz Interactive, Inc. filed EUTM applications for the figurative marks shown above for "clothing footwear and headgear". Monster Energy Company opposed both applications on the basis of its earlier registrations (also shown above) covering inter alia goods in the same Class.

The Opposition Division refused the oppositions and the Board of Appeal ("BoA") upheld its decisions. Monster Energy filed further appeals, but they were also dismissed by the General Court.

In Case T-567/15, where the EUTM Application No. 011390853 was opposed, Monster Energy claimed that the BoA had wrongly assessed the similarities between the mark applied for and its earlier mark No. 6433817, which are figurative and not composite marks (the opposition was eventually restricted to this earlier mark only). It also argued that the BoA wrongly assessed the overall impression created by these marks by stating that the mark applied for might be perceived by the relevant public as scratches, whereas the earlier mark might resemble claws. Lastly, Monster Energy criticised the BoA for finding that there was no likelihood of confusion and for failing to take into account the distinctiveness acquired by the earlier mark through its extensive use for energy drinks and clothing for extreme sports.

The GC did not concur with Monster Energy's allegations and found no likelihood of confusion in this case. After establishing that Class 25 goods were everyday goods intended for the EU average consumer and that the goods covered by the marks were either identical or similar, it went on to compare the marks at issue.

The Court agreed with the BoA's assessment of a low degree of visual similarity between the marks: although the marks were visually similar in so far as they both depicted a number of stylised lines, they differed in other respects such as the shape, colour, number and position of these lines. Contrary to what was suggested by Monster Energy, i.e. that the only perception of the marks at issue would be scratches and claws, it was held that "the mark applied for depicts a black square on which four diagonal parallel white lines are placed which might be perceived by the public as "scratches", white brush strokes or a purely abstract device, whereas the earlier mark shows three vertical parallel black shaky lines of different lengths whose upper part is broader and which, from the perspective of the relevant public, might resemble three "fingers" or "claws" or a very abstract depiction to which no specific and clear meaning can be attributed".

The fact that the perception of the earlier mark as "scratches" was not the most obvious and that the relevant public could perceive the marks at issue as abstract devices without associating them with any meaning, made them conceptually dissimilar. On this basis, Monster Energy's argument that there was at least a degree of conceptual similarity between the marks because they were liable to convey "the message of something aggressive and that something is being ripped open" could not be accepted. Regarding phonetic similarity, no phonetic comparison was possible because the marks were purely figurative.

Regarding the enhanced distinctiveness claimed by Monster Energy, the GC held that the BoA was right to find that Monster Energy's mark did not enjoy enhanced distinctiveness, since the use of the earlier mark on clothing and headgear was essentially for the purposes of sponsorship or promotion of Monster Energy's non-alcoholic beverages and energy drinks. The fact that its mark enjoyed a reputation for drinks had no relevance in relation to the reputation claim because Monster Energy had claimed reputation in relation to Class 25 goods only. 

Given the low level of visual similarity between the marks, the fact that the relevant public could perceive the marks at issue as abstract devices without associating them with any meaning (and not only as scratches) and the normal (and not enhanced) distinctive character of the earlier mark, there was no risk of a likelihood of confusion.

In Case T-429/15 where the EUTM Application No. 011390846 was opposed, the GC also found no likelihood of confusion on the basis of similar reasoning. In this case, the marks were even less visually and phonetically similar given the additional elements "MAD CATZ" included in the mark applied for.

Posted by: Laetitia Lagarde @ 17.20
Tags: General court, likelihood of confusion, monster, mad catz,
0 Comments    Post a comment
MONDAY, 18 JULY 2016
Class 46 needs YOU

A long-established European trade mark weblog, Class 46 has brought a regular supply of information concerning legal rulings and legislative developments, as well as reporting on the activities of the EUIPO and national and regional trade mark granting offices, plus news of MARQUES and its forthcoming events.  

The vast majority of these contributions are submitted by MARQUES members and blog readers, and you don't have to be a member of the Class 46 blog team in order to have information about an interesting case published on the blog.  If you'd like to send anything in for publication, feel free to forward it to one of the blog team members or email it to MARQUES at info@marques.org and we will get back to you! 

Posted by: Blog Administrator @ 00.01
Tags: contributions,
0 Comments    Post a comment
FRIDAY, 15 JULY 2016
Online Business Models Infringing Intellectual Property Rights: here's the report

The EUIPO Report, Online Business Models Infringing Intellectual Property Rights, was released on 12 July 2016. What was this all about? According to the European Observatory: 

"The aim of this independent research is to provide an overview of different infringing business models, assessing how they function, how they are financed, how they generate profits for their operators, what kinds of content they disseminate and how large their user bases are.

The study will provide enhanced understanding to policymakers, civil society and private businesses. At the same time, it will help to identify and better understand the range of responses necessary to tackle the challenge of large scale online IPR infringements".

You can access the full report by clicking here.

Posted by: Blog Administrator @ 16.59
Tags: Online Business Models Infringing IP Rights,
0 Comments    Post a comment
THURSDAY, 14 JULY 2016
General Court: Piccolomini v Piccolo

In Case T-20/15(Henkell & Co Sektkellerei v EUIPO (PICCOLOMINI), the  General Court of the EU rendered a Judgment regarding the sign PICCOLO, which highlighted that the importance of proof of use in EUIPO cases is not so "small". The following summary was kindly prepared by Andy Cornforth, Trainee Solicitor at MARQUES member Baker & McKenzie.

The GC held that the BoA was correct to find that evidence submitted pursuant to Art 42(2) of the Regulation did not show genuine use of an earlier mark as a trade mark.  The case concerned the registration of the mark PICCOLOMINI by Ciacci Piccolomini di Bianchini Societa Agricola ("Ciacci") which was opposed by Henkell & Co ("Henkell") on the basis of a likelihood of confusion with its earlier mark PICCOLO.

Henkell, at Ciacci's request, had provided evidence of genuine use of the PICCOLO mark, and on the basis of this its opposition was upheld. However, Ciacci appealed, and this appeal was upheld by the BoA. The BoA's reasoning was that:

  • "Piccolo" formed part of internationally used wine terminology, and that an average consumer would be familiar with the term, which referred to the size of the bottle. Consumers unfamiliar with the term wouldn't assume it was a trade mark in the context of marketing sparkling wine
  • PICCOLO was used either in a descriptive manner or in an abbreviated form, and was featured with other descriptive terms like "trocken" or "dry", or with the applicant's name, "henkell".
  • In terms of both positioning and size, "Henkell" was always the most dominant element, and, because it had no apparent meaning, it would be regarded as being distinctive

The GC examined the evidence Henkell had submitted, and agreed with the BoA. Henkell had relied upon (amongst other things) a statutory declaration by its marketing director that the PICCOLO mark had been used in 20 Member States. The GC said that such a declaration could not be given the evidential weight accorded to a statement made by a third party, and that its particulars required confirmation by other evidence. The other evidence here did not provide such confirmation.

Henkell had argued that the BoA's examination of the distinctive character of the earlier mark in the context of assessing proof of genuine use was ultra vires, and that it was wrong in finding that the mark was devoid of distinctive character. The GC disagreed, saying that the BoA’s examination complied with all applicable rules and case-law. It had not ruled on whether there were absolute grounds for refusal, but confined itself to a genuine use assessment. Furthermore, it had not examined the distinctive character of the earlier mark per se, but the perception of the sign in the context of its actual conditions of use as a trade mark within 42(2)

Comment

It seems relatively clear here that the use of PICCOLO could very easily be considered to be descriptive, and that its validity as a mark might at best be regarded as borderline. Though the evidence Henkell submitted as proof of genuine use may have demonstrated that the term had genuinely been in use, given its size and position in relation to "Henkell" and its comparable status in relation to other clearly descriptive terms, it did not show that the term had genuinely been in use as a trade mark.

Posted by: Laetitia Lagarde @ 17.02
Tags: General Court, genuine use, piccolo, bottle, small, Henkell,
0 Comments    Post a comment
THURSDAY, 7 JULY 2016
Repute of McDonald's family of marks allows it to prevent "Mac--" prefixed marks for food/drink

The General Court of the EU held that the repute of fast food chain McDonald’s trade marks makes it possible to prevent the registration, for foods or beverages, of trade marks combining the prefix ‘Mac’ or ‘Mc’ with the name of a foodstuff or beverage; (case T-518/13; Future Enterprises v EUIPO of 5 July 2016). This case is likely to strengthen the concept of a family of trade marks and includes a helpful summary of case law in this field.

A Singaporean company registered the mark for foodstuffs and beverages at OHIM (now EUIPO).  American fast food company McDonald’s applied to have the trade mark declared invalid on the basis of its earlier EU trade mark McDONALD’S as well as 12 other trade marks it owned for fast food restaurant services; all of which included the word elements ‘Mc’ or ‘Mac’ as prefixes. These include McFISH, McTOAST, McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN, EGG McMUFFIN, McFEAST, BIG MAC, PITAMAC and McDonald’s.

The GC now held in McDonald's favour and invalidated the MACCOFFEE mark finding inter alia that:

  • because of the combination of the element 'mac' with the name of a drink in the MACCOFFEE trade mark, in particular, the relevant public can associate that trade mark with the McDonald’s ‘Mc’ family of trade marks and mentally establish a link between the trade marks at issue.

  • despite the difference of the goods and services covered by the trade marks at issue (namely the foodstuffs and beverages for MACCOFFEE and the fast food restaurant services for McDonald’s), there is nevertheless a certain similarity owing to the close links existing between them: foodstuffs may be used and offered in the context of the fast food restaurant services; foodstuffs, such as ice cream, muffins, filled sandwiches and toasted sandwiches correspond to the goods offered  on the menu of fast food restaurants the foodstuffs and restaurant services at issue are directed at the same consumers.

  • the use of MACCOFFEE without due cause takes unfair advantage of the repute of McDonald's trade marks.

  • upon seeing the MACCOFFEE trade mark affixed to goods closely linked to those of McDonald’s, the relevant public could mentally establish a link between the trade marks at issue and could transfer the image of the McDonald’s trade marks to the goods covered by MACCOFFEE.

  • the protection provided by Article 8(5) of Regulation No 207/2009 is not conditional on there being a degree of similarity between the marks at issue, such that there exists, on the part of the relevant public, a likelihood of confusion between them. It is sufficient for the degree of similarity between those marks to have the effect that the relevant public establishes a link between them.

  • "… the marks McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN and EGG McMUFFIN, derived from the McDONALD’S trade mark, fulfil all the conditions to form a ‘family’ of trade marks, …, in so far as they are sufficient in number and reproduce in full the same distinctive element, namely the element ‘mc’, with the addition of a word element that differentiates them from each other and that they are characterised by the repetition of the same prefix, ‘mc’, taken from the McDONALD’S trade mark. … the McDONALD’S trade mark, with a reputation for fast-food restaurant services, is the original trade mark of the family, to which all the derived marks are connected by a common feature, namely the prefix ‘mc’, and from which they are all separated by the same type of final element, which refers to one of the foodstuffs on the menu of the intervener’s fast-food restaurants".

The judgement can be found here.

The court's press release can be found here:

Posted by: Birgit Clark @ 10.32
Tags: GC, family of trade marks,
0 Comments    Post a comment
WEDNESDAY, 6 JULY 2016
Battle of the Alfredo's in General Court: what's in an Italian name?

In a true Italian fashion of family sagas over the name Alfredo which gave birth to the "famous" dish of 'fettuccine Alfredo', the EUIPO and the EU Courts ruled on a conflict between the following parties:

 Mr. Mario Mozzetti - EUTM Applicant

Mr. Alfredo di Lelio - Cancellation applicant

Image not found

Image not found

Earlier Italian mark No 550235  (registered since 1991)

 

 

 

THE ORIGINAL ALFREDO 

 -Class 30: "Rice, cereal preparations, namely pasta; bread " ;

- Class 43: 'Food, excluding cafeterias and coffee shop; temporary accommodation '.

-Class 30: 'Pasta and preparations of cereals';

- Class 43: 'Restoration'.

 

According to the legends of pasta, Mr. Di Lelio created in 1914 the original recipe for "fettuccine Alfredo"- uber famous abroad but not  so much to Italians-   to soothe his pregnant wife,  which became one of the most renown dishes of his restaurant. His original restaurant in Rome is named Alfredo alla Scrofa at Via Della Scrofa, and his fame spread worldwide so much to be nicknamed Alfredo the Emperor of Noodles. Alfredo semi retired and sold his restaurant, to Mr. Mario Mozzetti which is still in business to this day. Some years later, Alfredo Di Lelio opened another restaurant nearby named Alfredo II and today dubbed Il Vero Alfredo  ( the "true" or "original" Alfredo).

In 2009, Mr. Mozzetti obtained the two registrations above which were the object of invalidity actions on the basis of the Italian mark L’ORIGINALE ALFREDO filed in 2012.

The Cancellation Division and Board of Appeal upheld the invalidity action. The General Court dismissed the appeal.

Regarding the first plea, the Court confirmed that the request for proof of genuine use of the earlier mark was untimely and should be dismissed. 

Regarding the second plea based on Article 8(1)b) EUTMR, the relevant public is the average Italian given the nature of the the goods and services. It is also undisputed that the goods and services covered by the contested mark and the goods and services covered by the earlier mark are identical or very similar.

Mr. Mozzetti claimed that the distinctive character of "alfredo" is weak since the use of the word common to the conflicting marks, is widespread in the area of products and services in question. First, the term "alfredo" would be related to the "fettuccine", a type of pasta, due to the existence of a dish called "fettuccine alfredo". According to a research conducted on the Google search engine , the use of "fettuccine alfredo" is generalized. Finally, numerous marks containing the term 'alfredo' are registered in countries of the European Union for services in Class 43.

However, the Court held that  the list of Google search results was solely for the phrase "fettuccine alfredo" and not the term "alfredo" alone, so it did not demonstrate that this term has become widespread in the area of products and services or that it will be perceived, without the addition of "fettuccine" as referring to pasta.

 Furthermore, it should be noted, as did the Board of Appeal, that the name "alfredo" is the element of the marks which the consumer will pay the most attention. Indeed, given that the name "alfredo" is placed above and it is written with letters of a size greater than that of the accompanying phrase ( "alla scrofa"), the consumer will grant him more attention. In the earlier mark, the name "alfredo" is also the element that the consumer will pay the most attention, the 'original' term is perceived as a simple adjective to qualify the name.

So, give the identity or the high similarity of the goods /services, that the earlier mark had a normal distinctive character, and  the fact that the term "alfredo" present in both signs, is of a more important distinction as the other elements, there is a risk of likelihood of confusion.

Last but not least, the Board of Appeal correctly found that the coexistence of the marks in a central area of Rome could not be considered because it was not demonstrated for a significant part of Italian territory. In addition, that coexistence was alleged for restaurants and not for food products covered by the marks. Finally, the contract concluded in 1943 by the ancestors of the parties was not relevant, because the risk of confusion must be assessed in light of current factual circumstances and in particular the similarity of brands, products and services in question.

***

The Judgments in original version are cases T‑96/15 here  and T‑97/15 here.

The Alfredo's story here http://www.alfredo-roma.it/history.htm  and Alfredo Alla Sroffa here http://www.alfredoallascrofa.com/

How to visit both Alfredo's in less than 10 minutes here https://goo.gl/maps/hkygHAVc5Kv

Pasta recipe here http://ricette.giallozafferano.it/Fettuccine-Alfredo.html

Posted by: Laetitia Lagarde @ 19.15
Tags: General Court, confusion, alfredo, roma, fettucini, pasta, restaurant,
0 Comments    Post a comment
TUESDAY, 5 JULY 2016
All tied up in knots over Article 28(8) declarations? Here's a bit of help

If you are struggling with those pesky class headings again and tying yourselves in knots over Article 28(8) declarations, here's something to cheer you up -- or at least to make your life a little less difficult. It's a notice posted on the EUIPO website yesterday with the helpfull descriptive title "Article 28(8) declarations: examples of terms not clearly covered by the literal meaning of the respective class headings". 

Article 28(8) EUTMR, amended by Regulation 2015/2424 amending the Community trade mark regulation, allows for a transitional period of six months during which proprietors of EUTMs applied for before 22 June 2012 and registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading.

Following feedback from its user community, the Office has prepared a non-exhaustive list containing examples of terms considered to be not clearly covered by the literal meaning of the respective class headings.

The list is purely for the guidance of trade mark owners wishing to submit declarations for the purposes of Article 28(8) EUTMR. The list is available here

Under Article 8 of Communication 1/2016 of the Executive Director concerning the implementation of Article 28(8) EUTMR, the Office will not object to the inclusion of terms not clearly covered by the literal meaning of the class headings in the specification.

There may be other terms for which there is reasonable doubt as to whether or not they are covered by the literal meaning of the class heading.

The acceptance of declarations for terms not clearly covered by the literal meaning is without prejudice to Office practice in the comparison of goods and services in future opposition or cancellation proceedings.

Applicants are reminded of the limitations of the effects of the declaration, contained in Article 28(8) second paragraph, last sentence and 28(9) EUTMR).

Posted by: Blog Administrator @ 11.36
Tags: class headings, Article 28(8) declarations,
0 Comments    Post a comment