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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
On Puzzles, Functionality and the General Court – No More Fun and Games

The General Court (GC) recently handed down a judgment in Case T-601/17 Rubik's Brand v EUIPO, deciding – again – on whether the below three-dimensional mark representing the shape of the Rubik's Cube was purely functional:

As many trade mark enthusiasts will know, this is the second time the mark in question made an appearance before the GC. For those interested, additional information on the Rubik's Cube saga can be found here. Today's post examines the present judgment and takes a look, more generally, at how (allegedly) functional signs fare before the GC (in the tradition of a previous piece on the fate of laudatory signs).

The saga, in short, turned on the question of whether the sign at issue was functional within the meaning of Article 7(1)(e)(ii) of Regulation 40/94. According to that provision, signs shall not be registered if they consist exclusively of the shape of goods which is necessary to obtain a technical result (NB: the current version of Article 7(1)(e)(ii) EUTMR includes the additional wording "…shape, or another characteristic").

The GC's first decision regarding the Rubik's Cube (of 25 November 2014) was later annulled by the CJEU (Case C-30/15 P, reported by the IPKat here). The CJEU held that the GC erred by taking the view "that for the purpose of examining the functionality of the essential characteristics of the sign concerned, […] the shape at issue, as represented graphically, should have been taken as a basis, without necessarily having to take into consideration any additional circumstances". The functionality of the sign, said the CJEU, should have been assessed in the light of the technical function of the actual goods concerned (i.e. a three-dimensional 'Rubik’s Cube'-type puzzle).

Taking those principles into account, the Board of Appeal (this time around) declared the mark at issue invalid. By the judgment at issue (of 24 October 2019), the GC dismissed the appeal filed by the trade mark owner. The Court's reasoning can be summarised as follows:

  • The essential characteristics of the sign consisted of (1) the grid structure of 'black lines' and (2) the 'overall cube shape'.
  • The intended technical result of the goods concerned could be defined as 'axially rotating, vertically and horizontally, rows of smaller cubes of different colours until the nine squares of each face of the cube show the same colour'.
  • Both essential characteristics were necessary to obtain that intended technical result.
  • The black lines represented a physical separation between the different smaller cubes, which was necessary to rotate the different rows of smaller cubes by means of a mechanism located in the centre of the cube.
  • The overall cube shape was inseparable, on the one hand, from the grid structure, which divided each of the faces of the cube into nine smaller cubes, and, on the other, from the function of the actual goods at issue, which was to rotate these rows of the smaller cubes.

Making reference to Lego (Case C‑48/09 P) and Philips (Case C‑299/99), the GC found that the arguments put forward by the trade mark owner could not call these findings into question. It was deemed irrelevant that…

  • …the graphic representation of the contested mark did not reveal all the elements which were necessary for the implementation of the technical solution concerned, such as the additional colours on and the mechanism internal to the Rubik's Cube (paras. 95-96).
  • …a three-dimensional puzzle with the same rotating capability could appear in shapes other than that of a cube (para. 90).
  • …in the case of such alternative shapes, the grid structure appearing on their faces had a higher or lower number of horizontal and vertical lines and that the lines could be of a different thickness or colour from those appearing on the contested mark (para. 88).

Without a doubt, some will criticise the present decision for applying too strict a test in assessing the functionality of the sign at issue. Others, however, may praise the GC for stringently applying the principles established by the CJEU. At any rate, it is difficult to deny that (allegedly) functional signs currently face difficult times before the GC if the below non-exhaustive list of judgments is anything to go by:

TM Goods (inter alia) Case Result
Three-dimensional puzzles Purely functional
Cable and pipe penetration seals, made from plastic or rubber Purely functional
Alcoholic beverages (except beers) Not functional
Tyres Not functional
Cutlery, scissors, knives Purely functional
Pharmaceutical preparations for the treatment of dementia of the Alzheimer’s type Purely functional
Lighters for smokers Purely functional
Winches with power cable Purely functional


Posted by: Christian Tenkhoff @ 08.14
Tags: Functionality, three-dimensional, General Court, Absolute Grounds, EUTM, shape,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4809

EU-China agreement on geographical indications

The EU and China have concluded negotiations on a bilateral agreement to protect 100 European geographical indications (GIs) in China and 100 Chinese GIs in the EU against imitations and usurpation. Alessandro Sciarra of the MARQUES GI Team reports:

The European Union Commission has reported that on 6 November 2019, the negotiations between the EU and China for a bilateral agreement to protect 100 European GIs in China and 100 Chinese GIs in the EU have been concluded.

The next step towards the entry into force, which is expected by the end of 2020, is the legal scrutiny of the agreement.

The list of the GIs from the EU to be protected in China includes Cava, Champagne, Conegliano Valdobbiadene Prosecco, Asiago, Queso Manchego, Prosciutto di San Daniele, Irish whiskey and Porto. Among the Chinese GIs that will be protected in the EU are Pixian Dou Ban (Pixian Bean Paste), Anji Bai Cha (Anji White Tea), Panjin Da Mi (Panjin rice) and Anqiu Da Jiang (Anqiu Ginger).

The full lists of the 200 European and Chinese geographical indications covered by the agreement are available here: list of European GIs and list of Chinese GIs.

An additional 175 names from both sides will be examined after the entry into force of the agreement and set to be protected within four years.

In a joint press statement on the end of the negotiations Commissioner Hogan and Chinese Minister Zhong Shan declared that this agreement on GIs is likely to be one the most significant trade agreements negotiated between the European Union and the People’s Republic of China in recent years, and will allow the preservation of the traditional way of producing these high-quality products, conserving the respective food heritage, and contributing to rural economies, to European and Chinese consumers as well as society at large.

The European Commission has made available a factsheet on the agreement.

Alessandro Sciarra is a European trade mark attorney with Bird & Bird in Rome and a member of the GI Team

Posted by: Blog Administrator @ 09.54
Tags: GI, China, geographical indication,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4808

Luxury Brands Symposium day 2 report

The second and final day of the third MARQUES Luxury Brands Symposium, held in Milan, looked at expanding luxury brands in different directions and the latest CJEU case law on luxury brands.

Expanding luxury brands

Introducing a panel looking at types of expansion (such as product/ service extensions within the same range, extension into complementary areas and extension into unrelated areas) Chair Lydia Gobena of Fross Zelnick Lehrman & Zissu, PC discussed the advantages and disadvantages: “If you don’t expand well and tell the story right, you’re not going to reap the financial rewards.”

Daniel Luggen of Zermatt Tourism described the challenges of protecting a regional brand that has an international reputation: “We have to think about brand and brand protection. It’s not been an easy journey.” For example, Zermatt discovered that a company was selling Matterhorn-branded cigarettes in the Caribbean

Laurence Morel-Chevillet of BULGARI S.p.A said brand expansion is often driven by customers’ demands: “If you do not follow your clients’ wishes, you will not go very far!” For BULGARI, it was a natural development to expand from jewellery to watches. “It took some years to put into the company the know-how, patents and so on. The company also acquired other companies that manufactured watches and now has a huge production plant in Switzerland.” Other expansions for BULGARI have included hotels, accessories, perfumes and cosmetics, the latter of which was not successful. “The effort was too high in comparison to the benefits,” said Laurence.

Dinner on Thursday evening

Julia Holden of Trevisan & Cuonzo asked: what is luxury and why do we want it? Historically and sociologically, luxury has always been important, she said, and labels are important for people to find their place in society, but she added: “In different societies, there’s a different priority in what people look for in luxury.” Is it about being different, seeking quality or showing monetary value? “It’s a multi-faceted topic,” said Julia.

The panel addressed questions including: What steps do you take when considering a brand expansion across different product or service categories? How do you approach trade mark clearance and use requirements? To what extent can you protect geographical terms? ow do you balance staying true to your company’s legacy while at the same time moving forward in other categories? How do you ensure quality when working with partners? How to manage client costs when expanding across numerous categories? And what lessons have been learned from brand expansions?

“If you do it well, you can really create consumer loyalty and brand loyalty,” concluded Lydia.

Recent and pending EU cases

In the event’s final session, a panel of legal experts discussed recent and pending trade mark, design and copyright cases in the EU. Roland Mallinson of Taylor Wessing said the recent judgment in the AMS Neve v Heritage Audio case regarding jurisdiction “is going to be an important decision for luxury brand owners going forward.” He added: “It clarifies emphatically that we can sue under a EUTM in the country where the website is targeted. That will be useful for brand owners.”

Arthur Artinian of K&L Gates LLP summarised 15 recent decisions that affect luxury goods companies, noting that they provide good news regarding marks with combinations of elements (such as shape and colour) and for those in new categories, such as position marks, but bad news for luxury brands to obtain registration and for providing acquired distinctiveness EU-wide. Among the cases he discussed were:

  • Louboutin: Arthur said the positive news from this case is that colour/shape combination marks should not meet objections: “Luxury brand owners should continue to refer to this case when protecting their brands.”
  • Textilis: this case found that 2D prints and textiles are not subject to the shape exclusion under Article 7(i)(e). “If you have marks like this, you’re in good shape,” said Arthur.
  • Rubik’s Brand: This General Court decision invalidated the Rubik’s Cube trade mark on the basis that elements of the design were necessary to obtain the technical result. It is likely to be appealed to the CJEU.
  • Birkenstock: A simple geometric pattern was devoid of distinctive character. “Brand owners have to take a new look at these kinds of issues as traditional 3D marks are not working,” said Arthur.
  • Red Bull: This case on the blue/silver colour combination confirmed that, if seeking to register colours, you need to be very precise. You cannot claim a monopoly in the combination of the colours for a plurality of reproductions.
  • KitKat: The lesson of this decision, in which the CJEU said evidence of acquired distinctiveness is required in all 28 EU Member States unless there are proximities between states, is “Does it make more sense to go down the national route?” said Arthur. In two other notable decisions (Supermac’s v McDonald’s, EUIPO Board of Appeal and Adidas v EUIPO, General Court) it was found that there was insufficient evidence of use.

Topics to watch

Arthur provided examples of position marks that have been accepted and refused, concluding that the trend is that simple signs can be protected if placed in a specific position. “From a brand owner’s perspective, this is an area to watch.” Combinations of shapes and colours or distinctive motifs are also likely to be registrable, as are photos of unbranded products.

Bad faith is a developing area, following the Kreativni Dogadaji d.o.o.o v Hasbro decision from the EUIPO Board of Appeal and the recent Advocate General’s Opinion in Sky v SkyKick. “If the Opinion goes forward, then EUTM registrations with no intention to use or very general specifications of goods are vulnerable to attack for bad faith or lack of precision,” said Arthur.

Designs and copyright

Turning to designs, he said that they are powerful and can interact with trade mark rights, but disclosure can be a challenge for luxury and fashion brands. The recent Porsche v EUIPO decision from the General Court suggests that just reinventing an iconic design is not enough to get design protection.

Interesting cases on the interaction between trade marks and designs include Chanel v EUIPO, BMB v Ferrero, East Sheen Industrial v Rubik’s Brand and Red Bull v Voltino.

Finally, Jesse Hofhuis of Hofhuis Alkema Groen discussed the Cofemel v G-Star copyright case, saying “it will create a revolution in the EU for protecting product design and other applied arts”. He explained that it confirmed that there is the same threshold for copyright protection throughout the EU, and it is possibly a low threshold.

The Symposium was wrapped up by MARQUES Chair Susie Harris and concluded with lunch.

Posted by: Blog Administrator @ 14.35
Tags: Luxury Brands, Milan, Cofemel, SkyKick, AMS Neve, KitKat, Red Bull, Louboutin, Textilis, Rubik,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4806

Luxury Brands Symposium day 1 report

Art and fashion, selective distribution, social media and influencers and new trends in fashion marketing were among the topics discussed on the first day of the third MARQUES Luxury Brands Symposium. The Symposium is taking place at the Hotel Principe di Savoia in Milan.

Trends in digital marketing

In his keynote speech, Antonio Montesano, Head of Digital at OMD, Italy provided an inspirational and provocative insight into new trends in fashion digital marketing. These include new channels such as gaming, short videos on TikTok, virtual reality and mixed reality, and Big Data and AI.

Antonio said that Generation Z consumers (people born after 2000) will account for 55% of luxury consumers by 2025, so it is important to be aware of their interests and needs. For example, he said: “The new trend is being anti-trend.” Disruptive brands have tapped into this, such as Diesel with its campaigns “Enjoy before returning” and the anti-influencer “Be a follower”.

Successful campaigns can reach millions of people and gain wide media coverage. Antonio said an example is the Air Catwalk hosted on an aircraft by easyJet and Vogue Italia. “It worked well because it was quite strange; strange is what Gen Z like!”

Influencers will continue to be important, including virtual influencers. Examples of these are Imma in Japan, who has 160,000 followers and has been on the cover of a magazine; Noonoouri, who has over 330,000 followers on Instagram and has worked with several fashion brands and virtual music star Lil Miquela, who has nearly 2 million Instagram followers.

“Digital is very, very important … but all these online/offline distinctions are blurring,” said Antonio. Examples of “phygital” marketing (the blending of physical and digital) include Nike’s partnership with Instagraffiti in Brazil and ASOS’s virtual catwalk, while smart glasses such as Microsoft’s HoloLens and Magic Leap, combined with 5G, are expected to be a market worth $150 billion by 2025. “The future is Mixed Reality,” said Antonio. “Digital will be another layer of our reality. You will be able to do everything and it will become easy and normal. In five years many people will use smart glasses and in 10 years everyone will have them.”

Finally, Big Data and machine learning will result in virtual personal assistants running more and more complicated tasks and knowledge such as Amazon’s StyleSnap. “AI will be even more creative … this is the world we are going to live in!” predicted Antonio.

Collaborations between artists and designers

The keynote speech followed three panel sessions on topics relevant to luxury brands. The first, chaired by Michael Noth of TIMES Attorneys, addressed the collaboration between artists and fashion designers. Artist Pietro Ruffo described his partnerships with Valentino and Dior, saying the fashion houses were “very brave” to invite him to collaborate, and adding: “The bigger brand, the less they tell you. They just give you one sentence; we want Rome, and layers. Basta!”

Massimo Sterpi of Gianni, Origoni, Grippo, Cappelli & Partners contrasted spontaneous collaboration with captive collaboration, and discussed examples such as Marc Jacobs/Daniel Buren and Keith Haring/Uniqlo. He also highlighted some cases that had arisen where copyright infringement had been alleged, and asked where the dividing line between copying and inspiration should lie.

Anthony Misquitta of the Victoria & Albert Museum covered the topic of false fashion endorsement and the cases of Rihanna v Topshop in the UK and Kim Kardashian West v Misguided in the US. He also raised the important question of whether fashion is art or design, discussing the Lucasfilm case in the UK regarding Star Wars helmets, saying: “If it’s a work of art, copyright is triggered. If it’s design, design right is triggered. Copyright is a more powerful right for longevity.” For museums such as the V&A, the distinction is critical in deciding whether permission needs to be sorted to publish photographs. Finally, Anthony described how designers can work with museums on exhibitions and merchandise, pointing to the success of the Alexander McQueen “Savage Beauty” and Christian Dior “Designer of Dreams” exhibitions. In the final presentation in this session, Astrid Welter of Fondazione Prada elaborated on collaborations between institutions and artists.

Selective distribution and social media

The second panel was chaired by Bernd Weichhaus of Lubberger Lehment and included Andreas Reindl of Van Bael & Bellis, Manuel Kleinemenke of Porsche AG and Benjamin Neyt of LVMH. They addressed the importance of selective distribution channels for luxury brands, the European Commission’s approach to competition issues and recent CJEU cases such as Coty and Metro.

Specific topics covered included online sales restraints, pricing issues, territorial restraints, dual distribution issues, passive sales, price comparison sites and AdWords restrictions. Andreas highlighted the Commission’s review of the Vertical Block Exemption Regulation and guidelines, with a working document expected by the middle of next year and new guidelines due in 2022.

Brand owners and a representative of Facebook took part in the session on social media and influencer marketing. Chair Ida Palombella of Deloitte Legal said that there are now 4.4 billion internet users in a world population of 7.7 billion, with 2.3 billion Facebook users.

Rachele Perico of the Blonde Salad/Chiara Ferragni said that influencer marketing is different from traditional marketing in two respects: it is mixed with other communications and the brand accepts partial loss of control. “It has the possibility to enlarge the traditional audience and it is also experienced by consumers as something closer to their experience,” she said, adding that it offers the possibility to measure the success of a campaign and see an immediate outcome of the results of investment.

“Influencer marketing is definitely changing the relationship between brands and consumers. It’s getting closer and closer,” added Arianna Iacomelli of Furla. “These are really powerful instruments. These are real people and putting the brands in this context makes them feel closer to consumers.” But she said that guidelines on disclosure are different around the world, with the principle generally being that disclosure must be clear and use established terms such as “#advertising” or “#ad”.

Marta Dolcetto of Moncler stressed that social media is increasingly important for luxury brands, but warned that counterfeiters follow consumers. “You need a dedicated enforcement strategy, and to understand where the business wants to be,” she said. One question now being considered is how to respond to the popularity of WeChat. Mark Fiore of Facebook/Instagram described the measures, both reactive and proactive, that the social media sites are taking to tackle counterfeiting and other IP violations, and encouraged brands to make use of the tools available, including new tools based on machine learning and image recognition.

The day concluded with a Champagne Reception and Dinner in the hotel. The conference continues today (8 November).

Posted by: Blog Administrator @ 06.57
Tags: Luxury Brands, OMD, Pietro Ruffo, ,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4805

USPTO’s proposed trade mark fee increase

By Michael Leonard, Co-Chair of the MARQUES International Trade Mark Law and Practice Team

In August 2019, the U.S. Patent and Trademark Office (USPTO) proposed an increase in the amount of many trade mark-related fees. According to the USPTO, the purposes of the fee increase are to:

  • Improve the accuracy of the Register and proof of use.
  • Address changes in filing behaviour that could result in fewer post registration filings.
  • Ensure sufficient aggregate revenue to recover aggregate cost of trade mark operations in future years (based on current projections).
  • More closely align fee rates to recover more of the cost of appeal and trial proceedings which are increasing.

The most notable of the proposed fee increases are shown in the table below.

Description (fees for electronic filings only)

Current ($) Proposed ($)
Filing a TEAS Reduced Fee (RF) Application through TEAS, per Class 275 350
Filing a TEAS Plus Application through TEAS, per Class 225 250
Filing a Section 8 or 71 Declaration of Use, per Class 125 225
Deletion of Goods or Services as a Result of a Post Registration Audit, per Good or Service Deleted 0 100
Filing a Petition to Cancel or Notice of Opposition, per Class 400 600
Notice of Appeal Fee, per Class 200 400
Filing a Request for an Extension of Time to File a Notice of Opposition (90-day extension) 100 200
Filing a Request for an Extension of Time to File a Notice of Opposition (consented 60-day extension) 200 400
Filing a Request for Suspension and Remand, per Application 0 400
Fee for filing a Letter of Protest 0 100
Petitions to the Director 100 250
Request for Reconsideration, Prior to Appeal 0 400

Negative comments

An initial public comment period concluded on 30 September 2019. The USPTO received hundreds of mostly negative comments from the public, law firms and various organizations. Many individuals and owners of small businesses objected to the nature and extent of the fee increases.

During a hearing held on 23 September 2019, individuals speaking on behalf of AIPLA, INTA, IPO and two US law firms challenged the basis for several of the fee increases, which appear to be excessive when compared to the Trademark Office actual cost for undertaking a specific activity (referred to as a unit cost).

For example, one speaker pointed out that the proposed increase of the Section 8 and Section 71 declaration of use fees from $125 to $225 per class is an 80% increase. However, the unit cost for the USPTO to process a Section 8 Declaration of Use is only $108. (Strangely, despite being essentially the same filing, the USPTO reports that the unit cost for a Section 71 declaration of use is $30.) Thus, the question was raised as to the basis for an 80% increase when the cost of the activity is already below, or in the case of a Section 71 Declaration, well below the current fee.

Implications for MARQUES members

For MARQUES members, a key fee proposal to be aware of is the $100 fee per item for deletion of a good/service after the issuance of an audit. As members may be aware, in 2016 the USPTO initiated a “random” audit of up to 10% of all declaration of use and/or renewal application filings in an effort to ensure that owners are able to prove use of a mark on each and every good and/or service claimed to be in current use as part of such a filing.

If the present fee increase is approved in its entirety, this new rule will force members to potentially pay extensive fees if they are not truthful/diligent when attesting to the scope of the current use of a mark. For example, if a registration reciting goods described as “clothing, namely, dresses, skirts, shirts, underwear, shorts, socks, jeans, t-shirts, bras, girdles, night shirts and leggings” is selected for a random audit and the owner can only show use of the mark on underwear, bras and nightshirts, the owner would be forced to pay a fee of $900 for the deletion of the goods described as “dresses, skirts, shirts, shorts, socks, jeans, t-shirts, girdles and leggings”. As one can see, this potential fee increase could prove quite expensive to owners of registrations who are not careful/truthful when attesting to the scope of a mark’s current use in the United States.

What happens next

The USPTO and the TPAC (Trademark Public Advisory Committee) are now evaluating the written comments and the hearing testimony and will soon issue a written summary of the findings. The final proposed fees will then be published in the Federal Register in March/April 2020. After publication in the Federal Register, a final formal commenting period will be provided to the public.

Any approved fee increases are expected to take effect in August 2020. From the perspective of this MARQUES member, it is hoped that the concerns raised thus far, by the public and practitioners alike, will be taken into serious consideration and many of the proposed fee increases will be reduced.

Michael Leonard is a partner of Fox Rothschild LLP and Co-Chair of the MARQUES International TradeMark Law and Practice Team


Posted by: Blog Administrator @ 16.29
Tags: USPTO, fees, TEAS,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4804

World Intellectual Property Report to examine the geography of innovation

The next edition of WIPO’s World Intellectual Property Report (WIPR) will be launched on 12 November 2019.

The theme of the 2019 report is “The Geography of Innovation – Local Hotspots, Global Networks” and it will look at where innovation is taking place in the world based on analysis of patents and scientific publications.

The launch will take place in Geneva starting at 3pm local time. To register to attend the event, or join the webcast, visit the dedicated page on WIPO’s website.

The event will include remarks by WIPO Director General Francis Gurry and Chief Economist Carsten Fink followed by a panel discussion featuring Ms Silke Reinhold, Head of Electronics and Mobility Patents and Design Rights, Volkswagen AG, Germany; Prof AnnaLee Saxenian, Dean, School of Information, University of California at Berkeley, United States of America; and Prof Jie Tang, Harbin Institute of Technology and Former Vice-Mayor, Shenzhen, China.

The WIPR is published every two years and is the Organization’s flagship analytical report.

WIPI report published

Separately, WIPO recently published its annual World Intellectual Property Indicators (WIPI) report, with data on patent, trade mark, design and GI filing trends in 2018 based on information from IP offices.

Among the key findings were that trade mark applications worldwide grew 15.5% in 2018, measured by the number of classes specified, while the number of designs filed increased by 5.7%.

An estimated 10.9 million trade mark applications covering 14.3 million classes were filed worldwide in 2018. The number of classes specified grew for the ninth consecutive year. China’s IP office led the way, with a class count of around 7.4 million. Other offices with notable growth included those of Indonesia, India, the Republic of Korea and the UK.

There were an estimated 1 million industrial design applications filed containing 1.3 million designs. China’s IP office again led the world, followed by the EUIPO and the offices of the Republic of Korea, the US and Germany. The biggest growth was in the UK office.

The report also found that there were around 65,900 geographical indications in force in 2018, with Germany having the largest number followed by China, Hungary and the Czech Republic.

Read the full WIPI report, and download the charts, here.

Posted by: Blog Administrator @ 01.05
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4803

Warning over use of “Black Friday” or “Cyber Monday” in the Turkish market

The registrability of “Black Friday”, which refers to the famous sales-day in the US on the day after Thanksgiving, has been discussed in Europe for a while. In a guest post for Class 46, Yasemin Aktas provides a perspective from Turkey.

In a case is in Germany, Hong-Kong based Super Union Holdings Ltd registered “Black Friday” in 2016. It started to try to prevent its use by other retailers in Germany and offered them expensive licensing deals. Some companies including PayPal, Puma and Designer Outlet started invalidity proceedings against the registration before the German Patent and Trademark Office which ended with invalidation of the mark due to lacking distinctiveness and becoming colloquial in Germany in 2013.

The registrant appealed the decision before the German Federal Patent Court and at the last hearing, the judges decided to search for the German average consumer’s understanding of “Black Friday” on the filing date of the application (which is in 2013) to make the distinctiveness evaluation. Plus, they declared that the cited search and the distinctiveness examination need to be made for each branch separately. The Court will now make these detailed searches and evaluations to issue its verdict.

Situation in Turkey

In Turkey, the registrability of “Black Friday” has never been discussed by the courts according to our knowledge. However, this term has been registered by some local persons before the Turkish Patent Office a few times and on top of that one of them (trade mark registration number 2011 116299) covers retail sale services for almost all goods in Nice classes 01 to 34 from electronics to clothing and from cosmetics to household goods, although the others do not.

In recent years, the use of “Black Friday” for sale campaigns in the last week of November became very popular in Turkey and many local and foreign retailers have been using it actively. This registrant has not taken any actions against these users yet that does not mean that he would never do it.  

In a potential infringement action, the registrant may claim determination, prevention and cessation of the infringement, removal and destruction of infringing products and materials and claim for material and moral damages.

Defensive options

According to the Turkish IP Code, a trade mark registration gives absolute rights to its owner until it is invalidated, but the invalidity applies retrospectively with a few exceptions not concerning pending infringement claims. Thus, the first defence option that the retailers would have against the infringement claims would be to claim invalidation of the mark as a counter action. In such a case, examination and conclusion of the invalidation claims would be made a prejudicial question for examination of the infringement claims and the infringement claims would remain baseless if the mark is invalidated in the end.

What else the retailers can do would be to launch a non-use defence against the infringement claims, since the five years’ grace period for compulsory use of the cited mark has expired in 2018. If the registrant cannot prove the use of its mark for any branches, his infringement claims would be refused for them without being examined. They can also claim non-use cancellation of the mark, yet this claim would not be a defence option, since non-use cancellation decisions are not retroactive.

Additionally, the retailers may argue that Turkish customers would never consider “Black Friday” as a reference to the source of the products (as a mark), but as a name of the famous sale campaign in these days. Therefore, they may claim that use of “Black Friday” on the sale campaigns does not constitute trade mark infringement.

However, the Turkish IP courts usually tend to protect registered marks against their identical use on the same/similar goods/services regardless of the distinctiveness level of the mark on its filing date or on the filing date of the infringement action.

Moreover, the filing date of the Black Friday registration was in 2011 when the US sales campaigns were not commonly known by Turkish customers. That favours the registrant in both infringement and counter invalidation claims in our opinion.

Still, in our view, the lack of distinctiveness of the mark on the allegedly infringing use date would be a very strong defence against the potential compensation claims of the registrant. Likewise, the claim that “Black Friday” has become generic and is now known as a name of famous sales campaign by the Turkish customers would be a considerable invalidation argument.

Risks explained

These risks apply to use of “Cyber Monday” which refers to the Monday following the US holiday of Thanksgiving as well. It has been registered before the Turkish Patent Office by a local person since 2015 (number 2015/00953) as “CyberMonday” on various goods/services in Nice classes 16, 18, 25 and 35 including retail sale services for clothing. Moreover, the five years’ grace period for compulsory use of this mark has not expired and a non-use defence would not be an option against any infringement claims by this registrant until the expiration date in 2021.

Turkish practitioners are being asked about the potential risks of using “Black Friday” or “Cyber Monday” in Turkey. Retailers are advised to consider the risk of being subject to infringement claims before using them, until some challenge these registrations.

Yasemin Aktas is a partner of OFO VENTURA and a member of MARQUES

Posted by: Blog Administrator @ 02.27
Tags: Black Friday, Cyber Monday,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4802

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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