Category Archives: EU Trademark

Microsoft forced to rebrand following BskyB’s trademark triumph

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RegisteredTrademark_jpgMicrosoft has renamed its cloud storage service SkyDrive to OneDrive following a trademark infringement dispute with BSkyB, as discussed previously on our Azrights blog.

The broadcaster first issued a complaint to the EU’s trademark office in June 2011, insisting Microsoft’s use of the word “sky” infringed its copyright.

Microsoft released SkyDrive, formerly known as Windows Live Folders and Windows Live SkyDrive, in 2007. The service has since acquired in excess of 250 million users.

While BskyB ceased its own cloud storage service at the end of 2011, it said Microsoft’s product was misleading for users of its continuing digital services, such as Sky Broadband and Sky Go.

Microsoft argued it was difficult to mistake its own cloud-based services with BskyB’s satellite, mobile and online services. However, a UK High Court ruling last summer held Microsoft would need to rename its product.

In arriving at the decision, the judge noted that customers experiencing problems with Microsoft’s SkyDrive had often called BskyB’s helpline, mistakenly believing it was responsible for providing the service.

Microsoft initially threatened to appeal the decision, but later backed down after the companies reached a settlement permitting the US computer giant a “reasonable period of time to allow for an orderly transition to a new brand,” as reported by Computer Weekly.

The rebrand has now taken place, but for Microsoft this case is all too reminiscent of its earlier dispute with Gernany’s Metro AG, which pushed the company to rename its Windows 8 Metro interface shortly after establishing itself as a household name.  Microsoft also risked losing the right to trademark Windows due its delay in trademarking the name.  Clearly, the company needs to make some changes to its practices.

Trademarks are important assets which add significant value to a brand. The lesson to take away from this case is the importance of checking that you can use a name before you launch a new product. It is so much easier to find a new name at that stage if your preferred one is problematic.

Then once a name has been identified as available, secure trademark registration in your main market straight away. It is not necessarily commercial at that stage to register in all other countries worldwide. However, if the product is successful, it’s important to have a strategy in place for registering in other markets over time to sustain the value of your brand identity. This is all too apparent following the recent European Trademark Office’s ruling that Pinterest doesn’t own rights to its name.

Protecting the Shire: Fry and McKellen step in to save the Hobbit

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Some may see it as unwarranted bullying, while others say it is to be expected.  Either way, the publicity arising from recent allegations of IP infringement have certainly thrown The Hobbit pub in Southampton firmly into the limelight.  The Saul Zaentz Company, owners of rights to the Hobbit and Lord of the Rings brands, among other JTT Tolkien work, have taken action against small business owners in the past, such as in November of last year where their lawyers argued that the Hungry Hobbit cafe took unfair advantage of the Hobbit trade mark.

While the cafe is reportedly considering a change of name, the pub, which sells Frodo and Gandalf cocktails, has received overwhelming support not only from the online commuity, but from actors involved in the upcoming Hobbit film. A Facebook campaign has rallied the support of 60,000 Facebook users (Save the Hobbit, Southampton), and actors Stephen Fry and Sir Ian McKellen have even agreed to pay licence fees on behalf of the pub to settle the dispute.

When issues like this capture the imagination of the public, the results can be surprising, I’m sure that SZC were not expecting such a backlash.  More so than any marketing or education by businesses in the field, these disputes serve to increase public awareness of IP issues crucial to businesses worldwide.  Taking advantage of the public interest, a group of Tolkien enthusiasts have now also begun a campaign against exclusive rights in the word Shire, encouraging visitors to their website to proudly showcase a Save the Shire poster.  It will be interesting to see how much momentum they are able to generate.

Microsoft En-Trench-ed In Trade Mark Tussle

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Trenched, a video game developed by Double Fine and produced by Microsoft, has had its European release date set back, potentially indefinitely, following a dispute over the name.

The European Community Trademark TRENCH, filed in 2009 by the board game designer Rui Alipio Monteiro, is registered against both board games and computer games. The designer also invested in registration of a number of designs, protecting aesthetic aspects of the board game.

Perhaps as a result of poor due diligence, Trenched the video game was announced in March, and released by Microsoft and Double Fine on the Xbox Live Arcade in North America on June 22, without cooperation from Monteiro who now appears set to fight Microsoft for exclusive use of the brand.

Speaking about the dispute to Eurogamer, the Portuguese company Criações a Solo explained that they intend to “defend all their author’s copyright and intellectual property against any infringements”, and stated their goal as “putting Trench in the international Hall of Fame of both classic electronic and board games”.

Double Fine’s Trenched not only shares elements of its name with Monteiro’s board game – they are both military-themed, and set in or around the time of WW1. Double Fine designer Brad Muir told Destructoid ‘This entire process has been very frustrating to us and it makes us sad that the people of Europe can’t play our game. Microsoft owns the IP for Trenched and they are working to resolve things as quickly as possible’.

Mark Methenitis at Joystiq offers some explanation of complications with the position in the US – namely that both the application for the logo shown here on the left, and Microsoft’s application for the mark TRENCHED, have so far been filed as intentions to use. This means that it might be some time before either are granted, however, should Monteiro’s application succeed, his rights will extend back to June 2010, nearly a year before Microsoft filed their own applicatio. In that case, an important question will be whether Microsoft’s use of the word mark TRENCHED could be confused with the Trench logo.

Some cite their investment in marketing as motivation for sticking to their guns, and it will be interesting to see whether Microsoft and Double Fine can come to some arrangement for coexistence with the board game designer or whether they will dispute the scope of their rights.

Alternatively, it is possible that media attention (such as this blog post) generated by the dispute might create enough buzz to offset the loss of investment in marketing should Microsoft persuade Double Fine to re-brand.

In the meantime, Microsoft’s line is:

‘We don’t have an update on the distribution of Trenched in Europe yet… We’re working to resolve the matter as soon as possible and will keep you posted’

Irrespective of the eventual outcome, this dispute is another very public example highlighting the importance of early clearance of brand names; and in particular international trade mark searching when products or services will be sold abroad.

ELIO FIORUCCI – Owning own name?

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In our earlier blog piece Fashion Industry. Fiorucci. Use of own name we wrote about Mr Fiorucci, a fashion designer who had achieved certain renown in Italy during the 1970s.  This is an update on the progress of that case, which has made its way from OHIM, through the Board of Appeal, to the General Court and eventually landed in the European Court of Justice, which recently rendered its decision.

In 1990, due to some cash problems, he sold his company, Fiorucci SpA, to Edwin Co. Ltd, a Japanese Multinational, along with its entire creative assets including all the trademarks it owned and “all the rights exclusively to use the designation ‘FIORUCCI’”.                   

Subsequently, Edwin registered as an EU word mark the name ELIO  FIORUCCI.  However in 2003, Mr Fiorucci brought an action to invalidate this registration on the grounds of his right to the name under a national law. The Cancellation Division duly declared the ELIO FIORUCCI community trademark invalid holding that Elio Fiorucci had an earlier right under Italian laws.  These laws stipulated that well known personal names may be registered as a trade mark only by, or with the consent of that person. In this case, the ELIO FIORUCCI mark had been well known, and no such consent had been given.

That decision was then annulled by the Board of Appeal, who held that his situation did not fall within the scope of the Italian regulations, which were designed to prevent third parties from exploiting for commercial purposes the name of a person who had become well known for non-commercial activities. As Mr Fiorucci’s name was renowned as a result of commercial activity the Board found that the rule did not apply.

Fiorucci took the case to the General Court, hoping to have this decision set aside, and the registration revoked or declared invalid. The Court refused to revoke the registration on the basis that it was likely to mislead consumers. However, it did reject the Board’s view that the situation fell outside the scope of the Italian regulations, on the basis that the wording of the national law does not require renown to derive from non-entrepreneurial activity. The effect was merely to set aside the decision of the Board of Appeal, and leave standing the Cancellation Division’s declaration of invalidity.

The General Court’s interpretation of this national law has now been upheld by the European Court of Justice following appeal by Edwin. The ECJ rejected Edwin’s argument that the right to a name under the Italian law was limited to its protection as an attribute of personality, holding that the provision may be relied upon as a right to commercial exploitation of a name.

It is interesting to note that Elio’s case might have reached a different outcome if the Board of Appeal had examined Edwin’s argument that they were assigned trademark rights in the name ELIO  FIORUCCI.  As the Board did not do so, the ECJ found that the General Court was correct in not dealing with this question, as it was not within the Court’s power to substitute its own reasoning on issues where the Board of Appeal had not adopted a position.

Important points to take away from this case include:

  1. The holder of rights to a name is entitled to prevent its use as a Community trade mark where national law so permits.
  2. If there is to be an assignment of trademark rights in some elements of a personal name, like in Elio’s case (FIORUCCI), then the extent of that assignment should be made very clear, for example whether the assignment extends to the full name of that person.
  3. Provided that the essential function of a trademark is maintained (i.e. to guarantee the nature, quality or origin of goods or services), and there is no likelihood of deceiving consumers, then an individual is unlikely to succeed in securing revocation of a trademark for their personal name which was assigned earlier to another business now owning the mark.

Country Names and Trade Marks

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Is it possible to register a country name as a trade mark? For example, would you be able to register a country name  like JAMAICA as a trade mark?

Does it make any difference which goods or services you provide? What if you wanted to register JAMAICA for jerk chicken spicy sauce or rum beverages?

These are questions that can come up if you choose a country name as your trade mark.

The trade mark Act at Section 3(1) (c) prohibits the registration of marks designating geographical origin.

A country name would, on first view, appear to be prohibited from registration.

However, where the geographical significance of the country name can be displaced then a trade mark may be registered.

This might happen through either extensive use of the mark or by conceptual disassociation.

Regarding extensive use, customers using the ICELAND store do not think that the goods come from Iceland as a country, therefore, the geographical origin of the name ICELAND in this case is displaced.

Regarding disassociation, where there is no possibility of the place name indicating geographical origin, such as NORTH POLE for bananas, the geographical significance is displaced.

It is notable that JAMAICA is already on the Madrid Protocol register in class 3 and 42  and on the EU register in class 3.

These were for soap and other beauty products and are owned by Procter & Gamble.

A JAMAICA registration was refused a Madrid application in 2006. This was for alcoholic drinks and fruit juices.

These examples show a potential trend whereby the Registry has to take a view as to whether the goods and services indicate geographical origin for a specific country name.

In other words, examiners use their discretion to decide which products are famously associated with a country name.

In the first example, the examiner decided the country Jamaica is not well known for its cosmetics therefore the geographical significance of the name may be displaced. Essentially, the general public will not think that the cosmetics come from Jamaica.

However, Jamaica is famous for its rum, so it is possible that the refusal of JAMAICA for alcoholic drinks was linked to the public thinking that the trade mark JAMAICA for alcohol would communicate that the products come from the country itself.

Following this line of reasoning it would be hard to see a trade mark application for GERMANY for sausages or FRANCE for wine or UNITED STATES for burgers succeeding.

It may also be the case that the reason JAMAICA succeeded for Procter & Gamble was through showing extensive use in the same way that ICELAND (the supermarket) did.

So if you are thinking about registering a country name as a trade mark consider whether you have  extensive use of the trade mark and whether, in the eyes of the public, your goods and services could be disassociated with the country name.  Also bear in mind that if you need wider international registrations, approaches may vary amongst registry offices and according to national laws.  This could therefore add to the costs of registration.

Lindt’s chocolate rabbit registrable as a trade mark?

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The chocolate maker Lindt & Sprüngli AG (“Lindt”) has distributed chocolate Easter rabbits wrapped in gold foil and wearing a red ribbon around their necks and a small bell for many years. In order to protect the shape of this rabbit the Swiss manufacturer of premium chocolate filed for 4 applications to register three-dimensional signs as Community trade marks in 2004 and 2005. However, the European Court recently ruled that the shape of Lindt’s chocolate rabbits is not capable of being protected by trade marks.

Capable of distinguishing

The distinctiveness of a trade mark is a key requirement for trade mark registration. Only if the sign, (such as words, designs, the shape of goods and their packaging) is capable of distinguishing goods or services as originating from a particular source will a trade mark be granted. When considering the distinctiveness of a sign it is necessary to focus on what the average consumer of goods and services in question would regard as distinctive. According to the European Court such distinctive character was not met by Lindt’s trade mark applications.

The European Court’s reasoning was this: a rabbit is a shape in which chocolate and chocolate goods are usually presented at Easter and therefore, a rabbit is a common, non distinctiveness sign.

The Court thought that the consumer would not be able to know the commercial origin of chocolate rabbits purely by reference to the various elements making up Lindt’s trade mark applications, namely the shape, the gold wrapping or the red ribbon. It said that there are many different chocolate rabbits available on the market, and consumers would consider the Lindt rabbit as a further shape of a chocolate rabbit offered during Easter. The ribbon as well as the small bell is only a decorative feature which are not protectable under a registered trade mark. For these reasons the European Court refused the trade mark for Lindt’s chocolate rabbits.

No trade mark protection for chocolate rabbits?

This does not mean there is no trade mark protection at all for Lindt. In fact Lindt is, inter alia, the trade mark owner of a German three-dimensional registered trade mark which protects the shape of the respective rabbits. In contrast to the Community trade mark application the German trade mark was granted by the German Patent and Trademark Office without any difficulty. Moreover, the German Federal Supreme Court assumed the distinctiveness of Lindt’s three-dimensional trade mark in a trade mark dispute from 2010.

National or community trade mark application

As the Lindt case highlights it can make a difference whether a business files for protection of its mark as a Community Trade Mark or as a national trade mark. Although, the registration requirements are supposed to be equivalent due to the harmonization process in Europe the application of the laws, can often lead to different results. Therefore, companies trading only in one or two European countries should consider registering national trade marks rather than a Community trade mark, in particular if the registration is more likely to succeed in the national registers. This case also underlines that trade mark registrations are never black and white and there are often surprises during the application process.

EU Trade Marks

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A Community Trade Mark covers the whole European Union. If you do business in the EU, it is worth considering applying for a CTM as it is a cost effective solution providing protection in all 27 member states of the European Union.

EU Trade Mark Search

The process of registering a CTM is much the same as the process for applying for a UK trade mark.  However, as a national registration from any of the 27 countries is able to block a CTM application there is more risk of the application failing.  One way to understand the risks before you apply, is to have a wider search covering not just the CTM register but also various individual country registers within the EU. Our Standard and Enterprise searches cover most of the EU national registers (for details see our trademark search options page).

This means if you find that someone has registered a trade mark in France, then if you apply for an EU trade mark, they may  object to your application if they considered your mark to be similar to their registered trade mark. So the more comprehensive a search you have of the national registers the lower the risk of a failed application.

If from your search you discover other registrations and your chosen name is not available for you to use, knowing this will save you wasting money on company formations, domains and the cost of an opposition to your mark.  So, it always makes sense to check the trade mark registers first.

Value for money

The Community Trade Mark is valid for 10 years and can be renewed.

The fees paid to the EU registry office are higher than for a UK  trade mark registration but this is perfectly reasonable if you bear in mind that the scope of the CTM registration covers 27 countries.  So, based on the official fees are 900 Euros this represents around 35 Euros per country.

The CTM has been described as being “central to virtually every European branding decision for virtually every type of business from virtually every country in the world”; therefore it is impossible to ignore its usefulness.