Category Archives: trademark opposition

Trademark protection of pantone 2685c not wrapped up by Cadbury

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Image for Blog Post - Cadbury

Securing trademark protection for colours is notoriously difficult, as demonstrated by the recent Court of Appeal ruling in the litigation between Cadbury and Nestlé, concerning the trademark registration of pantone 2685c.

Nestlé v. Cadbury

In 1914, as a tribute to Queen Victoria, whose favourite colour was purple, Cadbury started to use the shade of purple known as pantone 2685c on its packaging, and it has done so ever since. In October 2004 Cadbury applied for trademark protection of this shade of purple for all chocolate goods. In 2008 Nestlé opposed the registration. After three years of proceedings between the parties the case went through to a hearing. Five months later, in December 2011, a final decision was made by the Hearing Officer, who concluded that the colour was capable of being registered. Nestlé subsequently appealed this decision. In May 2012, the High Court ruled in favour of Cadbury but limited the trademark protection to chocolate bars and chocolate drinks. See our previous blog post (Can You Trademark A Colour? Cadbury Secures The Rights To The Colour Purple) for further details. In its ruling of 4 October 2013 the Court of Appeal overturned the decision of the High Court.

Three Court of Appeal Judges found that the trademark lacked “specificity, clarity and precision of visual appearance”, and therefore to allow the trademark to be registered would, they said, “offend against the principle of certainty and the principle of fairness by giving a competitive edge to Cadbury and by putting Nestlé and its competitors at a disadvantage”. The reason for this decision was that the wording Cadbury had used to describe the colour was ambiguous. Cadbury described the colour in its application for trademark protection as: “the colour purple (Pantone 2685c) …. applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods“. It was the use of the word ‘predominant’ within this description that led to the Judges determining that the trademark lacked clarity, as it “opened the door to a multitude of different visual forms”. Cadbury argued that the word ‘predominant’ meant that the colour covered more than 50% of the surface area in question and Sir Timothy Lloyd did suggest that “if Cadbury had spelled this out in their registration it may have been possible to achieve certainty”.

Cadbury have indicated that they may appeal this decision. If they do appeal, the case will most likely be heard by the European Court of Justice. It will certainly be interesting to see what happens next.

It is important to remember that this decision does not mean that Cadbury cannot pursue anyone who now launches a range of chocolate bars and goods packaged within the same or similar shade of purple. They still have the right to bring a passing off claim against anyone who tries to misrepresent their goods as Cadburys.

Trademark protection for colours

To register a trademark, whether it is a word, logo, colour or shape, the applicant must show that the trademark is a sign, can be graphically represented and is capable of being distinguished from other trademarks. As this case demonstrates, it is difficult to secure trademark protection for a colour due to the requirement that the trademark must be graphically represented in a clear and unambiguous manner. Although difficult, it is not impossible to trademark a colour and many companies have managed to do so. For example, Tiffany’s have registered pantone 1837, better known as Tiffany Blue, for boxes, shopping bags and the cover of catalogues, and Heinz have secured trademark protection for the distinctive turquoise colour found on the packaging of its baked beans.

What can we learn?

It is important to ensure that when you register a trademark your application is clear, precise, durable and unambiguous. We must learn from the mistakes made by Cadbury in their application to register pantone 2685c.

Trademark law can be complex, especially if you are trying to register a colour or shape. Professional advice is essential, as trademark lawyers can help draft your application to ensure that it meets the necessary requirements, giving you a better chance of securing trademark protection. This is particularly important with UK trademark applications as the IPO appears to be taking an increasingly tough stance when determining what is and is not capable of registration.

UGG Trademark Disputes

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Trademarks are territorial, which means you register them country by country wherever you do business. Although this is can be expensive, and it may be tempting when starting out, to think it’s easy enough, in theory, to trade in other countries under a different brand, UGG is an example of what can happen when a trademark is not available to a business internationally.

TMRBoots known as UGGS are worn around the world particularly in rural locations. The term UGG for this specific type of sheepskin boot has been used in Australia since the 1950’s and now many consumers believe the boots are from Australia.

The term UGG-BOOT was registered in 1971 in Australia, but then lapsed as it was not used. Then in 1999 the American outdoor company Deckers registered the word mark UGG AUSTRALIA. Celebrities began to wear the boots and by the early 2000’s the boot became popular and sought after all over the world. As a result Deckers became more protective of the brand and began issuing legal threats against companies in Australia who were using terms similar to UGG such as UGH.

In 2006 a competitor of Deckers, UGG-N-RUGS successfully applied to remove UG, UGG and UGH Boots from the Australian Trademarks register on the grounds that the term was generic and descriptive of a specific type of sheepskin boot in Australia.

Deckers still has its trademarks in the EU and the US However, in Australia the company  aroused much controversy over the question whether the name is a brand name or a geographical indicator for a type of boot., and as mentioned Deckers lost its trademark there.  The fact that Deckers is still a registered trademark outside Australia means that competitors cannot market their boots as UGGs in the EU and USA. Instead they have to use terms like Australian Sheepskin boots to describe the boots.

Competitors are trying to change UGG into more of a regional mark like Champagne and want consumers to associate UGGs with a particular type of sheepskin boot made in Australia and not a trademark which indicates they are made by Deckers. In response, Deckers is focusing on the fact that its UGG boots are made in China and not Australia.

The fact that the UGG trademark has been revoked in Australia but is still registered in the EU and the US presents Deckers with serious challenges.

It is difficult for Deckers to tackle the companies selling UGG boots from Australia on the internet as I found out when I tried to buy a pair of UGG boots for my daughter back in 2009. As I wrote on the Azrights IP Brands blog that’s when I became aware that UGG is not a trademark in Australia and Deckers can’t stop vendors from Australia labelling their boots as UGGs within Australia. It is notoriously difficult to prevent sales online from entering the EU or American markets once to reach  consumers in these markets. This is despite the fact that many of them are likely to have bought the boots online believing them to be the genuine article, and not from some Australian boot company producing a lower quality boot.

Arguably, Deckers could do more to prevent consumers from being confused. For example, they could rebrand so as to remove the word Australia, especially given that its UGG boots are in fact made in China. It would be even better if the company were to change its brand to DECKERS UGG.

Deckers would benefit from taking swift action to prevent confusion in the market place, and to ensure the name UGGs is associated with its own quality products. The importance of educating the public about its boots so people are not duped into buying UGG boots from Australia when what they’re actually looking for are branded UGG Australia boots from Deckers can’t be overstated. What do you think? Have you had any experiences buying UGG boots? Let us know by leaving a comment below.

Hasbro Trade Mark Infringement Claim Stops Launch

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Alleged infringement of the TRANSFORMERS trade mark recently sparked a dispute between the leading computer technology company Asus and Hasbro, a multinational games business.

Hasbro is the maker of a line of toy alien robots named Transformers, able to disguise themselves as automobiles. The Transformers universe features two warring factions of these robots: the Autobots and the Decepticons. First introduced in 1984 the robots have, in the course of nearly thirty years, spawned comic books, animated TV series and a live-action movie franchise.

Filing suit for trade mark infringement, Hasbro alleges that Asus’ release of the Transformer Prime laptop takes advantage of the trade mark in order to make money, a representative stating that ‘Hasbro continues to aggressively protect its brands and products and the specific actions we are taking today against Asus underscores yet again Hasbro’s willingness to pursue companies who misappropriate our intellectual property for their own financial gain.’

So, why is a toy company concerned about a consumer electronics business using the word TRANSFORMERS?  After all, there seems to have been no quarrel between Hasbro and Boots over registration of TRANSFORMERS for cosmetics. How likely are consumers to be confused into linking Asus to the Autobots?  Tablet devices and toys do seem quite far removed from each other.  However, the combination of TRANSFORMER and PRIME does offer some support to Hasbro’s case as discussed below.

Asus has used the word TRANSFORMER when naming its products in the past, releasing the Eee Pad Transformer tablet device at the beginning of January. However, this time round the addition of the word ‘Prime’ has given rise to suspicion, as the leader of one of the robot factions is a character called ‘Optimus Prime’. Hasbro is not sure that this is just a coincidence.

Included in Hasbro’s trade mark portfolio are registrations and applications for the trade mark TRANSFORMERS PRIME in various jurisdictions.  While not yet registered in the US, Hasbro does own UK and European registrations for these words, originally filed in June 2010.  TRANSFORMERS PRIME is clearly a much closer match than just TRANSFORMERS, but is not registered against tablet devices.  It remains to be seen whether the notoriety of the TRANSFORMERS brand will tip the case in Hasbro’s favour despite differences in the goods sold under the mark.

Techweek draws a parallel between the tablet and the robots, noting that ‘the major selling point of the Asus Transformer Prime is that it converts [transforms?] into a form that closely resembles a laptop when the keyboard dock is used’, so mimicking the Transformers’ ability to disguise themselves as vehicles.  Still, the word ‘transformer’ is somewhat descriptive in this context, arguably referencing the functionality of the product rather than ripping off the robot franchise.  Dailytech further observes that ‘The Transformer Prime doesn’t convert into a truck, and the Transformer toys don’t offer the Android operating system with apps and Web-browsing capabilities.’

Asus claims that internal studies have shown ‘no issues’ with its use of the Transformer brand indicating an intention to stick with the name, but if Hasbro has its way it could be some time before the tablet reaches consumers.

Twitter goes for TWEET!

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We have written previously on this topic about Twitter’s bid to protect its trade mark and brand.  As Twitter co-founder Biz Stone said in a blog post in 2009,

“We have applied to trademark TWEET because it is clearly attached to Twitter from a brand perspective but we have no intention of “going after” the wonderful applications and services that use the word in their name when associated with Twitter. In fact, we encourage the use of the word TWEET”.

Ironically, their application was refused by the United States Patent and Trademark Office (‘USPTO’) in April 2009 and again in March 2011 due to the existence of the mark “LET YOUR AD MEET TWEETS” registered by an online advertising service provider called Twittad.

Now, Twitter has finally decided to sue the third party developer over the use of the word “TWEET” in Twittad’s trademark – “LET YOUR AD MEET TWEETS”.  The mark was applied for back in July 2008, thereby blocking Twitter’s own application to trade mark the word TWEET.  So, Twitter now wants to own the mark.  It believes it has more legitimate right to use the mark TWEET.  Its legal filing says “The defendant’s registration unfairly exploits the widespread association by the consuming public of the mark ‘TWEET’ with Twitter and threatens to block Twitter from its registration and legitimate uses of its own mark.”

Twitter contends that Twittad has used the strap line ‘LET YOUR AD MEET TWEETS’ solely as a generic phrase in advertising itself in connection with Twitter. Therefore it is not a trade mark within the meaning of trade mark law and thus, renders the mark subject to cancellation. Alternatively, they contend, even if Twittad is successful in establishing the strap line as a mark, then the mark should be cancelled due to Twitter’s pre-existing rights in the mark.

Twitter comments, “Twitter’s organic growth has taken many forms, including a widespread, dictionary-documented association of the word ‘TWEET’ with the use of Twitter. It is in the best interests of our users and developers for the meaning of ‘TWEET’ to be preserved to prevent any confusion, so we are taking action to protect its meaning.”

On the other hand, Twittad founder James Eliason said “We firmly stand by our position of the legitimacy of the trademark due to the fact that our mark was cleared by the Trademark office in 2008.”

Twitter already owns trade marks ‘COTWEET’ and ‘RETWEET’, however, in this case they were beaten by the third party developer Twittad who filed their trade mark application for the mark ‘TWEET’ earlier than them.

Twitter is not only determined to defend its brand name in the trade mark area, but also to third party app developers using Twitter site to aid their businesses. Generally, in such cases, Twitter either acquires these applications or suspends their use on its site. For example, Twitter has acquired TweetDeck, an application for organizing the display of tweets, for more than $40 million.

In the meantime, Twitter has suspended the twitter account of Twittad.


An Innocent Breach of Trademark

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Innocent Drinks, the UK market leader in smoothie products, has recently taken issue with a trademark application made by Dawn Reid and her Sussex based company Innocent Vitamins. The latter applied, in February 2011, to register the mark “innocent vitamins all goodness. no badness” for her food supplement products, a move which Innocent Drinks views as threatening to the goodwill of their Innocent brand developed over the last twelve years.

Innocent Vitamins versus Innocent Drinks

Concerned with the quality of existing food supplements aimed at children, Dawn Reid set up Innocent Vitamins to provide a “comprehensive, balanced range of vitamins and minerals” for 3-12 year olds. Subsequently, the product has been sold online and in various health stores.

When creating the company name, Mrs. Reid claims she did not foresee the possibility of any dispute with Innocent Drinks, believing that the two companies produced entirely different products. This was despite the remarkably similar branding and appearance of both businesses. Nevertheless, (and without it would seem, seeking legal advice) Mrs. Reid proceeded to roll out her product and build her own ‘Innocent’ brand.

Innocent Vitamins was thus already in a legally precarious position and, not surprisingly, Innocent Drinks have protested at their use, contacted Dawn Reid and informed her:

“It is not acceptable to have someone come along and start using our name, selling a health food-based product in supermarkets, which is so similar to our proposition”.

Likely Outcome of the Dispute

Once the trademark is advertised in the Trade Marks Journal oppositions can be formally filed with the IPO. This seems to be the likely path for this case given that Dawn Reid will likely reject Innocent Drinks’ low cost request to respectfully stop using their brand name by a set deadline. Rejecting this offer however is probably a poor decision on her part, and despite protesting that “…there are lots of companies called innocent”, it is difficult to imagine how the two brands are anything other than confusingly similar for consumers.

Indeed, as Richard Reed, co-founder of Innocent Drinks contends, since both products are sold in the same supermarkets, and the fact that Innocent Drinks have already received enquiries from customers under the impression that they are the manufacturer of the vitamins, a discernable confusion clearly exists in the minds of customers.

The position of Innocent Drinks is further strengthened by possessing such a well-established brand, and also holding earlier trademark registrations in other classes. Most importantly, however, the branding of both products appears ostensibly similar (for instance the font and lower-case text) as the IP Kat also points out.

Could this dispute have been avoided?

The case demonstrates the danger of building a brand around a name without giving due consideration to intellectual property issues. In the case of registering trademarks for your business, it is certainly one of “less haste more speed”.  Mrs. Reid would have done well to consult a legal expert early on, before having any branding work carried out.  A cross-class search of the trademark registers would, for example, have shown that class 5, the category for which she applied for a trademark is in a category likely to conflict with class 3, which is the class in which Innocent Drinks trademark was held.  At that early stage she might have had less invested in the name, and been more likely to be dissuaded from continuing with her proposed name.

Fashion Industry. FIORUCCI. USE of own name

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Nowadays the global fashion industry is a crucial sector of the economy with British fashion contributing almost £21bn to the UK economy.

Despite the fact that intellectual property is not generally enforced as it is within the film and music industries, trademarks have a significant role in the fashion industry.

Trademarks designate the origin of goods (such as clothes, hand bags or shoes) and distinguish them from those of competitors. Designers will commonly use their own names as trademarks – so we have names like Paul Smith, Calvin Klein, Donatella Versace and Fiona Swarovski, to name a few.

This can raise various problems when the designer whose name is a registered trademark decides to leave a company for which he or she has worked – for example by building up a business. What happens to the rights to use their own name when they transfer the business to a third party?

Elio Fiorucci v. Edwin Co. Ltd.

What can happen is illustrated in the court battle between Elio Fiorucci and Edwin Co Ltd. Elio Fiorucci, a well known Italian fashion designer in the 1970s, sold his business (the company Fiorucci) in the 1980s to Edwin Co. Ltd. a Japanese multinational, due to financial difficulties. Under the terms of the purchase agreement all trademarks, trademark applications and distinctive signs of the company Fiorucci were assigned to Edwin Co. Ltd.

Subsequently, in 1997 Edwin filed an application to register the word mark “ELIO FIORUCCI” as a Community trademark for, among other things, clothes. Elio responded by applying for a declaration that the application was invalid. A law suit which is still pending then ensued.

One question at issue concerns a provision in Italian law which prohibits the exploitation of names of famous people. The question is whether it prevents Edwin from exploiting the name FIORUCCI as it is a famous person’s name. No conclusive decisions have yet been reached.

Elizabeth Emanuel v. Elizabeth Emanuel International Ltd.

In the case of Elizabeth Emanuel the approach was slightly different. Ms Emanuel, together with her then husband, became famous for designing Lady Diana Spencer’s wedding dress.

The background to this case is that Ms Emanuel and another company formed the Elizabeth Emanuel Plc (EE Plc) in the 1990s. Ms Emanuel assigned to EE Plc her business of designing and selling clothes, including a trademark application for the word ELIZABETH EMANUEL which included a heraldic device and was registered in 1997.

Elizabeth Emanuel plc then transferred the business (goodwill and the now registered trademark) to Frostprint Ltd which went on to become Elizabeth Emanuel International Limited. The new company employed Ms Emanuel until she ceased working there one month later.

Shortly after, the registered trademark was assigned to Oakridge Trading Limited (Oakridge). Oakridge went on to file a new trademark application for just the word mark ELIZABETH EMANUEL and assigned its trademark rights to Continental Shelf 128 Ltd (CSL).

Ms Emanuel opposed this trademark application for ELIZABETH EMANUEL and also filed to revoke her earlier trademark registration on the basis that the public would be deceived and confused into thinking that she was in some way associated with CSL. However, the court did not agree with her and said the name ELIZABETH EMANUEL could not be regarded as likely to deceive the public as to the nature, quality or geographical origin of the products it designated. The Court said that even if customers may be influenced by linking the trademark ELIZABETH EMANUEL with Ms Emanuel this trademark is still connected with the undertaking which owns the trademark. Hence, the trademark was not revoked and Elizabeth Emanuel had to accept that a third party has the rights to use her name as a trademark.

Consequently, Ms Emanuel may use her own name to indicate that she is behind any business, but she cannot use her name as a trademark to designate the origin of her goods. She has to choose another mark to avoid any confusion with CSL. This means she loses the benefit of the name recognition she had generated for being the designer of Lady Diana Spencer’s wedding dress.

Lessons to learn

These cases highlight what it means on the one hand to transfer the trademark which protects one’s own personal name and on the other hand to acquire such a trademark. Businesses which act in this field should draft clear provisions in connection with the use of the trademark rights in future in order to avoid expensive and time consuming litigation.

But what can or should designers do to safeguard the rights in their own name? If designers need or want to keep using their name in business in future they should consider licensing the trademark rather than transferring all rights in it by assigning the registered trademark.  Obviously, if a designer is in financial difficulties there may be little bargaining power. Still it is worth trying to ask for a (back) license even if they do assign the rights over.

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.

Microsoft and Apple in ‘app store’ Trademark Registration Dispute

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Microsoft is contesting Apple’s attempt to trademark the name ‘App Store’, claiming that the name is too generic. In 2008 Apple applied to trademark this name for its iPhone, iPad and Mac download services. However, Microsoft has asked the US Patent and Trademark Office to reject this trademark, as the term is one that can be seen as being too descriptive to be eligible to be granted protection.

‘App Store’ as a Generic Term

Russel Panghorn, Microsoft’s associate general counsel explains why Microsoft has opposed Apple’s trademark application for this name, saying, “An ‘app store’ is an ‘app store’, like ‘shoe store’ or ‘toy store’, it is a generic term that is commonly used by companies, governments and individuals that offer apps. The term ‘app store’ should continue to be available for use by all without fear of reprisal by Apple”. 

Previously companies such as Google and Palm have avoided using the name ‘app store’ for their mobile software application stores, but now Microsoft is fighting Apple’s claim to the trademark so that it can use the name for their own mobile application store. Microsoft asserts that  “Any secondary meaning or fame Apple has in ‘App Store’ is de facto secondary meaning that cannot convert the generic term ‘app store’ into a protectable trademark.” 

Microsoft also claims that the term ‘app store’ has been often used by the Media, as a generic term for all application stores. However, Apple disagrees arguing, “The vastly predominant usage of the expression ‘app store’ in trade press is as a reference to Apple’s extraordinarily well-known APP STORE mark and the services rendered by Apple there under”.

‘App Store’ as a Hallmark of Apple Inc

Apple’s claim over the trademark for ‘App store’ is that it uses the first three letters of their company’s name, therefore is distinctive to their own company. However, app is also a commonly used term for mobile software applications, and so can be seen as being more of a descriptive name. The main debate over Apple’s rights to trademark the name lies in whether or not the US Patent and Trademark Office see the name as being one that is distinctive or descriptive.

The distinction between ‘app store’ as a name specific to Apple or as a general reference to somewhere where mobile applications can be purchased can seem blurry. When registering trademarks companies need to leave certain types of word or terms free for competitors to use. So, for example words that describe the product or service are not capable of being monopolised. A really simple example illustrating this is the word Chocolate. If Galaxy or Mars wanted to brand themselves as Chocolate, for chocolate products, they would not be able to do so. Therefore, names should veer from being too descriptive.

Even well known companies like Apple who have associated the name ‘App store’ to mean their store in the eyes of the public, are in danger of losing their rights in the trademark. . When registering trademarks companies need to ensure they pick names that are distinctive and not in jeopardy of being revoked on the ground of descriptiveness.

Sony Ericsson and Clearwire

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Sony Ericsson has moved to sue Clearwire over their green swirly logo, claiming that it is noticeably similar to their own logo. They have filed for a federal trademark lawsuit in Virginia.  Clearwire, a wireless Internet service provider, plans to launch new handsets later this year and intends to put their new logo on each of these handsets.

 According to Sony Ericsson, Clearwire had only decided on their logo back in October 2009, and in January 2010 Sony Ericsson started their complaints about the confusingly similar logos. With Clearwire’s decision to move into the mobile phone market, they are now in direct competition with Sony Ericsson.

The problem with Clearwire’s logo plans became even greater in October last year when they decided to make their logo green, like Sony Ericsson’s logo. With both companies now competing within the same field, both with green swirl logos; Sony Ericsson’s objection is unsurprising. It has had its green swirl logo since 2001, and the logo has become a recognizable indicator for the company throughout Europe. The company has stated that Clearwire may gain an “unfair competitive advantage” by imitating their logo.  They have also expressed concerns that “Unless enjoined, Defendants’ current and announced conduct will confuse customers and cause irreparable harm to Sony Ericsson“. 

When Sony Ericsson complained, Clearwire had agreed previously to use a different logo when they had a swirl logo with the green and white in reverse to Sony Ericsson’s.  Clearwire had abandoned their trademark applications for their reverse image logo, but then went on to use a virtually identical logo for its advertising causing Sony Ericsson to take up legal action.

 Although both companies function within the mobile market, they compete within different spheres of the market. However, Sony Ericsson claims it was Clearwire’s announcement that they were going to try and compete within the Smartphone market, meaning that the companies would be in direct competition, which moved it to file the lawsuit. However, as Clearwire is reportedly in a bad way financially, there does not seem to be any immediate cause for concern from Sony Ericsson.

 Currently Clearwire is only functioning as a network provider, meaning that any confusion between the two logos should be lessened. Although Clearwire may have suggested plans to move into the market of Smartphones, this does not appear likely to happen any time soon, which might make the courts less sympathetic to Sony Ericsson’s concerns.

Whether or not the court decides to take Sony Ericsson’s side on this case, the issue highlights the difficulties of protecting your trademark, and creating trademarks that are not likely to cause any legal disagreements from any other companies.

Trade mark opposition by London Underground

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Trademarks are registered against classifications, meaning they permit you to use the brand for certain pre defined activities. You set the business categories you wish to use for your trade mark in your application. This means the scope of your rights in the name or logo is limited.

There are 45 classes of goods and services with thousands of descriptions in each class so it is quite common to have the same names registered by businesses operating in different classifications – that is, business areas.  Evidently for the public there is unlikely to be confusion between, say, a law firm that shares the same name as a chemical factory.

London Underground

TFL have registered a number of trade marks for LONDON UNDERGROUND including for the logo UNDERGROUND.  One of their latest registrations for UNDERGROUND was an EU mark granted in April this year. This mark is registered for rather surprising classifications for a predominately transport service, such as a nail products.  They also cover café bar and restaurant services in their applications.  It seems likely that TFL are not actually using their mark for all these classifications.

 Nonetheless, the Underground Restaurant, a business organising supper clubs across London, found their application to register a trade mark opposed by TFL on the basis that ‘confusion could arise’  in the eyes of the public.

Lock out

Some trade mark owners try to lock out others from classifications by registering in a number of classes.  For example, Red Bull chose to register in all 45 classes with the clear intention of not sharing their name with non competing businesses.  But trade mark owners that do not use a classification for 5 years may be challenged for non use. 

So, TFL has 5 years to begin to use its UNDERGROUND trademark registration.  Having registered in 2010 it will be valid for restaurant services for the next five years.

 Brands of reputation

Once a brand becomes well known different rules apply.  Their reputation allows them a wider scope, including to prevent non related businesses sharing their name.  If others are taking unfair advantage of their name, or it would be detrimental to the brand for others to use the same name, such applications to register would not succeed.  For example although TWITTER is widely known as a social media interface and has registered a trade mark for this activity, they have been able to thwart attempts by others to register the mark TWITTER for bird feed, drinks fitness information and precious metals. 

TFL is using similar arguments in their letter to the owner of The Underground restaurant stating our ‘Client is also concerned that your use of The Underground Restaurant trade mark could be detrimental to our client’s brand’

 Interestingly, however, unlike the word TWITTER which is clearly a fanciful concoction, the trade mark UNDERGROUND is both a logo, which should diminish the power of the word element, and UNDERGROUND is a generic term, and arguably descriptive.