Trademarks – Page 21 – IP Law Watch

EU Board of Appeal decision: trademark application consisting of a combination of colours

Oct 20 2016

On 19 October 2016, the Board of Appeal upheld a decision by the Cancellation Division entirely invalidating a graphic trademark registered on 7 December 2007 by the Hudson’s Bay Company. The basis for the invalidation was Article 51 par. 1a), pursuant to which a trademark must be deemed as having expired if it is not used for a period of five years.

The trademark in question consisted of four stripes of different colours: green, red, yellow and blue, and was registered as a graphic trademark, not as a combination of colours per se. The Hudson’s Bay Company used that colour combination on its products, but not in the form of stripes on a white rectangle, but as stripes running across the entire width of a product. The Cancellation Division found that, placed on a given product in that manner, the colours did not function as a trademark, that is, they did not serve to identify the origin of the product, but only constituted a decorative design. In addition, the products themselves appeared in different colour versions and not in the version reserved for the mark.

The Cancellation Division found that the relevant target group of consumers perceived the striped pattern as a design, and not as a trademark, and that the Hudson’s Bay Company had not provided evidence attesting that this was not the case. The Hudson’s Bay Company lodged an appeal against the decision to invalidate, arguing, among other things, that the colour combination used always consists of four colours of evenly placed stripes in the colours green, red, yellow and blue. The company added that, of course, the colour scheme does constitute a decoration, but is used for the purpose of identifying the company.

The Board of Appeal dismissed the appeal. It found that the trademark had been registered as a graphic mark, not as a colour combination. Therefore, the use of the trademark cannot differ from what was registered, and so the same combination of colours must appear in the same order and in the same proportions. The Board of Appeal found that, used in the manner it is, the mark should not have been registered as a graphic trademark, but as a colour combination per se. Certainly, the Hudson’s Bay Company would then enjoy such protection, and there would be no doubt concerning actual use. Nevertheless, because the colour combination was registered as a graphic trademark, the Board of Appeal upheld the stance of the Cancellation Division that the trademark registered had not actually been used for five years and dismissed the appeal.

SOURCE: www.euipo.europa.eu

By: Daria Golus

From the K&L Gates publication Trademarks and Unfair Competition, Quarterly Bulletin, 1/2017 – click here.

Motion Trademarks as an Element of Brand Promotion

Oct 13 2016

One of the most interesting forms of trademark in circulation is the motion trademark

A Moving Logo

A motion mark may be an animation created using a computer program, or some other moving object which exists in the real world. In particular, such a mark may be in the form of a gesture made by a person using various parts of the body, especially the hand. Submitting a motion trademark involves the same criteria of assessment as do other forms of trademarks, but motion marks remain but a small fraction of the trademark submissions made in the European Union.

A motion trademark should have distinctiveness, and should be possible to depict precisely in an application. The presentability of motion marks depends on being able to depict a series of movements by an appropriate arrangement of a sequence of images. It is also crucial to provide a sufficiently exact description of the mark, including the order and form of the movement occurring in the images. In a motion mark, it is precisely the motion and the succession of scenes which are the most important aspects which may be subject to protection. Care must also be taken, since motion marks cannot appear in trade in “pure” form, but only as a combination of marks, for example, movement and sound (e.g. application CTM No. 003429909 showing clasping hands, used for some time by the company Nokia).

A dog of a trade mark dispute

Sep 29 2016

A long running trade mark dispute between Black Dog Ride Pty Ltd (Ride) (http://www.blackdogride.com.au/) and the Black Dog Institute (Institute) has concluded almost four years after an acrimonious dispute arose between the two organisations ended what had been a mutually beneficial relationship. The Delegate of the Registrar of Trade Marks who heard the dispute ultimately dismissed each of the respective oppositions filed by the parties and confirmed the rights of Ride to register BLACK DOG RIDE (stylised) and the Institute to register BLACK DOG for various goods and services.

In 2002, the Institute was founded as a non-profit organisation specialising in the diagnosis, treatment and prevention of mood disorders. In 2008, Steve Andrews created Ride to organise charitable motorcycle rides to raise awareness of depression and suicide prevention. Importantly, the Delegate found that both Ride and the Institute adopted names including the words BLACK DOG as a result of Winston Churchill’s well known use of the phrase BLACK DOG when referring to his battles with the mood illness.

Green with Envy: Colour Trade Marks in Australia

Sep 05 2016

Frucor Beverages Limited (Frucor), the manufacturer of energy drink, V, has unsuccessfully tried to register a trade mark for the colour green. Last month, Coca-Cola Company (Coca-Cola), the manufacturer of Mother energy drinks, successfully opposed registration of the trade mark filed in 2012 in relation to energy drinks which consisted of the colour green (Pantone 376c), as shown below.

Coca-Cola opposed the trade mark application on the basis that Pantone 376c Green was not capable of distinguishing Frucor’s energy drinks and that the application was defective. While the opposition failed on the latter ground, Coca-Cola was successful in its argument that Pantone 376c Green was not capable of distinguishing V energy drinks from the energy drinks of other traders.

Humira® Update: Big Guns Take Aim at Top-Selling Biologic

Aug 19 2016

AbbVie Inc.’s Humira® (adalimumab) was the top selling drug in 2015. Unsurprisingly, it is the focus of biosimilar applicants and patent challengers aiming to get into the market. We provide this update on three events regarding Humira® that took place over the past two months: (1) Amgen Inc., which is pursuing a biosimilar version of Humira®, received a recommendation toward approval from the U.S. Food and Drug Administration (“FDA”); (2) AbbVie sued Amgen for patent infringement in the U.S. District Court for the District of Delaware, alleging that Amgen infringed several of its patents by seeking FDA approval of its biosimilar version of Humira®; and (3) the U.S. Patent and Trademark Office instituted inter partes review (“IPR”) of a Humira® patent at the request of Boehringer Ingelheim.

Please click here to view the alert.

By: Margaux L. Nair, Trevor M. Gates, Peter Giunta, Theodore J. Angelis

IP Australia Announces New Official Fee Structure For Australian Trade Marks

Aug 12 2016

Australian Trade Mark Applications are Getting Cheaper

Following an extensive review of its fee structure, IP Australia has announced a revised official fee structure that is proposed to take effect from 12.00 am AEDT on 10 October 2016.

One of the key changes is that a registration fee will no longer be payable for Australian trade mark applications filed on, or after, 10 October 2016. Under the existing regime, the usual filing fees for an Australian trade mark application were AUD200 per class, with AUD300 per class payable on registration. Under the new regime, the usual filing fee will increase to AUD330 per class, but no further official fees will be payable.

ECJ Confirms that Brand Owners can Seek Remedies for IP Infringement Against Owners and Operators of Physical Marketplaces Selling Counterfeit Goods as “Intermediaries”

Jul 14 2016

On 7 July 2016, the Court of Justice of the European Union (ECJ) announced its judgment in case C-494/15, Tommy Hilfiger Licensing LLC and Others v Delta Center a.s.

The case concerned claims for trade mark infringement against Delta Center, the tenant of the “Prague market halls” marketplace, which rented sales spaces to sellers of counterfeit goods. Tommy Hilfiger and other trade mark owners brought an action before the Czech courts seeking an injunction under Article 11 of Directive 2004/48/EC, which states that: “Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC”.

New Balance Unsuccessfully Challenges Trade Mark Infringement Claim in China but Walks Away with a Significantly Reduced Liability

Jul 06 2016

In a recent appeal decision in China, the international sportswear brand New Balance has unsuccessfully challenged a finding of trade mark infringement with respect to a Chinese language equivalent for NEW BALANCE. However, New Balance was able to reduce the amount payable as a result of its infringement by 95%.

When a picture can be considered deceptively similar to a word

Jun 14 2016

The Trade Marks Office has taken a sword to the hopes of applicants wanting to register device trade marks which are perceived to match existing registered word marks in its decision on the SAMURAI WARRIOR (device) submitted for registration by Teraglow Pty Ltd.

IP Australia repeatedly rejected the SAMURAI WARRIOR mark at examination stage under s 44(1) of the Trade Marks Act 1995 (Cth), citing prior registered word mark SAMURAI, owned by Globeride Inc.

Fashion Law Newsletter – Autumn/Winter 2016 edition

Apr 06 2016

By Lisa Egan

We are excited to bring you the next edition of Fashion Law, highlighting important issues at the crossroads of fashion and the law.

Fashion Law gives you the latest updates on legal issues affecting the fashion industry. This edition includes articles on how to set up your business in order to minimise risk, workplace bullying in the retail environment, examples of trade mark and copyright disputes by major fashion brands and also the very tricky industry issues of how thin is too thin for fashion models.

Please click here to read the Autumn/Winter 2016 edition of Fashion Law.

Category:Trademarks