Back in 2015 Constantin Film AG, the production company of the German movie „Fack ju Göhte“, filed an European Union trademark application (“EUTM”) for its movie title „Fack ju Göhte“ with the European Union Intellectual Property Office (“EUIPO”). The EUTM application was refused by the EUIPO based on an alleged infringement of public policy and common decency. On top of that, EUIPO was of the opinion that the title of the movie is an offensive insult that would damage the German highly respected writer Johann Wolfgang von Goethe posthumously. Constantin Film’s appeal against this decision was also not successful, so that they now brought that case before the General Court of the European Union.

The Facts: Protection of Word Trademarks

Since Article 7(1)(f) of the European Union trademark regulation (“EUTMR”) prohibits the registration of trademarks which infringe public policy or morality, the core key was whether the General Court of the European Union classifies the movie title as immoral in the sense of Article 7(1)(f)  EUTMR.  The purpose of Art. 7 EUTMR is in particular to ensure the public interest that adolescents will be protected from being confronted with words that are offensive or disturbing. Therefore the question whether or not immorality is given depends on the relevant public and that is the average consumer who the EUTM is meant to address.

Trademark registrations are prohibited for all signs that are degrading, vicious or racial. Since “Fack ju” can be understood as a misspelling of the expression “Fuck you”, an offensive expression that insults the dislike for another person which is usually used with the intention to hurt or degrade someone, examiners of the EUIPO saw the movie title and EUTM-application as an offensive insult of the German writer Goethe. In this respect the word „Fuck“ had already been confirmed as a violation of European trademark law in several other judgments. The EUIPO rejected in the past EUTM- applications like “fucking freezing!” and “FUCK CANCER”.

Constantin Film contradicted that the decision of whether the movie title actually conflicts with good morals or not has to be determined as a whole and not only by analyzing one part of it. They argue that the expression “Fuck you” has neither a sexual meaning nor can be considered as insulting in the present case, but is used as a synonym for school frustration in context with the word “Göhte”. It further argued that this understanding is confirmed by the cheerful and entertaining character of the movie which in no way refers to the writer in a disrespectful way.

The Ruling

As expected, the General Court of the European Union denied protection to the expression “Fack Ju Göhte” as a word trademark on 24 January 2018 and once again confirmed that immoral and degrading expressions cannot be protected by European trademark law.

The Court stated that neither the special spelling nor the intended irony can mitigate vulgarity. Moreover, a breach of public order or morality must be determined by the trademark itself and in connection with the goods and services for which it is to be registered. The goods and services in question are those of daily use, e.g. games and clothes so that not only people who watched the movie, but rather any person shall be taken as reference, and it cannot be guaranteed that these people in general would recognize the trademark as a title of a successful film and as a joke. As a result, the average consumer will rather see the sign as the commonly used English expression “fuck you”, which is immoral and therefore cannot be registered as a trademark pursuant to Art. 7(1)(f) EUTMR.

 

 

 

Now that the time of the year has come, it seems like everything is all about finding the perfect gift, decorating your house in the most beautiful Christmas colors, baking Christmas cookies and of course, going to Christmas markets. But even while we are enjoying the peaceful and contemplative atmosphere – and obviously to drink one or the other mulled wines we are not spared from being confronted with the German trademark law. Insofar we would like to conclude this year with  a decision of the German Patent Court which dates back to 2006, but which perfectly fits into the advent and Christmas season.

The Case

“Christkindlesmarkt” was registered as a German trade mark with the German Patent and Trademark Office (GPTO) for, among others, non-alcoholic and alcoholic beverages. On 10 December 2003, the GPTO cancelled this trade mark based on absolute grounds after a third party had lodged a cancellation request with the GPTO. The examiner of the GPTO took the view that the mark was not eligible for trademark protection, as the relevant public would perceive the mark only as an indication of goods offered on Christmas markets, which are also known as Christkindlesmarkt. The lovely street markets associated with the celebration of Christmas during the four weeks of advent have their origin in the South of Germany, but are now being held all over Germany. Accordingly, the German public would perceive products labeled with the term Christkindlesmarkt only as products which are typically offered on such Christmas markets, but not as an indication of origin for a specific undertaking. Therefore the mark should never have been registered with the GPTO.

The owner of the mark disagreed and filed a complaint against this cancellation decision with the German Federal Patent Court. The owner took the view that although Christmas markets are called “Christkindlesmarkt” in the South of Germany, this could only prevent registration of the mark for services like organizing and performing such Christmas markets, but not for the so labeled goods in question.

The Ruling

According to Section 8 (2) No. 1 of the German trade mark law (MarkenG), trade marks shall be excluded from registration which are devoid of any distinctive character for the goods or services. Accordingly, only marks with a distinctive character by their nature or by the use made of them are capable of distinguishing their goods from the goods of other undertakings and thereby capable of registration.

In this regard the German Federal Patent Court shared the opinion of the GPTO, namely that the mark in question did not fulfill the requirements of distinctiveness. It held that the term “Christkindlesmarkt” represented only a common synonym for the word “Christmas market”. The German Federal Patent Court concluded that the mark lacked distinctive character as the relevant public (in this case, the average German-speaking consumer) understood the sign Christkindlesmarkt as referring to Christmas markets (particularly to products sold on such markets). There was however no evidence that the general public would perceive the trade mark as a source-related indication of the goods and services in question. Traditionally held in the town square, Christmas markets have food, drink and seasonal items from open-air stalls accompanied by traditional singing and dancing. Popular attractions at these markets are candied and roasted almonds, traditional Christmas cookies such as Lebkuchen and of course the famous German Bratwurst. One of the other highlights of these markets is the mulled wine called Glühwein. This means in effect that when foods and beverages are labeled with the name “Christkindlesmarkt”, the public will not perceive this as an individual indication of origin of an undertaking, but rather that these goods are typical goods offered on Christmas markets.

Conclusion

The decision is in line with settled case law, therefore it did not come as a surprise. The term “Christkindlesmark” is in itself descriptive and lacks of sufficient distinctive character.

We wish you all a Merry Christmas and Happy Holidays!

Court of Justice of The EU Ruled on Trade Marks Used Only to Indicate Quality Standards

Trade marks will not only be associated with the company they origin from, but might also be associated with certain quality or ethical standards. Certain associations are using their trade marks only to license it to producers who fulfill a certain standard. While some jurisdictions recognize such use of a trade mark as sufficient to maintain trademark protection, the European Union Trade Mark Regulation (EUTMR) does only mentioning the term “genuine use” of a trade mark. On 8 June 2017, the Court of Justice of the European Union (CJEU) has decided whether using a trade mark only to indicate certain quality or ethical standards can be seen as “genuine use”.

The Facts

The Verein Bremer Baumwolle (VBB), an association under German law, owns an individual European Union trade mark (EUTM) displaying a cotton flower. The VBB concludes license agreements under this trade mark with associated producers of textiles who oblige themselves to comply with certain quality standards concerning the cotton they use. The defendant, a German manufacturer of textiles, displayed this trade mark on its products without having an appropriate license to do so.

VBB sued the defendant for trade mark infringement. The defendant brought a counterclaim for declaration of invalidity of this trade mark. In first instance the Düsseldorf District Court found infringement , but the Düsseldorf Court of Appeals referred the case to the CJEU with the following questions: Is the use of a trade mark as a label for quality a “genuine use” in regards to an individual trade mark? Must such a trade mark be declared invalid, if the holder of said trade mark does not ensure the quality standard by carrying out periodic quality controls?

First Question

According to the CJEU, the essential function of a trade mark is to guarantee that all goods or services marked by the sign come from the same undertaking or economically linked undertakings. It might be a secondary purpose of a trade mark to ensure a certain quality, but the “genuine use” of a trade mark is only to guarantee that the goods origin from the same or an economically linked entity. Therefore, the proprietor is not using the trade mark in terms of the EUTMR, if it is only licensing the trade mark to ensure a certain quality. This is particularly relevant, because, if there is no “genuine use” of a trade mark for five years, the trade mark proprietor might face an application for revocation of its trade mark.

Second Question

In relation to the second question, the CJEU stated that an individual trade mark is not to be declared invalid, if the proprietor does not conduct quality controls on a regular basis. While this is a reason for invalidation of collective trade marks, it cannot be applied to individual trade marks because these trade marks are not designed to guarantee a certain quality standard. Individual trademarks might be declared invalid, however, if the public is made to believe that there will be quality controls while the trade mark proprietor never intended to conduct them.

Background

The judgment is apparently guided by the fact that the EUTMR provides two specific instruments to mark products that come from certain undertakings. There is the possibility to file a collective trade mark to display that the user of the trade mark is a member of a certain association that follows certain standards. Further, as of 1 October 2017, a certification trade mark could be used to show that certain standards are met. The CJEU apparently tries to ensure that individual trade marks cannot be used to circumvent the requirements for collective and certification trade marks.

On 24 April 2017, the Beijing Intellectual Property Court (“ the Court”) published 18 classic cases concerning trademarks filed in bad faith. One of these cases dealt with a invalidation action filed by Tiffany and company (“Tiffany”), the luxury jeweler.

Tiffany prevailed in the invalidation action brought in 2013 against Chinese trademark registration no. 8009772 for “蒂 凡尼” (pronounced as “Di Fan Ni” in Mandarin) on wallpaper, carpets etc. in Class 27 in the name of Shanghai Zhendi Decoration Materials Co., Ltd. (“Shanghai Zhendi”). After the Trademark Review and Adjudication Board (“TRAB”) rejected the registration, Shanghai Zhendi appealed to the Beijing IP Court.

The Beijing IP Court held that Tiffany’s “TIFFANY” mark registered in respect of jewellery and precious stones had become well-known prior to the application date of the subject “蒂凡尼” mark. Not only is the “蒂凡尼” mark phonetically similar to “TIFFANY”, there is also only one Chinese character difference between Tiffany’s mark and the corresponding Chinese mark “蒂凡尼”. The  contested mark therefore constituted an imitation of Tiffany’s marks.

Tiffany Case Takeaway

This is a classic case about deterring bad faith registrations under Chinese Trademark Law. In deciding whether the mark concerned would mislead the public and cause detriment to the rights of the well-known trademark owner, the Court  considered all factors, such as the extent of the reputation of the well-known mark, the similarity between the marks, how related the designated goods are, the intention of the owner of the mark concerned, etc.

In the case at hand, Tiffany’s extensive and substantial use of the mark “TIFFANY” and of its Chinese mark “蒂凡尼” had resulted in a strong reputation in the market and an immediate correlation of any similar or identical mark to goods associated with the company, namely jewellery. Apart from registering the mark “蒂凡尼”, Shanghai Zhendi had also registered the English mark “DIFFANY” and the combination mark “蒂凡尼壁纸 DIFFANY” (essentially “Di Fan Ni Wallpaper DIFFANY”) and used the mark “蒂凡尼” together with “DIFFANY”. Shanghai Zhendi’s intention to ride on the reputation of Tiffany’s well-known mark could therefore not have been more obvious. The Court considered that the relevant public would likely associate the two marks, so that the source of the goods would be mistakenly be attributed to Tiffany and Tiffany’s rights would consequently be damaged.

Good News to Brand Owners

The outlined case demonstrates the Chinese Court’s determination to reject or invalidate trademarks which amount to acts of copying another’s well-known mark in bad faith. Yet this cannot be achieved without the vigilance of the legitimate trademark owners who need to be proactive, and take action as soon as such registrations are detected.

Michael Jordan, the legendary NBA star, has finally established his rights in his Chinese name after 5 years of intensive administrative and appeal proceedings in China.
In China, Michael Jordan is more commonly known and addressed by the Chinese name “乔丹” (pronounced as “Qiao Dan” in Mandarin) which resembles the pronunciation of his last name “Jordan”. The present case is another typical example of a foreign brand owner’s name being hijacked by a local Chinese entity. The hijacker used both “乔丹” and “QIAODAN” as trademarks on shirts, sport shoes and apparel manufactured and sold in China since 2000. Michael Jordan had a long and hard fight to get his name back. He is now half way through recovering his Chinese name “乔丹” trademark, whilst the transliteration of his Chinese name “QIAODAN” is still in the hands of third parties.

Facts and Ruling

From 2000 onwards, Qiaodan Sports Co. Ltd. (“Qiaodan Sports“) registered a number of trademarks including, “乔丹”, “QIAODAN” and a logo which was resembling Nike’s famous “Jumpman” logo. The original “Jumpman” logo is owned by Nike Inc. to promote its “Air Jordan brand” of basketball shoes and comprises a silhouette of Michael Jordan performing a slam dunk. In 2012, Michael Jordan sued Qiaodan Sports for infringement of his name rights in China. He asked the Chinese authorities to invalidate the registered trademarks “乔丹”, “QIAODAN” and the corresponding logo mark arguing that Qiaodan Sports’ trademarks are misleading consumers in the People’s Republic of China in a way that consumers may believe that these sport products like shirts, sport shoes and sport apparel sold by Qiaodan Sports are licensed or otherwise authorized by Michael Jordan.

The Trademark Review and Adjudication Board, the Beijing No. 1 Intermediate People’s Court and the Beijing High Court consistently came to the view that “Jordan” is a common American surname which is not readily and uniquely associated with Michael Jordan. The lower courts also perceived no exclusive and definitive link between Michael Jordan and “乔丹” and the sign “QIAODAN”. However, Michael Jordan decided to recover the valuable commercial rights in his name by appealing to the Supreme People’s Court.

Rulings of the Supreme People’s Court

Favorable Decision – “乔丹”

In these appellate proceedings Michael Jordan could successfully demonstrate that the sign “乔丹” is well-recognized in China and clearly associated with Michael Jordan personally. The Supreme People’s Court recognized an established a link between “乔丹” and Michael Jordan, and that Qiaodan Sports had “malicious intent” in registering “乔丹” as a trademark when it was fully aware of Michael Jordan’s reputation in China. Therefore, the use of “乔丹” by Qiaodan Sports infringed upon Michael Jordan’s prior rights in his name and the Supreme People’s Court ordered the “乔丹” trademark registration to be invalidated.

Unfavorable Decision –”QIAODAN”

“QIAODAN” is the English transliteration of “乔丹”. The meanings of “QIAODAN” and “乔丹” are identical. However, from the perspective of trademark use, the Supreme People’s Court could not find an established link between “QIAODAN” and Michael Jordan, as naturally Michael Jordan would not have used “QIAODAN” in any manner. The Supreme People’s Court therefore concurred with the lower courts’ decisions in the invalidation actions against “QIAODAN” and related formative trademarks in favor of Qiaodan Sports.

A Look Ahead

Michael Jordan’s success in recovering his Chinese name “乔丹” serves as an encouraging precedent to brand owners.

At least the Supreme People’s Court is seen to have considered all relevant circumstances, in particular the fairness and commercial value behind the name, in order to reach a finding that Michael Jordan can have his long lost Chinese name back as a trademark that is likely to be worth millions of dollars. The applicable laws and provisions have not changed.

The Chinese authorities and courts are willing to see and listen. The key to success is for foreign brand or name owners to present sufficient evidence to support their rights and show bad faith on the part of the trade mark squatter. Michael Jordan’s case and other similar cases involving brand owners such as New Balance and Hermès, emphasize the need for foreign brand owners to identify and register a Chinese version of their brands be it as a translation or as a transliteration as soon as possible, in order to ensure that they are protected against trade mark squatters.

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

busy Street scene with neon signs in Hong KongIntellectual Property (“IP”) rights are only as strong as the means to enforce them. Arbitration, as a private and confidential procedure, is increasingly being used to resolve disputes involving IP rights, especially when the dispute is between parties located in different jurisdictions. With the introduction of the Arbitration (Amendment) Bill 2016 (“Bill”), the Hong Kong government hopes this will give it an edge over competing arbitral seats in the region. The main effect of the Bill would be that enforcement of an award under Part 10 of the Ordinance would not be refused in Hong Kong under either the arbitrability ground or the public policy ground merely because the award involved IP rights.

The Scope of the Bill

The Bill has been in the pipeline for almost two years. It sets out a broad definition of IP rights to include, inter alia, rights to confidential information, trade secrets or know-how, rights to protect goodwill by way of passing off or similar actions against unfair competition. The bill clarifies that all disputes relating to the subsistence, scope, validity, ownership as well as infringement of IP rights are arbitrable. This includes the right to put the validity of a patent in issue in arbitral proceedings. The Bill includes a provision clarifying that an award relating to IP rights does not cover a licensee (whether or not an exclusive licensee) who is not a party to the arbitral proceedings. A licensee is, however, not prohibited from commencing arbitration proceedings without the owner of the IP being a party to the proceedings

All of the major arbitration centers, such as the International Court of Arbitration, the London Court of International Arbitration and World Intellectual Property Organization (WIPO) Arbitration and Mediation Center have adapted their arbitration rules to better suit IP disputes. As a result, the number of IP cases being heard by these centres continues to rise.

Conclusion

The international arbitration of IP disputes is on the rise, although it is still not as widely used to resolve disputes compared to other sectors (e.g., construction, energy and oil and gas). Hopefully the introduction of the Bill will reinforce the use of arbitration as a means to resolve IP disputes, as well as help consolidate Hong Kong’s position as an IP international dispute resolution centre.

Click here to read the full Mayer Brown JSM Asia IP & TMT: Quarterly Review (2016 Q4).

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Hands playing a cube gameOn 10 November 2016, the Court of Justice of the European Union (CJEU) ruled that a trademark on the shape of the Rubik’s Cube—supposedly the world’s bestselling toy of all time—is invalid (Case C‑30/15 P). With its judgment, the Court, inter alia, annulled a 2009 decision of the European Union Intellectual Property Office (EUIPO) that initially confirmed registration of the cube as an EU trademark.

The Rubik’s Cube was invented in 1974 by Hungarian architect Ernő Rubik. It was originally named “Magic Cube.” In 1980, the toy was renamed Rubik’s Cube and launched internationally.

The Facts of the Case

In 1999, the company behind the Rubik’s Cube brand, Seven Towns Ltd., registered a “three-dimensional mark in the shape of a cube with surfaces having a grid structure” with the EUIPO. On 15 November 2006, German toy manufacturer Simba Toys GmbH & Co. KG filed an application for a declaration of invalidity of that mark. The company, inter alia, claimed that the cube’s rotating capability may be protected only by patent and not as a trademark. On 14 October 2008, the Opposition Division of the EUIPO rejected that application in its entirety. On 1 September 2009, the rejection was confirmed by the EUIPO Boards of Appeal (Case R 1526/2008-2).

On 6 November 2009, Simba Toys brought an action seeking annulment of the EUIPO decision before the EU General Court. In support of its action, the company, inter alia, argued that the shape of the Rubik’s Cube was necessary to obtain a technical result (rotation), which is grounds for invalidity of the three-dimensional mark (now codified in Article 3(1)(e)(ii) of the Trademark Directive (2008/95/EC)). On 25 November 2014, the EU General Court dismissed the action. The court held that the graphic representation of the mark, the grid structure on each surface of the cube, gave no indication as to the well-known rotating capability of the Rubik’s Cube. Therefore, Simba Toys’ reasoning was not based on the representation of the mark as filed but on an “invisible element” (Case T-450/09).

The CJEU’s Decision

On 25 May 2016, Advocate General Maciej Szpunar delivered an opinion that the grid structure of the cube did not constitute “a decorative and imaginative element” but performed a technical function (Case C‑30/15 P). The cube’s structure divided the movable elements of the puzzle so that they were rotatable. Beyond these functional characteristics, the mark in question contained “no arbitrary or decorative characteristics.”

In its judgment, the CJEU followed the advocate general’s opinion and held that the sign at issue consisted of the shape of actual goods and not of an abstract shape. The EU General Court should have taken the fact that the goods function as a three-dimensional puzzle into account when assessing the functionality of the essential characteristics of the sign. While it was indeed necessary to consider the graphic representation of the shape at issue, that analysis could not be made “without taking into consideration, where appropriate, the additional elements relating to the function of the actual goods at issue.”

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Athlete showing medalsThe Olympic Games 2016 which take place in Rio de Janeiro, Brazil, from 5 to 21 August are supported by a huge volume of marketing and advertising campaigns. As many countries have done before, Brazil enacted special legislation to protect the Olympic symbols and expressions specific to the games hosted in Rio. The protection offered in these Olympic-special legislations often can go beyond what would normally be available under trademark or copyright protection laws. For example, the London Olympic Games and Paralympic Games Act 2006 created a sui generis right of association to prevent the use of any representation that is likely to suggest an association between the London Olympics and goods or services.

Germany, as another example, also put some special legislation into place. However, a company that had offered “Olympic discounts” in its advertisements during the 2008 games was found not to infringe the German Olympic Protection Act. The German Federal Supreme Court ruled that, unlike trademark protection, the Olympic Protection Act did not grant legal protection to the advertising function of the Olympic symbols. Therefore, a mere time-related reference like “Olympic discounts” did not lead to infringement.

The Brazilian Olympic Act

Under the Brazilian Olympic Act (Federal Law No 12,035/2009), as amended by the Brazilian Federal Law No 13,284/2016, the Olympic symbols are granted special temporary protection. These include emblems, flags, anthems, mottos, mascots and torches used by the International Olympic Committee, the International Paralympics Committee and the Association Rio 2016, charged with the organization of the Games. The protected symbols also include various expressions such as Olympic Games, Paralympic Games and Rio 2016 – in any language. However, unlike the London Olympic Act, for example, the Olympic symbols are all subject to protection under trademark law. The protection period shall begin with registration of the symbols with the Brazilian National Institute of Industrial Property (INPI) and extend until 31 December 2016.

The use of such symbols is prohibited, even for non-commercial purposes, except if authorized by the International Olympic Committee or the Association Rio 2016. Furthermore, the act prohibits the use of terms and expressions that, albeit outside the list of protected symbols, are sufficiently similar to them to the extent that they are able to invoke an undue association of any products and services whatsoever, or even any event or company, with the Rio 2016 Games or the Olympic Movement.

During the time of protection, requests for registration of trademarks that constitute a reproduction or an imitation of the official symbols or are likely to cause any confusion or association with the organizing entities or the official symbols, shall be rejected. In addition, the INPI shall inform the responsible entity for the registration of domain names in Brazil, NIC.br, of all registered trademarks, so that any requests for registration of domain names containing terms or expressions identical or similar to the trademarks be refused ex officio.

Enjoy the Games!

Even though the legislation may have arrived a bit late (Federal Law No 13,284/2016 was published on 10 May 2016), the Olympic Act provides a solid framework for the protection and enforcement of intellectual property rights related to the Olympic games. So, all that is left for corporate sponsors or fans of the Olympics is to enjoy the Games!

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

iStock_81284397_XXLARGEOn 29 September 2007, a PRC entity, Xintong Tiandi Technology (Beijing) Company Limited (“Xintong”), filed a trademark application for the word “IPHONE” in class 18 (“Opposed Mark”) with the PRC Trade Marks Office (“TMO”). The goods covered by the application are a range of leather goods, wallets and cases under sub-classes 1801 and 1802. On 26 April 2010, Apple Inc. (“Apple”) filed an opposition against the Opposed Mark. It should be noted, however, that Apple does not have any China trademark applications or registrations for the word “IPHONE” in class 18 that pre-date the filing date of the Opposed Mark.

Both the TMO and, subsequently, the PRC Trademark Review and Adjudication Board rejected Apple’s opposition claim and allowed the application for the Opposed Mark to proceed to registration. Apple then filed an appeal to the Beijing No. 1 Intermediate People’s Court but had to suffer another legal defeat. The Intermediate People’s Court’s decision was, inter alia, based on the fact that most of the evidence of use of the word “IPHONE” submitted by Apple was taken after the date of filing of the Opposed Mark; and that the evidence presented was insufficient to show that the word “IPHONE” had attained well-known status before the application date of the Opposed Mark.

Appeal to the Beijing Higher People’s Court

In 2016, Apple filed a further appeal to the Beijing Higher People’s Court and argued, inter alia, that the word “IPHONE” had attained an extremely high level of fame and distinctiveness in respect of goods in class 9, such as mobile phones, and should therefore be recognized as a well-known trademark. Apple further alleged that the Opposed Mark was a blatant copy or imitation of Apple’s well-known trademark. The Higher People’s Court, however, found that Apple had failed to establish that its “IPHONE” mark had achieved well-known status at the relevant time, which is the date of filing of the Opposed Mark. At the time of the filing date, Apple’s iPhone products had only been launched in China for three months.

Whilst the Higher People’s Court decision is final, Apple may request for a re-trial with the Beijing Supreme People’s Court. Apple has already indicated its intend to do so.

Conclusion

This case emphasizes the need for international brands to thoroughly review and formulate their trade mark portfolio and filing strategy prior to launching relevant product or services in a particular market. It is vital to not only consider the core classes that are directly related, but also other classes that cover potential areas of future expansion or related products and services.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

big stadiumOn 16 June 2016, the General Court of the European Union rejected an opposition by Fútbol Club Barcelona to the wordmark “KULE” (T‑614/14). The opposition was based on an alleged infringement of the club’s Spanish wordmark “CULE,” the term culé being a Spanish variation of the Catalan word cul and used as a nickname for supporters of the club. Apparently, this is not the only negative experience Fútbol Club Barcelona has had with the General Court in recent years. In 2015, the General Court dismissed an action brought by the club seeking registration of the outline of its crest as a Community trademark (T-615/14).

Facts of the Case

On 22 April 2011, US-based fashion company Kule filed an application for registration of the EU wordmark “KULE” with the European Union Intellectual Property Office (EUIPO). The goods for which registration was sought are in class 14 (jewellery and precious stones), class 18 (wallets, purses and trunks) and class 25 (clothing, footwear and headgear). On 2 November 2011, Fútbol Club Barcelona filed a notice of opposition to registration of the wordmark in respect of all goods concerned. The opposition was based on an alleged infringement of the Spanish wordmark “CULE,” which the club applied for in 1982 and which was also registered to cover goods in classes 14, 18 and 25.

On 1 October 2013, the Opposition Division rejected the opposition. An appeal against the Opposition Division’s decision was dismissed by the EUIPO Board of Appeal on 18 June 2014. The Board of Appeal found that the documents presented by the Fútbol Club did not demonstrate genuine use of the earlier trademark in relation to the goods concerned. This decision was now confirmed by the General Court. Pursuant to Article 42(2) and (3) of Regulation No. 207/2009/EC, a trademark opposition shall be rejected if, at the applicant’s request, the opposer is unable to prove genuine use of the earlier mark during the five years preceding publication of the new mark.

Key Considerations of the General Court

The General Court followed previous Court of Justice of the European Union (CJEU) decisions that genuine use of a trademark could be found where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered. Regarding the extent of the use made of the earlier trademark, the General Court stated that account must be taken to both the commercial volume of the overall use of the mark and the length of the period during which that mark was used, including the frequency of that use.

In the present case, the General Court found that Fútbol Club Barcelona had not adduced evidence “to show the place, time, extent or nature of use of the earlier trade marks in relation to the goods covered.” While the General Court acknowledged that the Spanish term culé was indeed used as a nickname for the supporters and players of the club, the use of that term had not been proven in relation to the goods covered by the ”CULE” wordmark.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.