On 20 June 2017, a ruling between Sprinter megacentros del deporte SL and Diesel SpA was made regarding similar trademarks indicating there would be a risk of consumers being misled in relation to two similar figurative marks in the form of the letter “D” in respect of identical goods. A consumer would have to examine the marks very closely, which is unlikely since the average consumer seldom has the opportunity to compare trademarks side by side.
On 20 March 2013, the company Mediaexpert S.A. submitted the following word-figurative EU trademark to the EUIPO:
for the following services in classes 35, 39 and 41:
- 35: Business management; business administration;
- 39: Transport; packaging and storing of goods;
- 41: Education; providing training; sports;
and the trademark was registered on 5 March 2014 under number 11674132 for all the services submitted.
On 22 May 2014, the company Mediaexpert sp. z o.o. applied for invalidation of the mark, citing an earlier protection right to a domestic, word-figurative trademark registered on 26 February 2010 under number R.226812 in the form:
for goods and services from classes 7, 9, 11, 12, 16, 20, 35, 39, 41 and 42.
Together with the motion for invalidation, the applicant attached a printout from the Polish Patent Office database and a list of goods and services in the Polish language, without a translation into English, which was the language of the proceeding for invalidation.
Fast forward to a ruling of 20 July 2017, the court dismissed the complaint by the applicant, that there had been a breach of the principle of the protection of justified expectations, and ordered the applicant to pay the costs of the proceedings.
On 12 January 2015, the company LG Electronics Inc. submitted the mark “QD” to the EUIPO. The application was made for: “television receivers; mobile phone; smartphones; tablet computers; computers; sound recording devices; image recording devices; sound transmission devices; image transmission devices; sound playback devices; image reproduction devices; software; software for interactive television; communications software; computer software” belonging to class 9 of the Nice Classification.
In a decision of 19 August 2015, the application for registration of the mark was dismissed in relation to all goods, on the basis of Article 7 par. 1b) and c) of Regulation No. 207/2009 due to the absence of any distinctiveness of the sign and given that the mark consists solely of a descriptive element in relation to the goods for which it was submitted.
LG Electronics Inc. disagreed with that decision and lodged an appeal with the EUIPO on 9 October 2015. Subsequently, in a decision of 24 May 2016, the Board of Appeal of the EUIPO dismissed the appeal, ruling that the word mark “QD” is descriptive for the goods the submission referred to.
The Düsseldorf first instance district court decided that the trademark of Ferrari has to be cancelled (Decision as of 2 August 2017 – Case no. 2a O 166/16 – juris). However, the decision in not yet final.
In 2016 Zbyszko Bojanowicz sp. z o.o. S.K.A. applied to the EUIPO to have the word-figurative mark “I’m organic” registered for goods and services from classes 16, 32 and 42 of the Nice Classification.
The EUIPO found that, in this case, conditions under Article 7 par. 1 b) and c) of Regulation No. 207/2009 of 26 February 2009 on the Community trademark existed for which the submission of a word-figurative trademark must be rejected.
On 15 February 2010, the company M/S. Indeutsch International (Applicant) filed figurative EU trademark:
for “knitting needles” and “crochet hooks” belonging to the 26th class of the Nice Classification. EUIPO registered the aforementioned mark, however an application for declaration of invalidity of the trademark in question was filed on the basis of the lack of distinctive character of the registered sign.
In a ruling of 26 July 2017 in case C-84/16 P, the Court of Justice upheld a ruling by the EU General Court invalidating a decision of the EUIPO Fourth Board of Appeal dismissing an opposition to the registration of the word-figurative trademark “XKING”.
That ruling benefits the company Compagnie générale des établissments Michelin (“Michelin”) – the entity that submitted the opposition to the registration in a proceeding before the EUIPO and is against the company Continental Reifen Deutschland GmbH (“Continental”), a market competitor of Michelin and the entity that applied for the registration of the contested mark.
On 17 May 2017, the EU Court of Justice issued a ruling in a case between the European Union Intellectual Property Office (EUIPO) and Deluxe Entertainment Services Group Inc. concerning a graphic trademark containing the word element “deluxe.”
We reported previously, in Bulletin No. 2 /2016 (page 15), on a case of the registration of the graphic trademark (shown below, packaging for Knoppers waffles, without any additional markings, with protection only for the two-colored background) for goods from class 30 of the Nice Classification, namely confectionery products, chocolates, chocolate products, cakes, ice creams, and ingredients for manufacturing such products.
In a ruling on 6 April 2017, in case No. T-49/16, the EU General Court upheld a decision by the EUIPO Fourth Board of Appeal dismissing a complaint by the company Azanta A/S (Azanta) against a decision to refuse to register the word trademark “NIMORAL.”
Azanta submitted that mark on 23 October 2013, applying for protection in respect of goods belonging to class 5 of the Nice Classification corresponding to the following description: “Pharmaceutical preparations improving the effectiveness of radiotherapy in treating cancer patients.” On 2 December 2013, an objection against that registration was raised by the company Novartis AG based on the previous registration of the EU trademark “NEORAL” for goods belonging to class 5 of the Nice Classification corresponding to the following description: “Pharmaceutical preparations.”