SUMMARY OF JURISPRUDENCE
General Court of the European Union –September 29, 2016 – case T335/15 « Universal Protein Supplements Corp. vs. EUIPO ».
An application for an European Union trademark constituted of the figurative element had been filed and claims “Nutritional supplements” in class 5; “Clothing; footwear” in class 25 and “On-line retail store services featuring nutritional supplements; health and diet-related products; clothing and footwear” in class 35.
The Examiner notified the owner of a notification of provisional refusal based on lack of distinctiveness of the sign in relation with all the products and services claimed. The owner contested this refusal but EUIPO upheld its decision. An appeal was lodged, but the Board of Appeal agreed with the Examiner; and then a new plea was brought before the General Court of which we are now analyzing the decision.
The General Court endorsed the Examiner's original decision and dismissed the appeal on the grounds that:
- The figurative element, the silhouette of a person adopting a typical bodybuilding pose carries a message related to bodybuilding (points 25 and 26 of the decision);
- The fact that it exists several possibilities of representing, with slight differences, a bodybuilder does not in any way detract from the fact that the present trademark application is descriptive insofar as it "does not go beyond the standard representation of a Bodybuilder" (paragraph 36)
- Even if that figurative element could convey a message going beyond bodybuilding, it has to be reminded that when a sign has several meanings “it must be refused registration if at least one of its potential meanings designates a characteristic of the products concerned”. This principle is valid both for verbal signs and for figurative signs.
- This trademark application is descriptive of the goods claimed in classes 5 and 25 and services in class 35:
- Firstly because “nutritional supplements” in class 5 are part of the bodybuilder’s diet to help him develop his musculature;
- Secondly because "clothing; footwear" in class 25 designate a general category of products which include articles specifically intended for the practice of bodybuilding;
- Lastly because the services claimed in class 35 relate to the sale of the above products, so that the same considerations regarding distinctiveness are applicable.
- Even if the sign in question is not descriptive for all the categories of goods and services claimed; insofar as the owner applied for trademark registration for the whole without distinction, the decision on the lack of distinctiveness applies “not only to the goods and services for which it is directly descriptive but also to the broader category to which those goods and services belong if there is no adequate limitation applied by the mark applicant” (paragraph 32).
General Court of the European Union – October 11, 2016 – cases T753/15 and T461/15 « Guccio Gucci SpA vs. EUIPO (Guess?) »
On October 11, 2016, the General Court of the European Union issued two decisions regarding the sign filed as a trademark application by GUESS IP HOLDER LP.
The first decision (T461/15) relates to an action for a declaration of invalidity filed against a trademark of the European Union made up of that sign, whereas the second action (T753/15) concerns an opposition brought against another European Union trademark application also composed of that sign.
These two actions against the above mentioned sign had been filed by the company GUCCIO GUCCI SpA who notably owns the prior below trademarks having effect in European Union:
This cancellation action and the opposition are both based on the letter of Article 8 of Regulation 207/2009 dated 26 February 2009 ruling on the refusal of a trademark where there is a likelihood of confusion with a prior trademark.
The EUIPO Board of Appeal, for each of the decisions, had already held that “the capital letter ‘G’ as the basis for the respective graphic designs was not, in itself, a ground for establishing any relevant similarity, whether from a visual, phonetic or conceptual standpoint”, and that “the capital letter ‘G’ and it is just a graphic feature which can be represented, positioned and stylized in many different ways”.
Moreover, the contested sign is purely figurative and abstract; the public will not perceive the capital letter “G” as a letter, but as an ornamental and abstract pattern which can be perceived as reproducing stylized letters, such as the capital letter ‘X’ or the letter ‘e’, and as a combination of figures and letters, such as the figure ‘3’ and the letter ‘e’.
The General Court of the European Union, which was seized by GUCCIO GUCCI SpA, then had to rule on the merits of the decision rendered by the Board of Appeal of EUIPO and gave the reasons for its two decisions in the same way. It was, at the outset, an opportunity to recall the principles relating to the global assessment of the likelihood of confusion and in particular that the average consumer perceives a trade mark as a whole and does not undertake an examination of its various details.
Therefore, the relevant consumer will retain the image of the trademark as a whole and will not perceive in the sign the capital letter “G”, but rather an ornamental and abstract pattern. The appeals of GUCCIO GUCCI were rejected.
These decisions demonstrate that trademarks composed of the same basis, in this case the letter “G”, may be considered as completely different because of an assessment of the marks as a whole.
Change in Trademark and Model Law in the Cayman Islands
Currently, in order to be the owner of a trademark in the Cayman Islands, it is necessary to own of a British trademark or to designate that territory (via a European Union trademark or via the international trademark) and to file an extension request to this Insular Office.
In its plan to modernize the national intellectual property rights presented at the end of last August, the government of the Cayman Islands presented a set of laws that are expected to come into force by the beginning of 2017.
These texts stipulate in particular:
- The possibility of registering a trademark directly with the Cayman Islands IP Office, without passing through a trademark having its effect on British territory;
- Rules concerning the refusal of trade mark applications, as well as for objections and actions for a declaration of invalidity;
Provisions relating to penalties for infringements of trademark rights;
Given this change in legislation, an extension of the processing time for trademark applications designating this territory will be expected at the beginning of 2017. We strongly recommend that you anticipate your filing projects and proceed with it before the end of the year.