European Court confirms trademark protection for gold-plated bottle shapes

European Court confirms trademark protection for gold-plated bottle shapes

An important judgment is taken by the European Court on three-dimensional union marks in the packaging sector which states that the gold-plated and pink-coated bottles shapes can be protected as 3D Union trademark from now onwards. This decision is a result of two invalid proceedings corresponding to Trademark Protection for the bottle shapes with a special coating.

In 2013, Sandro Bottega, the head of Bottega Spa-Winery, Cellar and Distillery since 1977, had appealed for the 3D Union Trademark Registration of bottle shapes with a color coating of gold and shimmering pink. The application was accepted and the marks are now registered in Nice 33 pertaining to many beverages, including alcoholic and non-alcoholic ones.

However, plaintiff Vinicola Tombacco Srl, Trebaseleghe,Italy, opposed this registration by putting forward actions for annulment against the two marks registered but these oppositions and actions were rejected, first by the EUIPO and now by the European Court. The plaintiff then again argued by saying that the golden-colored coating on the bottle of the mark provides a significant value to the products concerned. The Court of Justice of the European Union (CJEU) discarded this opposition raised by saying that the color remains incomparable with a feature or characteristic of the shape of the sign, which the plaintiff was completely reliable on. It also asserted that the mark in this dispute consists only of the shape of the packaging of the goods and not the shape of the goods themselves as beverages, being in liquid form in their natural state; need a packaging for selling.

After Tombacco’s first failed attempt, he came up with a further argument against the 3D Union Trademark registration of the bottle shape coated in pink shimmer color. The Board of Appeal failed to consider that the applied paint on sparkling wine’s bottles preserves the sensorial properties of the contents by acting as an obstacle to the oxidation process. Therefore, a ‘technical effect’ is aimed to achieve by the combination of the bottle’s shape and its specific color. However, the European Court rejected this reasoning of the plaintiff as well by drawing attention towards the fact that with respect to the Trademark Law, the term ‘shape’ generally signifies a series of lines or contours, defining the product concerned in space, so that a color can’t itself form a shape, without being defined in space. As a result of which, an applicant can’t rely solely on the technical effect of the color, which however, stays unexplained.

At last, a final opposition was raised by the plaintiff where he referred to the Opinion of Advocate General Szpunar in Louboutin and Christian Louboutin which said that “the combination of shape and color” is likely to be affected by the prohibition of “shape which confers substantial value on products”, which was once again dismissed by the CJEU, considering it to be invalid. The European Court, therefore abandoned the action for invalidity. More Visit: http://trademarkmaldives.com/

Apple’s ‘Think different’ trademark dispute

Apple’s ‘Think different’ trademark dispute

Apple, an American multinational technology company lost a legal trademark dispute against Swatch, a Swiss watchmaker, twice in recent weeks. The Cupertino-based company claimed in a lawsuit that Swatch’s “Tick different” logo strongly resembles its well-known “Think different” slogan.

In 2015, Swatch had registered “Tick different” as a trademark (word/figurative mark) along with the famous half-sentence “One more thing” (word mark), with which, Apple’s founder Steve Jobs usually introduced an innovative product at the end of his presentations. Apple found it to be a copy of its slogan, to which, Swatch defended itself by giving an even older reference of the slogan “One more thing” – the well-known television detective, Columbo, who on numerous occasions said “Only one  more thing”- that perfectly fits in the way how Swatch promoted and advertised its NFC – capable watch.

In early April, the Swiss court ruled in Swatch’s favor over the use of its “Tick different” logo. Apparently, the court stated that the company didn’t have any legal documents which could prove Apple’s allegations against Swatch. During the end of the month, Apple lost another battle against Swatch in Australia where the Australian Trademark Office firmly believed that Apple never used the wording in connection with certain goods or services but only in presentations.

Apple is now taking strict actions against this trademark registration in several countries although it has already lost two battles against the Swatch watchmaker in the last few weeks. Of course, Swatch would not stand a chance in the US where the “Think different” advertising slogan is quite famous in the company’s campaigning records. More Visit: http://trademarkmaldives.com/

UKIPO rejects Kellogg’s ‘Fruit Loop’ opposition

UKIPO rejects Kellogg’s ‘Fruit Loop’ opposition

Britain’s fuller’s brewery achieved victory when the UK Intellectual Property Office (UKIPO) discarded a trademark opposition put forward by the American multi-national food manufacturing company, Kellogg. On May 2, 2019, Thursday, the UKIPO gave a verdict  in favor of the brewery, stating that Kellogg’s couldn’t demonstrate the image and  reputation of its ‘Froot Loops’ brand in the UK.

In June, 2018, Kellogg’s filed an opposition against Fuller’s ‘fruit loop’ mark for a seasonal summer beer, which according to the food manufacturer infringed its EU trademark (EU number 145325) for the breakfast cereal brand. The company even asserted that Fuller’s mark would gain an undue advantage from its cereal product’s reputation and would defame the brand by its use with respect to an alcoholic beverage. On the other hand, Fuller’s argued by claiming that the beer and cereal products had almost nothing in common with respect to the taste and flavor to be placed next to each other in markets.

The UKIPO, after hearing all the justifications and claims, declared that the marks were similar to a very low degree, keeping in mind the other attributes in Fuller’s mark and the alcohol content label. It also stated that Kellogg’s didn’t have much distinctiveness in the UK due to which it couldn’t provide any sales figures except for the marketing figures in relation to a special edition of Unicorn Froot Loops.

Fuller’s has been awarded costs of US $ 3,413 by the UKIPO. More Visit: http://trademarkmaldives.com/

Chinese Trademark Law’s fourth amendment

Chinese Trademark Law’s fourth amendmentOn April 23, 2019, a fourth amendment of the Chinese Trademark Law was passed at the 10th Session of the Standing Committee of the 13th National People’s Congress. The new law will be in effect from November 1, 2019, which has been earlier amended thrice, in 1993, 2001 and 2003 respectively

This fourth amendment consists of six articles, concentrating on two important aspects, which are as follows:

  1. Increasing the content against bad-faith registration for the purpose of regulating the acts of bad-faith applications and hoarding registrations.
  2. Reinforcing the penalties for infringement on the exclusive right to use a trademark.

 

ASPECT – 1

AGAINST BAD-FAITH REGISTRATION

(Changes are highlighted in red)

Article 4 (Paragraph 1) is amended to:

Any natural person, legal person or other organization that needs to obtain the exclusive right to use a trademark for its goods or services during production and business operations shall apply for trademark registration with the Trademark Office.

The application of trademark for registration, which is made in bad faith and not for the use purpose, shall be rejected.

Article 19 (Paragraph 3) is amended to:

A trademark agency shall not accept the entrustment of a principal if it knows or should have known that the trademark application entrusted by the principal for registration falls under any of the circumstances prescribed by Article 4, Article 15 and Article 32 of this Law.

Article 33 is amended to:

If a holder of prior right or an interested party holds that the trademark preliminarily approved is in violation of the second or third paragraph of Article 13, Article 15, the first paragraph of Article 16, Article 30, Article 31, or Article 32 of this Law, he may, within three months from the date of publication, file an opposition to the Trademark Office. Any party that is of the opinion that the aforesaid trademark is in violation of Article 4, Article 10, Article 11, Article 12 or the fourth paragraph of Article 19 of this Law may file an opposition to the Trademark Office within the same three-month period. If no opposition is filed within the specified period, the Trademark Office shall approve the application for registration, issue the certificate of trademark registration, and make an announcement thereon.

Article 44 (Paragraph 1) is amended to:

A registered trademark shall be declared invalid by the Trademark Office if it is in violation of Article 4, Article 10, Article 11, Article 12 or the fourth paragraph of Article 19 of this Law, or its registration is obtained by fraudulent or other illegitimate means. Other entities or individuals may request the trademark review and adjudication board to declare the aforesaid registered trademark invalid.

Article 68 

(Paragraph 1) is amended to:

A trademark agency that commits any of the following acts shall be ordered to make correction within a time limit by the Administrative Department for Industry and Commerce, be given a warning, and be fined not less than RMB 10,000 yuan but not more than RMB 100,000 yuan; the persons in charge who are directly responsible and other persons directly responsible shall be given a warning and be fined not less than RMB 5,000 yuan but not more than RMB 50,000 yuan; where a crime is constituted, criminal liabilities shall be investigated in accordance with the law:

  1. Fabricating or tampering with legal documents, seals or signatures, or using fabricated or tempered legal documents, seals or signatures during the handling of trademark-related matters;
  2. Soliciting trademark agency business by defaming other trademark agencies, or disrupting the order of the trademark agency market by other unjust means; or
  3. Violating the provisions of Article 4 or the third or fourth paragraph of Article 19 of this Law.

(Paragraph 4) is added as:

For making the application of trademark for registration in bad faith, the administrative penalties including warning or fine shall be given according to the circumstances; for bringing the trademark lawsuit mala fide, the people’s court shall punish in accordance with the law.

ASPECT – 2

INCREASING PENALTIES FOR INFRINGEMENT

(Changes are highlighted in red)

Article 63

(Paragraph 1) is amended to:

The amount of damages for infringement on the exclusive right to use a trademark shall be determined based on the actual loss suffered by the right holder as a result of the infringement; if it is difficult to determine the actual loss, the amount of damages may be determined according to the profits gained from there by the infringer, if it is difficult to determine both the loss of the right holder and the profits gained by the infringer, the amount of damages may be reasonably determined in reference to the multiples of the trademark for royalties. Where an infringer maliciously infringes upon another party’s exclusive right to use a trademark and falls under serious circumstances, the amount of damages may be determined as not less than one time but not more than five times the amount that is determined according to the aforesaid methods. The amount of damages shall cover the reasonable expenses paid by the right holder for stopping the infringing act.

(Paragraph 3) is amended to:

Where it is difficult to determine the actual loss suffered by the right holder as a result of the infringement, the profits gained by the infringer from the infringement or the royalties of the registered trademark concerned, the people’s court shall render a judgment awarding damages in an amount not more than RMB five million yuan based on the circumstances of the infringing acts.

(Paragraph 4) is added as:

When hearing a trademark dispute case, the people’s court shall, except in exceptional circumstances, order to destroy the goods bearing counterfeit registered trademarks at the request made by the right holder; and shall order to destroy the materials and instruments which are mainly used to manufacture the goods bearing counterfeit registered trademarks without compensation; or in exceptional circumstances, the court shall order the prohibition of the aforesaid materials and instruments from entering the commercial channels without compensation.

(Paragraph 5) is added as:

The goods bearing counterfeit registered trademarks shall not enter the market after merely being removed of counterfeit registered trademarks.

COMMENTS

Last year in China, there were many trademark applications for registration. These applications faced several practical problems of extensive bad-faith trademark squatting, trademark hoarding and continuous trademark infringement. The fourth amendment to the Chinese Trademark Law is a solution to all these problems. The Trademark Office is now allowed to refuse the trademark applications for registration which are in bad-faith. The trademark applicants can also include “bad-faith application/registration not for the use purpose” as a legal basis in filing the trademark opposition. In a nutshell, all the amendments made would be helpful for the real trademark proprietors.

Cadbury loses two battles over a shade of purple

Trademark Registration

Cadbury, the second largest confectionary brand in the world, has used the purple packaging as its trademark for the “Dairy Milk” chocolate since 1995. Despite Cadbury’s official rights in the Registered Trademark of the shade Pantone 2685C, there has been a long-running “candy war” with their top competitor and rival Nestle over its purple packaging trademark rights. Nestle protested against the trademark claiming that the trademark application failed to adhere to durability requirements and the sample color on the document could fade over time and discredit the accuracy of the trademark. It also stated that Cadbury’s trademark was imprecise and generated ambiguity. In April 2019, The UK Intellectual Property Office (IPO) rendered a decision favoring Nestle by rejecting two of Cadbury UK Limited’s more recent trade mark applications corresponding to the purple shade as applied to its chocolate products.

Cadbury has so far failed to amend description of their 1995 registration, considered to provide limited protection for the color with respect to the chocolate in a tablet form even after making several attempts in the past for their Trademark Protection by following the decision to allow their description under UK no. 3019362 stated as “the color purple (Pantone 2685C) as shown in the form of application, applied to the whole visible surface of the packaging of goods”.

The loss in the court of appeal has put Cadbury in an uncertain place, leading a way for rivals to further challenge them. More Visit: http://trademarkmaldives.com/

Pepsico lays down arms against Indian farmers

Intellectual Property Rights

Pepsico concedes defeat against the Indian farmers they had sued of Intellectual Property Rights infringement of illegally growing its registered potatoes. The officials of Pesico had initially sought damages of Rs 1.05 crore each from the farmers. Over 190 activists supported the Indian farmers and urged the union government to ask Pepsico India to draw out its “false” cases due to which the company has finally agreed to withdraw its cases against the farmers after discussions with the Indian government. Initially, Pepsico wanted to settle with the farmers by asking them either to sell their crops to Pepsi or stop growing them. But then, there was a huge social media criticism and repeated attacks by the political parties that led to pressure from its New York and Dubai offices to resolve the issue at the earliest. A Pepsico India spokesperson added in an emailed statement, “We are relying on the said discussions to find a long-term and amicable resolution of all issues around seed protection.”

Activists are now soliciting the Indian government to give more encouragement to the farmers that they can grow crops according to their needs and wishes. The Alliance for Sustainable and Holistic Agriculture (ASHA) also stated, “The government should put into clear mechanisms to avoid repetition of this episode in future and Pepsico should have apologized for the intimidation and harassment of farmers in this case.” Moreover, the Indian political parties like Bharatiya Janata Party (BJP) and Congress also supported the farmers by tweeting against the company’s brazenly wrong decision to sue the farmers. Pepsico gave a statement saying that it had spent many years working with thousands of Indian farmers and was eventually impelled by the Indian government to withdraw its case against the farmers unregistered to grow its potato variety.More Visit: https://www.trademarkmaldives.com/

 

 

 

Australia’s Bega Cheese wins peanut butter packaging dispute against Kraft

Intellectual Property Rights

Australian company Bega Cheese finally ends a long-running legal battle with American food giant Kraft by owning the exclusive rights to the well-known peanut butter jar with a yellow lid. Initially, Kraft took the Australian company to the Federal Court alleging Bega engaged in misleading or deceptive conduct over the marketing of its peanut butter.

In 2013, the US food giant’s Australian subsidiary Krafts Food Limited was renamed Mondelez Australia. Mondelez Australia traded the Kraft brand and peanut butter packaging under a license agreement and after some time, in 2017, sold the peanut butter business to Bega Cheese which began selling it in a yellow-labeled jar with a lid and a red or blue peanut butter logo. But Kraft claimed Mondelez couldn’t sell the rights to use Kraft’s peanut butter packaging as their Intellectual Property Rights were obnoxiously violated by a company who merely had a license to use it. On Wednesday, the Federal court Justice David O’ Callaghan delivered his judgment by declaring that the rights transferred to Bega were part of the sales agreement between it and Mondelez. As a result, the Australian company is now “exclusively entitled” to use the current packaging of yellow lid, and red and blue peanut label. A further hearing will be held to decide orders and discussions about damages. More Visit: http://trademarkmaldives.com/

USTR retains India on the Priority Watch List

Intellectual Property Rights

The United States Trade Representative (USTR), yearly conducts the Special 301 Report, a result of an annual review of the state of IP protection and enforcement in US trading partners around the world. This list includes the Priority watch list countries identified as having several serious Intellectual Property Rights inadequacies that need an increased USTR supervision. Due to India’s insufficient measurable improvements on the Intellectual Property Rights framework, it once again became a victim of the Priority Watch list for the 27th year in a row. Along with India, USTR has identified 11 countries in its Priority Watch List including China, Indonesia, Russia, etc. In the recent Special 301 Report issued by the USTR, the US termed India as “one of the world’s most challenging major economies” corresponding to the management, protection and enforcement of intellectual property.

Although India has taken several steps in the past to discuss the problems of enforcement of the IP rights, many of the actions have not yet converted into tangible advantages for the creators, and, it is a matter of fact that, yes, India has definitely dismissed the observations in the Special 301 report over the years admitting it as a unilateral report of the US since India was completely amenable with multi lateral IP directives.

In this report, the US accused India of having major long-hauling IP decisions making it difficult for the applicants to receive and perpetuate patents in their respective businesses, specifically for pharmaceuticals. The report even claimed that both India and China were the leading sources of the spurious medicines distributed globally. Although the exact figures remain undisclosed, studies suggest that up to 20% of the drugs sold in the Indian markets are forged and could pose a serious threat to life. The USTR also declared that India maintained exceptionally high custom duties towards IP intensive products such as pharmaceuticals, medical devices, solar energy equipment, to name a few, in spite of India’s repeated premises of restraining IP laws to increase the access to the growing trend in technologies.

At the same time, the report also noted the progress made by India in the last one year by appreciating India’s Cell for Intellectual Property Rights Promotion and Management (CIPAM) efforts to unravel processes, encourage commercialization, and increase IP awareness.

In a nutshell, the USTR wants the governments of the countries included in the Priority Watch list to support the IP systems by making sure to use obligatory licenses only when the circumstances are extremely unlikely and after putting in all the efforts required to procure authorization from the patent owner using rational terms and conditions. The US will continue to look at developments as required with the trading partners including India. More Visit: http://trademarkmaldives.com/