Trademark

The three stripes controversy

By Maria Sol Porro, Trademarks Lawyer and University Professor.

Last June, the General Court of the European Union (EGC) announced one of its most resounding decisions to date, as it confirmed the nullity of the Adidas Community trademark, consisting of three parallel bands, due to the fact that the German company did not demonstrate the distinctive character of it throughout the territory of the European Union (EU).

The legal battle for the three stripes is part of the dispute that Adidas and the Belgian company, Shoe Branding Europe BVBA, began in 2009, when the latter tried to register their two lines against the European Union. In this case, Adidas objected before de European Union Intellectual Property Office (EUIPO) on the grounds that they closely resembled its three parallel bands and, based on this claim, the EUIPO denied registration to the Belgian company on two occasions (2015 and 2016). It is important to remark that Adidas had not proceeded to register its three lines before the EU until this point.

Once this judicial contest was won, Adidas decided to request in December 2013 the registration of the famous three parallel bands as a community trademark before EUIPO, which gave its …

Brazilian Senate Approves Special Protection Bill of “High Reputation” Brands

By Carlos Cavalcanti, Managing Partner Moeller IP Brazil

The Brazilian Senate Plenary approved on Tuesday (2) the bill that creates rules for special protection of “high reputation” brands. PLC 86/2015 allows the holder of an industrial trademark to request the Brazilian PTO (Inpi) to recognize this title at any time. The text has been modified and will have to be returned to the Chamber of Deputies.

“High reputation” is a classification that guarantees a brand protection in all markets, not just the one in which it operates. With this recognition, no other company can be registered with the same name, even if it is from another branch. Inpi currently recognizes 41 “high reputation” brands.

PLC 86/2015 regulates the Industrial Property Law (Law 9.279 / 96) to specify that “high reputation” may be requested at any time. Currently, only an INPI internal standard addresses this issue. According to the rule, the interested parties must wait for a third party to request the registration of the same mark in another branch.

The text also determines that, in case of approval of the application, the recognition of its “high reputation” will be noted in the trademark register. Thus, the owner of the …

McDonald’s Loses Flagship Trademark “Big Mac” in the European Union

By Maria Sol Porro

After years of confrontation with the small Irish supermarket chain, “Supermac”, founded in 1978, the European Union Intellectual Property Office (EUIPO) has revoked the rights to use the “Big Mac” brand in the European Union, registered by the multinational-nal “McDonald’s”.

The conflict began in 2015 when “Supermac” wanted to expand its 100 stores throughout the United Kingdom and other areas of the EU, trying to register the “Supermac” trademark on these sites. However, he found that although none of the products offered by the Irish was called ¨Big Mac¨, the multinational used the similarity between the two trademarks to block the expansion, preventing the registration of “Supermac” in the EU, pointing out that the similarity of both TM could confuse consumers. In this case, the EUIPO agreed with the US multinational due to the similarities between the two signs and the possible confusion alleged by McDonald’s.

Before this blockade by the multinational, the Irish fast food chain presented its claim against EUIPO in April 2017, requesting the revocation of the protection on the trademark “Big Mac”, alleging that “McDonald” registers and retains different denominations to use against its future competitors.

In relation to this new requirement, …

8 Keys to Understand the New European Trademark Directive

By Maria Sol Porro

Nowadays the economic markets experience constant and vertiginous changes in the way in which daily transactions are developed, both of goods and of services. Within these markets, not only material assets have a paramount value, but also the signs used to identify them and to distinguish them from the rest of the competitors, that is, the so-called intangible assets.
Therefore, it is not surprising that the European Union decides to harmonize the laws of each of its members in relation to the type of trademarks that can be requested before the European Union Intellectual Property Office (EUIPO), the requirements of the applications and also of the form of processing.

For this reason, on December 16, 2015, Directive No. 2015/2436 was issued, “on the approximation of the laws of the Member States regarding trademarks”, which entered into force on January 14, 2019. In this sense, it is important to point out that since a Directive is the one that establishes these rules in trademark issues, each European country must dictate a national law to transpose the community regulations to its national scope in order to avoid any type of penalty in case of not doing it.

Based …

Amendments to the Trademarks Legislation

By Mariano Tabanera

We live in a dynamic reality, and in no area is that more evident than in commercial law, which constantly adapts to the new practices and requirements of an ever-changing world market.

With the backdrop of the globalized marketplace in mind, the Mexican Government has recently approved a series of amendments to the IP Law, which will be effective as of August 10, 2018. There are several amendments in relation to trademarks that will change how we are used to working in this country: The very definition of what a trademark is has changed, and although the essence is still the same, it can now be constituted by any sign perceived by the senses that may identify or define a product or service. The text now allows for the registration of holographic signs, sounds and smells, which were previously barred from registration. Trade dress and certification mark registrations are also included in the new text.

A new requirement has been included, as a declaration of effective use will have to be filed during the third year of registration. If this is not done, the registration will expire. No extension is possible. This also applies for renewals: In …

Can registration of a trademark be challenged?

By Maria Sol Porro

Last March the Constitutional Court of Peru, faced with a conflict related to the rejection of the registration of a trademark, established that the registration has no direct constitutional support based on the right to intellectual creation or the right to the protection of intellectual creation.

The above-mentioned dispute was originated because of the registration of the “G-Kristal” brand by import and export company, Goldsun before the Peruvian Trademark Office. Once the registration of the mark was accepted by the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI), the company Backus and Johnston S.A. initiated a process of challenging the administrative resolution in an attempt to revoke the above mentioned registration based on its brand “Cristal.” In response to this request, the Supreme Court decided to revoke the registration by the INDECOPI, rejecting the registration of the “G-Kristal” mark, in finding that there are notable similarities between the “Cristal” and “G-Kristal” brands that might confuse the consumers.

Faced with this decision, Goldsun filed a constitutional judiciary protection order to reverse this decision. The First Constitutional body, in this case the Review Chamber, upheld the decision of the Supreme Court to …

Surprise decision on Steve Jobs trademark

by Mariano Tabanera

The European Union Intellectual Property Office (EUIPO) has upheld its prior decision to grant the registration of trademark STEVE JOBS, in the name of two Neapolitan brothers, Vincenzo and Giacomo Barbato.

The trademark  was not only for STEVE JOBS, but also for a stylization, and a very particular letter J, that likely reminds consumers of another company’s logotype:

The Neapolitan brothers noticed that Apple had neglected to register its founder’s name as a trademark and, unwilling to let this opportunity go by,  registered the trademark as shown above before the EUIPO (Registration No. 011041861), in International Classes 9, 18, 25, 38 and 42.

After noticing this, Apple Inc. attacked this registration before the EUIPO, arguing that the letter J was a copy of Apple Inc.’s own apple device, with a very similar leaf, and a bite taken off it, as shown here:

After years of arguments, the EUIPO ruled in favor of the Barbato brothers, arguing that letter J is not edible, and consequently there is no relation between the bitten apple of the technological company and the “bitten” J of the Italian brothers.

Consequently, the registration was sustained, and there are now clothes being sold under …

There’s no confusing Messi

By Mariano Tabanera

Lionel Andrés Messi Cuccittini, one of the World’s best soccer players has now yet another cause for celebration, as he has now been allowed to register his own trademark for selling sports equipment and clothing.

Messi filed an application in August 8, 2011, to register the above trademark design. It covers classes 9, 25 and 28. This trademark received an opposition from J.M.-E.V. E HIJOS, S.R.L., owner of trademark MASSI for cycling clothes and gear, and sports related goods in general, in classes 9, 12, 18, 25, 28 and 35.

This opposition was admitted by the European Union IP Office (EUIPO), and consequently Messi’s application was rejected, arguing that MESSI and MASSI were almost identical, visually and phonetically. Needless to say, an appeal was promptly filed against this resolution.

After years of procedures, the European Union’s General Court ruled in favor of Messi, asserting that his “fame counteracts the visual and phonetic similarities” with the prior mark MASSI.

The General Court also pointed out that “The degree of similarity between the marks is not sufficiently high to accept that the relevant public may believe that the goods at issue come from the same undertaking or, as …

Simmons’ horns

by Mariano Tabanera

Over the years, we have seen and heard many different attempts at registering different trademarks.

In this occasion, Gene Simmons, famous rock star, and Kiss’ front man, has now filed an application to register the famous “Rock On” sign as a trademark, claiming it to be of his own.

In the application, filed last June 9^th, 2017, before the US Patents and Trademarks Office (see link below), Simmons claims that he first used the sign in November 14^th, 1974; this is, during the Hotter Than Hell Tour. It aims at protecting class 41 services: Entertainment, namely, live performances by a musical artist; personal appearances by a musical artist.

The application describes the sign as consisting  “…of a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular” (from the application), as you can see in the image that was filed in the application before the Office.

Should this trademark be registered, it would mean that Mr. Simmons would have exclusive rights over the sign, and could consequently force other artists to cease in the use of it in their live performances, and even lead to claims for …

Venezuela PTO Faces Difficult Future

By Moeller IP Advisors

Dear Clients and Associates,

The Venezuelan Association of Industrial Property Agents (COVAPI) has issued a statement related to the suspension of services of the Autonomous Services of Intellectual Property (SAPI), who since August 28, 2018 has decided to temporarily and unilaterally suspend the provision of their usual services.

Below the text of the statement:

TO OUR ASSOCIATES, COLLEAGUES AND OTHER USERS OF THE INTELLECTUAL PROPERTY AUTONOMOUS SERVICE (SAPI)

The Venezuelan Industrial Property Agents’ Association (COVAPI) hereby informs its members, colleagues and general public that the Intellectual Property Autonomous Service (SAPI), as of August 28, 2018, has suspended to render services, motivated by certain “internal affairs”, pursuant to various official notifications issued by the entity.

This suspension of services prevents the submittal of any trademark, patent and/or copyright application, notwithstanding the fact that there are three (3) IP Bulletins currently in force which generate several recourses that must be actioned by the owners of these intangibles and who are unable to do so, thereby negating their right of defense and request for protection of their intellectual rights.

COVAPI has already sent a communication to the competent authorities expressing its concern upon the climate of uncertainty and lack …