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Trademark Infringement: AM General vs. Activision Blizzard
By Ivan Blomqvist. Junior Lawyer.
In 2017, AM General LLC known for manufacturing the military vehicle known as the Humvee, sued Activision Blizzard, Inc., citing that Activision closely copied the design of the vehicle for several issues of the popular Call of Duty video game franchise, as well for repeatedly invoking the “Humvee” trademark and utilizing the vehicle and trademarks in various promotional materials.
The defendant argued that the strong protection afforded by the First Amendment warranted the dismissal of the AM General’s claims.
In April 2020, the court found, by using the Rogers Test, that Activision Blizzard’s interest in presenting military verisimilitude easily met the low bar for artistic relevance. Furthermore, by using the Polaroid Factors the court determined that Activision Blizzard’s use of Humvees was not explicitly misleading. Although some surveys did show some potential confusion amongst users, the fact that AM General was a manufacturer of vehicles and Activision Blizzard was a producer of video games heavily weighed against such assumptions.
In summary, the Court held in its decision to grant a summary judgment to Activision Blizzard against all of AM General’s claims, that “enhancing the games’ realism” was enough to determine the use of Humvees a part of the games artistic expression.
Such a case will prove helpful to art producers from all walks of life who might want to include possibly trademarked material in attempts to more closely ground their art in reality.
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Trademarks Infringement – The Polaroid Factors
By Ivan Blomqvist. Junior Lawyer.
In 1961, Polaroid Corporation brought suit to Polarad Electrical Corporation alleging that the use of the name Polarad as a trademark and as part of the corporate title infringed Polaroid’s federal and state trademarks and constituted a case of unfair competition. Both the lower court and the appellate court dismissed the claims citing that although the similarity was great, there was a lack of evidence of actual confusion.
From this case derived several factors for determining the likelihood of confusion known as the “Polaroid factors”.
These are some principles of the factors:
The strength of the mark: Depends on whether it has acquired secondary meaning or if it is arbitrary, fanciful, or suggestive. A weak mark will have difficulty proving the likelihood of confusion.
The similarity of the marks: Marks must be compared in their entirety, this includes appearance, sound, connotation, and commercial impression. Adding a prefix or suffix, changing a letter, or adding clarifying information may not be sufficient to avoid similarity. Similar meaning can also weigh in the decision.
The similarity of goods: The general rule is, a trademark is permitted to use a similar mark as long as it is a completely different product. The protection may also extend to related goods. Courts may also consider if the same advertising and distribution channels are used.
The degree of care by the consumer: Depending on the products and their target demographic more or less evidence might be required to show a likelihood of confusion. Expensive products or those targeted to professionals have a higher similarity threshold because their consumers use an excessively higher degree of care. Cheaper products that may be bought on impulse may more easily confuse an ordinary purchaser, therefore less similarity may be necessary to prove a likelihood of confusion.
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The Rogers Test: Free Speech v. Trademark Protection
By Ivan Blomqvist. Junior Lawyer.
Perhaps the most widely applied test for protecting free speech, which is found under the First Amendment to the Constitution of the United States of America, in matters of trademark law.
This test spawns from the landmark case Rogers v. Grimaldi, where a performer by the name of Ginger Rogers sued the producers and distributors of a film under the title of Ginger and Fred, alleging that said title violated the Lanham Act by creating a false impression that she was involved in some manner in the film.
The Lanham Act, the primary federal trademark statute of law in the United States, prohibits, amongst other things, the use of marks that confuse as to the affiliation, connection, or association with the mark holder or as to the sponsorship or approval of hoods or services.
At the trial, Rogers offered evidence in the form of a survey that showed 43% of individuals exposed to the title of the film associated it with her. The defendants on the other hand argued that the First Amendment shielded the film from Rogers’s claims. The screenwriter submitted an affidavit claiming that the chosen name was meant as a symbol of hope during a difficult period, and the character in the film was never meant to resemble or portray the real Ginger Rogers.
Ultimately, the district court ruled in favor of the defendants concluding that the film was a work of artistic expression and not a commercial product, therefore being beyond the scope of the Lanham Act.
However, the Second Circuit dived deeper into the conclusion recognizing the commercial nature of many works of artistic expression and thus ruling that the Lanham Act could be applied to the titles of such works. The Second Circuit went on to state that the Lanham Act should not be applied unless the title has no artistic relevance to underlying work whatsoever, or if it has some artistic relevance unless the title explicitly misleads as to the source of the content of the work.
The Second Circuit applied this standard to the case in the form of a two-pronged test, by first establishing that the title of the film had some artistic relevance by sharing an underlying meaning with the contents of the film, and second, that the title was not misleading, stating that although to commercial products the Lanham Act is applied rigorously, because of the expectations of the consumers on their accuracy, titles of artistic works are not taken so literally.
Thus was born the Rogers Test, which may only be applied to non-commercial marks, which determines that the title of an artistic work is protected under free speech from the Lanham Act when a) the title of the work has some artistic relevance to the underlying work and b) that the title is not explicitly misleading as to the source of the content of the work.
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Argentinian Patent and Trademark Office Establishes the Reinstatement of all Suspended Terms by Resolution No. 194-2020.
The Argentine Patent and Trademark Office published in the Official Electronic Bulletin dated November 24, 2020, Resolution No. 194-2020. This Resolution establishes the reinstatement of all suspended terms as from December 14, 2020.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or question you may have.
Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/237589/20201124
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Argentinian Patent and Trademark Office Extends Suspension of Terms by Resolution Nr. 183-2020.
The Argentinian Patent and Trademark Office published the Resolution N 183-2020 in the Electronic Official Bulletin of November 10, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020, 142-2020, 167-2020 and 171-2020 until November 29, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/237127/20201110
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Argentinian Patent and Trademark Office Extends Suspension of Terms by Resolution Nr. 171-2020.
The Argentinian Patent and Trademark Office published the Resolution N 171-2020 in the Electronic Official Bulletin of October 27, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020, 142-2020 and 167-2020 until November 8, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/236557/20201027
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Argentinian Patent and Trademark Office Extends Suspension of Terms by Resolution Nr. 167-2020.
The Argentinian Patent and Trademark Office published the Resolution N 167-2020 in the Electronic Official Bulletin of October 14th, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020, 127-2020 and 142-2020 until October 25th, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/236001/20201014
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Argentinian Patent and Trademark Office Extends Suspension of Terms by Resolution Nr. 142-2020.
The Argentinian Patent and Trademark Office published the Resolution N 142-2020 in the Electronic Official Bulletin of September 22nd, 2020, introducing the following:
Considering the current sanitary emergency, to extend the suspension of terms determined by the Resolutions N 16-2020, 22-2020, 34-2020, 37-2020, 42-2020, 47-2020, 51-2020, 69-2020, 78-2020, 116-2020 and 127-2020 until October 11, 2020, inclusive.
We will continue to provide legal updates as needed and requested, to our clients and colleagues worldwide, and wish you to stay healthy and safe.
Please do not hesitate to contact us at any time with any doubt or questions you may have.
Source: https://www.boletinoficial.gob.ar/detalleAviso/primera/235198/20200922
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Brazil: Division of Trademark Applications And Registrations
By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.
The Brazilian PTO has postponed the entry into force of the resolution that regulates the division of trademark applications/registrations (Resolution 244, of August 27, 2019) to July 1, 2021. Until this new date, it will not be possible to divide applications or registrations of brands. As a consequence, before the mentioned date, international multiclass deposits, which entered Brazil through the Madrid Protocol, cannot be divided either.
Co-ownership
Brazilian PTO informs that, as of September 15, 2020, co-ownership will become an option in trademark applications, through the following services:
– Code 389 (Trademark registration request with pre-approved specification) – value per class; and
– Code 394 (Trademark registration request with free entry specification) – value per class.
In addition, using service code 349 (Holder transfer note), an order or registration with a single holder may be transformed into an order or registration with more than one holder, also allowing for any future transfers involving any issue in co-ownership.
Source:
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Provisional Refusals Under the Madrid Protocol: Country by Country Guide – France and Spain
If you’ve received a notification of provisional refusal in response to your international trademark application from the French or Spanish national trademark offices, here you will discover what the procedures are to go against such a notification and fight to protect your IP in Spain and France.
Provisional Refusals France
In the French trademark system, the key legislative documents to keep in mind are the French IP Code and Law 2007-1544. The national French IP Office is the INPI. Once the INPI has received your application from the WIPO, it will take 6 weeks before it is published in the French Trademark Gazette. From this date, any pre-existing French trademark holder will be able to file an opposition with the Director General of the INPI.
Notice of Opposition
At this point, the applicant will be notified of the opposition, its grounds, and will be granted a time period within which to respond to the opposition. This counterstatement shall be your official argument against the opposition, so make sure that your arguments are bulletproof so that they stand up well before the INPI.
Here is a good point to highlight the importance of sticking to the deadlines placed upon you by either the INPI or the French/European trademark regulations. Often, such deadlines are non-extendable, so if you do not file the correct paperwork in the time given, your application (or opposition) will fail.
From the date of filing the opposition, the INPI must, by law, make a decision and notify the parties within 6 months. If no decision has been made, then the opposition will be rejected and the trademark application successful. This 6-month time period may be suspended if one of three situations arises:
- The INPI finds that the supposedly pre-existing French trademark was never registered
- One of the parties requests a suspension due to a claim pending before the courts
- Both parties request a suspension of three months, which can be renewed if both parties agree. This would often be due to the parties attempting to reconcile their differences and come to some sort of amicable agreement.
The first decision received will be a draft decision – technically a preliminary assessment of the matter – which then gives both parties the chance to submit their observations and further argue their claims within one month of receiving the draft decision. However, this opportunity to further argue your point, if the INPI has made an unfavourable draft decision, is in practice rarely effective in overturning the INPI’s initial decision.
Once the final decision has been made, there is a strict time period allowed for either party to appeal this decision to the French appellate courts. For French nationals, this time period is 1 month; for non-French nationals, this time period is 3 months. This is a crucial stage for the losing party, and it is their last real chance at protecting their IP in France.
It should be well noted that, in order to convince a judge that the INPI came to the wrong conclusions in their decision, your legal arguments must be very well-structured and coherent. Unless you are an experienced IP specialist, then it would be wise to hire a trustworthy IP lawyer to take you through the proceedings.
Provisional Refusals Spain
As one of the top European economies, with various strong industries such as tourism, it is a common territory to file for trademark protection. In Spain, the relevant legislation to be aware of is the Spanish Trademark Law, and the national IP office is the OEPM.
Notice of Opposition
Once an application has passed through the OEPM and has been published in the Official IP Bulletin, any pre-existing Spanish TM holder will have 2 months to file an opposition before the OEPM. Such an opposition will have to be started by filling out Model 4104, where the opponents case will be made as to why the applicant’s trademark would infringe on his pre-existing IP right. An important feature of the opposition in Spain is ability to attach a file to the Model in which you may exhaustively reason your claim. There is no limit on space or how many words may be used, therefore an experienced IP lawyer would be very useful at this stage of the trademark opposition proceedings. However, the OEPM does recommend not to be too repetitive or unclear in this file – if you go over the top, it could do more harm than good.
There are certain requirements in order for the opposition filing to be accepted by the OEPM found in article 26 of Royal Decree 1937/2004. If the filing has some sort of irregularity, don’t worry – you will be granted 10 days to remedy any defect and carry on with the opposition proceedings.
The applicant, once having received the opposition filing, will then have 2 months to file a counterstatement to the opposition, in which they will do the same as the opponent, reasoning why their Spanish trademark should be registered. Here, it is important for the applicant to understand that they have the right to withdraw or alter their application at any time. This would be wise in the case that a pre-existing Spanish trademark provides certain goods and services that seem to overlap with the goods and services described in the initial trademark application. If the applicant believes that they can commercially operate perfectly fine under a slightly different definition of the goods and services they provide, then that would be ideal. Again, the same criteria apply as for the initial opposition filing – that it be clear and concise, without repeating your arguments for the sake of filling out the form in an extensive manner. Once filed, the OEPM will then examine the claims and make a final decision, which will be notified to the parties.
This, however, is not necessarily the end of the road. If the final decision of the OEPM is unfavorable to your claim, you may still appeal against this to the Contentious-Administrative courts within a period of 1 month from the publication of the result in the Official IP Bulletin.
It must be stressed that throughout the trademark opposition proceedings, legal clarity and coherence in your arguments are of utmost importance, whether arguing before the OEPM or the Contentious-Administrative courts. Additionally, if you are to convince a judge that the OEPM made a mistake, the legal arguments must be very strong. Unless you have a vast experience in IP law and trademark protection, then it is highly recommended to make use of a specialist IP lawyer.
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