Can an anonymous work be protected as a trademark?

Gianpaolo Todisco

According to a recent decision of the EUIPO (Intellectual Property Office of the European Union) it would seem not to be the case: the rejection by the Office of the request for trademark cancellation made by the Full Color Black (manufacturer of greeting cards).

This all started when, in 2014, Banksy decided to register his famous work "The Flower Thrower" as a trademark with the European Union; it is a mural made in Jerusalem in 2005 and still wants to remember how wars and battles should be fought with the flower of hope and abandon violence. In accordance with his line of action characterized by irony, provocation and marketing strategies, the famous British writer has registered the work as a trademark to protect any products distinguished by the famous work.

Howeverthe British greeting card company Full Colour Black, sued by Banksy for counterfeiting, claimed that the trademark should be cancelled because it never intended to use it on any products. This was the argument used by Full Color Black's attorney to exonerate her from the 2018 copyright infringement charge. Well, with the decision of 14 September 2020 the EUIPO rejected the artist's request because, according to the Community Trademark Regulation, in order to claim its right on those images it is necessary to leave the anonymity.

To renounce anonymity, however, would damage the aura of mystery that surrounds him. Banksy has the opportunity to appeal within two months of the ruling, but the legal discipline on the matter makes it clear that the Writer risks losing the protectability of all other works if he chooses not to disclose himself.

How Blockchain can help the Protection of Unregistered Trademarks.

As many may know, blockchain shares the task of recording transactions among the people making them, and the underlying technology verify that all users are keeping matching records.

However, the registration of a Trademark can imply high costs if the application is filed in different jurisdictions.

Trademark law recognizes rights to unregistered trademarks, that is to say those trademarks used to distinguish products and services, but never filed nor registered.

Trademark holders are beginning to leverage blockchain technology to secure and document proof of first and continuous use.

In the trademark area, Blockchain technology seems to have at least two immediately applicable uses:

• Creating blockchain-based records as a more secure and trustworthy recordkeeping system to prove trademark use; and

• Proving the provenance and legitimacy of goods in anticounterfeiting efforts.

There is unequivocal evidence of use in case of infringement for holders of unregistered trademarks as the blockchain technology can create immutable timestamps that can provide proof of first use, continuous use filing and lock in a highly credible date on which certain information related to a trademark was captured.

This can bring to the creation of a record of unregistered trademarks on the same distributed ledger, creating a comprehensive picture of all trademarks in use and the extent of use in a particular jurisdiction.

Blockchain records can be made for trademark use in any jurisdiction, that are quick to obtain and always accessible.

WHO OWNS ROGER FEDERER'S RF LOGO?

In July 2018, Federer made the surprise switch from Nike to Uniqlo in a deal worth a reported $300million over 10 years. Speculation quickly rose surrounding Federer’s signature “RF” logo that appeared on his Nike products. The 37-year-old athlete previously claimed the logo was his, and it was expected that Uniqlo would adopt the “RF” branding.

Roger Federer is insisted to take back his famous logo because it’s his symbol but the problem is Nike was registered the “RF” Logo as a trademark and owned the rights to it Nike had already stopped selling Federer’s clothing in their stores all over the world for now.

Lately Uniqlo spokesman Aldo Liguori revealed that the apparel company has “no plans” to acquire the logo from Nike, even though the deal lapsed earlier this year in March, despite what Federer had told his fans last year. The departure from the classic “RF” logo might come to the disappointment of many long-standing followers of the eight-time Wimbledon champion.

So, what could Federer have done to avoid the issue and what are the key lessons for athletes?

Register the trade mark in your name - The most obvious solution would have been to ensure that the trade mark was registered in his name (or his company's name). He could have then, as part of his sponsorship agreement with Nike, granted Nike a licence to use the RF logo for the duration of the sponsorship agreement. Indeed, it is slightly surprising Federer did not register the RF logo in his own name given he is the registered proprietor of several trade marks, including an EU trade mark for "Roger Federer."

Use an assignment clause - Alternatively, if Nike had insisted on owning the RF Logo trade mark, the sponsorship agreement should have included an automatic assignment provision so that, once the sponsorship deal expired or if it were terminated by either party, the rights in trade mark are assigned to Federer.

THE TRADEMARK CASE OF "THE PIZZERIA DA MICHELE"

Recently, the specialized IP section of the Court of Naples dealt with the case of the heirs of Michele Condurro, founder of the Pizzeria “Da Michele” and who claimed rights on the homonymous brand.

 Michele Condurro founded the pizzeria that carries his name located in the popular Forcella neighborhood in Naples back in 1870 and over the years his pizza has become so famous that it was also mentioned by Julia Roberts in the movie Eat, Pray love.

 Recently, the heirs of Michele Condurro have been discussing the right to use the "Da Michele" brand that has become the object of contention by a branch of the family that claimed the right to use it for the opening of several branches in Italy and all 'abroad.

 Similar cases have occurred with the pizza maker Gino Sorbillo and is also happening with the brand SaldeRiso, which sees the award-winning confectioner Salvatore de Riso in court against his brother.

 The case started back in 2016 after the registration of the trademark and Internet domains, in for the recognition and exclusive use of the name "Da Michele".

 Finally, the Court ruled that the exclusive right to use the name throughout the country and internationally belongs to the Condurro heirs who manage the original Pizzeria Da Michele based in Forcella and has imposed the removal of signs, domains and trademarks. The ruling has finally recognized that the patronymic has specific individualizing function, which has been strengthened over time by maintaining a high quality standard, giving rise to a famous trademark and the rights to use the brand must be granted to the person who first adopted and used it.

ARBRE MAGIQUE FILES A CLAIM AGAINST BALENCIAGA.

New legal issues for Balenciaga. The fashion house owned by continues to make people argue about the choice to take inspiration from 'pop' consumer products for their creations. After the luxury versions of the Ikea bag, Balenciaga, who is headed by designer Demna Gvasalia proposed this time a pine-shaped key ring that seems inspired by the famous Arbre Magique car perfumes . The Balenciaga key ring is on sale at 195 euros in light blue, pink, green and black and is made of soft calf leather, while the car perfume costs around two euros.

Car-Freshner Corporation and Julius Sämann Ltd, owner of the Arbre Magique products, has thus decided to sue the Kiering for not asking permission to use the famous colored pine, as they did other brands by starting a cooperation.

The famous stylized tree has already been adopted by other companies producing goods different from perfume diffusers, including Anya Hindmarch, but always in agreement with the right holders.

THE PURPLE (RAIN) COLOR TRADEMARK.

An many might know, Pantone is an American company that deals mainly with technologies for graphics, color cataloging and color identification systems.

In August 2017 Pantone deposited a new color called Purple One, “Love Symbol # 2” in homage to the late Prince Rogers Nelson known to most as simply "Prince" who died in 2016 at only 59 years.

Pantone's marketing operation followed the recent restored edition of the film Purple Rain, whose soundtrack was actually composed by Prince in 1984.

After these recent events, Paisley Park Enterprises the company that holds the of the late Prince, has filed with the USPTO (the US patent and trademark office) a color mark consisting of a particular shade of purple.

Perhaps not everyone knows that among the signs that can be registered as a trademark, the Industrial Property Code also includes combinations or shades of color, if these are suitable for distinguishing the products or services between competitors.

Today, colors and color combinations are, by now, increasingly used by companies to identify their products in the market; it is no coincidence that we often refer to the "blue" Tiffany or the bright "red" of the soles of the Louboutin shoes.

Italian and Eu Courts tend to exclude the registration of pure colors or shades of colors; the principle was already affirmed in 2003, by the Court of Justice of the European Union, in the "Libertel" case concerning the use of the orange color for telecommunications services.

More recently, the Court of Milan has stipulated that the registration of a specific color mark may be allowed only if it does not unduly restrict the availability of colors for the other parties that offer products or services of the same type as those applied for in the registration application.

As for Prince's filing, this will be examined by the USPTO and then published in the bulletin, thus giving the opportunity to other parties who believe that the trademark registration will be damaged by the opportunity to oppose it.

Christian Louboutin's Red Shoe Soles are a valid Trademark.

According to a recent decision by the Court of Justice, the red color of the Christian Louboutin shoe sole is a mark of position and not a mere form and as such constitutes a valid right of property.

This is the decision rendered by the EU Court of Justice, after the French maison had sued the Dutch company Van Haren for selling women's shoes with high heels and red soles.

The Dutch company in 2012 had started selling the "5th avenue by Halle Berry" model - and was sued by Louboutin for counterfeiting. Van Haren defended itself by invoking the "nullity" of the Louboutin brand, appealing to the fact that "the EU Directive on trademarks lists several grounds for invalidity to registration, in particular, with respect to signs consisting exclusively of the shape that gives a substantial value to the product ".

The decision c-163/16 establishes instead that the "protection" of the Louboutin brand red sole "does not concern a specific shape of high-heeled shoe sole (which would not be protected as a EU trademark), as the description of said mark expressly indicates that the outline of the shoe is not part of the mark, but only serves to highlight the position of the red color to which the registration refers. The Court also added that a trademark cannot be considered to be "exclusively from the shape where the main object of this sign is a color specified by an internationally recognized identification code".

The fashion house speaks of a "Victory for the Maison Christian Louboutin" because "the protection of the Christian Louboutin red sole brand is strengthened by the European Court of Justice". According to the company today's ruling in Luxembourg "has confirmed that the legal regime that governs the shape trademarks does not apply to the 'red sole' of Christian Louboutin", which is on the contrary "a position mark, as it has supported the Maison for many years ".

THE COURT OF TORINO ON THE PROTECTION OF KWAY'S THREE BAND STRIPE.

The Court of Torino recently ruled in a lawsuit promoted by Basic Net, owner of the well-known brand K-Way, against Giorgio Armani due to the marketing, by the latter, of products bearing the known K-Way colored.

Basic Net is the owner of a registered color Community trade mark which reproduces the famous colored strip which characterizes the clothing items branded by K-Way.

In its decision, the Court of Turin shared the arguments of the Court of the European Union concerning the application for registration of Basic Net’s Community figurative mark consisting of strips. On this occasion, the Court of Torino confirmed the rejection of the application for registration of the sign due to lack of distinctiveness. However, the Court also verified the acquisition of a distinctive character following use (so-called "secondary meaning") in four European Union States, including Italy.

The Court of Torino therefore concluded that the famous colored stripes of a K-Way constitute "a valid mark of fact, endowed with autonomous distinctive capacity even when used in combination with the K Way brand".

The Italian Court then ruled that the products they identified are "at least very similar (in the sense that they belong to the same line of casual / casual clothing) and sold at entirely comparable prices". This implies a risk of confusion between the brand of the actress Basic Net and the colored band that appears on the Armani garment. According to the Court, the likelihood of confusion arises from the use of the colored band, the overall visual impact it generates and its positioning on the sides of the hinges, and the fact that both products bearing the strip in question are marketed at the same stores and that their cost is almost similar. Such circumstances "can in fact concretely induce the consumer to believe that between the two companies there are ongoing non-existent co-branding operations". Finally, the Court of Turin ruled out the principle of the application of the c.d. “imperative of availability” opposed by the defendant

According to this principle third parties must always differentiate themselves through distinguishing additions or other arbitrary variations, sufficient to eliminate the risk of confusion with other products.

In this case, however, the additions made by Armani (aka the famous stylized eagles and the "AJ ARMANI JEANS" brand) are not considered sufficient to differentiate the product.

According to the Court of Torino the affixing of a notorious mark on the product does not exclude the counterfeiting of the figurative mark of another; if this were not the case "we would arrive at the paradoxical consequence of allowing the owners of the former to appropriately take possession of the latter, with the only precaution to use it in association with their distinctive mark, highly established on the market and highly distinctive and recognizable". For all the above, the Court concluded by declaring that the behavior established by Giorgio Armani "Constitutes an act of trademark infringement and as well as an act of unfair competition". The Court therefore issued against Armani an injunction order from the import, export, sale, marketing and advertising of class 25 products (in particular jackets) bearing the trademark object of the case or other mark containing the sign in question extended to the territory of the European Union and an order of destruction in Italy of counterfeit products.

The Shape of Audermar's Piguet "Royal Oak" is not a 3d Trademark.

The Court of Milan has recently expressed its opinion on the protection of the shape of the well-known "Royal Oak" watch created in 1972 by the Swiss company Audermars Piguet initially protected as a three-dimensional trademark.

Audemars Piguet recorded the shape of the relative lunette as an international figurative mark and complained on a trademark counterfeiting and unfair competition case for the sale of watches marketed by the Milan based start-up “D One”.

At first, the court issued an iaudita altera parte restraining order prohibiting the future commercialization of such watches however, the court overturned its initial decision and dismissed the appeal of Audemars Piguet on the grounds that "there are numerous elements of doubt about the validity of the operated trademark", as evidenced by the fact that its registration as a Community trade mark has been denied by the competent office (EUIPO).

In particular, according to the Court, the trademark seems to lack distinctive capacity, ie the ability to "distinguish products from those of another manufacturer and, therefore, perform the function of identifying the entrepreneurial origin of the product";

Again, according to the court of Milan, the three-dimensional distinctive sign does not even seem to have acquired distinctive capacity through use (so-called "secondary meaning"), "not having been documented uniform use" of the sign itself ".

Finally, the registration of the shape in question as a trademark does not even seem compatible with the provisions of art. 9 CPI, according to which "signs constituted exclusively ... from the form that gives substantial value to the product can not be registered as a trademark".

 In terms of unfair competition, the judge recalled that, to integrate the unfair competition law, the servile imitation of the product of others must "invest characteristics that are totally inexistent with respect to the function they are intended to perform", or those "arbitrary and whimsical" and "new with respect to the already known" characteristics that give originality to the product and have distinctive capacity, so that the public is led to bring them back to the company from which the product originates: only when these characteristics are concerned, servile imitation invests "elements capable of generating confusion in the public" and thus integrates unfair competition with confusion.

In this case, the judge did not recognize the existence of such an imitation, stating essentially - on the basis of what was found at the point of counterfeiting of the mark - that the imitated forms would be "structural and non-distinctive", as well as in some cases "Now acquired to the collective taste, having undergone a certain standardization", and that in any case there would be "significant differences" between the two products.

Surprise Decision on Steve Jobs Trademark.

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 the STEVE JOBS trademark. The trademark owners have also indicated that they would eventually be interested in selling electronic devices with this trademark and, with the Class 9 protection, this is very likely to happen.

Unfortunately, it is impossible to foresee how a company or market will develop and these situations cannot always be avoided, but it is important to note that comprehensive planning, and to proactively protect through trademark registration those terms important to a company.

Note: Trademark STEVE JOBS was also applied for before the USPTO (Serial No. 79141888), but rejected by said institution.

The German Battle for the Balck Friday Trademark.

In 2013, a trade mark application for Black Friday was filed in Germany. Today, the German trade mark is registered for Super Union Holdings Ltd., Hong Kong which has licensed the trade mark “Black Friday” to Black Friday GmbH, a company based in Vienna.

Since 2016, Super Union Holdings Ltd. has started to attack companies using the term Black Friday by sending warnings, such as the US e-commerce marketplace Groupon in 2016, as media reported. Another party concerned is a German entrepreneur who hosts the domain black-friday.de, a platform offering Black Friday deals.

In 2017, Super Union Holdings Ltd. sued Amazon for its use of the sign „Black Friday“ in Germany by raising, inter alia, forbearance and damage claims („Black Friday“ wird Fall für die Gerichte, Frankfurter Allgemeine Zeitung, November 6, 2017).

Of course, some companies, affected by the attacks of Super Union Holdings Ltd., have started to fire back. It is no surprise that there are more than twelve pending cancellation actions against the German trademark Black Friday. In addition, just recently a court in Düsseldorf / Germany has issued a preliminary injunction against Super Union Holdings Ltd. and its licensee Black Friday GmbH to refrain, inter alia, from claiming against clients of the operator of the aforementioned website black-friday.de, that the use of “Black Friday” in an ad is a trade mark infringement.

In Germany, the registration of a trade mark can be cancelled on request of any third party if it has been registered despite absolute grounds for refusal, e.g. if the mark is descriptive or does constitute an indication which needs to be kept freely available. So, what is your opinion?

The Peril of Using your name as a Trademark.

About a year after Thaddeus O’Neil launched a menswear line inspired by the surf culture he grew around on Eastern Long Island, the independent designer received a cease-and-desist letter from a law firm representing Sisco Textiles owner of the famous “O’Neill” sports apparel trademark.

This was the beginning of legal dispute between the surfwear brand founded in 1952, O’Neill, and the independent New York designer who is gaining more and more popularity after winning several fashion contests.

In their dispute with the New York fashion designer, O’Neill argues that the brand has been using its name since the 1950s, and that Thaddeus O’Neil’s marks are “confusingly similar”. According to O’Neill this could of course lead consumers to be deceived and think that the companies are related.

Trademark disputes involving patronymics (i.e. the trademark equivalent to the founder’s name) are quite common in fashion. In 2012, Tod’s — which was operating the Roger Vivier label under a license at the time — took Los Angeles handbag designer Clare Vivier to court for trademark infringement. She eventually settled and re-branded as Clare V. In 2016, Elio Fiorucci lost his case in Italy against the new owners of the brand he founded in the trademark case that involved the use of the “Love Therapy by Elio Fiorucci” trademark.

But what is the position of Italian Courts when use of patronymics could be confusing with other trademarks? In the end of the 80’s the Supreme Court stated that the use of a patronymic as a trademark is a legitimate use of a sign conflicting with a previous registered trademark so long that the previous trademark does not become a famous mark.

This principle has been reaffirmed by the Supreme Court in 2016 in the cited Fiorucci vs. Elio Fiorucci case.

Our tip? Carry out a preliminary trademark search before launching your brand bearing your name.

Hendrix vs Hendrix

Experience Hendrix, a subsidiary of Janie Handrix, who owns the rights to all the entire estate of the guitarist and most famous brother Jimi, sued Leon Hendrix and his partner Pitsicalis for breach of copyright and trademark. In fact, Leon and Pitsicalis would illegally used some of the many Experience’s trademarks (the signature and the images of the face and bust of Jimi) to trade marijuana cigarettes and alcoholic beverages. But the battles for the commercial use of the Jimi’s name are going back in time. In 2015, the Washington District Court had ruled on the matter, forbidding Leon and Pitsicalis to use images of the musician. In addition, in January 2017, the District Court of Georgia declared illegal the use of the words "Jimi" and "Hendrix" on their websites, social media and online platforms. The lawsuit filed in March 2017 in front of the Court of New York by the Experience Hendrix declared illegal, for infringement, also the use of the name "Purple Haze" in the sale of marijuna cigarettes and T-shirts. Purple Haze, in fact, is a song written in 1967 by Jimi Handrix. Experience Hendrix has requested injunctive relief, the elimination from the market of goods violating the trademark’s right and the relatives damages. On the other hand, Thomas Osinski, Pitsicalis and Leon Hendrix’s lawyer, said that "Experience Hendrix has long known long of my clients’ products and it brings this suit only to tarnish and interfere with the lawful and correct Leon’s businesses, which respects Jimi Hendrix’s legacy." Furthermore, Osinski, regarding the content of the claim, said that, although previous rulings have excluded Leon Hendrix and his family from Jimi’s music catalog and denied the possibility to use the trademarks created by Experience Hendrix, nothing prevents Leon and his partner to sell other merchandise Hendrix-related. Who knows how the Court will fix this new family dispute.

Cavalli vs Cavalli

The court of Catania has sentenced Roberto Cavalli to pay the costs of proceedings in the trial against Mrs. Luciana Cavalli, a craftswoman, producer of shoes in Sicily.

The famous Florentine designer, six years ago, had sued his namesake for the misuse of“Cavalli” brand.

It doesn’t matter thatthe Sicilian designer’s surname is actually Cavalli and that her brand exists even before Mr. Robert’s: in his opinion, this name is used out of turn and it represents a case of unfair competition. This is why Roberto Cavalli asked the judge to ascertain an economic damage against his company and to establish a compensation, calculated in 10,000 Euros per day of use, under Article 2600 of Italian Civil Code.

But the Court has rejected the requests made by the complainant and, as Luciana Cavalli’s lawyer says, the judge has awarded the good faith and the continuous use of the trademark “Cavalli” by the manufacturer of shoes and accessories. Thus, Mrs. Cavalli won’t withdrawn her name from the market and she will be able to continue her production of leather goods “made in Italy”.

The Sicilian judgement is at odds with what was stated by the Supreme Court about Fiorucci. In that case, the Court judged unlawful the use of the brand Love Therapy by Elio Fiorucci by Mr. Fiorucci himself, because the famous trademark had been sold to a Japanese holding. That time, it was ruled that the use of the name, even if his own name, it’s not legal if it is a patronymic mark owned by third parties. It can happen, the Court explained, that a coupling effect is generated and that this leads to confusion about the more renowned trademark.

Marylin Monroe: a Registered Trademark

On 9 November 2016, The Estate of Marilyn Monroe has sued an apparel company of New York for having illegally used the “Marilyn Monroe” trademark by using the image of the famous star.

The Marilyn Monroe Estate registered at PTO (The United States Patent & Trademark Office) its own exclusive property on Marilyn’s identity, image, name and likeness and also the right to grant licenses to third-parties.
Thus the Monroe Estate owns and manages Marilyn Monroe trademark, which continuously for over thirty years was used in the market. This circumstance makes the trademark incontestable, providing it greater guarantees of protection.

For these reasons, the Monroe Estate demanded a jury trial for detecting infringements laid down by Lanham Act, 15 U.S.C. 1051 ss, New York Statutory and common law, and a compensation for damage, in terms of trademark infringement, trademark dilution and unfair competition.

No matter, therefore, that the name of Marilyn actually has not been used commercially by the defendant company: the image of the most famous diva of all time, when used as distinctive mark, falls within the “Monroe Rights”, owned by plaintiff.
More specifically, as it follows from a previous court rulling*, it’s necessary to distinguish the infringement of trademark exploitation’s rights from the image exploitation’s right. Only in the first case, indeed, law requires that the consumer is induced to believe that the use of the brand has been authorized by the owner.
On this point, Monroe Estate stated that a confusion, among consumers and retailers, occurred: in fact, many have contacted the company believing that defendant’s products had been approved, authorized or sponsored by the company which owns the trademark.

In this specific case, therefore, while it might be difficult, or even impossible, to establish an infringement of the mark, because the mark has not been used, Article 1125(a) 15 U.S.C. gives actor wide powers to bring a legitimate request.
In fact, the US federal trademark law is intended to protect consumers. If there is a confusion in the audience, there should be a likelihood of confusion, which is the case traceable to article 1125 (a) U.S.C.
The existence of  actual confusion coupled with a registered trademark should ensure the implementation of the rule, guaranteeing Monroe Estate the acceptance of requests .

The use of Twitter Hashtags and the CIO's trademark rights.

The United States Olympic Committee (USOC) has been trying to prevent companies that aren’t official sponsors of the Games from using “official” Twitter hashtags such as #TeamUSA and #Rio2016.

Over the last few weeks, the USOC has sent letters to companies that sponsor athletes but don’t have a commercial relationship with the USOC or the International Olympic Committee, warning them against stealing intellectual property.

One of these letters, written by USOC, states: “Commercial entities may not post about the Trials or Games on their corporate social media accounts. This restriction includes the use of USOC’s trademarks in hashtags such as #Rio2016 or #TeamUSA.”

The mean-spirited approach is designed to protect sponsors – such as Coca Cola, McDonald’s, GE, P&G, Visa and Samsung – who fork out for marketing presence at the event.

It’s been possible to trademark hashtags in the US since 2013 but the application of trademark law to those tweeting hashtags may be wrong.  Indeed trademark infringement occurs when another party uses a trademark and confuses the public as to the source of a product or service that’s being used in commerce. That’s not what happens when you use a hashtag because you may not be selling a product or service, but just making statements on an open forum. How else do you indicate you are talking about the Rio 2016 Olympics without saying #Rio2016?

The Plain Packaging Saga

Two of the world’s biggest tobacco companies, namely Philip Morris International (PMI) and British American Tobacco (BAT), have recently filed lawsuits against the UK Government over its plan to introduce plain packaging for tobacco products. Both PMI and BAT argue that the measures deprive them of property in the form of trademarks, and are seeking compensation that could extend to billions of pounds if they succeed. 

“We respect the government’s authority to regulate in the public interest, but wiping out trademarks simply goes too far” said Marc Firestone, PMI’s senior vice president and general counsel. “Countries around the world have shown that effective tobacco control can co-exist with respect for consumer freedoms and private property.”

The measures, which are planned for a 2016 introduction, have been opposed by Big Tobacco companies from day one. The power of the tobacco industry to market their products has been slowly eroded, to varying extents, by legislation in countries around the world. In the UK, advertising was phased out between 2003 and 2005, and in 2012, tobacco products were banned from display in supermarkets and large shops.

In the claims filed to the High Court, PMI and BAT also claim the measures violate European intellectual property laws. The Department of Health responded  it would not let policy “be held to ransom by the tobacco industry”.

Lawyers for the Government are understood to be confident that all legal aspects of the new measures have been taken into account. But even if unsuccessful, tobacco companies may be hoping legal action will delay implementation or discourage other countries from taking similar action.

Indeed, as long as tobacco remains a legal product, then the owners of cigarette brands can make the argument that they shouldn’t be treated differently to other consumer products. 

Australia introduced a similar ban in 2012 with the aim of reducing smoking and is facing challenges at the World Trade Organization which say that the law creates illegal obstacles to commerce.

By Martina Clochiatti

Round Two in the Sky against Skype Trademark Battles goes to Murdoch's men.

British broadcaster BSkyB has won round two in its trademark infringement battle with Skype.

The European Union General Court found on Tuesday that the two names are too similar and could cause confusion. In 2012 and 2013 the Office for Harmonisation in the Internal Market (OHIM) upheld Sky’s complaint, but Skype then appealed to the EU court.

In today’s decision the court said that there were a number of contributing factors to its decision - in particular, their “degree of visual, phonetic and conceptual similarity”. Skype has attempted to argue that the “pronunciation of the vowel ‘y’ is no shorter in the word ‘skype’ than it is in the word ‘sky’.”

Skype also copped it over its cloud-shaped logo which the court found would be reminiscent of the standalone word "sky".

The argument that the word "skype" is highly distinctive and had even entered the lexicon for identifying voice over IP services was dismissed by the court.

Skype has one last lifeline - it can appeal to the European Court of Justice, but only on points of law and within the next 2 months. Calls to Skype and parent company Microsoft for comment were not returned at time of publication.

Is Pinocchio a valid Trademark?

With its decision of 25 February 2015 the Second Board of Appeal of OHIM partially upholding an appeal, has in fact confirmed the registrability as a trade mark of the word "Pinocchio".

In 2009, Disney had obtained by the Office of the registration of the word term "Pinocchio" for goods and services included in several classes. 

In 2012, Yves Fostier owner of a Community trade mark application which contains, the word "Pinocchio", but in a figurative trademark, had filed an application at OHIM to invalidate Disney’s trademark.

According to Mr. Fostier, Disney’s Trademark established an unacceptable monopoly on matters of law which entered in popular folklore and tradition. In any case, Disney’s application lacked of distinctive character, because popular and because it fell into the public domain. 

In the first degree the Office had, however, rejected Mr. Fostier’s arguments, observing that, on the one hand, the mere fact that a sign constitute the title of a story does not exclude the ability of the same sign to function as a trademark, and, second, the plaintiff had failed to demonstrate that the term "Pinocchio" was not capable of distinguishing the goods and services for which the mark was registered, nor he had proved that the term had become customary in a European language.

Mr. Fostier appealed the decision. 

This time, the Second Board of Appeal noted that, if a title is so well known to the audience to the point that it perceives the mark corresponding to designate primarily a title of a story or a book, that brand may be lacking distinctiveness. This will be more likely if it can be shown that several versions of the story have been published or that there have been numerous television and film adaptations, that have reached a wide audience. Therefore, although in principle the titles or the names of fictional characters can be registered and function as indicators of origin, it must be asked whether a sign is capable of being distinctive for the specific products and services covered by the mark.

According to the Second Board of Appeal Pinocchio belong to this special category of signs lacking distinctive character in relation to certain goods and services in Classes 9 (in particular film, video games, films, audio and video), 16 (children's books , books of drawings, cartoons), 28 (toys and the like), 41 (amusement parks and the like, theater productions, live performances) as consumers could be be led to believe that these goods and services are connected with the history and the character of Pinocchio.

Tsclex Lawyers to attend INTA 2015

Tsclex  will be attending the largest trademark conference of the year, with an eye towards solidifying ties with current clients and building new relationships with trademark attorneys from around the world.
 It is more important than ever for our lawyers to interact with their foreign counterparts to share common experiences and best practices to ensure that trademark rights continue to be strengthened in Italy.
Tsclex will be represented at this conference by Partner Gianpaolo Todisco and associate Martina Clochiatti. From May 2-6, 2015 the International Trademark Association (INTA) will hold its 137th Annual Meeting in San Diego, California, USA.

Headquartered in New York City, INTA was founded in 1878 and now has more than 6,000 members from more than 190 countries, and is recognized as the world’s leading international organization dedicated to the development and improvement of intellectual property.

To schedule a meeting with either Gianpaolo Todisco or Martina Clochiatti, please contact us at info@tsclex.com.